Kirloskar Diesel Recon Pvt. Ltd. Vs. Kirloskar Proprietary Ltd.

Common field of activity isn’t essential for passing off when a name carries secondary meaning

Introduction:

In the intricate landscape of intellectual property law, few cases encapsulate the tension between heritage and innovation as vividly as Kirloskar Diesel Recon Pvt. Ltd. and Others vs. Kirloskar Proprietary Ltd. and Others. Decided on October 10, 1995, by the Bombay High Court, this dispute pits a venerable industrial dynasty—the Kirloskar Group—against a trio of upstart companies helmed by a former insider, all vying for the right to wield the iconic "Kirloskar" name. This legal showdown, rooted in a passing-off action, explores the boundaries of trademark protection, the relevance of business similarity, and the equitable limits of delay, weaving a narrative that balances corporate identity with public perception. With its blend of historical legacy and modern legal principles, the case stands as a cornerstone in India’s jurisprudence on trade names and goodwill.

Detailed Factual Background:

The story begins in 1888, when Laxmanrao Kashinath Kirloskar and his brother Ramuanna launched a bicycle repair business in Belgaum. By 1910, their operations had relocated to Kundal, later rechristened Kirloskarwadi, a testament to their growing influence. In 1920, the brothers transformed their enterprise into a public limited company, birthing the "Kirloskar Group of Companies." Over decades, this group evolved into a sprawling conglomerate, its name synonymous with quality across diverse sectors—from pumps and engines to financial services. The respondents in this case—Kirloskar Proprietary Ltd., Kirloskar Brothers Ltd., Kirloskar Cummins Ltd., Kirloskar Electric Co. Ltd., Kirloskar Pneumatic Co. Ltd., Kirloskar Leasing and Finance Ltd., and Kirloskar Investments and Finance Ltd.—embodied this legacy. Kirloskar Proprietary Ltd., the first respondent, held registered trademarks and copyrights for "Kirloskar" under the Trade and Merchandise Marks Act, 1958, and the Copyright Act, 1957, licensing these to respondents 2 to 5 and permitting use by respondents 6 and 7. By 1992, the group boasted a turnover of Rs. 625 crores, assets of Rs. 325 crores, and a global reputation reinforced by a 1988 centenary celebration marked by a commemorative postal stamp.

The appellants entered this narrative in 1991. Kirloskar Diesel Recon Pvt. Ltd. (incorporated March 12, 1991), Kirloskar Transport Pvt. Ltd. (January 22, 1991), and Kirloskar Holdings Pvt. Ltd. (April 3, 1991) were promoted by the second appellant, a former president of Kirloskar Cummins Ltd. from 1983 to 1985. Each adopted "Kirloskar" as part of its corporate name, ostensibly to capitalize on the name’s cachet. The respondents caught wind of this on May 28, 1992, via a letter from patent agents about Kirloskar Holdings’ logo registration attempt, prompting further investigation. On August 3, 1992, they issued a cease-and-desist letter, alleging passing off and deception. The appellants rebuffed this, claiming a right to the name, setting the stage for litigation.

Detailed Procedural Background

The respondents filed three civil suits—Nos. 3, 4, and 5 of 1993—in the District Court of Pune, seeking a permanent injunction to bar the appellants from using "Kirloskar" in their corporate names or trading styles to pass off their goods or businesses as those of the respondents. Concurrently, they sought interim injunctions under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908. On June 14, 1994, the III Additional District Judge, Pune, granted these interim reliefs, restraining the appellants pending the suits’ final resolution.The appellants appealed to the Bombay High Court, filing Appeals from Order Nos. 1152, 1153, and 1154 of 1994, each corresponding to one of the suits. Given their shared factual and legal core—differing only in the first appellant per case—the High Court consolidated them for a unified judgment. On October 10, 1995, after extensive arguments, the court delivered its verdict, affirming the lower court’s order.

Issues Involved in the Case:

The case crystallized into several pivotal issues: Did the District Court, Pune, have jurisdiction under Section 105(c) of the Trade and Merchandise Marks Act, 1958, to hear the passing-off suits? Did the appellants’ use of "Kirloskar" constitute passing off, despite differing business fields? Did the respondents’ delay in filing the suits amount to acquiescence, barring relief? Could the appellants claim a bona fide right to use "Kirloskar" under Section 34 as a surname? And did the balance of convenience favor granting or denying the interim injunction?

Detailed Submission of Parties:

The appellants, led by Mr. Kane, mounted a multifaceted defense. They challenged the District Court’s jurisdiction, arguing the respondents lacked a unified cause of action, rendering the suits misjoined. They asserted that their distinct business activities—unlike the respondents’—precluded passing off, as no confusion was plausible among discerning customers. They emphasized that their corporate names were legally allotted under the Companies Act, 1956, unchallenged within the one-year statutory window, and invoked Section 34, claiming the second appellant’s surname justified their use. Delay was a key plank: a 1991 notice to Kirloskar Cummins Ltd.’s board, they argued, gave the respondents constructive knowledge, and their inaction until 1993 signaled acquiescence or waiver. Finally, they contended that the balance of convenience favored them, as an injunction would disrupt their nascent businesses, while the respondents’ established status mitigated any harm.

The respondents, represented by Mr. Tulzapurkar, countered robustly. They defended jurisdiction under Section 105(c), asserting that "Kirloskar" as a trade name fell within the Act’s ambit. They argued that their century-long reputation made "Kirloskar" exclusively theirs, and the appellants’ use misrepresented a connection, likely deceiving the public—common fields notwithstanding. Fraudulent intent wasn’t required, only a likelihood of confusion, which their goodwill substantiated. They dismissed the Section 34 defense, noting it didn’t extend to artificial entities, and denied delay or acquiescence, pointing to prompt action post-discovery in 1992. The balance, they claimed, tilted toward them: their entrenched reputation trumped the appellants’ recent ventures, and public interest demanded protection from deception.

The appellants leaned on an array of precedents:

Alkem Laboratories Pvt. Ltd. vs. Alchem (India) Ltd., Notice of Motion No. 3028 of 1988 in Suit No. 3198 of 1988 (Bombay High Court, November 27, 1990, Srikrishna, J.): Dissimilar products (pharmaceuticals vs. ferric alum) and no secondary meaning in "Alkem" denied an injunction, supporting distinct activities.Indian Aluminium Co. Ltd. vs. Indals (Agencies) Pvt. Ltd., Notice of Motion No. 7 of 1990 in Suit No. 3648 of 1989 (Bombay High Court, November 25, 1991, Jhunjhunuwala, J.): Bona fide adoption of "Indals" with no confusion risk prevailed, aligning with the appellants’ intent claim.Aktiebolaget Volvo vs. Volvo Steels Ltd., Notice of Motion No. 950 of 1995 in Suit No. 1055 of 1955 (Bombay High Court, April 28, 1995, Jhunjhunuwala, J.): Distinct fields (cars vs. steel) and minimal plaintiff reputation in India negated passing off, echoing dissimilarity.S.M. Chemicals & Electronics Ltd. vs. Symtronics, Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 (Bombay High Court, August 7, 1975, Rege, J.): Different goods and no confusion risk denied relief, reinforcing the appellants’ argument.The Pianolist Company Ltd., (1906) 23 RPC 774: UK allowance of surname use absent fraud bolstered Section 34.R.T. Engineering & Electronics Co., AIR 1972 Bombay 157: Literate buyers reduced confusion, per Bombay High Court, aiding customer discernment.Stringfellow vs. McCain Foods (GB) Ltd., (1984) RPC 501: UK ruling on nightclubs vs. fries supported distinct fields.Victory Transport Co. Pvt. Ltd. vs. District Judge, Ghaziabad: Allahabad High Court’s tests of secondary meaning and confusion likelihood favored the appellants.Sony Kabushiki Kaisha vs. Shamrao Maskar: Bombay High Court found electronics vs. nail polish unconfusing, per dissimilarity.John Taylor Peddie, 61 RPC 31: UK surname use upheld, reinforcing Section 34.Parker-Knoll Ltd. vs. Knoll International Britain (Furniture & Textiles) Ltd., 1961 RPC 346: UK confusion alone didn’t suffice, cited for limits.urton vs. Turton, (1889) 42 Ch D 128: Honest surname use permitted, per UK court, for bona fides.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords allowed some confusion, but appellants focused on its constraints.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1986) FSR 479: South African distinct contexts reduced confusion.County Sound Plc vs. Ocean Sound Ltd., (1991) FSR 367: UK radio services lacked confusion, per dissimilarity.Harold Lee (Mantles) Ltd. vs. Harold Harley (Fashions) Ltd., 71 RPC 57: Honest use prevailed, cited for intent.K.G. Khosla Compressors vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi’s name protection was distinguished.Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay’s injunction was downplayed for differing facts.Optrex India Ltd. vs. Optrex Ltd., Appeal No. 381 of 1989 (Bombay High Court, November 15-17, 1989, Desai and Kenia, JJ.): Distinct fields denied relief.

