Smith, Kline & French Laboratories Ltd. Vs. Sterling-Winthrop Group Ltd

Introduction

The case of Smith, Kline & French Laboratories Ltd. v. Sterling-Winthrop Group Ltd. ([1976] R.P.C. 511) is a landmark decision in UK trade mark law, addressing the registrability of a trade mark consisting of the entire external appearance of goods, specifically the colour combinations applied to pharmaceutical capsules and their pellets. This case, decided by the House of Lords, clarified the scope of the term "mark" under the Trade Marks Act 1938 and resolved whether such a mark, covering the whole visible surface of the goods, could be registered as a trade mark. The decision overturned the Court of Appeal’s ruling and established a significant precedent for the protection of unconventional trade marks, balancing statutory interpretation with commercial realities.

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Detailed Factual Background

Smith, Kline & French Laboratories Ltd. (SKF), a pharmaceutical manufacturer, developed "sustained release" drugs encapsulated in soluble capsules. These capsules were cylindrical with hemispherical ends, containing small spherical pellets. Each pellet had a neutral core (typically sugar), coated with the active drug and an outer layer that dissolved slowly in the digestive system to regulate drug release. To distinguish their products, SKF applied distinctive colour combinations to their capsules and pellets. One half of the capsule was coloured (e.g., maroon or dark grey), while the other half was transparent, revealing multicoloured pellets (e.g., yellow, blue, white, grey, red). These colour schemes varied for different drugs, ensuring market recognition.

In May 1963, SKF applied to register ten such colour combinations as trade marks under Class 5 of the Trade Marks Register for "pharmaceutical substances sold in pellet form within capsules." The applications described the marks verbally, and specimens (actual capsules) were deposited at the Trade Marks Registry due to the limitations of photographic representations. By 1971, evidence showed that these colour combinations were widely recognised by doctors, pharmacists, and hospital administrators as indicating SKF’s products, to the extent that their use by competitors would constitute passing off at common law.

Sterling-Winthrop Group Ltd., a rival pharmaceutical manufacturer, opposed the registrations, arguing that the colour combinations did not constitute "marks" or "trade marks" under the Trade Marks Act 1938, as they described the entire external appearance of the goods rather than a distinct mark applied to them.

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Detailed Procedural Background

1. Trade Marks Registry (November 1971):
   • The applications were heard by Assistant Registrar Mr. R.L. Moorby.
   • Moorby held that the colour combinations were "marks" capable of being trade marks under Section 68 of the Trade Marks Act 1938.
   • However, he refused registration on the ground that the marks lacked inherent distinctiveness, as they were not inherently adapted to distinguish SKF’s goods from others.
2. High Court (14 June 1973, [1974] R.P.C. 91):
   • SKF appealed to the High Court, where Graham J. allowed the appeal.
   • Graham J. agreed with Moorby that the colour combinations were "marks" but disagreed on distinctiveness, finding them both factually and inherently distinctive.
   • He ordered registration but limited each mark to the specific drug it had been used for, rather than the broader class of pharmaceutical substances, to prevent overreach.
3. Court of Appeal (8 May 1974, [1974] 1 W.L.R. 861; [1974] F.S.R. 455):
   • Sterling-Winthrop appealed, and the Court of Appeal (Russell, Buckley, and Lawton LJJ) reversed Graham J.’s decision.
   • The Court held that the colour combinations were not "marks" under Section 68, as they constituted the entire external appearance of the goods, not something distinct from them.
   • The issue of distinctiveness was not addressed, as the finding on the definition of "mark" was dispositive.
4. House of Lords (Heard: 6, 10-12 March, 21 May 1975; Decided: 1975, [1976] R.P.C. 511):
   • SKF appealed to the House of Lords, which unanimously allowed the appeal, restoring and expanding Graham J.’s order to permit registration without the drug-specific limitation.

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Issues Involved in the Case

1. Primary Issue: Whether the colour combinations applied to the entire visible surface of SKF’s capsules and pellets constituted a "mark" and thus a "trade mark" under Section 68 of the Trade Marks Act 1938.
2. Secondary Issue: If the colour combinations were marks, whether they were inherently distinctive and registrable under Section 9 of the Act.
3. Ancillary Issue: Whether the registration should be limited to the specific drugs for which each colour combination was used, as ordered by Graham J.

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Detailed Submission of Parties

Appellants (SKF), represented by T.A. Blanco White, Q.C. and Robin Jacob:

• On the Definition of "Mark":
  • The term "mark" in Section 68(1) is inclusive, not exhaustive, and should be given a broad interpretation in line with ordinary English usage, where a thing can be "marked all over."
  • There is no statutory requirement that a mark be distinct from the goods or limited to a portion of their surface. The Act’s language, including "use upon" or "in physical relation to" goods (Section 68(2)), supports marks incorporated into the goods’ structure.
  • Trade mark practice allows registration of marks like labels (e.g., Oxo cube) or woven patterns (e.g., Reddaway’s stripes), and there is no principled difference if the mark covers the entire surface.
  • English cases, such as Reddaway (F.) & Co. Ltd.’s Application (No. 1) (1914) 31 R.P.C. 147 and Winterbottom Book Cloth Co. Ltd.’s Application (1925) 42 R.P.C. 450, support the registrability of colour-based marks integrated into goods.
  • The Australian decision in Smith, Kline & French Laboratories (Australia) Ltd. v. Registrar of Trade Marks [1972] R.P.C. 519 (Windeyer J.) was inconsistent with English authorities and commercially impractical, as it required marks to be depicted apart from the goods.
• On Distinctiveness:
  • The colour combinations were conceded to be factually distinctive, as they were recognised as SKF’s in the market.
  • They were also inherently distinctive, as no other trader would legitimately need to use identical or similar colour schemes without improper motive, per Lord Parker’s test in W. & G. Du Cros Ltd.’s Application (1913) 30 R.P.C. 660.
  • Unlike word marks refused for descriptiveness (e.g., Yorkshire Copper Works (1954) 71 R.P.C. 150), these were novel, non-descriptive device marks, inherently capable of distinguishing SKF’s goods.
• On Limitation:
  • Limiting registration to specific drugs was unnecessary, as the marks distinguished SKF’s goods generally, and passing off law would protect against misuse.

Respondents (Sterling-Winthrop), represented by G.D. Everington, Q.C. and Anthony Rogers:

• On the Definition of "Mark":
  • A "mark" must be distinct from the goods and capable of being described or depicted separately, not merely a description of the goods’ appearance.
  • The colour combinations were the entire three-dimensional appearance of the capsules, not a mark applied to them, akin to the dome-shaped black lead in James’s Trade Mark (1886) 3 R.P.C. 340, which was held non-registrable as a mere depiction of the goods.
  • Section 68(1)’s examples (device, brand, etc.) imply a mark is a graphic or superficial symbol, not the goods’ overall get-up.
  • The Reddaway case (1914) involved a distinct mark (stripes), not the entire appearance, and thus supported their position.
  • The Australian decision (Smith, Kline & French [1972] R.P.C. 519) correctly held that a mark must be separable from the goods, and this reasoning should apply.
  • Allowing registration of appearances as trade marks would blur the line with registered designs under the Registered Designs Act 1949, potentially allowing perpetual monopolies (unlike the 15-year limit for designs) and enabling manufacturers to preempt colour combinations.
• On Distinctiveness:
  • Even if the colour combinations were marks, they lacked inherent distinctiveness, as other manufacturers might legitimately wish to use similar colour schemes to identify their drugs.
  • The Assistant Registrar’s discretion, informed by his expertise, should be upheld unless clearly wrong.
  • Graham J.’s decision to limit registration to specific drugs was inconsistent with finding inherent distinctiveness, as it implied the marks were not broadly distinctive.
• On Policy Concerns:
  • Registering appearances as trade marks could lead to market uncertainty, allowing manufacturers to register numerous colour combinations preemptively, stifling competition.
  • The Trade Marks Act should not encroach on the domain of the Registered Designs Act, which is better suited to protect appearances.

