Ep.106:31.05.2025:Obscenity, Free Speech, and Trademark Law

Obscenity, Free Speech, and Trademark Law

Introduction:

The relationship between trademark law and obscenity has been a subject of legal debate across various jurisdictions. Courts have often been called upon to determine whether trademarks that may be perceived as offensive, vulgar, or controversial should be granted legal protection. This debate centers around two fundamental principles: the right to freedom of expression and the need to protect public morality and decency.

The challenge arises from the fact that morality is inherently subjective and evolves over time. What is considered offensive in one era or culture may not be deemed objectionable in another. In this context, courts have had to strike a delicate balance between upholding constitutional protections for free speech and ensuring that trademarks do not contravene established legal standards on obscenity.

This article delves into the legal provisions governing obscenity in trademark law, examines key judicial precedents, and explores how courts have interpreted these issues in different legal systems.

The Legal Framework Governing Obscene Trademarks:

Obscenity and the Indian Trade Marks Act, 1999: In India, the Trade Marks Act, 1999, serves as the primary legislative framework for trademark protection. Section 9(2)(c) of the Act explicitly prohibits the registration of any trademark that "comprises or contains scandalous or obscene matter."

The rationale behind this provision is to prevent trademarks that could offend public sensibilities or violate the principles of public morality. However, the term "obscene" is not explicitly defined within the Act, leading to ambiguities in interpretation. This has resulted in legal disputes where courts have had to determine whether a particular mark crosses the threshold of obscenity.

International Perspectives on Obscenity in Trademarks: The debate over obscene trademarks is not unique to India. Many countries, including the United States, the United Kingdom, and the European Union, have laws restricting the registration of offensive marks.

In the United States, the Lanham Act initially contained provisions prohibiting the registration of marks that were "immoral," "scandalous," or "disparaging." However, these provisions were later deemed unconstitutional by the U.S. Supreme Court in landmark cases, as they violated the First Amendment's protection of free speech.

Similarly, in the European Union, the EU Trade Mark Regulation (EUTMR) prevents the registration of marks that are "contrary to public policy or to accepted principles of morality." However, European courts have taken a more contextual and case-specific approach, assessing the impact of the mark on the public rather than enforcing blanket prohibitions.

Judicial Precedents and Their Implications for Trademark Law:

Freedom of Expression and Commercial Speech:The protection of commercial speech under the Indian Constitution has been a pivotal factor in the judicial approach to trademark registration. The Supreme Court of India has repeatedly affirmed that trademarks, being a form of commercial expression, enjoy constitutional protection under Article 19(1)(a), which guarantees freedom of speech and expression.

Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd. (1995) 5 SCC 139: In this case, the Supreme Court of India held that commercial speech is protected under the Constitution. The Court ruled that advertisements, including trademarks, fall within the ambit of free speech protections and cannot be restricted unless such restrictions are justified under Article 19(2), which allows for reasonable limitations in the interests of public order, morality, or decency. Relevance to Trademark Law: This ruling establishes that trademarks are not merely commercial symbols but also a form of protected expression. Any restriction on trademark registration must, therefore, pass the constitutional test of reasonableness and necessity.

Matal v. Tam, 137 S. Ct. 1744 (2017) (U.S. Supreme Court):In this case, the U.S. Supreme Court struck down the Lanham Act’s provision prohibiting "disparaging" trademarks, ruling that such restrictions violated the First Amendment. The case arose when Simon Tam, the frontman of an Asian-American band called "The Slants," sought to register the band's name as a trademark. The U.S. Patent and Trademark Office (USPTO) denied the application, arguing that the name was disparaging. The Court ruled in favor of Tam, stating that the government cannot refuse trademark registration on the basis of perceived offensiveness because doing so amounts to unconstitutional viewpoint discrimination. Relevance to Trademark Law: This ruling strongly supports the argument that denying trademarks based on subjective moral concerns is legally indefensible. It reinforces the principle that the government cannot impose restrictions on speech simply because some individuals might find it offensive.

Obscenity: A Contextual and Evolving Standard:Indian courts have consistently emphasized that the determination of obscenity must be made in a holistic and contextual manner, rather than relying on isolated words or phrases.

Samaresh Bose v. Amal Mitra (1985) 4 SCC 289:In this case, the Supreme Court ruled that obscenity must be judged based on the work as a whole rather than by analyzing individual words or phrases. The Court emphasized that a literary, artistic, or cultural work should not be deemed obscene unless it lacks any redeeming social value and has a corrupting influence on public morality. Relevance to Trademark Law: This decision is particularly significant in the context of trademarks that may have multiple meanings or cultural significance. A subjectively offensive term cannot be deemed obscene without assessing its broader commercial and social implications.

Chandrakant Kalyandas Kakodkar v. State of Maharashtra (1970) 2 SCC 687: In this case, the Supreme Court held that moral standards evolve over time and that contemporary social values must be taken into account when determining obscenity. The Court ruled that a work should be evaluated based on current societal norms rather than outdated moral standards. Relevance to Trademark Law: This ruling supports the argument that trademark law should not rigidly adhere to traditional notions of morality. Instead, the evaluation of obscenity should be dynamic, reflecting contemporary cultural and linguistic usage.

Public Morality and the Need for Strong Legal Justifications:Several judicial precedents have established that public morality cannot be used as an arbitrary justification for restricting expression.

KA Abbas v. Union of India (1971) 2 SCC 780:The Supreme Court held that public morality alone is not a sufficient ground for restricting free expression unless the restriction is backed by strong legal reasoning and serves a compelling public interest. Relevance to Trademark Law: This ruling indicates that trademark applications should not be rejected merely because a section of society finds them offensive. There must be clear legal grounds for such restrictions.

Indibly Creative Pvt. Ltd. v. State of West Bengal (2020) 12 SCC 436: The Supreme Court ruled that public morality cannot be determined solely by majoritarian views, and any restriction on expression must be justified through clear legal principles. Relevance to Trademark Law: This precedent reinforces that the rejection of a trademark based on assumed public outrage is legally unsound. Trademarks must be evaluated based on objective legal criteria rather than shifting social sentiments.

Conclusion: The analysis of judicial precedents reveals that trademarks cannot be denied registration merely because they might offend certain sections of society. Courts have consistently held that speech, including commercial speech, must be protected unless there is a compelling legal justification for restriction.

Furthermore, the evolving nature of moral standards suggests that trademark law should adopt a flexible and contextual approach rather than enforcing rigid and outdated interpretations of obscenity. Ultimately, the balance between free expression and public morality must be struck in a manner that respects constitutional rights while preventing legitimate harm to society.

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

Izuk Chemical Works Vs. Babu Ram Dharam Prakash

Even partial similarities in trademarks could lead to consumer confusion

Introduction:

The case of Izuk Chemical Works vs. Babu Ram Dharam Prakash, decided by the Delhi High Court on May 11, 2007, is a landmark judgment concerning trademark infringement and passing off. The plaintiff, Izuk Chemical Works, alleged that the defendant had dishonestly adopted a deceptively similar trademark and trade dress, leading to consumer confusion and unfair competition. The case revolved around the trademarks "MOONSTAR" and "SUPERSTAR," with the plaintiff seeking a permanent injunction to restrain the defendant from infringing its registered trademark and copyright. The judgment, delivered by Justice Gita Mittal, set a precedent in protecting proprietary rights in trademarks and labels.

Factual Background:

Izuk Chemical Works, engaged in the business of manufacturing and trading bleaching preparations, cleaning substances, cosmetics, and hair dyes since 1917, had been using the trademark "MOONSTAR" alongside an artistic device featuring a star in the lap of the moon. The plaintiff had secured registrations for its trademark and artistic label under the Trademarks Act, dating back to 1943. Over decades, the plaintiff established substantial goodwill and consumer recognition associated with the "MOONSTAR" brand.

The defendant, Babu Ram Dharam Prakash, was engaged in a similar business of manufacturing and trading hair dyes. The plaintiff alleged that the defendant had dishonestly adopted the trademark "SUPERSTAR," incorporating similar elements, including the star device and packaging resembling "MOONSTAR." The plaintiff argued that this was an attempt to deceive consumers and capitalize on its goodwill. The defendant had also applied for the registration of "SUPERSTAR," which triggered the legal battle.

