Ep.108:LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action

Introduction:In the intricate world of trademark litigation, the case of LG Corporation and Anr. Vs. Intermarket Electroplasters (P) Ltd. stands as a testament to the complexities of territorial jurisdiction in India. Decided on February 13, 2006, by the Delhi High Court, this dispute pits a global electronics giant against an Indian company, revolving around the pivotal question of where a legal battle over trademark infringement should be fought. With allegations of passing off and a skirmish over the court’s right to hear the case, this judgment illuminates the interplay between statutory provisions, judicial precedents, and the practical realities of commerce, offering a nuanced exploration of jurisdiction in civil suits.

Detailed Factual Background:LG Corporation, a renowned South Korean multinational, along with its co-plaintiff, initiated a lawsuit against Intermarket Electroplasters (P) Ltd., an Indian company, and other defendants. The crux of LG’s grievance was that Intermarket was allegedly passing off its goods as those of LG by using a deceptively similar trademark. 

LG asserted that this infringement violated its intellectual property rights, prompting a suit for relief in the Delhi High Court.LG’s plaint rested on three jurisdictional anchors: The filing and advertisement of its trademark registration application at the Trade Mark Registry in Delhi, The applicability of Section 134 of the Trade Marks Act, 1999, and the sale of Intermarket’s allegedly infringing goods within Delhi. Specifically, LG pointed to invoices  evidencing sales of these goods to parties in Delhi, asserting that this commercial activity within the city triggered a cause of action sufficient to vest jurisdiction in the Delhi High Court. Intermarket, a company incorporated under the Indian Companies Act with no branch office or agent in Delhi, contested the court’s jurisdiction. It argued that its operations were not based in Delhi, and thus, it neither resided nor carried on business there, challenging LG’s claim to anchor the suit in the capital.

Detailed Procedural Background:The legal proceedings commenced when LG filed its suit in the Delhi High Court, invoking the court’s jurisdiction based on the aforementioned grounds. Intermarket responded by filing an application (IA No. 258/06) under Order 7, Rule 11 of the Code of Civil Procedure (CPC), effectively seeking the return or rejection of the plaint under Order 7, Rule 10, arguing that the court lacked territorial jurisdiction. This application, also invoking the court’s inherent powers under Section 151 CPC, set the stage for a preliminary skirmish over venue.

Issues Involved in the Case:The central issue was whether the Delhi High Court possessed territorial jurisdiction to entertain LG’s suit? This hinged on interpreting Section 20 of the CPC, specifically whether the sale of allegedly infringing goods in Delhi constituted a part of the cause of action sufficient to anchor Jurisdiction under Section 20(c), given Intermarket’s lack of physical presence in the city.

Detailed Submission of Parties:LG’s counsel argued that the court’s jurisdiction was secured by the sale of Intermarket’s infringing goods in Delhi, as averred in paragraph 30 of the plaint: "the impugned goods of the defendants are also selling in Delhi, though without issuance of supporting invoices." They bolstered this with Intermarket’s own documents—invoices showing sales to Delhi parties—asserting that this commercial activity gave rise to a cause of action within the court’s territorial ambit. LG emphasized that jurisdiction under Section 20(c) CPC extends to where any part of the cause of action arises, and the sale of goods directly tied to the passing-off claim satisfied this criterion.

Intermarket’s counsel countered that the company, lacking a branch office or agent in Delhi, neither resided nor carried on business there, as required under Section 20(a) CPC. They relied on the Supreme Court’s ruling in Kusum Ingots & Alloys Ltd. vs. Union of India to argue that mere sales did not equate to carrying on business, drawing parallels to Section 20(c)’s interpretation in writ jurisdiction. They further contended that even if a cause of action arose, the court could discretionarily decline jurisdiction under the doctrine of forum conveniens, urging the suit’s dismissal or transfer.

Detailed Discussion on Judgments :Cited by Parties and Their ContextThe parties leaned on key judicial precedents to fortify their positions: 

Dhodha House vs. S.K. Maingi, (2006) 9 SCC 41: Cited by both sides, this Supreme Court ruling was pivotal. LG conceded it negated jurisdiction based on the Trade Mark Registry’s location and Section 134(2) of the Trade Marks Act, 1999, which provides an additional forum only where the plaintiff resides or works for gain. Intermarket used it to argue that statutory jurisdiction must be explicitly conferred, reinforcing their stance that Delhi lacked a basis absent their business presence. The court clarified that Section 20 CPC governs trademark suits unless overridden by specific provisions, setting the stage for a cause-of-action analysis.

Kusum Ingots & Alloys Ltd. vs. Union of India, (2004) 6 SCC 254: Intermarket relied on this Supreme Court decision, which interpreted jurisdiction under Article 226 of the Constitution by reference to Section 20(c) CPC. The court held that a small part of the cause of action within a High Court’s territory does not compel adjudication, allowing discretionary refusal under forum conveniens. Intermarket argued this principle applied to suits, suggesting Delhi could decline jurisdiction despite sales.

Morgan Stanley Mutual Fund vs. Kartick Das, (1994) 4 SCC 225: Supreme Court case established that a corporation’s residence is typically its registered office, supporting Intermarket’s claim of non-residence in Delhi absent a local office.

