Eicher Goodearth Pvt Ltd Vs Krishna Mehta

Designs, even if inspired by public domain elements, can be protected under passing off if it generates goodwill and consumer recognition 

Introduction: In the vibrant world of lifestyle products, where creativity and originality reign supreme, the clash between Eicher Goodearth Pvt Ltd and Krishna Mehta & Ors stands as a compelling narrative of intellectual property rights, artistic inspiration, and commercial ethics. Decided on June 29, 2015, by the High Court of Delhi, this case delves into the intricate realm of passing off, where the plaintiff, a renowned retailer of unique home décor and lifestyle items, accused the defendants, including a former design consultant, of misappropriating its distinctive designs. This case study explores the factual intricacies, procedural journey, legal issues, arguments, judicial reasoning, and the ultimate resolution, shedding light on the delicate balance between inspiration and imitation in the creative industry.

Detailed Factual Background: Eicher Goodearth Pvt Ltd, the plaintiff, operates a chain of retail stores under the brand "GOODEARTH," celebrated for its exclusive and aesthetically pleasing lifestyle products, including home décor, furniture, and apparel. The company prides itself on its in-house creative team, which designs unique motifs, patterns, and artworks inspired by natural beauty and cultural heritage, such as Mughal art and architecture. Among its notable collections are SERAI, PERIYAR, VRINDAVAN, BALI MYNAH, LOTUS, ROSE PRINCESS, and FALCON, some of which, like Periyar, Vrindavan, and Lotus, are registered under the Designs Act, 2000. With a turnover of Rs. 91 crores in the financial year 2012-2013 and a global presence, including stores in India, Singapore, Turkey, and Nepal, GOODEARTH has cultivated a formidable reputation.

The defendants, Krishna Mehta and his company India Circus (Defendant No. 2), along with a technological collaborator (Defendant No. 3), entered the fray as competitors in the lifestyle product market. Krishna Mehta, Defendant No. 1, had previously worked as a design consultant for GOODEARTH on a retainership basis from May 10, 2010, until September 30, 2012. During this period, he was privy to the plaintiff’s creative processes and designs. After leaving GOODEARTH, Mehta established India Circus in November 2011, launching a website (www.indiacircus.com) that sold products bearing motifs and designs strikingly similar to those of GOODEARTH. The plaintiff alleged that these designs infringed upon its goodwill, constituting passing off, unfair competition, and dilution, especially given Mehta’s prior association and access to its creative output.

The plaintiff highlighted specific designs—Falcon (depicting a Mughal emperor with a falcon), Rose Princess (a princess with a rose), Periyar (palm trees), Serai (a window with an elephant), Vrindavan (trees), Lotus, and Bali Mynah—as being replicated by the defendants. It argued that these designs, though inspired by historical or natural elements, were uniquely adapted and applied to its products, earning significant market recognition. The defendants countered that these designs were neither original nor exclusive to GOODEARTH, drawing from centuries-old public domain artworks, and thus could not be monopolized.

Detailed Procedural Background: The legal battle commenced with Eicher Goodearth filing a suit, CS(OS) 1234/2014, in the High Court of Delhi, seeking an injunction against Krishna Mehta and others for passing off. Alongside the suit, the plaintiff filed I.A. No. 8010/2014 under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC) for an interim injunction to restrain the defendants from using the disputed designs. On May 1, 2014, the court granted an ex-parte interim injunction in favor of the plaintiff, prohibiting the defendants from selling products with the impugned designs.

In response, the defendants filed I.A. No. 13372/2014 under Order 39 Rule 4 CPC, seeking to vacate the interim order. They submitted a written statement, reply, and counterclaim, asserting their right to use the designs and challenging the plaintiff’s claims. Both parties presented extensive written submissions and evidence, including design comparisons, sales figures, and historical references, to bolster their positions. 

Issues Involved in the Case:Whether the plaintiff’s designs, though inspired by public domain elements, were sufficiently distinctive and associated with GOODEARTH to warrant protection under the law of passing off?Whether the defendants’ use of similar designs on identical products constituted misrepresentation, leading consumers to confuse their goods with those of the plaintiff?Whether the defendants’ actions, particularly given Krishna Mehta’s prior employment with GOODEARTH, amounted to passing off, unfair competition, or dilution of the plaintiff’s goodwill?The scope of protection for designs used as trademarks in a passing off action, distinct from statutory rights under the Designs Act, 2000.

Plaintiff’s Submissions:The plaintiff argued that this was a classic case of passing off, not design infringement, emphasizing three key elements: goodwill, misrepresentation, and damage. GOODEARTH asserted that its designs, applied to products like cushions, crockery, and bed linen, had acquired substantial goodwill and reputation since 1996, evidenced by a turnover exceeding Rs. 91 crores and widespread media coverage. It claimed that consumers instantly recognized these designs as synonymous with GOODEARTH, even without explicit branding.

The plaintiff accused the defendants of misrepresentation by replicating its designs on identical product ranges sold via www.indiacircus.com, creating confusion among online buyers who could not physically inspect the goods. It highlighted Krishna Mehta’s role as a former consultant, alleging he exploited his insider knowledge to copy designs like Periyar (created in 2003) after leaving in 2012. The plaintiff submitted sales data—e.g., Rs. 10.53 crores for Periyar from 2005-2014—demonstrating commercial success and argued that the defendants’ actions damaged its reputation and business.

GOODEARTH dismissed the defendants’ claim of public domain inspiration, asserting that its creative application of historical motifs to modern lifestyle products was original and protectable. It cited precedents like Mohan Lal v. Sona Paints (200(2013) DLT 322) to argue that passing off protects goodwill irrespective of design registration, and pointed to Mehta’s shift in design style post-employment as evidence of mala fide intent.

Defendants’ Submissions:The defendants contended that the plaintiff’s designs lacked originality, being derived from centuries-old Mughal art and natural elements in the public domain. They argued that no exclusive rights could be claimed over such motifs, citing examples like Falcon (a Mughal painting from 1600-1605) and Rose Princess (a 17th/18th-century portrait). They challenged the plaintiff’s registered designs (Periyar, Vrindavan, Lotus), alleging non-production of certificates and prior publication, rendering them unprotectable under the Designs Act, 2000.

The defendants emphasized that their products, sold under the distinct brand “India Circus” on www.indiacircus.com, bore no resemblance to GOODEARTH’s trade dress or branding, negating any misrepresentation. They argued that luxury product consumers, the target market, were discerning enough to distinguish between brands, especially given the price and distribution differences. Krishna Mehta defended his freelance career, noting his work with multiple brands and asserting that his designs, though similar, incorporated unique elements (e.g., elephants, jail windows in Periyar).

Citing cases like Benchairs Ltd. v. Chair Centre Ltd. ([1972] FSR 397) and Hodgkinson & Corby Ltd. v. Wards Mobility Services Ltd. ([1995] FSR 169), the defendants argued that mere similarity does not constitute passing off absent a clear intent to deceive, which they denied. They also referenced Servewell Products Pvt. Ltd. v. Dolphin ((2010) 43 PTC 507 (Del)) to assert that commonplace design elements lack copyright protection.