The plaintiff presented evidence of extensive use, including invoices, advertising expenditures, and documentation demonstrating the distinctiveness and commercial success of "MOONSTAR." It also alleged that the defendant copied essential features of its label, including the color scheme, design, and placement of elements, to mislead consumers into believing that "SUPERSTAR" products were associated with the plaintiff's business.

Procedural Background:

The plaintiff filed a suit under Order 39 Rule 1 and 2 of the Code of Civil Procedure, seeking an interim injunction to prevent the defendant from using the allegedly infringing trademark and trade dress. The Delhi High Court initially granted an interim injunction, restraining the defendant from continuing the use of "SUPERSTAR" pending a final decision. The defendant challenged this injunction, arguing that its trademark and label were independently conceived.

During the proceedings, the defendant submitted an affidavit stating that it had altered its label and packaging to differentiate its product from "MOONSTAR." The plaintiff, however, maintained that the defendant’s use of the word "STAR" still violated its trademark rights and sought a permanent injunction.

Issues Involved in the Case:

The central issues in the case included whether the defendant’s use of "SUPERSTAR" constituted trademark infringement and passing off. 

Submissions of Parties:

The plaintiff argued that "MOONSTAR" had acquired distinctiveness and consumer recognition over decades. It contended that the defendant’s use of "SUPERSTAR" was a calculated attempt to mislead consumers and trade upon the plaintiff’s reputation. The plaintiff emphasized that the use of the word "STAR" was an essential and integral part of its trademark, and any similar use by the defendant created an unfair association with its products.

The defendant countered that "SUPERSTAR" was a unique and independent mark that bore no deceptive similarity to "MOONSTAR." It claimed that the changes made to its packaging and label were sufficient to avoid confusion and that its adoption of "SUPERSTAR" was in good faith. The defendant further argued that it had applied for registration of the mark, demonstrating its bona fide intent to establish independent rights over the trademark.

Discussion on Judgments Cited:

The court relied on several landmark judgments in trademark law to determine whether the defendant’s mark was deceptively similar to the plaintiff’s registered trademark. The case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 was cited to establish that in matters of trademark infringement, even slight phonetic or visual similarities could lead to consumer confusion.

The court also referred to Atlas Cycle Industries Ltd. v. Hind Cycles Ltd. (1973 I Delhi 393), where it was held that if the essential features of a trademark were copied, the fact that additional elements were introduced was immaterial. The court emphasized that a trademark’s distinctiveness should be protected to prevent consumer deception.

The judgment in Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) was also invoked, reinforcing that trademarks must be analyzed from the perspective of an average consumer with imperfect recollection. The court noted that minor differences in a mark’s composition would not suffice if the overall impression of the mark created confusion.

Reasoning and Analysis of the Judge:

The Court analyzed the visual, phonetic, and conceptual similarities between "MOONSTAR" and "SUPERSTAR." The court found that the word "STAR" was a dominant feature of both marks and that its use by the defendant in a similar trade sector was likely to mislead consumers. The judge held that while the marks were not identical, their structural and phonetic similarities were significant enough to cause confusion.

The court also considered the defendant’s claim of independent adoption and bona fide use but found no substantial evidence to support this assertion. The defendant had failed to provide proof of prior or concurrent use that predated the plaintiff’s well-established rights over "MOONSTAR." Furthermore, the court noted that the defendant had originally used a packaging design that was nearly identical to the plaintiff’s, indicating an intent to mislead consumers.

Justice Mittal reasoned that trademark law aims to protect not only the rights of businesses but also the interests of consumers. If the purchasing public were to associate "SUPERSTAR" with "MOONSTAR," it would amount to unfair competition and dilution of the plaintiff’s brand. The defendant’s attempt to modify its label did not absolve it of liability since the core issue was the deceptive similarity between the marks.

Final Decision:

The Delhi High Court ruled in favor of the plaintiff and granted a permanent injunction restraining the defendant from using "SUPERSTAR" or any deceptively similar mark. The court also restrained the defendant from using any trade dress, packaging, or design that could mislead consumers into associating its products with "MOONSTAR." The plaintiff’s statutory and common law rights in the trademark were upheld, and the defendant was barred from further infringing upon them.

Law Settled in this Case:

The judgment reaffirmed several key principles of trademark law. It established that even partial similarities in trademarks could lead to consumer confusion and constitute infringement. The ruling reinforced that the dominant feature of a trademark must be considered in assessing deceptive similarity. It also clarified that modifying certain aspects of an infringing product does not necessarily absolve the defendant if the core trademark violation persists. Furthermore, the court underscored that prior use and goodwill play a crucial role in determining trademark rights, and mere applications for registration do not create legal entitlements.

Case Title: Izuk Chemical Works Vs. Babu Ram Dharam Prakash

Date of Order: May 11, 2007

Case No.: CS(OS) 390/2006

Neutral Citation: MIPR2007(3)8, 2007(35)PTC28(DEL)

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Gita Mittal

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 Limited Vs Arpita Agro Products Pvt Ltd

Consumer confusion, even if indirect, is sufficient to grant an injunction in trademark cases

Introduction:

This case revolves around a legal dispute concerning trademark infringement, passing off, and unfair competition between ITC Limited and Arpita Agro Products Pvt Ltd. The plaintiff, ITC Limited, sought an injunction against the defendants, alleging that their use of the mark "POWRNYM" was deceptively similar to its registered trademarks "NIMYLE" and "JOR-POWR," which were acquired through a series of agreements. The matter was adjudicated by the Delhi High Court, which delivered a significant ruling on October 8, 2024.

Factual Background:

ITC Limited is a major Indian company engaged in various businesses, including fast-moving consumer goods (FMCG). The dispute in this case pertains to ITC’s ownership of the trademarks "NIMYLE" and "JOR-POWR," which it acquired from Arpita Agro Products Pvt Ltd and other defendants through several assignment agreements executed in 2018.

Before the transfer, Arpita Agro Products had been manufacturing and selling herbal floor cleaners under these trademarks. The agreements assigned all rights, including ownership, trade dress, regulatory information, and associated goodwill, to ITC for a consideration of ₹100 crores.

In 2023, ITC discovered that the defendants had started marketing a floor cleaner under the trademark "POWRNYM," which was alleged to be deceptively similar to ITC's trademarks. ITC claimed that the mark "POWRNYM" was derived from "JOR-POWR" and "NIMYLE," making it likely to cause confusion among consumers.

Procedural Background:

On October 5, 2023, ITC approached the Delhi High Court seeking an injunction to restrain the defendants from using the mark "POWRNYM" and any similar packaging, trade dress, or branding. The Court granted an ex-parte ad-interim injunction, preventing the defendants from manufacturing or selling products under the disputed mark.

The defendants subsequently filed an application under Order XXXIX Rule 4 of the Civil Procedure Code, 1908, seeking to vacate the injunction, arguing that their mark was distinct and had been adopted in good faith. The Court heard arguments from both sides before delivering its final ruling.

Issues Involved in the Case:

The case raised several legal issues, including whether the defendants' use of "POWRNYM" infringed upon ITC’s registered trademarks "NIMYLE" and "JOR-POWR."?It also examined whether the defendants' use of similar branding and trade dress misled consumers into associating their products with ITC?

Submissions of Parties:

The plaintiff, ITC Limited, argued that the defendants had knowingly adopted a mark that was a derivative of "NIMYLE" and "JOR-POWR," violating the assignment agreements. ITC asserted that the defendants were previously the owners of the marks and were fully aware of their reputation and goodwill. ITC also pointed out that the defendants’ use of similar trade dress, bottle shape, and labeling further enhanced the likelihood of confusion among consumers. It argued that the defendants had applied for the registration of "POWRNYM" only after the non-compete period expired, which indicated bad faith. ITC relied on legal precedents, including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, Midas Hygiene v. Sudhir Bhatia (2004) 3 SCC 90, Laxmikant Patel v. Chetanbhai Shah (2002) 3 SCC 65, South India Beverages v. General Mills Marketing 2015 (61) PTC 231 (Del)(DB).

The defendants contended that "POWRNYM" was not deceptively similar to "NIMYLE" or "JOR-POWR." They argued that the term "NYM" was used to indicate "NEEM" as a natural ingredient rather than as a reference to "NIMYLE." The defendants claimed that their mark was coined independently and highlighted in advertisements as a "Synonym of Power." They also argued that the non-compete clause had expired in 2022, allowing them to engage in similar business activities. They cited Rhizome Distilleries Pvt Ltd v. Pernod Ricard S.A. France 2009 SCC OnLine Del 3346 to support their case.

