Multani Pharmaceuticals Ltd. vs. S.A. Herbal Bioactives

Case Title:Multani Pharmaceuticals Ltd. vs. S.A. Herbal Bioactives LLP & Ors.

Date of Order:14th February 2025

Case No.: CS(COMM) 740/2024 

Neutral Citation:2025:DHC:1021

Name of Court:High Court of Delhi at New Delhi

Name of Judge:Hon’ble Mr. Justice Amit Bansal

Facts:

The plaintiff, Multani Pharmaceuticals Ltd., is engaged in the manufacture and distribution of Ayurvedic, Unani, and Herbal medicines. It has been selling products under the brand name "MULTANI" and has used the trademark "KUKA" since 1938, particularly for Ayurvedic cough syrups and tablets. The plaintiff has secured multiple registrations for the "KUKA" trademark in India and other jurisdictions.

In July 2024, the plaintiff discovered a cough syrup branded as "KYKA" being sold in Moldova and Russia by the defendants, S.A. Herbal Bioactives LLP. The plaintiff claimed that the defendants were counterfeiting its "KUKA" syrup, using a deceptively similar mark, and distributing it through the same distributor that had been marketing "KUKA" since 2012.

Aggrieved by this, the plaintiff filed a suit seeking a permanent injunction to restrain the defendants from using the "KYKA" mark or any other mark deceptively similar to "KUKA," along with claims of trademark infringement, copyright infringement, and passing off.

Issues:

Whether the defendants' use of the mark "KYKA" constituted trademark infringement and passing off of the plaintiff’s "KUKA" trademark?Whether the plaintiff was entitled to a permanent injunction against the defendants?Whether the "KUKA" trademark qualified to be declared as a "well-known trademark" under the Trade Marks Act, 1999?

Reasoning and Analysis of Judge:

The court initially granted an ex-parte ad interim injunction on 30th August 2024, restraining the defendants from using the infringing mark "KYKA" or any material deceptively similar to the plaintiff’s registered trademarks. 

In considering the plaintiff’s request for declaring "KUKA" as a well-known trademark, the court referred to Sections 11(6) and 11(7) of the Trade Marks Act, 1999. It analyzed the plaintiff’s extensive sales, promotional efforts, and enforcement actions to establish its brand recognition. The court found that "KUKA" had acquired significant goodwill and reputation through its long-standing use, widespread distribution, and legal enforcement efforts. The evidence presented, including advertisements, sales figures, and international trade documents, supported the plaintiff’s claim.

Decision of Judge:

The court decreed the suit in favor of the plaintiff based on the settlement agreement. The defendants handed over a demand draft of ₹6,50,000 to the plaintiff’s counsel in court. Furthermore, the court recognized "KUKA" as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, granting a declaration in favor of the plaintiff. The decree sheet was ordered to be drawn, and all pending applications were disposed of.

Pfizer Inc. v. Softgel Healthcare Private Limited

Case Title: Pfizer Inc. v. Softgel Healthcare Private Limited

Date of Order: 28 January 2025

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

Neutral Citation: 2025:MHC:241

Court: High Court of Judicature at Madras

Judge: Justice Abdul Quddhose

Facts:

Pfizer Inc. and its affiliated companies, involved in the manufacturing of VYNDAMAX®, a drug for treating transthyretin amyloid cardiomyopathy, sought judicial assistance from the Madras High Court in enforcing Letters Rogatory issued by the United States District Court for the District of Delaware. The case in the U.S. involved allegations that CIPLA and Zenara (now Hikma) had submitted Abbreviated New Drug Applications (ANDAs) seeking approval for generic versions of VYNDAMAX® before the expiration of Pfizer's "441 Patent," constituting patent infringement.

Pfizer sought to obtain evidence from Softgel Healthcare, an Indian entity with alleged connections to Zenara, to prove infringement in the U.S. litigation. The Letters Rogatory requested the appointment of a local commissioner to collect documents and testimony from Softgel Healthcare under the Hague Evidence Convention. Softgel Healthcare opposed the petitions, arguing that it was not a party to the U.S. litigation and that compliance would violate Indian domestic laws and trade secrecy protections.

Issues:

Whether the Madras High Court should enforce the Letters Rogatory issued by the United States District Court and compel Softgel Healthcare, a non-party to the U.S. litigation, to provide evidence.

Reasoning and Analysis of the Judgment:

The Court examined the applicability of the Hague Evidence Convention, the Code of Civil Procedure, 1908, and international judicial assistance principles. It held that Letters Rogatory are a well-established mechanism for obtaining evidence across jurisdictions and that India's ratification of the Hague Convention obligated Indian courts to facilitate evidence collection unless it conflicted with domestic laws, national security, or sovereignty.

The Court rejected Softgel Healthcare’s argument that compliance would violate Indian patent law, noting that India’s refusal of Pfizer’s patent application did not negate its obligation under international treaties. It also dismissed the claim that Softgel Healthcare, as a third party, could not be compelled to provide evidence, citing precedents where Indian courts had enforced similar Letters Rogatory.

The Court emphasized that the confidentiality of Softgel Healthcare’s documents would be safeguarded by forming a "Confidentiality Club" and conducting proceedings in-camera. It further held that the request for documents was sufficiently specific and that objections regarding the scope of discovery could be addressed by the appointed local commissioner.

Decision:

The High Court allowed Pfizer’s petitions, appointed a local commissioner to oversee evidence collection, and directed Softgel Healthcare to comply with the Letters Rogatory. The commissioner was granted special powers to summon witnesses, administer oaths, and ensure confidentiality. The collected evidence was to be transmitted to the U.S. court in a sealed cover.

Renewflex Recycling Vs. Facilitation Centre Rohini Courts

Case Title: Renewflex Recycling v. Facilitation Centre Rohini Courts & Ors.

Date of Order: 19 February 2025

Case No.: W.P.(C) 2039/2025

Neutral Citation: 2025:DHC:1020-DB

Court: High Court of Delhi

Judges: Chief Justice Devender Kumar Upadhyay & Justice Tushar Rao Gedela

Facts:

The petitioner, Renewflex Recycling, filed a writ petition challenging the rejection of its commercial suit by the Commercial Court Registry. The dispute arose from an unpaid amount of ₹5,57,550 (including GST) for goods supplied to Respondent No. 2, DP Polymers. The petitioner sent a legal notice demanding payment and later attempted to initiate mediation by sending a request through its advocate. Since Respondent No. 2 failed to respond, the petitioner contended that this non-response should be considered as fulfilling the requirements of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. However, the Registry rejected the plaint for lack of a Non-Starter Report or Certificate of Non-Settlement from the mediation authority.

Aggrieved, the petitioner initially filed W.P.(C) 1473/2025, which was withdrawn with liberty to file a fresh petition. In the present petition, the petitioner sought to challenge the procedural rigidity in applying Section 12A and requested that its independent mediation attempt be deemed sufficient compliance.

Issues:

Whether a party’s unilateral attempt at mediation, followed by the non-response of the other party, can be considered as compliance with the mandatory pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015.

Reasoning and Analysis of the Judgment:

The Court rejected the petitioner’s argument, holding that statutory pre-institution mediation must be conducted within the framework prescribed by Section 12A. It ruled that a party cannot substitute or supplement this process by sending a private mediation request through an advocate. The Court cited Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1, which upheld the constitutional validity of Section 12A, affirming that compliance with the prescribed mediation process is mandatory before filing a commercial suit unless urgent interim relief is sought.