Plaintiff’s Citations: Mohan Lal v. Sona Paints & Hardwares (2013) DLT 322) - This Delhi High Court ruling clarified that a design can function as a trademark and be protected under passing off if it generates goodwill. The plaintiff relied on this to argue that its designs, though unregistered in some cases, were distinctive identifiers of GOODEARTH, supporting its claim of consumer association and goodwill. Laxmikant V. Patel v. Chetanbhat Shah ((2002) 3 SCC 65) - The Supreme Court emphasized that passing off protects goodwill against confusion, even without fraudulent intent. GOODEARTH used this to assert that the defendants’ actions, intentional or not, harmed its reputation by mimicking its designs.Vicco Laboratories v. Hindustan Rimmer (AIR 1979 Delhi 114) - This case upheld an injunction based on identical get-up and color schemes, despite different trademarks. The plaintiff cited it to argue that the defendants’ near-identical designs on similar products created a likelihood of confusion.Parle Products (P) Ltd. v. J.P. & Co., Mysore (AIR 1972 SC 1359) - The Supreme Court held that marks are remembered by general impressions, not minute details, especially by consumers with imperfect recollection. GOODEARTH invoked this to highlight the risk of deception among online buyers.Charan Dass v. Bombay Crockery House (1984 (4) PTC 102 (Del)) - This case restrained an ex-dealer from passing off goods, emphasizing the duty of former associates. The plaintiff used it to underscore Mehta’s breach of trust as an ex-employee.

Defendants’ Citations:Benchairs Ltd. v. Chair Centre Ltd. ([1972] FSR 397) - The Chancery Division ruled that passing off requires a false representation of origin, not mere copying. The defendants argued that their distinct branding precluded such misrepresentation.Hodgkinson & Corby Ltd. v. Wards Mobility Services Ltd. ([1995] FSR 169) - This case noted the difficulty of proving passing off without a clear trade origin badge. The defendants used it to assert that consumers bought their products for their appeal, not GOODEARTH’s reputation.Servewell Products Pvt. Ltd. v. Dolphin ((2010) 43 PTC 507 (Del)) - The Delhi High Court denied copyright to commonplace floral designs lacking originality. The defendants cited this to argue that GOODEARTH’s motifs were unprotectable.Schweppes Ltd. v. Gibbons ((1905) 22 RPC 601 (HL)) - Lord Halsbury held that overall similarity must deceive a reasonable person. The defendants argued that their branding and website distinguished their goods.S.M. Dyechem Ltd. v. Cadbury Ltd. ((2000) 5 SCC 573) - The Supreme Court noted that trade dress might help a defendant escape passing off (later overruled by Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 (21) PTC 300 (SC))). The defendants relied on this to highlight their distinct trade dress.

Detailed Reasoning and Analysis of Judge: The Court's  reasoning navigated the complex interplay of design originality, passing off principles, and the defendants’ conduct. The court began by acknowledging that the plaintiff’s suit rested on passing off, not design infringement, thus shifting the focus from statutory registration to common law goodwill. Drawing from Mohan Lal and Laxmikant V. Patel, he outlined the “classical trinity” of passing off: goodwill, misrepresentation, and damage.

The judge found that GOODEARTH established substantial goodwill through its long-standing use of the designs since 1996, evidenced by sales figures (e.g., Rs. 10.53 crores for Periyar) and media recognition. He rejected the defendants’ public domain argument, noting that while the raw inspirations (e.g., Mughal paintings) were old, their creative application to lifestyle products was novel and distinctive to GOODEARTH. Citing Gammeter v. Controller of Patents and Designs ((1918) ILR 45 Cal 606) and Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (AIR 2008 SC 2520), he held that originality in design law includes new applications of old motifs, bolstering the plaintiff’s claim.

On misrepresentation, The court emphasized Krishna Mehta’s prior employment, inferring mala fide intent from his sudden adoption of GOODEARTH’s design style post-2012. He compared the products visually, finding Falcon, Rose Princess, Serai, and Vrindavan designs “almost same” to the plaintiff’s, likely to confuse consumers, especially online buyers with imperfect recollection (Parle Products). However, he noted dissimilarities in Lotus and Bali Mynah, weakening the plaintiff’s case for those designs.

Addressing damage, the judge inferred irreparable harm to GOODEARTH’s reputation from the defendants’ actions, particularly given Mehta’s sale of designs on third-party websites under his name, potentially linking him to GOODEARTH. He dismissed the defendants’ branding defense, citing Vicco Laboratories and Nova Ball Bearing Industries v. Mico Ball Bearing (19(1981) DLT 20), which prioritized overall similarity over distinct trademarks in passing off cases.

The court balanced the defendants’ arguments, acknowledging that public domain elements cannot be monopolized (Servewell Products), but concluded that the plaintiff’s unique application and goodwill trumped this defense. He also considered Mehta’s ex-employee status, referencing Charan Dass and J.K. Jain v. Ziff-Davies Inc. (2000 (56) DRJ 806), to infer a duty not to exploit prior knowledge unfairly.

Final Decision: The court  made the interim injunction absolute for the designs Falcon, Rose Princess, Serai, and Vrindavan, restraining the defendants from using them in similar businesses due to their near-identical nature and likelihood of confusion. For Periyar, the defendants conceded non-use during arguments, reinforcing the restraint. However, he vacated the injunction for Lotus and Bali Mynah, finding them substantially dissimilar, though he prohibited the defendants from using these titles in similar business contexts to prevent confusion. 

Law Settled in This Case:This judgment reinforced several legal principles: Designs, even if inspired by public domain elements, can be protected under passing off if their creative application generates goodwill and consumer recognition. Ex-employees bear a heightened duty not to misuse knowledge gained during employment, strengthening passing off claims when they replicate former employers’ designs. In passing off, visual similarity and consumer confusion outweigh distinct branding, especially in online markets where physical inspection is absent. The threshold for originality in design application is met when old motifs are newly applied to commercial products, distinguishing them from raw inspiration.

Case Title: Eicher Goodearth Pvt Ltd Vs Krishna Mehta

Date of Order: June 29, 2015

Case No.: CS(OS) 1234/2014

Neutral Citation: 2015(63)PTC444(Del)

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon'ble Justice Shri Manmohan 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

Cadila Healthcare Ltd. Vs. Dabur India Ltd.

Commonly used terms describing product attributes cannot be monopolized as a Trademark.

Introduction: The case of Cadila Healthcare Ltd. v. Dabur India Ltd., decided by the Delhi High Court, revolves around the claim of exclusive rights over the expression "SUGAR FREE" by Cadila Healthcare Ltd. The dispute primarily concerns whether the term "SUGAR FREE" has acquired distinctiveness as a trademark and whether Dabur’s use of the term in its product "Chyawanprakash" amounts to passing off. The case raises significant questions regarding the intersection of intellectual property rights and generic descriptive terms.

Factual Background: Cadila Healthcare Ltd., a leading pharmaceutical company in India, introduced a low-calorie tabletop sweetener under the brand name “SUGAR FREE” in 1988. Despite the lack of formal trademark registration, the company argued that over the years, the term had acquired secondary meaning and distinctiveness, making it uniquely associated with their brand. Dabur India Ltd., a well-known manufacturer of Ayurvedic and food products, introduced a sugar-free variant of its product, "Chyawanprakash." The packaging of this product prominently displayed the term “SUGAR FREE,” which Cadila alleged was an attempt to mislead consumers and exploit its goodwill.

Procedural Background: Cadila Healthcare filed a suit seeking a permanent injunction against Dabur India, restraining them from using the term "SUGAR FREE." The suit also included claims for damages, rendition of accounts, and delivery of infringing goods.Along with the plaint, Cadila Healthcare sought an interim injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908. The learned Single Judge of the Delhi High Court dismissed this application in an order dated July 9, 2008. Aggrieved by this decision, Cadila Healthcare filed an appeal (FAO(OS) No. 387/2008) before the Division Bench of the High Court.

Issues Involved in the Case: Whether the term "SUGAR FREE" had acquired secondary meaning and distinctiveness in relation to Cadila Healthcare's product?Whether Dabur India's use of the term "SUGAR FREE" constituted passing off?Whether the expression "SUGAR FREE" was merely descriptive or had become a well-known trademark?

