Peak XV Partners Advisors India LLP

In a recent decision dated 26th March 2025, the Hon’ble Mr. Justice Amit Bansal of the Delhi High Court delivered a comprehensive judgment in CS (COMM) 71/2024, wherein the plaintiffs, Peak XV Partners Advisors India LLP and Peak XV Partners Operations LLC, successfully secured a decree of permanent injunction against unidentified fraudsters operating under the pseudonym “John Doe.” The defendants were found to be misappropriating the plaintiffs’ trademark and brand identity for fraudulent financial activities. This case reaffirms the principles of trademark protection in the digital domain and the readiness of courts to act decisively against identity theft and cyber impersonation under the law of passing off.

The plaintiffs, Peak XV Partners Advisors India LLP and its Mauritius-based affiliate, Peak XV Partners Operations LLC, are successors to Sequoia Capital India LLP and Sequoia Capital India Operations II LLC respectively. Having rebranded themselves as “PEAK XV PARTNERS” in June 2023, the plaintiffs are among the most prominent venture capital and investment advisory firms operating in India and Southeast Asia. The firm provides capital and advisory services to startups across diverse sectors including AI, fintech, climate-tech, and health-tech. The plaintiffs have played a vital role in India’s startup ecosystem, advising funds that have invested in over 400 startups and facilitating over 19 IPOs and M&A transactions.

In June 2023, the plaintiffs publicly adopted the brand “PEAK XV PARTNERS” following a global restructuring of Sequoia Capital. The new brand, inspired by the early surveyor name for Mount Everest, symbolizes the company's pursuit of excellence and high aspirations. Since the rebranding, the plaintiffs have made extensive efforts to promote the brand across websites, social media platforms, and media coverage. Trademark registration applications were filed, and domain names were secured including the primary domain www.peakxv.com. The plaintiffs also maintain a strong digital presence through platforms like Twitter (X) and Instagram.

In December 2023, the plaintiffs became aware of a fraudulent scheme perpetrated by unknown parties through the domain https://pakxv.ioyppp.com/ and a mobile application named “PAK XV.” The perpetrators operated under the pretext of being affiliated with “PEAK XV PARTNERS” and used deceptively similar trade dress, trademarks, and visual elements to mislead users. These elements included the reproduction of branding, content, colour schemes, and promotional materials originally developed by the plaintiffs. They offered fictitious investment schemes under headings like “Pakxv-VCS: 102” and “VIPs,” which included unrealistic promises of financial returns.

The impersonators also created groups on messaging platforms like WhatsApp and Telegram named “Peak XV 1026” and “Peak XV Group,” impersonating senior personnel of the plaintiffs including Mr. Shailendra Singh and Mr. Rajan Anandan. Using these channels, the fraudsters solicited money from the public and created an illusion of legitimacy and association with the plaintiffs. The impersonation extended to the use of a mobile number (+91 8271422399), prompting the plaintiffs to involve telecom companies and request suspension of services.

Legal notices were issued to various digital intermediaries, including Meta (WhatsApp), Telegram, and Google. These platforms responded to takedown requests and removed the offending content. A suit was then filed before the Delhi High Court seeking an ex parte injunction and ancillary reliefs against John Doe (defendant no.1) and associated service providers and registrars.

On 24th January 2024, the Court granted an ex parte interim injunction in favour of the plaintiffs, restraining the defendants from using the trademarks “PEAK XV” or “PEAK XV PARTNERS,” whether through websites, apps, or messaging services. The Court also directed removal and blocking of all related URLs and accounts. Further, IndusInd Bank was ordered to freeze UPI IDs associated with the fraudulent transactions.

By 18th March 2025, several defendants including Google, Telegram, Meta Platforms, and the Ministry of Electronics and Information Technology, were found to have complied with the Court’s orders and were removed from the array of parties. However, the domain name registrar and telecom provider (Bharti Airtel) remained as defendants due to non-compliance or pending action. Defendants no.1 and 2, including the unknown impersonators and the domain name registrar, were proceeded against ex parte due to non-appearance despite service.

Justice Bansal analysed the material on record, including the detailed pleadings and evidence submitted by the plaintiffs. Noting the lack of written statements or affidavits in response from the defendants, the Court held that all averments in the plaint stood admitted under Order VIII Rule 10 of the Civil Procedure Code. The Court found that the plaintiffs held prior rights in the mark “PEAK XV PARTNERS” and had successfully demonstrated substantial goodwill and public recognition attached to the mark. The impugned use of a deceptively similar mark was held to be intended to deceive and mislead the public into believing an association with the plaintiffs.

The Court concluded that the actions of the defendant no.1 amounted to passing off, by creating a false impression of affiliation with the plaintiffs and capitalizing on their goodwill. The use of WhatsApp and Telegram groups, unauthorized reproduction of website content, and impersonation of the plaintiff’s directors were all considered aggravating factors indicating deliberate deception and mala fide intent.

In light of the above, the Court passed a decree of permanent injunction restraining the defendants from using the plaintiffs’ name or trademarks without authorisation. Additionally, Bharti Airtel was directed to suspend the mobile number used for fraudulent activities and disclose the Know Your Customer (KYC) details of the registrant. The plaintiffs did not press for other remaining reliefs.

This judgment is a significant addition to the jurisprudence surrounding trademark protection and digital enforcement against anonymous cyber fraud. It reinforces the principle that identity theft and impersonation in the digital space, especially when combined with false commercial representations, are actionable under the tort of passing off. It also underscores the proactive role that courts can play in extending interim and final injunctive reliefs to protect legitimate brand owners from online fraud.

Importantly, this case demonstrates the efficacy of the “John Doe” remedy in the Indian legal system, allowing trademark owners to secure urgent relief even when the identity of the infringer is initially unknown. It also illustrates the collaborative role that intermediaries—ranging from domain registrars to social media platforms—must play in curbing online infringement and financial fraud.

In conclusion, Peak XV Partners v. John Doe is a judicial affirmation of the enforceability of intellectual property rights in the digital age and provides a template for victims of cyber impersonation and brand fraud to seek effective legal recourse.

Neutral Citation: Peak XV Partners Advisors India LLP Vs John Doe & Ors., 

Court: High Court of Delhi

Coram: Hon’ble Mr. Justice Amit Bansal

Date of Judgment: 26th March 2025:CS(COMM) 71/202

Citation:2025:DHC:2918

Mankind Pharma Ltd. Vs. Preet Kamal Grewal

In a significant ruling rendered on 2nd April 2025, the Delhi High Court, through Hon’ble Mr. Justice Saurabh Banerjee, delivered judgment in C.O. (COMM.IPD-TM) 279/2022, titled Mankind Pharma Ltd. v. Preet Kamal Grewal and Anr., resolving a long-standing trademark dispute under the Trade Marks Act, 1999. The case concerns the petitioner Mankind Pharma Ltd.'s effort to protect the sanctity and exclusivity of its well-known “MANKIND” and “KIND” family of trademarks, specifically challenging the registration of the mark “KINDPAN” held by the first respondent, Preet Kamal Grewal.

Mankind Pharma Ltd., a leading pharmaceutical company, had filed the present petition under Section 57 of the Trade Marks Act, seeking the removal of the impugned mark “KINDPAN” (Trademark Application No. 2795896 in Class 5) registered in the name of respondent no. 1. The petitioner asserted long-standing, continuous, and exclusive use of its “MANKIND” mark since 1986, dating back to its predecessor-in-interest. The petitioner also substantiated its case with documentary evidence including numerous trademark registrations containing the suffix “KIND,” extensive turnover and prescription data, and prior legal proceedings undertaken to defend its rights.

Mankind Pharma's trademark “MANKIND” is registered across all 45 classes of the Trade Marks Act, 1999, and it holds more than 300 trademarks featuring the suffix “KIND.” These include brands such as “NUEKIND,” “CANDIKIND,” “ADDKIND,” and others. The mark “MANKIND” has been officially recognised as a “well-known trademark” as per Section 2(1)(zg) of the Act in Journal No. 1978 dated 14.12.2020. Relying on audited financial records, the petitioner submitted that its “KIND” brands alone had crossed Rs. 1300 Crores in turnover for the year 2018, and the total turnover of the company had risen to over Rs. 4794 Crores by the financial year 2019-20.