The Court further emphasized that statutory provisions must be followed as written and cannot be altered through judicial interpretation unless exceptional circumstances exist. The principle that "if a statute prescribes a particular mode of implementation, it must be followed in that manner or not at all" was reaffirmed through precedents such as Taylor v. Taylor (1875) and State of Uttar Pradesh v. Singhara Singh (1964).

Additionally, the Court clarified that the legislative intent behind Section 12A is to ensure that mediation is conducted within a controlled institutional framework. The requirement for a Non-Starter Report or a Certificate of Non-Settlement ensures procedural integrity and prevents unnecessary litigation. The petitioner’s argument that a legal notice requesting mediation should be deemed sufficient was deemed inconsistent with the law’s purpose and structure.

Decision:

The High Court dismissed the petition, holding that the petitioner’s unilateral mediation request could not replace the formal process under Section 12A. The requirement of a Non-Starter Report or Certificate of Non-Settlement is essential and cannot be bypassed by private negotiations. No costs were imposed.

H. Anjanappa & Ors. v. A. Prabhakar & Ors. & Beena Anthony & Ors.

Case Title: H. Anjanappa & Ors. Vs. A. Prabhakar & Ors. & Beena Anthony & Ors.

Date of Order: 29 January 2025

Case No.: Civil Appeal Nos. 1180-1181 of 2025

Neutral Citation: 2025 INSC 121

Court: Supreme Court of India

Judge: Justice J.B. Pardiwala & Justice R. Mahadevan

Facts:

The dispute arose from a suit for specific performance filed by the plaintiffs (appellants) based on an Agreement of Sale executed in 1995 for a property in Bangalore. The original owner, acting through her Power of Attorney holder, agreed to sell the property for ₹20,00,000, of which ₹15,00,000 was paid. However, during the subsistence of this agreement, the property was sold to a third party (Defendant No. 3). The plaintiffs initiated legal proceedings, obtained an injunction against alienation, and eventually secured a decree for specific performance in 2016.

During the pendency of the suit, a portion of the property was transferred to Respondent Nos. 1-2, who later sought to be impleaded in the suit. Their impleadment application was rejected in 2014, and this decision attained finality. However, after the original defendant's appeal was dismissed, the subsequent purchasers (Respondent Nos. 1-2) filed a belated appeal, seeking condonation of a 586-day delay and leave to appeal. The Karnataka High Court allowed both, leading to the present appeals before the Supreme Court.

Issues:

1. Whether the High Court erred in condoning an inordinate delay of 586 days in filing the appeal.

2. Whether the High Court was justified in granting leave to appeal to Respondent Nos. 1-2 despite their impleadment application being rejected.

3. Whether the subsequent purchasers had a legal right to challenge the decree of specific performance.

Reasoning and Analysis of the Judgment:

The Supreme Court found that the High Court had erred in condoning the delay and granting leave to appeal.

1. Delay in Filing Appeal: The Court held that the 586-day delay was unexplained and unjustified. The respondents claimed ignorance of the suit, but their earlier attempt to be impleaded showed otherwise. The Court noted that such delays should not be condoned merely based on age and residence abroad.

2. Leave to Appeal: The Supreme Court analyzed the legal principles governing appeals by non-parties. It held that while a lis pendens transferee (subsequent purchaser during the pendency of litigation) may seek to be impleaded, their failure to challenge the rejection of their impleadment application precluded them from later seeking leave to appeal. The doctrine of res judicata applied, preventing them from relitigating the matter.

3. Application of Section 52 of the Transfer of Property Act: The Court reaffirmed that transfers made during the pendency of litigation do not confer any independent rights on the transferee. Such transferees take the property subject to the final outcome of the case.

4. Misuse of Legal Process: The Court noted that the respondents had purchased the property despite knowing about the litigation and injunction. Granting them leave to appeal would encourage collusive transfers to derail litigation.

Decision:

The Supreme Court allowed the appeals and set aside the High Court’s order. It ruled that Respondent Nos. 1-2 had no right to appeal and that their remedy lay in separate proceedings against their vendor (Defendant No. 3) for any claims related to the purchase. The Court emphasized the importance of finality in litigation and the need to prevent undue delays caused by subsequent purchasers challenging decrees long after their rights had been foreclosed.

Dassault Systèmes & Ors. v. Advanced Engineering Solutions & Anr.

Case Title: Dassault Systèmes & Ors. v. Advanced Engineering Solutions & Anr.

Date of Order: 21st February 2025

Case No.: CS(COMM) 378/2020

Neutral Citation: , 2025:DHC:1104

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Facts:

Dassault Systèmes and its subsidiaries, owners of widely used CAD, CAM, and CAE software such as SOLIDWORKS, CATIA, and SIMULIA, filed a suit against Advanced Engineering Solutions and its director for copyright infringement. Dassault licenses its software through an End-User License Agreement (EULA) and a Customer License and Online Services Agreement (CLOSA). The plaintiffs alleged that the defendants were using unauthorized versions of their software and had been identified through their infringement detection system. Despite multiple legal notices and attempts to resolve the issue amicably, the defendants neither ceased the unauthorized use nor paid the requisite licensing fees. The plaintiffs sought a permanent injunction, damages, and other reliefs.

Issues:

Whether the defendants' use of the plaintiffs' software without a valid license constituted copyright infringement.

Whether the plaintiffs were entitled to compensatory damages for the unauthorized use of their software.

Whether an ex-parte decree should be passed against the defendants in light of their failure to contest the suit.

Reasoning and Analysis:

The plaintiffs provided extensive evidence, including infringement reports, legal notices, and an independent investigator’s affidavit, confirming unauthorized use of their software. The court found that the defendants had not responded to multiple notices and continued to use the software without valid licenses. The defendants’ failure to appear in court after an initial hearing further indicated their unwillingness to contest the allegations. The plaintiffs’ claim for damages was supported by evidence, including the estimated licensing fees that the defendants would have paid if they had lawfully acquired the software. The Delhi High Court Intellectual Property Rights Division Rules, 2022, were relied upon to determine the quantum of damages. The court found that the unauthorized use of software deprived the plaintiffs of revenue and granted damages accordingly.

Decision:

The court passed a decree of permanent injunction restraining the defendants from using unauthorized versions of the plaintiffs' software. The defendants were ordered to deliver up all unlicensed copies and associated materials. The court awarded compensatory damages of Rs. 2,78,34,320 and costs of Rs. 3,21,000 to the plaintiffs. The decree sheet was directed to be drawn up, and all pending applications were disposed of.

The Regents of the University of California v. The Controller of Patents

Case Title: The Regents of the University of California v. The Controller of Patents

Date of Order: 21st February 2025

Case No.: C.A. (COMM.IPD-PAT) 481/2022

Neutral Citation:2025:DHC:1105

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Facts: The case concerns an appeal filed under Section 117A of the Patents Act, 1970, against the order of the Assistant Controller of Patents and Designs dated 14th July 2022. The appellant, The Regents of the University of California, had filed an Indian patent application (No. 201717005699) for a recombinant Salmonella microorganism-based live vaccine designed to prevent enteric bacterial infection in livestock.

The application was initially refused by the Controller on the grounds that the invention lacked an inventive step, was non-patentable under various sections of the Act (Sections 3(c), 3(d), 3(e)), lacked unity of invention, and was insufficiently disclosed. The appellant challenged the refusal, arguing that the invention was novel, involved an inventive step, and had been granted in other jurisdictions like the European Patent Office and the United States Patent and Trademark Office.

