Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors

Standard Essential Patents in Focus: The Philips Vs. Sukesh Behl Litigation and Its Impact"

A 230-page judgment has been delivered by Hon’ble Justice Shri Sanjeev Narula of the Delhi High Court on 20th February 2025 in the case of Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors., Case No.: CS(COMM) 423/2016, Neutral Citation: 2025:DHC:1144. The judgment extensively deals with patent infringement in the context of Standard Essential Patents (SEPs). The ruling provides a comprehensive interpretation of Indian patent law concerning SEPs, addressing key issues such as compliance with licensing obligations, the validity of patents, and the enforcement of patent rights against infringing entities. 

This landmark decision not only clarifies the legal position on SEPs but also sets a significant precedent for future cases concerning the licensing and use of standardized technologies in India. The case delves into the essentiality of patents in industry standards and emphasizes the responsibilities of manufacturers in obtaining licenses under Fair, Reasonable, and Non-Discriminatory (FRAND) terms. With an in-depth analysis of claim construction, infringement assessment, and international jurisprudence, this judgment marks a pivotal moment in India's approach to SEP enforcement and patent litigation.

Introduction:Standard Essential Patents (SEPs) play a crucial role in technological advancements, particularly in industries where interoperability and uniformity are key. SEPs are patents that claim inventions essential for implementing a standardized technology, making it impossible to manufacture compliant products without using the patented technology. The present case, Koninklijke Philips N.V. Vs. Maj (Retd) Sukesh Behl & Ors., revolves around the enforcement of SEP rights in the context of DVD technology and the obligations of manufacturers under Indian patent law. This case sets an important precedent in determining patent infringement, compliance with licensing obligations, and the legal framework surrounding SEPs in India.

Factual Background:Koninklijke Philips N.V. (Philips) is a globally recognized company with a significant portfolio of patents in the consumer electronics industry. The present case pertains to Indian Patent No. 218255, which covers a ‘Method of Converting Information Words to a Modulated Signal’ and is integral to the Eight-to-Fourteen Modulation Plus (EFM+) coding used in DVDs. Philips alleged that the defendants, engaged in large-scale DVD replication, used its patented technology without obtaining the necessary license. The defendants included multiple entities—Pearl Engineering, Powercube Infotech, and Siddharth Optical—who were involved in DVD replication and distribution. Philips argued that the suit patent was an SEP as it was essential to the DVD standard set by the DVD Forum, an international consortium responsible for defining DVD technology specifications.

Procedural Background:Philips filed three separate suits against different defendants, which were later consolidated due to substantial similarities in legal and factual issues. The defendants filed counterclaims challenging the validity of the patent and arguing that they did not infringe upon it. The proceedings involved multiple procedural orders, including applications under Order XII Rule 6 of the Code of Civil Procedure for judgment on admissions, which were dismissed. The defendants sought revocation of the suit patent under Section 64 of the Patents Act, citing non-compliance with Section 8 obligations regarding foreign patent disclosures. The Supreme Court, in an earlier stage of litigation, ruled that revocation under Section 64(1)(m) required proof of intent to deceive. The trial included detailed expert testimony on the technical aspects of DVD replication and the essentiality of the suit patent.

Issues Involved in the Case:The primary issues before the court included whether Philips was the rightful proprietor of the suit patent, whether the suit patent was invalid due to lack of novelty and failure to disclose corresponding foreign applications, whether the defendants had infringed upon the suit patent by replicating DVDs using the EFM+ technology, and whether Philips was entitled to damages for the alleged infringement. The court also examined whether the suit patent qualified as an SEP and whether the defendants' manufacturing process fell within its scope.