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Detailed Discussion on Judgments and Citations

Judgments:

1. Assistant Registrar (Mr. R.L. Moorby, 2 November 1971):
   • Found the colour combinations to be "marks" under Section 68, capable of being trade marks.
   • Refused registration due to lack of inherent distinctiveness, interpreting Lord Parker’s test in W. & G. Du Cros (1913) 30 R.P.C. 660 as requiring that no other trader would legitimately desire to use similar marks.
   • Considered Reddaway (No. 1) (1914) 31 R.P.C. 147 as supporting colour-based marks but distinguished Smith, Kline & French (Australia) [1972] R.P.C. 519.
2. High Court (Graham J., 14 June 1973, [1974] R.P.C. 91):
   • Upheld the colour combinations as "marks," relying on Reddaway (No. 1) and dismissing Smith, Kline & French (Australia) due to perceived differences in application forms.
   • Found the marks both factually and inherently distinctive, reversing Moorby on the latter point.
   • Limited registration to specific drugs, citing potential passing off protection for broader use.
   • Referenced Hoffmann-La Roche v. D.D.S.A. Pharmaceuticals [1972] R.P.C. 1 and Roche Products Ltd. v. Berk Pharmaceuticals [1973] R.P.C. 461, though these were passing off cases, not directly relevant.
3. Court of Appeal (Russell, Buckley, Lawton LJJ, 8 May 1974, [1974] 1 W.L.R. 861; [1974] F.S.R. 455):
   • Unanimously held that the colour combinations were not "marks," as they described the entire external appearance of the capsules.
   • Russell LJ emphasized that a mark must be distinct from the goods, citing James’s Trade Mark (1886) 33 Ch.D. 392 and Smith, Kline & French (Australia) [1972] R.P.C. 519.
   • Buckley LJ argued that the Act’s language (e.g., "use upon" in Section 68(2)) implied a mark is a graphic or superficial symbol, not the goods’ appearance.
   • Lawton LJ relied on dictionary definitions and James’s Trade Mark to conclude that a mark cannot be the goods’ overall appearance.
   • Did not address distinctiveness, as the primary issue was dispositive.
4. House of Lords (Lord Diplock, Lord Simon of Glaisdale, Lord Cross of Chelsea, Lord Kilbrandon, Lord Salmon, [1976] R.P.C. 511):
   • Lord Diplock delivered the leading speech, with others concurring.
   • Held that the colour combinations were "marks" and registrable trade marks, overturning the Court of Appeal.
   • Found no statutory or business rationale for excluding marks covering the entire visible surface of goods.
   • Upheld Graham J.’s finding of inherent distinctiveness and removed the drug-specific limitation.

Citations and Their Context:

1. Reddaway (F.) & Co. Ltd.’s Application (No. 1) (1914) 31 R.P.C. 147:
   • Context: Registration of three coloured stripes (blue, red, blue) woven into fire hoses, limited to use throughout the hose’s length.
   • Referred by SKF to show that colour-based marks integrated into goods are registrable.
   • House of Lords followed, rejecting the Court of Appeal’s attempt to limit its scope to partial markings.
2. Reddaway (F.) & Co. Ltd.’s Application (No. 2) (1925) 42 R.P.C. 397; (1927) 44 R.P.C. 27 (H.L.):
   • Context: Refusal of registration for similar stripes for export hoses, due to lack of UK distinctiveness.
   • Cited to confirm the correctness of the first Reddaway case, with Viscount Dunedin endorsing Warrington J.’s reasoning.
3. James’s Trade Mark (1886) 33 Ch.D. 392; 3 R.P.C. 340:
   • Context: Validity of a dome-shaped mark for black lead, upheld as a distinct mark affixed to goods, not a monopoly over the shape.
   • Sterling-Winthrop relied on Lindley LJ’s dictum (“a mark must be distinct from the thing marked”) to argue that the capsule’s appearance was not a mark.
   • House of Lords distinguished, noting the mark in James was separate from the goods’ shape, and the dictum was context-specific.
4. Smith, Kline & French Laboratories (Australia) Ltd. v. Registrar of Trade Marks [1972] R.P.C. 519:
   • Context: Australian refusal to register similar colour combinations, as they were not distinct from the goods.
   • Sterling-Winthrop relied on Windeyer J.’s test that a mark must be depicted apart from the goods.
   • House of Lords rejected this test as overly restrictive and inconsistent with Reddaway.
5. W. & G. Du Cros Ltd.’s Application (1913) 30 R.P.C. 660 (H.L.):
   • Context: Lord Parker’s test for inherent distinctiveness, focusing on whether other traders would legitimately desire to use the mark.
   • Cited by both parties on distinctiveness; House of Lords applied it to find SKF’s marks inherently distinctive.
6. Charles Goodall & Son Ltd. v. John Waddington Ltd. (1924) 41 R.P.C. 658:
   • Context: Dictum by Sargant LJ distinguishing designs (part of goods) from trade marks (extra, indicating origin).
   • Sterling-Winthrop cited to argue that the capsule’s appearance was akin to a design.
   • House of Lords clarified that the dictum did not preclude marks integrated into goods.
7. Parke Davis & Co.’s Application [1976] F.S.R. 195 (Ireland):
   • Context: Registration of a blue band around a capsule as a mark.
   • SKF cited to show judicial acceptance of colour-based marks, though the House of Lords noted it was not directly on point.
8. Hoffmann-La Roche v. D.D.S.A. Pharmaceuticals [1972] R.P.C. 1:
   • Context: Passing off case involving capsule colours.
   • Graham J. cited Harman LJ’s use of “mark” to support registrability, but the House of Lords dismissed its relevance, as it was not a trade mark case.
9. Roche Products Ltd. v. Berk Pharmaceuticals [1973] R.P.C. 461:
   • Context: Another passing off case.
   • Cited by Graham J., but deemed irrelevant by the House of Lords.
10. Winterbottom Book Cloth Co. Ltd.’s Application (1925) 42 R.P.C. 450:
    • Context: Registration of a red line at each selvedge of tracing cloth.
    • SKF cited to support colour-based marks, reinforcing Reddaway.
11. Yorkshire Copper Works (1954) 71 R.P.C. 150 (H.L.):
    • Context: Refusal of a geographical name as a trade mark due to lack of distinctiveness.
    • SKF cited to distinguish word marks from device marks like theirs.

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Detailed Reasoning and Analysis of Judge (Lord Diplock, House of Lords)

On the Definition of "Mark":

• Statutory Interpretation:
  • Section 68(1) defines "trade mark" as a "mark" used to indicate trade origin, with "mark" including a non-exhaustive list (device, brand, etc.). The broad ordinary meaning of "mark" encompasses visual indications, including those covering the entire surface.
  • Section 68(2) allows marks to be used "upon" or "in physical relation to" goods, supporting marks integrated into the goods’ structure (e.g., headings in textiles).
  • Nothing in the Act or Trade Marks Rules 1938 (e.g., Rules 23, 28) requires a mark to be two-dimensional or partial. Rule 28’s provision for specimens accommodates three-dimensional marks like SKF’s capsules.
• Commercial Purpose:
  • The colour combinations fulfilled the trade mark’s purpose of distinguishing SKF’s goods, as evidenced by market recognition and the concession of passing off.
  • Excluding marks covering the entire surface would be irrational, as no business purpose justifies distinguishing between partial and complete coverage.
• Precedents:
  • Reddaway (No. 1) (1914) was authoritative, showing that colour-based marks (stripes) woven into goods are registrable, even if position-specific. Extending the stripes to the entire surface would not change their status as a mark.
  • James’s Trade Mark was distinguished, as the dome-shaped mark was a separate device, not the goods’ shape, and Lindley LJ’s dictum was context-specific.
  • Smith, Kline & French (Australia) was rejected, as Windeyer J.’s test (mark depicted apart from goods) was overly restrictive and conflicted with Reddaway. The dichotomy between describing goods with or without markings was elusive.
  • Charles Goodall’s dictum was clarified to mean that designs and trade marks are not mutually exclusive, and SKF’s colours were “extra” to denote origin.