Discussion on Judgments Cited:

Several landmark judgments were cited in the case. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories (AIR 1965 SC 980) established that in cases of trademark infringement, phonetic and structural similarities play a significant role. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. was relied upon to assert that even minor variations in a mark do not necessarily prevent consumer confusion. Midas Hygiene v. Sudhir Bhatia emphasized that in cases of clear prima facie infringement, an injunction must be granted without delay. Other cases, such as Amar Singh Chawal v. Shri Vardhman Rice & General Mills and South India Beverages v. General Mills Marketing, reinforced the importance of dominant features in trademark comparison. Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors. illustrated that minor alterations in a mark do not remove the likelihood of confusion.

Reasoning and Analysis of the Judge:

Delhi High Court analyzed the agreements, trademark registrations, and the defendants’ past association with "NIMYLE" and "JOR-POWR." The Court found strong similarity in trademarks, as "POWRNYM" incorporated elements of both "NIMYLE" and "JOR-POWR," making it deceptively similar. The defendants had prior knowledge of the trademarks and their goodwill, demonstrating bad faith in adopting the impugned mark. The similarity in trade dress, bottle shape, and branding could mislead consumers into believing "POWRNYM" was related to ITC’s products. The agreements explicitly prohibited the defendants from registering or using any mark similar to "NIMYLE" or "JOR-POWR," and their actions constituted a breach of these contracts.

Final Decision:

The Delhi High Court ruled in favor of ITC Limited and granted a permanent injunction restraining the defendants from using the mark "POWRNYM" or any other similar mark. The Court also dismissed the defendants’ application to vacate the interim injunction.

Law Settled in this Case:

The Court reaffirmed that the assignment of trademarks includes an obligation not to use or register similar marks. Even expired non-compete clauses do not override specific trademark assignment agreements. Deceptive similarity is assessed holistically, considering phonetic, structural, and visual similarities. Consumer confusion, even if indirect, is sufficient to grant an injunction in trademark cases.

Case Title: ITC Limited Vs Arpita Agro Products Pvt Ltd 

Date of Order: October 8, 2024

Case No.: CS(COMM) 698/2023

Neutral Citation: 2024: DHC: 2478

Court: Delhi High Court

Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

Star India Private Limited Vs. Stream2Watch.pk

Factual Background:

The plaintiffs, Star India Private Limited and Novi Digital Entertainment Pvt. Ltd., are leading media and entertainment companies. Star India operates over 70 channels under the brand "STAR," broadcasting a wide range of content including sports events such as the ICC Men’s T20 World Cup 2024. Novi Digital operates the popular streaming platform "Disney+ Hotstar," which also streams these events online. The plaintiffs hold exclusive media rights, including television broadcasting and digital streaming rights, for the ICC events in India for the period 2024-2027, as per the Media Rights Agreement with the International Cricket Council (ICC). The dispute arose when multiple rogue websites operated by the defendants were found to be illegally broadcasting and disseminating the plaintiffs' exclusive content related to the ICC Men’s T20 World Cup 2024. The plaintiffs had previously faced similar infringements during events like the Tata IPL 2024.

Procedural Background:

The plaintiffs filed CS(COMM) 455/2024 before the Delhi High Court seeking a permanent injunction against defendants, including rogue websites, domain name registrars, internet service providers (ISPs), and government authorities. On 28th May 2024, the Court passed an ex-parte ad interim injunction restraining defendants from infringing the plaintiffs' rights by illegally streaming or broadcasting their content. The Court also directed domain registrars to lock and suspend domain names and ISPs to block access to the rogue websites. Subsequently, the plaintiffs identified and impleaded additional rogue websites as defendants. Despite being served, no written statements or affidavits of admission/denial were filed by the defendants, and the time for filing the same expired.

Provisions of Law Referred and Their Context:

Section 37 of the Copyright Act, 1957 was invoked by the plaintiffs, which grants broadcasting organizations exclusive broadcast reproduction rights. The plaintiffs argued that the unauthorized online streaming of the ICC T20 World Cup 2024 by rogue websites infringed their statutory rights under this section. Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC) was relied upon by the Court to decree the suit as uncontested, given the absence of a written statement from the defendants. The plaintiffs also invoked Order I Rule 10 of the CPC to implead additional rogue websites discovered during the proceedings.

Reasoning of Court"

The Court noted that the defendants had not filed any written statements, and in accordance with Order VIII Rule 10 CPC and Rule 3 of the Delhi High Court (Original Side) Rules 2018, the unchallenged averments and documents filed by the plaintiffs stood admitted. The Court held that the rogue websites were knowingly engaged in exploiting the plaintiffs' exclusive rights by making unauthorized broadcasts of the ICC T20 World Cup 2024 content. This illegal dissemination infringed both copyright and broadcast reproduction rights, causing irreparable harm to the plaintiffs by reducing their revenues and diluting the commercial value of their rights. The Court found no defence on record from the defendants and concluded that there was no merit in continuing the suit to trial.

Decision:

The Delhi High Court passed a decree of permanent injunction in favour of the plaintiffs, restraining defendants no.1 to 11 and defendants no.33 to 175 (rogue websites) from further infringing the plaintiffs' rights. The Court accepted that the other reliefs stood satisfied, and the plaintiffs did not press for damages. 

Case Title: Star India Private Limited Vs. Stream2Watch.pk 

Date of Order: 3rd March, 2025

Case Number: CS(COMM) 455/2024

Name of Court: High Court of Delhi at New Delhi

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

DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Trademark Infringement and anti dissection Rule

Introduction:

This case revolves around a trademark dispute between DS Drinks and Beverages Private Limited and Hector Beverages Private Limited concerning the use of the mark "SWING" for beverages. Hector Beverages, the plaintiff, claimed infringement of its registered trademark "SWING" by DS Drinks, which intended to use the mark "CATCH SWING ENERGY INVIGORATES & MIND" for its energy drinks. The dispute led to an interim injunction passed by the learned Trial Court, which was later challenged by DS Drinks in the Delhi High Court.

Detailed Factual Background:

Hector Beverages Private Limited has been engaged in the food and beverage industry since 2009 and markets various products under brands such as TZINGA Energy Drink, PAPERBOAT, SWING, and SWING FIZZ. Initially launched as a sub-brand under the main brand PAPERBOAT, "SWING" eventually gained independent recognition and goodwill in the market since 2017. Hector Beverages registered the trademark under No. 3691925 for "PAPER BOAT SWING JUICIER DRINK" under Class 32, registered on December 1, 2017, and under No. 5280472 under Class 32, registered on January 11, 2022.

DS Drinks and Beverages Private Limited filed an application for registration of the mark "CATCH SWING ENERGY INVIGORATES & MIND" under Class 32 on a 'proposed to be used' basis. Hector Beverages filed a suit asserting that the defendant's mark was deceptively similar to its own, leading to the present proceedings.

Detailed Procedural Background:

Hector Beverages filed CS (Comm.) No. 350/2024 before the learned District Judge (Commercial Courts-06), Central District, Tis Hazari Courts, Delhi, seeking an injunction against DS Drinks from using the mark "SWING." The learned Trial Court, after hearing both parties, granted an interim injunction under Order XXXIX Rules 1 and 2 CPC restraining DS Drinks from using "SWING" for its energy drinks. DS Drinks appealed against this order by filing FAO (COMM) 61/2025 before the Delhi High Court.

Issues Involved in the Case:

Whether the mark "SWING" forms a dominant and distinctive part of Hector Beverages' trademark and whether DS Drinks' mark "CATCH SWING ENERGY INVIGORATES & MIND" is deceptively similar to it. Whether the learned Trial Court erred in granting the injunction by dissecting Hector Beverages’ composite mark "PAPERBOAT SWING." Whether the goods offered by the parties (juices and energy drinks) are allied products, giving rise to confusion among consumers.

Detailed Submission of Parties:

The appellant, DS Drinks, argued that its mark "CATCH SWING ENERGY INVIGORATES & MIND" is distinct from Hector Beverages’ mark "PAPERBOAT SWING." The products are different as Hector Beverages uses "SWING" for juices and "TZINGA" for energy drinks, while DS Drinks' product is an energy drink. The learned Trial Court erred in separating "SWING" from the composite mark "PAPERBOAT SWING" to grant exclusivity. The doctrine of anti-dissection applies, requiring the mark to be evaluated as a whole. They relied on Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370, and Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635.