Submissions of Cadila Healthcare Ltd.: Argued that "SUGAR FREE" had acquired distinctiveness through long and extensive use since 1988. Cited the case of Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.), where the court recognized a level of distinctiveness in the term.Contended that Dabur's use of "SUGAR FREE" was deceptive and likely to mislead consumers.Stressed that the Single Judge had overlooked the findings in the Gujarat Cooperative Milk case while ruling in favor of Dabur.

Submissions of Dabur India Ltd. :Claimed that "SUGAR FREE" was a generic and descriptive term, commonly used to indicate a product's sugar-free nature.Argued that their product packaging clearly displayed the "DABUR" trademark and "Chyawanprakash" in a prominent manner, reducing any likelihood of confusion. Submitted that in an appeal against an interlocutory order, the appellate court should refrain from substituting its discretion for that of the Single Judge unless there was an arbitrary or perverse exercise of discretion.

Discussion on Judgments Cited:

1. Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.)

   • The court had acknowledged that "SUGAR FREE" had acquired some distinctiveness but also recognized that a term commonly used to describe a product’s feature cannot be monopolized.

   • The judgment was relied upon by both parties: Cadila used it to argue for distinctiveness, while Dabur cited its ruling that generic terms cannot be monopolized.

2. Wander Ltd. v. Antox India Pvt. Ltd., 1990 Suppl. (1) SCC 727

   • Supreme Court laid down the principle that an appellate court should not interfere with the discretionary orders of a lower court unless it was arbitrary or perverse.

   • Dabur relied on this case to argue that the appeal should be dismissed, as the Single Judge’s order was based on sound reasoning.

Reasoning and Analysis of the Judge

The Division Bench examined the following aspects while upholding the learned Single Judge’s decision:

1. Descriptive vs. Distinctive Nature of "SUGAR FREE"

   • The court held that "SUGAR FREE" is fundamentally a descriptive term, indicating that a product is free from sugar.

   • Even if it had acquired secondary meaning for Cadila’s product, it was not sufficient to grant an exclusive right to its use.

2. Comparison of Packaging

   • The court reviewed the packaging of both parties and observed that Dabur prominently displayed its brand name "DABUR" and the product name "Chyawanprakash."

   • "SUGAR FREE" was used in a smaller font, reinforcing that it was merely describing the product's attribute rather than serving as a trademark.

3. Application of Precedents

   • The court agreed with the Single Judge that the case did not warrant the application of the Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. judgment, as the circumstances were different.

   • Relying on Wander Ltd. v. Antox India Pvt. Ltd., the court concluded that appellate interference was unwarranted.

4. No Likelihood of Confusion

   • The court ruled that the packaging was distinct enough to prevent consumer confusion.

   • Since Dabur used "SUGAR FREE" in an appropriate context to describe its product rather than as a trademark, there was no case of passing off.

Final Decision

The Division Bench dismissed the appeal, affirming the learned Single Judge’s ruling. The court reiterated that:

• "SUGAR FREE" could not be monopolized by any single company.

• Dabur’s packaging was sufficiently distinctive.

• There was no prima facie case of passing off.

Law Settled in This Case

1. Generic and Descriptive Terms Cannot be Exclusively Claimed as Trademarks

   • The judgment reinforces the principle that commonly used terms describing product attributes cannot be monopolized.

2. Passing Off Requires Likelihood of Confusion

   • A successful claim of passing off necessitates proof that consumers are misled into believing the defendant's product originates from the plaintiff.

3. Limited Scope of Appellate Intervention in Interim Orders

   • The court reaffirmed that appellate courts should not interfere with discretionary interim orders unless there is arbitrariness or perversity.

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Case Title: Cadila Healthcare Ltd. Vs. Dabur India Ltd.
Date of Order: September 29, 2010
Case No.: FAO (OS) 387/2008
Neutral Citation: 2008:DHC:2662-DB
Court: High Court of Delhi
Judges: Hon’ble Mr. Justice Sanjay Kishan Kaul & Hon’ble Mr. Justice Mool Chand Garg

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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

Mocemsa Care Vs. The Registrar of Trade Marks

Factual Background: Mocemsa Care filed a trademark application (No. 4852344) on February 6, 2021, for a device mark under Class 3, covering beauty, skincare, and home fragrance products. The applicant claimed use since November 20, 2020, and submitted a supporting invoice. The Registrar of Trademarks refused registration under Section 9(1)(a) of the Trade Marks Act, 1999, citing a lack of distinctiveness.

Procedural Background:The applicant replied to the examination report and attended a hearing on December 27, 2023. Despite these efforts, the Registrar refused registration on January 1, 2024, stating that the mark was composed of common words and lacked distinctiveness. Aggrieved, the applicant appealed under Section 91 of the Trade Marks Act, 1999.

Reasoning of the Court:The court found that the Registrar erred in treating the mark as a mere combination of common words while ignoring its stylized composite form.The court held that distinctiveness should be judged holistically rather than by dissecting the mark into its components.The Registrar's rejection based on the applicant submitting only one invoice was deemed unfair, as the claimed prior use was only for a short period (one month), limiting the number of invoices available.

Decision:

The court set aside the impugned order, directed the Trade Marks Registry to advertise the application within three months, and allowed the application to proceed to opposition. Any objections would be decided on their own merits.

Case Title: Mocemsa Care Vs. The Registrar of Trade Marks

Date of Order: March 26, 2025

Case Number: C.A. (COMM.IPD-TM) 20/2024

Neutral Citation: 2025:DHC:2199

Court: Delhi High Court

Hon’ble Judge:Hon'ble Justice Amit Bansal

Bardhaman Agro Products Private Limited Vs. Kiran Mallik

Factual Background:

Bardhaman Agro Products I Private Limited (Petitioner), a rice manufacturer since 2001, holds the registered trademark "ROSE" with a rose device (Class 30, registered 2005). In March 2024, it discovered Kiran Mallik (Respondent) using "MAMU ROSE" with a similar rose device for rice, registered in 2019 with a claimed use since 2016. The Petitioner alleges infringement and passing off, citing deceptive similarity and intent to exploit its goodwill.

Procedural Background:

The suit (IP-COM/20/2024) was filed in the High Court at Calcutta, with two applications: GA-COM/1/2024 for interim relief and GA-COM/2/2024 for plaint rejection. Both were heard together by consent, with judgment delivered on March 28, 2025.

Reasoning of Court:

The court found the Petitioner’s "ROSE" mark, used since 2001 and registered in 2005, visually, phonetically, and structurally similar to the Respondent’s "MAMU ROSE" (registered 2019). The rose device imitation infringed the Petitioner’s copyright and trademark, risking consumer confusion in identical trade channels. The Respondent’s adoption was deemed dishonest, lacking justification, and aimed at exploiting the Petitioner’s goodwill. Prior use trumped registration, and jurisdiction was upheld based on sales within Calcutta. A prima facie case, balance of convenience, and irreparable harm favored the Petitioner.

Decision:

GA-COM/1/2024 was allowed, granting an injunction against the Respondent’s use of "MAMU ROSE." GA-COM/2/2024 was dismissed, upholding the suit’s maintainability.

Case Title:Bardhaman Agro Products Private Limited Vs. Kiran Mallik

Date of Order: March 28, 2025

Case Number: IP-COM/20/2024 

Name of Court High Court at Calcutta 

-Name of Hon’ble Judge: Justice Ravi Krishan Kapur

Psychotropic India Limited Vs. Meridian Medicare Ltd.

Factual Background:

Psychotropic India Limited (Petitioner) and Meridian Medicare Ltd. (Respondent No. 1) are pharmaceutical companies clashing over the trademark "TROMA." The Petitioner, using "TROMANIL" since 1997 and variants like "TROMA PLUS" and "TROMAZIN" later, sought cancellation of Respondent No. 1’s "TROMA" trademark (Registration No. 1383114, Class 05), alleging prior use and deceptive similarity. Respondent No. 1 claimed use since 2003-2004, asserting its mark’s validity and market acceptance.