Issues:

1. Whether the subject patent application was sufficiently disclosed as required under Section 10(4) of the Patents Act.

2. Whether the claims in the application were clear and succinct as mandated by Section 10(5) of the Act.

3. Whether the invention fell within the scope of non-patentable subject matter under Section 3(c) of the Act.

4. Whether the requirement of depositing the biological material under Section 10(4)(d) was applicable in this case.

Reasoning and Analysis:

Insufficiency of Disclosure Under Section 10(4):

The court examined whether the invention was sufficiently disclosed in the complete specification. The patent application covered Salmonella strains with specific genetic modifications, including loss-of-function mutations in the dam gene and additional mutations in genes like sifA, spvB, and mgtC. The appellant argued that the disclosure was sufficient for a skilled person to reproduce the invention without undue experimentation.

However, the court found that while the application described deletion mutations, it did not adequately disclose insertion or substitution mutations, which were also claimed. The court held that this lack of specificity created ambiguity and imposed an undue burden on a skilled person attempting to replicate the invention. Since Sections 10(4)(a) and 10(4)(b) require full and clear disclosure, the court ruled that the application failed to meet these statutory requirements.

Lack of Clarity in Claims Under Section 10(5):

The appellant asserted that the scope of the invention was limited to 42 combinations of genetic modifications. However, the court rejected this argument, stating that the claims encompassed a much broader range of permutations, including different types of mutations. Citing AGFA NV & Anr. v. The Assistant Controller of Patents and Designs & Anr., the court emphasized that unclear and overly broad claims could create ambiguity and were not fairly based on the disclosure in the specification.

Non-Patentability Under Section 3(c):

The Controller had rejected the application on the ground that the claims covered naturally occurring Salmonella microorganisms with loss-of-function mutations. The appellant argued that recombinant microorganisms are artificially created and do not occur naturally. However, the court found that the broad wording of the claims could include naturally occurring mutants, making the invention ineligible for patent protection under Section 3(c).

Requirement of Biological Material Deposit Under Section 10(4)(d):

The court held that since the invention involved a genetically modified microorganism and the disclosure was insufficient, a deposit of the recombinant Salmonella strain with an International Depository Authority (IDA) was necessary under the Budapest Treaty. The appellant’s failure to make such a deposit further weakened the patent application.

Decision:

The court upheld the refusal of the patent application, dismissing the appeal. It concluded that:

The claims lacked sufficient disclosure under Section 10(4).

The claims were broad and indefinite, violating Section 10(5).

The application covered naturally occurring mutations, making it non-patentable under Section 3(c).

The failure to deposit the biological material was a critical deficiency under Section 10(4)(d).

Accordingly, the court found no merit in the appeal and dismissed it, directing the Registry to communicate the decision to the Office of the Controller General of Patents, Designs, and Trade Marks for compliance.

Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products

Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products: Big Fish Can not be permitted to swallow small fish

Case Title: Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products

Date of Order: 25.11.2011

Case No.: Civil Appeal No. 10112 of 2011 (Arising out of SLP (Civil) No. 27180 of 2008)

Neutral Citation: MANU/SC/1408/2011

Court: Supreme Court of India

Judges:Hon'ble Justice Aftab Alam and Justice R.M. Lodha

Introduction:This case pertains to intellectual property rights, specifically concerning the alleged passing off of a trademark. The dispute arose between Rasiklal Manickchand Dhariwal and Anr. (appellants) and M.S.S. Food Products (respondent). The fundamental question in the case was whether the appellants' use of the trademark "Manikchand" amounted to passing off against the respondent's trademark "Malikchand."

Factual Background:The respondent, M.S.S. Food Products, claimed prior use of the trademark "Malikchand" since 1959-60 for selling supari, ayurvedic pan masala, and related products. The ownership of this trademark passed through multiple assignments, eventually being acquired by M.S.S. Food Products in 1996. The appellants, who were using the trade name "Manikchand" for gutka and pan masala, were accused of misleading consumers due to the phonetic similarity of their brand name with "Malikchand." The respondent alleged that this similarity caused confusion in the market, leading to the loss of goodwill and sales. The appellants, on the other hand, contended that they had legally registered "Manikchand" since 1966 and had been running their business under this name for decades.

Procedural Background:The respondent filed a suit before the 1st Additional District Judge, Mandaleshwar (West), Madhya Pradesh, seeking a permanent injunction and damages. The trial court granted an ex parte interim injunction, which was subsequently challenged by the appellants but upheld by the Madhya Pradesh High Court. The trial court framed issues related to trademark infringement, passing off, and jurisdictional aspects. The appellants filed multiple interlocutory applications, including those for rejection of the plaint, discovery and production of documents, and summoning of witnesses. However, these applications were dismissed. The trial court, after repeated non-appearances of the appellants, proceeded ex parte and ruled in favor of the respondent, issuing a permanent injunction and awarding damages. The Madhya Pradesh High Court upheld this decision, reducing the compensation to Rs. 11,00,000. The appellants then filed a Special Leave Petition (SLP) before the Supreme Court.

Issues Involved:

Whether the trial court erred in proceeding ex parte against the appellants and restraining them from using the mark "Manikchand?Whether the appellants' procedural rights were violated due to irregularities in the trial process?Whether the phonetic similarity between "Malikchand" and "Manikchand" constituted passing off?Whether the successor judge had the authority to pronounce the judgment when the predecessor had reserved it?

Submissions of Parties:The appellants argued that they had been using "Manikchand" since 1966 and had obtained legal trademark registration. They contended that the respondent fabricated evidence to support its claim of prior use. They also claimed that the trial court's decision to proceed ex parte was unjustified and that the successor judge lacked the authority to deliver the final judgment. The respondent countered that the appellants deliberately delayed the trial and failed to present their case effectively. They maintained that the phonetic similarity between the trademarks caused consumer confusion and warranted an injunction.

Discussion on Documents Submitted by Parties:The Supreme Court examined the documentary evidence submitted by both parties to assess the credibility of their claims. The respondent submitted:Assignment Deeds and Trademark Registration Certificates – The respondent provided evidence of a continuous chain of ownership through assignment deeds dating back to 1959-60.Sales Invoices and Business Records – Documents showing long-standing commercial use of the "Malikchand" trademark in the sale of pan masala and supari.Advertising Materials – The respondent presented print and media advertisements demonstrating market presence and consumer recognition of "Malikchand."The appellants challenged the authenticity of these documents, arguing that they were fabricated and that no credible historical use of "Malikchand" could be established. The appellants submitted:Their Own Trademark Registration Documents – Claiming that "Manikchand" had been in use since 1966.Business Correspondence and Invoices – Attempting to prove their long-standing presence in the market under the "Manikchand" name.Market Survey Reports – Alleging that the brand "Malikchand" did not have significant consumer recognition.

The Court scrutinized these documents and found the respondent’s evidence to be more reliable, particularly due to the continuous assignments and substantial sales records. The Court noted discrepancies in the appellants’ claims, particularly regarding the actual use of "Manikchand" prior to 1996. The Court also observed that the appellants’ attempt to discredit the respondent’s documentation lacked substantive proof.

