K. Laxmanan vs. Thekkayil Padmini

K. Laxmanan vs. Thekkayil Padmini & Ors.:Non-filing of a replication does not amount to admission of the written statement’s averments

Case Title: K. Laxmanan vs. Thekkayil Padmini & Ors.

Date of Order: 3rd December, 2008

Case Number: Civil Appeal No. (Arising out of SLP(C) No. 21251 of 2006)

Neutral Citation: AIR 2009 SUPREME COURT 951, (2009) 1 SCC 354

Name of Court: Supreme Court of India

Name of Judges: Hon'ble Justices Mukundakam Sharma and Justice Tarun Chatterjee

Introduction:

The case of K. Laxmanan vs. Thekkayil Padmini & Ors., decided by the Supreme Court of India on 3rd December 2008, primarily dealt with issues concerning the proof of a Will and a Gift Deed in an inheritance dispute. It also addressed a significant legal question: whether the non-filing of a replication amounts to an admission of the averments made in a written statement.

The dispute arose when the respondent-plaintiff, one of the daughters of the deceased, filed a suit seeking partition of the properties left behind by her father. The appellant, the son of the deceased, claimed exclusive ownership of certain properties on the basis of a Gift Deed and a Will executed in his favor. The case progressed through multiple judicial forums, ultimately leading to a Supreme Court ruling that reinforced established principles of civil procedure and evidence law, particularly in relation to pleadings, burden of proof, and the validity of testamentary documents.

Factual Background:

The case involved the estate of Chathu, who passed away in 1975, leaving behind three daughters and a son, K. Laxmanan (the appellant). The respondent, one of Chathu’s daughters, filed a suit for partition, claiming that all legal heirs were entitled to an equal one-fourth share of the properties left behind by their father.

The appellant contested this claim, arguing that several properties were not subject to partition as they had been transferred to him exclusively through a Gift Deed (Ext. B2) and a Will (Ext. B3), both executed by Chathu on 26th April 1974. According to the appellant, the Gift Deed conferred ownership of items 4 and 5 in the suit property upon him, while the Will bequeathed items 6 to 8 and 10 to 12 to him. He also contended that the properties described as items 1 to 3 and 13 to 14 were assigned to him through other documents, namely Ext. B1 and Ext. B4.

The plaintiff/respondent challenged the authenticity of both the Will and the Gift Deed, alleging that they were surrounded by suspicious circumstances and had not been properly executed. The respondent did not file a formal replication specifically denying the claims made in the written statement but contested the validity of these documents in the course of legal proceedings.

Procedural Background:

The case was initially heard by the Trial Court, which ruled in favor of the appellant. It held that the Gift Deed and the Will had been properly proved and concluded that only item No. 9 in the suit schedule was available for partition. The court found that the appellant had exclusive rights over the remaining properties.

The First Appellate Court, however, reversed this decision, holding that the Gift Deed and the Will were not duly proved and were, therefore, invalid. It ruled that all the properties in question (except for items 1 to 3 and 13 to 14, which were assigned through other valid documents) were available for partition.

The Kerala High Court, in Second Appeal, upheld the findings of the First Appellate Court, reinforcing that the appellant had failed to discharge his burden of proving the execution and validity of the disputed documents. The court also rejected the contention that the non-filing of a replication amounted to an admission of the appellant’s claims.

The matter was then brought before the Supreme Court of India.

Issues Involved in the Case:

Whether the non-filing of a replication by the plaintiff amounts to an admission of the written statement’s averments, particularly regarding the validity of the Will and Gift Deed?

Whether the Will (Ext. B3) was validly executed and could be relied upon by the appellant.

Whether the Gift Deed (Ext. B2) was duly proved in accordance with law and whether its execution could be considered legally sound.

Whether the burden of proof lay on the appellant to establish the authenticity of the disputed documents.

Detailed Submission of Parties:

The appellant argued that the plaintiff had not specifically denied the execution of the Gift Deed and Will in a replication, and as a result, the claims made in the written statement should be deemed admitted. He relied on Section 68 of the Indian Evidence Act, 1872, which mandates proof of attested documents, and contended that this requirement applied only to Wills and not to Gift Deeds. The appellant also asserted that the execution of the Gift Deed was impliedly admitted since the respondent had not explicitly denied it in her pleadings.

The respondent, on the other hand, argued that mere non-filing of a replication does not constitute an admission of the written statement’s claims. She submitted that the validity of the Will and Gift Deed had been specifically disputed in affidavits filed during interlocutory proceedings and that evidence had been led on these issues in the trial. The respondent also emphasized that the appellant had failed to prove the due execution and attestation of the Will as required under Section 68 of the Evidence Act.

Discussion on Judgments:

The Supreme Court referred to several landmark cases on the law of pleadings and the proof of documents.

In Shashi Kumar Banerjee v. Subodh Kumar Banerjee [AIR 1964 SC 529] and Pushpavathi v. Chandraraja Kadamba [(1973) 3 SCC 291], the court had previously held that a Will must be proved with clear and cogent evidence, particularly when suspicious circumstances exist. The Supreme Court reiterated this principle, stating that the onus was on the appellant to remove suspicions surrounding the execution of the Will.

In Rosammal Issetheenammal Fernandez v. Joosa Mariyan Fernandez [(2000) 7 SCC 189], the court had ruled that if the execution of a document is specifically denied, the burden of proof remains on the party relying on the document. The Supreme Court applied this ruling, holding that the burden was on the appellant to prove the validity of both the Will and the Gift Deed.

Reasoning and Analysis of Judge:

The Supreme Court held that non-filing of a replication does not amount to an admission of the written statement’s contents. Pleadings under the Civil Procedure Code consist of a plaint and a written statement, and a replication is not mandatory unless specifically directed by the court.

Non-filing of a replication does not amount to admission of the written statement’s averments. 

A Will must be proved with clear evidence, especially when surrounded by suspicious circumstances. Section 68 of the Evidence Act mandates examination of an attesting witness to prove a document’s execution. The burden of proof lies on the propounder of a disputed document to establish its genuineness. A registered Gift Deed does not automatically become valid unless properly proved in court.

The court further observed that since the execution of the Will and Gift Deed was actively contested during trial and evidence was led on these issues, the appellant’s claim that they should be deemed admitted due to non-filing of a replication was without merit.

Regarding the validity of the Will, the court found that the attesting witnesses were not examined, and there were inconsistencies in the signatures of the testator. The suspicious circumstances surrounding the Will had not been adequately addressed by the appellant.

As for the Gift Deed, the Supreme Court ruled that under Section 68 of the Evidence Act, it must be proved by at least one attesting witness if execution is specifically denied. Since no attesting witness had been examined, the Gift Deed was not legally proved.

Final Decision:

The Supreme Court dismissed the appeal, affirming the findings of the Kerala High Court and the First Appellate Court. It held that the Will and Gift Deed were not duly proved and that the properties were, therefore, available for partition. The ruling clarified that mere non-filing of a replication does not result in an admission of the written statement's claims.

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

Atlas Cycle Industries Ltd. Vs Hind Cycles Limited

Atlas Cycle Industries Ltd. Vs Hind Cycles Limited:Proof of actual deception is unnecessary in an infringement claim; likelihood of confusion is sufficient

Case Title: Atlas Cycle Industries Ltd. vs Hind Cycles Limited

Date of Order:April 28, 1972

Case No.:Regular First Appeal No. 18 of 1959

Citation:ILR 1973 Delhi 393

Name of Court:Delhi High Court

Name of Judge:Justice T.V.R. Tatachari

Introduction:

The case revolves around a trademark dispute between Atlas Cycle Industries Ltd. and Hind Cycles Limited concerning the use of the word STAR in their respective trademarks. Atlas Cycle, which had acquired the registered trademark EASTERN STAR, alleged that Hind Cycles' use of the trademark ROYAL STAR amounted to infringement and passing off. The case provides an important precedent on the principles of deceptive similarity, consumer perception, and the protection of prior trademark rights.