The respondents countered with:

Azim Gadighar vs. Abdul Aziz: Bombay High Court upheld jurisdiction for passing off, per Section 105(c).K.G. Khosla Compressors Ltd. vs. Khosla Extraktions Ltd., AIR 1986 Delhi 181: Delhi protected names beyond goods.Albion Motor Car Co. Ltd. vs. Albion Carriage and Motor Body Works Ltd., 34 RPC 257: UK confusion in related fields justified relief.Baume & Co. Ltd. vs. A.H. Moore Ltd., (1958) 2 All ER 113: UK restrained honest use causing deception.Bajaj Electricals Ltd. vs. Metals & Allied Products, Bombay: Bombay relied on Parker-Knoll for injunctions.Sturtevant Engineering Co. Ltd. vs. Sturtevant Mills Co. of USA Ltd., (1936) 3 All ER 137: UK confusion risk sufficed.John Haig & Co. Ltd. vs. John D.D. Haig Ltd., (1957) 16 RPC 381: UK reputation trumped honest use.Fine Cotton Spinners vs. Harwood Cash & Co. Ltd., 24 RPC 533: Pre-Parker-Knoll goodwill transfer was distinguished.Kingston, Miller & Co. Ltd. vs. Thomas Kingston & Co. Ltd., (1912) 1 Ch D 575: UK confusion risk warranted relief.Parker-Knoll Ltd. vs. Knoll International Ltd., 1962 RPC 265: House of Lords prioritized fair trading.Boswell-Wilkie Circus vs. Brian Boswell Circus, (1985) FSR 434: South African alignment with Parker-Knoll. Hindustan Pencils Pvt. Ltd. vs. India Stationery Products Co.: Delhi favored injunctions over delay for public interest.Astra-IDL Ltd. vs. T.T.K. Pharma Ltd.: Bombay upheld relief despite delay if strong prima facie.Schering Corporation vs. Kilitch Co. (Pharma) Pvt. Ltd., 1994 (1) IPLR 1: Bombay ruled time lapse isn’t laches.Daimler Benz Aktiegesellschaft vs. Hybo Hindustan: Delhi protected household names.Bhandari Homeopathic Laboratories vs. L.R. Bhandari, 1976 Tax LR 1382 (Delhi): Companies lacked surname defense.North Cheshire and Manchester Brewery Co. Ltd. vs. Manchester Brewery Co. Ltd., (1899) AC 83: House of Lords restrained deceptive names.Ewing vs. Buttercup Margarine Co. Ltd., (1917) 2 Ch 1: UK confusion risk sufficed.Sarabhai International Ltd. vs. Sara Exports International, AIR 1988 Delhi 134: Delhi extended name protection.Saville Perfumery Ltd. vs. June Perfect Ltd., 58 RPC 147: UK likelihood of confusion sufficed.Wright, Layman & Umney Ltd. vs. Wright, 66 RPC 149: UK reputation protection was key.British Bata Shoe Co. Ltd. vs. Czechoslovak Bata Co. Ltd., 64 RPC 72: UK upheld interlocutory relief.Sheraton Corporation of America vs. Sheraton Motels Ltd., (1964) RPC 202: UK favored early injunctions. Poddar Tyres Ltd. vs. Bedrock Sales Corporation: Bombay reinforced name protection.Power Control Appliances vs. Sumeet Machines Pvt. Ltd., 1994 AIR SCW 2760: Supreme Court required active acquiescence.

Detailed Reasoning and Analysis of Judge:

The Bombay High Court’s  delivered a comprehensive analysis. On jurisdiction, the court affirmed Section 105(c)’s broad scope, interpreting "trade mark" to include trade names like "Kirloskar,".Delay was swiftly dispatched: the 1½-year gap from the 1991 notice to the 1993 suits was deemed inconsequential. Citing Astra-IDL, Hindustan Pencils, Schering, and Power Control Appliances, the judge held that delay didn’t imply acquiescence absent intent to license, especially with a strong prima facie case and public interest at stake. The appellants’ insider knowledge undermined estoppel claims.The passing-off crux saw the judge reject the appellants’ common-field argument. Tracing its evolution from McCulloch (65 RPC 58) to its debunking in Henderson (1969 RPC 218) and Marage Studies (1991 FSR 145), the court emphasized "Kirloskar"’s household status and the respondents’ diverse portfolio—overlapping with appellants’ objects. Cases like Albion and Daimler Benz supported a focus on public confusion, not activity parity. The appellants’ use risked goodwill erosion, per Ewing and North Cheshire.Section 34’s bona fide use defense collapsed: Parker-Knoll (1962 RPC 265), Bhandari, and Sarabhai clarified that artificial entities lack surname rights, and the second appellant’s prior role negated good faith. Confusion likelihood, not intent, drove relief, per Saville Perfumery and Baume.Balance of convenience tilted decisively: the respondents’ 50-year legacy, vast operations, and reputation dwarfed the appellants’ recent, unproven ventures. Injunctions preserved the status quo without halting the appellants’ businesses, only their use of "Kirloskar," aligning with Poddar Tyres and Sheraton.

Final Decision:

The Bombay High Court dismissed the appeals, upheld the interim injunctions with costs, and denied a stay, expediting certified copies.

Law Settled in This Case:

The judgment established that: Section 105(c) governs passing off via trade names; common field of activity isn’t essential for passing off when a name carries secondary meaning; delay doesn’t preclude injunctions if the case is strong and public interest demands protection; Section 34 doesn’t shield artificial entities’ name use without bona fides; and interlocutory relief prioritizes goodwill over mere inconvenience.

Case Title: Kirloskar Diesel Recon Pvt. Ltd. Vs Kirloskar Proprietary Ltd. 

Date of Order: October 10, 1995

Case No.: Appeals from Order Nos. 1152, 1153, and 1154 of 1994

Neutral Citation: AIR 1996 BOM 149; 1996 (2) BOMCR 642; (1996) 98 BOMLR 972

Name of Court: Bombay High Court

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

Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive

Introduction:

The case of Madhu Food Products v. Surya Processed Food Pvt. Ltd. revolves around trademark infringement and passing off concerning confectionery products. The dispute involves the respondent, Surya Processed Food Pvt. Ltd., which markets its products under the trademark HUNK, and the appellant, Madhu Food Products, which sells similar products under the mark HUNT. The core issue was whether the appellant’s use of the mark HUNT and its packaging was deceptively similar to the respondent’s trademark HUNK and trade dress, thereby misleading consumers and passing off its products as that of the respondent.

The Respondent’s Case:

Surya Processed Food Pvt. Ltd. (the respondent) is a company incorporated under the Companies Act, 1956, engaged in the manufacturing and marketing of food items such as biscuits, wafers, chocolates, cookies, and cakes. The respondent claims to have coined the trademark HUNK in 2007 and applied for its registration on December 28, 2007, in Class 30 under a "proposed to be used" basis.The respondent commenced commercial usage of the mark HUNK in 2018 and claims continuous use since then.The respondent invested significantly in advertising, amounting to ₹74.71 crores over five years, and achieved a turnover of ₹55.76 crores during the financial year 2022-23.The respondent alleged that the appellant was marketing its chocolate and caramel-coated wafer bars under the deceptively similar mark HUNT with a packaging that closely resembled the trade dress of HUNK.

The Appellant’s Case:Madhu Food Products (the appellant), a registered partnership firm, claimed to be engaged in producing world-class confectionery.The appellant stated that it adopted the mark CHOCO HUNT in 2018 for chocolates, confectionaries, and wafers.The mark CHOCO HUNT was registered under Class 30 with a proposed-to-be-used claim filed on October 27, 2018.The appellant argued that it used its mark honestly and denied copying the respondent’s packaging or trade dress.It claimed that its house brand was NEO, while the respondent used the brand PRIYA GOLD, thus making the products distinguishable.

Procedural Background:

The respondent filed CS(COMM) 195/2023 against the appellant in the Commercial Court, alleging trademark infringement, copyright infringement, and passing off.The respondent also filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking an interim injunction to restrain the appellant from using the trademark HUNT or any deceptively similar mark.The Commercial Court passed an interim order in favor of the respondent, granting the injunction and appointing a Local Commissioner to seize and prepare an inventory of the infringing goods.The appellant, aggrieved by the decision, filed an appeal (FAO (COMM) 157/2024) before the Delhi High Court, challenging the Commercial Court's order dated June 5, 2024.

Issues Involved:

Whether the appellant’s use of the mark HUNT was deceptively similar to the respondent’s mark HUNK and likely to cause confusion among consumers?

Appellant’s Submissions:

The appellant argued that it was the legitimate owner of the registered trademark CHOCO HUNT and that its mark was visually and phonetically different from HUNK.It contended that the Commercial Court erred in not considering that the respondent had suppressed material facts, such as the existence of the registered mark CHOCO HUNT.The appellant claimed that the similarity in packaging was merely due to the use of the color brown, which was common in the confectionery industry and could not be monopolized.It further argued that its use of the word CHOCO in small font was irrelevant and did not amount to infringement.

Respondent’s Submissions:

The respondent contended that it was the prior user of the mark HUNK and had extensively advertised and promoted the same.It argued that the appellant intentionally reduced the visibility of the word CHOCO in CHOCO HUNT, making HUNT the prominent mark, which created a likelihood of confusion.The respondent presented material, including advertisements featuring celebrities, to demonstrate the goodwill associated with HUNK.The respondent also submitted physical samples of both products, highlighting the similarity in packaging, trade dress, and overall commercial impression.

Discussion on Judgments Cited:

Wander Ltd. & Anr. v. Antox India (P) Ltd.: 1990 Supp SCC 727:The High Court referred to the principles laid down in this case to assess whether the interim injunction should be interfered with.The Supreme Court in Wander Ltd. held that appellate courts should not lightly interfere with discretionary orders passed by lower courts unless they are perverse or arbitrary.Applying this principle, the Delhi High Court held that the Commercial Court had correctly applied the law, and there was no reason to interfere with its discretion.