Discussion on Judgments Cited:The case relied on various precedents, including:Gullapalli Nageswara Rao v. Andhra Pradesh State Road Transport Corporation (1959 Supp 1 SCR 319) – The appellants cited this case to argue that a judge who hears must decide. The Supreme Court distinguished this precedent, holding that procedural rules permitted the successor judge to deliver the judgment.Arjun Singh v. Mohindra Kumar (1964 5 SCR 946) – Cited by the respondents to support the argument that a case reserved for judgment could be decided by a successor judge.Ameer Trading Corp. Ltd. v. Shapoorji Data Processing Ltd. (2004 1 SCC 702) – Referred to clarify the procedure for admitting documentary evidence.F.D.C. Limited v. Federation of Medical Representatives Association India (AIR 2003 Bom 371) – Discussed the admissibility of affidavit-based evidence.Sahara India v. M.C. Aggarwal HUF (2007 11 SCC 800) – Used by the appellants to argue that procedural irregularities warranted remand, which was rejected by the Supreme Court.

Reasoning and Analysis by the Supreme Court:Big Fish Cannot Be Allowed to Swallow Small Fish:A critical observation made by the Supreme Court in this case was the principle that a dominant market player cannot be permitted to use its financial and market strength to suppress smaller businesses. The court emphasized that intellectual property laws are designed to protect both established and emerging businesses, ensuring a level playing field. The respondent, a relatively smaller entity, had built goodwill over decades under the trademark "Malikchand." Allowing the appellants, a large and well-known business, to continue using "Manikchand" would have caused undue harm and diluted the respondent’s brand identity. The court highlighted that market dominance should not translate into an unchecked ability to usurp another’s brand equity, particularly when consumer confusion is evident. This judgment reinforces the legal principle that trademark laws aim to prevent unfair competition and monopolization by powerful market entities at the expense of smaller competitors.

The Supreme Court held that the appellants had multiple opportunities to present their case but failed to utilize them effectively. Order XVIII Rule 2 of CPC provides parties the option to argue their case, but failure to do so results in forfeiture of that right. The successor judge was authorized under Order XVIII Rule 15 of CPC to deliver the judgment based on the record. The appellants engaged in delaying tactics, leading to the closure of their right to cross-examine witnesses and present oral arguments. The phonetic similarity between "Malikchand" and "Manikchand" was found to be misleading to consumers, justifying the injunction.

Final Decision:The Supreme Court dismissed the appeal, upholding the Madhya Pradesh High Court’s ruling, including the permanent injunction and reduced compensation of Rs. 11,00,000.

Law Settled in This Case:A successor judge can pronounce judgment based on the record if the predecessor had completed hearings (Order XVIII Rule 15 CPC).Failure to cross-examine witnesses and present arguments can lead to forfeiture of procedural rights (Order XVIII Rule 2 CPC).Phonetic similarity in trademarks can constitute passing off.A trial court has discretion to proceed ex parte if a party deliberately avoids participation.Procedural delays cannot be used as a defense to challenge a judgment if they are caused by the party raising the challenge.

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

ITC Ltd Vs Adyar Gate Hotels Ltd

Case Title: ITC Ltd & Anr. vs Adyar Gate Hotels Ltd

Date of Order: 13.02.2025

Case Number: CS(COMM) 119/2025

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

ITC Limited (Plaintiff No.1) and its associate company ITC Hotels Limited (Plaintiff No.2) filed a suit against Adyar Gate Hotels Limited (Defendant) for trademark and copyright infringement, passing off, and other related reliefs. The dispute arose over the use of the trademark "DAKSHIN", which ITC claims to have exclusively used for its premium South Indian restaurant chain since 1989. ITC alleged that the defendant, despite the expiration of their operating services agreement in 2015, continued using the "DAKSHIN" mark and later opened a standalone restaurant in 2024 under the same name and branding.

Issues:

1. Whether the defendant’s use of "DAKSHIN" amounts to trademark infringement and passing off.

2. Whether the defendant was authorized to continue using the trademark after the expiration of the agreement.

3. Whether the defendant’s actions caused damage to ITC’s goodwill and reputation.

Reasoning and Analysis

ITC had an operating services agreement with the defendant from 1985, which explicitly stated that any trademarks, trade names, and logos used under the agreement belonged exclusively to ITC.

The agreement expired in 2015, and ITC withdrew from the hotel, which was renamed Crowne Plaza Chennai Adyar Park. However, the restaurant named "DAKSHIN" continued to operate until December 2023.

In October 2024, ITC discovered that the defendant had opened a new standalone restaurant under the "DAKSHIN" name, using identical branding and a tagline similar to ITC’s registered trademarks.

The court found prima facie evidence of infringement and passing off, considering the defendant’s mark was identical in name, design, and theme to ITC’s well-established trademark.

The court also noted that the defendant had misleadingly represented itself as a "group company" of ITC while applying for the trademark in 2004.

Decision of the Court:

Interim Injunction Granted: The court restrained the defendant from using the "DAKSHIN" trademark for its restaurant and food business.

Online Removal Directive: The defendant was directed to remove all listings and references to the infringing mark from social media and third-party platforms like Zomato, EazyDiner, and TripAdvisor.

Conclusion:

The Delhi High Court’s ruling in ITC Ltd vs Adyar Gate Hotels Ltd underscores the enforceability of trademark rights even after the termination of an agreement. The court’s ex parte injunction highlights the significance of protecting goodwill and preventing misleading commercial practices.

Puma SE Vs. Ashok Kumar

Case Title: Puma SE v. Ashok Kumar

Date of Order: 20th October 2023

Case No.: CS(COMM) 703/2022

Neutral Citation: 2023:DHC:7696

Court: High Court of Delhi

Judge: Justice Prathiba M. Singh

Brief Facts:

The Plaintiff, Puma SE, a well-known German company, sought a permanent injunction against the Defendant, Ashok Kumar, trading as "Kumkum Shoes" in Agra. The Defendant was accused of manufacturing and selling counterfeit products bearing the trademark ‘PUMA’ and the leaping cat device. The Plaintiff had registered its trademark in India since 1977 and claimed that counterfeit products were being sold in Agra, Uttar Pradesh, and online.

Issues Before the Court:

1. Whether the Defendant was infringing the Plaintiff’s registered trademark ‘PUMA’ and the leaping cat device.

2. Whether the Defendant was liable for passing off counterfeit goods as the Plaintiff’s genuine products.

3. Whether the Plaintiff was entitled to damages, costs, and delivery-up of infringing goods.

4. Whether an injunction should be issued restraining the Defendant from further infringement.

Reasoning & Analysis by the Court:

Prima Facie Case & Injunction:

The Court noted that Puma had established its reputation globally and in India.

An ex parte interim injunction was granted on 12th October 2022, preventing the Defendant from manufacturing and selling counterfeit products.

Local Commission’s Report:

A Local Commissioner was appointed, who conducted a raid and seized 156 counterfeit Puma shoes and 15 Puma-branded stickers from the Defendant’s premises.

The report confirmed large-scale manufacturing of counterfeit ‘PUMA’ shoes.

The Defendant failed to file a written statement or contest the claims.

Legal Position & Trademark Violation:

The Court relied on past judgments, reinforcing that a Local Commissioner’s report can be treated as evidence under Order 26 Rule 10(2) CPC.

The Defendant was found to be engaged in deliberate and calculated counterfeiting, which diluted the Plaintiff’s brand.