Pfizer Products, Inc. vs. Rajesh Chopra and Ors., CS (OS) No. 311/2005 (Delhi High Court, decided February 8, 2006): LG’s counsel noted this recent Delhi High Court ruling which diverged from Dhodha House by suggesting that a trademark application in Delhi could confer jurisdiction. Though LG conceded this point, the citation highlighted evolving judicial thought, though not decisive here.

Detailed Reasoning and Analysis of Judge:

The court affirmed that Section 20 CPC governs territorial jurisdiction in trademark suits, absent overriding statutory provisions. Under Section 20(a), the agreed with Intermarket that it neither resided nor carried on business in Delhi, as it lacked a local office or agent, aligning with Morgan Stanley and Dhodha House. The explanation to Section 20 deems a corporation’s business location as its principal or subordinate office, neither of which Intermarket had in Delhi.

Turning to Section 20(c), the court focused on whether part of the cause of action arose in Delhi due to the sale of infringing goods. The court upheld LG’s averment in the plaint, supported by invoices, as sufficient at the preliminary stage, noting that jurisdiction hinges on pleadings, not their truth, per established law. The sale, he reasoned, was not incidental but central to the passing-off claim, giving LG a legal right to sue in Delhi. This nexus distinguished the case from mere peripheral activity, grounding jurisdiction firmly in the city.Addressing Intermarket’s reliance on Kusum Ingots, the court distinguished writ jurisdiction’s discretionary nature under Article 226 from a suit’s mandatory adjudication under CPC. In suits, he held, jurisdiction is not discretionary once a cause of action is established—there’s no room for forum conveniens to override a plaintiff’s choice of a competent court. The court dismissed the discretionary refusal argument as inapplicable, reinforcing that sales in Delhi sufficed. The court also acknowledged the Pfizer ruling but sidestepped it, given LG’s concession on registry-based jurisdiction, focusing solely on the sales ground. 

Final Decision:The Delhi High Court rejected Intermarket’s application under Order 7, Rule 11 CPC, affirming its territorial jurisdiction to hear the suit. 

Law Settled in This Case:The judgment clarified that: (1) Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action, conferring jurisdiction in trademark passing-off suits, irrespective of the defendant’s residence or business presence; (2) Unlike writ jurisdiction, courts in civil suits cannot discretionarily refuse jurisdiction based on forum conveniens when a cause of action is established; (3) Post-Dhodha House, trademark registry location or Section 134(2) does not automatically grant jurisdiction unless the plaintiff resides or works there.

Case Title: LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Date of Order: February 13, 2006

Case No.:CS (OS) 1359 of 2004

Name of Court: Delhi High Court

Name of Judge: Hon'ble Justice Shri A.K. Sikri

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

Matrix Laboratories Limited Vs. F. Hoffmann-La Roche Ltd:DB

Patent Revocation filing alone won’t anchor High Court jurisdiction—unless linked to infringement.

Introduction:

In the intricate realm of intellectual property law, jurisdictional disputes often serve as the gatekeepers to substantive justice. The case of Matrix Laboratories Limited versus F. Hoffmann-La Roche Ltd., decided by the Madras High Court on December 1, 2011, exemplifies this tension. At its core, this legal battle revolves around the question of whether the Madras High Court possessed the territorial jurisdiction to entertain a patent infringement suit concerning Indian Patent No. 196774 for Erlotinib Hydrochloride? What began as a quia timet action—a preemptive strike against a perceived threat—escalated into a rigorous examination of cause of action, statutory interpretation, and judicial discretion. This case study explores the factual and procedural underpinnings, the legal issues at play, the arguments advanced by both parties, the judicial precedents invoked, and the court’s ultimate reasoning, offering a deep dive into a pivotal moment in Indian patent jurisprudence.

Detailed Factual Background:

The respondents, F. Hoffmann-La Roche Ltd. (a Swiss multinational pharmaceutical company) and OSI Pharmaceuticals, Inc. (a U.S.-based entity), jointly held rights to Indian Patent No. 196774 for Erlotinib Hydrochloride, a compound marketed as TARCEVA for treating lung and pancreatic cancer. The patent’s journey began with an application filed by Pfizer Products, Inc. on March 13, 1996 (No. 537/DEL/1996), which was assigned to OSI Pharmaceuticals and Pfizer Products, with Roche as the exclusive licensee. The patent was granted on July 6, 2007, effective from February 23, 2007, after surviving a pre-grant opposition by Natco Pharma Limited, which was dismissed on July 4, 2007. No post-grant opposition under Section 25(2) of the Patents Act, 1970, had been filed, solidifying the respondents’ statutory rights.

The appellant, Matrix Laboratories Limited, a Secunderabad-based Indian pharmaceutical company, entered the fray by filing a revocation petition on April 30, 2010, before the Intellectual Property Appellate Board (IPAB) in Chennai. In this petition, Matrix expressed its intent to commercially produce and market a generic version of Erlotinib Hydrochloride, specifically a novel polymorphic form, asserting that it would not infringe the suit patent but anticipating infringement actions from the respondents. The respondents, alarmed by this declaration and alleging potential clinical trials in Chennai (via Lotus Labs Pvt. Ltd.), filed a suit in the Madras High Court to restrain Matrix from infringing their patent, claiming a substantial part of the cause of action arose in Chennai.