Respondent no. 1, a Ludhiana-based proprietorship concern under the name “Sanavita Medicare,” had applied for the trademark “KINDPAN” on a “proposed to be used” basis in 2014, well after the petitioner had secured registration of the mark “KIND” (Registration No. 2457970 dated 10.01.2013 in Class 5). The mark was allowed registration by the Trademark Registry despite the prior registration of an identical mark in the same class by Mankind Pharma. This prompted the petitioner to file the present rectification petition initially before the Intellectual Property Appellate Board (IPAB), which stood transferred to the Delhi High Court post the dissolution of the IPAB.

The first respondent did not appear in the matter and was proceeded ex-parte by the Court via its order dated 11.12.2023. Respondent no. 2, the Trademark Registry, although represented through counsel, failed to file a reply. Consequently, all unrebutted averments of the petitioner were deemed admitted.

The petitioner’s case was built around the doctrine of a “family of marks.” It was argued that the suffix “KIND” had acquired distinctiveness and secondary meaning owing to long-standing, uninterrupted, and widespread use in connection with its pharmaceutical products. Counsel for Mankind relied on several precedents including:

• Mankind Pharma Limited v. Cadila Pharmaceuticals Ltd., 2015 SCC OnLine Del 6914, where the petitioner’s use of “KIND” family marks was recognised as arbitrary and fanciful, meriting strong protection.

• Caterpillar Inc. v. Mehtab Ahmed & Ors., 2002 SCC OnLine Del 865 and Bata India Ltd. v. Chawla Boot House, 2019 SCC OnLine Del 8147, which affirmed the proprietary nature of distinctive trademark elements.

• Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog, 2010 SCC OnLine Del 2933, where long and exclusive use gave rise to inherent distinctiveness.

• Mankind Pharma Ltd. v. Arvind Kumar Trading, 2023 SCC OnLine Del 2265, wherein the court observed that even marginal alterations to “KIND” suffix marks could lead to consumer confusion due to the strength of the family of marks.

• Mankind Pharma Limited v. Novakind Bio Sciences Pvt. Ltd., 2023 SCC OnLine Del 4806, holding “NOVAKIND” deceptively similar to “MANKIND.”

The petitioner also cited Shree Vardhman Rice and General Mills v. Amar Singh Chawalwala, (2009) 10 SCC 257, and Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690, for reinforcing the principle that even partial copying of dominant elements of a well-known mark is not permissible.

In analysing the matter, the Court reaffirmed that the suffix “KIND” in the pharmaceutical sector was neither descriptive nor generic. It was rather a distinctive and fanciful component that had come to be associated exclusively with the petitioner due to longstanding use and aggressive brand protection. The Court further observed that the conduct of the respondent no. 1 in applying for a similar mark in the same class, despite knowledge of the petitioner’s pre-existing mark, demonstrated mala fides and a clear intent to capitalise on the reputation and goodwill of the petitioner.

Significantly, the Court endorsed the petitioner’s reliance on McCarthy on Trademarks and Unfair Competition (Thomson West, 2006), which asserts that infringement may arise not only from exact copying but also from use that confuses the public by creating an impression of association with a well-known family of marks.

The Court held that the registration of “KINDPAN” violated Sections 11(1) and 11(2) of the Trade Marks Act, 1999, which prohibit registration of marks that are confusingly similar to earlier marks and likely to cause dilution of their distinctiveness. It was also held that the petitioner qualifies as a “person aggrieved” under Section 57(2) of the Act, thereby entitling it to seek rectification.

Accordingly, the Delhi High Court allowed the petition, directing the Trademark Registry to remove the impugned mark “KINDPAN” (Registration No. 2795896) from the Register of Trademarks.

Conclusion: This judgment significantly reinforces the strength of trademark protection accorded to families of marks, particularly in specialised and sensitive sectors such as pharmaceuticals. The Court’s detailed recognition of secondary meaning, established goodwill, and the importance of source identification underscores a growing judicial inclination toward safeguarding brand integrity. The ruling reiterates the principle that deceptively similar marks, even when only partially overlapping, can lead to confusion and dilution, especially when they attempt to capitalise on established commercial reputation.

Neutral Citation: Mankind Pharma Ltd. Vs. Preet Kamal Grewal 

Court: High Court of Delhi

Date of Judgment: 2nd April 2025:C.O. (COMM.IPD-TM) 279/2022

Neutal Citation:2025:DHC:2231

Coram: Hon’ble Mr. Justice Saurabh Banerjee

Citation References:

• Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd., 2015 SCC OnLine Del 6914

• Mankind Pharma Ltd. v. Arvind Kumar Trading, 2023 SCC OnLine Del 2265

• Mankind Pharma Ltd. v. Novakind Bio Sciences Pvt. Ltd., 2023 SCC OnLine Del 4806

• Caterpillar Inc. v. Mehtab Ahmed, 2002 SCC OnLine Del 865

• Bata India Ltd. v. Chawla Boot House, 2019 SCC OnLine Del 8147

• Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog, 2010 SCC OnLine Del 2933

• Shree Vardhman Rice and General Mills v. Amar Singh Chawalwala, (2009) 10 SCC 257

• Neon Laboratories Ltd. v. Themis Medicare Ltd., 2014 SCC OnLine Bom 1087

Imax Healthcare Private Limited Vs Max Healthcare Institute Limited

The High Court of Delhi, in a decision dated March 26, 2025, addressed an appeal filed by Imax Healthcare Private Limited and another appellant against an order of the District Judge (Commercial) dated December 19, 2024, which granted an interim injunction to Max Healthcare Institute Limited under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). The case, registered as FAO (COMM) 60/2025, stemmed from a trademark dispute in CS (Comm) 247/2024, where Max Healthcare, the respondent, alleged infringement of its registered "MAX" trademarks by the appellants’ use of "IMAX" in healthcare services. The Division Bench, presided over by Justice C. Hari Shankar and Justice Ajay Digpaul, set aside the impugned order, finding that the Commercial Court had misinterpreted an earlier High Court directive and failed to evaluate the merits of the injunction application. The matter was remanded for a fresh, expeditious decision, highlighting procedural rigor and the judiciary’s role in ensuring reasoned adjudication.

Max Healthcare Institute Limited, a well-established entity in India’s healthcare sector, has operated under the "MAX" brand for over two decades, securing multiple trademark registrations for composite marks incorporating "MAX" in relation to hospital and healthcare services. The respondent’s marks, including "MAX HEALTHCARE," "MAX HOSPITAL," and others, have been judicially recognized as "well-known" under the Trade Marks Act, 1999, a status affirmed in prior litigation, notably CS (COMM) 603/23, where a revenue of Rs. 185,446 lakhs in 2021 underscored its market prominence. This recognition was further reinforced in Max Healthcare Institute Ltd. v. Sahrudya Healthcare Pvt. Ltd. (2019 SCC OnLine Del 9036), where the High Court upheld the deceptive similarity of "MAXCURE" to "MAX," granting an injunction. Max Healthcare has a history of vigilantly protecting its intellectual property, securing over 21 injunctions against third parties using similar marks, such as "Max Care Hospitals" across various cities.

The dispute with Imax Healthcare Private Limited emerged when Max Healthcare filed a suit alleging that the appellants’ use of "IMAX" infringed its registered trademarks and misled the public into associating Imax’s services with its own. Accompanying the suit was an application for an interlocutory injunction under Order XXXIX Rules 1 and 2 CPC. On May 15, 2024, the Commercial Court initially rejected this application, reasoning that Max Healthcare’s registrations were for composite marks rather than the standalone word "MAX," and that the appellants’ operations in Tamil Nadu, where Max had no presence, precluded confusion. The court also noted structural differences—Max being a limited company and Imax a private limited company—as mitigating deception risks. Dissatisfied, Max Healthcare appealed to the High Court in FAO (Comm) 117/2024.

On September 25, 2024, the Division Bench allowed the appeal, setting aside the May 15 order. It criticized the Commercial Court’s reasoning, rejecting the relevance of corporate structure to trademark infringement and dismissing the territorial argument in light of Max’s online presence and allegations of affected sales nationwide. The court also clarified that the discretionary nature of injunctions did not permit arbitrary denial when a prima facie case, balance of convenience, and irreparable injury were established. Quoting extensively from Sahrudya Healthcare and the decree in CS (COMM) 603/23, the Bench underscored "MAX" as a prominent, non-generic mark in healthcare, likely to cause confusion when adopted by others in the same field. The matter was remanded to the Commercial Court for a fresh decision, with all merits-based contentions left open.