Assessment of Damages:

Based on the seized stock and estimated sales of 800-1000 pairs of counterfeit shoes per month over two years, the Court estimated the Defendant's illegal profits at approximately ₹18-19 lakhs.

Considering the Defendant’s wilful infringement, the Court awarded ₹10 lakhs as damages and ₹2 lakhs as costs.

Decision of the Court:

1. Permanent Injunction Granted: The Defendant was restrained from manufacturing, selling, or marketing any products under the PUMA trademark or any similar mark.

2. Damages Awarded: ₹10,00,000/- as damages to the Plaintiff.

3. Costs Imposed: ₹2,00,000/- as litigation costs.

4. Seized Goods to be Delivered: The counterfeit goods were ordered to be handed over to Puma’s representatives for destruction.

5. Execution of Decree: If damages and costs were not paid within eight weeks, Puma was allowed to seek execution of the decree.

Conclusion:

The Delhi High Court upheld the rights of Puma SE against counterfeiting and trademark infringement. The case highlights the importance of strict enforcement of trademark laws and the role of Local Commissioners in intellectual property disputes. The judgment serves as a deterrent against counterfeit manufacturing in India.

Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Case Title:Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Date of Order:January 27, 2025

Case Number:COMM. ARBITRATION PETITION NO. 791 OF 2024

Neutral Citation:2025:BHC-OS:1340

Court Name:High Court of Judicature at Bombay

Judge:Justice Somasekhar Sundaresan

Facts of the Case:

The dispute arises from a Distribution Agreement dated December 26, 2017, which included an arbitration clause.

Wonderchef Home Appliances Pvt. Ltd., the petitioner, sought an injunction against its distributor, Shree Swaminarayanan Pty Ltd. (Australia), for making disparaging statements.

The respondent had allegedly sent emails criticizing Wonderchef’s products and the handling of their business relationship, potentially damaging the brand’s reputation.

Wonderchef argued that these statements violated Clause 12.2(c) of the Agreement, which required the distributor to maintain a favorable image of the brand.

Issues Raised:

1. Whether the respondent’s emails constituted disparagement and breach of contract.

2. Whether an interim injunction (gag order) could be issued under Section 9 of the Arbitration and Conciliation Act, 1996.

3. How to balance commercial free speech with contractual obligations of maintaining brand reputation.

Reasoning & Analysis by the Court:

Free Speech vs. Contractual Obligation: The court acknowledged that commercial speech is part of free speech and cannot be easily curtailed.

Lack of Concrete Evidence of Damage: The judge noted that Wonderchef, being a reputed brand promoted by a celebrity chef, was unlikely to suffer significant harm from the respondent’s emails.

Scope of Section 9 Powers: The court agreed that interim relief could be granted to protect the subject matter of arbitration, particularly since Clause 12.2(c) explicitly required the respondent to maintain a positive brand image.

Past Arbitration Attempts: The court observed that the respondent had proposed arbitration in 2023, but Wonderchef had not responded positively.

Decision of the Judge:

The court granted an interim injunction for 90 days, restraining the respondent from making any statements that would violate Clause 12.2(c) of the Agreement.

The injunction was conditional, emphasizing that Wonderchef should initiate arbitration within this period.

The arbitral tribunal would have full authority to assess the truthfulness of the respondent’s claims and decide on further actions.

The court declined to impose permanent restrictions on the respondent’s speech, emphasizing that arbitration should resolve the dispute.

Vandana Prabhakar Pednekar v. Shridhar Chandrakant Bandiwadekar

Principle of Res Judiciata applicable to interlocutory orders also when they conclusively decides the issue.

Case Title: Vandana Prabhakar Pednekar v. Shridhar Chandrakant Bandiwadekar

Date of Order: 17.01.2025

Case No.: Writ Petition No. 15723 of 2023

Neutral Citation: 2025:BHC-AS:2207

Court: High Court of Judicature at Bombay, Civil Appellate Jurisdiction

Judge: Hon’ble Justice Amit Borkar

Facts:

The petitioner (defendant) in a suit for injunction challenged a trial court order allowing the plaintiff (respondent) to amend the plaint to seek specific performance.

Earlier, the plaintiff had filed Chamber Summons No. 1362 of 2016 for interim relief, which was dismissed due to procedural non-compliance.

Subsequently, the plaintiff filed Chamber Summons No. 1741 of 2019 under Order VI Rule 17 CPC to amend the plaint for specific performance, which was rejected on 6 April 2021 on the grounds of limitation and lack of sufficient cause.

Despite this, the plaintiff filed another amendment application, which the trial court allowed on 1 November 2023, prompting the defendant’s writ petition under Article 227 of the Constitution.

Issues:

1. Whether a successive amendment application can be allowed after an earlier amendment plea for the same relief was rejected on merits.

2. Whether the principle of res judicata applies to interlocutory orders.

Reasoning and Analysis:

The Supreme Court in Satyadhyan Ghosal v. Deorajin Debi (AIR 1960 SC 941) held that res judicata applies not only to final decisions but also to interlocutory orders to ensure judicial finality.

The trial court’s rejection of the amendment in 2021 was a final determination, barring a successive application for the same relief.

The plaintiff did not challenge the 6 April 2021 order, allowing it to attain finality.

Allowing a fresh amendment application circumvented the previous judicial decision, violating the principle of judicial discipline and leading to inconsistent rulings.

The High Court ruled that such a successive application amounts to an abuse of process and undermines the finality of judicial orders.

Decision:

The trial court’s order dated 1 November 2023 was set aside as it violated res judicata.

The rule was made absolute, and the writ petition was allowed.

The High Court reinforced that once an amendment plea is rejected on merits, a fresh application seeking the same relief is impermissible.

Significance:

This ruling reinforces the sanctity of judicial orders and prevents litigants from re-litigating identical issues through successive applications.

It clarifies the application of res judicata to interlocutory orders, ensuring finality in litigation and avoiding multiplicity of proceedings.

The judgment safeguards against abuse of process, setting a precedent for similar cases involving repeated amendment applications.

PhonePe Pvt. Ltd. Vs. BundlePe Innovations Pvt. Ltd.

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

Date of Order: 21st January, 2025

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

Court: High Court of Madras

Judge: Hon'ble Mr. Justice P. Velmurugan

Facts of the Case:

1. Plaintiff’s Background: PhonePe Pvt. Ltd., a leading digital payment platform in India, claims ownership of the "PhonePe" trademark and alleges that it is a well-known mark.

2. Defendants’ Business: BundlePe Innovations Pvt. Ltd., along with its directors, Prashanta Patra and Suman Kundu, operates payment services under the names "BundlePe" and "LatePe".

3. Allegation of Trademark Infringement: PhonePe alleged that "BundlePe" and "LatePe" are deceptively similar to its trademark and could mislead consumers.

4. Legal Action: PhonePe sought a declaration that its mark is well-known and requested a permanent injunction restraining the defendants from using the disputed marks. It also sought damages of ₹10,00,000 and the cancellation of the defendants’ domain names.

5. Defendants’ Response: The defendants argued that "Pe" is a generic term, commonly used in the digital payments industry (e.g., Paytm, Google Pay), and that their marks were sufficiently distinct from "PhonePe".

Issues:

1. Are "BundlePe" & "LatePe" deceptively similar to "PhonePe"?

2. Is the plaintiff entitled to a permanent injunction for trademark infringement?

3. Did the defendants engage in "passing off" by misleading consumers?

Reasoning and Analysis by the Judge:

1. No Deceptive Similarity: The court ruled that "BundlePe" & "LatePe" are not deceptively similar to "PhonePe" because:

The prefix "Bundle" and "Late" differentiates them.