Factual Background:

Atlas Cycle Industries Ltd. was incorporated in 1950 and acquired rights over the trademark EASTERN STAR from its predecessor Janki Dass & Co., which had been importing bicycles into India under this mark since 1938. Janki Dass & Co. had secured registration for both the monogram and the word mark EASTERN STAR in 1943. Upon Atlas’s incorporation, all rights to these trademarks were assigned to it, and the company continued using the marks extensively.

By 1956, Atlas had achieved significant sales, manufacturing approximately one lakh bicycles per year. Due to the popularity of EASTERN STAR bicycles, customers began referring to them as STAR CYCLES. Various parties attempted to use similar marks like BLUE STAR, ROYAL STAR, STAR BICYCLE, ARABIAN STAR, and WESTERN STAR, against whom Atlas successfully obtained injunctions.

In 1959, Atlas learned that Hind Cycles was using ROYAL STAR for its bicycles and had applied for its registration under Application No. 177777. Atlas filed an opposition before the Trade Marks Registry, Bombay, and subsequently initiated a suit against Hind Cycles, seeking an injunction against the use of ROYAL STAR, cancellation of its application, damages, and delivery of infringing goods.

Procedural Background:

The case was first heard by the District Judge, Delhi, who dismissed Atlas’s suit on November 27, 1961. The trial court ruled that ROYAL STAR was not deceptively similar to EASTERN STAR and that Atlas had failed to prove actual consumer deception. The trial court also observed that Atlas could not claim exclusive rights over the word STAR alone, as its trademark was a combination of EASTERN and STAR.

Atlas challenged this decision in the Delhi High Court by filing Regular First Appeal No. 18 of 1959.

Issues Involved in the Case:

Whether Atlas Cycle Industries Ltd. was the proprietor of the registered trademarks EASTERN STAR and its monogram.

Whether Hind Cycles' use of the trademark ROYAL STAR constituted an infringement of Atlas's registered trademark.

Whether Hind Cycles had passed off its goods as those of Atlas Cycle Industries Ltd.

Whether Atlas was entitled to an injunction, damages, and cancellation of Hind Cycles’ trademark application.

Submission of Parties:

Atlas argued that the use of ROYAL STAR was deceptively similar to EASTERN STAR, especially since consumers already referred to EASTERN STAR bicycles as STAR CYCLES. The phonetic and structural similarities between the two marks were likely to confuse consumers. Atlas also emphasized that its extensive prior use gave it exclusive rights over the word STAR in the context of bicycles.

Hind Cycles contended that EASTERN STAR and ROYAL STAR were distinct, as the words EASTERN and ROYAL created clear differentiation. It argued that Atlas could not monopolize the word STAR, which was common in the trade and used by multiple manufacturers. Hind Cycles also pointed out that the trial court correctly held that no actual confusion had been proven.

Discussion on Judgments Cited and Their Context:

The court referred to several landmark cases on trademark infringement and passing off.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 – The Supreme Court distinguished between infringement and passing off, holding that in an infringement action, it is enough to show similarity between the marks; proof of actual deception is unnecessary. This principle was applied in the present case.

Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 – This case emphasized that in determining deceptive similarity, the perception of an average consumer with imperfect recollection is crucial. The Delhi High Court applied this principle to assess whether ROYAL STAR was likely to confuse consumers who recognized EASTERN STAR bicycles as STAR CYCLES.

Coca-Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd., AIR 1942 PC 402 – This case discussed phonetic similarity in trademarks. The Delhi High Court referred to it while analyzing the structural and phonetic resemblance between EASTERN STAR and ROYAL STAR.

Modi Sugar Mills Ltd. v. Tata Oil Mills Co. Ltd., AIR 1943 Lahore 196 – This case established that the test for confusion is whether an ordinary purchaser exercising ordinary caution would likely be deceived. The Delhi High Court applied this test in evaluating the likelihood of confusion.

James Chadwick & Bros. Ltd. v. National Sewing Thread Co. Ltd., AIR 1951 Bom 147 – The Bombay High Court held that the essential feature of a trademark must be considered when assessing deceptive similarity. The Delhi High Court adopted this reasoning to conclude that STAR was the dominant feature in both marks.

Reasoning and Analysis of Judge:

The High Court overturned the trial court’s ruling, emphasizing that the words EASTERN STAR and ROYAL STAR must be considered in their entirety. However, the presence of STAR as a common dominant feature created a likelihood of confusion.

The court observed that an average consumer with imperfect recollection was likely to associate ROYAL STAR with EASTERN STAR, particularly given that EASTERN STAR bicycles were already recognized as STAR CYCLES. The phonetic similarity of both marks ending in STAR increased the potential for deception.

The High Court also considered the commercial reality that Atlas had built a reputation over two decades, during which no other cycle manufacturer had used a STAR mark until Hind Cycles introduced ROYAL STAR. This reinforced the likelihood that consumers would assume a connection between the two brands.

The court further rejected Hind Cycles' argument that STAR was common in the trade, noting that Atlas had taken successful legal action against other parties attempting to use similar marks.

Final Decision:

The High Court allowed the appeal and set aside the trial court’s decision. It granted a permanent injunction restraining Hind Cycles from using ROYAL STAR for bicycles and from proceeding with its trademark application. Atlas was also awarded costs.

Law Settled in This Case:

The dominant feature of a trademark plays a crucial role in determining deceptive similarity.

Phonetic and structural resemblance between marks must be assessed from the perspective of an average consumer with imperfect recollection.

Prior use and consumer association with a trademark strengthen the case for infringement.

The presence of a common element in trademarks (such as STAR) does not necessarily dilute exclusivity if one party has established prior and extensive use.

Proof of actual deception is unnecessary in an infringement claim; likelihood of confusion is sufficient.

Trademark protection extends to how a mark is perceived in the market, including informal references by consumers.

This case remains a significant precedent in Indian trademark law, reinforcing the principles of deceptive similarity and consumer perception in infringement disputes.

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

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

Moonshine Technology Private Limited Vs. Ashok Kumar & Ors

Case Title: Moonshine Technology Private Limited Vs. Ashok Kumar & Ors.

Date of Order: 14.02.2025

Case No.: CS(COMM) 124/2025

Court: Delhi High Court

Judge: Hon'ble Ms. Justice Mini Pushkarna

Facts

The plaintiff, Moonshine Technology Private Limited, a key player in the Indian gaming industry, filed a suit against multiple defendants, including unknown persons operating under the name "Ashok Kumar" and domain name registrants (DNRs). The plaintiff alleged that the defendants had registered infringing domain names that closely resembled its well-known “BAAZI” brand and were using these domains to promote illegal gambling and betting services. The plaintiff further contended that such activities amounted to trademark infringement, passing off, and unfair trade practices, causing irreparable harm to its reputation and business. The suit sought a perpetual and mandatory injunction, along with damages.

Issues

The key issues before the Court were whether the unauthorized use of the plaintiff’s trademark “BAAZI” by the defendants in domain names and online platforms constituted trademark infringement and unfair competition. Another issue was whether an injunction should be granted to prevent the defendants from continuing their infringing activities. Additionally, the Court had to consider whether domain name registrants (DNRs) should be held responsible for allowing the registration and use of such infringing domain names.

Reasoning

The Court found that the plaintiff had made out a strong prima facie case of trademark infringement. It observed that the defendants were misleading consumers by using deceptively similar domain names and engaging in illegal gambling activities, thereby tarnishing the plaintiff’s goodwill. The Court also noted that the DNRs played a significant role in enabling such infringing activities by registering and managing these domain names while offering privacy protection to registrants.