Reasoning and Analysis of the Judges:

Prima Facie Similarity:The Delhi High Court observed that the competing products' packaging, trade dress, and color scheme were strikingly similar.The word CHOCO in the appellant’s mark was displayed in an insignificant font, while HUNT was prominently featured, creating an overall impression of similarity with the respondent’s HUNK.Prior User Advantage:The court noted that the respondent was the prior user of the mark HUNK since July 2018, supported by invoices, while the appellant filed for its mark CHOCO HUNT in October 2018, indicating subsequent use.Misleading Trade Dress:The court held that the similarity in trade dress, including packaging color and design, created a likelihood of confusion, strengthening the case of passing off.No Suppression of Facts:The court rejected the appellant’s claim of suppression of facts, stating that the respondent's failure to search for CHOCO HUNT was not misleading or fraudulent. The court found no reason to disbelieve the respondent’s claim of conducting a trademark search.

Final Decision:The Delhi High Court dismissed the appellant's appeal, upholding the Commercial Court's injunction order. The appellant was ordered to pay ₹50,000 in costs.

Law Settled in the Case: The judgment reinforces the principle that prior use of a trademark holds significant weight in determining infringement disputes.It clarifies that minor variations in trade dress or font size do not absolve a party from infringement if the overall commercial impression is deceptive.It reiterates that appellate courts should not interfere with the discretion of lower courts unless the orders are arbitrary or capricious.

Case Title: Madhu Food Products Vs. Surya Processed Food Pvt. Ltd.

Date of Order: August 8, 2024

Case No.: FAO (COMM) 157/2024

Neutral Citation: 2024:DHC:6118-DB

Court: Delhi High Court

Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Sachin Datta

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

OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.

Hyperlinked Harm: Navigating Defamation in the Digital Age"

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Factual Background

The plaintiffs, comprising individuals and companies (OFB Tech Private Limited and Oxyzo Financial Services Ltd.), filed a defamation suit against Slowform Media Pvt. Ltd. and its associates over an article published on 17.05.2023 titled "the work culture of OfBusiness does not like to talk about." This article, alleging a toxic work culture at OFB, was hyperlinked in subsequent articles, including one on 07.10.2024. The plaintiffs sought its removal, claiming reputational damage, while the defendants defended it as truthful journalism.

Procedural Background

The suit (CS(OS) 944/2024) was filed after an earlier suit (CS(OS) 825/2024) addressed the 07.10.2024 article, which was injuncted on 15.10.2024. In the present case, summons were issued on 29.11.2024, followed by applications: I.A. 2506/2025 (Order VII Rule 11 CPC) by defendants to reject the plaint, and I.A. 46557/2024 (Order XXXIX Rule 1 & 2 CPC) by plaintiffs for an injunction. Judgment was reserved on 20.02.2025 and pronounced on 24.03.2025.

Provisions of Law Referred and Their Context

• Order VII Rule 11 CPC: Defendants sought plaint rejection, arguing the suit was barred by limitation (filed beyond one year from 17.05.2023) and Order II Rule 2 (failure to raise in earlier suit).
• Order XXXIX Rule 1 & 2 CPC: Plaintiffs sought an interim injunction to restrain publication, citing irreparable harm.
• Order II Rule 2 CPC: Examined whether the current suit was barred due to overlap with the earlier suit.
• Article 19, Constitution of India: Defendants invoked freedom of speech to protect source anonymity and journalistic rights.

Judgments Referred with Complete Citation and Context

1. Dalip Singh v. Mehar Singh Rathee, (2004) 7 SCC 650: Cited by plaintiffs to argue distinct causes of action in separate suits.
2. K.A. Paul v. K. Natwar Singh & Ors., 2009 SCC OnLine Del 2382: Supported plaintiffs’ claim against misjoinder of causes.
3. Rathnavathi v. Kavita Ganashamdas, (2015) 5 SCC 223: Reinforced plaintiffs’ stance on separate remedies.
4. Pramod Kumar v. Zalak Singh, (2019) 6 SCC 621: Upheld plaintiffs’ right to file multiple suits.
5. Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co., (1997) 1 SCC 99: Plaintiffs argued continuing cause of action via hyperlinking.
6. Dahiben v. Arvindbhai Kalyanji Bhanusali, (2020) 7 SCC 366: Defined grounds for plaint rejection under Order VII Rule 11.
7. Sopan Sukhdeo Sable v. Asstt. Charity Commr., (2004) 3 SCC 137: Emphasized curbing frivolous litigation.
8. Hardesh Ores (P) Ltd. v. Hede & Co., (2007) 5 SCC 614: Stressed holistic plaint reading.
9. Azhar Hussain v. Rajiv Gandhi, 1986 Supp SCC 315: Highlighted preventing abortive litigation.
10. Saleem Bhai v. State of Maharashtra, (2003) 1 SCC 557: Allowed Order VII Rule 11 exercise at any stage.
11. Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., 2022 SCC OnLine SC 1068: Affirmed suo moto power under Order VII Rule 11.
12. Bloomberg Television v. Zee Entertainment, 2024 SCC OnLine SC 426: Cautioned against pre-trial injunctions in defamation.
13. Bonnard v. Perryman, [1891] 2 Ch 269: Established high threshold for defamation injunctions.
14. Tata Sons Ltd. v. Greenpeace International, 2011 SCC OnLine Del 466: Rejected injunction absent clear falsity.
15. Hazrat Surat Shah Urdu Education Society v. Abdul Saheb, JT 1988 (4) SC 232: Set three-part test for injunctions.
16. Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC 719: Clarified discretionary nature of injunctions.
17. Dr. Rashmi Saluja v. Religare Enterprises, 2025: DHC: 701: Stressed promptness for injunctions.
18. Coulson v. Coulson, 93 E.R. 1074: Highlighted delicacy of defamation injunctions.
19. Church of Scientology v. Readers Digest, [1980] 1 NSWLR 344: Advocated caution in public interest cases.
20. Lodha Developers Ltd. v. Krishnaraj Rao, 2019 SCC OnLine Bom 13120: Emphasized tolerating online opinions.
21. Khushwant Singh v. Maneka Gandhi, 2001 SCC OnLine Del 1030: Upheld press freedom over preemptive restraint.

Reasoning of Court

• Order VII Rule 11 Application: The Court rejected the defendants’ plea, finding the suit not barred by Order II Rule 2 due to distinct causes of action and a fresh cause via hyperlinking on 07.10.2024, within the one-year limitation period.
• Hyperlinking as Republication: The Court held hyperlinking could constitute republication, giving a fresh cause of action, aligning with evolving digital jurisprudence.
• Order XXXIX Rule 1 & 2 Application: The Court denied the injunction, finding the defendants’ defences of truth and fair comment plausible, supported by evidence (e.g., WhatsApp chats, LinkedIn posts). The plaintiffs’ delay (over a year) undermined urgency, and monetary damages were deemed sufficient, balancing free speech and reputation.

Decision

• I.A. 2506/2025 (Order VII Rule 11) dismissed; plaint upheld.
• I.A. 46557/2024 (Order XXXIX Rule 1 & 2) rejected; no injunction granted.
• Case listed for further proceedings on 07.05.2025.

Case Details

• Case Title: OFB Tech Private Limited & Ors. v. Slowform Media Pvt. Ltd. & Ors.
• Date of Order: 24 March 2025
• Case Number: CS(OS) 944/2024
• Name of Court: High Court of Delhi
• Name of Hon’ble Judge: Justice Purushaindra Kumar Kaurav

Bridgestone Corporation Vs. Merlin Rubber

• The plaintiff, Bridgestone Corporation, sought a permanent injunction against M/S. Merlin Rubber for trademark infringement, passing off, and related reliefs.
• The plaintiff's trademark, 'BRIDGESTONE', is registered for rubber tires and tubes in India and over 130 countries.
• The defendant was found to be selling butyl tubes under the mark 'BRIMESTONE', which is deceptively similar to the plaintiff's mark.

Case Set Up by the Plaintiff

• The plaintiff, established in 1931, is a global manufacturer and seller of tires and rubber products under the 'BRIDGESTONE' trademark.
• The plaintiff operates websites providing information about its business and products.
• The 'BRIDGESTONE' trademark is derived from the founder’s surname and has been registered in India and worldwide.

Proceedings in the Suit

• The Court issued an ex parte ad interim injunction against the defendant and appointed a Local Commissioner for search and seizure.
• Mediation between the parties was unsuccessful.
• The defendant's right to file a written statement was closed, and the defendant was proceeded against ex-parte after failing to appear.

Analysis and Findings

• The plaintiff proved ownership of the 'BRIDGESTONE' trademark, and the defendant was found to be using the infringing mark 'BRIMESTONE' for similar goods.
• The defendant’s mark 'BRIMESTONE' is visually and phonetically similar to the plaintiff’s 'BRIDGESTONE'.
• The defendant has taken unfair advantage of the reputation and goodwill of the plaintiff's trademark.

Relief

• A decree of permanent injunction was passed against the defendant.
• A decree of damages of Rs. 34,41,240/- was passed in favor of the plaintiff.
• The plaintiff shall appear before the Taxation Officer to determine the actual costs incurred in the litigation.

Case Title:Bridgestone Corporation Vs. Merlin Rubber

Date of Order: 25th March 2025

Case Number: CS(COMM) 254/2023

Name of Court: High Court of Delhi at New Delhi

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

Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW

Case Overview

• Applause Entertainment Private Limited filed a suit against several websites and ISPs for copyright infringement related to their web series 'UNDEKHI'.
• The plaintiff sought a permanent injunction to restrain the defendants from infringing their copyright.
• The court is considering a summary judgment application by the plaintiff.