The respondent, Hector Beverages, contended that "SWING" is the dominant part of both marks. The appellant’s mark has been applied for on a "proposed to be used" basis, and thus the respondent is the prior user and registered proprietor. Confusion is likely due to the visual and phonetic similarities. The appellate court should not substitute its discretion for that of the learned Trial Court unless grave errors are demonstrated. They cited Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490.

Detailed Discussion on Judgments Cited by Parties and Their Context: Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490 was referred to by the respondent to emphasize that appellate courts should interfere with discretionary orders of lower courts only when they are arbitrary or contrary to settled principles.  Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370 was relied upon by DS Drinks to support the anti-dissection rule, arguing that composite marks like "PAPERBOAT SWING" must be evaluated as a whole.  Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635 was cited by DS Drinks to assert that trademark infringement claims must relate to the entire mark unless a specific dominant portion has been exclusively copied.  M/s South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953 was relied upon by the Court to explain that while marks should be evaluated as a whole, the dominant portion may still be protected if confusion arises due to its similarity.  M/s P.K. Overseas Pvt. Ltd. & Anr. v. M/s Bhagwati Lecto Vegetarians Exports Pvt. Ltd. & Anr., 2016 SCC OnLine Del 5420 was cited by the Court to reinforce the principle that even where products or marks appear composite, infringement can be based on the dominant feature.

Detailed Reasoning and Analysis of Judge:The Court emphasized its limited appellate jurisdiction, relying on Wander Ltd. It noted that no grave error in law or perversity existed in the Trial Court’s order. The Court held that the predominant part of both marks is the word "SWING", clearly visible on the product packaging. While acknowledging the anti-dissection rule, the Court clarified that the dominant feature test is an established exception when determining deceptive similarity.The Court opined that "PAPERBOAT" functions as a family mark, while "SWING" identifies the specific product variant. The presence of "CATCH SWING" in the appellant's mark creates a likelihood of confusion under the test of imperfect recollection.On the issue of whether juices and energy drinks are distinct, the Court found them to be allied products since both fall under the same trade channels and consumer groups. The Court rejected the argument that the respondent’s use of "TZINGA" for energy drinks precluded it from seeking protection for "SWING" in the same category.

Final Decision: The appeal was dismissed, and the injunction granted by the learned Trial Court was upheld, restraining DS Drinks from using the mark "SWING" for its energy drinks. However, it was clarified that the observations were prima facie and would not affect the final adjudication of the pending suit.

Law Settled in This Case:

The case reinforces that the dominant feature doctrine can apply alongside the anti-dissection rule when assessing trademark infringement involving composite marks. It also affirms that allied goods across similar trade channels can result in consumer confusion, justifying injunctive relief even when the competing products (juice vs. energy drink) differ slightly.

Case Title: DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Date of Order: 03.03.2025

Case No.: FAO (COMM) 61/2025

Neutral Citation: DHC:2025:1391-DB

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

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

Creative Land Advertising Vs. Winzo Games

FACTUAL BACKGROUND:

The case involves a dispute between CreativeLand Advertising Pvt. Ltd. and Winzo Games Pvt. Ltd. over intellectual property rights and confidentiality obligations related to a brand campaign. CreativeLand, a creative agency, claims that it developed a tagline, "Jeeto Har DinZo," exclusively for Winzo Games under a Non-Disclosure Agreement (NDA). The agency argues that Winzo unlawfully used the tagline without proper authorization and sought legal intervention to prevent its use. Winzo maintains that the tagline was a derivative of its internal branding strategy and was never exclusively created by CreativeLand.

PROCEDURAL BACKGROUND:

CreativeLand filed a petition under Section 9 of the Arbitration and Conciliation Act, 1996, seeking an injunction to restrain Winzo from using the tagline. The Delhi High Court directed the matter to arbitration, where the Sole Arbitrator ruled against granting an injunction. The Arbitrator held that no formal agreement for the tagline's use existed and that damages could adequately compensate CreativeLand if its claim was proven. CreativeLand challenged this ruling under Section 37 of the Arbitration Act before the High Court.

PROVISIONS OF LAW REFERRED AND THEIR CONTEXT:

The case primarily revolves around the Arbitration and Conciliation Act, 1996, specifically:

Section 9: Provides for interim relief before arbitration proceedings.

Section 17: Empowers the arbitral tribunal to grant interim measures.

Section 37: Governs appeals against orders under Sections 9 and 17.

The NDA between the parties also played a crucial role, particularly clauses defining confidentiality and restrictions on unauthorized use of shared information.

JUDGMENTS REFERRED WITH CITATION AND CONTEXT:

Indian Oil Corporation v. Amritsar Gas Services (1991 SCC OnLine SC 513): Establishing that in determinable contracts, damages are the appropriate remedy rather than injunctions.

World Window Infrastructure Pvt. Ltd. v. Central Warehousing Corporation (2021 SCC OnLine Del 5099): Highlighting the limited scope of interference in arbitral orders under Section 37.

These judgments reinforced that injunctive relief should be granted only in exceptional cases where monetary compensation would be inadequate.

REASONING OF THE COURT:

The High Court upheld the Arbitrator’s ruling, stating that CreativeLand failed to prove exclusive ownership of the tagline. The court noted that Winzo had contributed to the creative process and that the tagline contained "WinZo," its registered trademark. It further held that the NDA did not explicitly classify the tagline as confidential information. Given the lack of a formal engagement and agreed pricing, the court ruled that damages, rather than an injunction, were the appropriate remedy. The court emphasized that Section 37 limits interference in arbitral decisions unless they are perverse or against public policy.

DECISION:

The High Court dismissed CreativeLand’s appeal, affirming that the Arbitrator’s decision was reasonable. However, as a protective measure, Winzo was directed to furnish a bank guarantee of ₹50 lakhs until the arbitration was resolved. CreativeLand was also given the option to challenge Winzo’s trademark registration of the tagline before the appropriate authority.

CASE DETAILS:

Case Title: Creative Land Advertising Pvt. Ltd. Vs. Winzo Games Pvt. Ltd.

Date of Order: March 18, 2025

Case Number: ARB. A. (COMM.) 15/2025 & 17/2025

Neutral Citation: 2025:DHC:1811

Court Name: High Court of Delhi

Hon'ble Judge: Justice Subramonium Prasad

DHL International GmbH Vs. DLH Express Services Private Ltd.

Factual Background:  

DHL International GmbH, a German logistics giant, sued DLH Express Services Private Ltd. for trademark infringement, passing off, and dilution. DHL, established in 1969, uses the "DHL" mark and a distinctive red-and-yellow logo globally, including India, where it has significant presence and registrations. The defendant adopted "DLH" for courier services, mimicking DHL’s mark and logo, prompting DHL to seek injunctions and a declaration of "DHL" as a well-known mark.

Procedural Background: 

The suit (CS(COMM) 563/2020) was filed with an application (I.A. 16452/2021) for summary judgment. On December 22, 2020, an ex-parte interim injunction restrained the defendant from using "DLH" or similar marks, which continued until the final hearing. The defendant later changed its name to Dogra’s Cargo Express Private Ltd. and ceased using "DLH." The court decided the matter on April 22, 2022.

Provisions of Law Referred and Their Context:  

Section 2(zg) of the Trade Marks Act, 1999 defines a "well-known trade mark" as one recognized by a substantial public segment, indicating a trade connection. 

Section 11(2) protects such marks against unfair use, even for dissimilar goods. Section 11(6) lists factors like public recognition and enforcement for determining well-known status. 

Rule 124 of the Trade Marks Rules, 2017 allows well-known mark applications. 

Order XIIIA of the Commercial Courts Act, 2015, read with Rule 27 of the Delhi High Court IPD Rules, 2022, permits summary judgment without a separate application if the defendant lacks a viable defense.

Judgments Referred with Complete Citation and Context:  

NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 – A Delhi High Court ruling, affirmed by the Supreme Court, recognized "Whirlpool" as well-known due to extensive use and reputation, even without widespread goods presence. 

Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del) – A Delhi High Court decision elaborating that well-known marks enjoy trans-border reputation and protection against dilution. 

Dharampal Satyapal Sons Pvt. Ltd. v. Akshay Singhal & Ors., CS(COMM) 129/2019, decided on October 17, 2019 – Reaffirmed principles of well-known mark recognition. 