On Distinctiveness:

• Statutory Framework:
  • Section 9(1)(e) allows registration of “any other distinctive mark,” with “distinctive” defined in Section 9(2) as adapted to distinguish the proprietor’s goods.
  • Section 9(3) considers both inherent and factual distinctiveness. SKF’s marks were factually distinctive, as conceded.
• Inherent Distinctiveness:
  • Lord Parker’s test (W. & G. Du Cros) asks whether other traders would legitimately desire to use the same or similar marks without improper motive.
  • The Assistant Registrar erred in extending “some mark nearly resembling it” to any colour-based marking, as Lord Parker meant only deceptive marks. Since SKF’s marks, if copied, would constitute passing off, no legitimate use by others was plausible.
  • The marks were novel, non-descriptive, and unlikely to be needed by competitors, satisfying inherent distinctiveness.
• Judicial Discretion:
  • Section 52 grants the judge the same discretion as the Registrar. Graham J.’s reversal of Moorby was correct, and appellate courts should not lightly interfere.

On Limitation:

• The drug-specific limitation was unnecessary, as the marks distinguished SKF’s goods broadly, and no commercial purpose justified restriction.

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Final Decision

The House of Lords unanimously allowed SKF’s appeal, overturning the Court of Appeal’s decision. The Registrar was ordered to proceed with the registration of the ten trade marks as described in the Trade Marks Journal (11 January 1967), without limitation to specific drugs.

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Law Settled in This Case

1. Definition of "Mark":
   • A mark under Section 68 of the Trade Marks Act 1938 can include the entire visible surface of the goods, provided it serves the trade mark’s purpose of indicating trade origin.
   • There is no statutory or judicial requirement for a mark to be distinct from the goods or limited to a portion of their surface.
2. Registrability of Unconventional Marks:
   • Colour combinations and three-dimensional appearances can be registrable as trade marks if they are visually representable and distinctive, aligning with the Act’s flexible definition of "mark."
3. Inherent Distinctiveness:
   • A mark is inherently distinctive if no other trader would legitimately desire to use it or a deceptively similar mark without improper motive, per Lord Parker’s test.
   • Novel, non-descriptive device marks are likely to satisfy this test.
4. Scope of Registration:
   • Registration need not be limited to specific goods within a class if the mark distinguishes the proprietor’s goods generally.
5. Relationship with Designs:
   • The Trade Marks Act and Registered Designs Act serve distinct purposes, and registrability as a trade mark is not precluded by potential design protection.

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Case Details

• Case Title: Smith, Kline & French Laboratories Ltd. v. Sterling-Winthrop Group Ltd.
• Date of Order: 21 May 1975 (published in [1976] R.P.C.)
• Case No.: Not explicitly stated in the report (Trade Mark Application Nos. 849,766–849,776)
• Neutral Citation: [1976] R.P.C. 511
• Name of Court: House of Lords
• Name of Judge: Lord Diplock (leading judgment), with Lord Simon of Glaisdale, Lord Cross of Chelsea, Lord Kilbrandon, and Lord Salmon concurring.

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

Midas Hygiene Industries Pvt. Ltd. Vs Sudhir Bhatia

In matters of involving infringement of trademarks and copyrights, injunctions should ordinarily follow 

Introduction:

In the intricate world of intellectual property rights, where brand identity is paramount, the role of prior use, dishonest adoption, and delay in legal action often come under judicial scrutiny. The Supreme Court of India’s judgment in Midas Hygiene Industries Pvt. Ltd. and Another vs Sudhir Bhatia and Others serves as a pivotal precedent, illustrating that in cases involving copyright or trademark infringement, equitable relief such as injunctions cannot be denied merely on grounds of delay if prima facie dishonesty is established. The case reaffirms the principle that commercial morality and the sanctity of original innovation must be protected against opportunistic infringement.

Detailed Factual Background:

Midas Hygiene Industries Pvt. Ltd., the appellant in this case, is a manufacturer of insecticides and insect repellents, well-known for its product branded under the term "Laxman Rekha." This phrase, rooted in Indian mythology, had acquired significant brand identity due to its continuous use by Midas since 1991. The company also claimed copyright ownership over the packaging and artistic features associated with this branding.

Sudhir Bhatia, the principal respondent, was a former employee of Midas Hygiene. Post his association with the appellant, Bhatia entered the market with a similar product under the name “Magic Laxman Rekha,” adopting packaging and branding elements that bore a striking resemblance to Midas's products. The similarities extended not only to the name but also to the color scheme, layout, and design of the cartons—elements protected by copyright under the artistic works of Midas.

Detailed Procedural Background:

Midas initiated a civil suit against the respondents, alleging passing off, infringement of copyright, and seeking injunctive relief under Order 39 Rules 1 and 2 of the Code of Civil Procedure. A Single Judge of the Delhi High Court granted interim injunction in favor of Midas, restraining the respondents from using the disputed mark and packaging. The learned judge noted the prior use of the mark by the plaintiff and the suspicious similarity in the packaging adopted by the respondent.

The defendants appealed to a Division Bench of the Delhi High Court, which vacated the injunction on the ground of delay and laches, stating that the plaintiff's inaction in initiating proceedings for a considerable time disentitled them from the equitable remedy of injunction. Aggrieved by this, Midas approached the Supreme Court.

Issues Involved in the Case:

The principal issues before the Supreme Court were: Whether a plaintiff can be denied interim relief in cases of clear trademark or copyright infringement solely due to delay in approaching the court?Whether prima facie dishonesty in adoption of a mark or trade dress mandates injunctive relief?The role of prior employment and insider knowledge in assessing the intent behind adoption of similar branding?

Detailed Submission of Parties:

The appellants contended that they had been using the mark "Laxman Rekha" and the associated packaging since 1991. They highlighted advertisements and registration of copyrights to establish their claim. The appellants argued that the respondents, with prior knowledge gained during their employment, had deliberately adopted the same brand identity to mislead consumers and gain market advantage.

The respondents, on the other hand, did not deny the plaintiffs’ use of the mark but argued that the appellants delayed in bringing the action, and therefore, equitable relief such as injunction should not be granted. They also claimed continuous usage since 1992 and attempted to justify the adoption of the name and packaging as independently developed.

Detailed Discussion on Judgments Along with Citations Cited:

The Supreme Court reiterated the well-established principle that in cases involving copyright or trademark infringement, injunctions are not to be denied merely on the basis of delay if dishonesty in the adoption of the mark or packaging is evident. The Court cited its own precedent in Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448, to support the contention that equitable doctrines like delay or acquiescence cannot be used as shields by a person who has acted dishonestly.

The Court also referred to the copyright ownership in the artistic work “Laxman Rekha” registered by the appellants since November 19, 1991, and its renewal in 1999. Further, the respondent's trademark registration application, wherein they claimed continuous use of "Magic Laxman Rekha" since 1992, was also scrutinized for lacking any credible explanation regarding the adoption of an almost identical trade dress.

Detailed Reasoning and Analysis of Judge:

The Bench emphasized that the adoption of the mark by the respondents appeared prima facie dishonest, especially considering the absence of any satisfactory explanation for choosing the same name and packaging style. The Supreme Court gave weight to the prior employment of the respondent with the appellant, observing that such a relationship raised serious concerns about the origin of the respondent’s branding strategy.

The Court observed that the use of red, white, and blue colors in the respondent's cartons, similar to that of the appellants, further suggested an intent to deceive the public. The Court found it unacceptable that the Division Bench of the High Court vacated the injunction purely based on delay, disregarding the dishonest intention clearly demonstrated in the factual matrix.

Final Decision:

The Supreme Court allowed the appeal and set aside the order of the Division Bench of the Delhi High Court. The order of the Single Judge granting the interim injunction was restored. The Court reiterated that all observations made were prima facie and shall not influence the final adjudication of the suit.

Law Settled in This Case:

The case authoritatively established that in matters of intellectual property infringement, particularly those involving trademarks and copyrights, injunctions should ordinarily follow if the infringement is prima facie established. Delay in initiating legal action does not, by itself, defeat a claim for injunction when there is evidence of dishonest adoption. This decision reinforces the protection of prior use and artistic expression, ensuring that commercial dishonesty does not benefit from procedural technicalities.

Case Title: Midas Hygiene Industries Pvt. Ltd. and Another Vs Sudhir Bhatia and Others

Date of Order: 22 January 2004

Neutral Citation: (2004) 3 SCC 90

Name of Court: Supreme Court of India

Name of Judges: Hon'ble Justices S.N. Variava and H.K. Sema

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

Maya Appliances Private Limited Vs Vibrant Concepts And Designs

Use of deceptively similar packaging, fonts, and colors constitutes not only infringement but also passing off.