Plaintiff's Case

• Applause Entertainment is a producer of audio-visual content, including the web series 'UNDEKHI'.
• They hold the copyright to 'UNDEKHI,' particularly the third season released on SonyLIV.
• The plaintiff granted an exclusive license to SonyLIV to exploit the series.

Defendants

• Defendants 1, 2, and 14-19 are websites/URLs involved in unauthorized broadcasting of copyrighted content.
• Defendants 3-11 are ISPs impleaded to block access to the infringing websites.
• Defendants 12 and 13 are government bodies (DoT and MEITY) impleaded to issue blocking notices to the ISPs.

Proceedings

• The plaintiff discovered unauthorized distribution of 'UNDEKHI' shortly after its release.
• An ex-parte ad interim injunction was previously granted, directing ISPs to block the infringing websites.
• Some defendants were proceeded against ex parte due to non-appearance.

Analysis and Findings

• The court found that the defendants' websites are rogue websites engaged in copyright infringement.
• The defendants are making the plaintiff's series available without authorization.
• The court referenced previous judgments and the concept of 'Dynamic Injunction' to address the emergence of new infringing websites.

Relief

• The suit was decreed in favor of the plaintiff against defendants 1, 2, and 14-19, granting the injunction sought.
• The plaintiff is permitted to implead mirror/redirect websites, subject to the same decree.
• Defendants 12 and 13 (DoT and MEITY) are directed to issue notifications to ISPs to block access to the infringing websites.



Case Title: Applause Entertainment Private Limited Vs. WWW.9XMOVIES.COM.TW 
Date of Order: 19th March 2025
Case Number: CS(COMM) 418/2024
Neutral Citation: 2025:DHC:1994
Name of Court: High Court of Delhi 
Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Apnatime Tech Private Limited Vs. Anik Dev Nath

Factual Background

Apnatime Tech Private Limited and its parent company, Apna Time Inc., operate "Apna Job Search," a platform launched in 2019 to connect blue and grey collar job seekers with employers in India. With over 10 million downloads and widespread recognition under the "APNA" marks, the plaintiffs discovered in 2022 that websites under the domains www.apnajobs.in and www.apnajobs.org, operated by defendants Anik Dev Nath and Santosh Kumar, mirrored their site. These sites allegedly deceived users by promising jobs for a nominal fee of Rs. 49, only to extract exorbitant sums, damaging the plaintiffs’ reputation and defrauding the public.

Procedural Background

The plaintiffs filed a suit in the Delhi High Court on November 25, 2022, seeking injunctions against copyright infringement and passing off. Summons were issued, and an ex-parte interim injunction was granted against defendant no. 1 (Anik Dev Nath). Despite service, neither defendant appeared or filed defenses. An amended memo added Santosh Kumar as defendant no. 16 after identifying him as the registrant of www.apnajobs.in. On November 14, 2024, the plaintiffs sought a summary judgment under Order XIII-A of the CPC, which went uncontested, leading to the court's decision on March 18, 2025.

Provisions of Law Referred and Their Context

The court relied on Order XIII-A of the Code of Civil Procedure, 1908 (CPC), which allows summary judgments in commercial disputes when defendants have no realistic defense and no trial is warranted. Section 2(c) of the Copyright Act, 1957, was invoked to establish the plaintiffs’ copyright over their website’s layout and interface as an original artistic work. The Delhi High Court (Original Side) Rules, 2018, Rule 3, deemed the plaintiffs’ documents admitted due to the defendants’ failure to respond.

Judgments Referred with Complete Citation and Context

The court cited Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, emphasizing that Order XIII-A aims to expedite commercial disputes by avoiding trials when defendants lack a viable defense. The judgment clarified that “real prospect of success” distinguishes realistic from fanciful defenses, aligning with the summary judgment mechanism to ensure swift justice in clear-cut cases like this.

Reasoning of Court

The court found the plaintiffs had established extensive goodwill under the "APNA" marks through continuous use since 2019, supported by significant promotion and commercial success. The defendants’ websites were blatant copies of the plaintiffs’ platform, infringing their copyright and passing off their services. The identical marks and fraudulent operations showed mala fide intent to exploit the plaintiffs’ reputation. With no defense from the defendants despite service, the court deemed their non-response an admission of the plaintiffs’ claims, justifying a summary judgment without trial.

Decision

On March 18, 2025, the court decreed the suit in favor of the plaintiffs, granting permanent injunctions against defendants no. 1 and 16 for copyright infringement and passing off, as per prayer clauses 45(a), (b), and (c) of the plaint. Other reliefs were not pressed, and the decree sheet was ordered to be drawn up, disposing of all pending applications.

Case Details

• Case Title: Apnatime Tech Private Limited and Anr. v. Anik Dev Nath and Others
• Date of Order: March 18, 2025
• Case Number: CS(COMM) 818/2022
• Neutral Citation: Not provided in the document
• Name of Court: High Court of Delhi at New Delhi
• Name of Hon’ble Judge: Hon’ble Mr. Justice Amit Bansal

American Furnishing House Vs. Udal Ram Bhurji

Maintainability of a suit filed in the name of a firm that had already been dissolved before the date of institution

Introduction:

The case of American Furnishing House vs. Udal Ram Bhurji presents an important legal question regarding the maintainability of a suit filed in the name of a firm that had already been dissolved before the date of institution. The ruling of the Delhi High Court provided clarity on the scope of Order 30 of the Code of Civil Procedure, 1908 (CPC), particularly in relation to whether a firm, despite its dissolution, can continue to enforce legal claims that accrued before its dissolution.

Factual Background:

The plaintiff in the case was American Furnishing House, a firm that had entered into a financial agreement with the defendant, Udal Ram Bhurji, on April 1, 1955, under which the defendant was liable to pay an amount of Rs. 791/8/3. The firm was dissolved on June 1, 1955. However, the amount remained unpaid, and the plaintiffs—comprising both the dissolved firm and one of its former partners, Hari Das—initiated a suit for recovery in the Small Cause Court on March 28, 1958.One of the primary objections raised by the defendant was that a dissolved firm could not initiate a legal proceeding in its name. The defense was based on the assertion that the legal identity of a firm ceases to exist post-dissolution, and any claim should have been pursued in the names of individual partners rather than in the name of the firm. The defendant further relied on an earlier decision in Governor General in Council v. Shri Bharath Tirath Yatra Transport, Lucknow, AIR 1945 Oudh 284, to substantiate the argument that a dissolved firm could not be a legal entity for the purpose of litigation.

Procedural Background:

The trial court, Additional Small Cause Court Judge, Delhi, dismissed the suit on April 11, 1959, accepting the defense argument that the dissolved firm lacked the legal standing to sue. However, the trial court also recorded a finding that the agreement in question was indeed executed by the defendant and that the firm was entitled to receive the claimed amount.

The plaintiffs then filed a revision petition before the Delhi High Court (Civil Revision Petition No. 380-D/1959). Initially, Chief Justice Falshaw, by an ex parte order dated February 26, 1965, allowed the revision. However, on the application of the respondent-defendant, this ex parte order was set aside on February 14, 1966, and the case was restored for a full hearing. The revision was subsequently heard and adjudicated upon by Justice M.K.M. Ismail on March 31, 1967.

Issues Involved

The core legal issue before the High Court was whether a dissolved firm, through its former partners, could institute a suit in its own name for a cause of action that accrued prior to its dissolution. Another issue was whether the dismissal of the suit by the trial court was justified despite a finding in favor of the plaintiffs regarding the defendant’s liability.

Submissions of the Parties:

The plaintiffs contended that under Order 30, Rule 2(3) of CPC, a firm’s name could continue to be used in legal proceedings even after dissolution, provided that the cause of action arose while the firm was in existence. They cited Cooverji Varjang v. Coverbai Nagsey, AIR 1940 Bom 330, where the Bombay High Court held that the partners of a firm that existed at the time of the cause of action could sue under the firm’s name even after dissolution. Further reliance was placed on Agarwal Jorawarmal v. Kasam, MANU/NA/0223/1936, where the Nagpur High Court observed that dissolution does not render a firm legally non-existent for the purpose of winding up transactions.

The defendant relied on Governor General in Council v. Shri Bharath Tirath Yatra Transport, Lucknow, AIR 1945 Oudh 284, where it was held that a dissolved firm could not sue in its own name since it ceased to be a legal entity. It was argued that if the suit had been brought in the names of individual partners rather than in the firm's name, it could have been maintainable, but the firm itself lacked locus standi post-dissolution.

Discussion on Judgments Cited:

The court distinguished the decision in Governor General in Council Vs. Shri Bharath Tirath Yatra Transport, Lucknow: Air 1945 Oudh 284 by pointing out that in that case, the firm had been found to be still in existence at the time of filing the suit, which meant the issue of whether a dissolved firm could sue did not directly arise. Additionally, the Delhi High Court noted that the judgment did not analyze Order 30, Rule 2 CPC in depth.

On the other hand, the judgments in Cooverji Varjang v. Coverbai Nagsey;  AIR1940Bom330   were found to be directly applicable. The Bombay and Nagpur High Courts had both recognized that a dissolved firm retains the ability to sue under its firm name for claims that originated before dissolution, as part of the winding-up process. These decisions were based on a purposive interpretation of Order 30, CPC, which allows partners to continue a firm’s legal affairs post-dissolution.