The Court considered the relevance of government advisories issued by the Ministry of Information and Broadcasting and other regulatory bodies. Specifically, the advisory dated 21.03.2024 warned against endorsements and advertisements of illegal offshore betting and gambling platforms. The advisory emphasized that intermediaries, including domain name registrants and online platforms, must ensure compliance with Indian laws and refrain from promoting such activities. Despite these advisories, the defendants continued to misuse the "BAAZI" trademark to deceive customers and promote illegal gambling services, making judicial intervention necessary. The Court emphasized that such actions violated established legal norms and public policy, necessitating strict action against the infringers.

Decision

The Court granted an ex parte ad-interim injunction, restraining defendant nos. 1 to 5 from using, modifying, or transferring the infringing domain names. It directed defendant nos. 6 to 8 (DNRs) to suspend access to the infringing domains and disclose the registrants’ details within one week. The Court also acknowledged the importance of enforcing government advisories to curb the proliferation of illegal gambling platforms. The case was scheduled for the next hearing on 28.07.2025.

Ozone Spa Pvt. Ltd. Vs. Mr. Arvind

Case Title:Ozone Spa Pvt. Ltd. Vs. Mr. Arvind & Ors.

Date of Order: 11th February 2025

Case No.: CS(COMM) 875/2022

Neutral Citation: 2025:DHC:1213

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Ozone Spa Pvt. Ltd. filed a suit against Mr. Arvind and others seeking a permanent injunction to restrain them from infringing its registered trademarks, engaging in unfair competition, and misrepresenting their services using deceptively similar marks. The plaintiff has been operating under the trademarks "OZONE," "O3," and "ozO3ne" since 2001 and has several trademark and copyright registrations for these marks. The plaintiff operates luxury health clubs, gyms, and spas across multiple cities in India and has gained significant goodwill and reputation. In October 2022, the plaintiff discovered that the defendants were operating gyms and fitness centers under the infringing mark "O3 Gym & Fitness Centre," which closely resembled the plaintiff’s brand. The plaintiff claimed that the defendants' use of identical and deceptively similar marks for similar services misled consumers and diluted its brand.

Issue

The key issue before the court was whether the defendants' use of the mark "O3" for gym and fitness services constituted trademark infringement and passing off. The court had to determine whether the defendants' marks were deceptively similar to the plaintiff’s registered marks and whether such use was likely to cause confusion among consumers.

Reasoning and Analysis of the Judge

The court found that the plaintiff had been using the "OZONE" and "O3" marks continuously since 2001 and had acquired significant goodwill in the health and fitness industry. The defendants’ marks were visually and phonetically similar, and they operated in the same industry, targeting similar consumers. The court observed that the defendants' branding, layout, and signage closely resembled the plaintiff’s marks, leading to a likelihood of confusion. The defendants initially denied infringement but later undertook to discontinue the use of the "O3" mark and rebranded as "A3." The court held that the defendants had intentionally adopted the impugned marks to benefit from the plaintiff’s reputation. Reports from Local Commissioners confirmed the unauthorized use of the infringing marks and the presence of infringing materials at the defendants’ premises.

Decision of the Judge

The court granted a permanent injunction restraining the defendants from using the "O3" mark or any deceptively similar mark in relation to gym, fitness, and spa services. The court also awarded damages of ₹10 lakh against Defendant No. 1 and ₹5 lakh against Defendant No. 4, to be paid within three months, failing which interest at 6% per annum would apply. The court directed the drawing up of a decree and disposed of the suit.

Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Case Title:Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Date of Order: 3rd February 2025

Case No.: C.O. (COMM.IPD-TM) 121/2024

Neutral Citation: 2025:DHC:838

Name of Court: High Court of Delhi

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

Fact

Oracle America, Inc. filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the trademark registered under No. 5420304 in Class 41 in the name of Mr. Sandeep Khandelwal. Oracle, a global technology company operating in over 175 countries, has been using the mark "JAVA" since 1996 for computer software and related services. The mark "JAVA" is widely recognized and has been registered in India and multiple countries. Oracle also owns the domain www.java.com, operational since 1996. The petitioner discovered that the respondent had obtained registration for a deceptively similar mark incorporating "JAVA" for education and training services. Oracle opposed this registration, arguing that it was likely to confuse consumers and unfairly benefit from Oracle’s established reputation. Despite receiving notice, the respondent failed to appear or file a reply, leading to an ex-parte decision.

Issue

The main issue before the court was whether the respondent’s trademark registration was liable to be canceled due to its similarity with Oracle’s well-established "JAVA" trademarks. The court had to determine if the mark was deceptively similar, lacked distinctiveness, and was registered in bad faith to exploit the petitioner’s goodwill.

Reasoning and Analysis of the Judge

The court found that Oracle was the prior adopter and registered proprietor of the "JAVA" mark, with registrations dating back to 1995. The judge noted that the respondent’s mark entirely subsumed "JAVA" and was used for identical services in Class 41, making it highly likely to cause confusion. The court held that the registration of the impugned mark violated Sections 9, 11, and 18 of the Trade Marks Act, as it was neither distinctive nor capable of distinguishing the respondent’s services from those of Oracle. Citing precedents, the court emphasized that merely adding minor variations to a well-known mark does not eliminate the risk of confusion. The court concluded that the respondent had dishonestly adopted the mark to mislead consumers and benefit from Oracle’s longstanding reputation.

Decision of the Judge

The court allowed the rectification petition and directed the Trade Marks Registry to remove the respondent’s registered mark from the Register of Trade Marks. The court ruled that the impugned mark was deceptively similar to Oracle’s trademarks and had been registered in contravention of trademark laws. The Trade Marks Registry was instructed to ensure compliance by forwarding a copy of the order for implementation.

Mankind Pharma Vs. Lemford Biotech Pvt. Ltd.

Case Title:Mankind Pharma Vs. Lemford Biotech Pvt. Ltd.

Date of Order: 18th February 2025

Case No.: C.O. (COMM.IPD-TM) 350/2022

Neutral Citation: 2025:DHC:1232

Name of Court: High Court of Delhi

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

Fact

Mankind Pharma filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the trademark "LENOKIND" registered by Lemford Biotech Pvt. Ltd. in Class 5 for pharmaceutical products. Mankind Pharma, incorporated in 1991, claimed prior rights over the word "KIND," forming part of its extensive family of trademarks, including "MANKIND." The company asserted that it had built immense goodwill over the years and had multiple trademark registrations in India and other countries, establishing "KIND" as a distinctive identifier of its brand. The petitioner alleged that the respondent’s registration of "LENOKIND" was deceptive and likely to cause confusion among consumers. Despite receiving court notices, the respondent failed to file a reply or appear in court, leading to an ex-parte decision.

Issue

The main issue before the court was whether the registration of "LENOKIND" by Lemford Biotech Pvt. Ltd. infringed upon the petitioner’s established rights over the "KIND" family of trademarks and whether the mark should be removed from the Register of Trade Marks under Section 57 of the Trade Marks Act, 1999.

Reasoning and Analysis of the Judge

The court noted that Mankind Pharma had been using "MANKIND" and the "KIND" family of marks since 1986, well before the respondent’s claimed use of "LENOKIND" in 2017. The court emphasized that the word "KIND" had acquired a secondary meaning exclusively associated with the petitioner due to its continuous and extensive use in the pharmaceutical industry. Referring to a previous decision in Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd., the court reiterated that a well-established family of marks enjoys broader protection, and merely altering the prefix while retaining "KIND" does not negate the likelihood of confusion. The judge concluded that the respondent’s use of "LENOKIND" was intended to trade upon the goodwill of Mankind Pharma and mislead consumers into believing an association between the two companies.

Decision of the Judge

The court allowed the rectification petition and directed the Trade Mark Registry to remove the registration of "LENOKIND" (Trademark No. 4225327) from the Register of Trade Marks. The court held that the respondent had dishonestly adopted the mark to benefit from the reputation of the petitioner’s brand, and its continued presence on the register was in violation of trademark laws. 