Introduction:

Trademark conflicts in the consumer appliances sector have seen a surge with increasing brand consciousness and aggressive marketing tactics. The case of Maya Appliances Private Limited vs Vibrant Concepts And Designs is a classic example that draws attention to the nuances of prior use, deceptive similarity, and goodwill associated with trademarks. It reflects how courts interpret statutory provisions in light of facts, commercial honesty, and the intention behind adopting certain marks.

Detailed Factual Background:

Maya Appliances Private Limited, a well-established company known for manufacturing and selling kitchen appliances including mixer grinders, operates under the trademark "BUTTERFLY" and related marks like “BUTTERFLY PREMIUM”, “BUTTERFLY RAPID”, “BUTTERFLY SMART”, etc. The trademark “BUTTERFLY” was registered as early as 1972, and the company claims consistent and continuous use of the mark for over five decades.

The plaintiff alleged that Vibrant Concepts And Designs (defendant), a relatively newer entrant in the market, began manufacturing and selling similar appliances under the impugned mark “Butterfly India”, incorporating it prominently on their packaging and product materials. This adoption, according to Maya Appliances, was dishonest and intended to ride on the goodwill and reputation associated with their mark. The usage of identical and confusingly similar marks on identical products like mixer grinders was causing deception among consumers and amounting to infringement and passing off.

Detailed Procedural Background

Maya Appliances filed a civil suit seeking a permanent injunction against the defendant from using the marks “Butterfly India” or any other mark deceptively similar to “BUTTERFLY” in relation to goods falling under class 7 and class 11, particularly kitchen appliances like mixer grinders. An interlocutory application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code, 1908 was also moved seeking temporary restraint against the defendant during the pendency of the suit.

Issues Involved in the Case

The case primarily revolved around the following legal issues:

Whether the defendant’s use of the mark “Butterfly India” amounts to infringement of the plaintiff’s registered trademark “BUTTERFLY”?

Detailed Submission of Parties:

The plaintiff submitted that the trademark “BUTTERFLY” was inherently distinctive and had acquired immense reputation through extensive and continuous use since 1972. It held numerous registrations for variations of the mark in classes 7 and 11, including “BUTTERFLY PREMIUM” (Reg. No. 3638185), “BUTTERFLY SMART” (Reg. No. 2874284), and others. Counsel argued that the mark had acquired the status of a well-known trademark under Section 11(6) of the Trade Marks Act, 1999.

It was further submitted that the packaging, get-up, and trade dress used by the defendant were a colorable imitation of the plaintiff’s packaging, creating confusion among consumers. Multiple grievances and instances of actual confusion were highlighted.

On the other hand, the defendant claimed that it was using the mark “Butterfly India” as part of its company’s brand strategy and denied any intention to deceive. The defendant also attempted to distinguish its products based on market segment and consumer base.

Detailed Discussion on Judgments and Case Laws Cited

The plaintiff relied on several landmark decisions, including:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 – where the Hon’ble Supreme Court held that in determining deceptive similarity, factors such as nature of marks, nature of goods, similarity in nature, and class of consumers must be considered.

Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145 – which emphasized that domain names, like trademarks, can be protected from passing off.

K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., AIR 1970 SC 146 – reinforcing that even phonetically similar marks can cause confusion and hence be injuncted.

Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183 – highlighting how prior use and registration confer a statutory right to seek injunctions in cases of deceptive similarity.

These judgments were cited in the context of reinforcing the distinctiveness of the plaintiff’s mark and the likelihood of confusion created by the defendant’s use.

Detailed Reasoning and Analysis of Judge:

The Hon’ble Judge analyzed the competing marks, packaging, and goods, noting that the defendant had adopted not only the mark “Butterfly India” but had also used packaging deceptively similar to that of the plaintiff, including identical font styles and color schemes. The Court emphasized that such mimicry went beyond mere coincidence and appeared to be a deliberate attempt to trade upon the plaintiff’s reputation.

It was held that the plaintiff had made out a prima facie case of infringement as well as passing off. The balance of convenience was found to be in favor of the plaintiff, and irreparable harm would be caused if the defendant was not restrained. The Judge further stated that merely adding the word “India” to “Butterfly” did not create sufficient distinction to avoid confusion.

Referring to Section 29 of the Trade Marks Act, 1999, the Court observed that use of a mark identical or deceptively similar to a registered mark for identical goods amounts to infringement, especially when it causes likelihood of confusion or association.

Final Decision

The Hon’ble High Court granted an ad interim injunction restraining the defendant, its agents, servants, and representatives from using the mark “Butterfly India” or any other deceptively similar mark in relation to mixer grinders or any other kitchen appliances during the pendency of the suit.

Law Settled in this Case:

The case reiterates that:

A registered trademark holder has the exclusive statutory right to protect its mark from misuse, even if a competitor tries to distinguish the impugned mark by suffixing generic country names.

Deceptive similarity is determined not just by visual or phonetic comparison but also by the overall impression, packaging, and intention of use.

Use of deceptively similar packaging, fonts, and colors constitutes not only infringement but also passing off.Well-known trademarks deserve broader protection against attempts to ride on their reputation.

Case Title: Maya Appliances Private Limited Vs Vibrant Concepts And Designs

Date of Order: 2 April 2024

Case No.: CS(COMM) 744/2023 

Neutral Citation: 2024:DHC:2445

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Anish Dayal

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

Mex Switchgears Pvt. Ltd Vs Omex Cables Industries

Common elements alone do not suffice unless they dominate the mark’s identity and deceive.

Introduction

In the dynamic arena of trademark law, the case of Mex Switchgears Pvt. Ltd vs Omex Cables Industries & Anr., decided on July 17, 2017, by the Delhi High Court, emerges as a gripping tale of brand identity, consumer perception, and the perils of delay. This legal skirmish pits Mex Switchgears, a veteran in the electrical goods sector with its registered "MEX" trademark, against Omex Cables Industries, a challenger wielding the "OMEXGOLD" mark. Delhi High Court ruling delves into the nuances of phonetic similarity, deceptive confusion, and the equitable defense of laches, ultimately underscoring the judiciary’s stringent stance on timely enforcement of trademark rights. This case study dissects the battle, revealing how statutory protections and procedural diligence shape the contours of intellectual property disputes in India’s competitive marketplace.

Detailed Factual Background

Mex Switchgears Pvt. Ltd., incorporated in 1979, traces its roots to a legacy beginning in 1960, when its predecessor first adopted the "MEX" trademark for electrical goods like switchgears, ignition switches, capacitors, and meters. Over the decades, the mark expanded to cover cognate products such as CFL bulbs, fuses, wires, and cables, earning a formidable reputation for quality. Registered under Classes 7, 9, and 11 of the Trade Marks Act, 1999, "MEX" became synonymous with Mex Switchgears, an integral part of its corporate identity. The company boasted impressive sales—evidenced by figures escalating from modest beginnings to substantial market presence—and invested heavily in advertising, spending over several lakhs annually to cement its brand equity. Certified by government bodies and endorsed by a loyal customer base, Mex Switchgears positioned "MEX" as a distinctive mark exclusively tied to its offerings, a claim bolstered by its successful oppositions to similar marks like "MAX" in prior legal battles.

In contrast, Omex Cables Industries entered the fray with its "OMEXGOLD" trademark, which it claimed to have used since 1995 for cables and related products. Alongside its authorized dealer, the second defendant, Omex sought to register "OMEXGOLD" in 2006 under Class 9, triggering an opposition from Mex Switchgears that remained pending as of 2017. Omex asserted a robust market presence, citing sales records from 2003-2004 and a reputation built on quality, arguing that its mark bore no intent to deceive or encroach on Mex’s goodwill. The conflict erupted when Mex discovered Omex’s use of "OMEX" in 2015, alleging that the phonetic and structural similarity to "MEX" threatened confusion among consumers, especially given the overlap in goods—electrical wires and cables—and trade channels. Mex contended that Omex’s adoption was a calculated move to ride on its established reputation, while Omex countered that "MEX" was a common term, incapable of exclusive appropriation.