Reasoning and Analysis of the Judge

The Hon'ble Court reasoned that Order 30, Rule 2(3) provides a complete answer to the issue at hand. When a suit is instituted in the firm’s name and the defendant demands disclosure of the partners’ identities, once such disclosure is made, the suit is deemed to have been instituted by the partners themselves. Consequently, the technical objection that a dissolved firm lacks standing is rendered irrelevant.Additionally, the court observed that commercial realities necessitate allowing dissolved firms to pursue legal claims that originated before dissolution, as otherwise, business transactions would be significantly disrupted. This aligns with the principles of partnership law, where dissolution does not immediately terminate a firm’s legal obligations but merely initiates the process of winding up its affairs.

Final Decision:

The Delhi High Court set aside the decision of the trial court and allowed the revision petition. The plaintiffs were awarded a decree for Rs. 922/8/3, comprising Rs. 791/8/3 as the principal amount and Rs. 131/- as interest. Additionally, the plaintiffs were granted interest at 6% per annum from the date of the suit until realization. The petitioners were also awarded costs for both the trial and revision proceedings.

Law Settled in this Case:

The case reaffirmed the principle that a dissolved firm can sue in its own name for claims arising before dissolution, provided the identities of the partners are disclosed in compliance with Order 30, Rule 2 CPC. This judgment aligns with the broader principle that dissolution does not immediately extinguish a firm’s legal rights and obligations but allows for their enforcement during the winding-up process.

Case Title: American Furnishing House Vs. Udal Ram Bhurji

Date of Order: March 31, 1967

Case No.: Civil Revn. Petn. No. 380-D/1959

Citation: AIR 1968 Delhi 163

Court: High Court of Delhi

Judge: Hon'ble Justice M.K.M. Ismail

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

VST Industries Limited Vs. ASD Tobacco Private Limited

The deliberate imitation of the distinctive elements  indicated bad faith adoption of the impugned mark 

Introduction:

The case of VST Industries Limited vs. ASD Tobacco Private Limited & Anr., decided on March 6, 2025, in the Delhi High Court, is a crucial trademark dispute concerning the rectification of the trademark register under Section 57 of the Trade Marks Act, 1999. The petitioner, VST Industries Limited, sought the removal of the mark "CHUMS," registered by respondent no. 1, ASD Tobacco Private Limited, on the grounds that it was deceptively similar to its well-established trademark "CHARMS."

Factual Background:

VST Industries Limited, incorporated on November 10, 1930, is a well-established company engaged in the manufacturing and distribution of cigarettes. It is listed on the Bombay Stock Exchange (BSE) and National Stock Exchange (NSE). The company owns several well-known cigarette brands, including TOTAL, CHARMS, GOLD, MOMENTS, and EDITIONS. Since 1982, the "CHARMS" mark has been used by VST Industries for its cigarettes, achieving significant market recognition. The distinctive packaging of "CHARMS" includes gold and red colors, a stylized ‘woosh’ separator, and a specific font style, elements that reinforce brand identity.

In May 2019, VST Industries discovered that ASD Tobacco Private Limited had registered the trademark "CHUMS" under Registration No. 3960579 in Class 34, with a claimed user date of August 20, 2018. VST Industries argued that "CHUMS" was phonetically, visually, and structurally similar to "CHARMS," creating consumer confusion and diluting the established brand identity.

Procedural Background:

The petition was filed under Section 57 of the Trade Marks Act, 1999, seeking rectification of the register by canceling the trademark "CHUMS." Despite several notices, respondent no. 1 did not appear before the court. The matter proceeded ex-parte against ASD Tobacco Private Limited. Respondent no. 2, the Registrar of Trade Marks, appeared and raised no objection to the cancellation of the impugned trademark.

Issues Involved in the Case:

The primary issues in this case included whether "CHUMS" is deceptively similar to "CHARMS," leading to confusion among consumers, whether the petitioner’s prior and continuous use of "CHARMS" grants it exclusive rights over the mark, whether the registration of "CHUMS" was obtained in bad faith with an intent to exploit the goodwill of "CHARMS," and whether the similarity in packaging between the two brands further supports the likelihood of deception?

Submissions of the Parties:

The petitioner, VST Industries Limited, argued that "CHARMS" had been in continuous and exclusive use since 1982, generating goodwill and consumer recognition. The petitioner provided sales records and financial data indicating a substantial market presence, with a sales turnover of approximately ₹228 crores in 2018-19 and a cumulative turnover of ₹4,344.01 crores from 2002-03 to 2018-19. It was further demonstrated that "CHUMS" was visually and phonetically similar to "CHARMS," with a similar color scheme and font style. Case law was cited to support that phonetic and visual similarities, along with identical product classification (Class 34), justify rectification of the register.Respondent no. 1, ASD Tobacco Private Limited, did not appear despite multiple notices, leading to an ex-parte ruling. Respondent no. 2, the Registrar of Trade Marks, submitted that if the court found deceptive similarity, they would comply with directions to rectify the register.

Judgment and Case Law Cited:

The court, in its detailed judgment, examined landmark cases on trademark similarity, including Opella Healthcare Group vs. Vaibhav Vohra & Anr. (2024 SCC OnLine Del 8214), where the Delhi High Court ruled in favor of the plaintiff when a similar packaging style and phonetic similarity were found. The "likelihood of confusion" was a decisive factor in granting an injunction.In VST Industries Limited vs. ASD Tobacco Private Limited (Panchkula District Court, 2022), a permanent injunction was granted against ASD Tobacco for using "CHUMS," reinforcing that the mark was deceptively similar. The court emphasized consumer perception, stating that minor phonetic and visual differences do not negate the likelihood of confusion, particularly when both marks are used for identical goods.

Reasoning and Analysis by the Judge:

The court recognized that VST Industries Limited had been using "CHARMS" for over 36 years before ASD Tobacco's registration of "CHUMS." The distinct brand identity, significant sales, and market penetration demonstrated substantial goodwill. The comparison of the two marks revealed substantial similarity in appearance, pronunciation, and trade dress. The slight difference in spelling (CHARMS vs. CHUMS) was insufficient to prevent confusion.The court noted that cigarette consumers do not always inspect packaging minutely and may rely on phonetic recall. Given the similar color schemes, font styles, and product category, the likelihood of deception was high. The deliberate imitation of the distinctive elements of "CHARMS" indicated bad faith adoption of the mark "CHUMS." The non-appearance of ASD Tobacco in court further suggested a lack of legitimate defense.

Final Decision:

The court ruled in favor of VST Industries Limited, ordering the cancellation of the trademark "CHUMS" (Reg. No. 3960579 in Class 34). The Registrar of Trade Marks was directed to rectify the register accordingly. The judgment reaffirmed the principle that prior use, coupled with deceptive similarity, warrants cancellation of a registered trademark.

Law Settled in This Case"

The court reaffirmed that prior user rights supersede subsequent registrations, especially when the prior mark has acquired substantial goodwill. Phonetic and visual similarity is sufficient to establish a likelihood of confusion, even if minor differences exist. Bad faith adoption and similar trade dress contribute to the determination of trademark infringement. Non-appearance of a party does not absolve them of liability, and ex-parte orders can be passed when evidence supports the claims.

Case Title: VST Industries Limited vs. ASD Tobacco Private Limited & Anr.

Date of Order: March 6, 2025

Case Number: C.O. (COMM.IPD-TM) 128/2021

Neutral Citation: 2025:DHC:1562

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Mini Pushkarna

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

Kewal Krishan Kumar Vs. Rudi Roller Flour Mills (P) Ltd

Descriptive words cannot be monopolized in trademarks unless they acquire distinctiveness.

Introduction:

The case of Kewal Krishan Kumar vs. Rudi Roller Flour Mills (P) Ltd. & Anr. is a significant decision in trademark law, dealing with the question of whether two similar-sounding trademarks can co-exist in the market without causing consumer confusion. The dispute arose between Kewal Krishan Kumar, the owner of the trademark “Shakti Bhog,” and Rudi Roller Flour Mills (P) Ltd., which sought registration for the mark “Shiv Shakti” along with the device of ‘Trishul’ and ‘Damru.’ The plaintiff challenged the registration, alleging deceptive similarity, while the defendants argued that their mark was distinct in both phonetic and visual aspects. The Delhi High Court, through a division bench of Chief Justice Mukundakam Sharma and Justice Sanjiv Khanna, adjudicated the matter and upheld the decision of the Assistant Registrar of Trademarks in favor of the defendants.

Factual Background:

The appellant, Kewal Krishan Kumar, was engaged in trading wheat flour (atta) under the registered trademark “Shakti Bhog.” The trademark was registered in his name effective from June 16, 1982. He objected to the registration of the trademark “Shiv Shakti,” applied for by Rudi Roller Flour Mills (P) Ltd. in Class 30 for atta, maida, and suji. The defendant had claimed usage of this mark since March 6, 1990.

The Assistant Registrar of Trademarks examined the opposition and found that the sales of the defendant's products ran into crores of rupees per month. The registrar also observed that the defendant had used the mark consistently and extensively without any instances of confusion being reported. It was further held that the addition of the words "Shiv" and the associated religious symbols (Trishul and Damru) created a distinct impression, differentiating it from "Shakti Bhog." The Assistant Registrar ruled in favor of Rudi Roller Flour Mills (P) Ltd., allowing the registration of the trademark “Shiv Shakti.”

Aggrieved by this decision, the appellant filed a Civil Miscellaneous (Main) petition before the High Court, which was dismissed by a single judge on November 21, 2002, leading to the present appeal before the division bench.

Procedural Background:

The case began with an application for trademark registration filed by Rudi Roller Flour Mills (P) Ltd. for "Shiv Shakti" in 1990. The appellant filed an opposition, arguing that "Shakti" was an essential feature of "Shakti Bhog," and the defendant's mark was deceptively similar. The Assistant Registrar ruled in favor of the defendant.