WIPO decisions like DHL Operations B.V. v. Karel Salovsky (Case No. D2006-0520) and DHL International GmbH v. Richard Yaming (Case No. D2012-1081) acknowledged "DHL"’s global notoriety.

Reasoning of Court: 

The court found "DHL" distinctive and globally renowned, supported by extensive evidence of use, registrations, and enforcement. The defendant’s "DLH" mark and logo were nearly identical, violating DHL’s rights, despite the defendant’s name change and cessation of use. 

Summary judgment was warranted under Order XIIIA as the defendant had no real defense. 

For well-known status, the court applied Section 11(6) factors, noting DHL’s widespread recognition, enforcement success, and third-party acclaim, concluding it merited protection across logistics and related fields.

Decision: 

The court granted a permanent injunction against the defendant using "DLH" or similar marks, ordered withdrawal of the defendant’s trademark application (no. 3147906), and declared "DHL" a well-known mark, directing the Trademark Registry to notify it. The suit was decreed, and all applications disposed of.

  

Case Title: DHL International GmbH Vs. DLH Express Services Private Ltd.  

Date of Order: April 22, 2022  

Case Number: CS(COMM) 563/2020   

Name of Court: High Court of Delhi at New Delhi  

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

Kubota Corporation Vs. Kaira Agros & Ors.

Fact of the Case : 

Kubota Corporation, the plaintiff, filed a suit against Kaira Agros and others, alleging infringement of its registered designs (nos. 265708 and 265709). Defendant no. 1 challenged the validity of these designs in its written statement and filed two cancellation petitions (D-9/129/2024-KOL and D-9/130/2024-KOL) before the Controller of Patents and Designs, Kolkata. The defendant sought transfer of these petitions to the Delhi High Court under Section 22(4) of the Designs Act, 2000.

 Procedural Background in Brief:  

The suit (CS(COMM) 273/2024) was filed with multiple applications, including I.A. 47753/2024 by defendant no. 1 for transfer of the cancellation petitions and I.A. 48242/2024 by the plaintiff to file additional documents. Notice for the transfer application was issued on December 10, 2024, and both applications were adjudicated on December 13, 2024.

 Judgments Referred in Case with Complete Citation and Context:

  

S.D. Containers Indore v. M/s Mold Tek Packaging Ltd., Civil Appeal No. 3695/2020 – The Supreme Court clarified that under Section 22(4) of the Designs Act, 2000, if a defendant in an infringement suit seeks design cancellation, the matter must be transferred to the High Court, distinguishing it from standalone cancellation before the Controller.  

Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., 2023/DHC/000960 – A Delhi High Court ruling following S.D. Containers, affirming that Section 22(4) mandates transfer of cancellation proceedings to the High Court when raised as a defense in a suit.

Reasoning of Court:  

The court relied on Section 22(4) of the Designs Act, 2000, and precedents to determine that since defendant no. 1 raised the invalidity of the plaintiff’s designs in its defense and filed cancellation petitions, these petitions must be transferred to the High Court hearing the infringement suit. The undisputed defense of invalidity triggered the statutory requirement for transfer, as clarified in S.D. Containers and Novateur Electrical.

 Decision:  

The court allowed I.A. 47753/2024, directing the Controller of Patents and Designs, Kolkata, to transfer cancellation petitions D-9/129/2024-KOL and D-9/130/2024-KOL to the Delhi High Court within six weeks.

 

Case Title: Kubota Corporation Vs. Kaira Agros  

Date of Order: December 13, 2024  

Case Number: CS(COMM) 273/2024 

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal

Raj Vardhan Patodia (HUF) vs. Registrar of Trade Marks

Fact of the Case:

The case involves an appeal by Raj Vardhan Patodia (HUF) against the Registrar of Trade Marks and another respondent. The appellant opposed trade mark application no. 3353986, but the opposition was deemed abandoned by the Registrar under Rule 45(2) of the Trade Marks Rules, 2017, for allegedly not filing evidence within two months of receiving the counter statement. The appellant claimed it had sent the evidence affidavit on time, supported by courier receipts, while the respondents argued non-delivery.

Procedural Background in Brief: 

The appellant filed opposition no. 1024552 against trade mark application no. 3353986. The Registrar served the counter statement on December 15, 2021, and later, on September 12, 2023, deemed the opposition abandoned for non-submission of evidence, despite a hearing on September 5, 2023. The appellant appealed under Section 91 of the Trade Marks Act, 1999, challenging this order, asserting the evidence was dispatched within the statutory period.

Provisions of law Referred in Case:

The court relied on statutory provisions: Rule 45 of the Trade Marks Rules, 2017, which mandates filing evidence within two months of receiving the counter statement, and Rule 14, which deems a document served if properly addressed and posted, requiring only proof of dispatch, not delivery.

Reasoning of Court:

The court found the Registrar’s order flawed, as it misinterpreted the appellant’s stance as denying service of the counter statement, whereas the appellant admitted receipt and claimed timely dispatch of evidence on February 1, 2022, within the two-month limit. Supported by a notarized affidavit, cover letter, and courier receipts, the court held that Rule 14 only requires proof of posting, not receipt, and the appellant met this standard. Principles of natural justice further supported considering the opposition on merits, as the evidence was sent during the COVID era, possibly lost in transit.

Decision:  

The court set aside the Registrar’s order of September 12, 2023, restored the opposition, directed the appellant to refile the evidence within one week, allowed the respondent to file its evidence, and cancelled the trade mark registration granted to respondent no. 2. The appeal was disposed of accordingly.

 

Case Title: Raj Vardhan Patodia Vs. Registrar of Trade Marks

Date of Order: March 18, 2025  

Case Number: C.A.(COMM.IPD-TM) 3/2024   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal

Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd

 Facts of the Case

The case involves a dispute between Unique Entrepreneurs and Finance Limited (plaintiffs) and Really Agritech Pvt Ltd. and another (defendants) over alleged trademark infringement and passing off. The plaintiffs, registered proprietors of the marks "Ralli," "Ralli Engine," "Ralli Sprayer," and "Ralli Agricultural Machines" under classes 7 and 8, claimed that the defendants’ use of a deceptively similar mark "Really" (device) in class 7 infringed their rights. The plaintiffs alleged they became aware of the defendants’ use of the "Really" mark in May 2024, prompting them to file a suit seeking urgent interim reliefs, including an injunction, without pursuing pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The defendants contested this, arguing that the plaintiffs had knowledge of the "Really" mark as early as December 2018 (via an exhibition) and March 2022 (via WhatsApp messages), accusing them of suppressing material facts to bypass mediation.

 Procedural Background in Brief

The plaintiffs filed the suit (IP-COM/31/2024) in the High Court at Calcutta, Original Side, and obtained dispensation from pre-institution mediation under Section 12A on 30 September 2024, citing the need for urgent relief. The defendants filed applications (GA-COM/2/2024 and GA-COM/3/2024) seeking revocation of this dispensation and rejection of the plaint, arguing misrepresentation by the plaintiffs. The court heard arguments from both sides, with the plaintiffs defending their urgency claim and the defendants relying on evidence of prior knowledge to challenge it.

Judgments Referred in Case with Complete Citation and Context:Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815  Context: Emphasized that courts must scrutinize claims of urgency under Section 12A to prevent circumvention of mandatory mediation, balancing plaintiffs’ rights with statutory intent.  Patil Automation (P) Ltd. vs. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1 Context: Established Section 12A as mandatory, requiring rejection of suits filed without mediation unless urgent relief is genuinely contemplated.  Dr. Reddy’s Laboratories Ltd. vs. Smart Laboratories Pvt. Ltd., (2023) SCC OnLine Del 7276  Context: Held that urgency must be pleaded with supporting evidence, free of deception or suppression.  S.J.S. Business Enterprises (P) Ltd. vs. State of Bihar & Ors., (2004) 7 SCC 166  Context: Stressed that suppression of material facts disqualifies a litigant from relief, as it amounts to deceiving the court.  Mayar (H.K.) Ltd. & Ors. vs. Owners & Parties, Vessel M.V. Fortune Express & Ors., (2006) 3 SCC 100 Context: Reinforced that litigants must approach courts with clean hands, disclosing all material facts.  S.P. Chengalvaraya Naidu vs. Jagannath, (1994) 1 SCC 1  Context: Established that fraud unravels all, allowing courts to examine suppressed facts to detect fraud.  Chemco Plastic Industries Pvt. Ltd. vs. Chemco Plast, (2024) SCC OnLine Bom 1607  Context: Clarified that urgency must be assessed holistically, not solely based on time gaps.  Apollo Tyres Ltd. vs. Pioneer Trading Corporation & Anr., 2017 SCC OnLine Del 9825  Context: Distinguished by the court; held that non-disclosure of trivial facts does not equate to material suppression.