The impugned order of December 19, 2024, arose from this remand. The Commercial Court, now presided by a different judge, granted the injunction, restraining Imax Healthcare, its affiliates, and agents from using "IMAX" or any phonetically or visually similar mark until the suit’s disposal. However, the court’s reasoning was sparse, relying heavily on the High Court’s September 25 observations rather than independently assessing the merits. It noted the appellants’ argument that other registered marks like "IMAXX HAIR" and "Pathmax" coexisted with "MAX," but dismissed it as already addressed by the High Court, concluding that further deliberation was unnecessary. The court interpreted the prior judgment as mandating an injunction to "implement" its observations, a stance that prompted the present appeal by Imax Healthcare.

In FAO (COMM) 60/2025, the Division Bench found this approach fundamentally flawed. Justice C. Hari Shankar, authoring the oral order, emphasized that the September 25 judgment did not foreclose the issue or dictate an outcome. Instead, it had revived the injunction application for a de novo consideration "in accordance with law," preserving both parties’ rights to argue their case. The Commercial Court’s cursory order, devoid of substantive analysis, misconstrued this directive as a command to grant relief, neglecting its duty to evaluate factors like prima facie case, balance of convenience, and irreparable harm. The Bench expressed dismay at this misapplication, noting that the lower court had treated the High Court’s critique of the earlier refusal as a conclusive endorsement of Max Healthcare’s claims.

The appellants’ counsel, Mr. Parish Mishra, reiterated the coexistence of other "MAX"-based trademarks, suggesting Max Healthcare could not claim exclusivity. Conversely, Ms. Abhilasha Nautiyal, representing Max Healthcare, accused the appellants of submitting fabricated evidence, including a pre-COVID bill for a COVID test kit, and relying on material not presented earlier. The Bench refrained from opining on these submissions, leaving them for the Commercial Court to address. It stressed that a fresh adjudication must consider all contentions, including these allegations, to ensure a fair and reasoned outcome.

Setting aside the December 19 order, the High Court directed both parties to appear before the Commercial Court on April 3, 2025, for a re-evaluation of the injunction application. It urged the lower court to decide expeditiously—preferably within two weeks—uninfluenced by the impugned order’s conclusions. To streamline proceedings, both sides undertook not to seek adjournments, and the Bench requested the Commercial Court to defer a related contempt petition until the injunction issue was resolved. The order reserved the parties’ rights to challenge any future decision, maintaining procedural flexibility while emphasizing judicial efficiency.

The judgment reflects broader themes in trademark law and judicial oversight. It reaffirms that "MAX," as a prominent element in Max Healthcare’s marks, warrants protection against deceptive similarity, especially in healthcare, where consumer confusion carries significant consequences. The Bench’s reliance on prior rulings like Sahrudya Healthcare underscores the psychological reality of brand recognition—patients associate "MAX" with Max Healthcare, not its full composite marks or logos, particularly in urgent medical contexts. The decision also critiques territorial limitations in a digital and corporatized healthcare landscape, aligning with trends like medical tourism that transcend regional boundaries.

Procedurally, the ruling highlights the High Court’s supervisory role in ensuring lower courts adhere to remand directives. The Commercial Court’s failure to engage with merits—despite clear instructions—prompted a stern reminder of judicial responsibility. The Bench’s hope for future circumspection from the District Judge signals a call for diligence in exercising discretionary powers, reinforcing that such discretion must be reasoned, not arbitrary. By remanding the case with specific timelines, the court balanced fairness with the urgency inherent in commercial disputes.

In conclusion, the March 26, 2025, order in FAO (COMM) 60/2025 exemplifies the judiciary’s commitment to protecting well-known trademarks while upholding procedural integrity. It leaves the substantive dispute unresolved, entrusting the Commercial Court with a fresh opportunity to weigh evidence and arguments, ensuring that the outcome—whatever it may be—rests on a solid legal foundation.

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Complete Citation

• Case Name: Imax Healthcare Private Limited  Vs Max Healthcare Institute Limited
• Court: High Court of Delhi at New Delhi
• Case Number: FAO (COMM) 60/2025 
• Date of Decision: March 26, 2025
• Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul
• Neutral Citation: 2025:DHC:2206

Full Citation:

Ibibo Group Pvt Ltd. Vs. Satyendra Kumar Singh

The High Court of Delhi, in a ruling dated April 1, 2025, addressed a rectification petition filed by Ibibo Group Private Limited against Satyendra Kumar Singh and another respondent, seeking the cancellation of the trademark "GO PLUS" (registration no. 3742148) in Class 9 from the Register of Trade Marks. The case, identified as C.O. (COMM.IPD-TM) 251/2022, was adjudicated under Sections 47 and 57 of the Trade Marks Act, 1999, with the court granting the petitioner’s request due to the respondent’s failure to contest the claims and the petitioner’s established prior rights and goodwill in its "GOIBIBO" and related "GO-formative" marks. Justice Amit Bansal delivered the oral judgment, directing the Trade Marks Registry to remove the impugned mark, thereby reinforcing the protection of well-known trademarks against deceptive similarity and dilution.

Ibibo Group Private Limited, the petitioner, is a prominent player in India’s online travel industry, operating under the "GOIBIBO" brand. The company has built a robust presence since 2009, offering a comprehensive travel platform that facilitates bookings for flights, hotels, buses, and ancillary services like travel insurance. With a website (www.goibibo.com) registered on May 22, 2009, and operational since 2010, the petitioner has processed over 10 million bookings. Its mobile application, launched in 2013, has garnered over 16 million downloads across platforms like Google Play and Apple iStore. The company’s extensive promotional efforts span traditional print media, digital channels, and sponsorships of national and international events, resulting in significant unsolicited media coverage in leading publications. Social media platforms, including Facebook, Twitter, YouTube, and Instagram, further amplify the visibility of the "GOIBIBO" marks. Financially, the petitioner’s success is evident from its sales turnover of Rs. 135,631 lakhs and marketing expenses of Rs. 125,175 lakhs in the fiscal year 2017-18, as detailed in the petition. This commercial success has been complemented by prestigious awards and partnerships with celebrities and corporate giants, cementing the "GOIBIBO" brand’s reputation.

The petitioner’s intellectual property portfolio includes registered trademarks for "GOIBIBO" and various "GO-formative" marks—such as "GO CONTACTS," "GOCASH PLUS," "GO BIZ," "GO BUSINESS," and "GO STAYS"—across multiple classes, including Class 9 (downloadable software for travel-related services), Class 35 (business services), Class 36 (financial services), Class 39 (transport and travel), and Class 43 (accommodation services). The earliest registration for "GOIBIBO" dates to August 18, 2011, with a user claim from May 22, 2009, reflecting over a decade of continuous use. This extensive adoption and promotion have positioned "GO" as a dominant and independently recognizable element associated exclusively with the petitioner’s services in the minds of the public and trade.

The dispute originated when the petitioner identified the "GO PLUS" mark in Trade Marks Journal No. 1840, published on March 12, 2018. Filed by respondent no. 1, Satyendra Kumar Singh, on February 1, 2018, on a "proposed to be used" basis, the mark was registered on July 31, 2018, in Class 9 for "mobile and mobile accessories, charger, ear phone, battery, bluetooth, screen guard." Due to an error by its trademark agents, the petitioner missed the deadline to oppose the application before registration. Aggrieved by the registration, Ibibo Group filed the rectification petition, arguing that "GO PLUS" was deceptively similar to its "GOIBIBO" and "GO-formative" marks, likely to cause confusion, deceive consumers, and dilute its goodwill.

Procedurally, the case transitioned to the High Court following the abolition of the Intellectual Property Appellate Board (IPAB) under the Tribunal Reforms Act, 2021. The IPAB had initially issued notice to the respondent on March 18, 2019, but subsequent records were incomplete. After the transfer, the High Court issued fresh notice on July 22, 2022, and confirmed service on December 15, 2022. Despite these efforts, the respondent neither appeared nor filed a reply, effectively conceding the petitioner’s averments. This non-participation shaped the court’s approach, allowing it to treat the petition’s claims as admitted under established legal principles.