Procedural Background:

Filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999, the petition (C.O. (COMM.IPD-TM) 370/2021) was heard by the High Court of Delhi. Advocates for both sides presented arguments, supported by invoices and trademark records. The court issued its order on March 6, 2025, with corrections released on March 31, 2025.

Reasoning of Court:

The court found the Petitioner to be the prior user of "TROMA"-based marks since 1997, supported by invoices and sales data showing extensive goodwill. Respondent No. 1’s "TROMA" was deemed deceptively similar, copying the dominant element of Petitioner’s marks, likely causing consumer confusion. The court rejected Respondent No. 1’s claim of use since 2004, citing forged invoices (e.g., mentioning "GST" pre-2017 and a 2011-registered website). Citing precedents, the court emphasized prior use, phonetic similarity, and the dishonesty of adoption, concluding Respondent No. 1’s registration violated the Trade Marks Act.

Decision:

The petition was allowed, canceling Respondent No. 1’s trademark "TROMA" (No. 1383114, Class 05). The Registrar of Trade Marks was directed to remove it from the Register, with the order emailed for compliance.

Case Title: Psychotropic India Limited Vs. Meridian Medicare Ltd. 

Date of Order: March 6, 2025 

Case Number: C.O. (COMM.IPD-TM) 370/2021

Neutral Citation: 2025:DHC:2161

-Name of Court: High Court of Delhi 

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

Manas Life Style Vs Viraj Harjai

Factual Background:

The petitioner, Manash Lifestyle Private Limited, is the proprietor of the well-known trademark "PURPLLE", which has been in use since 2011 for cosmetics and skincare products. The respondent, Doyita Dreams, sought to register and use the trademark "PURPLLE TREE", which incorporates the petitioner’s mark. The petitioner contended that the respondent's mark was deceptively similar, leading to confusion among consumers.

Procedural Background:

The petitioner filed an opposition before the Trade Marks Registry against the respondent’s application, citing prior use and reputation. The petitioner also secured ex-parte ad-interim injunctions in previous cases involving similar marks (e.g., CS (COMM) 704/2024 and CS (COMM) 143/2024). Despite service of notice, the respondent failed to appear in court, leading to an ex-parte hearing.

Reasoning of the Court:The court noted that the entire "PURPLLE" mark was adopted by the respondent, with only the addition of "TREE," which was not a distinguishing factor. Given the petitioner’s long-standing reputation, the court concluded that the respondent's adoption could not be considered bona fide.The court emphasized that mere registration in a different class does not validate dishonest adoption.

Decision:

The court held that:  The respondent's "PURPLLE TREE" mark was confusingly and deceptively similar to the petitioner’s "PURPLLE" mark. The adoption of the mark was dishonest and likely to mislead consumers. The respondent’s registration was ordered to be rectified and removed from the Trademark Register.

Case Title: Manas Life Style Vs Viraj Harjai

Date of Order: 10.03.2025

Case Number: C.O. (COMM.IPD-TM) 212/2024

Neutral Citation: 2025:DHC:2158

Court: Delhi High Court

Hon'ble Judge:Hon'ble Justice Mini Pushkarna,H.J.

Rajani Products Vs. Bhagwan Das Harwani

Factual Background

Rajani Products, a Kota-based company, has held the registered trademark "Swastik" with its associated label since 1983 for edible oils. The company alleged that respondents Bhagwan Das Harwani (Parwati Oil Mill) and Karishma Trading Corporation infringed this trademark by using a deceptively similar mark, "Shree Parwati Swastik," causing business losses.

Procedural Background

Rajani Products filed a civil suit (No. 76/2019) under the Trade Marks Act, 1999, before the Additional District Judge No. 3, Kota, seeking an injunction. Their application for temporary relief under Order 39 Rules 1 and 2 CPC was rejected on 06.02.2020. Aggrieved, they appealed to the Rajasthan High Court (Jaipur Bench) via S.B. Civil Miscellaneous Appeal No. 2198/2020.

Provisions of Law Referred and Their Context

• Order 43 Rule 1(r) CPC: Governs appeals against orders rejecting temporary injunctions, forming the basis of this appeal.
• Order 39 Rules 1 and 2 CPC: Provides for interim injunctions to prevent irreparable harm, invoked by the appellant to restrain the respondents.
• Trade Marks Act, 1999: Protects registered trademarks from infringement, central to the appellant’s claim of exclusive rights over "Swastik."

Judgments Referred with Complete Citation and Context

• S.B. Civil Misc. Appeal No. 2925/2022, Rajasthan High Court, Order dated 06.11.2024: In a parallel case involving Shanker Oil Mill, the same trademark dispute led to an injunction granted by Additional District Judge No. 2, Kota (30.08.2022), upheld by the High Court. This precedent was cited to highlight inconsistent rulings on identical issues.

Reasoning of Court

The Court found the respondents’ trademark "Shree Parwati Swastik" visually, phonetically, and structurally similar to the appellant’s registered "Swastik" mark. It noted the appellant’s long-standing use since 1983 and the respondents’ failure to appear despite notice. Referencing the Shanker Oil Mill case, the Court emphasized judicial consistency, concluding that a prima facie case of trademark infringement existed, warranting interim relief to prevent irreparable harm and protect public interest.

Decision

The High Court granted an ad-interim injunction, restraining the respondents from using the "Swastik" trademark and label until the suit’s final disposal, overturning the lower court’s rejection.

Case Details

• Case Title: Rajani Products Vs. Bhagwan Das Harwani & Anr.
• Date of Order: 19 March 2025
• Case Number: S.B. Civil Miscellaneous Appeal No. 2198/2020
• Neutral Citation: [2025:RJ-JP:12399]
• Name of Court: High Court of Judicature for Rajasthan, Jaipur Bench
• Name of Hon’ble Judge: Justice Anoop Kumar Dhand

Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs

Features with identical functionality may negate novelty if fully anticipated by prior art.

Introduction:

This case involves a legal challenge to a patent refusal by the Assistant Controller of Patent and Designs under the Patents Act, 1970, adjudicated by the Bombay High Court in its Commercial Division. The petitioners, Vishal Prafulsingh Solanke and another, sought to quash an order dated 14th June 2023 that rejected their patent application (No. 879/MUM/2015) for an invention titled "Thread Type Tamper Evident Security Seal." The refusal was based on pre-grant opposition under Section 25(1)(b) (lack of novelty) and Section 25(1)(e) (lack of inventive step) of the Act. The judgment, delivered on 27th March 2025, explores critical issues of patent law, including the standards for novelty, inventive step, and the role of prior art and common general knowledge in patent adjudication.

Detailed Factual Background:

The petitioners filed a patent application on 17th March 2015 for a tamper-evident security seal designed to prevent tampering in applications such as electricity boards and rickshaw meters. The invention featured a thread-type seal made of polycarbonate material with an embedded wire for enhanced tamper evidence. The application was published in the Patents Journal, triggering a pre-grant opposition by Respondent No. 3 on 16th January 2018. The Assistant Controller of Patent and Designs issued a First Examination Report (FER) on 30th April 2020, to which the petitioners responded on 24th December 2020, addressing both the FER and the opposition.

The invention was intended to address practical issues in prior art seals, such as wastage due to inadvertent rotation and ease of tampering. Unlike prior seals, the petitioners’ design allowed correction of accidental rotations and reuse after a 180-degree rotation, enhancing user-friendliness and cost efficiency. However, the Assistant Controller, after a hearing on 2nd May 2023 and subsequent written submissions, refused the application on 14th June 2023, citing lack of novelty and inventive step based on prior art documents, including US5419599 and US6390519.