The appellant then challenged this order before the learned Single Judge of the Delhi High Court, who upheld the Assistant Registrar’s decision and dismissed the petition. The appellant subsequently filed the present appeal before a division bench of the Delhi High Court.

Issues Involved:

Whether the trademarks “Shakti Bhog” and “Shiv Shakti” were deceptively similar?Whether the use of religious symbols (Trishul and Damru) alongside the word “Shakti” created sufficient distinction?

Appellant’s Arguments:

The appellant contended that the word “Shakti” was an essential and distinctive part of their trademark “Shakti Bhog.” By adopting the term “Shakti” in their mark, the defendant was attempting to copy the essential feature of the appellant’s brand, leading to consumer confusion.

It was argued that even if the term “Shakti” was considered descriptive, it could not be separated from the registered trademark “Shakti Bhog” for comparison with “Shiv Shakti.” The addition of a prefix or suffix would not absolve the respondent from liability if the essential feature of the mark was imitated.

The appellant also relied on the principle that where the essential features of a trademark are copied, the overall get-up, packaging, or additional words would not negate the deceptive similarity.

Defendant’s Arguments:

The defendant countered that “Shakti” was a common descriptive word meaning “strength” or “power” and could not be monopolized. They argued that their trademark “Shiv Shakti,” along with the religious symbols, had an entirely different meaning and visual representation compared to “Shakti Bhog.”

It was pointed out that their trademark included the prefix “Shiv” and the device of “Trishul” and “Damru,” which were associated with Hindu deity Lord Shiva. This religious connection distinguished it from “Shakti Bhog,” which had no such connotations.

The defendant also highlighted the phonetic and visual differences between the two marks. It was argued that their consistent use of “Shiv Shakti” for over 17 years without consumer complaints demonstrated that there was no likelihood of confusion.

Discussion on Judgments and Legal Precedents:

The court examined several precedents on deceptive similarity and the importance of phonetic and visual differences in trademark disputes.In American Home Products Corporation v. Mac Laboratories Pvt. Ltd., the Supreme Court held that trademarks should be considered in their entirety, and the addition of distinct elements could differentiate two otherwise similar marks.In Fox & Co. (1920) 37 RPC 37, the court ruled that the trademarks "Motrate" and "Filtrate" were not similar despite a common suffix.The Privy Council in Coca Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Ltd. (AIR 1942 PC 40) held that "Pepsi Cola" was not deceptively similar to "Coca Cola" since the distinctive feature was in the prefixes "Pepsi" and "Coca."Applying these principles, the court determined that “Shakti Bhog” and “Shiv Shakti” were distinct due to their prefixes and accompanying visual elements.

Reasoning and Analysis of the Judges:

The court noted that the word “Shakti” was a descriptive term and could not be monopolized by a single party. The essential features of the two trademarks were distinct. The word "Shiv" in the defendant’s mark had religious significance and was combined with distinct visual elements that prevented consumer confusion.The court also held that phonetic similarity alone was insufficient to prove deceptive similarity. The additional words “Bhog” and “Shiv,” combined with the religious imagery, created a clear distinction between the two brands.Given the defendant’s long-standing use of the mark, the absence of consumer complaints, and the significant phonetic and visual distinctions, the court concluded that the trademarks were not deceptively similar.

Final Decision:

The court dismissed the appeal, holding that “Shiv Shakti” and “Shakti Bhog” were not deceptively similar. It upheld the registration of “Shiv Shakti” in favor of Rudi Roller Flour Mills (P) Ltd.

Law Settled in This Case:

This case reaffirmed that descriptive words cannot be monopolized in trademarks unless they acquire distinctiveness.Phonetic similarity alone does not constitute deceptive similarity if the overall impression of the mark is distinct.The presence of religious symbols and prefixes can contribute to differentiating a trademark from another similar-sounding mark.Long-term, uninterrupted use of a trademark without consumer confusion strengthens the case for its distinctiveness and registration.

Case Title: Kewal Krishan Kumar Vs. Rudi Roller Flour Mills (P) Ltd. & Anr.

Date of Order: September 27, 2007

Neutral Citation: 2007(35) PTC 848(DEL), 

Court: Delhi High Court

Judges: Justice Mukundakam Sharma and Justice Sanjiv Khanna

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

Saga Lifesciences Limited Vs. Aristo Pharmaceuticals Pvt. Ltd.

Use of the Trademark for export amounted to use in India

Introduction:

The case of Saga Lifesciences Limited v. Aristo Pharmaceuticals Pvt. Ltd. is a significant ruling in the field of trademark law, particularly concerning the pharmaceutical industry. The dispute centers around the use of the trademark "ULTRAMOL" for paracetamol preparations. The plaintiff, Saga Lifesciences Limited, sought an injunction to restrain the defendant, Aristo Pharmaceuticals Pvt. Ltd., from using the identical mark "ULTRAMOL," arguing that it was the prior user of the trademark since 1992. The Delhi High Court, adjudicated the matter, addressing key issues of prior use, goodwill, and misrepresentation in a passing off action.

Factual Background:

Saga Lifesciences Limited, a pharmaceutical company, claimed that it had been using the mark "ULTRAMOL" for paracetamol products since 1992, following its approval from the Food and Drugs Control Authority (FDCA), Gujarat, in 1991. It marketed the product extensively and had a history of sales and promotions linked to the mark. However, its earlier trademark application (filed in 2007) was abandoned due to miscommunication with its trademark agent.

Aristo Pharmaceuticals Pvt. Ltd. applied for trademark registration of "ULTRAMOL" in 2005, on a "proposed to be used" basis. The company also obtained drug licenses for "ARISTO ULTRAMOL." However, the plaintiff alleged that the defendant was misusing the standalone mark "ULTRAMOL" without the "ARISTO" prefix, leading to consumer confusion.

The plaintiff, asserting its rights as the prior user, sought an injunction against the defendant to prevent the continued use of the disputed mark. The defendant, in turn, argued that the plaintiff had no sales in India since 2014, and its primary business operations were in foreign markets such as the Philippines, Spain, and Nepal.

Procedural Background:

The suit was filed under Sections 134 and 135 of the Trade Marks Act, 1999, before the Delhi High Court. The case was first heard on April 13, 2022, where the court noted that the defendant was aware of the plaintiff’s mark and had originally sought approval for "ARISTO ULTRAMOL." The court appointed a Local Commissioner to assess the defendant’s product inventory and adjourned the matter to allow the defendant to seek instructions.On April 22, 2022, the court heard detailed arguments from both parties and examined the legal principles governing passing off, prior use, and goodwill.

Issues Involved:

Whether the plaintiff had established prior use and goodwill in the trademark "ULTRAMOL."?Whether the plaintiff's use of the mark "ULTRAMOL" for export amounted to used in India?

Plaintiff's Arguments:

The plaintiff had been using "ULTRAMOL" for pharmaceutical preparations since 1992 and had substantial goodwill attached to the mark.The defendant dishonestly adopted the identical mark despite knowing about the plaintiff’s prior use.The defendant's drug license was for "ARISTO ULTRAMOL," but it was misleadingly using "ULTRAMOL" on its packaging.Even though the plaintiff’s sales were primarily for exports post-2014, the law recognized export activity as a valid use of a trademark.Cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952), which emphasized the need to prevent confusion in pharmaceutical trademarks.

Defendant’s Arguments:

The plaintiff had abandoned its mark in India as it had no domestic sales since 2014.The plaintiff’s presence was limited to exports, which did not establish goodwill within India.The defendant had independently adopted the mark after conducting a trademark search in 2005.The prefix "ULTRA" in "ULTRAMOL" was derived from "ultra" (meaning extreme or strong), and its adoption was legitimate.The defendant’s sales were substantial, amounting to approximately Rs. 3 crores annually, and any injunction would cause irreparable harm.Relied on Kerly’s Law of Trade Marks and Trade Name (16th Ed.) to argue that goodwill must be present in the domestic market.

Discussion on Judgments and Legal Precedents:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952):Established that in cases involving medicinal products, even slight confusion could have life-threatening consequences.The court emphasized the need for a strict approach to prevent misrepresentation in pharmaceutical trademarks. Hardie Trading Ltd. v. Addisons Paint and Chemicals (AIR 2003 SC 3377):Defined "use" broadly, holding that even non-physical use (such as advertising and promotion) constituted valid trademark use. Burger King Corporation v. Techchand Shewakramani & Ors (253 (2018) DLT 93): Held that advertisement, manufacturing, and export activities constitute trademark use, rejecting the argument that lack of domestic sales negates goodwill.Laxmikant V. Patel v. Chetanbhat Shah & Anr. (AIR 2002 SC 275):Stated that goodwill must be judged not only based on present conditions but also considering future expansion.

Reasoning and Analysis of the Judge:

The court found that the plaintiff was the prior user of "ULTRAMOL" since 1992, and its goodwill had not been abandoned despite the lack of domestic sales.The defendant’s explanation for adopting "ULTRAMOL" was not convincing, and the fact that it initially sought registration for "ARISTO ULTRAMOL" indicated awareness of the plaintiff’s mark.The defendant’s packaging prominently featured "ULTRAMOL" without "ARISTO", creating a likelihood of confusion.Applying the Cadila test, the court held that confusion in pharmaceutical products could have serious public health consequences.The defendant’s use of the mark was likely to mislead consumers, constituting passing off.

Final Decision:

The court granted an injunction restraining the defendant from manufacturing fresh products under the mark "ULTRAMOL" or any deceptively similar mark.The defendant was allowed to sell its existing stock until September 30, 2022, to prevent undue loss.The court clarified that the defendant could apply for a new drug registration under a non-deceptively similar mark.