Detailed Procedural Background:

The respondents initiated C.S. No. 801 of 2010 in the Madras High Court, seeking a permanent injunction against Matrix. Given Matrix’s residence outside the court’s jurisdiction, they filed Application No. 5166 of 2010 under Clause 12 of the Letters Patent, securing leave to sue on September 16, 2010. The following day, an ex parte interim injunction was granted. Matrix responded by filing Application No. 5529 of 2010 to revoke this leave, arguing that no cause of action arose in Chennai. The learned Single Judge, on August 19, 2011, dismissed Matrix’s application, holding that the revocation petition filed before the IPAB in Chennai constituted a part of the cause of action, and upheld the interim injunction.Aggrieved, Matrix appealed to a Division Bench of the Madras High Court (O.S.A. No. 365 of 2011), challenging the Single Judge’s refusal to revoke the leave. The appeal, heard by Justices R. Banumathi and R. Mala, was decided on December 1, 2011, after extensive arguments on jurisdiction, cause of action, and the implications of the revocation petition.

Issues Involved in the Case:

The case hinged on two primary issues: whether the Madras High Court had territorial jurisdiction to entertain the patent infringement suit under Section 104 of the Patents Act, 1970, and Clause 12 of the Letters Patent; and whether the Single Judge erred in refusing to revoke the leave granted to the respondents, based on the contention that Matrix’s revocation petition before the IPAB in Chennai and alleged clinical trials provided a sufficient cause of action?

Detailed Submission of Parties:

The appellant, Matrix Laboratories argued that the Madras High Court lacked jurisdiction. They contended that filing a revocation petition before the IPAB in Chennai—a statutory requirement under Section 64 of the Patents Act—did not constitute a cause of action for an infringement suit, as it was a mere procedural step, not an infringing act. The statements in the petition about intending to manufacture a generic version were necessary to establish Matrix’s status as a “person interested” under Section 64, not a declaration of imminent infringement. They further asserted that research activities, such as clinical trials, were exempt from infringement under Section 107A(a) of the Patents Act, and denied ongoing trials in Chennai, citing a statement from Lotus Labs’ Managing Director. Matrix argued that the patent was granted in Delhi, its operations were in Hyderabad, and the respondents’ choice of Chennai reflected forum shopping, causing undue inconvenience.

The respondents  countered that the Madras High Court had jurisdiction due to a substantial cause of action arising in Chennai. They highlighted Matrix’s explicit intent in the revocation petition to commercially exploit Erlotinib Hydrochloride, interpreting it as a threat of infringement actionable under a quia timet suit. They pointed to past clinical trials conducted by Matrix at Lotus Labs Pvt. Ltd. in Chennai (circa 2005-2006), as evidenced by a World Health Organization (WHO) report, suggesting a likelihood of future infringement-related activities in Chennai. The respondents emphasized their exclusive rights under Section 48 of the Patents Act and argued that the revocation petition’s filing in Chennai, coupled with the nationwide threat of infringement (including Chennai), justified the court’s jurisdiction.

Detailed Discussion on Judgments Cited by Parties and Their Context:

Frearson v. Loe (1876) F. 134 (Chancery Division) was cited by the respondents to support their quia timet action, asserting that a patentee can seek an injunction against a threatened infringement even without actual violation. The court in Frearson held that a deliberate intent to infringe, if proven, justifies preemptive relief, a principle the respondents applied to Matrix’s revocation petition statements.

Rohtas Industries Ltd. v. Indian Hume Pipe Co. Ltd. (AIR 1954 Patna 492), also invoked by the respondents, involved a past infringement implying a continuing threat, warranting an injunction absent clear evidence of cessation. The respondents likened this to Matrix’s intent, though the court distinguished it due to no prior infringement here.

Mars Incorporated v. Kumar Krishna Mukerjee (2003 (26) PTC 60 Del) reinforced the respondents’ quia timet argument, defining it as a preventive action against apprehended substantial damage. The court acknowledged this but questioned its applicability absent concrete infringing acts.

State of Rajasthan v. M/s Swaika Properties ((1985) 3 SCC 217), cited by the appellant, clarified that cause of action comprises facts necessary for relief, and mere procedural events (like notice service) do not suffice unless integral. The court applied this to rule that filing the revocation petition was not a substantive cause.

South-East Asia Shipping Co. Ltd. v. Nav Bharat Enterprises Pvt. Ltd. ((1996) 3 SCC 443), also from the appellant, emphasized that cause of action requires an act by the defendant, not just procedural steps, supporting Matrix’s stance that the petition alone was insufficient.

Rajasthan High Court Advocates’ Association v. Union of India ((2001) 2 SCC 294) defined cause of action as the infraction of a right, guiding the court to assess where the alleged threat materialized, not just where it was filed.

Union of India v. Adnani Exports Ltd. ((2002) 1 SCC 567), cited by the appellant, held that incidental events (like a company’s registered office) do not confer jurisdiction unless tied to the dispute’s core, reinforcing Matrix’s argument against Chennai’s relevance.