Detailed Procedural Background:

The petitioners filed Patent Application No. 879/MUM/2015 on 17th March 2015. The application was published in the Patents Journal. Respondent No. 3 filed a pre-grant opposition on 16th January 2018 under Section 25(1) of the Patents Act. The Assistant Controller issued a First Examination Report (FER) on 30th April 2020. The petitioners’ agent filed replies on 24th December 2020 to both the FER and the opposition. A pre-grant opposition hearing occurred on 2nd May 2023, where amendments were suggested. The petitioners submitted amended specifications post-hearing. On 9th May 2023, the Assistant Controller issued an interim order directing written submissions. The petitioners filed their submissions on 16th May 2023, and Respondent No. 3 filed theirs on 31st May 2023. On 14th June 2023, the Assistant Controller refused the patent under Sections 25(1)(b) and 25(1)(e). The petitioners filed a Commercial Miscellaneous Petition (L) No. 25369 of 2023 on 11th September 2023 under Section 117A of the Patents Act before the Bombay High Court. The judgment was reserved on 28th November 2024 and pronounced on 27th March 2025.

Issues Involved in the Case:

whether the petitioners’ invention lacked novelty under Section 25(1)(b) in light of prior art US5419599? whether it lacked an inventive step under Section 25(1)(e) when compared to prior art and common general knowledge? whether the Assistant Controller’s findings on novelty and inventive step were legally inconsistent or unsupported by prior art analysis? whether the impugned order adequately addressed the petitioners’ submissions and adhered to principles of natural justice? and whether the refusal order provided sufficient reasoning, particularly regarding technical advancement and economic effect?

Petitioners’ Submissions:

The petitioners argued that their invention prevents tampering in critical applications, featuring a unique thread-type seal with a wire moulded inside, distinguishing it from prior art (D1: WO2006000370A1 and D2: US6390519B1). They contended that the impugned order misapplied Sections 25(1)(b) and 25(1)(e), ignoring differences highlighted in diagrams and submissions. Citing Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023), they asserted that novelty requires prior art to disclose the entire invention, noting that the order itself acknowledged a novel feature (threads in cavity and insert) yet contradicted this by refusing the patent. On inventive step, they relied on Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022), arguing that the invention showed technical advancement (e.g., reusability) not obvious to a skilled person. They challenged the order’s lack of detailed analysis on obviousness or common general knowledge sources, referencing Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court). They sought to quash the impugned order and requested a reasoned reconsideration within 12 weeks.

Respondents’ Submissions:

Respondent Nos. 1 and 2, defended the refusal, asserting that a fair hearing was conducted with no procedural lapses. He argued that US5419599 anticipates all features of the invention, with its snap-fit mechanism equivalent to the threaded lock (paragraphs 18-19 of the impugned order). He contended that no surprising effect or economic advantage was demonstrated, citing Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court), which requires more than workshop improvements for patentability. He justified the use of US1911060A (background of US5419599) as common general knowledge, upheld in Agfa NV (supra). He emphasized that the pre-grant opposition (US5419599) and Sections 14-15 analysis (D1, D2) were distinct, and a single valid ground suffices for refusal, per Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court). He concluded that the impugned order was reasoned and warranted no interference.

Detailed Discussion on Judgments Cited by Parties:

Guangdong Oppo Mobile Telecommunications Corp. Ltd. v. The Controller of Patents and Designs (AID No. 20 of 2022, Calcutta High Court, 13th June 2023) was cited by the petitioners to argue that novelty and inventive step objections cannot stem from the same prior art. The court rejected this, finding that different prior arts (US5419599 for pre-grant, D1/D2 for Sections 14-15) were used, rendering the citation misplaced.

Avery Dennison Corporation v. Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 29/2021, Delhi High Court, 4th November 2022) was relied upon by the petitioners to claim that technical advancement (reusability) satisfied the inventive step. The court found no such advancement, as the threaded lock was equivalent to US5419599’s features, negating the petitioners’ reliance.

Afga NV v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 477/2022, Delhi High Court) was invoked by the petitioners to challenge the lack of detailed obviousness analysis, while the respondents justified citing prior art as common knowledge. The court upheld the use of US1911060A as common knowledge, finding no prohibition in citing prior art literature.

Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511, Supreme Court) was cited by the respondents to argue that the invention was a mere workshop improvement. The court applied this to hold that the threaded lock lacked inventive step beyond known art.

Opentv Inc. v. Controller of Patents and Designs (2023 SCC OnLine Del 2771, Delhi High Court) was referenced by the respondents to assert that a single valid ground suffices for refusal. The court agreed, upholding the refusal under Section 25(1)(b) alone.

Mahesh Gupta v. Assistant Controller of Patents and Designs (C.A. (Comm.IPD-PAT) 328 of 2022, Delhi High Court) supported the respondents’ inventive step analysis with common knowledge. It reinforced the court’s acceptance of US1911060A as a valid source.

Detailed Reasoning and Analysis of Judge :

The Court bifurcated the impugned order into two parts: paragraphs 12-23 (pre-grant opposition) and 24-31 (Sections 14-15), treating them as independent. On novelty under Section 25(1)(b), he found that US5419599 anticipated all features, with its snap-fit mechanism mechanically equivalent to the threaded lock. US1911060A’s disclosure further supported this as common knowledge, justifying refusal. For inventive step under Section 25(1)(e), even if novelty were contested, the threaded lock showed no technical advancement or economic effect, being obvious to a skilled person per US5419599 and US1911060A. The petitioners’ reliance on a novelty finding in Sections 14-15 (against D1/D2) did not override the pre-grant refusal (against US5419599), as the analyses were distinct. Legal precedents like Biswanath Prasad confirmed the need for more than workshop improvements, while Opentv Inc. validated that one ground suffices for refusal. The judge found no violation of natural justice, with the order addressing all contentions and substantiated by reasons. He concluded that the petitioners failed to demonstrate error in the refusal, warranting dismissal.

Final Decision:

The Commercial Miscellaneous Petition was dismissed on 27th March 2025, with no order as to costs, upholding the Assistant Controller’s refusal of Patent Application No. 879/MUM/2015.

Law Settled in This Case:

The case clarified that a patent refusal can stand on a single valid ground (e.g., lack of novelty), irrespective of other findings. It affirmed that disclosures in prior art backgrounds (e.g., US1911060A in US5419599) can constitute common general knowledge for inventive step analysis. It also established that Features with identical functionality (e.g., snap-fit vs. threaded lock) may negate novelty if fully anticipated by prior art.

Case Title: Vishal Prafulsingh Solanke Vs The Controller of Patent and Designs 

Date of Order: 27th March 2025

Case No.: Commercial Miscellaneous Petition (L) No. 25369 of 2023

Neutral Citation: 2025:BHC-OS:4952

Name of Court: High Court Bombay

Name of Judge: Hon'ble Justice Shri R.I. Chagla J.

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

Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.

Section 11(2) requires proof of unfair advantage or detriment, not mere reputation

Introduction

The case of Nandhini Deluxe vs. M/S. Karnataka Cooperative Milk Producers Federation Ltd. is a significant trademark dispute adjudicated by the Supreme Court of India on July 26, 2018. The central issue revolved around the use and registration of the trademark "NANDHINI" by the appellant, a restaurant business, in the face of opposition from the respondent, a cooperative federation known for its milk and milk products sold under the phonetically similar trademark "NANDINI." This case exemplifies the application of trademark law principles under the Trade Marks Act, 1999, particularly concerning distinctiveness, likelihood of confusion, and the scope of monopoly over a class of goods. It underscores the balance between protecting established trademarks and allowing fair use by others in different trade contexts.