Counsel for the petitioner, Mr. Abhishek Kotnala and Mr. Kartikeya Tandon, advanced several key arguments. They emphasized the petitioner’s prior adoption and exclusive proprietorship of the "GOIBIBO" and "GO-formative" marks, rooted in their use since 2009. They contended that "GO PLUS" was deceptively similar, posing a risk of confusion and deception among consumers. The widespread goodwill of the "GOIBIBO" brand, they argued, extended to the "GO" element, which the public independently associated with the petitioner’s services. This association was reinforced by the petitioner’s array of "GO-formative" marks, making the registration of "GO PLUS" a threat to the distinctiveness of its trademark family. Additionally, the goods covered by the impugned mark—mobile accessories and related items—overlapped with the petitioner’s Class 9 software offerings, heightening the potential for confusion. Finally, they noted the respondent’s non-use of "GO PLUS," suggesting that cancellation would cause no prejudice.

Justice Bansal’s analysis hinged on the uncontested evidence and legal precedents. The respondent’s failure to respond left the petitioner’s claims unopposed, a circumstance the court interpreted as an admission of the averments. A side-by-side comparison of the marks revealed striking similarities: the petitioner’s portfolio included "GOIBIBO," "GO STAYS," "GO CARS," "GO BIZ," and "GOCASH PLUS," among others, while the respondent’s mark was "GO PLUS." The court identified "GO" as the essential and dominant feature, a conclusion bolstered by the respondent’s inclusion of a "GO" logo alongside "GO PLUS." This similarity, when viewed holistically, rendered "GO PLUS" deceptively akin to the petitioner’s marks.

The court drew on its ruling in Greaves Cotton Limited v. Mohammad Rafi and Ors. (2011 SCC OnLine Del 2596) to frame its assessment of deceptive similarity. It noted that infringement does not require an exact replica of a registered mark; rather, it suffices if the impugned mark resembles the plaintiff’s mark substantially, likely deceiving or confusing consumers. The judgment highlighted that savvy infringers often introduce minor variations to evade liability, but such tactics do not preclude relief if the resemblance remains significant. Here, the shared "GO" element, coupled with the petitioner’s extensive use and reputation, satisfied this threshold. The court rejected the notion that minor differences—like the addition of "PLUS"—negated the risk of confusion, especially given the petitioner’s established market presence.

Further, the court examined the overlap in goods and services. The petitioner’s Class 9 registrations covered downloadable software for travel-related digital content, loyalty schemes, and accommodation searches—offerings that intersected with the respondent’s mobile accessories, which often complement digital platforms. This proximity amplified the likelihood of consumer confusion. The petitioner’s prior use since 2009, contrasted with the respondent’s adoption in 2018 on a "proposed to be used" basis and subsequent non-use, underscored the inequity of maintaining the registration. The court found that the petitioner’s goodwill, built through years of promotion and recognition, was vulnerable to dilution by the impugned mark, even absent active use by the respondent.

Applying Sections 9, 11, and 18 of the Trade Marks Act, the court concluded that the registration of "GO PLUS" contravened legal standards. Section 9 prohibits registration of marks lacking distinctiveness, Section 11 bars marks likely to cause confusion due to similarity with earlier trademarks, and Section 18 governs the Registrar’s authority to accept applications. The continued presence of "GO PLUS" on the Register, the court reasoned, violated these provisions by threatening the petitioner’s rights and public interest. Under Section 57, which empowers rectification for entries wrongly remaining on the Register, the court found cancellation warranted.

The judgment culminated in an order allowing the petition and directing the Trade Marks Registry to remove "GO PLUS" (no. 3742148) from Class 9. The court instructed its Registry to forward the order to the Trade Marks Registry via email for compliance, disposing of all pending applications. Delivered orally on April 1, 2025, the ruling exemplifies the judiciary’s role in safeguarding trademark integrity, particularly when uncontested evidence reveals a clear threat to established rights.

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Complete Citation

• Case Name: Ibibo Group Pvt Ltd. Vs. Satyendra Kumar Singh 
• Court: High Court of Delhi at New Delhi
• Case Number: C.O. (COMM.IPD-TM) 251/2022
• Date of Decision: April 1, 2025
• Judge: Hon'ble Mr. Justice Amit Bansal
• Neutral Citation: 2025:DHC:2480

Harley-Davidson LLC Vs. Vijal Pal Dhayal

This judgment from the High Court of Delhi addresses a commercial suit filed by Harley-Davidson LLC, a renowned American company, against Vijal Pal Dhayal accused of infringing the plaintiff’s trademarks and copyrights, as well as passing off goods under a deceptively similar mark. The case, identified as CS(COMM) 609/2023, was adjudicated summarily under Order XIII-A of the Code of Civil Procedure, 1908 (CPC), as amended for commercial disputes, due to the defendant’s failure to contest the claims despite multiple opportunities. The court granted a permanent injunction, ordered the destruction of infringing goods, and awarded damages and costs totaling Rs. 5,00,000 in favor of the plaintiff.

Harley-Davidson LLC, organized under the laws of the United States, has been a prominent name in the motorcycle industry since its inception in 1903. The company, formally incorporated as Harley-Davidson Motor Company on September 17, 1907, expanded its product line over the years to include apparel, shoes, and accessories, all marketed under the well-known “HARLEY-DAVIDSON” mark and associated logos, such as the “Bar & Shield” logo introduced in 1910 and the “Eagle Logo/Device Mark.” These trademarks have been registered globally, with over 2,200 registrations or pending applications, and have acquired significant recognition due to continuous use since the early 20th century. In India, the plaintiff began operations in August 2009 through its subsidiary, H-D Motor Company India Private Ltd., and opened its first dealership in July 2010. It later partnered with Hero MotoCorp to strengthen its presence in the Indian market. The company also operates a website, https://www.harley-davidson.in/, created on February 14, 2005, to promote and sell its products.

The plaintiff’s trademarks in India include registrations for “HARLEY-DAVIDSON,” its logos, and variants like “SCREAMIN EAGLE,” “H-D,” and “HD,” spanning multiple classes under the Trade Marks Act, 1999. For instance, registration no. 490824 for “HARLEY-DAVIDSON” in Class 25 (clothing) dates back to May 10, 1988, while registration no. 1333740 for the “Bar & Shield” logo in Class 25 was filed on January 24, 2005. These marks, along with their distinctive trade dress and artistic elements, are protected as original works under Section 2(c) of the Copyright Act, 1957. The plaintiff’s extensive use, global sales in over 90 countries through 1,460 dealerships, and substantial promotional efforts—evidenced by sales of Rs. 488.09 crore and promotional expenses of Rs. 5.31 crore in India in 2014—have established its marks as market leaders and source identifiers exclusively associated with Harley-Davidson.

The dispute arose in July 2023 when the plaintiff’s representative discovered the defendant using a mark identical or deceptively similar to the plaintiff’s “Eagle Logo/Device Mark” on footwear sold under the brand name “RONTEX.” An investigation revealed that the defendant was stocking, supplying, and selling these shoes, prompting the plaintiff to file the present suit. The plaintiff sought a permanent injunction to restrain the defendant from infringing its trademarks and copyrights, passing off goods as those of the plaintiff, and causing dilution of its brand reputation. Additional reliefs included the delivery and destruction of infringing products, damages, and costs.

The procedural history of the case reflects the defendant’s non-participation. On October 16, 2023, the court issued summons and an ad interim injunction restraining the defendant from using the impugned mark. A Local Commissioner was appointed to visit the defendant’s premises, where 640 pairs of shoes bearing the infringing mark were inventoried. Despite service of summons via email and publication, and multiple extensions granted by the Joint Registrar, the defendant failed to file a written statement within the statutory 120-day period under the Commercial Courts Act, 2015. Consequently, on April 2, 2024, the right to file a written statement was closed, and the plaintiff moved an application (I.A. 42209/2024) under Order XIII-A and Order VIII Rule 10 CPC for a summary judgment.

The court’s analysis focused on the plaintiff’s prima facie case and the defendant’s lack of defense. The plaintiff demonstrated prior adoption and continuous use of its marks since 1903 globally and since 2009 in India, supported by trademark registrations and evidence of goodwill. The Local Commissioner’s report, unchallenged by the defendant, confirmed the presence of infringing goods, aligning with Order XXVI Rule 10(2) CPC, which allows such reports to be read into evidence if uncontested. The court compared the plaintiff’s “Eagle Logo/Device Mark” with the defendant’s mark and found them deceptively similar, noting that the defendant’s use on identical goods (footwear) could mislead consumers and dilute the plaintiff’s brand.