Detailed Procedural Background

Mex Switchgears filed CS(OS) 2247/2015 before the Delhi High Court, seeking a permanent injunction against Omex Cables Industries and its dealer for trademark infringement, passing off, and damages, alongside an interim injunction via I.A. 15312/2015 under Order XXXIX Rules 1 & 2 CPC. The suit, initiated in 2015, accused Omex of violating Mex’s registered "MEX" trademark rights through the "OMEXGOLD" mark and its trade name. Omex contested the interim application, denying infringement and asserting prior use since 1995, while alleging Mex’s concealment of its 2006 opposition to Omex’s registration bid as evidence of unclean hands. The court’s focus rested on the interim relief, assessing Mex’s prima facie case, balance of convenience, and the impact of delay, culminating in a decision that dismissed the injunction plea and set the suit for further proceedings before the Roster Bench on July 20, 2017.

Issues Involved in the Case

The dispute crystallized around several pivotal questions. Did Omex’s "OMEXGOLD" mark infringe Mex’s registered "MEX" trademark under Section 29 by being phonetically, visually, or structurally similar, especially for allied goods? Could Mex claim exclusive rights over "MEX," or was it a generic term diluted by widespread use? Did Omex’s adoption amount to passing off by leveraging Mex’s goodwill and confusing consumers? Was Mex’s delay in filing the suit—despite awareness of Omex’s 2006 registration attempt—fatal to its claim for interim relief under the doctrines of laches and acquiescence? Finally, did the balance of convenience favor restraining Omex’s established market presence over protecting Mex’s trademark rights pending trial?

Detailed Submission of Parties

Mex Switchgears, anchored its case on its registered ownership of "MEX" since 1960, asserting statutory exclusivity under Section 28. Counsel argued that "MEX" was distinctive, integral to its corporate identity, and widely recognized, with sales and advertising figures underscoring its goodwill. They contended that "OMEXGOLD" was deceptively similar—phonetically ("MEX" vs. "OMEX") and structurally—likely to mislead average consumers, per precedents like IZUK Chemical Works v. Babu Ram (2007 (35) PTC 28 (Del)). Mex emphasized that both parties dealt in electrical goods through overlapping channels, amplifying confusion risks, and dismissed the "GOLD" suffix as irrelevant. Citing prior victories against "MAX" marks and its pending opposition to "OMEXGOLD," Mex denied acquiescence, arguing that passing off was a recurring cause of action unaffected by delay, as held in Pankaj Goel v. Dabur India Ltd. (2008 (38) PTC 49 (Del.)). They sought an interim injunction, claiming irreparable harm to their reputation without it.

Omex Cables countered that "OMEXGOLD" had been in use since 1995, predating Mex’s 2015 suit by two decades, and that Mex’s 2006 opposition proved prior awareness, rendering the suit tardy. Counsel argued no similarity existed—visually, phonetically, or structurally—between "MEX" and "OMEXGOLD," citing Kewal Krishan Kumar v. Kaushal Roller Flour Mills (PTC (Suppl) (1) 217 (Del)) to assert that common elements like "MEX" did not inherently confuse. Omex highlighted its distinct trade name and packaging, its honest adoption, and a thriving market reputation, evidenced by sales records. They accused Mex of concealing facts and argued that "MEX" was a common term, not exclusively Mex’s, while invoking delay and laches as bars to discretionary relief, per Shri Gopal Engineering v. POMX Laboratory (AIR 1992 Delhi 302).

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

Mex relied on a robust array of precedents. In IZUK Chemical Works v. Babu Ram Dharam Prakash (2007 (35) PTC 28 (Del)), the Delhi High Court held "MOONSTAR" and "SUPERSTAR" deceptively similar due to the shared "STAR" element, emphasizing phonetic similarity and average consumer perception (paras 14-19). Mex used this to argue that "MEX" within "OMEX" risked confusion. Thomas Bear and Sons (India) Ltd. v. Prayag Narain (AIR 1935 Allahabad 7), cited within IZUK (para 14), established that deception probability hinges on the average buyer’s ordinary caution, reinforcing Mex’s consumer confusion claim. Atlas Cycle Industries Ltd. v. Hind Cycles Limited (ILR 1973 I Delhi 393), cited in IZUK (para 15), clarified that essential features, not minute details, determine similarity, supporting Mex’s focus on "MEX" as the core element. Devi Pesticides Pvt. Ltd. v. Shiv Agro Chemicals Industries (2006 (32) PTC 434 (Madras) (DB)), cited in IZUK (para 18), found "BOOM" in "SUPERBOOM" infringing due to phonetic overlap, paralleling Mex’s "MEX"-"OMEX" argument. K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. (AIR 1970 SC 146) deemed "Ambal" and "Andal" phonetically similar, denying registration (para 13), a principle Mex applied to "MEX" and "OMEX." Encore Electronics Ltd. v. Anchor Electronics and Electricals Pvt. Ltd. (2007 (35) PTC 714 (Bom)) upheld phonetic similarity between "Encore" and "Anchor," granting an injunction (para 11), while Pankaj Goel v. Dabur India Ltd. (2008 (38) PTC 49 (Del) (DB)) found "HAJMOLA" and "RASMOLA" confusing due to "MOLA," dismissing delay as a bar in passing off cases (para 24), bolstering Mex’s stance.

Omex countered with Kewal Krishan Kumar v. Kaushal Roller Flour Mills Pvt. Ltd. (PTC (Suppl) (1) 217 (Del)), where "SHAKTI BHOG" and "MAHA SHAKTI BRAND" were held dissimilar despite the shared "SHAKTI," as they lacked phonetic or visual confusion (paras 14-17). Omex argued "MEX" and "OMEXGOLD" followed suit. Coca Cola Company of Canada Ltd. v. Pepsi Cola (1942 (59) RPC 127), cited in Kewal (para 16), distinguished "Coca" and "Pepsi" as the key identifiers over "Cola," suggesting "OMEX" differentiated from "MEX." Shri Gopal Engineering & Chemical Works v. M/s POMX Laboratory (AIR 1992 Delhi 302) denied interim relief due to a 15-month delay (para 11), a precedent Omex wielded against Mex’s nine-year gap since 2006. Warner Bros Entertainment Inc. v. Harinder Kohli (2008 (38) PTC 185 (Del)) similarly rejected interim relief for delay (para 8), reinforcing Omex’s laches defense.

Detailed Reasoning and Analysis of Judge

Delhi High Court analysis pivoted on trademark similarity and procedural equity. The Court acknowledged Mex’s registered rights under Section 28, granting exclusivity, and Section 29, defining infringement via identical or deceptively similar marks likely to confuse. The core question was whether "OMEXGOLD" infringed "MEX" phonetically, visually, or structurally. Examining the marks, she found no visual similarity—Mex’s logo and Omex’s stylized "OMEXGOLD" differed markedly—and noted distinct trade names ("Mex Switchgears Pvt. Ltd." vs. "Omex Cable Industries"). Phonetically, she leaned on Kewal Krishan Kumar, concluding that "MEX" and "OMEX" did not sound sufficiently alike to confuse an average buyer, with "O" and "GOLD" diluting any resemblance. Structurally, the addition of "GOLD" and Omex’s unique branding further distanced the marks, undermining Mex’s deception claim.

On infringement, Court held that mere use of "MEX" within "OMEX" did not suffice unless it replicated the essential feature with confusing similarity, per IZUK and Atlas Cycle. Unlike cases like "Hajmola" vs. "Rasmola," where "MOLA" was distinctive, "MEX" lacked such striking overlap with "OMEXGOLD." She distinguished Mex’s cited precedents—where phonetic pairs like "Andal-Ambal" or "Encore-Anchor" were near-identical—from the present case, aligning instead with Kewal’s finding of dissimilarity despite a common element. No evidence showed consumer confusion, and Omex’s established use since at least 2006 suggested independent goodwill.

The court emphasized delay. Mex’s 2006 opposition to Omex’s registration bid proved awareness, yet it waited until 2015 to sue, a nine-year gap unexplained beyond vague assertions of market absence. Citing Shri Gopal Engineering and Warner Bros, she ruled this delay fatal to interim relief, especially given Mex’s concealment of the 2006 opposition in its plaint, breaching clean hands. Applying Wander Ltd. v. Antox India (1991 PTC-1), she weighed convenience, finding Omex’s market presence since 2003-2004 outweighed Mex’s belated enforcement, dismissing the injunction plea.