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Detailed Factual Background

• Respondent’s Business and Trademark: The respondent, Karnataka Cooperative Milk Producers Federation Ltd., adopted the trademark "NANDINI" in 1985 for its milk and milk products. The mark, registered under Classes 29 and 30 of the Trade Marks Rules, 2002, featured a logo of a cow with the word "NANDINI" in an egg-shaped circle. Over the years, the respondent claimed that "NANDINI" had become a well-known mark and a household name in Karnataka, akin to "Amul" in Gujarat, due to its extensive use and promotion.
• Appellant’s Business and Trademark: The appellant, M/S. Nandhini Deluxe, began using the trademark "NANDHINI" in 1989 for its restaurant business in Bangalore and one location in Tamil Nadu. The mark was stylized as "NANDHINI DELUXE" with a lamp device and the tagline "the real spice of life," applied to foodstuffs like meat, fish, poultry, fruits, vegetables, edible oils, and spices sold in its restaurants. The appellant sought registration of this mark under Classes 29 and 30, among others, but explicitly excluded milk and milk products from its claim.
• Nature of the Marks: Both "NANDINI" and "NANDHINI" are phonetically similar, differing only by one letter ("H"). However, their visual representations, logos, and business contexts were distinct. "NANDINI/NANDHINI" is a generic term in Hindu mythology, referring to a goddess and a cow, and is not an invented word.
• Timeline: The respondent’s use predated the appellant’s by four years (1985 vs. 1989). By the time the appellant applied for registration in the early 2000s, it had used "NANDHINI" for over a decade.

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Detailed Procedural Background

• Initial Application and Opposition: The appellant applied for registration of "NANDHINI DELUXE WITH LOGO (Kannada)" under Class 29 and related marks under Class 30. The respondent opposed these applications, arguing that "NANDHINI" was deceptively similar to its registered mark "NANDINI," likely to cause confusion, and that it had acquired distinctiveness through long use.
• Deputy Registrar’s Decision (August 13, 2007): The Deputy Registrar dismissed the respondent’s objections, finding no likelihood of confusion due to the differences in goods (restaurants vs. dairy products) and the distinct visual styles of the marks. Registration was granted to the appellant, excluding milk and milk products, under Sections 9, 11, and 18 of the Trade Marks Act, 1999.
• IPAB Appeals:
  • Order of April 20, 2010: In one appeal (OA/4/2008/TM/CH), the Intellectual Property Appellate Board (IPAB) upheld the Deputy Registrar’s decision, citing Vishnudas Trading to argue that a trader should not monopolize an entire class of goods if they only deal in specific items (milk vs. restaurant foodstuffs).
  • Order of October 4, 2011: In subsequent appeals, a different IPAB bench reversed the earlier ruling, allowing the respondent’s appeals. It held that "NANDINI" was a well-known mark, and the phonetic similarity with "NANDHINI" would confuse consumers, despite the appellant’s different goods.
• High Court Decision (December 2, 2014): The Karnataka High Court dismissed the appellant’s writ petitions, affirming the IPAB’s October 2011 order. It emphasized the distinctiveness of "NANDINI" and the potential for confusion within the same classes (29 and 30).
• Supreme Court Appeals: The appellant appealed to the Supreme Court (Civil Appeal Nos. 2937-2942 & 2943-2944 of 2018), challenging the High Court and IPAB’s findings.

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Issues Involved in the Case

1. Likelihood of Confusion: Whether the appellant’s use of "NANDHINI" was deceptively similar to "NANDINI," likely to cause confusion or deception among consumers?
2. Distinctiveness and Well-Known Status: Whether "NANDINI" had acquired such distinctiveness or well-known status under Section 11(2) that it precluded registration of "NANDHINI" for different goods in the same classes?
3. Scope of Monopoly: Whether the respondent’s registration under Classes 29 and 30 entitled it to a monopoly over all goods in those classes, or only the specific goods it traded (milk and milk products)?
4. Honest Concurrent Use: Whether the appellant’s long use of "NANDHINI" since 1989 qualified as honest concurrent use under Section 12, overriding the respondent’s objections?
5. Application of Trademark Law: Whether the IPAB and High Court correctly applied Sections 9, 11, and 12 of the Trade Marks Act, 1999?

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Detailed Submission of Parties

• Appellant’s Submissions:
  • No Confusion: The goods (restaurant foodstuffs) and trade channels (restaurants vs. dairy sales) were distinct, negating any likelihood of confusion under Sections 9 and 11. Cited British Sugar Plc v. James Robertson & Sons Ltd. ([1996] RPC 281) to argue that similarity of goods and confusion are separate inquiries.
  • Limited Monopoly: Per Vishnudas Trading v. Vazir Sultan Tobacco Ltd. ([1997] 4 SCC 201), a trademark owner’s rights extend only to goods they trade, not an entire class. The respondent’s business was confined to milk, not the appellant’s goods.
  • Not Well-Known: The respondent failed to prove "NANDINI" met the criteria for a well-known mark under Section 11(2), as laid out in Nestle India Ltd. v. Mood Hospitality Pvt. Ltd. ([2010] 42 PTC 514 (Del)).
  • Honest Use: The appellant’s use since 1989 was honest and concurrent, supported by the Deputy Registrar’s findings and Section 12.
  • Generic Name: "NANDHINI" being a common deity name weakened the respondent’s claim to exclusivity.
  • Concession: The appellant offered to exclude milk and milk products from its registration, addressing any overlap.
• Respondent’s Submissions :
  • Well-Known Mark: "NANDINI" was a household name in Karnataka with distinctiveness, meeting Section 11(2) criteria (Nestle India Ltd. applied). Its use since 1985 predated the appellant’s.
  • Confusion Likely: Phonetic identity ("NANDINI" vs. "NANDHINI") in the same classes (29 and 30) would confuse consumers, per IPAB and High Court findings.
  • Dishonest Use: The appellant knowingly adopted "NANDHINI" despite awareness of the respondent’s mark (evidenced by purchasing "NANDINI" milk), negating honest concurrent use under Section 12.
  • Religious Argument Counter: The appellant’s claim that "NANDHINI" as a deity name cannot be registered undermined its own application, but Section 9(2)(b) did not bar registration unless it hurt religious sentiments, which it did not.
  • Override by Section 11(2): The mandatory nature of Section 11(2) trumped Section 12’s discretionary provisions.

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Detailed Discussion on Judgments Cited by Parties

1. Vishnudas Trading v. Vazir Sultan Tobacco Ltd., [1997] 4 SCC 201:
   • Context: The Supreme Court held that a trademark owner cannot claim monopoly over an entire class if they only trade in specific goods within it.
   • Appellant’s Use: Argued that the respondent’s rights were limited to milk products, not all goods in Classes 29 and 30.
   • Court’s Application: The Supreme Court relied on this to reject the High Court’s broad class-based monopoly reasoning.
2. British Sugar Plc v. James Robertson & Sons Ltd., [1996] RPC 281 (CH):
   • Context: The UK court distinguished between similarity of goods and likelihood of confusion, rejecting the notion that a strong mark automatically protects dissimilar goods.
   • Appellant’s Use: Emphasized that confusion requires both similarity of marks and goods, not just phonetic similarity.
   • Court’s Application: Supported the finding that different goods and trade channels reduced confusion risk.
3. Nestle India Ltd. v. Mood Hospitality Pvt. Ltd., [2010] 42 PTC 514 (Del) (DB):
   • Context: The Delhi High Court outlined criteria for a well-known mark under Section 11(2): reputation, unfair advantage, and detriment.
   • Respondent’s Use: Argued "NANDINI" met these criteria, justifying broader protection.
   • Appellant’s Use: Contended insufficient evidence existed for such status.
   • Court’s Application: Found the respondent failed to prove unfair advantage or detriment by the appellant’s use.
4. Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492 (1961):
   • Context: The US court listed factors for assessing confusion (mark strength, similarity, product proximity, etc.).
   • Appellant’s Use: Applied these to argue no confusion due to different products and visual distinctions.
   • Court’s Application: Adopted this test, finding minimal confusion risk.
5. National Sewing Thread Co. Ltd. v. James Chadwick and Bros., AIR 1953 SC 357:
   • Context: The Supreme Court held that confusion is assessed from an average consumer’s perspective, not just mark comparison.
   • Appellant’s Use: Argued an ordinary person would not confuse restaurant goods with dairy products.
   • Court’s Application: Reinforced that visual and contextual differences negated confusion.
6. London Rubber Co. Ltd. v. Durex Products Inc., (1964) 2 SCR 211:
   • Context: Discussed the burden on an applicant to prove no deception under the Trade Marks Act.
   • Appellant’s Use: Asserted it met this burden with distinct goods and honest use.
   • Court’s Application: Implicitly supported the appellant’s discharge of this burden.