Reasoning of the Court:

Justice Ravi Krishan Kapur held that Section 12A mandates pre-institution mediation unless urgent interim relief is genuinely required, as per Patil Automation. The court found that the plaintiffs’ claim of discovering the "Really" mark in May 2024 was false, given evidence of their participation in the 2018 Kisan Mela exhibition (where rival goods were displayed) and WhatsApp messages from 2022 showing employee awareness of the defendants’ products. The court rejected the plaintiffs’ argument that employee knowledge was not attributable to them, deeming it unsubstantiated. It concluded that the plaintiffs suppressed material facts to fabricate urgency and bypass mediation, violating the principle of approaching the court with clean hands (S.J.S. Business Enterprises). While acknowledging that intellectual property suits often require urgent relief, the court emphasized that this does not exempt compliance with Section 12A when facts are misrepresented (Yamini Manohar). The five-month delay between alleged knowledge and filing was not decisive, but the suppression of prior knowledge was, leading to a finding of fraud on the court.

Decision:

The court revoked the dispensation granted on 30 September 2024, rejected the plaint in IP-COM/31/2024, vacated all interim orders, and allowed the defendants’ applications (GA-COM/2/2024 and GA-COM/3/2024). The plaintiffs’ suit and application for interim relief (GA-COM/1/2024) were dismissed. A subsequent request for a stay was denied.

Case Title: Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd. and Anr  

Date of Order: 20 March 2025  

Case Number: IP-COM/31/2024; 

Name of Court: High Court at Calcutta, 

Name of Hon’ble Judge: Justice Ravi Krishan Kapur

Interdigital Technology Corporation Vs Xiaomi Corporation

Patent Infringement and Anti Injunction Suit 

Introduction:

This case pertains to a patent infringement dispute involving Standard Essential Patents (SEPs) between InterDigital Technology Corporation and Xiaomi Corporation. The dispute centers on Xiaomi’s alleged unauthorized use of InterDigital’s SEPs related to 3G and 4G technologies in its cellular devices. The matter raises important legal issues concerning anti-suit and anti-enforcement injunctions, the global framework for FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, and the enforcement of patent rights in India.

Detailed Factual Background:

InterDigital Technology Corporation holds SEPs necessary for the implementation of standardized 3G and 4G telecommunications technologies. These SEPs are patents that must be used to comply with international standards for mobile communication and are thus indispensable for manufacturers like Xiaomi that produce standard-compliant devices. The plaintiff alleged that Xiaomi, without obtaining a FRAND license, used these SEPs in its products sold globally, including in India. InterDigital initiated a suit for infringement before the Delhi High Court seeking injunctive relief against Xiaomi. In response, Xiaomi initiated proceedings in Wuhan, China, seeking determination of a global FRAND royalty rate and obtained an anti-suit injunction restraining InterDigital from pursuing its Indian suit.

Detailed Procedural Background:

InterDigital filed CS(COMM) 295/2020 before the Delhi High Court, alleging infringement of its SEPs and sought interim relief. On 23rd September 2020, Xiaomi obtained an anti-suit injunction from the Wuhan Intermediate People’s Court, restraining InterDigital from prosecuting its infringement suit in India. In turn, InterDigital approached the Delhi High Court seeking an anti-enforcement injunction to restrain Xiaomi from enforcing the Wuhan Court’s order in India. The Delhi High Court passed an interim order on 9th October 2020, and after hearing the parties, delivered its final ruling on 3rd May 2021.

Issues Involved in the Case:

Whether Xiaomi could enforce the anti-suit injunction granted by the Wuhan Court in India to restrain the ongoing Indian patent infringement proceedings?Whether InterDigital was entitled to an anti-enforcement injunction against Xiaomi to prevent enforcement of the Wuhan Court’s order?

Detailed Submission of Parties:

InterDigital argued that Xiaomi’s attempt to restrain Indian proceedings by invoking the Wuhan anti-suit injunction violated its fundamental right to legal redress in India and interfered with the Indian court’s jurisdiction over Indian patents. InterDigital emphasized that patent rights are territorial and that Indian courts alone have the authority to decide issues involving Indian patents. The Wuhan Court’s order, if enforced in India, would infringe Indian public policy and constitutional rights. Xiaomi contended that the matter was global and involved determination of FRAND royalty rates, which justified a centralized determination in the Wuhan proceedings. Xiaomi claimed that the anti-suit injunction was aimed at avoiding multiplicity of litigation and conflicting decisions across jurisdictions.

Discussion on SEP, FRAND, and Anti-Suit Injunction:

A Standard Essential Patent (SEP) is a patent that claims an invention which is necessary to comply with a technical standard, such as those for mobile communication protocols like 3G or 4G. Because of their essential nature, SEPs must be licensed to all implementers under FRAND terms to ensure fair access to the standardized technology while compensating patent holders.

FRAND refers to the obligation imposed on SEP holders to license their patents on Fair, Reasonable, and Non-Discriminatory terms. This ensures that SEP holders cannot abuse their market position by demanding exorbitant royalties or engaging in discriminatory licensing.

An anti-suit injunction is a judicial order that restrains a party from initiating or continuing legal proceedings in another jurisdiction. Conversely, an anti-enforcement injunction restrains the enforcement of such an anti-suit injunction in the domestic jurisdiction. These remedies are contentious as they touch upon the sovereignty of courts and the principle of comity, i.e., mutual respect between courts of different jurisdictions.

Detailed Discussion on Judgments along with Complete Citation and Context:

The Court referred to IPCom GmbH & Co KG v. Lenovo Technology (UK) Ltd. [2019] EWCA Civ 38, which highlighted the exceptional nature of anti-enforcement injunctions and their impact on foreign judicial orders. The Court also relied on Huawei v. Conversant Wireless Licensing S.A.R.L. [2020] UKSC 37, where the UK Supreme Court upheld jurisdiction to determine global FRAND royalty terms and emphasized that courts could proceed with FRAND cases despite parallel foreign proceedings. In Modi Entertainment Network v. WSG Cricket Pte Ltd., (2003) 4 SCC 341, the Supreme Court of India held that anti-suit injunctions can be granted when foreign proceedings are oppressive, vexatious, or interfere with the domestic forum’s jurisdiction. The Court cited Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803), to affirm the right of litigants to seek redress under Indian law and the importance of judicial review.

Detailed Reasoning and Analysis of Judge:

The Delhi High Court reasoned that patent rights are inherently territorial, and Indian courts have exclusive jurisdiction over the enforcement of Indian patents. The Court held that the enforcement of the Wuhan Court’s anti-suit injunction in India would infringe InterDigital’s constitutional rights under Articles 14 and 21 and undermine India’s public policy. The Court concluded that comity of courts cannot override a litigant’s right to access Indian courts, particularly in patent disputes governed by Indian law. The Court further reasoned that granting an anti-enforcement injunction was necessary to protect Indian sovereignty and judicial autonomy.

Final Decision:

The Delhi High Court granted an anti-enforcement injunction, restraining Xiaomi from enforcing the Wuhan Court’s anti-suit injunction in India. The Court held that Indian courts are competent to adjudicate disputes concerning Indian patents and no foreign court could restrict access to Indian legal remedies.

Law Settled in this Case:

The judgment establishes that Indian courts have exclusive jurisdiction over Indian patent disputes and that foreign anti-suit injunctions cannot restrict access to Indian courts. The case also affirms the enforceability of anti-enforcement injunctions to uphold Indian public policy and constitutional rights. Further, the judgment clarified that the principles of comity cannot override the territorial jurisdiction of Indian courts in patent matters.

Case Title: Interdigital Technology Corporation & Anr. vs Xiaomi Corporation & Ors.