Final Decision

On July 17, 2017, Justice Sharma dismissed I.A. 15312/2015, denying Mex Switchgears an interim injunction against Omex Cables Industries’ use of "OMEXGOLD." The court found no prima facie infringement or passing off, citing dissimilarity and Mex’s delay, and directed CS(OS) 2247/2015 to the Roster Bench for July 20, 2017, for further adjudication, noting her findings were preliminary.

Law Settled in This Case

The judgment reinforced that trademark infringement under Section 29 requires clear phonetic, visual, or structural similarity causing likely confusion, assessed from an average consumer’s imperfect recollection, not side-by-side comparison. It clarified that common elements alone do not suffice unless they dominate the mark’s identity and deceive. The decision entrenched delay and laches as potent bars to interim relief in trademark disputes, emphasizing timely action and full disclosure. It also underscored that passing off, while a recurring cause, does not override equitable defenses absent fraud, balancing statutory rights with procedural fairness.

• Case Title: Mex Switchgears Pvt. Ltd vs Omex Cables Industries & Anr.
• Date of Order: July 17, 2017
• Case No.: CS(OS) 2247/2015
• Neutral Citation:  (2017) 71 PTC 465 (Del)
• Name of Court: High Court of Delhi at New Delhi
• Name of Judge: Hon’ble Ms. Justice Deepa Sharma

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

Abdul Rasul Nurallah Virjee Vs. Regal Footwear

Acquiescence requires positive acts, not mere delay

Introduction:

In the bustling world of commerce, where brands battle for supremacy, the case of Abdul Rasul Nurallah Virjee and Another vs. Regal Footwear stands as a testament to the fierce protection of intellectual property rights. Decided on January 2, 2023, by the Bombay High Court, this legal skirmish revolves around the trademark "REGAL," a name synonymous with footwear for over half a century. The plaintiffs, claiming proprietorship since 1954, sought to restrain the defendant from using an identical mark, alleging infringement and passing off. The defendant countered with claims of prior use since 1963 and defenses of honest concurrent use and acquiescence. This case study delves into the intricate details of this trademark dispute, unraveling the factual tapestry, procedural journey, legal issues, arguments, judicial reasoning, and the final verdict that shaped the outcome.

Detailed Factual Background:

The plaintiffs, Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah Virjee, asserted their lineage to the "REGAL" trademark, tracing its use back to 1954 through their predecessor, M/s. Regal Footwear. They secured registration under the Trade Marks Act, 1999, with Registration No. 284961 in Class 25 for footwear (dated December 27, 1972) and Registration No. 1278782 in Class 42 for retailing services (dated April 15, 2004), both claiming use since 1954. Their business spanned manufacturing, distribution, and retail across India and exports to countries like the USA, Italy, and UAE, boasting sales of Rs. 425.54 crore from 1954 to 2017 and advertisement expenses of Rs. 7.88 crore. Evidence included sales invoices, income tax assessments, and advertisements from 1955 onwards, showcasing a robust commercial presence.

The defendant, Regal Footwear, a partnership firm based in Pune, claimed adoption of the "REGAL" mark on April 21, 1963, by its founder, Habib Dharmashi Shivani. Operating from 26, M.G. Road, Pune, since 1963, the defendant relied on a leave and license agreement from 1961, a shop license from 1963, and subsequent renewals to assert continuous use. A fire in 1999 allegedly destroyed early records, but the defendant produced post-1999 documents, including sales figures from 2005-2017 and a 2010 advertisement, to support its claim. The defendant expanded with new outlets in 2017 and 2018, prompting the plaintiffs’ legal action.

Tensions escalated when the plaintiffs opposed the defendant’s 2006 trademark application (No. 1422577) in 2008, which was rejected by the Trade Marks Registry in 2020, affirming the plaintiffs’ prior use. Consumer complaints in 2019 about product quality from the defendant’s stores, mistaken as the plaintiffs’, further fueled the dispute.

Detailed Procedural Background

The legal saga began with the plaintiffs filing Commercial IPR Suit No. 630 of 2017 in the Bombay High Court’s Commercial Division, accompanied by Notice of Motion No. 516 of 2017, seeking an interim injunction against the defendant’s use of "REGAL." An ad-interim order on July 24, 2017, directed the defendant to file a reply, with no immediate relief granted, and the defendant agreed not to claim equities from new shops. The plaintiffs’ appeal (Commercial Appeal (L) No. 54 of 2017) was dismissed, maintaining the status quo.

A second Notice of Motion (No. 1841 of 2018) addressed the defendant’s third shop opening, with the court allowing it on September 4, 2018, without equity claims, requiring four weeks’ notice for further expansions. The notices were heard together, with judgment reserved on August 30, 2022, and pronounced on January 2, 2023, by Justice R.I. Chagla.

Issues Involved in the Case

The case hinged on several pivotal issues: whether the defendant infringed the plaintiffs’ registered "REGAL" trademark; whether the defendant’s use constituted passing off; whether the defendant could claim prior continuous use under Section 34 of the Trade Marks Act, 1999; whether honest concurrent use was a valid defense to infringement; whether the plaintiffs acquiesced to the defendant’s use; and whether the plaintiffs’ alleged suppression of facts disentitled them to relief.

Detailed Submission of Parties

The plaintiffs, argued that their registered trademarks (Nos. 284961 and 1278782) with use since 1954 granted them exclusive rights. They presented extensive evidence—advertisements from 1955, income tax orders from 1956-1998, and invoices—to prove continuous use and goodwill. Kadam asserted that the defendant’s identical mark on identical goods/services infringed their rights under Section 29, with no statutory challenge to their registrations. He dismissed the defendant’s Section 34 defense, noting their 1963 use postdated 1954, and argued that honest concurrent use was not a defense under the 1999 Act, citing KEI Industries Ltd. v. Raman Kwatra and Hindustan Pencils Pvt. Ltd. v. India Stationary Products. On acquiescence, he relied on Power Control Appliances v. Sumeet Machines and Torrent Pharmaceuticals v. Wockhardt Pharma, requiring positive acts, not mere delay, which the plaintiffs negated by opposing the defendant’s 2008 application.

The defendantcountered that the plaintiffs suppressed knowledge of the defendant’s use since 1984 and 2004, citing nearby shops and a 1984 cease-and-desist notice, rendering their 2008 awareness claim false. They claimed prior use since 1963, supported by a 1963 license, tax records, and photographs, attributing gaps to the 1999 fire. Saraf argued honest concurrent use and acquiescence, citing Essel Propack v. Essel Kitchenware and Unichem Laboratories v. Eris Lifesciences, asserting the plaintiffs’ inaction for decades implied consent. He challenged the plaintiffs’ goodwill and confusion evidence as fabricated, urging denial of interim relief due to disputed facts requiring trial.

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

The plaintiffs cited Kamat Hotels (India) Ltd. v. Royal Orchid Hotels (2011 BOM CR 416) to argue that Section 34 requires continuous use predating the plaintiff’s use or registration, which the defendant failed to prove. Consolidated Foods Corporation v. Brandon and Co. (1961 (66) BOM L.R. 320) supported their claim of superior title via prior adoption. Satyam Infoway v. Siffynet Solutions Pvt. Ltd. (2004 6 SCC 145) reinforced this principle. KEI Industries Ltd. v. Raman Kwatra (Del HC CS (COMM) 9/2021) and Hindustan Pencils Pvt. Ltd. v. India Stationary Products (AIR 1990 Del 19) negated honest concurrent use as a defense, a stance echoed in Cadila Pharmaceuticals Ltd. v. Sami Khatib (2011 (47) PTC 69 (Bom) (DB)), Winthrop Products Inc. v. Eupharma Laboratories (1998 (18) PTC 213), and Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd. (1997 17 PTC 469). Power Control Appliances v. Sumeet Machines (1994 2 SCC 448) and Torrent Pharmaceuticals v. Wockhardt Pharma (Comm Appeal No. 125 of 2017, Bombay HC, dated November 17, 2017) clarified acquiescence requires positive acts, upheld by Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd. ((2018) 18 SCC 346). Schering Corp. v. Kilitch Co. (1994 IPLR 1) and Midas Hygiene v. Sudhir Bhatia (2004 3 SCC 90) dismissed delay as a defense, while Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 5 SCC 73) applied the comparable strength test.