The word "Pe" is commonly used in the payments industry.

There was no evidence of actual consumer confusion.

2. No Trademark Infringement: Since the marks were found to be different, no grounds for an injunction were established.

3. No Passing Off: The plaintiff failed to prove that the defendants misled consumers into believing their services were linked to PhonePe.

4.Many other brands use similar terms (e.g., Paytm, Google Pay).

5.The "Pe" suffix is widely used in the payments sector.

6. No Trademark Dilution: The presence of "Pe" in both marks was not enough to diminish PhonePe’s distinctiveness.

7. "Pe" is Not Exclusive: The court ruled that "Pe" is a transliteration of "Pay" and cannot be monopolized by PhonePe.

Decision of the Judge:

The court ruled in favor of the defendants and dismissed all claims made by PhonePe.

No injunctions were granted against "BundlePe" and "LatePe".

No damages were awarded to PhonePe.

The court upheld the defendants’ right to use their marks.

Key Takeaways:

Common industry terms like "Pe" cannot be monopolized.

Trademark protection does not extend to generic terms used widely by other brands.

Mere phonetic similarity is insufficient to claim trademark infringement.

Businesses must provide clear evidence of consumer confusion or financial loss to succeed in such lawsuits.

Manash Lifestyle Pvt. Ltd. Vs. Shabina Kundial

Case Title: Manash Lifestyle Pvt. Ltd. Vs. Shabina Kundial

Date of Order: 14th February, 2025

Case No.: C.O. (COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:1012

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

1. Petitioner’s Background: Manash Lifestyle Pvt. Ltd., incorporated in 2011, operates the online beauty and wellness store Purplle.com. It owns the FACES and FACESCANADA trademarks, acquired through a Share Purchase Agreement in 2021.

2. Trademark Rights: The FACES trademark was originally adopted in 1974 by the petitioner’s predecessor and registered in India in 2006. The brand has been extensively used and promoted through various marketing channels, including digital platforms and celebrity endorsements.

3. Discovery of the Infringing Mark: In June 2024, during a routine trademark search, the petitioner found that Shabina Kundial (Respondent No.1) had obtained registration for a mark incorporating "FACES" in Class 44 for beauty-related services. The registration was granted on 26th April, 2021.

4. Legal Action: Manash Lifestyle filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the impugned mark from the Trade Marks Register.

Issues:

1. Whether Shabina Kundial’s trademark registration in Class 44 is deceptively similar to the petitioner’s FACES marks?

2. Whether the registration of the impugned mark was obtained dishonestly to ride on the goodwill of the FACES brand?

3. Whether the registration violates Sections 9, 11, and 18 of the Trade Marks Act, making it eligible for rectification?

Reasoning and Analysis by the Judge:

1. Absence of Defense: The respondent failed to file a reply or appear in court, leading to an ex-parte decision.

2. Similarity of Marks: The court compared the FACES marks and the impugned mark and found substantial resemblance, making it likely to cause confusion among consumers.

3. Precedent Cited: The court referred to Greaves Cotton Limited v. Mohammad Rafi (2011 SCC OnLine Del 2596), where it was held that even minor variations in a mark do not prevent infringement if the resemblance is substantial.

4. Bad Faith Adoption: The court concluded that Shabina Kundial had dishonestly adopted the petitioner’s mark to gain unfair advantage from its goodwill and reputation.

5. Violation of Trade Mark Law: The court found the respondent’s registration contrary to Sections 9 (absolute grounds for refusal), 11 (relative grounds for refusal), and 18 (application for registration) of the Trade Marks Act, making it liable for cancellation.

Decision of the Judge:

The rectification petition was allowed, and the impugned trademark (Application No. 4686526 in Class 44) was ordered to be removed from the Trade Marks Register.

The Trade Marks Registry was directed to implement the order and notify via email.

Dwarka Matlani Vs Jay Daryani

Case Title: Dwarka Matlani Vs. Jay Daryani

Date of Order: 31st January, 2025

Case No.: C.O.(COMM.IPD-CR) 704/2022

Neutral Citation: 2025:DHC:796

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

1. The petitioner, Dwarka Matlani, is engaged in the business of manufacturing and marketing products such as supari, sweet supari, mouth fresheners, and non-medicated confectionery under the trade name “Kishan Foods Products” and trademark ‘RAHUL.’

2. The petitioner has been using the label and artwork since 1997 and obtained trademark registration on 17th August 2007.

3. In April 2019, Matlani discovered that the respondent, Jay Daryani, an ex-employee and nephew of the petitioner, was using an identical or deceptively similar trademark and packaging under the name ‘ROYAL.’

4. A legal notice was sent to Daryani, who denied infringement, claiming that his adoption of ‘ROYAL AAM PACHAK TABLET’ was bona fide.

5. Despite opposition by Matlani, the Registrar of Copyrights granted a copyright registration to Daryani on 2nd May 2019.

6. Matlani filed an infringement suit in the District Court, Bharatpur, which granted an interim injunction against Daryani.

7. The Rajasthan High Court upheld this injunction.

8. Matlani then filed a rectification petition before the Intellectual Property Appellate Board (IPAB), which was later transferred to the Delhi High Court.

Issues:

1. Whether the copyright registration granted to Jay Daryani for the label/packaging of ‘ROYAL’ was valid?

2. Whether the label/packaging of Daryani was a slavish imitation of Matlani’s ‘RAHUL’ label?

3. Whether Daryani concealed material facts while obtaining copyright registration?

Reasoning and Analysis by the Judge:

1. Similarity of Labels: The court compared the labels and found that Daryani’s label was a slavish imitation of Matlani’s, with identical colors, fonts, and placement of the brand name.

2. Prior Use and Goodwill: Matlani had been using the label since 1997 and had trademark registration, whereas Daryani applied for copyright only in 2019.

3. Lack of Defense by Respondent: Daryani failed to file a written reply or pay costs imposed earlier, and no representation was made in court.

4. Registrar’s Oversight: The court noted that Matlani’s objections were not adequately considered before granting Daryani’s copyright. 

Decision of the Judge:

The court ruled in favor of Matlani and ordered the removal of Daryani’s copyright registration (Entry No. A-129092/2019) from the Copyright Register.

The court directed the Registrar of Copyrights to implement this order.

Ranveer Gautam Allahabadia Vs Union of India & Others

Case Title: Ranveer Gautam Allahabadia Vs Union of India & Others

Date of Order: February 18, 2025

Case No.: Writ Petition (Criminal) No. 83/2025

Court: Supreme Court of India

Judges: Hon'ble Justice Surya Kant & Hon'ble Justice Nongmeikapam Kotiswar Singh

Facts of the Case:

Ranveer Gautam Allahabadia, a well-known media personality, filed a writ petition in the Supreme Court seeking protection from arrest in multiple FIRs registered against him in Maharashtra, Assam, and Rajasthan. The complaints stem from content aired on his show "India’s Got Latent", which allegedly contained obscene and offensive material.