Eveready Industries India Ltd. Vs. United Timber Works

Case Title:Eveready Industries India Ltd. Vs. United Timber Works

Date of Order: 21st February 2025

Case No.: CS(COMM) 152/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Eveready Industries India Ltd. filed a suit against United Timber Works and others, seeking a permanent injunction for trademark infringement, passing off, unfair trade practices, rendition of accounts, and damages. The plaintiff, a well-known brand in India since 1905, has been using the "EVEREADY" trademark for batteries, flashlights, and other goods. It alleged that the defendants had unlawfully used the "EVEREADY" mark for plywood products and had filed trademark applications for deceptively similar marks. The plaintiff discovered the defendants’ infringing activities in February 2025 through their website, which prominently displayed the mark "EVEREADY." The plaintiff claimed that such usage misled consumers and diluted the goodwill of its well-established brand.

Issue

The primary issue before the court was whether the defendants’ use of the "EVEREADY" mark for plywood products amounted to trademark infringement and passing off. The court had to determine whether the defendants’ actions created consumer confusion, unfairly exploited the plaintiff’s goodwill, and violated the plaintiff’s statutory and common law rights.

Reasoning and Analysis of the Judge

The court observed that Eveready’s trademark had been in continuous use for over a century and had been declared a well-known mark by the Intellectual Property Appellate Board in 2020. The judge noted that the defendants had no legitimate explanation for adopting an identical mark and were likely attempting to mislead consumers. The court found that the balance of convenience lay in favor of the plaintiff and that the plaintiff would suffer irreparable harm if the defendants were allowed to continue using the "EVEREADY" mark. The defendants’ actions constituted a clear case of trademark infringement and passing off.

Decision of the Judge

The court granted an ex-parte ad-interim injunction in favor of Eveready Industries, restraining the defendants from using the "EVEREADY" mark or any deceptively similar mark for their products. The court clarified that the defendants were free to conduct business under any other name that was not identical or confusingly similar to the plaintiff’s trademark. The matter was scheduled for further proceedings, and the defendants were directed to file their responses.

Darzi India LLP Vs. Kafil Ahmed

Darzi India LLP Vs. Kafil Ahmed

Date of Order: 20th February 2025

Case No.: CS(COMM) 151/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Darzi India LLP filed a suit against Kafil Ahmed for trademark infringement, passing off, dilution, and unfair competition. The plaintiff has been using the trademark "DARZI" since 1981 and has secured multiple trademark registrations for the mark. The plaintiff claimed that the defendant was using the infringing marks "Kafil The Darzi" and "kafilthedarzi@gmail.com," which incorporated the plaintiff’s registered mark. The plaintiff alleged that the defendant’s use of an identical and deceptively similar mark misled consumers and unfairly exploited the goodwill associated with the "DARZI" brand. The plaintiff initially issued a cease-and-desist letter, offering a resolution where the defendant could use the mark "KAFIL DARZI" but not "THE DARZI."

Issue

The primary issue before the court was whether the defendant’s use of the phrase "Kafil The Darzi" constituted trademark infringement and passing off. The plaintiff contended that the defendant's adoption of the impugned mark was intentional and aimed at benefiting from the established reputation of "DARZI." The court had to determine if the defendant’s usage led to consumer confusion and unfair competition.

Decision

The court found that the plaintiff’s mark "DARZI" had acquired significant goodwill over decades, and the defendant’s use of a confusingly similar mark created a likelihood of deception. The defendant agreed to modify its mark and delete the word "THE" while retaining "KAFIL DARZI." The court decreed in favor of the plaintiff and directed the defendant to make necessary changes to its mark and associated branding within eight weeks. The defendant was prohibited from using "DARZI" as a standalone mark, ensuring the plaintiff’s exclusive rights over it. The suit was disposed of accordingly.

Abbott Healthcare Pvt. Ltd. Vs. Vinsac Pharma

Case Title:Abbott Healthcare Pvt. Ltd. Vs. Vinsac Pharma

Date of Order: 17th February 2025

Case No.: CS(COMM) 336/2020

Neutral Citation: 2025:DHC:1264

Name of Court: High Court of Delhi

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

Brief Facts:

Abbott Healthcare Pvt. Ltd., a subsidiary of Abbott Laboratories, filed a suit against Vinsac Pharma for trademark and copyright infringement. The plaintiff alleged that the defendants were manufacturing and selling chewable Vitamin C tablets under the mark "LIMEECEE," which was deceptively similar to Abbott’s registered trademark "LIMCEE." The plaintiff claimed exclusive rights over the name and packaging, asserting that the defendants were passing off their products by copying the mark and packaging design.

Issues:

The primary issue before the court was whether the defendants’ use of the mark "LIMEECEE" and its similar packaging constituted trademark infringement, copyright infringement, and passing off.

Reasoning and Analysis of the Judge:

The court found that the plaintiff had been using the mark "LIMCEE" since 1977 and had obtained trademark registration for it in 2001. The packaging was also protected under copyright law. The defendants, by adopting a structurally and phonetically similar mark with a similar color scheme, attempted to ride on the goodwill of the plaintiff’s product. The court noted that such deceptive similarity posed a significant risk to public health, especially as the product was medicinal. The defendants failed to provide any plausible explanation for adopting the infringing mark and packaging.

Decision of the Judge:

The court granted a permanent injunction against the defendants, restraining them from manufacturing, selling, or advertising products under the mark "LIMEECEE." Additionally, the court awarded damages of ₹2,00,000 in favor of the plaintiff and directed the defendants to remove online listings of the infringing product. The plaintiff was also allowed to file a bill of costs for litigation expenses.

Lifestyle Equities Vs Amazon Technologies, Inc.

Lifestyle Equities Vs Amazon Technologies, Inc.Trademark infringement liability extends to e-commerce brand owners if they directly authorize and control infringing activities.

Case Title: Lifestyle Equities Vs Amazon Technologies, Inc.

Date of Order: 25th February 2025

Case No.: CS(COMM) 443/2020

Neutral Citation:2025:DHC:1231

Court: High Court of Delhi

Judge: Justice Prathiba M. Singh, H. J. 

Introduction:

This case involves a trademark infringement dispute between Life Style Equities CV, the owner of the "Beverly Hills Polo Club (BHPC)" brand, and Amazon Technologies, Inc. along with its associated entities. The plaintiffs alleged that the defendants had engaged in unauthorized use of the BHPC logo, which was sold under Amazon’s private label “Symbol.” The case primarily revolved around e-commerce trademark infringement, intermediary liability, and damages assessment.

Factual Background:

Life Style Equities CV has been using the "Beverly Hills Polo Club" (BHPC) trademark since 1982 and has a strong presence in India since 2007. The plaintiffs entered into various licensing agreements for the distribution and sale of BHPC products in India and globally.

In May 2020, the plaintiffs discovered that Amazon was selling products under its private label “Symbol” with a logo deceptively similar to the BHPC mark on its e-commerce platform www.amazon.in. Upon purchasing the infringing products, they found that the logo was an imitation of their BHPC logo. The plaintiffs claimed that this usage was misleading customers and damaging their goodwill.

Procedural Background:

On 12th October 2020, the Delhi High Court granted an ad-interim injunction restraining Amazon Technologies and Cloudtail India Pvt. Ltd. from selling infringing products. On 20th April 2022, Amazon Technologies failed to appear in court and was proceeded against ex-parte. On 5th September 2022, Cloudtail India Pvt. Ltd. expressed willingness to suffer a decree of injunction and pay reasonable damages. On 25th May 2023, plaintiffs were permitted to lead ex-parte evidence. On 5th July 2023, witness evidence was recorded via video conferencing. On 12th July 2024, final hearing reserved. On 25th February 2025, judgment delivered.

Issues Involved in the Case:

Whether Amazon’s use of a deceptively similar logo on its “Symbol” brand products infringed the BHPC trademark. Whether Amazon, as an intermediary and brand owner, could be held responsible for the infringing sales. Whether the plaintiffs were entitled to compensatory and punitive damages due to loss of business and goodwill. Whether Amazon could claim exemption from liability under intermediary safe harbor provisions.