The defendant relied on Brihan Karan Sugar Syndicate Pvt. Ltd. v. Karma Veer Shankarrao Kale Shahakari Sakhar Karkhana Ltd. (2018 (3) MH.L.J. 746) and Essel Propack v. Essel Kitchenware ((2016) 3 BCR 466) to argue suppression disentitled relief. Shri Gopal Engineering and Chemical Works v. Promx Laboratory (DRJ 1992 (22)) and Warner Bros Entertainment Ltd. v. Harinder Kohli (ILR 2009 I DEL 722) supported this. Yonex Kabushiki Kaisha v. Philips International ((2007) 35 PTC 345) backed acquiescence via delay, though later questioned. Gujarat Bottling Co. v. Coca-Cola Co. ((1995) 5 SCC 545) and Wander Ltd. v. Antox India P. Ltd. ((1990) Supp SCC 727) balanced interim relief considerations.

Detailed Reasoning and Analysis of Judge

The court meticulously dissected the case. The court first addressed the defendant’s suppression claim, finding the plaintiffs’ 2008 knowledge assertion contextual to the trademark application, not absolute ignorance, and deemed pre-2008 knowledge (e.g., 2006) immaterial given the 2017 suit filing, citing Midas Hygiene. The 1984 shop claim was dismissed due to lack of evidence and the partner’s 1976 retirement, negating imputed knowledge.

On prior use, the court found the plaintiffs’ 1954 use substantiated by advertisements, signed tax orders, and invoices, outweighing the defendant’s 1963 claim, supported only by a license and sparse records, undermined by the fire excuse and selective pre-1999 evidence. Section 34 required pre-1954 use, which the defendant failed to prove, per Kamat Hotels.

Honest concurrent use was rejected as a defense, aligning with KEI Industries and Hindustan Pencils, noting Section 12’s limited scope and the defendant’s implausible 1963 adoption story, contradicted by the license agreement and lacking firsthand evidence. Commercial dishonesty was inferred from the defendant’s use of the ® symbol and similar font post-2008 opposition.

Acquiescence failed the Power Control test, requiring positive acts, not mere delay, reinforced by Torrent Pharmaceuticals. The 2008 opposition was a negative act, and no encouraging conduct was shown. The defendant’s reliance on Essel Propack was overruled by Torrent.

Infringement and passing off were upheld due to identical marks, the plaintiffs’ prior use, goodwill, and consumer confusion evidence. The comparable strength test (Cadila Health Care) favored the plaintiffs, with irreparable harm outweighing the defendant’s loss, mitigated by its post-suit expansions on a no-equity basis.

Final Decision

The court granted the interim injunction in Notice of Motion No. 516 of 2017, restraining the defendant from using "REGAL" in footwear trade or retail, making it absolute in terms of prayer clauses (a) and (b). Notice of Motion No. 1841 of 2018 was disposed of as redundant. A four-week stay was granted, acknowledging the defendant’s long operation.

Law Settled in This Case

This case reaffirmed that prior use and registration confer superior trademark rights under Section 34, honest concurrent use is not a defense to infringement under the 1999 Act, and acquiescence requires positive acts, not mere delay, per Power Control and Torrent Pharmaceuticals. Suppression claims must materially affect the case to bar relief, and the comparable strength test guides interim relief.

Case Title: Abdul Rasul Nurallah Virjee Vs. Regal Footwear
Date of Order: January 2, 2023
Case No.: Commercial IPR Suit No. 630 of 2017
Neutral Citation: Name of Court: High Court of Judicature at Bombay
Name of Judge: Justice R.I. Chagla

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

Glanbia Performance Nutrition Limited Vs Hercules Nutra Pvt. Ltd.

Introduction

In the realm of intellectual property, trademarks serve as the lifeblood of brand identity, distinguishing one entity’s goods from another in the marketplace. The case of Glanbia Performance Nutrition Limited vs Hercules Nutra Pvt. Ltd. & Anr., adjudicated by the High Court of Delhi on April 2, 2025, exemplifies a classic trademark dispute where the prior use, goodwill, and deceptive similarity of marks collide. This legal showdown pits Glanbia Performance Nutrition Limited, an Ireland-based nutritional giant, against Hercules Nutra Pvt. Ltd., an Indian company, over the use of the “ON” mark with a swoosh arrow device in the nutraceutical industry. The judgment not only resolves a contentious cancellation petition but also underscores the sanctity of prior adoption and the perils of dishonest imitation in trademark law.

Detailed Factual Background

Glanbia Performance Nutrition Limited, incorporated in Ireland in January 1948, has been a prominent player in the nutritional products sector since 1986. Operating under its flagship brand “Optimum Nutrition,” abbreviated as “ON” with a distinctive swoosh arrow, Glanbia has built a global reputation over 35 years. The company began using the “ON” mark internationally in 1986 and introduced its products in India through distributors as early as 2000, with consistent sales since 2003. Glanbia secured trademark registration for the “ON” mark with the swoosh in India on July 12, 2007, under Class 5 (pharmaceuticals and dietary supplements), claiming use since February 1, 2003. The company also holds registrations for related marks like “OPTIMUM” and “OPTIMUM NUTRITION” in India and various jurisdictions such as the USA, Canada, and Singapore.

In contrast, Hercules Nutra Pvt. Ltd., the respondent, obtained registration for a similar “ON” mark with a swoosh-like device under Class 5, bearing registration number 1763297. Hercules claimed use of this mark since May 19, 2002, asserting that it inherited the mark from its predecessor-in-title, USA Drugs Pvt. Ltd., via an assignment deed dated September 1, 2020. Glanbia discovered Hercules selling nutraceutical products identical to its own—such as whey protein—on platforms like Amazon India and operating a website (www.onnutrition.co.in) that echoed Glanbia’s branding. After a cease-and-desist notice issued on May 19, 2022, was met with denial from Hercules, Glanbia filed a cancellation petition on September 7, 2023, seeking removal of Hercules’ mark from the trademark register.

Detailed Procedural Background

The case unfolded before the High Court of Delhi under the Intellectual Property Division as C.O. (COMM. IPD-TM) 229/2023. Glanbia sought cancellation of Hercules’ trademark under Section 57 of the Trade Marks Act, 1999, alleging that the registration contravened Sections 11 (likelihood of confusion) and 18 (application requirements). The petition was argued orally before Hon’ble Mr. Justice Amit Bansal on April 2, 2025. Glanbia was represented by Senior Advocate Mr. Satvik Varma, assisted by Ms. Sugandha Bh, Mr. Shantanu Parmar, and Mr. Balram, while Hercules was represented by Mr. Nishant Mahtta and Mr. S. Nithin. Both parties submitted extensive documentary evidence, including invoices, catalogues, website analytics, and promotional materials, to substantiate their claims of prior use and goodwill.

Issues Involved in the Case

The case hinged on several pivotal issues: (1) Whether Glanbia was the prior user of the “ON” mark with the swoosh arrow in India; (2) Whether Hercules’ mark was deceptively similar to Glanbia’s, causing confusion in the market; (3) Whether Hercules’ adoption of the mark was dishonest, intended to trade on Glanbia’s goodwill; and (4) Whether Hercules’ registration warranted cancellation under the Trade Marks Act, 1999.

Detailed Submission of Parties

Glanbia’s counsel, Mr. Satvik Varma, argued that Glanbia was the prior adopter of the “ON” mark, having used it globally since 1986 and in India since 2003, with registration secured in 2007. He emphasized Glanbia’s extensive goodwill, evidenced by invoices from 2000-2003, archived distributor websites from 2003, and analytics showing Indian traffic to www.optimumnutrition.com from 2007-2021. Varma contended that Hercules’ mark was identical in design and product class, falsely claiming use since 2002, while its earliest credible evidence was from 2006. He accused Hercules of copying the swoosh arrow to deceive consumers and ride on Glanbia’s reputation.