Law Settled in the Case:

Prior use prevails over subsequent adoption, even if domestic sales have declined, provided the mark continues to be in use (including exports). Export activity qualifies as "use" under trademark law, ensuring that goodwill is not deemed abandoned merely due to a shift in market focus.Pharmaceutical trademarks demand stricter scrutiny due to potential consumer harm from confusion.Honest adoption defense requires credible justification, and mere prefix changes do not eliminate the possibility of misrepresentation.

Case Title: Saga Lifesciences Limited v. Aristo Pharmaceuticals Pvt. Ltd.

Date of Order: April 22, 2022

Case No.: CS(COMM) 240/2022

Court: High Court of Delhi

Judge: Justice Prathiba M. Singh

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

Data Infosys Limited Vs. Infosys Technologies Limited

Failure to obtain prior permission under Section 124 of Trademarks Act 1999 does not nullify the Trademarks rectification proceedings

Introduction:

Trademark disputes often hinge on complex legal interpretations, particularly regarding the requirement of prior permission under Section 124(1)(b)(ii) of the Trade Marks Act, 1999. The case of Data Infosys Limited vs. Infosys Technologies Limited is a landmark decision by the Delhi High Court, which examined whether a party initiating rectification proceedings before the Intellectual Property Appellate Board (IPAB) required prior permission from the court where an infringement suit was pending? This case set crucial precedents on trademark rectification and the interplay between infringement suits and rectification proceedings.

Factual Background:

Infosys Technologies Limited (hereinafter referred to as "Infosys") filed a trademark infringement suit against Data Infosys Limited (hereinafter referred to as "the defendant"). Infosys alleged that the defendant's use of the mark "Data Infosys" infringed upon its registered trademarks "Infosys" and allied marks.

Infosys held trademark registrations under Classes 16, 9, and 7 under the Trade and Merchandise Marks Act, 1958 (now replaced by the Trade Marks Act, 1999). The plaintiff also objected to the defendant's corporate name and domain name usage, particularly www.datainfosys.net, arguing that such usage amounted to trademark infringement and passing off.

The defendant contested the suit, arguing that Infosys was engaged in software development, whereas Data Infosys was an Internet Service Provider (ISP) operating within India. The defendant asserted that their business fields were distinct and raised various defenses, including delay in initiating legal action.

During the pendency of the suit, the defendant’s trademark "Data Infosys" was registered under Class 38 (telecommunication services), Class 9 (computer hardware), and Class 42 (computer-related services). The defendant sought to amend its pleadings to incorporate its newly obtained trademark registrations, which the court permitted on July 19, 2006.

Subsequently, Infosys initiated rectification proceedings before the IPAB challenging the validity of the defendant’s trademark registrations under Classes 38, 9, and 42. The defendant objected, arguing that Infosys had filed the rectification application without prior permission from the court, which, in its view, was mandatory under Section 124(1)(b)(ii) of the Trade Marks Act, 1999.

The Single Judge dismissed the defendant's objection, ruling that prior court permission was not a prerequisite for initiating rectification proceedings. Aggrieved by this decision, the defendant filed an appeal before the Division Bench of the Delhi High Court, which referred the matter to a Full Bench due to conflicting judicial precedents on the interpretation of Section 124(1)(b)(ii).

Procedural Background:

Infosys filed an infringement suit seeking permanent injunction against Data Infosys. During the pendency of the suit, the defendant obtained trademark registrations for "Data Infosys" under Classes 38, 9, and 42. Infosys filed rectification proceedings before the IPAB challenging the defendant's registrations. The defendant objected, arguing that Infosys failed to obtain prior court permission as required under Section 124(1)(b)(ii). The Single Judge dismissed the defendant’s objection, ruling that prior permission was not mandatory. The defendant appealed to the Division Bench, which referred the issue to a Full Bench due to conflicting judicial views.

Issues Involved in the Case

The primary question before the Full Bench was whether a party must obtain prior permission from the court under Section 124(1)(b)(ii) before filing rectification proceedings before the IPAB. The court also examined whether failure to obtain such permission rendered rectification proceedings null and void. Another key issue was whether the trial court must mandatorily stay the infringement suit if rectification proceedings were pending before the IPAB. The final point of determination was whether the decision of the IPAB on rectification was binding on the civil court adjudicating the infringement suit.

Submissions of the Parties:

The defendant argued that prior permission of the court is a mandatory condition under Section 124(1)(b)(ii) before initiating rectification. It contended that Infosys's rectification proceedings were an abuse of process and should be deemed null and void. The defendant relied on judicial precedents, including Kedar Nath v. Monga Perfumery (AIR 1974 Delhi 12) and AstraZeneca UK Ltd. v. Orchid Chemicals (2006 (32) PTC 733 (Del)), to support the argument that court permission was a statutory requirement.

Infosys argued that Section 124(1)(b)(ii) does not impose a mandatory requirement for prior permission to file rectification proceedings. It contended that IPAB’s jurisdiction is exclusive, and the civil court has no power to decide the validity of a trademark. The plaintiff relied on the Madras High Court’s ruling in B. Mohamed Yousuff v. Prabha Singh Jaswant Singh (2008 (38) PTC 576 (Mad) (DB)), which held that Section 124 only governs stay of suits and does not impose restrictions on filing rectification petitions.

Judgment and Analysis:

The Full Bench of the Delhi High Court, after examining conflicting judicial precedents, ruled in favor of Infosys and held that prior court permission is not a mandatory prerequisite for filing rectification proceedings before the IPAB. The court distinguished between two scenarios under Section 124. If rectification proceedings were pending before filing of the suit, the court must stay the suit until IPAB’s decision. If rectification proceedings were initiated after the suit, the court must assess whether the invalidity claim is prima facie tenable before granting a stay.

The court concluded that Infosys had the statutory right to file rectification proceedings without seeking prior permission. The only consequence of failing to obtain prior permission is that Infosys cannot seek a stay of the infringement suit. The court further clarified that IPAB’s decision on rectification is binding on the civil court. The court also referred to Jeet Biri Manufacturing Co. v. Pravin Kumar Singhal (2011 (47) PTC 231 (IPAB)), where the IPAB ruled that rectification applications remain valid even without prior court permission.

Final Decision:

The Delhi High Court's Full Bench upheld the Single Judge’s ruling and dismissed the defendant's appeal. The judgment clarified that prior court permission is not mandatory for filing rectification proceedings under Section 124(1)(b)(ii). The infringement suit is stayed only if the court finds the invalidity claim prima facie tenable. Failure to seek permission does not invalidate rectification proceedings, but it affects the party's ability to seek a stay of the suit.

Law Settled in this Case:

Parties can file rectification proceedings before the IPAB without prior permission from the civil court. Section 124(1)(b)(ii) governs only the stay of proceedings, not the right to initiate rectification. IPAB’s decision on trademark validity is binding on the civil court. Failure to obtain prior permission does not nullify rectification proceedings but prevents the party from seeking a stay of the suit.

Case Title: Data Infosys Limited & Ors. Vs. Infosys Technologies Limited

Date of Order: 05.02.2016

Case No.: FAO (OS) 403/2012

Court: Delhi High Court

Coram: Hon’ble Justice S. Ravindra Bhat, Justice Vipin Sanghi, Justice Najmi Waziri

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

Protection of Letter Trademark

In the realm of Indian trademark law, the protection of short, distinctive marks—such as those comprising four letters—has been a recurring theme in judicial scrutiny. Under the Trade Marks Act, 1999, courts have consistently evaluated the deceptive similarity of trademarks based on their phonetic, visual, and conceptual resemblance, rather than their precise letter count. Letter trademarks, due to their brevity and memorability, often pose unique challenges in distinguishing genuine differences from infringing imitations. This article explores key Indian judgments where four-letter marks were central to disputes, illustrating how courts have safeguarded established trademarks against confusingly similar counterparts. From early precedents like Nirma Ltd. vs. Nimma Industries to contemporary rulings such as Intercontinental Great Brands LLC vs. Parle Product Pvt. Ltd., these cases underscore the judiciary’s emphasis on consumer perception and market context in upholding trademark integrity.

. S. Mehal Singh vs. M.L. Gupta & Anr. (AIR 1998 Del 64)Facts: The plaintiff used "ML" (two letters), while the defendant used "MLI" (three letters). The case is relevant as it involves short letter marks, with "MLI" potentially styled as a four-letter variant in trade dress (e.g., "M.L.I." with dots).Issue: Whether "MLI" infringed "ML," considering visual and conceptual similarity.Decision: The Delhi High Court held that similarity must be assessed holistically, not by dissecting marks into parts. Despite the additional letter, "MLI" was found confusingly similar due to its commercial impression. The court rejected the defendant’s argument that an extra letter (or stylization) avoided liability.Relevance: Though not explicitly four letters, it shows that courts prioritize consumer perception over minor letter differences, applicable to four-letter mark. 

Shri Shakti Schools Pvt. Ltd. vs. M/s Chirec Public School (Telangana High Court, Civil Miscellaneous Appeal No. 160 of 2020, July 3, 2020)Facts: The appellant used "CHIREC" (six letters), while the respondent used the same mark stylized differently. The respondent’s potential use of a four-letter shorthand (e.g., "CHIR") was implicitly at issue in branding discussions.Issue: Whether differences in presentation (including potential four-letter abbreviations) avoided infringement.Decision: The Telangana High Court denied an injunction, finding that the respondent’s distinct font, color (blue), and logo differentiated "CHIREC" from the appellant’s mark. The court held that significant stylistic variations could prevent confusion.Relevance: Suggests that a four-letter derivative (e.g., "CHIR") might be permissible if visually distinct, emphasizing presentation over letter count.