Submissions of the Parties:

Amazon’s sale of products with an infringing logo under the “Symbol” brand misled consumers. Defendant No.1 (Amazon Technologies) was responsible for controlling and licensing the use of the "Symbol" brand to Defendant No.2 (Cloudtail India Pvt. Ltd.), making them directly liable for infringement. The plaintiffs suffered financial losses due to the unauthorized sale of infringing products from 2015-2020, leading to significant business losses. They relied on expert testimony (PW-3) to establish lost royalties of USD 33.78 million.

Cloudtail India Pvt. Ltd. (Defendant No.2) acknowledged liability, agreed to an injunction, and provided sales data. Amazon Technologies Inc. (Defendant No.1) chose not to appear in court and was proceeded against ex-parte. Amazon Seller Services (Defendant No.3) claimed intermediary protection and was removed from the case.

Discussion on Judgments and Legal Citations:

Times Incorporated v. Lokesh Srivastava, 116 (2005) DLT 569 was cited by plaintiffs to argue for punitive damages. The court rejected this precedent, stating punitive damages should not be awarded arbitrarily. Mathias v. Accor Economy Lodging, 347 F.3d 672 (7th Cir. 2003) was referred to by plaintiffs to argue that punitive damages prevent commercial wrongdoers from profiting through unlawful activities. Lifestyle Equities v. Amazon UK Services Ltd., [2024] UKSC 8, a UK Supreme Court case involving Amazon and Lifestyle Equities on a similar issue, discussed how Amazon systematically engages in brand infringement. Hindustan Unilever Limited v. Rickett Benckiser India Ltd., ILR (2014) II Delhi 1288 was used by plaintiffs to argue that damages should be awarded based on lost business projections.

Reasoning and Analysis by the Judge:

Amazon Technologies was the registered owner of the "Symbol" trademark and had directly authorized Cloudtail India Pvt. Ltd. to sell the infringing products. The court applied the Triple Identity Test (identical mark, goods, and trade channels) and found that infringement was clearly established. 

Amazon deliberately evaded accountability by wearing multiple hats (as an intermediary, a retailer, and a brand owner), making it liable for damages. The court awarded damages based on lost royalties, increased advertising costs, and brand dilution.

Basis for Calculating Damages

The damages awarded in this case were calculated based on multiple factors, including lost royalties, increased advertising costs, and brand dilution. The court relied on expert testimony and financial projections to determine the appropriate compensation. The Trademark License Agreement (TLA) dated 26th November, 2012, executed between Plaintiff No.2 (Lifestyle Licensing B.V.) and Major Brands India Pvt. Ltd., was considered a reliable benchmark. Under the TLA, royalties were calculated at 7.5% on the gross sales, with minimum sales requirements and projected sales targets. Since the infringement took place between 2015-2020, the sales decline was compared with the expected performance under the TLA.

Before infringement, the BHPC brand in India exceeded its projected sales target, showing strong business growth. The defendants' infringing activities started in 2015 and continued until 2020, leading to a significant sales drop in India compared to BHPC's GCC region, which had no infringement and saw a tenfold increase in sales. Plaintiffs' expert witness (PW-3) calculated lost royalties using two models: Minimum Sales Model ($21.85 million) and Business Plan Sales Model ($33.78 million). The court accepted the business plan model, as the brand was expanding before infringement.

Plaintiffs' apparel was priced at ₹2,500 - ₹4,500, but the defendants' infringing products were sold on Amazon at ₹300 - ₹400. This devalued the brand’s reputation, leading to a perception that BHPC was a “cheap” brand. Due to this, the plaintiffs lost market value and consumer trust, forcing them to spend more on advertising and rebranding. The plaintiffs had to increase their marketing efforts to counteract the damage, leading to an award of USD 5 million for additional advertising expenses.

The plaintiffs planned to expand into Bangladesh, Sri Lanka, and Pakistan, expecting to generate at least half the revenue projected for India. This expansion failed due to the infringement, resulting in USD 10.93 - 16.89 million in lost earnings. Plaintiffs had planned a joint venture and Initial Public Offering (IPO) with their Indian retail partner. Due to infringement, this opportunity collapsed, leading to USD 50 million in lost enterprise value.

Final Decision:

Permanent Injunction was granted against Amazon Technologies and Cloudtail India Pvt. Ltd. restraining them from using the infringing logo. Compensatory Damages of USD 38.78 million (₹336,02,87,000) were awarded, along with ₹3,23,10,966.60 towards advertising costs. The total compensation awarded was ₹339,25,97,966.60 plus court fees.

Law Settled in This Case:

Trademark infringement liability extends to e-commerce brand owners if they directly authorize and control infringing activities. 

The Triple Identity Test is a valid method to establish trademark infringement. Punitive damages cannot be awarded arbitrarily but must be justified with clear evidence. E-commerce platforms cannot claim safe harbor protection if they are directly involved in branding and sales.

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

Novartis AG Vs. Novitas Lifesciences

Brief Facts

The plaintiffs, Novartis AG and its affiliate, are globally recognized pharmaceutical companies engaged in the manufacture, marketing, research, and development of high-quality pharmaceutical products. They are the registered proprietors of the trademark "NOVARTIS," which has been in use since 1996 and is registered in multiple jurisdictions, including India. The plaintiffs contended that the defendants, operating under the name "Novitas Lifesciences," had adopted the mark "NOVITAS," which was almost identical to "NOVARTIS" both phonetically and visually. The plaintiffs alleged that the defendants' use of the impugned mark for pharmaceutical products amounted to trademark infringement, passing off, and unfair competition, creating a likelihood of consumer confusion. They sought a permanent injunction restraining the defendants from using the mark "NOVITAS" or any deceptively similar variant.

Issues

The primary issue before the court was whether the defendants' adoption and use of the mark "NOVITAS" amounted to infringement of the plaintiffs' registered trademark "NOVARTIS." Additionally, the court had to determine whether the plaintiffs had made out a prima facie case for the grant of an interim injunction to prevent further use of the allegedly infringing mark pending final adjudication.

Submissions of Parties

The plaintiffs submitted that the mark "NOVARTIS" was a well-known trademark under Indian law, enjoying statutory and common law protection. They argued that the defendants had dishonestly adopted "NOVITAS" by merely rearranging the letters of "NOVARTIS," demonstrating bad faith and an intention to ride upon the plaintiffs' goodwill. The plaintiffs also pointed out that the defendants' domain name "novitaslifesciences.com" and their presence on e-commerce platforms compounded the risk of consumer deception. They further contended that confusion in the pharmaceutical sector posed serious public health risks. The defendants failed to appear before the court, despite being duly served with summons.

Reasoning and Analysis of the Judge

The court observed that the plaintiffs had established a prima facie case of trademark infringement and passing off. It noted that the marks "NOVARTIS" and "NOVITAS" were deceptively similar, both visually and phonetically, which could mislead an average consumer with imperfect recollection. Given the identical nature of the goods—pharmaceutical products—the likelihood of confusion was significantly high. The court emphasized that in the pharmaceutical industry, confusion between two brands could have grave consequences for consumers. It also found that the defendants' continued use of "NOVITAS" would cause irreparable harm to the plaintiffs, as it could lead to dilution of the well-known "NOVARTIS" mark. The balance of convenience was in favor of the plaintiffs, as allowing the defendants to continue using "NOVITAS" would unfairly exploit the plaintiffs' reputation.

Decision of the Judge

The court granted an interim injunction restraining the defendants, their agents, distributors, and affiliates from using the mark "NOVITAS" or any other deceptively similar trademark for medicinal or pharmaceutical preparations. The defendants were also prohibited from using "NOVITAS" in their trade name, domain name, or any promotional material. The court clarified that the defendants were free to carry on their business under a different name that was not deceptively similar to "NOVARTIS." The matter was listed for further proceedings, with directions for filing replies and rejoinders within stipulated timelines.