Date of Order: 3rd May 2021

Case No.: CS(COMM) 295/2020

Neutral Citation: 2021 SCC OnLine Del 4671

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

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

Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks

Fact of the Case:

Raj Vardhan Patodia (HUF) filed an appeal under Section 91 of the Trade Marks Act, 1999 challenging the order dated 12th September 2023 passed by the Registrar of Trade Marks, whereby their opposition to the trade mark application no. 3353986 was deemed abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The Registrar held that the opponent failed to file its evidence affidavit in support of opposition within two months from receipt of the counter statement. The appellant argued that the affidavit was duly sent within time but was misplaced during transit.

Procedural Background (in brief):

The appellant had filed an opposition against the respondent’s trademark application. The Registrar recorded that despite a hearing, the appellant did not justify why it failed to file evidence on time. Consequently, the opposition was treated as abandoned under Rule 45(2). The appellant filed this appeal claiming that the affidavit in support of opposition had indeed been sent on 1st and 2nd February 2022, along with courier receipts, but was lost in transit. The appellant also filed an affidavit before the Registrar explaining these circumstances, but the Registrar still passed the abandonment order.

Provision of law referred in case and context:

The Court relied on Rule 14 of the Trade Marks Rules, 2017, which specifies that service is deemed completed when documents are properly addressed and put into post, and that proving dispatch is sufficient. The Court did not rely on external case law but applied this statutory principle in favor of the appellant.

Reasoning of Court:

The Court noted that under Rule 14(3) of the Trade Marks Rules, it is sufficient to prove that the document was addressed correctly and dispatched. The appellant furnished courier receipts and an affidavit showing that the affidavit in support of opposition was sent on time to both the Trade Marks Registry and the respondent. The Court observed that the loss of the documents in transit was not attributable to the appellant. Further, the Court stressed that principles of natural justice required that the opposition be considered on merits, as the appellant had complied with the procedural requirements. Therefore, the abandonment order was unsustainable.

Decision:

The Court set aside the order dated 12th September 2023 passed by the Registrar of Trade Marks. The appellant's opposition was restored, and the Trade Marks Registry was directed to take the appellant's evidence affidavit on record. The respondent was directed to file its evidence in reply as per rules. The Court also ordered cancellation of the trademark registration granted to the respondent in application no. 3353986.

Case Title: Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks & Anr.

Date of Order: 18th March 2025

Case Number: C.A.(COMM.IPD-TM) 3/2024

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

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

Tapesh Pal Vs The State of West Bengal

Fact of the Case:

The petitioner, Mr. Tapesh Pal, filed a criminal revision petition seeking to quash criminal proceedings against him, including the charge sheet arising out of Amherst Street Police Station Case No. 311 dated 11.11.2019. The case was registered under Sections 420/120B of the IPC and Section 63 of the Copyright Act, 1957. The case stemmed from a complaint by Aman Preet, who alleged that counterfeit and infringing sports goods under the brands "SG" and "Nivia" were being sold by unauthorized dealers. During a raid, counterfeit products were recovered from a shop where Mr. Tapesh Pal was present.

Procedural Background (in brief):

Following the complaint, an FIR was registered against unknown accused persons. After investigation, a charge sheet was filed against Mr. Tapesh Pal under Section 63 of the Copyright Act. The Magistrate took cognizance and issued process against him. The petitioner moved the High Court under Section 482 CrPC to quash the proceedings, arguing that he was not the shop owner and that the complaint was procedurally defective as it was filed in the complainant's individual capacity instead of by the authorized company.

Judgments referred in case with complete citation and context:

The petitioner relied on Mehmood Ul Rehman and Ors. v. Khazir Mohammad Tunda and Ors., (2015) 12 SCC 420, to argue that cognizance should not be taken mechanically and should be based on the Magistrate's application of mind to the complaint and material on record. The petitioner also cited Shankar Finance and Investments v. State of Andhra Pradesh and Ors., (2008) 8 SCC 536, to assert that delegation of power to lodge a complaint must follow legal formalities and cannot be loosely interpreted. Another case referred to was A.R. Antulay v. Ramdas Sriniwas Nayak and Ors., AIR 1984 SC 718, where the Court emphasized that statutory requirements must be strictly followed. The petitioner also relied on The State of Haryana v. Bhajan Lal, AIR 1992 SC 604, to argue that criminal proceedings can be quashed if they amount to an abuse of process. Further, Parbatbhai Aahir alias Parbatbhai Bhimsinhbhai Karmur and Ors. v. State of Gujarat and Anr., (2017) 9 SCC 641, was cited regarding the limited and cautious application of inherent powers under Section 482 CrPC. In response, the opposite party referred to Mita India Pvt. Ltd. v. Mahendra Jain, 2023 (3) SCALE 18, to submit that sub-delegation by a power of attorney holder is valid if permitted by specific authorization.

Reasoning of Court:

The Court found that counterfeit goods bearing "SG" and "Nivia" marks were recovered from the shop where the petitioner was present. The petitioner had failed to provide valid documentation or explanation regarding the possession of the counterfeit goods, nor could he establish through evidence that he was not responsible for managing the shop. The Court also noted that authorizations and documents regarding the delegation of power raised disputed facts that could only be determined during trial. The Court held that the petitioner’s contentions regarding the lack of proper complaint procedure and lack of his liability required factual adjudication through evidence, which could not be resolved at this stage. Further, the Investigating Officer’s findings and the seizure of infringing goods established a prima facie case under Section 63 of the Copyright Act against the petitioner.

Decision:

The High Court dismissed the Criminal Revisional application, holding that there was no abuse of process and that the matter should proceed to trial. The Court emphasized that the petitioner's innocence or involvement should be determined after evidence is led during trial.

Case Title: Mr. Tapesh Pal vs The State of West Bengal & Another

Date of Order: 12th March 2025

Case Number: CRR 2057 of 2021

Neutral Citation: Not specified in the document

Name of Court: High Court at Calcutta, Appellate Side

Name of Hon'ble Judge: Hon'ble Mr. Justice Ajay Kumar Gupta

Mannat Group of Hotels Private Limited Vs Mannat Dhaba

Fact of the Case:

Mannat Group of Hotels Private Limited and its managing director, Mr. Virender Singh Kadyan (plaintiffs), filed a suit seeking a permanent injunction against M/s Mannat Dhaba and others (defendants) for trademark infringement and passing off. The plaintiffs, who have been using the brand "MANNAT" since 2008 for their hotel and restaurant business, alleged that the defendants were operating restaurants under deceptively similar names such as "MANAT DHABA," "MANNATT DHABA," and others on the Delhi-Dehradun highway. The plaintiffs contended that the defendants were deliberately copying their marks and goodwill to mislead consumers into believing that their establishments were associated with the plaintiffs.

Procedural Background (in brief):

The suit was filed in December 2023, and the Court granted an ex-parte ad-interim injunction in favor of the plaintiffs on 4th January 2024. Despite service, the defendants did not file any written statement, leading to the closure of their right to file the same on 21st August 2024. The plaintiffs later submitted that defendants no. 2 and 3 had changed their branding, so no reliefs were pressed against them, and they were removed from the array of parties. Defendants no. 1 and 4 were proceeded ex-parte.

Judgments referred in case with complete citation and context:

The Court referred to Foodlink F and B Holdings India Private Limited v. Wow Momo Foods Private Limited, 2023 SCC OnLine Del 4719. In that judgment, the Court highlighted that the test for consumer confusion is based on the perspective of a customer of average intelligence and imperfect recollection. If such a consumer, after encountering both marks at different times, wonders whether they are connected, then "initial interest confusion" is established. This principle was applied here to show that the defendants’ use of deceptively similar marks was likely to mislead the public.

Reasoning of Court:

The Court noted that since defendants no. 1 and 4 did not file any written statement or affidavit of admission/denial, the plaintiffs' averments and documents were deemed admitted as per Rule 3 of the Delhi High Court (Original Side) Rules, 2018. The Court observed that the defendants had slavishly imitated the plaintiffs’ "MANNAT" marks and branding for identical services (restaurant operations), leading to a likelihood of confusion and misrepresentation to the public. The Court concluded that the defendants' actions amounted to clear trademark infringement and passing off, with mala fide intent to ride on the plaintiffs’ goodwill and reputation.

Decision:

The Court decreed a permanent injunction in favor of the plaintiffs and against defendants no. 1 and 4, restraining them from using the infringing marks or any deceptively similar branding. The plaintiffs did not press for other reliefs, and the pending applications were disposed of.