Kusum Ingots & Alloys Ltd. v. Union of India ((2004) 6 SCC 254) allowed courts to decline jurisdiction under forum conveniens if the cause of action’s nexus is weak, which the court used to justify overturning the Single Judge’s ruling.

Detailed Reasoning and Analysis of Judge:

The court meticulously dissected the jurisdictional question. They began by affirming the Madras High Court’s original jurisdiction under Section 104 of the Patents Act and Clause 12 of the Letters Patent, which allows suits where the cause of action arises wholly or partly within its limits, provided leave is granted if the defendant resides outside. Since Matrix was based in Secunderabad, jurisdiction depended on a Chennai-based cause of action.

The court scrutinized the revocation petition’s filing before the IPAB in Chennai, a statutory necessity given IPAB’s registry location. They reasoned that this was a “transitory” act, not a substantive cause of action, as hearings could occur elsewhere (e.g., Delhi, where the patent was granted). Drawing from State of Rajasthan and South-East Asia Shipping, they held that cause of action requires a defendant’s act directly tied to the relief sought—here, infringement—not a procedural filing. Matrix’s statements about commercial intent were deemed statutory requirements to establish locus, not a concrete threat, distinguishing this from Frearson and Rohtas Industries, where actual or imminent infringement existed.

On the clinical trials, the court examined the WHO report, noting that Matrix’s 2005-2006 tests at Lotus Labs Chennai involved a different drug (Efavirenz), with no evidence of ongoing or future Erlotinib-related activity there. Recent inspections occurred in Bangalore, undermining the respondents’ apprehension. Citing Union of India v. Adnani Exports, the court found no nexus between these past tests and the current suit prayer, rejecting the quia timet basis as speculative.

The judges criticized the Single Judge’s view that the revocation petition inherently triggered jurisdiction, warning that accepting this would flood the Madras High Court with suits tied to every IPAB filing, an impractical outcome. Applying Kusum Ingots, they invoked forum conveniens, noting the patent’s Delhi origin and Matrix’s Hyderabad base, suggesting more appropriate forums existed. Thus, no substantial cause of action arose in Chennai, warranting revocation of the leave.

Final Decision:

The Division Bench allowed Matrix’s appeal, setting aside the Single Judge’s order dated August 19, 2011, in Application No. 5529 of 2010. The leave granted in Application No. 5166 of 2010 was revoked, dismissing the suit’s maintainability in the Madras High Court, though the respondents were free to pursue it in an appropriate court. No costs were awarded, and connected miscellaneous petitions were closed.

Law Settled in This Case:

This case clarified that Filing a revocation petition before the IPAB does not ipso facto confer jurisdiction on the High Court where the IPAB registry sits, unless it constitutes a substantive cause of action tied to infringement. Cause of action in patent suits requires a direct act or threat of infringement, not mere procedural steps or speculative apprehensions. Courts may decline jurisdiction under forum conveniens if the nexus to the forum is weak, reinforcing a fact-specific approach to territorial jurisdiction under the Patents Act and Letters Patent.

Case Title: Matrix Laboratories Limited Vs. F. Hoffmann-La Roche Ltd.

Date of Order: December 1, 2011

Case No.: O.S.A. No. 365 of 2011

Neutral Citation: 2011 SCC OnLine Mad 2290

Name of Court: High Court of Judicature at Madras

Name of Judges: Hon’ble Mrs. Justice R. Banumathi and Hon’ble Ms. Justice R. Mala

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

Mankind Pharma Limited Vs Novakind Bio Sciences Private Limited

Section 29(5) is an additional, not exclusive, ground for infringement, and its non-applicability did not oust Sections 29(1) to (4).

Introduction:

In the fiercely competitive landscape of pharmaceuticals, where brand identity can be a lifeline for both companies and consumers, the clash between Mankind Pharma Limited and Novakind Bio Sciences Private Limited emerges as a riveting tale of trademark law, deceptive similarity, and judicial interpretation. Decided on August 7, 2023, by the High Court of Delhi, this case pits a pharmaceutical giant against a smaller player, unraveling the complexities of protecting a “family of marks” and the boundaries of corporate naming rights under India’s Trade Marks Act, 1999. With the plaintiff wielding its well-established “KIND” suffix against the defendant’s “NOVAKIND” branding, the court’s ruling offers a profound exploration of infringement, public safety, and the delicate balance between statutory compliance and intellectual property rights. This case study delves into the intricacies of the dispute, tracing its factual roots, procedural twists, legal arguments, and the judiciary’s nuanced reasoning, culminating in a decision that reinforces the sanctity of trademarks in the medicinal domain.

Detailed Factual Background:

Mankind Pharma Limited, the plaintiff, stands as India’s fifth-largest pharmaceutical company, a titan in the industry with a legacy dating back to 1986 when its founder, Ramesh Chand Juneja, adopted the trademark “MANKIND” as its trading style. Renowned for its extensive portfolio, the company boasts 268 brands ranked among the top five in their respective pharmaceutical categories, with 85 at the pinnacle and 67 in second place. Mankind has meticulously cultivated a “KIND family of marks,” incorporating “KIND” as a suffix in various product names, a branding strategy that has become a hallmark of its identity. The company holds registrations for the “MANKIND” mark across all classes and operates a plethora of websites, including mankindpharma.com, mankindmanforce.com, and vetmankind.com, underscoring its pervasive market presence.