Case Title: Novartis AG & Anr. v. Novitas Lifesciences & Anr.

Date of Order: February 3, 2025

Case No.: CS(COMM) 97/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Jage Ram Vs. Ved Kaur

Case Title: Jage Ram Vs. Ved Kaur 

Date of Order: January 28, 2025

Case No.: SLP (C) No. 723/2023

Name of Court: Supreme Court of India

Name of Judges: Hon’ble Mr. Justice Pankaj Mithal and Hon’ble Mr. Justice Ahsanuddin Amanullah

Brief Facts

The petitioner, Jage Ram, had filed a second appeal before the High Court of Punjab & Haryana, which was ultimately decided in terms of a settlement between the parties. The High Court disposed of the appeal based on the terms of the settlement instead of adjudicating the matter on its merits. Following this, the petitioner sought a refund of the court fees he had paid at various stages, including before the Trial Court, the First Appellate Court, and the Second Appellate Court. However, the High Court rejected this request on the ground that no legal basis existed for granting a refund of court fees in such circumstances. Aggrieved by this decision, the petitioner approached the Supreme Court through a Special Leave Petition (SLP).

Issues

The key issue before the Supreme Court was whether the petitioner was entitled to a refund of court fees when the case was settled between the parties without being referred to Arbitration, Conciliation, Lok Adalat, or Mediation. Additionally, the court had to determine whether the High Court erred in rejecting the petitioner’s request for a refund.

Submissions of Parties

The petitioner argued that since the second appeal had been disposed of in terms of a settlement, the court fees paid at all stages should be refunded. It was contended that when disputes are amicably resolved, the refund of court fees should be granted as a measure to encourage settlements and reduce litigation. The respondents, represented by counsel, opposed the petition and argued that a refund of court fees is only permissible under specific legal provisions, which were not applicable in the present case. They submitted that since the settlement did not occur through an adjudicatory or alternative dispute resolution forum recognized by law, the petitioner was not entitled to claim a refund.

Reasoning and Analysis of the Judge

The Supreme Court analyzed the statutory provisions governing the refund of court fees and held that such refunds are permissible only when cases are settled through Arbitration, Conciliation, judicial settlement (including Lok Adalat), or Mediation. The court observed that in this case, the settlement was reached privately between the parties without the intervention of any recognized dispute resolution mechanism. Therefore, the petitioner did not meet the criteria for a refund as laid down in law. The bench further noted that the High Court had correctly interpreted the legal provisions and had not committed any error or illegality in rejecting the petitioner’s claim.

Decision of the Judge

The Supreme Court dismissed the Special Leave Petition, holding that the petitioner was not entitled to a refund of court fees since the settlement was reached outside the scope of recognized dispute resolution mechanisms. The court upheld the High Court’s decision and found no merit in the petitioner’s claim. All pending applications, if any, were also disposed of.

House of Masaba Lifestyle Private Limited Vs. Masabacoutureofficial.co

Brief Facts

The plaintiff, House of Masaba Lifestyle Private Limited, is a fashion brand founded by Ms. Masaba Gupta in 2009, engaged in selling bridal lehengas, jewelry, sarees, gowns, apparel for men and women, and designer clothing. The plaintiff is the registered proprietor of the trademark “MASABA” and various other related marks in multiple classes, with registrations dating back to 2010. The plaintiff alleged that the defendants, operating under the Instagram handles “masabacoutureofficial.co” and “masabacouture.in,” were using the impugned trademark “MASABA”/“MASABA COUTURE” for identical goods and services. The plaintiff contended that such unauthorized use was misleading consumers into believing that the defendants were associated with the plaintiff’s brand, thereby constituting trademark infringement, passing off, and unfair trade practices.

Issues

The primary issue before the court was whether the defendants' use of the marks “MASABA”/“MASABA COUTURE” on their social media platforms and in their business operations amounted to trademark infringement and passing off, thereby warranting an interim injunction. Additionally, the court had to determine whether the plaintiff had established a prima facie case, where the balance of convenience lay, and whether any irreparable harm would be caused to the plaintiff in the absence of an injunction.

Submissions of Parties

The plaintiff, through counsel, contended that it had exclusive rights over the trademarks “MASABA” and “HOUSE OF MASABA” and that the defendants' unauthorized use of these marks was malafide and dishonest. The plaintiff emphasized that the defendants’ actions created confusion among consumers and diluted the distinctiveness of its trademarks. The plaintiff further submitted that multiple customers had reported being misled by the defendants and had even created Instagram pages highlighting fraudulent activities associated with the defendants. The plaintiff argued that unless immediate relief was granted, it would suffer irreparable harm. 

Reasoning and Analysis of the Judge

Justice Amit Bansal, after considering the plaintiff’s submissions and examining the evidence, held that the plaintiff had made out a prima facie case of trademark infringement. The court noted that the defendants’ use of the marks was likely to deceive consumers into believing that their products were associated with the plaintiff’s brand, thereby amounting to passing off. The court further held that the balance of convenience was in favor of the plaintiff since allowing the defendants to continue using the infringing marks would cause substantial harm to the plaintiff’s reputation and business. Additionally, the court found that the plaintiff would suffer irreparable harm if interim relief was not granted, as the unauthorized use of its trademarks could lead to consumer confusion and damage to its brand equity.

Decision of the Judge

The court granted an interim injunction restraining the defendants, their agents, and all others acting on their behalf from using the impugned trademarks “MASABA”/“MASABA COUTURE” or any other deceptively similar mark. The court also directed Instagram, as an intermediary, to take down the impugned pages upon receipt of communication from the plaintiff and to provide the complete contact details of the defendants available with them. 

Case Title: House of Masaba Lifestyle Private Limited Vs. Masabacoutureofficial.co

Date of Order: February 18, 2025

Case No.: CS(COMM) 143/2025

Name of Court: High Court of Delhi

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

Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited

Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited: Issue of invalidity can be framed post filing of Rectification Petition

Case Title: Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited & Anr.

Date of Order: 18 May 2023

Case No.: Not available in provided excerpts

Neutral Citation: 2023:DHC:3426-DB

Name of Court: Delhi High Court

Name of Judge: Hon’ble Justice Rajiv Shakdher and Hon’ble Justice Talwant Singh

Introduction:

The present case involves a legal dispute between Resilient Innovations Pvt. Ltd. (RIPL) and PhonePe Private Limited (PPL) regarding trademark rectification applications under the Trademarks Act, 1999. The matter concerns RIPL's challenge to the validity of PPL’s registered trademarks and PPL’s allegations of infringement against RIPL’s use of "PostPe," which PPL contended was deceptively similar to its trademark "PhonePe." The dispute traverses issues of maintainability, prior use, and the statutory framework governing trademark rectification.

Factual Background:

PPL, the registered proprietor of the trademark "PhonePe," alleged that RIPL’s use of "PostPe" was an infringement of its intellectual property rights. Initially, PPL filed a suit in the Bombay High Court against RIPL, seeking an injunction against the use of "PostPe." While this suit was later withdrawn, PPL retained the liberty to file a fresh suit. Meanwhile, RIPL initiated rectification proceedings against PPL’s registered trademarks under Section 57 of the Trademarks Act, challenging their validity. The present case stems from the dismissal of these rectification applications by the learned Single Judge of the Delhi High Court.

Procedural Background:

The learned Single Judge dismissed RIPL’s rectification applications on the first date of hearing, holding that they were not maintainable. The court ruled that RIPL had failed to demonstrate the grounds necessary to challenge PPL’s trademark registrations. Aggrieved by this order, RIPL filed an appeal before the Division Bench of the Delhi High Court, arguing that the dismissal was premature and that the rectification proceedings were validly initiated.

Issues Involved in the Case

The case raised multiple legal issues, including whether the rectification applications filed by RIPL under Section 57 of the Trademarks Act were maintainable. The Court also examined whether the withdrawal of PPL’s previous suit and the subsequent refiling of a fresh suit impacted the rectification proceedings. Another key question was whether the Single Judge was correct in dismissing the rectification applications at the notice stage without a detailed examination. The Court also analyzed whether the appeals preferred by RIPL were maintainable under the relevant statutory framework.