Submissions of the Parties:Philips contended that the suit patent was an SEP as its claims aligned with international DVD standards, making its use unavoidable for compliant DVD replication. It argued that the defendants, by manufacturing DVDs conforming to these standards, had necessarily used the patented technology. Philips provided expert testimony and forensic examination reports demonstrating that the DVDs produced by the defendants contained the EFM+ modulation. It emphasized that licensing of SEPs must adhere to Fair, Reasonable, and Non-Discriminatory (FRAND) terms, but the defendants had not obtained a license despite multiple communications.

The defendants challenged the validity of the patent on the grounds of non-disclosure of corresponding applications in Malaysia, Turkey, and Taiwan, thereby violating Section 8 of the Patents Act. They argued that the replication process involved the mere duplication of pre-encoded stampers, which did not require the patented EFM+ modulation process. They contended that since they procured pre-encoded stampers from licensed entities, their activities did not constitute infringement. Additionally, they argued that Philips' licensing model was coercive and anti-competitive.

Discussion on Judgments and Their Citations
The court relied on multiple precedents to analyze key legal aspects of the case, including the validity of SEPs, infringement assessment, and compliance with FRAND principles. Some of the key judgments referred to in this case are:

1. Ericsson v. Intex Technologies, (2016) SCC OnLine Del 4064
   This case established that SEPs are enforceable in India and clarified that licensing must adhere to FRAND terms. The court in Philips v. Behl referred to this judgment to assert that Philips’ licensing practices were aligned with global FRAND principles and that the defendants could not claim an anti-competitive stance without engaging in licensing discussions.

2. BSNL v. Telefonaktiebolaget LM Ericsson, (2018) SCC OnLine Del 936
   This ruling affirmed that SEP holders have the right to seek injunctions and damages for infringement, even when FRAND negotiations are ongoing. The court applied this principle to reject the defendants' argument that Philips should have exhausted licensing negotiations before initiating litigation.

3. F. Hoffmann-La Roche Ltd. v. Cipla Ltd., (2012) SCC OnLine Del 1623
   The case underscored the importance of sufficiency of disclosure in patent specifications. The court in the Philips case relied on this judgment to reject the defendants’ claim that the patent lacked sufficient disclosure, ruling that the specification adequately enabled a person skilled in the art to implement the invention.

4. Chemtura Corporation v. Union of India, (2009) SCC OnLine Del 4590
   This case dealt with the issue of non-disclosure of foreign patent applications under Section 8 of the Patents Act. The court held that non-disclosure does not automatically invalidate a patent unless fraudulent intent is proven. The Philips case applied this reasoning to dismiss the defendants’ claim that non-disclosure of corresponding foreign applications in Malaysia, Turkey, and Taiwan should lead to patent revocation.

5. Ravi Kamal Bali v. Kala Tech and Ors., (2008) SCC OnLine Del 707
   This ruling emphasized the burden of proof in establishing patent infringement. The court in Philips v. Behl applied this principle by placing the burden on the defendants to prove that their replication process did not infringe upon the suit patent.

6. Microsoft Corporation v. Motorola Inc., 795 F.3d 1024 (9th Cir. 2015)
   An international precedent where the court outlined the framework for determining FRAND royalty rates. The Delhi High Court referred to this judgment while assessing Philips’ claim for damages and determining a reasonable royalty rate.

Claim Construction and Evaluation of Defendants’ Replication Process:The court undertook a detailed claim construction analysis to determine whether the defendants’ DVD replication process fell within the scope of the patented invention. It interpreted the claims of the suit patent in light of the technical specifications, emphasizing the role of EFM+ modulation in converting information words to a modulated signal. Philips demonstrated through expert evidence that the fundamental steps outlined in the patent claims were embedded in the DVD production process, making it impossible for the defendants to replicate DVDs without infringing on the patent.

The defendants argued that their replication process merely involved copying pre-encoded stampers, which contained pre-existing modulated signals. However, the court noted that the replication process itself involved the reproduction of the patented technology, as the modulation was an inherent part of the final replicated DVDs. The forensic analysis conducted on samples of DVDs produced by the defendants confirmed the presence of EFM+ encoding, reinforcing Philips’ assertion of infringement.