The charges against him were filed under:

Sections 79, 196, 296, and 299 of the Bharatiya Nyaya Sanhita, 2023 (BNS)

Section 67 of the Information Technology Act, 2000

Sections 4 & 7 of the Cinematograph Act, 1952

Sections 4 & 6 of the Indecent Representation of Women (Prohibition) Act, 1986

Allahabadia argued that the multiple FIRs were malicious and politically motivated, violating his freedom of speech and expression under Article 19(1)(a) of the Constitution.

Issues:

1. Whether the content aired in the show amounted to obscenity and violated any legal provisions?

2. Whether multiple FIRs based on the same content were justified or constituted harassment?

3. Whether the petitioner should be granted interim protection from arrest?

4. Whether restrictions on further broadcasting were legally valid?

Reasoning and Analysis of the Judges:

1. Protection from Arrest:

The court acknowledged that multiple FIRs based on identical allegations could amount to harassment.

It granted interim protection from arrest in all current and any future FIRs regarding the same incident.

2. Balancing Free Speech and Law:

The court noted that freedom of speech is not absolute and must be exercised within legal bounds.

However, criminal law should not be misused to target individuals selectively.

3. Restrictions on Further Content:

To prevent further controversy, the court barred Allahabadia from airing any content on YouTube or other platforms until further notice.

4. Conditions for Cooperation:

Allahabadia was directed to cooperate with the investigation and was not allowed to have legal counsel present during police questioning.

He was required to surrender his passport and seek court permission before leaving India.

Decision of the Judges:

1. Interim protection from arrest was granted in all existing FIRs and any future ones based on the same allegations.

2. No new FIRs related to the "India’s Got Latent" episode could be registered.

3. Allahabadia was prohibited from airing any new content until further court orders.

4. He was required to surrender his passport and cooperate with the investigation.

Havells India Limited Vs Cab Rio Industries

Case Title: Havells India Limited Vs Cab Rio Industries

Date of Order: February 17, 2025

Case No.: CS(COMM) 995/2024 & I.A. 44614/2024

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

Havells India Limited, a well-established electrical equipment manufacturer, filed a suit against Cab-Rio Industries, alleging trademark infringement and passing off of its trademark "REO." Havells, which has been using the "REO" mark since 2012, contended that Cab-Rio's use of the mark "CAB-RIO" was misleading and aimed at unfairly benefiting from Havells' market reputation.

The plaintiff highlighted that the "REO" mark was registered and declared a "well-known trademark" by a previous court order. The defendants, however, argued that their mark "CAB-RIO" had been in use since 2017 and was also registered under Class 9. They claimed that "CAB" in their name was an abbreviation for "cables."

Issues:

1. Whether Cab-Rio's use of the mark "CAB-RIO" infringed upon Havells' trademark rights?

2. Whether the adoption of "CAB-RIO" constituted passing off?

3. Whether the similarity in phonetics and structure between "REO" and "CAB-RIO" was likely to cause confusion among consumers?

4. Whether Havells' prior use of "REO" gave it superior rights over Cab-Rio?

Reasoning and Analysis of the Judge:

1. Prior Use & Goodwill:

The court determined that Havells had prior use of the "REO" mark since 2012, while Cab-Rio only began using "CAB-RIO" in 2017.

Havells' extensive sales turnover (₹946.86 crore in 2023-24) and advertising expenditures demonstrated strong brand recognition.

2. Deceptive Similarity & Phonetics:

The court found that "REO" and "CAB-RIO" were phonetically and structurally similar.

The word "RIO" in Cab-Rio’s mark was prominently similar to "REO," leading to potential consumer confusion.

3. Bad Faith Adoption:

The defendants failed to provide a credible explanation for adopting "RIO" in their brand name.

Their marketing materials suggested an attempt to capitalize on Havells' established reputation.

4. Likelihood of Confusion:

The court ruled that electrical products are often purchased by workers or builders who may not analyze minor distinctions in brand names.

The similarity was sufficient to cause confusion among consumers with imperfect recollection.

Decision of the Judge:

The court granted an interim injunction restraining Cab-Rio from using "CAB-RIO" or any similar mark in relation to electrical cables and wires.

Sammaan Finserv Limited Vs. Svamaan Financial Services Private Limited

Case Title:Sammaan Finserv Limited & Sammaan Capital Limited v. Svamaan Financial Services Private Limited & Ors.

Date of Order:18 February 2025

Case No.: (FAO(OS) (COMM) 26/2025)

Court:High Court of Delhi at New Delhi

Judges:Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Facts of the Case:

A Single Judge had previously granted an injunction restraining Sammaan Finserv Limited and Sammaan Capital Limited from using, advertising, or displaying marks that are identical or deceptively similar to the respondent Svamaan Financial Services Private Limited’s registered “SVAMAAN” marks. The dispute centers on whether the appellants’ adoption of the “SAMMAAN” marks infringes on the respondent’s rights. The appellants contend that the marks are distinct—citing differences in pronunciation, visual appearance, and the sophistication of their consumer base—while the respondent argues that the similarity between “SAMMAAN” and “SVAMAAN” is likely to mislead consumers in the financial services sector.

Issues Raised:

1. Whether the “SAMMAAN” marks are deceptively similar to the respondent’s “SVAMAAN” marks.

2. Whether there exists a likelihood of consumer confusion in the financial loan market.

3. Whether the interim injunction granted by the Single Judge should continue to operate pending the final disposal of the appeals.

Reasoning and Analysis:

Trademark Similarity and Consumer Perception:

The Court reviewed multiple tests—including phonetic analysis (the Pianotist test) and assessments of visual and conceptual similarity—to determine whether the marks could deceive the average consumer. Although the appellants argued that differences such as “SVA” versus “SAM” distinguish the marks, the Court noted that in the context of financial services, where consumers may not scrutinize subtle differences, confusion remains a distinct possibility.

Balance of Convenience:

Both parties presented arguments regarding the potential irreparable harm. The appellants highlighted their long-term use of the marks and the severe business impact of an injunction. In contrast, the respondent underscored its prior registration and longstanding reputation associated with the “SVAMAAN” marks. The Court emphasized that while serious questions of merit exist, the balance of convenience favours maintaining the status quo until a final decision is reached.

Procedural Considerations:

Given that the substantive issues would be addressed on final disposal, the Court focused on the immediate need to preserve the existing state of affairs. The interim order was aimed solely at preventing any premature alteration of the market position that could lead to irreversible harm.

Decision of the Judge (Interim Order):

The Court disposed of the interim applications and The status quo to remain in force until the appeals are finally disposed of. 

Visa International Ltd. Vs. Visa International Service Association

Case Title:Combined Appeals in IPDTMA No. 82 of 2023, IPDTMA No. 83 of 2023 (Visa International Ltd. v. Visa International Service Association & Anr.) and IPDTMA No. 1 of 2024 (Garden Silk Mills Private Limited v. Rajesh Mallick & Ors.)

Date of Order:August 2, 2024

Case No.:IPDTMA No. 82 of 2023; IPDTMA No. 83 of 2023; IPDTMA No. 1 of 2024 (IA No. GA-COM 1 of 2024)

Court:High Court at Calcutta (Original Side – Commercial Division)

Judge:Hon’ble Justice Krishna Rao

Facts of the Case:

The appellants challenged orders passed in trademark opposition proceedings by contractual Associate Managers of the Trade Marks Registry. In IPDTMA Nos. 82 and 83 of 2023, the impugned order dated September 16, 2023, was issued by Mr. Shraman Chattopadhyay in an opposition against trademark application No. 1363190 (Classes 06 and 35). In IPDTMA No. 1 of 2024, a similar challenge was raised against an order dated October 6, 2023, passed by Mr. Saurabh Dubey concerning the registration of the mark “HANDLOOM GARDEN” in Class 35. The appellants contended that these Associate Managers, engaged on a contractual basis with clearly limited terms (with Mr. Chattopadhyay’s engagement ending on May 31, 2023), were not empowered to exercise quasi‑judicial functions in such proceedings.