Hercules’ counsel, Mr. Nishant Mahtta, countered that their “ON” mark was distinct, featuring a ring rather than a swoosh, and that Hercules was the prior user through its predecessor, USA Drugs Pvt. Ltd., since 2002. He relied on an assignment deed from 2020 and invoices from 2006 onward to establish continuity of use. Mahtta argued that the marks were visually dissimilar and that Hercules’ explanation—“ON” as an abbreviation for “organism with nutrients”—justified its independent adoption.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context

While the judgment does not explicitly cite case law, the legal principles applied reflect established precedents in Indian trademark jurisprudence. Glanbia’s arguments align with N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714, where the Supreme Court upheld the rights of a prior user with trans-border reputation, even against a registered proprietor. The emphasis on deceptive similarity echoes Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, which established that marks must be compared as a whole for visual and phonetic similarity. Hercules’ reliance on prior use through assignment draws from Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd. AIR 1965 Bom 35, where assignment was recognized as a valid transfer of rights, though subject to proof of use. The court’s rejection of Hercules’ explanation as an afterthought mirrors Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449, where vague justifications for mark adoption were dismissed.

Detailed Reasoning and Analysis of Judge

Justice Amit Bansal meticulously analyzed the evidence and arguments. He first established Glanbia’s prior use, noting its registration from July 12, 2007, with a user claim from February 1, 2003, supported by invoices from 2000-2003 and catalogues linking product codes to the “ON” mark. The archived website evidence from 2003 and analytics from 2007-2021 reinforced Glanbia’s market presence and goodwill in India. In contrast, Hercules’ earliest invoice was from 2006, with gaps in documentation (no invoices from 2007-2008 or 2016-2019) and no depiction of the mark on products. The court found Hercules’ 2006 invoice from “Canadian Corp.” unreliable due to missing details like VAT and batch numbers, and its FSSAI license from 2020 further undermined its 2002 user claim.

Comparing the marks, Justice Bansal rejected Hercules’ claim of a “ring” design, finding the swoosh arrow deceptively similar to Glanbia’s. He noted that “ON” dominated Hercules’ mark, with “NUTRITION” and “GOLD” in smaller font, amplifying the likelihood of confusion. The judge dismissed Hercules’ “organism with nutrients” explanation as an afterthought, absent from its cease-and-desist reply, indicating dishonest adoption. Given the identical goods (nutritional supplements), the court concluded that Hercules’ mark violated public interest by creating confusion and traded on Glanbia’s goodwill, contravening Sections 11 and 18 of the Trade Marks Act, thus justifying cancellation under Section 57.

Final Decision

The court allowed Glanbia’s petition, directing the Trade Marks Registry to remove Hercules’ mark (registration no. 1763297) from the register. The Registry was instructed to comply via email notification of the order.

Law Settled in This Case

This case reaffirms that prior use and goodwill trump subsequent registration in trademark disputes, particularly when the later mark is deceptively similar and dishonestly adopted. It underscores the importance of credible evidence in proving user claims and the judiciary’s role in protecting consumers from market confusion under the Trade Marks Act, 1999.

Case Title: Glanbia Performance Nutrition Limited Vs Hercules Nutra Pvt. Ltd.

Date of Order: April 2, 2025

Case No.: C.O. (COMM. IPD-TM) 229/2023

Name of Court: High Court of Delhi at New Delhi

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

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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

Mars Incorporated Vs. Registrar of Trademarks

In a judgment rendered by the Hon’ble Mr. Justice Amit Bansal of the Delhi High Court on 2nd April 2025, the appeal titled Mars Incorporated v. Registrar of Trademarks & Ors., registered as C.A. (COMM.IPD-TM) 88/2024, presented a detailed examination of procedural compliance within the Indian trademark opposition regime. The appellant, Mars Incorporated, a globally renowned American multinational, contested the abandonment of its trademark application under Section 21(2) of the Trade Marks Act, 1999. The appeal culminated in a decision that clarified the standard of “service” under Section 21 and Rule 18 of the Trade Marks Rules, 2017.

Mars Incorporated, the appellant, is the proprietor of several globally recognised brands including MARS, SNICKERS, MILKY WAY, BOUNTY, TWIX, GALAXY, PEDIGREE, WHISKAS, and M&M’s. The dispute in question related to its trademark application no. 4083355 in Class 30, filed on 11th February 2019. The mark was published in the Trade Marks Journal on 13th September 2021, and was thereafter opposed by two parties: respondent no. 2 and respondent no. 3. The Registrar of Trademarks, via despatches dated 7th March 2022, allegedly served the Notice of Opposition on Mars.

On 6th February 2023, the Registry published a list of trademark applications deemed to have been abandoned, which included the appellant’s mark, on grounds that no counter-statement had been filed in response to the opposition. Mars contended that it had not received any Notice of Opposition, and hence, the statutory two-month window for filing a counter-statement under Section 21(2) of the Act never commenced.

To address the procedural mishap, Mars submitted affidavits from its legal representatives and agents asserting that no communication—either by email, post, or courier—had been received. It then filed a review petition dated 5th September 2023, which was dismissed by the Registrar via order dated 25th October 2024, thereby confirming the abandonment. Mars challenged this order through the instant appeal under Section 91 of the Trade Marks Act.

During the proceedings, the appellant’s counsel, Mr. Pravin Anand, argued that the Registrar erred in mechanically deeming the application abandoned without verifying actual service of the Notice of Opposition. Relying on judicial precedents including Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990; Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641; and Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309, he contended that without verifiable proof of service, the mandatory timeline under Section 21(2) does not begin to run.

The learned Central Government Standing Counsel, Ms. Nidhi Raman, appearing for respondent no. 1, the Trademark Registry, submitted that while email was sent on 7th March 2022, there was no record of delivery acknowledgement. Respondent no. 3, however, argued that the notice was emailed to the official address listed in the trademark application and that service should be deemed complete under Rule 18 of the Trade Marks Rules.

The crux of the matter revolved around the interpretation of Rule 18 vis-à-vis Section 21(2) of the Trade Marks Act. Section 21(2) mandates that the Registrar serve the opposition notice on the applicant, who must then file a counter-statement within two months of receipt. Rule 18(2), however, states that service is “deemed” to have been completed at the time of sending the email. This discrepancy gives rise to an interpretational conflict: while the Act predicates the response period on actual receipt, the Rules suggest that mere dispatch suffices.

Justice Amit Bansal, after examining the statutory language, found that Rule 18 cannot override the express language of the parent statute. Referring with approval to the Madras High Court’s reasoning in Samsudeen A, he held that Rule 18 must be interpreted purposively to harmonise with Section 21(2), thereby requiring proof of actual receipt or constructive receipt for the abandonment to be valid.

The Court also noted that the impugned order of the Registrar did not adequately consider the affidavits produced by the appellant, nor did it provide any evidence of service beyond an email dispatch record. In fact, the Registrar’s own reasoning confirmed acknowledgment of service only on the part of the opponents and not the applicant. The absence of any delivery failure report does not amount to conclusive proof of service. Hence, the application could not have been legally abandoned under Section 21(2).

The decision of the Court, therefore, set aside the impugned abandonment order dated 25th October 2024 and remanded the matter to the Trademark Registry. The Registry was directed to re-serve the Notice of Opposition to Mars’ legal counsel within two weeks, and Mars was granted the opportunity to file its counter-statement as per statutory timelines.

The decision reaffirms the foundational procedural principle that abandonment of rights cannot occur without demonstrable and effective service. It emphasises that procedural rules must yield to the substantive requirement of ensuring fair opportunity and due process to trademark applicants.

This case significantly contributes to Indian trademark jurisprudence by resolving the interpretational tension between Section 21(2) of the Act and Rule 18 of the Rules, reinforcing that the statutory period for filing counter-statements must begin only upon actual receipt, not presumptive service. This interpretation will likely have a far-reaching impact on a host of trademark opposition proceedings, many of which have faced administrative setbacks due to procedural lapses or unverified email service.

In conclusion, the Delhi High Court has not only upheld the principles of natural justice and due process but has also provided judicial clarity on an increasingly relevant procedural ambiguity. The ruling strikes a balance between administrative efficiency and procedural fairness in trademark adjudication, restoring confidence in the opposition process for international and domestic applicants alike.

Neutral Citation: Mars Incorporated v. Registrar of Trademarks & Ors., 2025:DHC:2463

Court: High Court of Delhi

Coram: Hon’ble Mr. Justice Amit Bansal

Date of Judgment: 2nd April 2025:C.A.(COMM.IPD-TM) 88/2024

Relevant Statutes: Trade Marks Act, 1999 – Section 21(2); Trade Marks Rules, 2017 – Rule 18

Citations Relied Upon:

• Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990

• Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641

• Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309

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