Non-disclosure of corresponding foreign applications under Section 8 of the Patents Act: The court addressed the defendants' challenge regarding non-disclosure of corresponding applications in Malaysia, Turkey, and Taiwan under Section 8 of the Patents Act by emphasizing that revocation under Section 64(1)(m) requires proof of deliberate suppression or fraudulent intent. The court analyzed Philips’ disclosures to the Indian Patent Office and found that while certain omissions had occurred, they were not intentional misrepresentations but administrative lapses. The court cited Chemtura Corporation v. Union of India (2009) SCC OnLine Del 4590, which held that mere failure to disclose foreign applications does not automatically lead to revocation unless there is clear intent to mislead the patent authorities. The ruling reaffirmed that procedural lapses in disclosure do not invalidate a patent unless they are shown to be intentional acts of fraud. The court, therefore, rejected the defendants’ claim and upheld the validity of the patent. Let me know if you want this reasoning incorporated into your document.

Insufficiency of disclosure in specification:The court addressed the defendants' argument regarding insufficiency of disclosure in the patent specification by analyzing whether the complete specification provided adequate information for a person skilled in the art to practice the invention. The defendants contended that the patent did not sufficiently describe the method in a clear and enabling manner, making it inoperative. However, the court held that the disclosure was adequate as it provided detailed steps for converting information words to a modulated signal, a process integral to DVD replication.

The court referred to F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2012) SCC OnLine Del 1623, where it was held that a patent specification must be read as a whole to determine sufficiency. Applying this principle, the court found that the defendants failed to establish that a skilled person could not implement the invention based on the provided disclosure. Expert testimony presented by Philips confirmed that the specification met the sufficiency requirement under Section 64(1)(h) of the Patents Act. The court ultimately ruled that the patent specification was not vague or insufficient, thereby rejecting the defendants’ challenge.

Objection under Section 3(m) and Section 3(k) of the Patents Act, 1970: The defendants objected to the suit patent under Section 3(m) and Section 3(k) of the Patents Act, 1970. Section 3(m) excludes patents on methods of playing a game or performing a mental act, while Section 3(k) prohibits patents on computer programs per se, algorithms, or mathematical methods.The defendants argued that the suit patent covered a mere algorithm used in digital encoding and, therefore, was barred under Section 3(k). They further contended that the method described in the patent involved mental steps, making it ineligible under Section 3(m).

The court rejected these arguments, holding that the patent did not merely claim an abstract algorithm but rather a technical process implemented in hardware for encoding data in DVDs. The court relied on precedents such as Ericsson v. Intex Technologies (2016) SCC OnLine Del 4064, which distinguished between software-driven inventions and patentable technical applications. It ruled that the suit patent contributed to a tangible technical advancement in digital storage, making it eligible for patent protection.

Objection under 64 1(d) and 64 1 (k) of Patent Act 1970:The defendants objected to the suit patent under Section 64(1)(d) and 64(1)(k) of the Patents Act, 1970. The defendants argued that the patent was not an invention under the Patents Act, as it merely involved a method of encoding data that lacked inventive step and did not result in a technical advancement. They further contended that the patent fell within the exclusions of Section 3(k), which prohibits patents on mathematical methods and algorithms.

The court rejected these arguments, stating that the patent did not merely cover an abstract mathematical concept but provided a tangible and technical advancement in data encoding used in DVDs. The court referred to Ericsson v. Intex Technologies (2016) SCC OnLine Del 4064, which held that patents on technical solutions in telecommunications were not barred under Section 3(k). Similarly, the court found that the suit patent involved a technical application and could not be invalidated under Section 64(1)(d) or 64(1)(k).