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Detailed Reasoning and Analysis of Judge

• Key Facts Recap: Highlighted the respondent’s prior use (1985) vs. the appellant’s long use (1989), different goods, generic nature of "NANDHINI," and visual distinctions in logos.
• Core Issue: Focused on whether "NANDHINI" infringed "NANDINI" by causing confusion or leveraging goodwill, rather than presuming the respondent’s distinctiveness (though assumed for argument’s sake).
• No Deceptive Similarity: Applying Polaroid and National Sewing Thread, the court found no confusion due to:
  • Different visual marks (lamp vs. cow logo).
  • Distinct goods (restaurant items vs. dairy) and trade channels.
  • An average consumer’s ability to differentiate based on context.
• Class Monopoly Rejected: Citing Vishnudas Trading, the court ruled that trademark rights extend only to goods traded, not entire classes. The respondent’s milk focus did not preclude the appellant’s registration for other Class 29/30 goods.
• Section 11(2) Analysis: Per Nestle India Ltd., the respondent failed to show the appellant’s use was unfair or detrimental to "NANDINI’s" repute, especially given the appellant’s early adoption (1989) before "NANDINI" arguably became well-known.
• Concurrent Use: The appellant’s 12-13 years of use before applying for registration suggested honest concurrent use under Section 12, unchallenged by the respondent via injunction.
• IPAB Inconsistency: Noted the IPAB’s April 2010 order (upholding registration) was ignored in its October 2011 reversal, hinting at issue estoppel, though not decisive given the merits ruling.
• Conclusion: Overturned the IPAB and High Court, restoring the Deputy Registrar’s order with the appellant’s concessions on milk products.

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Final Decision

The Supreme Court allowed the appeals, set aside the High Court (December 2, 2014) and IPAB (October 4, 2011) orders, and restored the Deputy Registrar’s registration grant, excluding milk and milk products as per the appellant’s concessions. No costs were awarded.

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Law Settled in This Case

1. Likelihood of Confusion: Assessed holistically (mark similarity, goods, trade channels), not just phonetically or by class overlap.
2. Class Monopoly: A trademark owner’s rights are limited to goods they trade, not an entire class (Vishnudas Trading affirmed).
3. Well-Known Mark: Section 11(2) requires proof of unfair advantage or detriment, not mere reputation.
4. Honest Concurrent Use: Long, unchallenged use can support registration under Section 12, even with phonetic similarity.

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Case Details

• Case Title: Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.
• Date of Order: July 26, 2018
• Case No.: Civil Appeal Nos. 2937-2942 of 2018 with Civil Appeal Nos. 2943-2944 of 2018
• Neutral Citation: AIR 2018 Supreme Court 3516, (2018) 9 SCC 183
• Name of Court: Supreme Court of India
• Name of Judge: Hon'ble Justices Shri A.K. Sikri and Shri Ashok Bhushan)

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

Gufic Ltd. Vs Clinique Laboratories

Vast price differential between the two products, held to be fatal against grant of  interim injunction

Introduction

The case of M/S Gufic Ltd. & Another vs. Clinique Laboratories, LLC & Another is a trademark dispute adjudicated by the High Court of Delhi. This appeal arose from an interim order issued by a Single Judge, which granted an injunction in favor of Clinique Laboratories, LLC (Respondents/Plaintiffs) against Gufic Ltd. (Appellants/Defendants), restraining the use of the trademark "SKINCLINIQ." The Division Bench, in its judgment dated July 9, 2010, overturned the Single Judge's decision, focusing on the principles of trademark infringement under Section 29 of the Trade Marks Act, 1999. This case study examines the factual and procedural background, the issues involved, the parties' submissions, judicial precedents, the court's reasoning, and the legal principles settled.

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Detailed Factual Background

The Respondents, Clinique Laboratories, LLC (Plaintiff No. 1), a U.S.-based company, are globally recognized for their cosmetic and skincare products under the trademark "CLINIQUE," registered in India since July 13, 1981, under Class 3 (cosmetics, creams, lotions, etc.). They also own a series of trademarks incorporating "CLINIQUE," such as "CLINIQUE WATER THERAPY" and "CLINIQUE SKIN SUPPLIES FOR MEN," registered since 1992, and "CLINIQUE & C DEVICE" since 1978. Clinique claimed worldwide use of "CLINIQUE" since 1968 and entry into the Indian market in 2007, asserting it as the distinguishing feature of their brand.

The Appellants, Gufic Ltd., an Indian company, are the registered proprietors of "SKINCLINIQ" and related marks, including "SKINCLINIQ STRETCH NIL," since 1998-1999 under Classes 3 and 5 (cosmetics and medicinal preparations). They market "SKINCLINIQ STRETCH NIL," an Ayurvedic herbal product for stretch mark removal, with sales evidenced since 1999. Clinique became aware of Gufic’s mark in September 2006 and initiated legal action, alleging infringement and deceptive similarity with "CLINIQUE."

The dispute centered on whether "SKINCLINIQ" infringed "CLINIQUE," given their use in overlapping product categories (cosmetics/skincare) and the alleged phonetic and structural similarity.

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Detailed Procedural Background

The Respondents filed a suit (CS(OS) 2581/2008) before the Delhi High Court, seeking a permanent injunction against the Appellants for trademark infringement and passing off, along with damages. On December 16, 2008, the Single Judge granted an ex parte interim injunction (IA No. 15425/2008 under Order 39 Rules 1 and 2, CPC), restraining Gufic from using "SKINCLINIQ" or related marks.

The Appellants responded with IA No. 217/2009 (under Order 39 Rule 4, CPC) to vacate the injunction, while the Respondents filed IA No. 2769/2009 (under Section 124(1)(ii), Trade Marks Act, 1999) to stay the suit pending rectification proceedings against Gufic’s "SKINCLINIQ" registration. On April 9, 2009, the Single Judge disposed of all applications: the injunction was made absolute, Gufic’s application was dismissed, and the suit was stayed pending rectification, subject to no interference with those proceedings.Gufic appealed (FAO(OS) 251/2009) to the Division Bench, challenging the injunction and initially the Section 124 stay, though the latter issue was later dropped during arguments. The Division Bench, comprising Justices Badar Durrez Ahmed and Veena Birbal, delivered its judgment on July 9, 2010.

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Issues Involved in the Case

The primary issue before the Division Bench was:

1. Whether the Respondents made out a prima facie case for an interim injunction under Section 29(1) of the Trade Marks Act, 1999, based on the alleged deceptive similarity between "CLINIQUE" and "SKINCLINIQ."