Submissions of the Parties:

RIPL argued that the learned Single Judge erred in summarily dismissing its rectification applications without considering the statutory requirements under Section 57. It contended that it was an "aggrieved party" as per the Trademarks Act, given that PPL’s trademarks allegedly restricted its legitimate use of "PostPe." RIPL further asserted that the pending suit in Delhi had no bearing on the rectification proceedings, as the two matters were legally distinct.

PPL countered that RIPL’s rectification applications were not maintainable due to procedural lapses. It argued that RIPL was attempting to circumvent its liability in the pending infringement suit by challenging the validity of PPL’s trademarks. PPL also relied on judicial precedents to assert that rectification proceedings cannot be used as a defense strategy in an ongoing infringement dispute.

Judgments Cited by the Parties:

Both parties relied on significant judgments to support their arguments. RIPL cited Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, arguing that the rectification proceedings had an independent statutory basis and should not have been dismissed summarily. PPL relied on Himalaya Drug Company v. S.B.L. Ltd., MANU/DE/5479/2012, contending that the Trademarks Act was a complete code and that the rectification applications were procedurally flawed.

The Court also examined Fuerst Day Lawson Ltd. v. Jindal Exports Ltd., (2011) 8 SCC 333, which emphasized that appellate jurisdiction should be construed strictly in matters of procedural compliance. This case was relevant in determining whether RIPL had followed the correct procedural framework in filing its rectification applications.

Whether the LPA Preferred by RIPL Are Maintainable?

The Delhi High Court ruled that the appeals preferred by RIPL were maintainable. PPL had raised a preliminary objection arguing that no intra-court appeal was available against a decision on a rectification application under Section 57 of the Trademarks Act, 1999. PPL contended that the statute did not expressly provide for an appeal, and by implication, the legislature intended to exclude it.

The Court disagreed with PPL’s argument and held that there was nothing in the framework of the 1999 Trademarks Act that expressly or impliedly excluded an intra-court appeal. The Court noted that the absence of an explicit provision barring such appeals indicated that Clause 10 of the Letters Patent, which permits intra-court appeals, remained applicable.

The Court examined the National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (1953 AIR 357) case, where the Supreme Court ruled that intra-court appeals under the Letters Patent were maintainable unless explicitly excluded by a statute. It also referred to P.S. Sathappan (Dead) by LRS v. Andhra Bank Ltd. (2004) 11 SCC 672, which held that unless an appeal is expressly or necessarily barred, the right to appeal under Letters Patent prevails.

The Court distinguished this case from Himalaya Drug Company v. S.B.L. Ltd., MANU/DE/5479/2012, which held that the Trademarks Act is a complete code. It clarified that while the Trademarks Act provides a comprehensive mechanism for rights and remedies, it does not explicitly exclude the applicability of intra-court appeals.

The Court concluded that appeals are a creature of statute, and unless expressly excluded, they are maintainable. The Letters Patent is a special law that allows intra-court appeals unless expressly barred. Since there was no explicit or implied exclusion of intra-court appeals in the Trademarks Act, 1999, the appeals preferred by RIPL were held to be maintainable.

Whether the issue of invalidity can be framed even post-filing of a rectification application under Section 57 of the Trademarks Act, 1999:

The Delhi High Court analyzed whether the issue of invalidity can be framed even post-filing of a rectification application under Section 57 of the Trademarks Act, 1999, in the context of Section 124. The court addressed the relationship between rectification proceedings and infringement suits, particularly regarding the timing of framing an issue of validity.

The court observed that Section 124 does not mandate that an issue of invalidity must always be framed before a rectification application is filed. Instead, the provision only requires that when an infringement suit is pending and a party pleads invalidity, the civil court must first be satisfied that the plea is prima facie tenable before staying the suit and allowing rectification proceedings. The framing of an issue of validity, therefore, serves as a procedural safeguard but does not operate as a strict precondition to initiating rectification proceedings.

The court relied on Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, where the Supreme Court held that while Section 124 sets a procedural mechanism, it does not bar a rectification application if the issue of validity has not yet been framed in a pending infringement suit. The High Court emphasized that rectification is an independent statutory remedy and should not be rendered ineffective merely due to procedural technicalities.

Applying this principle, the court reasoned that even if an issue of invalidity has not been framed at the time of filing a rectification application, the rectification petition need not be dismissed outright. Instead, the proper course is for the court dealing with the infringement suit to determine whether an issue of invalidity should be framed and then proceed accordingly. The court concluded that a rectification application should be kept in abeyance rather than dismissed if an issue of invalidity is yet to be frame:

Final Decision:

The Division Bench set aside the learned Single Judge’s order dismissing RIPL’s rectification applications. It remanded the matter for reconsideration, directing the lower court to examine the applications on their merits rather than dismissing them at the outset. The Court emphasized the need for a balanced approach in trademark disputes, ensuring that procedural compliance does not overshadow substantive justice.

Law Settled in the Case:

Maintainability of Appeals: An intra-court appeal under Clause 10 of the Letters Patent is maintainable unless expressly or impliedly barred by statute. Since the Trademarks Act, 1999, does not explicitly exclude such appeals, an appeal against an order rejecting a rectification application is maintainable.

Independent Right to File Rectification Application: A rectification application under Section 57 of the Trademarks Act, 1999, is an independent statutory remedy and can be filed without the necessity of first framing an issue of invalidity in an infringement suit.

Framing of Issue of Invalidity Post-Filing of Rectification Petition: Even if a rectification application is filed before an issue of invalidity is framed in an infringement suit, the rectification petition should not be dismissed outright. Instead, the proper approach is to keep the rectification application in abeyance until the issue of validity is determined in the infringement suit.

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

Tata Sky Limited Vs. S.G. Enterprises

Brief Facts

Tata Sky Limited filed a suit against S.G. Enterprises and other defendants, alleging trademark infringement and passing off. The plaintiff claimed that the defendants were unlawfully using the "Tata Sky" name and branding in their business operations, particularly in domain names and sales services, creating confusion among consumers. The plaintiff sought a permanent injunction, damages, and other reliefs to restrain the defendants from misusing its registered trademarks. The case also involved issues concerning fraudulent transactions using the plaintiff’s brand name and the necessity for stronger financial security measures, including the implementation of a Beneficiary Name Lookup Facility in banking transactions.

Issues

The main issue was whether the defendants' use of the "Tata Sky" name and branding constituted trademark infringement and passing off. The court also examined whether the defendants should be restrained from continuing their unauthorized use and whether domain name registrars could be directed to block infringing domain names. Additionally, the court addressed the role of financial institutions in enabling fraudulent transactions and the need for the Beneficiary Name Lookup Facility to prevent financial frauds involving the unauthorized use of established trademarks.

Submissions of Parties

The plaintiff argued that "Tata Sky" is a well-known trademark with a strong reputation in the market. The unauthorized use of the mark by the defendants was misleading consumers and causing irreparable damage to the brand. The plaintiff submitted that such actions violated trademark laws and sought an injunction to prevent further misuse. The plaintiff also highlighted instances where consumers were defrauded through bank transactions involving entities falsely representing themselves as associated with "Tata Sky."

The Reserve Bank of India (RBI) and the National Payments Corporation of India (NPCI) submitted that they were implementing a Beneficiary Name Lookup Facility in digital transactions, particularly in Real Time Gross Settlement (RTGS) and National Electronic Funds Transfer (NEFT) systems, to curb fraud. This facility ensures that the beneficiary's name appears before payment is processed, reducing the risk of deceptive transactions.

The defendants contended that their use of the name was legitimate and did not amount to infringement. Some defendants also claimed that they were merely resellers or service providers and had no intention of misleading consumers.