Key Legal Principles Laid Down in This Case:This case establishes several critical legal principles related to SEPs in India. The court affirmed that SEPs are enforceable rights, and manufacturers using standardized technology must comply with licensing obligations. The decision reinforces that non-disclosure of foreign patent applications does not automatically invalidate a patent unless fraudulent intent is proven. It further clarifies that indirect infringement, such as through the replication of pre-encoded stampers, still constitutes infringement if the final product embodies the patented technology. The ruling upholds the importance of FRAND licensing but also emphasizes that failure to obtain a license does not absolve a party from liability for infringement.

Impact of This Case on Future SEP Litigation:The ruling in this case sets a strong precedent for future SEP litigation in India. It provides clarity on how courts should evaluate infringement claims related to SEPs and reinforces the responsibility of manufacturers to obtain appropriate licenses. The case highlights the necessity of forensic examination and expert testimony in determining SEP infringement. Moving forward, this decision will guide both patentees and implementers in understanding their rights and obligations concerning SEPs, ensuring fair competition and compliance with intellectual property laws in standardized industries.

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

Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another

Case Title:Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another

Date of Judgment:April 20, 1960

Case Number:Civil Appeal No. 257/59

Neutral Citation:1960 AIR 941, 1960 SCR (3) 590, AIR 1960 SUPREME COURT 941, 1964 (1) SCWR 301, 1964 (1) SCJ 266, 1960 3 SCR 590, 1962 (1) SCJ 268

Court:Supreme Court of India

Judges:Justice K.C. Das Gupta, Justice P.B. Gajendragadkar, and Justice K.N. Wanchoo

Introduction:

The case of Satyadhyan Ghosal & Others vs. Sm. Deorajin Debi & Another revolves around the interpretation of the Calcutta Thika Tenancy Act, 1949, and its subsequent amendments. The dispute arose between landlords who had obtained a decree for ejectment and the tenants who sought protection under the tenancy law. The key legal question was whether the deletion of Section 28 of the Calcutta Thika Tenancy Act by a later amendment could be applied retrospectively to pending cases. The judgment also deals extensively with the principle of res judicata in the context of interlocutory orders.

Factual Background:

The appellants, Satyadhyan Ghosal and others, were landlords who had obtained a decree for the eviction of their tenants, Sm. Deorajin Debi and her minor son, on February 10, 1949. Before they could execute the decree, the Calcutta Thika Tenancy Act, 1949, came into force, which provided protection to tenants classified as Thika tenants. The tenants initially attempted to set aside the decree under Order 9 Rule 13 of the Code of Civil Procedure, but their application was dismissed on July 16, 1949.

Subsequently, on September 9, 1949, the tenants applied under Section 28 of the Calcutta Thika Tenancy Act, asserting their status as Thika tenants and seeking rescission of the decree. The landlords opposed the application, and the Munsif ruled against the tenants, holding that they were not Thika tenants.

During the pendency of a revision petition in the High Court, the Calcutta Thika Tenancy Ordinance, 1952, and the Calcutta Thika Tenancy (Amendment) Act, 1953, came into force, which omitted Section 28. Despite this, the High Court ruled in favor of the tenants, declaring them Thika tenants and remanding the matter to the Munsif for fresh consideration. Following this remand, the Munsif rescinded the eviction decree. The landlords then challenged this decision under Section 115 of the Code of Civil Procedure, but the High Court upheld the rescission, ruling that the applicability of Section 28 had already been decided and was therefore res judicata.

Procedural Background:

• Trial Court (Munsif’s Court, Alipore): The tenants’ application under Section 28 of the Calcutta Thika Tenancy Act was dismissed on the ground that they were not Thika tenants.
• High Court (First Round): On revision, the Calcutta High Court reversed the Munsif’s decision, declaring the tenants as Thika tenants and remanding the case for fresh consideration.
• Trial Court (Post Remand): Following the remand, the Munsif rescinded the eviction decree.
• High Court (Second Round): The landlords’ challenge against the rescission was dismissed, with the High Court ruling that the matter was res judicata.
• Supreme Court: The landlords filed an appeal before the Supreme Court, challenging the applicability of Section 28 after its omission by the 1953 Amendment Act.