Applying Order XIII-A CPC, designed to expedite commercial disputes, the court assessed whether the defendant had a “real prospect” of defending the claim. Citing Su-Kam Power Systems Ltd. v. Kunwer Sachdev (2019 SCC OnLine Del 10764), the court emphasized that a summary judgment is appropriate when the defendant’s prospects are not “realistic” but “fanciful,” and no compelling reason exists for a trial. Here, the defendant’s failure to file a written statement, respond to the application, or contest the interim injunction indicated an absence of defense. The court concluded that proceeding to trial was unnecessary, as the plaintiff’s evidence—trademark registrations, sales figures, and the Local Commissioner’s findings—established infringement, passing off, and copyright violation.

On the issue of reliefs, the court granted a permanent injunction in terms of prayer clauses 46(a), (b), and (c) of the plaint, restraining the defendant from using the infringing mark. It also ordered the destruction of the 640 pairs of shoes inventoried by the Local Commissioner, to be supervised by the plaintiff’s representative, as per prayer clause 46(e). For damages and costs (prayer clauses 46(g) and (h)), the plaintiff pressed for compensation, citing the defendant’s willful infringement. Referencing Hindustan Unilever Limited v. Reckitt Benckiser India Limited and Inter Ikea v. Sham Murari, the court adopted a “rough and ready calculation” approach, basing damages on the Local Commissioner’s seizure report. Considering the defendant’s conduct and the plaintiff’s reputation, the court awarded Rs. 5,00,000, covering both damages and costs. The plaintiff did not pursue other reliefs, such as rendition of accounts.

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Complete Citation

• Case Name: Harley-Davidson LLC Vs. Vijal Pal Dhayal
• Court: High Court of Delhi at New Delhi
• Case Number: CS(COMM) 609/2023 
• Date of Decision: April 2, 2025
• Judge: Hon'ble Mr. Justice Amit Bansal
• Neutral Citation: 2025:DHC:2489 

Star India Pvt. Ltd. Vs. Magicwin.games

Star India Pvt. Ltd. Vs. Magicwin.games & Ors.Court: High Court of Delhi Case Number: CS(COMM) 490/2024 Neutral Citation: [2025/DHC/4210] Date of Decision: April 2, 2025 Judges: Hon'ble Mr. Justice Amit Bansal

Facts: Star India Pvt. Ltd. is a prominent broadcaster in India, holding exclusive media rights for various sports events. It operates over seventy channels across multiple languages and platforms, including their streaming service, Disney+ Hotstar. The case centers around their broadcasting rights for the "ICC Men’s T20 World Cup 2024," held from June 2 to June 29, 2024.

Star India entered a Media Rights Agreement with the International Cricket Council (ICC) on August 27, 2022, granting them exclusive digital media and television broadcasting rights in India for ICC events from 2024 to 2027. Given the immense popularity of cricket in India, Star India anticipated significant revenue from streaming and broadcasting the T20 World Cup.

The defendants, identified as rogue websites, engaged in unauthorized streaming and dissemination of Star India’s content, alongside operating illegal betting and gambling services contrary to the Public Gambling Act of 1867. The defendants included various domain name registrars, internet service providers, and governmental telecommunications bodies.

Legal Proceedings: Upon filing the suit, Star India sought a permanent injunction to restrain the defendants from further unauthorized dissemination of their content. The court issued an ex-parte ad interim injunction on May 30, 2024, prohibiting the defendants from infringing upon Star India's exclusive rights. It required domain registrars to disclose the details of the rogue websites and directed internet service providers to block access to these sites.

As the proceedings progressed, additional rogue websites were identified, leading Star India to amend its pleadings and include these new defendants. Notably, despite being duly served, defendants failed to submit a written statement or contest the claims.

Judgment: The court analyzed the merits of the case, noting that the defendants’ activities had significantly harmed Star India’s interests by infringing on its broadcast rights and diluting its content's value. The court found that, with no contest from the defendants, the allegations in the plaint were deemed admitted.

On this basis, the court issued a decree for a permanent injunction agait the defendants, preventing them from disseminating Star India's exclusive content. The plaintiff did not pursue other reliefs beyond the injunction, and the court ordered that a decree sheet be drawn up.

Chime Financial, Inc Vs The Registrar of Trade Marks

The case pertains to an appeal filed by Chime Financial, Inc. against a decision by the Registrar of Trademarks, which refused the registration of Chime's trademark application. Below is the detailed summary of the appeal along with citations from the document.

Overview of the Case

• Case Title and Reference: C.A.(COMM.IPD-TM) 64/2024
• Date of Decision: 2nd April 2025
• Court: High Court of Delhi
• Appellant: Chime Financial, Inc.
• Respondent: The Registrar of Trade Marks
• Judgment Author: Hon'ble Mr. Justice Amit Bansal

Background and Relevant Facts

1. Formation and Business: Chime Financial, Inc. is a financial technology company incorporated in 2012 in the USA. It provides online banking and financial products under its trademark.
2. Usage of Trademark: The mark has been in continuous use since March 2014 on the website www.chime.com and is associated with a mobile banking platform that boasts an active user base of over 14 million.
3. Recognition: The company has been recognized in various prestigious lists for its contributions, such as being valued at $25 billion and ranking high in various industry accolades.

Trademark Application

• Chime filed an application (no. 5241586) on a "proposed to be used basis" for their trademark in Classes 9, 35, 36, 41, and 42, claiming priority from a previous U.S. application filed on 27th August 2021.

Grounds for Refusal

1. Cited Marks: The Registrar cited several existing trademarks that were reportedly phonetically and visually similar to the appellant's mark, leading to the refusal of the application based on Section 11(1) of the Trade Marks Act, 1999. This section relates to the refusal of marks that are either identical or similar to an existing mark in relation to similar goods/services, if a likelihood of confusion exists,.
2. Response from Chime: Chime responded to each cited mark disputing the similarities based on the dissimilarity of goods/services and consumer classes, arguing that no confusion was likely.

Court's Findings

• The Court scrutinized the cited marks, concluding that they pertain to goods/services dissimilar to those of the appellant, thus there should not be a likelihood of confusion:
• Cited marks ranged from aerospace to real estate, which were not closely related to Chime’s financial services,.
• The Court noted that the Registrar had failed to analyze the cited marks individually and had instead made generalized assertions regarding their similarity.

Conclusion

• The appeal was allowed, and the Court overturned the Registrar’s refusal, directing that the Registrar proceed with advertising Chime's mark within two months of the decision.
• This judgment underscores the importance of assessing each case on its merit, particularly the uniqueness of goods/services offered under the trademarks in question.

Citation

• Chime Financial, Inc. v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 64/2024, High Court of Delhi, decided on April 2, 2025.

BTS Research International Pty Ltd Vs. The Controller General of Patents & Designs,

Case Citation: BTS Research International Pty Ltd vs. The Controller General of Patents & Designs, Mumbai & Ors., IPDPTA 56 OF 2023, High Court at Calcutta, Judgment on: 03.04.2025, Justice Ravi Krishan Kapur.

Summary: BTS Research International Pty Ltd filed an appeal under section 117 of the Patents Act, 1970, against an order dated June 16, 2020, rejecting their patent application (no. 0041/KOLMP/2012). The invention claimed is titled “Method of generating hybrid/chimeric cells and uses thereof,” which specifically involves the creation of a tri-hybrid cell by artificially fusing three somatic cells, including at least one human cell and potentially a non-human cell (like a mouse cell). The appellant argued that this process involves significant human intervention and is not merely a biological process for producing or propagating plants or animals.

The Controller General of Patents rejected the patent application based on section 3(j) of the Patents Act, which addresses non-patentable inventions related to biological processes and living organisms. The rejection was largely premised on the argument that the hybrid cells retained attributes of their parent cells, thereby classifying the processes involved within those excluded from patentability. The order stated that the resultant hybrid cell falls under the categorization of a structural and functional unit of the organism from which the cells were taken and considered as a product of essentially biological processes.

In arguing against the rejection, the appellant contended the following:

1. The impugned order was based on a misinterpretation of the Patents Act.
2. Following a response to the First Examination Report (FER), a Second Examination Report (SER) should have been issued, as mandated by the law.
3. Prior art documents cited in the examination had been acknowledged in European proceedings where the patent had been granted, yet this was ignored in the impugned order.
4. Section 3(j) was deemed inapplicable, arguing that the application involves substantial human intervention and does not constitute an essentially biological process.