The defendant, Novakind Bio Sciences Private Limited, entered the pharmaceutical fray with a corporate name and product branding that sparked Mankind’s ire. Novakind manufactures and sells medicinal preparations, notably Deflazacort tablets under the brand “DEFZAKIND,” prominently featuring “NOVAKIND BIO SCIENCES PRIVATE LIMITED” on its packaging with a registered trademark symbol (®). Mankind perceived this as an encroachment on its “KIND” family, arguing that “NOVAKIND” phonetically and structurally mimicked “MANKIND,” potentially confusing consumers and diluting its goodwill. On August 25, 2020, Mankind issued a cease-and-desist notice, demanding that Novakind abandon its use of “NOVAKIND” and “DEFZAKIND,” claiming infringement of its registered trademark. Novakind’s refusal to comply precipitated this legal showdown.

The crux of the dispute lies in the similarity between “MANKIND” and “NOVAKIND,” compounded by the shared “KIND” suffix, and Novakind’s bold display of its corporate name on product strips, which Mankind argued functioned as a trademark rather than a mere identifier. The stakes were high, given the pharmaceutical context where confusion could endanger public health, a factor that loomed large in the court’s considerations.

Detailed Procedural Background:

The legal saga began with Mankind Pharma filing CS(COMM) 188/2021 before the High Court of Delhi, seeking a permanent injunction to restrain Novakind from using “KIND” as part of its trade name or trademark for any pharmaceutical products. Concurrently, Mankind moved I.A. 5700/2021 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC), 1908, requesting an interim injunction. On April 20, 2021, the court granted an ex parte ad interim injunction, barring Novakind from manufacturing, marketing, or selling any pharmaceutical product bearing the “KIND” suffix or otherwise infringing Mankind’s registered trademark. This order remained in effect, casting a shadow over Novakind’s operations.Unwilling to acquiesce, Novakind countered with I.A. 3248/2023 under Order XXXIX Rule 4 CPC, seeking to vacate the interim injunction. Both parties completed their pleadings, submitting detailed arguments and evidence, including product packaging and statutory references. 

Issues Involved in the Case:

The case presented a tapestry of legal and factual questions demanding resolution. Foremost was whether Novakind’s use of “NOVAKIND BIO SCIENCES PRIVATE LIMITED” and “DEFZAKIND” infringed Mankind’s registered “MANKIND” trademark under the Trade Marks Act, 1999, particularly given the shared “KIND” suffix? A pivotal issue was whether “NOVAKIND” functioned as a trademark or merely a corporate name, impacting the applicability of infringement provisions under Sections 29(2)(b) versus 29(5)? The court had to reconcile conflicting judicial precedents on the scope of Section 29(5) versus Sections 29(1) to (4), determining the legal framework for assessing infringement by corporate name usage.

Detailed Submission of Parties:

Mankind Pharma anchored its case on trademark infringement and public interest. Sibal argued that “MANKIND” and its “KIND” family of marks were deeply entrenched in the market, with registrations across all classes and a reputation synonymous with quality pharmaceuticals. He contended that “NOVAKIND” was deceptively similar to “MANKIND,” phonetically and structurally, risking consumer confusion, particularly given the “KIND” suffix’s prominence in Mankind’s branding. Pointing to the “DEFZAKIND” strip, plaintiff highlighted Novakind’s use of “NOVAKIND BIO SCIENCES PRIVATE LIMITED” in bold letters with a registered trademark symbol, asserting it functioned as a source identifier, not just a corporate name, thus falling under Section 29(2)(b). Plaintiff cited Novakind’s own admissions in its application—acknowledging recognition by doctors and intent to build reputation under “NOVAKIND”—to rebut claims of mere corporate use. Sibal challenged the Bombay High Court’s Cipla ruling, relying on Delhi High Court precedents like Bloomberg and Novartis to argue that Sections 29(1) to (4) remained applicable even if Section 29(5) did not fit. Emphasizing the pharmaceutical context, he invoked Supreme Court dicta from Cadila Health Care, stressing the heightened risk of confusion in medicinal products and the need for strict protection.

Novakind, through mounted a multi-pronged defense. Mahapatra argued that Mankind lacked standalone registration for “KIND,” precluding exclusivity over the suffix, and that “NOVAKIND” was a corporate name, not a trademark, used in compliance with the Drugs and Cosmetics Act’s labeling mandates. He leaned heavily on Section 29(5), asserting it exclusively governed infringement by corporate name usage, and since “MANKIND” and “NOVAKIND” were not identical, no violation occurred. Citing the Bombay High Court’s Cipla Full Bench decision, he contended that Sections 29(1) to (4) were inapplicable. Mahapatra further posited that pharmaceutical products, prescribed by trained professionals, minimized confusion risks, and that drugs were sold by brand names like “DEFZAKIND,” not manufacturer names, diluting any association with Mankind. He dismissed public health concerns, arguing that doctors and pharmacists’ expertise negated deception, and urged the court to vacate the injunction based on statutory necessity and lack of trademark use.