Issues Involved in the Case:

• Whether the omission of Section 28 of the Calcutta Thika Tenancy Act, 1949, by the 1953 Amendment Act had a retrospective effect on pending cases.
• Whether an interlocutory order, not appealed against, can be challenged in an appeal against the final decision.
• Whether the High Court’s previous ruling on the applicability of Section 28 became res judicata, preventing the landlords from raising the issue again.

Appellants (Landlords):

• The landlords argued that the omission of Section 28 of the original Act meant that the tenants could no longer claim relief under it, even in pending proceedings.
• They contended that the Munsif had acted beyond his jurisdiction in rescinding the eviction decree after the deletion of Section 28.
• They further argued that an interlocutory order, such as the High Court’s order of remand, does not attain finality and could still be challenged at a later stage.

Respondents (Tenants):

• The tenants argued that since the High Court had already ruled that Section 28 applied to their case, the issue was res judicata and could not be reopened.
• They contended that the principle of finality in judicial proceedings required that interlocutory decisions, if not appealed at the time, could not be revisited later.

Discussion on Judgments and Cited Cases:

• The Supreme Court considered several precedents while analyzing the principle of res judicata in relation to interlocutory orders:Maharaja Mohesur Singh v. The Bengal Government (1859) 7 M.I.A. 283 – Established that an appellate court can review an interlocutory order when deciding the final appeal.
• Forbes v. Ameeroonissa Begum (1865) 10 M.I.A. 340 – Held that an interlocutory order that does not terminate proceedings can be challenged in an appeal against the final order.
• Sheonath v. Ramnath (1865) 10 M.I.A. 413 – Confirmed that interlocutory orders that are a step towards final judgment do not attain finality unless specifically appealed.
• Ram Kirpal Shukul v. Mst. Rup Kuari (1883) L.R. 11 I.A. 37 – Differentiated between interlocutory orders that have the effect of a decree and those that do not.
• Mahadeolal Kanodia v. The Administrator-General of West Bengal [1960] 3 S.C.R. 578 – This case, decided on the same day, affirmed that Section 28 of the Calcutta Thika Tenancy Act was not available after its omission by the 1953 Amendment.

Reasoning and Analysis of the Judge:

Justice K.C. Das Gupta, delivering the judgment, held that:The omission of Section 28 meant that tenants could not seek relief under it for pending cases.

The High Court’s order of remand was an interlocutory decision that did not terminate the proceedings and could, therefore, be challenged in an appeal against the final order.

The principle of res judicata did not apply because an interlocutory order, if not forming part of a final decree, does not acquire finality unless appealed against.

Final Decision:

The Supreme Court allowed the appeal, set aside the High Court’s order, and ruled that the Munsif had acted without jurisdiction in rescinding the eviction decree. Consequently, the landlords' eviction decree was restored.

Key Legal Principles Settled in the Case:

• Interlocutory orders that do not terminate proceedings can be challenged in an appeal against the final order.
• Omission of a statutory provision removes its applicability to pending cases unless explicitly saved by the legislature.
• Res judicata does not apply to purely interlocutory orders unless they attain finality as part of a decree.

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

Arpita Agro Products Pvt. Ltd. Vs. ITC Limited

Arpita Agro Products Pvt. Ltd. Vs. ITC Limited: Courts will apply a stricter test when infringer was previous owner of the mark.