Case Title: Mannat Group of Hotels Private Limited Vs Mannat Dhaba 

Date of Order: 12th March 2025

Case Number: CS(COMM) 859/2023

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

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

The Indian Hotels Company Limited Vs Gaurav Roy Bhatt & Anr.

Fact of the Case:

The Indian Hotels Company Limited (plaintiff), part of the Tata Group and owner of the renowned TAJ brand, filed a suit against Gaurav Roy Bhatt & Anr. (defendants) for infringement of their TAJ trademarks, copyright, and passing off. The plaintiff has been operating under the TAJ marks since 1903, with its first hotel being The Taj Mahal Palace, Mumbai. The plaintiff has expanded its hospitality services across 13 countries and more than 130 locations globally. The plaintiff alleged that the defendants' activities were unauthorized and detrimental to the goodwill and reputation of the TAJ marks.

Procedural Background (in brief):

The suit was filed in 2023, and summons were issued on 10th October 2023. On the same date, the Court granted an ex-parte ad-interim injunction and appointed a Local Commissioner. The defendants appeared on 21st November 2023 and filed a written statement. On 24th January 2025, the defendants conceded and agreed to a decree of permanent injunction. Subsequently, the plaintiff pressed for a declaration of its TAJ marks as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act, 1999, which was not opposed by the defendants. The plaintiff filed supporting affidavits and led evidence, following which the Court proceeded to decide the issue.

Provision of law referred in case  and context:

The Court referred to and relied upon the statutory framework under Section 11(6) and 11(7) of the Trade Marks Act, 1999, which lists the factors to be considered in determining whether a mark qualifies as a well-known trademark. These provisions highlight the importance of a mark’s recognition among the public, its duration and geographical extent of use and promotion, its registrations, and its enforcement history. The Court also cited its previous judgment in The Indian Hotels Company Limited v. Grand Vivanta Vacations Private Limited, CS(COMM) 560/2022, where the plaintiff’s "VIVANTA" mark was declared a well-known trademark in relation to hotels.

Reasoning of Court:

The Court observed that the plaintiff had satisfied all the statutory factors outlined under Sections 11(6) and 11(7) of the Trade Marks Act. The Court noted that the TAJ marks had been in continuous and extensive use since 1903 and were widely recognized in India and internationally. The Court also relied on the plaintiff’s substantial presence in the hospitality industry with over 350 hotels globally, widespread advertising and promotions, significant revenue and brand recognition. The Court accepted the evidence showing that the TAJ marks had been awarded and recognized across multiple platforms, had a large social media following, and were associated with India’s heritage and culture. Additionally, the plaintiff had a successful record of enforcing its trademark rights against third parties in previous suits. On this basis, the Court concluded that the TAJ marks enjoy immense goodwill and reputation, thereby fulfilling the criteria for being declared as well-known marks under Indian trademark law.

Decision:

The Court passed a decree of permanent injunction against the defendants in terms of the plaintiff’s earlier reliefs and declared the TAJ marks as well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

Case Title: The Indian Hotels Company Limited Vs Gaurav Roy Bhatt

Date of Order: 11th March 2025

Case Number: CS(COMM) 717/2023

Neutral Citation: 2025:DHC:1714

Name of Court: High Court of Delhi at New Delhi

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

FMC Corporation Vs Hindustan Fertilizers

Factual Background:

FMC Corporation and its subsidiaries filed a suit against Hindustan Fertilizers Private Limited and another entity for trademark infringement and passing off concerning their registered trademark "CORAGEN." The plaintiffs, global leaders in agricultural sciences, had been using the mark since 2006 and had built significant goodwill. The defendants were found to be using the deceptively similar mark "CORAGIN" for the same class of products, causing confusion among consumers, particularly farmers. The plaintiffs discovered the infringing products being marketed on e-commerce platforms, leading to the present suit.

Procedural Background:

The suit was filed seeking a permanent injunction, and the court initially granted an ex-parte ad-interim injunction against the defendants. A local commissioner was appointed to seize infringing products, but the defendants' addresses were found incorrect. The court allowed substituted service through publication. As the defendants failed to appear, they were proceeded against ex-parte, and no written statement was filed, leading to the matter being decided based on the plaintiffs’ claims.

Provisions of Law Referred and Their Context:

The court applied provisions of the Trade Marks Act, 1999, to assess infringement and passing off. Order VI Rule 17 CPC was invoked for amendment of the plaint. Order VIII Rule 10 CPC allowed the suit to be decreed in the absence of a written statement. The Delhi High Court (Original Side) Rules, 2018, were referred to deem the plaintiffs' documents admitted due to non-denial by the defendants.

Reasoning of Court:

The court found that the defendants’ mark "CORAGIN" was deceptively similar to "CORAGEN" and that their packaging, color scheme, and design also mimicked the plaintiffs' branding. Given that the products were agricultural pesticides targeted at farmers, who may not carefully distinguish between similar-looking brands, the likelihood of confusion was high. The defendants’ continued unauthorized use of the plaintiffs’ mark without appearing in court indicated a lack of defense. The plaintiffs’ reputation and goodwill were at risk due to misrepresentation by the defendants.

Decision:

The court passed a decree of permanent injunction restraining the defendants from using "CORAGIN" and similar marks. The plaintiffs' claims were upheld under trademark infringement and passing off laws. The court noted that the defendants' failure to appear or contest the case further justified the reliefs sought. A decree sheet was ordered to be drawn up, and all pending applications were disposed of.

Case Title: FMC Corporation Vs. Hindustan Fertilizers Private Limited 

Date of Order: 11th March 2025

Case Number: CS(COMM) 652/2024

Neutral Citation: 2025:DHC:1704

Court: High Court of Delhi

Hon’ble Judge: Justice Amit Bansal

Milliken and Company Vs Controller of Patents and Designs

Fact of the Case:

Milliken and Company, the appellant, challenged the refusal of their Indian patent application (no. 6093/DELNP/2013) for "Additive Compositions and Thermoplastic Polymer Compositions Comprising the Same" by the Assistant Controller of Patents and Designs. The rejection was based on two grounds: lack of inventive step and insufficiency of disclosure. Milliken contended that the Assistant Controller failed to consider a crucial statement by Dr. Nathan A. Mehl, an expert and employee of the company, filed during the post-hearing submissions.

Procedural Background (in brief):

The patent application was filed in India in 2013 and went through various stages, including the issuance of the First Examination Report (FER) and a pre-grant opposition. In 2023, the Assistant Controller refused the patent application under Section 15 of the Patents Act, 1970. The appellant then filed this appeal under Section 117(A) of the Patents Act, arguing that procedural irregularity occurred due to non-consideration of Dr. Mehl’s statement, which addressed key objections. The matter was heard on 13th November 2024 and 11th March 2025.

Reasoning of Court:

The Court held that the appellant had submitted the expert statement of Dr. Nathan A. Mehl within the permissible time frame under Rule 28(7) of the Patent Rules, 2003. The Court rejected the respondent’s argument that Dr. Mehl’s status as an employee invalidated the independence or weight of his statement. The Court emphasized that industry experts, even if employees, are often competent to provide technical clarifications.

Additionally, the Court clarified that decisions of foreign patent offices, such as the European Patent Office’s rejection of Dr. Mehl’s statement, are not binding on Indian authorities. To support this view, the Court referred to the judgment in Communication Components Antenna Inc. v. Ace Technologies Corp. and Ors., 2019 SCC OnLine Del 9123, where it was held that foreign patent grants or rejections have only a persuasive value and cannot dictate the decision-making process of the Indian Patent Office. The Delhi High Court in that case had stated that claims in foreign jurisdictions could be referred to ensure that the invention is broadly the same and to avoid "evergreening" but cannot be treated as determinative for the Indian decision-making process.

Based on this, the Court concluded that the Assistant Controller should have independently evaluated Dr. Mehl’s statement.

Decision:

The Court remanded the matter back to the Assistant Controller of Patents and Designs for a fresh hearing and a de novo consideration of the patent application, specifically directing the Assistant Controller to assess Dr. Nathan A. Mehl’s statement on merits. A fresh speaking order was directed to be passed following the hearing.

Case Title: Milliken and Company vs Controller of Patents and Designs & Anr.

Date of Order: 11th March 2025

Case Number: C.A.(COMM.IPD-PAT) 15/2023

Neutral Citation: Not provided in the document

Name of Court: High Court of Delhi

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