Detailed Discussion on Judgments Cited by Parties and Their Context:

The parties wielded an arsenal of judicial precedents, each illuminating distinct facets of trademark law. Mankind relied on Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), where the Supreme Court deemed “AMRITDHARA” and “LAKSHMANDHARA” confusingly similar for medicinal products, emphasizing phonetic and structural likeness from a consumer’s perspective. This bolstered Mankind’s claim of deceptive similarity between “MANKIND” and “NOVAKIND.” Mankind Pharma Ltd v. Cadila Pharmaceuticals Ltd ((2015) 61 PTC 465) from the Delhi High Court reinforced this, enjoining “METROKIND” due to the “KIND” suffix’s dominance in Mankind’s marks, affirming its source-identifying role. Bloomberg Finance LP v. Prafull Saklecha ((2014) 207 DLT 35) and Novartis AG v. Novaegis (India) Private Limited (MANU/DE/1012/2023), both Delhi High Court rulings, countered the Cipla view, holding that Section 29(5) did not preclude Sections 29(1) to (4), allowing broader infringement analysis when a mark doubles as a corporate name. Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd ((2001) 5 SCC 73) underscored the Supreme Court’s stance on heightened scrutiny for medicinal trademarks, rejecting the notion that professional dispensing eliminated confusion risks.

Novakind invoked Cipla Ltd v. Cipla Industries Pvt Ltd (AIR 2017 Bom 75), a Bombay High Court Full Bench decision, asserting that Section 29(5) alone applied to corporate name usage, requiring identity of marks, not mere similarity, thus favoring Novakind’s non-identical “NOVAKIND.” Dhiren Krishna Paul v. Health and Glow Retailing Pvt Ltd (2013 (53) PTC 355 (Mad)) and Chronicle Publications (P) Ltd v. Chronicle Academy Pvt Ltd (2010 (44) PTC 78 (Del)) echoed this, limiting infringement claims absent identical corporate name use in the same trade. These cases aimed to narrow the legal lens to Section 29(5), shielding Novakind from broader infringement claims.

Detailed Reasoning and Analysis of Judge:

The court's reasoning wove a meticulous tapestry of statutory interpretation, factual analysis, and public policy. The began by affirming Mankind’s robust trademark rights in “MANKIND,” registered across all classes, and its “KIND” family’s market recognition. Comparing “MANKIND” and “NOVAKIND,” he found them phonetically and structurally similar, with the shared “KIND” suffix heightening confusion risks, especially in pharmaceuticals where “KIND” was not generic. Drawing from Amritdhara and Cadila Pharmaceuticals (from Mankind v. Cadila), he held that such similarity satisfied Section 29(2)(b)’s test of deceptive similarity and likelihood of association for identical goods.

Addressing Novakind’s Section 29(5) defense, the judge grappled with the Cipla precedent but sided with Delhi High Court’s Bloomberg and Novartis rulings. The Court reasoned that Section 29(5) was an additional, not exclusive, ground for infringement, and its non-applicability did not oust Sections 29(1) to (4). Examining the “DEFZAKIND” strip, he noted “NOVAKIND BIO SCIENCES PRIVATE LIMITED”’s prominent display with a registered trademark symbol, concluding it functioned as a trademark under Section 2(zb), not merely a corporate name. This factual distinction from Cipla—where the mark was solely a corporate identifier—rendered Section 29(2)(b) applicable, as Novakind used “NOVAKIND” in trade to indicate source.

The Court dismissed Novakind’s ancillary arguments. The Drugs and Cosmetics Act’s naming requirement, he held, did not license infringing names; Novakind could adopt a non-conflicting identity. The contention that professional dispensing negated confusion was rebutted by Cadila Health Care’s insistence on a higher standard for medicinal marks, given human fallibility and prescription errors. He emphasized the consumer’s perspective—a person of average intelligence and imperfect recollection—over professional expertise, noting the real-world reliance on manufacturer names in India’s diverse healthcare landscape. Citing extensive U.S. and Indian precedents, he underscored the dire public health implications of medicinal confusion, refusing to speculate on its improbability.

Final Decision:

The court made the ad interim injunction of April 20, 2021, absolute, restraining Novakind from using “KIND” in its trade name or trademarks pending the suit’s disposal. 

Law Settled in This Case:

The judgment clarified that Section 29(5) does not monopolize infringement analysis for corporate name usage; Sections 29(1) to (4) remain viable if the mark serves as a trademark. It affirmed that phonetic and structural similarity, especially in pharmaceuticals, suffices for infringement under Section 29(2)(b) when goods are identical and confusion or association is likely. The ruling entrenched a heightened duty of care for medicinal trademarks, prioritizing public safety over professional safeguards, and held that statutory naming obligations do not excuse infringement.