Case Title: Arpita Agro Products Pvt. Ltd. & Ors. Vs. ITC Limited

Date of Order: February 21, 2025

Case No.: FAO (OS) (COMM) 289/2024

Neutral Citation: 2025:DHC:1097-DB

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Navin Chawla, Hon'ble Ms. Justice Shalinder Kaur

Introduction:

The case concerns a dispute between ITC Limited and Arpita Agro Products Pvt. Ltd. regarding the alleged infringement and passing off of ITC's trademarks, primarily 'NIMYLE' and 'JOR-POWR'. ITC claimed that Arpita Agro's use of the mark 'POWRNYM' for a similar product was deceptive and misleading. The High Court of Delhi granted an injunction in favor of ITC, restraining Arpita Agro from using the impugned mark.

Detailed Factual Background:

ITC Limited acquired ownership of several trademarks, including 'NIMYLE' and 'JOR-POWR', through an Asset Purchase Agreement and a Brand Assignment Agreement executed in April 2018. These agreements transferred all intellectual property rights, including goodwill, copyright, and brand-related assets from Arpita Agro to ITC for a consideration of over INR 100 crores. Post-assignment, ITC extensively marketed and promoted these trademarks, making them household names in the herbal floor cleaner segment.

In 2023, ITC discovered that Arpita Agro had started selling a floor cleaner under the brand name 'POWRNYM' in a bottle similar to ITC’s 'NIMYLE'. ITC alleged that the appellants deliberately combined elements from both 'NIMYLE' and 'JOR-POWR' to create a deceptively similar mark, intending to capitalize on ITC’s brand reputation. ITC filed a suit seeking an injunction against the use of 'POWRNYM', claiming infringement and passing off.

Detailed Procedural Background:

ITC filed a suit before the Single Judge of the Delhi High Court, which granted an ad-interim ex-parte injunction restraining Arpita Agro from using 'POWRNYM' or any mark deceptively similar to 'NIMYLE' or 'JOR-POWR'. Arpita Agro challenged this order by filing an appeal under the Commercial Courts Act, arguing that 'POWRNYM' was distinct and that the non-compete clause in the agreement had expired. The Single Judge dismissed their application, leading to the present appeal before the Division Bench.

Issues Involved in the Case

Whether 'POWRNYM' was deceptively similar to ITC’s trademarks 'NIMYLE' and 'JOR-POWR'? Whether the use of 'POWRNYM' constituted trademark infringement under Section 29 of the Trade Marks Act, 1999?

Detailed Submissions of the Parties:

Arpita Agro argued that:'POWRNYM' was a distinct mark and not deceptively similar to 'NIMYLE' or 'JOR-POWR'.The word 'NIM' was commonly used in trademarks and was not exclusive to ITC.ITC had not objected to their trademark application published in 2021, implying acquiescence.The non-compete clause in the Asset Purchase Agreement had expired, allowing them to compete freely.

ITC contended that:The appellants, having assigned the trademarks to ITC for significant consideration, had no right to adopt a similar mark.'POWRNYM' was deliberately coined by combining elements from 'NIMYLE' and 'JOR-POWR' to deceive consumers.The trade dress and packaging of 'POWRNYM' were also strikingly similar, increasing the likelihood of confusion.The delay in filing the suit was due to their recent discovery of the infringing use.

Detailed Discussion on Judgments Cited:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 Established the test for deceptive similarity and held that phonetic, visual, and structural similarity should be assessed holistically.The court applied this test and found 'POWRNYM' to be deceptively similar to ITC’s marks.

Wander Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727:Emphasized that appellate courts should not interfere with interim injunctions unless they are perverse or arbitrary.The High Court ruled that the Single Judge’s order was reasonable and did not warrant interference.

Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933:Held that copying the dominant part of a mark constitutes infringement. The court noted that Arpita Agro had copied key elements of ITC’s trademarks, leading to a finding of infringement.

South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953:Discussed the importance of the dominant feature of a trademark in determining infringement. The court found that 'POWRNYM' incorporated dominant features of ITC’s marks, leading to consumer confusion.