Conversely, the respondents maintained that the hybrid cells in question are derived from stem cells capable of developing into organisms and provided adequate reasoning for the applicability of section 3(j). They referenced the decision in Nuziveedu Seeds Ltd. & Ors. vs. Monsanto Technology LLC & Ors., supporting their stance.

The judgment highlighted several critical points:

• It stressed the failure of the examination authorities to issue a SER after the objections to the FER were raised, which contravenes the statutory mandates.
• The findings from European patent proceedings and prior art documentation were not duly considered, despite their relevance to the assessment of the patent application.
• The Court underscored that the rejection order lacked substantial reasoning regarding how the invention constituted an essential biological process, thereby misapprehending the nature of the invention as involving significant human intervention.

Ultimately, the Court found the impugned order to be flawed, unsubstantiated, and based on a fundamental misinterpretation of the sections of the Patents Act. The patent application was therefore remanded for fresh adjudication, with the direction that it be heard by a different Hearing Officer and be decided afresh while allowing the appellant to amend and submit additional documents.

Vignesh Kumar Sivakumar Vs. Assistant Registrar of Trademark

The case in question involves Vignesh Kumar Sivakumar, representing his company M/s. Pencia Biotech, who filed a writ petition (W.P.(IPD) No. 3 of 2025) against the Assistant Registrar of Trademarks and M/s. Intas Pharmaceuticals Ltd. The proceedings took place in the High Court of Judicature at Madras, presided over by Justice Senthilkumar Ramamoorthy.

Summary of Proceedings:

1. Background:

- The petitioner, Vignesh Kumar Sivakumar, applied for the trademark "LABAPEN" (Application No. 6180911) in class 5 on November 9, 2023.

- Following this, an examination report was received on December 4, 2023, and responded to on December 19, 2023. The application was subsequently accepted and published in the trademark journal on February 19, 2024.

1. Notice of Opposition:

- The petitioner was unaware that a notice of opposition (No. 1323965) was lodged against his application until he received the order that deemed his application abandoned on December 26, 2024.

- This notice of opposition was reportedly dispatched via email to the counsel for the petitioner on June 24, 2024. However, there was no evidence to confirm that the petitioner or his counsel received this email.

1. Legal Arguments:

- The petitioner argued that he was deprived of the right to respond to the notice of opposition due to not receiving it, thus leading to a violation of natural justice principles.

- The Registrar of Trademarks contended that the email was sent to the registered email address. Despite this, the counsel for the petitioner emphasized that there was no proof of receipt.

1. Reference to Precedent:

- The judge referred to a similar case (Ramya S. Moorthy v. Registrar of Trademarks), wherein it was ruled that the statutory time limit to file a counter statement should be calculated from the date of receipt of the notice of opposition, not merely from the dispatch of the email. This precedent favored the petitioner’s situation.

1. Court's Decision:

- The court allowed the writ petition, quashing the previous order that declared the application abandoned. The trademark application and the notice of opposition were restored for reconsideration.

- The petitioner was granted a month to file the counter statement in response to the notice of opposition.

1. Recommendations for Improvement:

- The judge suggested that a technical solution be implemented to ensure proof of email receipt is available, in order to prevent similar issues in the future.

Conclusion:

The ruling underscored the importance of ensuring that applicants receive due notice regarding oppositions to their trademark applications. It reinforced the principles of natural justice, ensuring that applicants have the opportunity to respond to any oppositions effectively. The decision was aimed at rectifying the oversight in the notification process that led to the initial ruling of abandonment of the trademark application.

Vignesh Kumar Sivakumar Vs. Assistant Registrar of Trademark W.P.(IPD) No. 3 of 2025, High Court of Judicature at Madras, Decided on April 3, 2025, Coram: The Honourable Mr. Justice Senthilkumar Ramamoorthy, Neutral Citation: 2025:MHC:903.

Freeelective Network Private Limited Vs. Matrimony.Com Limited

Descriptive marks require robust evidence of secondary meaning for exclusivity

The case of M/S Freeelective Network Private Limited vs. M/S Matrimony.Com Limited is a significant trademark dispute adjudicated by the High Court of Judicature at Madras. The Plaintiff, Freeelective Network Private Limited, sought to protect its registered trademark "Jodi365" against the Defendant, Matrimony.Com Limited, which launched a mobile application under the mark "Jodii." The Plaintiff alleged infringement and passing off, claiming that "Jodii" was deceptively similar to "Jodi365." The judgment, delivered on July 14, 2022, by Justice Senthilkumar Ramamoorthy, explores critical trademark law principles, including the distinctiveness of composite marks, the scope of protection under the Trade Marks Act, 1999, and the threshold for passing off. This case study provides an in-depth analysis of the factual background, procedural history, issues, submissions, judicial reasoning, and legal outcomes.

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Detailed Factual Background

The Plaintiff, M/S Freeelective Network Private Limited, incorporated in March 2010 as a subsidiary of FreeElective LLC, operates in the matchmaking and matrimonial services sector. It adopted the trademark "Jodi365" in 2009 for its flagship matchmaking platform and registered it under Class 99 (covering Classes 35, 38, and 41) on May 26, 2010, with the registration renewed until May 26, 2030. "Jodi365" was used continuously since 2009, evidenced by domain registration (Ex.P1), a mobile app launched in January 2020 with over 50,000 downloads (Ex.P7), revenue figures (e.g., Rs. 31,28,190 for 2020, Ex.P5), and advertising expenditure of Rs. 30 lakhs since December 2019 (Ex.P6). The Plaintiff claimed that "Jodi365" had acquired substantial goodwill and reputation, supported by media coverage (Ex.P8).

The Defendant, M/S Matrimony.Com Limited, a prominent player in the matrimonial services industry, operates under the registered trademark "BHARATMATRIMONY" since 1999 (Ex.D1, Ex.D2). In October 2021, it launched a Tamil-language mobile app named "Jodii" under the "BHARATMATRIMONY" umbrella (Ex.P9, Ex.D7). The Plaintiff discovered this in October 2021, alleging that "Jodii" was deceptively similar to "Jodi365" and that the Defendant’s targeted advertisements (Ex.P10) indicated mala fide intent to leverage the Plaintiff’s goodwill. A cease-and-desist notice was issued on November 2, 2021 (Ex.P12), to which the Defendant replied on November 17, 2021 (Ex.P13), asserting that "Jodi" was a descriptive term not monopolizable by the Plaintiff.

The Plaintiff filed a suit seeking a permanent injunction, surrender of infringing materials, and Rs. 1 crore in damages, arguing that "Jodii" infringed its registered mark and amounted to passing off.

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Detailed Procedural Background

The case was filed as Civil Suit (Comm. Div.) No. 122 of 2021 before the Madras High Court under Order VII Rule 1 of the Code of Civil Procedure, 1908 (CPC), and Sections 27, 28, 29, 134, and 135 of the Trade Marks Act, 1999. Alongside the suit, the Plaintiff filed applications O.A. Nos. 826 and 828 of 2021 and A. No. 442 of 2022 for interim relief. The court, presided over by Justice Senthilkumar Ramamoorthy, reserved judgment on April 29, 2022, and pronounced it on July 14, 2022.

Both parties opted not to present oral evidence, relying on documentary submissions. The Plaintiff submitted 14 exhibits (Ex.P1 to Ex.P14), including trademark certificates, financial statements, and media clippings. The Defendant countered with 14 exhibits (Ex.D1 to Ex.D14), such as its "BHARATMATRIMONY" registration and evidence of third-party use of "Jodi." Oral arguments were advanced by Mr. R. Sathish Kumar for the Plaintiff and Mr. P.S. Raman (Senior Counsel), assisted by Mr. Arun C. Mohan, for the Defendant, supplemented by written submissions.

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Issues Involved in the Case

The court framed six issues for determination:

1. Whether the Plaintiff is the registered proprietor of the trademark "JODI365" under No. 1971072 in Class 99?
2. Whether the Defendant’s trademark "JODII" is deceptively similar to the Plaintiff’s "JODI365"?