Case Title: Mankind Pharma Limited Vs Novakind Bio Sciences Private Limited

Date of Order: August 7, 2023

Case No.: CS(COMM) 188/2021

Neutral Citation: 2023:DHC:5653

Name of Court: High Court of Delhi 

Name of Judge: Hon'ble Justice Shri C. Hari Shankar

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

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

Nuvoco Vistas Corporation Limited Vs. JK Lakshmi Cement Limited

Registration under Section 28 grants exclusive rights, irrespective of packaging differences, if essential features are copied

Introduction:

In the bustling world of India's cement industry, where brand identity can make or break a company, a fierce legal battle unfolded between Nuvoco Vistas Corporation Limited and JK Lakshmi Cement Limited. This case, decided by the High Court of Delhi on April 15, 2019, revolves around the contentious issue of trademark infringement, pitting the plaintiff’s registered mark "CONCRETO" against the defendants’ allegedly similar mark "CONCRETA." What began as a dispute over phonetic and visual similarity escalated into a complex examination of ownership, bad faith, and statutory rights under India’s trademark law. This case study delves into the intricate details of the factual and procedural background, the legal issues at stake, the arguments presented by both parties, the judicial reasoning, and the final outcome, offering a comprehensive look at a landmark trademark dispute.

Detailed Factual Background

Nuvoco Vistas Corporation Limited, the plaintiff, is a prominent player in India’s cement industry, tracing its lineage to Lafarge India Limited, a subsidiary of the French company Lafarge SA. The plaintiff claimed ownership of the trademark "CONCRETO," registered since November 30, 2005, under Registration No. 1402591 in Class 19 for cement and building materials. Additionally, Nuvoco held registrations for various labels featuring "CONCRETO" as the dominant element, including a distinctive slanting roof design, with usage dating back to 2002. The company asserted that it had invested heavily in promoting "CONCRETO," achieving significant sales and establishing it as a well-known mark, bolstered by prior legal victories against infringers.

The defendants, JK Lakshmi Cement Limited, another major cement manufacturer, introduced a product under the mark "CONCRETA," accompanied by a label design that Nuvoco alleged mimicked its own. The plaintiff argued that "CONCRETA" was deceptively similar to "CONCRETO," both visually and phonetically, and that the defendants’ adoption of this mark for identical goods—cement—constituted infringement, passing off, and unfair competition. The defendants, however, countered that "CONCRETO" was a descriptive term derived from "concrete," a generic word interchangeable with "cement," and thus incapable of exclusive appropriation. 

They further challenged Nuvoco’s ownership of certain marks due to a divestment process mandated by the Competition Commission of India (CCI). The backdrop to this dispute includes a significant corporate restructuring. In 2015-2016, following the global merger of Lafarge SA and Holcim, the CCI ordered the divestment of Lafarge’s Indian business to prevent monopolistic practices. This led to the creation of Nuvoco Vistas Corp. Ltd. through a Share Purchase and Transitional Agreement dated October 4, 2016, between LafargeHolcim and Nirchem Ltd. The agreement allowed Nuvoco to use certain "Corporate Marks" (including those with "Lafarge") during an 18-month phase-out period ending March 25, 2018, but explicitly recognized Nuvoco’s ownership of standalone marks like "CONCRETO."

Detailed Procedural Background:

The legal proceedings commenced with Nuvoco filing a suit (CS(COMM) 256/2017) in the High Court of Delhi, seeking a permanent injunction, damages, and other reliefs against JK Lakshmi for trademark infringement and passing off. On April 11, 2017, the court granted an ex parte ad interim injunction restraining the defendants from using "CONCRETA." Subsequently, Nuvoco filed I.A. No. 4261/2017 under Order 39 Rules 1 & 2 of the Code of Civil Procedure (CPC) to confirm this interim relief, while JK Lakshmi filed I.A. No. 5564/2017 under Order 39 Rule 4 CPC to vacate the injunction, arguing misrepresentation by the plaintiff.

The case was reserved for judgment on March 25, 2019, after extensive hearings involving arguments, rejoinders, and sur-rejoinders. Both parties submitted detailed pleadings, affidavits, and documentary evidence, including trademark registration certificates, CCI orders, and the Transitional Agreement. 

Issues Involved in the Case:

Whether Nuvoco had valid ownership and exclusive rights over the "CONCRETO" trademark, particularly in light of the CCI divestment orders and the Transitional Agreement? Whether the defendants’ mark "CONCRETA" was deceptively similar to "CONCRETO," constituting infringement under Section 29 of the Trade Marks Act, 1999? Whether "CONCRETO" was a descriptive term incapable of trademark protection, and if the defendants’ use of "CONCRETA" was in bad faith?

Plaintiff’s Submissions:

Nuvoco argued that it was the registered proprietor of "CONCRETO" since 2005 and had used it since 2002, establishing it as a well-known mark through extensive promotion and sales. The plaintiff highlighted seven registrations listed in paragraph 8 of the plaint, emphasizing "CONCRETO" as the essential feature. It contended that "CONCRETA" was visually and phonetically similar to "CONCRETO," with the defendants’ label mimicking its slanting roof design, suggesting bad faith given their shared industry. Nuvoco cited Laxmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1] to argue that even innocent infringement is actionable, though it asserted the defendants’ actions were deliberate. Regarding ownership, Nuvoco clarified through an affidavit dated November 30, 2018, that the CCI orders and Transitional Agreement preserved its rights over "CONCRETO," distinct from "Lafarge" marks, and accused the defendants of shifting to "PLATINUM" post-injunction, indicating guilt.