Reasoning and Analysis of Judge

The court observed that "Tata Sky" is a well-established and widely recognized brand, and its unauthorized use by third parties was likely to cause confusion. The court emphasized that domain names incorporating well-known trademarks without authorization could mislead the public and lead to brand dilution.

Regarding the Beneficiary Name Lookup Facility, the court reviewed the RBI Circular dated December 30, 2024, which mandated the implementation of the facility for RTGS and NEFT transactions by April 1, 2025. The court noted that such a facility was essential to prevent fraudulent banking transactions using brand names like "Tata Sky." The court acknowledged the affidavit submitted by NPCI detailing the implementation process, including an API-based system where the remitter bank verifies the beneficiary’s registered name before executing a transaction.

The court directed financial institutions to expedite the implementation of this facility and ensure that banks prevent unauthorized transactions using misleading beneficiary names. It also emphasized that banks must screen beneficiary details carefully and prevent the registration of fraudulent UPI IDs or virtual payment addresses (VPAs) that misuse well-known trademarks.

Decision of Judge

The court ruled in favor of the plaintiff, granting a permanent injunction against the defendants, restraining them from using the "Tata Sky" trademark in any form, including in domain names, business names, and advertisements. The court also directed domain name registrars to suspend infringing domain names and take measures to prevent further unauthorized registrations.

Furthermore, the court ordered NPCI and RBI to ensure strict implementation of the Beneficiary Name Lookup Facility across all banks by the mandated deadline. Banks were instructed to issue advisories restricting the registration of fraudulent beneficiary names and to ensure that their systems flagged misleading payment requests associated with well-known trademarks.

Case Details

Case Title: Tata Sky Limited Vs. S.G. Enterprises & Ors.

Date of Order: February 15, 2025

Case No.: CS (COMM) 20/2019

Neutral Citation: 2025:DHC:973

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Prathiba M. Singh

Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Brief Facts

Yogi Ayurvedic Products Pvt. Ltd. filed a suit against Vaishali Industries alleging trademark infringement and passing off concerning the mark "YOGI." The plaintiff claimed to have proprietary rights over the trademark "YOGI" since 1999, with registered trademarks under Classes 3 and 5. The plaintiff argued that the defendant's use of the identical mark for similar products would lead to consumer confusion and dilution of its brand. An ex-parte ad-interim injunction was granted in favor of the plaintiff, which the defendant later sought to vacate by invoking Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, on the ground that false and misleading statements were made while obtaining the injunction.

Issues

The key issues before the court were whether the defendant had established a valid claim of prior use under Section 34 of the Trade Marks Act, 1999, whether the absence of a written assignment deed affected the defendant’s claim, and whether the ex-parte ad-interim injunction granted to the plaintiff should be vacated.

Submissions of Parties

The plaintiff contended that it had continuously and commercially used the "YOGI" trademark since 1999 and had obtained registrations under Classes 3 and 5. It argued that the defendant failed to demonstrate continuous prior use of the mark and had no legal basis to claim ownership. The plaintiff also pointed out that the defendant lacked a written assignment deed transferring rights from its alleged predecessor, as required under the Trade Marks Act.

The defendant, in response, argued that it had been using the "YOGI" trademark since at least 1997 through its predecessor, M/s. D.V. Deo Aromatics Pvt. Ltd. It asserted that the trademark rights were transferred to the defendant through a family arrangement, despite the absence of a formal assignment deed. The defendant also claimed that it had been continuously using the mark and placed reliance on invoices and other documents.

Reasoning and Analysis of Judge

The court analyzed the defendant’s claim of prior use and found it lacking in legal substance. It noted that Section 34 of the Trade Marks Act requires continuous use of a mark and, where applicable, a written assignment for transferring trademark rights. The court specifically emphasized that under Section 2(1)(b) of the Trade Marks Act, 1999, any assignment of a trademark must be in writing. Since the defendant failed to produce any written document assigning the trademark from its alleged predecessor, its claim of prior use was legally untenable. The court further noted that the absence of a written assignment deed broke the chain of ownership, meaning the defendant could not claim that its use of the mark stemmed from the predecessor company.

The court also highlighted that mere isolated instances of use, such as two invoices from 1997, were insufficient to establish continuous commercial use. Additionally, it observed that the defendant’s argument that a family arrangement could serve as an implied assignment was flawed, as trademark law mandates that assignments be documented in writing.

The court found no merit in the defendant’s argument that the injunction was obtained through misleading statements. It held that the plaintiff had provided sufficient documentary evidence, including registration certificates, invoices, and sales figures, to demonstrate its longstanding use of the "YOGI" mark. The court noted that the defendant's use of an identical mark for similar products could lead to consumer confusion and dilution of the plaintiff’s brand.

Decision of Judge

The court rejected the defendant's plea to vacate the injunction and confirmed the ex-parte ad-interim relief granted to the plaintiff. It ruled that the defendant had failed to establish prior continuous use under Section 34 of the Trade Marks Act and that the absence of a written assignment deed was fatal to its claim. The application was allowed, and the injunction against the defendant’s use of the mark was made permanent.

Case Details

Case Title: Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Date of Order: February 17, 2025

Case No.: Interim Application No. 1598 of 2023 in Commercial IP Suit No. 45 of 2023

Neutral Citation: 2025:BHC-OS:2772

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Mr. Justice Manish Pitale

Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in

Brief Facts

Tata Power Solar Systems Limited, a subsidiary of Tata Power Renewable Energy Limited, filed a suit seeking a permanent injunction against multiple defendants for trademark infringement and passing off. The defendants had registered domain names and email addresses incorporating the trademarks "TATA" and "TATA POWER SOLAR" and were allegedly using them to dupe consumers into believing they were associated with Tata Power Solar. The plaintiffs contended that this unauthorized usage was causing consumer confusion and harming their brand reputation.

Issues

The primary issue was whether the defendants' use of the domain names and email addresses incorporating "TATA" and "TATA POWER SOLAR" amounted to trademark infringement and passing off. Additionally, the court examined whether the plaintiffs were entitled to injunctive relief and summary judgment against the defendants.

Submissions of Parties

The plaintiffs argued that they had longstanding rights over the trademarks "TATA" and "TATA POWER SOLAR" and had invested substantial resources in building their brand. They presented evidence of unauthorized domain names and email addresses being used to mislead consumers into believing they were associated with Tata Power Solar. The plaintiffs sought a permanent injunction to restrain the defendants from using these marks and an order directing the suspension of the infringing domain names and freezing of related bank accounts.

The defendants failed to appear despite being duly served, and no written statement or defense was presented on their behalf.

Reasoning and Analysis of Judge

The court observed that the plaintiffs had demonstrated a clear case of trademark infringement and passing off. The defendants had slavishly copied the plaintiffs' well-known trademarks and were using them in connection with identical services. The court noted that the defendants' unauthorized use of the marks not only misled consumers but also took unfair advantage of the plaintiffs' goodwill. Since the defendants did not appear or contest the allegations, all averments made by the plaintiffs were deemed admitted.

Relying on precedents, the court determined that this was a fit case for summary judgment under Order XIII-A of the Code of Civil Procedure, as the defendants had no real prospect of successfully defending the claims. The court emphasized that permitting such deceptive practices would result in irreparable harm to the plaintiffs and cause confusion in the marketplace.

Decision of Judge

The court granted a decree of permanent injunction in favor of the plaintiffs, restraining the defendants from using the marks "TATA," "TATA POWER," and "TATA POWER SOLAR" in any manner, including as part of domain names and email addresses. It directed the suspension of the infringing domain names and the freezing of bank accounts used by the defendants. Additionally, the court ordered that funds from these bank accounts be transferred to the Reserve Bank of India’s Depositor and Education Awareness Fund. The suit was accordingly decreed in favor of the plaintiffs.

Case Details

Case Title: Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in .

Date of Order: February 13, 2025

Case No.: CS(COMM) 419/2024

Name of Court: High Court of Delhi

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