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Detailed Submission of Parties

Plaintiff’s Submissions

• Proprietorship and Use: The Plaintiff asserted ownership of "Jodi365," registered since May 26, 2010 (Ex.P2), renewed in 2020 (Ex.P3), and used since 2009 (Ex.P1). It highlighted its business metrics (Ex.P4, Ex.P5) and app downloads (Ex.P7) to establish goodwill.
• Deceptive Similarity: "Jodii" was argued to be visually and phonetically similar to "Jodi365," with "Jodi" as the essential feature, likely to cause confusion (Section 29(3), Trade Marks Act). Targeted ads (Ex.P10) suggested the Defendant’s awareness and intent.
• Infringement and Passing Off: The Plaintiff claimed "Jodii" infringed its registered mark and passed off its services, citing prior use and reputation. It sought a permanent injunction under Section 38 of the Specific Relief Act, 1963, arguing monetary relief was inadequate.
• Damages: Rs. 1 crore was claimed, asserting that damages in such cases are hard to quantify, warranting judicial discretion.
• Precedents: Cited Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65 for passing off and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2000 SC 1952 for phonetic similarity.

Defendant’s Submissions

• Descriptive Nature: The Defendant argued that "Jodi" (meaning "pair" in Indian languages, Ex.D11) was descriptive of matrimonial services, not distinctive, and thus not protectable (Section 17, Trade Marks Act).
• Composite Mark: The Plaintiff’s registration was for "Jodi365" as a device mark, not "Jodi" alone. "Jodii" under "BHARATMATRIMONY" (Ex.D1, Ex.D2) was visually and contextually distinct.
• Third-Party Use: Evidence of widespread use of "Jodi" by others (Ex.D8, Ex.D9) indicated it was publici juris, negating exclusivity.
• No Confusion: The Defendant’s established reputation and distinct trade dress precluded confusion or passing off.
• Precedents: Relied on Consim Info Ltd. v. Google India Pvt. Ltd. 2010 (6) CTC 813 to argue that descriptive elements in composite marks lack protection.

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Detailed Discussion on Judgments Cited by Parties

1. B.K. Engineering Co. v. U.B.H.L. Enterprises (Regd), 1985 Arb LR 269
   • Context: Addressed injunctions in trademark disputes.
   • Relevance: Plaintiff cited it for protecting prior users, but it was not decisive due to distinctiveness issues.
2. Automatic Electronic Ltd. v. R.K. Dhawan, 1999 SCC Online Del 27
   • Context: Focused on protecting established marks.
   • Relevance: Supported goodwill claims but was not applied given "Jodi"’s descriptiveness.
3. Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65
   • Context: Defined passing off (misrepresentation, goodwill, damage).
   • Relevance: Plaintiff relied on it, but the court found no misrepresentation due to trade dress differences.
4. Satyam Infoway Ltd. v. Sifynet Solutions Pvt Ltd, 2004 (28) PTC 566 (SC)
   • Context: Recognized domain names as trademarks.
   • Relevance: Supported "Jodi365"’s distinctiveness as a composite mark, not "Jodi" alone.
5. Central Park Estates Pvt Ltd. v. Godrej Skyline Developers Pvt Ltd, 2019 SCC Online Del 11580
   • Context: Protected "Central Park" as an essential feature.
   • Relevance: Plaintiff argued "Jodi" was essential, but the court distinguished it as "Central Park" was not descriptive.
6. Dhariwal Industries Ltd. v. M.S.S. Food Products, AIR 2005 SC 1999
   • Context: Granted injunctions against similar marks.
   • Relevance: Not applied due to lack of distinctiveness in "Jodi."
7. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd, AIR 2000 SC 1952
   • Context: Emphasized phonetic similarity in drug names.
   • Relevance: Plaintiff highlighted similarity, but trade dress differences prevailed.
8. Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd, 2014 (57) PTC 617
   • Context: Protected "Marine" as distinctive.
   • Relevance: Distinguished as "Jodi" was descriptive, unlike "Marine."
9. Ultratech Cement Ltd. v. Dalmia Cement Industries Ltd, 2016 (67) PTC 314
   • Context: Limited protection for descriptive marks.
   • Relevance: Supported Defendant’s argument on "Jodi"’s descriptiveness.
10. S.N.R. Dhall Mill v. Kaleesuwari Refinery Pvt Ltd, 2021 SCC Online Mad 1675
    • Context: Denied protection to descriptive terms.
    • Relevance: Reinforced the court’s stance on "Jodi."
11. People Interactive (India) Pvt Ltd. v. Vivek Pahwa, MANU/MH/1661/2016
    • Context: Defined secondary meaning thresholds.
    • Relevance: Key in assessing "Jodi"’s lack of acquired distinctiveness.
12. Consim Info Ltd. v. Google India Pvt Ltd, 2010 (6) CTC 813 & 2012 (5) LW 1
    • Context: Held "Bharat" and "Matrimony" non-distinctive in "BHARATMATRIMONY."
    • Relevance: Directly applied to deny "Jodi" protection.
13. Matrimony.Com Ltd. v. V. Kalyan Jewellers India Ltd, MANU/TN/2685/2026
    • Context: Addressed distinctiveness standards.
    • Relevance: Supported Defendant’s position.
14. P.M. Palani Mudaliar & Co. v. Jansons Exports, 2017 SCC Online Mad 1090
    • Context: Defined publici juris.
    • Relevance: Implicitly raised but not fully explored due to prior findings.

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Detailed Reasoning and Analysis of Judge

Justice Senthilkumar Ramamoorthy’s analysis focused on distinctiveness, infringement, and passing off:

• Issue 1: Proprietorship of "Jodi365"
  • The Plaintiff’s registration (Ex.P2) and renewal (Ex.P3) confirmed its proprietorship since May 26, 2010, valid until 2030.
• Issues 2 & 3: Deceptive Similarity and Infringement
  • Distinctiveness: "Jodi" (meaning "pair," Ex.D11) was classified as descriptive for matrimonial services, per Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4 (2d Cir. 1976). "365" was suggestive but not decisive. The composite mark "Jodi365" acquired distinctiveness through long use (Ex.P4, Ex.P5, Ex.P8), but "Jodi" alone did not (People Interactive).
  • Secondary Meaning: Applying Zatarains, Inc. v. Oak Grove Smokehouse, 698 F.2d 786, the court found insufficient evidence that "Jodi"’s primary meaning (pair) was overshadowed by association with the Plaintiff. Third-party use (Ex.D8, Ex.D9) reinforced its descriptiveness.
  • Section 17, Trade Marks Act: Protection extends to the whole mark, not non-distinctive elements unless they acquire secondary meaning. "Jodii" did not infringe "Jodi365" as "Jodi" lacked independent protection.
• Issue 4: Passing Off
  • Per Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, passing off requires misrepresentation. Despite phonetic similarity (Cadila), the distinct "BHARATMATRIMONY" branding and trade dress (mobile app visuals) negated confusion.
• Issue 5: Damages
  • With no infringement or passing off, damages were denied. The "big fish vs. small fish" argument was emotionally compelling but legally insufficient.
• Conclusion: "Jodi365" as a composite mark was protectable, but "Jodi"’s descriptiveness precluded relief against "Jodii."

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Final Decision

The suit was dismissed on July 14, 2022. No injunction, damages, or costs were awarded, and connected applications were closed.

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Law Settled in This Case

1. Composite Marks: Under Section 17 of the Trade Marks Act, protection applies to the entire mark, not non-distinctive elements unless they acquire secondary meaning.
2. Descriptive Terms: Descriptive marks require robust evidence of secondary meaning for exclusivity (Abercrombie, Zatarains).
3. Passing Off: Phonetic similarity alone does not establish passing off; overall trade dress and context are critical (Durga Dutt Sharma).

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Case Details

• Case Title: Freeelective Network Private Limited Vs. Matrimony.Com Limited
• Date of Order: July 14, 2022
• Case No.: Civil Suit (Comm. Div.) No. 122 of 2021
• Name of Court: High Court of Judicature at Madras
• Name of Judge: Hon'ble Shri Justice Senthilkumar Ramamoorthy
  

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

Mahaluxmi Rubber Udyog Vs MRF Limited

Conditional injunctions require courts to assess compliance with specific directives, not extraneous formalities

Introduction

In the bustling world of commercial litigation, where brand identity is fiercely guarded, the Madras High Court’s Commercial Appellate Division delivered a pivotal ruling on July 8, 2024, in Mahaluxmi Rubber Udyog vs MRF Ltd. and Anr. This case pits MRF Limited, a titan in the tyre industry, against Mahaluxmi Rubber Udyog, a contender accused of mimicking MRF’s trade dress, plunging the parties into a legal skirmish over trademark infringement, passing off, and copyright violations. The Division Bench, overturned a lower court’s blanket injunction, spotlighting procedural fairness and the nuances of conditional orders. This judgment not only reshapes the immediate dispute but also offers a masterclass in balancing trademark protection with equitable process, leaving a lasting imprint on India’s commercial jurisprudence.