Defendants’ Submissions:

JK Lakshmi, argued that "CONCRETO" was descriptive, derived from "concrete," a generic term for cement in multiple languages, and thus lacked distinctiveness, citing J.R. Kapoor vs. Micronix India [1994 Supp (3) SCC 215]. They challenged Nuvoco’s ownership of five marks containing "Lafarge," excluded from the divestment business per the CCI order of February 2, 2016, asserting that Nuvoco lacked locus standi as a mere permitted user, not a proprietor. The defendants accused Nuvoco of suppressing the Transitional Agreement and CCI orders, violating the duty of utmost good faith (Morgan Stanley Mutual Fund vs. Kartick Das [1994] 4 SCC 225]), and sought vacation of the injunction. They further argued that "CONCRETA" and "CONCRETO" targeted different cement types and markets (East India vs. Rajasthan), minimizing confusion.

Detailed Discussion on Judgments Cited by Parties and Their Context:

Laxmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1]: Cited by the plaintiff to argue that even innocent infringement is actionable, though bad faith was evident here. The court used this to infer the defendants’ knowledge of "CONCRETO" given their industry overlap, rejecting any defense of innocence. J.R. Kapoor vs. Micronix India [1994 Supp (3) SCC 215]: The defendants relied on this Supreme Court ruling to assert that descriptive prefixes like "concrete" cannot be monopolized. The court, however, distinguished this by noting the defendants’ own registration application for "CONCRETA," undermining their argument. Morgan Stanley Mutual Fund vs. Kartick Das [1994] 4 SCC 225]: Cited by the defendants to emphasize the plaintiff’s duty of utmost good faith in seeking ex parte relief. The court rejected this, finding no material suppression given the confidential divestment process and sufficient disclosure in the plaint. Amritdhara Pharmacy vs. Satyadeo Gupta [1963 SCR 484]: Referenced by the court to assess phonetic and visual similarity, emphasizing overall impression over minute differences, supporting the finding of deception between "CONCRETO" and "CONCRETA." K.R. Chinna Krishna Chettiar vs. Shri Ambal and Co. [1969] 2 SCC 131]: Used by the court to affirm that resemblance in sound and sight suffices for infringement, reinforcing the phonetic similarity argument.Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories [AIR 1965 SC 980]: The court relied on this to distinguish infringement (statutory right) from passing off (common law), holding that essential feature adoption trumps packaging differences. Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel [AIR 2006 SC 3304]: Cited to counter the defendants’ claim that corporate name use diluted "CONCRETO," affirming its prominence in branding.Pankaj Goel vs. Dabur India Ltd. [2008 (38) PTC 49 (Del) DB]: Used to dismiss the defendants’ argument of third-party use, holding that inaction against minor infringers does not waive rights.P&G Manufacturing vs. Anchor Health & Beauty Care [FAO(OS) 241/2014]: Applied to reject the defendants’ descriptive claim, as their registration application for "CONCRETA" contradicted their stance.

Detailed Reasoning and Analysis of Judge:

The court first tackled ownership, finding no falsehood or suppression by Nuvoco. The court noted that all seven marks in paragraph 8 of the plaint were registered to Lafarge India (Nuvoco’s predecessor) at filing, and the Transitional Agreement permitted "Lafarge" use during the phase-out period, ending March 25, 2018. Crucially, "CONCRETO" was not a Corporate Mark, and Nuvoco retained exclusive rights post-phase-out, supported by unchallenged registration certificates.

On infringement, the court found "CONCRETA" visually and phonetically similar to "CONCRETO," differing only by one letter ("O" to "A"), satisfying Section 29 of the Trade Marks Act, 1999. Citing Amritdhara and Kaviraj Pandit, it emphasized overall impression over technical differences, dismissing the defendants’ "hammer and hand" logo as irrelevant to the essential feature’s similarity. The goods (cement) being identical further bolstered this conclusion.

The judge inferred bad faith from the defendants’ industry knowledge and lack of justification for adopting "CONCRETA," aligning with Laxmikant V. Patel. He rejected equity-based defenses (Morgan Stanley), noting infringers cannot claim good faith. The court also dismissed arguments about different trade channels or third-party use, citing Pankaj Goel and the broad scope of "cement" registration under Section 28. Finally, the defendants’ own application for "CONCRETA" registration (P&G Manufacturing) estopped their descriptive claim, showcasing their inconsistent stance.

Final Decision:

The court dismissed JK Lakshmi’s I.A. 5564/2017, refusing to vacate the April 11, 2017 injunction, and confirmed it via I.A. 4261/2017 until the suit’s final disposal. These findings were prima facie, preserving the parties’ rights at trial.

Law Settled in This Case:

Registration under Section 28 grants exclusive rights, irrespective of packaging differences, if essential features are copied.Phonetic and visual similarity suffices for infringement, judged by overall impression.Bad faith can be inferred from industry knowledge and lack of justification.Third-party use or inaction against minor infringers does not waive rights.A party cannot claim a mark is descriptive while seeking its registration.

Case Title: Nuvoco Vistas Corporation Limited Vs. JK Lakshmi Cement Limited

Date of Order: April 15, 2019

Case No.: CS(COMM) 256/2017

Neutral Citation: AIRONLINE 2019 DEL 630

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Manmohan

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

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.