Detailed Reasoning and Analysis of the Judge:The High Court observed that Arpita Agro had assigned all rights, goodwill, and associated intellectual property in 'NIMYLE' and 'JOR-POWR' to ITC in 2018, making them the rightful owner. The court held that Arpita Agro’s adoption of 'POWRNYM' was not an independent creation but a deliberate attempt to exploit ITC’s goodwill.The court further ruled that Arpita Agro’s defense regarding the expiration of the non-compete clause was irrelevant to the issue of trademark infringement. It emphasized that even if the agreement allowed competition, it did not permit the use of deceptively similar marks.The court dismissed the argument of delay, stating that ITC acted promptly upon discovering the infringing use. It also noted that the sale of 'POWRNYM' in similar bottles with nearly identical trade dress strengthened ITC’s case.

Final Decision:

The High Court upheld the Single Judge’s order, confirming the injunction against Arpita Agro. It ruled that the use of 'POWRNYM' constituted both infringement and passing off, as it was deceptively similar to ITC’s marks and likely to confuse consumers. The appeal was dismissed.

Key Legal Principles Established:A mark that incorporates dominant features of a registered trademark can be deemed deceptively similar and infringing.  Assignment of a trademark includes an obligation not to adopt similar or derivative marks.The expiration of a non-compete clause does not permit trademark infringement or passing off.  Delay in filing a suit does not bar relief if the infringement was discovered recently. Courts will apply a stricter test when the alleged infringer was the previous owner of the mark.This case reaffirms strong trademark protection principles and the importance of safeguarding acquired goodwill against deceptive market practices.

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

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

Sri Dattatraya v. Sharanappa

Case Title: Sri Dattatraya v. Sharanappa

Date of Order: August 07, 2024

Case Number: Criminal Appeal No. 3257 of 2024 (@ SLP (Criminal) No. 13179 of 2023)

Neutral Citation: 2024 INSC 586

Court: Supreme Court of India

Judge: Hon’ble Justice Augustine George Masih and Hon’ble Justice B.V. Nagarathna

Facts

The appellant, Sri Dattatraya, filed a complaint under Section 138 of the Negotiable Instruments Act, 1881 (NI Act), alleging that the respondent, Sharanappa, had borrowed ₹2,00,000 from him for family necessities and issued a cheque as security for repayment. The cheque was dishonoured due to insufficient funds, and a legal notice was sent to the respondent, but payment was not made. The appellant filed a complaint, and the trial court dismissed the case, acquitting the respondent. The High Court of Karnataka upheld the acquittal. Aggrieved by the decision, the appellant approached the Supreme Court.

Issues

Whether the presumption under Section 139 of the NI Act in favor of the holder of the cheque was rebutted by the respondent.

Whether the High Court erred in upholding the acquittal of the respondent.

Reasoning and Analysis of the Judge

The court analyzed the provisions of the NI Act, particularly Sections 118 and 139, which create a presumption in favor of the cheque holder. However, this presumption is rebuttable. The respondent denied the loan transaction and claimed that the cheque was issued as security in another transaction with a third party. The trial court found contradictions in the appellant’s statements, particularly regarding when the cheque was issued and the absence of financial capacity evidence in the appellant’s income tax returns.

The Supreme Court reaffirmed that the standard of proof for rebutting the presumption is based on the preponderance of probabilities. The respondent successfully raised doubts about the appellant’s claim by highlighting inconsistencies in his version and the absence of supporting financial records. The appellant’s inability to provide clear evidence regarding the loan transaction and the agreement further weakened his case. The court also emphasized that concurrent findings of fact should not be overturned unless there is clear perversity or miscarriage of justice, which was not present in this case.

Decision of the Judge

The Supreme Court dismissed the appeal and upheld the High Court’s judgment, affirming the acquittal of the respondent. The court ruled that the respondent had successfully rebutted the presumption under Section 139 of the NI Act, and the appellant failed to establish the existence of a legally enforceable debt. The appeal was found to be devoid of merit, and all pending applications were disposed of accordingly.

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.