Detailed Factual Background

MRF Limited, the plaintiff and first respondent, is a household name in India, renowned for its tyres and allied products, including tyre tubes. With a trademark portfolio boasting registrations like “MRF” and “MRF Connected Letter Device” under Class 12 of the Trade Marks Act, 1999, MRF has cultivated a distinctive identity through decades of use. The dispute centers on its tyre tube packaging—a registered trade dress featuring a specific colour scheme, layout, and get-up—which MRF claims as a cornerstone of its brand equity. In October 2023, MRF discovered that Mahaluxmi Rubber Udyog, the appellant and first defendant, alongside Amman Enterprises, the second defendant, were marketing tyre tubes under the mark “MRU” with a packaging eerily similar to MRF’s. Alleging infringement, passing off, and copyright violation, MRF contended that this mimicry diluted its goodwill and confused consumers.

Mahaluxmi, represented by partner Sunny Jhamb, countered that its “MRU” word mark was distinct and defensible on merits, though it conceded similarities in packaging aesthetics. Amman Enterprises, a Chennai-based entity, remained a silent player, neither filing a written statement nor actively engaging in the appellate proceedings. MRF’s plaint, dated January 23, 2024, sought a sweeping array of reliefs: injunctions against trademark infringement, trade dress misuse, and artwork reproduction; a declaration of “MRF” as a well-known trademark; damages of Rs. 50 lakhs; and delivery of offending materials. The stage was set for a showdown over intellectual property rights in the tyre tube market.

Detailed Procedural Background

MRF filed C.S. (Comm. Div.) No. 53 of 2024 before the Commercial Division of the Madras High Court, instituted on March 1, 2024. Alongside, it lodged five original applications (O.A. Nos. 168-172 of 2024) for interim injunctions, listed on March 5, 2024. Justice Abdul Quddhose ordered notice to the defendants, returnable by March 26, 2024, without granting ex parte relief, citing MRF’s delayed action since discovering the infringement in October 2023. On March 26, Mahaluxmi appeared, and its counsel proposed altering the packaging’s colour scheme and get-up, though not the “MRU” mark. The court issued a conditional order: Mahaluxmi had until April 12, 2024, to comply, failing which injunctions in all five applications would activate, restricted to colour scheme and get-up, not the word mark.

Mahaluxmi filed a memo on April 12, 2024, with three annexures (A, B, C) showcasing revised packaging, claiming compliance. On April 16, 2024, before a different judge, Justice R. Vijaymurugan, the applications were revisited. MRF argued non-compliance, and the court, noting no counter affidavit from Mahaluxmi or Amman, rejected the memo as insufficient and allowed all five applications, imposing a broader injunction including the “MRU” mark. Aggrieved, Mahaluxmi filed five Original Side Appeals (O.S.A. (CAD) Nos. 68-72 of 2024) on June 14, 2024, under Section 13(1) of the Commercial Courts Act, 2015, challenging the April 16 order. The Division Bench heard the appeals on July 8, 2024, with MRF’s caveat counsel present, and remanded the matter for fresh consideration.

Issues Involved in the Case

The case raised several pivotal issues:Did the Commercial Division err in rejecting Mahaluxmi’s compliance memo without assessing its adherence to the March 26, 2024, conditional order?Was the April 16, 2024, blanket injunction, extending to the “MRU” word mark, justified absent a specific finding of non-compliance?

Detailed Submission of Parties

Mahaluxmi argued that the April 16, 2024, order was procedurally flawed. They accepted the March 26 order’s mandate to alter packaging and submitted a memo with revised designs (Annexures A, B, C) by April 12, 2024, asserting full compliance. Mahaluxmi emphasized that the lower court should have evaluated this memo against the conditional order’s terms, not dismissed it for lacking a counter affidavit. They contended that the broader injunction, covering the “MRU” mark, exceeded the March 26 order’s scope, which explicitly excluded the word mark. Mahaluxmi sought remand for a fair compliance assessment, preserving their right to contest the “MRU” mark’s validity in the main suit.

MRF defended the April 16 order, arguing that Mahaluxmi’s memo was inadequate without a counter affidavit denying infringement facts. They asserted that the revised packaging still mimicked MRF’s trade dress, risking consumer confusion and goodwill dilution. MRF highlighted its registered trademarks and long-standing reputation, urging the court to uphold the injunctions to protect its intellectual property. They implied that Mahaluxmi’s failure to formally counter justified the broader relief, though they did not directly address the conditional order’s limited scope.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The Division Bench referenced a single prior ruling, though indirectly shaping its reasoning:Order dated 19.10.2022 in O.A. No. 651 of 2022 in C.S. (Comm. Div.) No. 205 of 2022 (Madras High Court) - Cited in paragraph 31, this order addressed Clause 14 of the Letters Patent, requiring notice to defendants before combining causes of action. The court applied it to A.No. 1233 of 2024 (MRF’s application to join causes), reinforcing procedural fairness but not directly impacting the injunction dispute. It underscored the need for defendant input, paralleling Mahaluxmi’s right to a compliance review.

The “Parle Principle,” derived from Parle Products (P) Ltd. v. J.P. & Co., Mysore (AIR 1972 SC 1359), though not cited, was implicitly invoked in paragraph 29, urging comparison of packaging through the lens of an average consumer’s imperfect recollection—a standard for assessing trade dress similarity.

Detailed Reasoning and Analysis of Judge

The court framed the March 26 order as a “conditional futuristic injunction,” obligating Mahaluxmi to alter its packaging by April 12, 2024, or face injunctions limited to colour scheme and get-up. Mahaluxmi’s memo, filed on deadline with revised designs, signaled intent to comply, yet the Commercial Division bypassed this effort, fixating on the absence of a counter affidavit. Sundar J. deemed this a failure of “legal drill”—the court should have assessed whether Annexures A, B, and C met the March 26 mandate, applying the Parle Principle to gauge consumer confusion.

The broader injunction, encompassing the “MRU” mark, defied the March 26 order’s explicit carve-out, which Mahaluxmi had accepted with “legal quietus.” The Bench criticized the lower court’s mechanical approach, noting that rejecting the memo without scrutiny undermined fairness, especially since Mahaluxmi filed a written statement in the suit. The court preserved Amman’s rights, unaffected by the appeals, and left open the “well-known trademark” declaration issue under Section 2(1)(zg) of the Trade Marks Act, pending a separate Division Bench reference.

Sundar J. balanced trademark protection with procedural equity, remanding the applications for a de novo review. He emphasized that compliance, not denial of facts, was the March 26 order’s crux, rendering the counter affidavit requirement secondary. The Bench’s directive to expedite this exercise reflected the Commercial Courts Act’s efficiency ethos, while safeguarding all parties’ substantive rights.

Final Decision

On July 8, 2024, the Division Bench allowed O.S.A. (CAD) Nos. 68-72 of 2024, setting aside the April 16, 2024, common order in O.A. Nos. 168-172 of 2024. The applications were remitted to the Commercial Division for fresh disposal, with instructions to evaluate Mahaluxmi’s April 12, 2024, memo against the March 26, 2024, order. The court refrained from opining on merits, preserving all parties’ contentions, including Amman’s, and directed an expeditious resolution. C.M.P. No. 13587 of 2024 (under Order XLI Rule 27 CPC) was closed, deferring document admissibility to trial.

Law Settled in This Case

This judgment clarified key principles:

1. Conditional injunctions require courts to assess compliance with specific directives, not extraneous formalities like counter affidavits, unless mandated.
2. The scope of interim relief must align with prior orders, preventing overreach absent fresh findings.
3. The Parle Principle guides trade dress disputes, necessitating consumer-centric comparison of get-up and layout.
4. Commercial Courts must balance swift justice with procedural fairness, remanding matters where legal drill is skipped.

• Case Title: Mahaluxmi Rubber Udyog Vs MRF Limited 
• Date of Order: July 8, 2024
• Case No.: O.S.A. (CAD) Nos. 68, 69, 70, 71 & 72 of 2024
• Neutral Citation: 2024:MHC:2722, 
• Name of Court: High Court of Judicature at Madras (Commercial Appellate Division)
• Name of Judges: Hon’ble Mr. Justice M. Sundar and Hon’ble Mrs. Justice K. Govindarajan Thilakavadi

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