Issues Raised:

1. Authority to Exercise Quasi‑Judicial Powers:

Whether contractual Associate Managers are empowered under the Trade Marks Act, 1999 to pass quasi‑judicial orders in opposition proceedings.

2. Validity of Orders Beyond Contractual Period:

Whether orders passed by officers after the expiry of their contractual engagement are legally valid.

3. Delegation of Judicial Functions:

Whether the delegation of administrative functions under Section 3 of the Trade Marks Act extends to the exercise of judicial functions in trademark matters.

Reasoning and Analysis of the Judge:

Statutory Interpretation:

The Court examined Sections 3 and 18 of the Trade Marks Act, 1999. While the Act permits the Central Government to delegate administrative functions to various officers, quasi‑judicial powers must be exercised independently by a properly empowered officer. The delegation intended by the Act does not extend to passing judicial orders.

Contractual Limitations:

The Court noted that Mr. Shraman Chattopadhyay’s offer of engagement explicitly stated that his appointment could not continue beyond May 31, 2023. Since his order was passed on September 16, 2023, it was rendered ultra vires. Similarly, the legitimacy of Mr. Saurabh Dubey’s appointment as Associate Manager was questioned.

Organizational Structure:

The recruitment rules and the organizational structure of the Trade Marks Registry were examined, and no post of “Associate Manager” was found to be authorized to exercise quasi‑judicial functions. This supported the appellants’ claim that such officers lack the requisite jurisdiction.

Precedential Support:

Relying on established case law that holds an act void ab initio if passed by an unauthorized officer, the Court reasoned that orders passed under such circumstances automatically collapse without the need for a separate quashing order.

Decision of the Judge:

The impugned orders passed by Mr. Shraman Chattopadhyay (dated September 16, 2023) and Mr. Saurabh Dubey (dated October 6, 2023) were set aside and quashed. The appeals in IPDTMA Nos. 82, 83 of 2023 and IPDTMA No. 1 of 2024 were allowed. The matter was remanded to the Registrar, Trade Marks, with instructions to have the case reconsidered afresh by a competent officer after affording an opportunity of hearing to all parties. The Registrar or the designated officer is further directed to dispose of the matter within six months from the receipt of this order. 

Md. Islamuddin Vs. S S Kapoor

Case Title: Md. Islamuddin v. S S Kapoor

Date of Order: November 1, 2022

Case No.: CM(M) 1137/2022 & CM APPL. 45868/2022

Neutral Citation: 2022/DHC/004587

Court: High Court of Delhi at New Delhi

Judge: Hon'ble Mr. Justice C. Hari Shankar

Facts of the Case:

The petitioner, Md. Islamuddin, filed a suit in January 2021 against S S Kapoor and later sought to introduce additional documents—three invoices (dated June 9, July 27, and December 30, 2018) and a handwritten document (dated January 4, 2018)—allegedly containing an admission of liability by the respondent. These documents were not filed initially due to difficulties during the COVID-19 pandemic. The District Judge (Commercial Courts) had earlier rejected the application to include these documents, questioning their genuineness. 

Issues Raised:

1. Whether the petitioner could validly seek to introduce additional documents beyond those filed with the plaint.

2. Whether the application, although filed under Order VII Rule 14 CPC (an incorrect provision for a commercial suit), should instead be treated under Order XI Rule 1(5) CPC as amended by the Commercial Courts Act.

3. The extent to which procedural non-compliance should affect substantial justice in evidentiary matters.

Reasoning and Analysis of the Judge:

Procedural Misfiling and Liberal Construction: The judge noted that although the petitioner filed the application under the wrong provision (Order VII Rule 14 CPC), Supreme Court precedents (e.g., in Sudhir Kumar and related cases) allow such applications to be treated under Order XI Rule 1(5) CPC, provided there is a sufficient cause for the delay.

Focus on Reasonable Cause: Emphasis was placed on whether the petitioner could demonstrate “reasonable cause” for not filing the documents earlier—not on the documents’ evidentiary value at the initial stage.

Substantial Justice Over Technicalities: Citing the lenient approach endorsed in earlier judgments (such as Sugandhi v. P. Rajkumar), the judge maintained that procedural technicalities should not obstruct the pursuit of truth and justice, especially when the alleged failure was due to pandemic-related difficulties.

Non-Issue of Genuineness at This Stage: The court clarified that at the stage of permitting additional documents, it is not required to decide on the genuineness of the documents; the primary consideration is whether sufficient cause exists for their delayed filing.

Decision of the Judge:

The court allowed the petitioner to place the additional documents on record, subject to the petitioner paying costs of ₹15,000 to the respondents within four weeks. Furthermore, the court permitted the respondent to file an additional or amended written statement if required to address these documents. The petition was thereby disposed of with no order as to costs against the respondent. 

Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Case Title:Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Date of Order:January 27, 2025

Case Number:COMM. ARBITRATION PETITION NO. 791 OF 2024

Neutral Citation:2025:BHC-OS:1340

Court Name:High Court of Judicature at Bombay

Judge:Justice Somasekhar Sundaresan

Facts of the Case:

The dispute arises from a Distribution Agreement dated December 26, 2017, which included an arbitration clause.

Wonderchef Home Appliances Pvt. Ltd., the petitioner, sought an injunction against its distributor, Shree Swaminarayanan Pty Ltd. (Australia), for making disparaging statements.

The respondent had allegedly sent emails criticizing Wonderchef’s products and the handling of their business relationship, potentially damaging the brand’s reputation.

Wonderchef argued that these statements violated Clause 12.2(c) of the Agreement, which required the distributor to maintain a favorable image of the brand.

Issues Raised:

1. Whether the respondent’s emails constituted disparagement and breach of contract.

2. Whether an interim injunction (gag order) could be issued under Section 9 of the Arbitration and Conciliation Act, 1996.

3. How to balance commercial free speech with contractual obligations of maintaining brand reputation.

Reasoning & Analysis by the Court:

Free Speech vs. Contractual Obligation: The court acknowledged that commercial speech is part of free speech and cannot be easily curtailed.

Lack of Concrete Evidence of Damage: The judge noted that Wonderchef, being a reputed brand promoted by a celebrity chef, was unlikely to suffer significant harm from the respondent’s emails.

Scope of Section 9 Powers: The court agreed that interim relief could be granted to protect the subject matter of arbitration, particularly since Clause 12.2(c) explicitly required the respondent to maintain a positive brand image.

Past Arbitration Attempts: The court observed that the respondent had proposed arbitration in 2023, but Wonderchef had not responded positively.

Decision of the Judge:

The court granted an interim injunction for 90 days, restraining the respondent from making any statements that would violate Clause 12.2(c) of the Agreement.

The injunction was conditional, emphasizing that Wonderchef should initiate arbitration within this period.

The arbitral tribunal would have full authority to assess the truthfulness of the respondent’s claims and decide on further actions.

The court declined to impose permanent restrictions on the respondent’s speech, emphasizing that arbitration should resolve the dispute.