• Sub-issues included:
  • Are "CLINIQUE" and "SKINCLINIQ" deceptively similar in structure, phonetics, or idea?
  • Does the use of "SKINCLINIQ" by the Appellants render it likely to be mistaken as "CLINIQUE"?

The court explicitly excluded considerations under Section 124 (stay) and Sections 28(3) and 30(2)(e) (registered mark defenses), focusing solely on infringement.

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Detailed Submission of Parties

Appellants’ Submissions (Gufic Ltd.)

• dissimilarity of Marks: The Appellant argued that "SKINCLINIQ" and "CLINIQUE" are neither identical nor deceptively similar. "SKINCLINIQ" includes the prefix "SKIN," distinguishing it structurally and visually.
• Product Differences: "SKINCLINIQ STRETCH NIL" is an Ayurvedic herbal product for stretch marks, priced at Rs. 245 for 100 ml, while "CLINIQUE" products are non-Ayurvedic cosmetics, priced significantly higher (e.g., Rs. 1,200 for 15 ml). This price differential and product nature eliminate confusion.
• Trade Dress and Consumer Base: The style, color scheme, and packaging of "SKINCLINIQ" differ from "CLINIQUE," targeting distinct consumer classes.
• Established Use: Gufic has used "SKINCLINIQ" since 1999, evidenced by advertisements, negating mala fide intent.
• Test for Similarity: Since the marks are not identical, the infringement test mirrors passing off, requiring a likelihood of confusion, which Gufic argued was absent.

Respondents’ Submissions (Clinique Laboratories, LLC)

• Focus on Marks Alone: The Respondent contended that infringement under Section 29(1) hinges solely on comparing the marks, not price, trade dress, or product specifics.
• Deceptive Similarity: "SKINCLINIQ" is phonetically and structurally similar to "CLINIQUE," especially as "CLINIQ" mimics "CLINIQUE" (pronounced "KLINECK"). Viewed holistically, from a consumer’s perspective (average intelligence, imperfect recollection), confusion is likely.
• Common Idea: Both marks suggest treatment or skincare, reinforcing similarity.
• Established Reputation: Clinique’s long-standing global and Indian use of "CLINIQUE" supports its claim to exclusivity.

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Detailed Discussion on Judgments Cited by Parties

1. Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727
   • Context: Compared "RUSTON" with "RUSTAM" and "RUSTAM INDIA."
   • Relevance: The Supreme Court held "RUSTAM INDIA" infringed "RUSTON," rejecting the suffix "INDIA" as a differentiator. Gufic distinguished this, arguing "SKIN" in "SKINCLINIQ" is integral, not a mere suffix.
2. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449
   • Context: "AMRITDHARA" vs. "LAXMANDHARA."
   • Relevance: The Supreme Court emphasized overall phonetic and structural similarity from a consumer’s perspective. Clinique relied on this for holistic comparison; Gufic countered that "SKIN" alters the overall impression.
3. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980
   • Context: Distinguished infringement (statutory) from passing off (common law).
   • Relevance: Clinique cited it to argue that close similarity negates the need for further evidence. Gufic used it to assert that broader context (e.g., trade dress) matters in non-identical mark cases.
4. Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142
   • Context: "GLUCOVITA" vs. "GLUVITA."
   • Relevance: The Supreme Court found similarity due to a common idea (glucose/vitamins) and minimal phonetic difference ("CO"). Clinique likened "CLINIQ" to "CLINIQUE"; Gufic argued "SKIN" creates a substantial distinction.
5. Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, (2009) 159 DLT 267
   • Context: "LAL QUILLA" vs. "HARA QUILLA."
   • Relevance: The Delhi High Court protected "QUILLA" as the essential feature. Clinique argued "CLINIQUE" is its core; Gufic countered that "SKINCLINIQ" is a unified mark, not just "CLINIQ."
6. Metropol India (P) Ltd. v. Praveen Industries India (Regd), 1997 PTC (17) 779 (DB)
   • Context: "CLEANZO" vs. "CLEANJO."
   • Relevance: The Delhi High Court found "CLEANJO" infringing due to confusion potential. Clinique cited this for phonetic similarity; Gufic distinguished it, noting "SKIN" alters the mark’s identity.
7. Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618
   • Context: Compared biscuit wrappers with similar designs.
   • Relevance: The Supreme Court emphasized overall similarity over minute differences. Clinique applied this to trade dress; Gufic argued their packaging and pricing differentiate the products.

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Detailed Reasoning and Analysis of Judge

The Division Bench, led by Justice Badar Durrez Ahmed, analyzed the case under Section 29(1), assuming "SKINCLINIQ" as unregistered to focus solely on deceptive similarity:

• Legal Framework: Under Section 29(1), infringement occurs if a mark is identical or deceptively similar to a registered mark, used in a manner likely to be taken as a trademark. Since "CLINIQUE" and "SKINCLINIQ" are not identical, the court assessed deceptive similarity.
• Principles Applied: Drawing from precedents:
  • Marks must be compared holistically, not split into parts (Amritdhara, Corn Products).
  • The perspective is that of a consumer with average intelligence and imperfect recollection (Parle Products).
  • Similarity includes structure, phonetics, and conveyed idea (Corn Products).
• Comparison of Marks:
  • Phonetic Similarity: "CLINIQUE" (KLINECK) and "SKINCLINIQ" (SKIN-KLINIK) differ due to the prefix "SKIN," altering the pronunciation and sound.
  • Structural Similarity: "SKINCLINIQ" is a single word with "SKIN" as an integral part, unlike "CLINIQUE." Splitting "SKINCLINIQ" into "SKIN" and "CLINIQ" (as the Single Judge did) was erroneous; the mark must be viewed as a whole.
  • Visual Similarity: The addition of "SKIN" and distinct trade dress (color, style) differentiate the marks visually.
  • Common Idea: Both suggest treatment/skincare, but this alone does not suffice without structural/phonetic similarity.
• Consumer Perception: A consumer would not confuse "SKINCLINIQ" with "CLINIQUE" due to the prefix "SKIN" and vast price differential (Rs. 245 vs. Rs. 1,200+), targeting different market segments.
• Single Judge’s Error: The Single Judge wrongly dissected "SKINCLINIQ" and compared "CLINIQ" with "CLINIQUE," ignoring the holistic test. The Bench found no prima facie infringement.
• Scope Limitation: The court avoided registration validity (pending rectification) and focused solely on injunction merits, per the parties’ agreement.

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Final Decision

The Division Bench allowed the appeal on July 9, 2010, setting aside the Single Judge’s order granting the injunction (IA No. 15425/2008) and dismissing Gufic’s vacation application (IA No. 217/2009). The injunction was vacated, and parties bore their own costs.

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Law Settled in This Case

1. Holistic Comparison: In assessing deceptive similarity under Section 29(1), trademarks must be compared as a whole, not dissected into components, reinforcing Amritdhara and Corn Products.
2. Consumer Perspective: The test hinges on a consumer of average intelligence and imperfect recollection, not expert analysis (Parle Products).
3. Contextual Factors: While infringement focuses on marks, practical differences (e.g., price, trade dress) can inform the likelihood of confusion, though not decisive alone.
4. Non-Identical Marks: Where marks differ, the infringement test aligns with passing off, requiring a clear likelihood of deception (Ruston & Hornsby).
5. Price Difference Material:The price differential between the two products is so vast that no consumer of products of either the appellant or the respondent would confuse one for the other

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Case Details

• Case Title: Gufic Ltd. Vs Clinique Laboratories
• Date of Order: July 9, 2010
• Case No.: FAO(OS) 251/2009
• Citation:2010 SCC OnLine Del 2322 :(2010) 43 PTC 788
• Name of Court: High Court of Delhi at New Delhi
• Name of Judges: Justice Badar Durrez Ahmed and Justice Veena Birbal

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