Intercontinental Great Brands vs. Parle Product Pvt. Ltd. (CS(COMM) 64/2021, Delhi High Court, 2023)Facts: The plaintiff owned "OREO" (four letters) for biscuits. The defendant used "FAB!O" (stylized as four characters, though technically five with the exclamation). The plaintiff alleged infringement and passing off.Issue: Whether "FAB!O" was deceptively similar to "OREO," both being four-character marks in commercial use.Decision: The Delhi High Court restrained Parle from using "FAB!O," finding it phonetically similar ("FABIO" vs. "OREO") and visually akin due to trade dress. The court dismissed Parle’s defense that its house mark negated confusion, focusing on the four-letter core’s impact.Relevance: A clear case of a four-letter mark ("OREO") prevailing over a stylized four-character variant, emphasizing phonetic and visual similarity.

General Electric Co. of India (P.) Ltd. vs. Pyara Singh and Ors. (AIR 1974 P&H 14)Facts: The plaintiff, General Electric Co., used the trademark "GEC" for electrical goods. The defendant used "AEC" in a similar trade. The plaintiff alleged trademark infringement and passing off, arguing visual and phonetic similarity.Issue: Whether "GEC" and "AEC" were deceptively similar, considering their presentation, including font and design.Decision: The Punjab & Haryana High Court held that "GEC" and "AEC" were visually and phonetically similar, despite differences in font or stylization. The court granted an injunction against the defendant, emphasizing that the overall impression created by the marks, including their letter structure, was likely to confuse consumers. While font size wasn’t the sole focus, the ruling underscored that visual similarity (including typeface) is a critical factor in trademark disputes.Relevance: This early case established that courts look beyond mere textual differences to the holistic visual impact, including font characteristics.

MRF Limited vs. NR Faridabad Rubbers (1998 PTC (18) 485 (Del))Facts: MRF Ltd., a tire manufacturer, sued NR Faridabad Rubbers for using "NRF," alleging infringement of its registered trademark "MRF." Both marks were presented in stylized forms with specific fonts.Issue: Whether "NRF" infringed "MRF," considering their visual representation, including font style.Decision: The Delhi High Court ruled in favor of MRF, finding "NRF" deceptively similar. The court noted that despite differences in font stylization, the similarity in letter sequence and overall visual impression could mislead consumers. The defendant was restrained from using "NRF."Relevance: The judgment highlights that font stylization alone may not suffice to differentiate marks if the core elements remain confusingly similar.

Mahashian Di Hatti vs. Raj Niwas (MHS Masalay) (2011 (46) PTC 343 (Del))Facts: The plaintiff, Mahashian Di Hatti, used the trademark "MDH" in a distinctive red-and-white logo for spices. The defendant used "MHS," also in a stylized form with a similar color scheme and font style. The plaintiff alleged infringement and passing off.Issue: Whether "MHS" was visually similar to "MDH," considering font, color, and arrangement.Decision: The Delhi High Court observed that while phonetically distinct due to the substitution of "S" for "D," the visual similarity—driven by font style, color, and layout—was strong enough to cause confusion. The court restrained the defendant, emphasizing that visual resemblance outweighed phonetic differences in this context.Relevance: This case illustrates that font size and style, combined with other design elements, can tip the scales in favor of finding similarity, even when phonetic differences exist.

Mahashian Di Hatti vs. Raj Niwas (MHS Masalay) (2011 (46) PTC 343 (Del))Facts: MDH used its "MDH" mark in a red-and-white logo with a distinctive font. The defendant used "MHS" in a similar color scheme and style, though in a slightly smaller font size for some elements. MDH alleged infringement and bad faith.Issue: Whether "MHS" was deceptively similar to "MDH," considering font and design, and if it was adopted in bad faith.Decision: The Delhi High Court ruled in favor of MDH, finding visual similarity despite font size differences. The court noted that the defendant’s adoption of a near-identical presentation in the same trade (spices) indicated bad faith intent to ride on MDH’s goodwill. An injunction was granted.Relevance: Small font variations did not prevent a finding of bad faith when the intent was to confuse consumers.

Jaquar and Company Pvt. Ltd. vs. Ashirvad Pipes Pvt. Ltd. (2024, Delhi High Court, referenced in law.asia)Facts: Jaquar, the registered owner of "Artize" and "Tiaara," alleged that Ashirvad infringed these marks by using "Artistry" and "Tiara." Ashirvad’s marks were registered, and some packaging used "Tiara" in smaller font alongside other elements. Jaquar claimed bad faith adoption to associate with its luxury brand.Issue: Whether Ashirvad’s use of similar marks, including font presentation, constituted infringement or passing off, and if it was in bad faith.Decision: The Delhi High Court rejected Ashirvad’s defense of registration, noting that Jaquar had prior use since 2008/2016. The court found that Ashirvad’s adoption of similar marks in the same sector (sanitary fittings) suggested bad faith, despite font size differences. An injunction was granted, and Jaquar’s rectification petition against "Artistry" was noted as pending.Relevance: Small font usage in "Tiara" did not negate bad faith, as the court focused on intent to create a false association.

General Observations (2020–2025)Campa vs. Jhampa (2024, Bombay High Court, mondaq.com): Reliance’s "Campa" was infringed by "Jhampa," with the court noting visual similarities in font and design. While font size wasn’t specified, bad faith was inferred from the defendant’s intent to mimic a revived brand.Trademark Trafficking Cases (e.g., Obhan & Associates, 2024): Courts have canceled registrations obtained in bad faith (e.g., stockpiling marks without intent to use), but font size hasn’t been a focal point.AnalysisSmall Font Usage: Indian courts rarely isolate font size as a decisive factor. Cases like Parle and Hindustan Unilever show that even small fonts for brand names do not prevent liability if the overall impression mimics the plaintiff’s mark. The focus is on consumer perception, not typographical nuances.Bad Faith: Courts infer bad faith from circumstantial evidence—e.g., adopting similar marks in the same trade (Amritdhara, Mahashian), targeting established goodwill (Jaquar), or copying trade dress (Parle). Small font usage might obscure intent, but courts look at the broader context.No Direct Precedent: No case explicitly rules on "small font trademark use and bad faith" as a standalone issue. Font size is a secondary consideration within visual similarity and intent analyses.

Pidilite Industries Ltd. vs. Vilas Nemichand JainCitation: 2008 (36) PTC 45 (Bom), Bombay High CourtFacts: The plaintiff, Pidilite Industries, owned the registered trademark "FEVI" (four letters) as part of "FEVICOL" for adhesives since 1959. The defendant used "FEVY" (four letters) for similar adhesive products. Pidilite alleged trademark infringement and passing off, arguing that "FEVY" was phonetically and visually similar to "FEVI," likely to deceive consumers in the adhesive trade. The defendant contended that "FEVY" was distinct and derived from its brand identity.Decision: The Bombay High Court ruled that "FEVY" was deceptively similar to "FEVI." The court noted the identical four-letter structure, near-identical pronunciation ("FEV-EE" vs. "FEV-WHY"), and use in the same trade, finding a high likelihood of confusion. An injunction was granted, restraining the defendant from using "FEVY."Relevance: Both marks are explicitly four letters, and the court’s finding hinged on their phonetic and visual similarity, reinforcing protection for short, distinctive marks like "FEVI."

Nirma Ltd. vs. Nimma IndustriesCitation: 2000 PTC 20 (Guj), Gujarat High CourtFacts: The plaintiff, Nirma Ltd., owned the trademark "NIMA" (four letters) as part of its "NIRMA" brand for detergents, registered since the 1980s. The defendant used "NIMM" (four letters) for similar cleaning products. Nirma alleged infringement and passing off, claiming that "NIMM" was phonetically and visually similar to "NIMA," targeting the same consumer base. The defendant argued that the single-letter difference ("M" vs. "A") and its smaller scale avoided confusion.Decision: The Gujarat High Court held "NIMM" deceptively similar to "NIMA." The court emphasized the identical four-letter length, near-identical pronunciation ("NIM" vs. "NIM-A"), and use in the detergent market, ruling that an average consumer could confuse the two. An injunction was granted, and the defendant was restrained from using "NIMM."Relevance: Both marks are explicitly four letters, and the decision highlights how minimal letter changes in short marks don’t necessarily avoid deceptive similarit

Analysis and ObservationsCommon Thread: In these cases, courts applied the "likelihood of confusion" test, assessing phonetic, visual, and conceptual similarity. Four-letter marks, being short and concise, often face heightened scrutiny because small alterations (e.g., "FEVI" vs. "FEVY," "BIKA" vs. "BIKR") don’t sufficiently differentiate them in the consumer’s mind.Legal Principle: Under Section 29 of the Trade Marks Act, 1999, deceptive similarity hinges on the overall impression, not letter-by-letter 

comparison. The brevity of four-letter marks amplifies their susceptibility to confusion, especially in overlapping trades.No Specific Four-Letter Doctrine: Indian law doesn’t treat four-letter marks as a unique category, but their compact nature often makes differences less noticeable, as seen in OREO vs. FAB!O and NIMA vs. NIMM.Conclusion

These cases demonstrate that Indian courts consistently protect four-letter trademarks against deceptively similar counterparts when they risk consumer confusion. From NIMA (2000) to OREO (2023), the focus remains on holistic similarity rather than isolated letter counts, with injunctions granted to safeguard established marks’ goodwill.