Kohinoor Seed Fields India Pvt Ltd Vs Veda Seed Sciences Pvt Ltd

Introduction

In the realm of intellectual property law, territorial jurisdiction often emerges as a pivotal battleground, shaping the trajectory of trademark disputes. The case of M/s Kohinoor Seed Fields India Pvt Ltd v. M/s Veda Seed Sciences Pvt Ltd, adjudicated by the High Court of Delhi, exemplifies this struggle, where the plaintiff’s attempt to anchor a trademark infringement suit in Delhi was challenged on jurisdictional grounds. This case delves into the intricate interplay between the Trade Marks Act, 1999, and the Code of Civil Procedure, 1908 (CPC), particularly under Section 134(2) and Section 20, respectively. Centered on the alleged infringement of trademarks associated with cotton hybrid seeds, the dispute underscores the judiciary’s stringent approach to jurisdictional claims, emphasizing the need for a clear cause of action within the forum state. The Delhi High Court’s ruling, delivered on April 16, 2025, reinforces the principles laid down in landmark precedents, offering critical guidance for corporations navigating multi-jurisdictional trademark litigation in India.

Detailed Factual Background

Kohinoor Seed Fields India Pvt Ltd, an Indian seed company with its registered office in New Delhi, has been a prominent player in the production and sale of Bollgard II (BG II) cotton hybrids across states like Madhya Pradesh, South Rajasthan, Gujarat, Maharashtra, Andhra Pradesh, Telangana, and Karnataka. Since 2014, Kohinoor developed and marketed cotton hybrids KSCH-207 BG II and KSCH-212 BG II under the brand names TADAAKHA and BASANT, respectively, and introduced KSCH-232 BG II under the brand name SADANAND in 2015. These trademarks, notably TADAAKHA and SADANAND, were registered with the Trade Marks Registry in Delhi, bolstering Kohinoor’s proprietary claims.

The defendant, Veda Seed Sciences Pvt Ltd, an Indian company based in Guntur, Andhra Pradesh, is engaged in producing and marketing agro inputs. Since 2014, Kohinoor and Veda maintained a non-exclusive co-marketing arrangement, renewed annually, for the distribution of five cotton hybrids. The latest Marketing Agreement, executed on January 1, 2022, in New Delhi, governed their relationship until December 31, 2022. This agreement permitted Veda to market Kohinoor’s hybrids in specified states, excluding Delhi, as Veda lacked a seed dealer license under the Seeds (Control) Order, 1983, for Delhi.

Tensions arose when Kohinoor, on September 27, 2022, notified Veda of its intent not to renew the Marketing Agreement. On October 1, 2022, Kohinoor informed its distributors that, starting with the Kharif 2023 season, it would sell directly, bypassing Veda. In October 2022, Kohinoor discovered that Veda was promoting and accepting advance bookings for BG II cotton hybrid seeds under the brand names VEDA TADAAKHA GOLD BG II, VEDA SADANAND GOLD BG II, and VEDA BASANT GOLD BG II, which Kohinoor alleged infringed its trademarks. Evidence of these bookings was received via WhatsApp from traders and distributors. Kohinoor issued a termination notice on November 25, 2022, granting Veda 15 days to rectify its actions. The Marketing Agreement was subsequently terminated on December 10, 2022.

Kohinoor filed a suit on November 29, 2022, before the Delhi High Court, seeking a permanent injunction against Veda for trademark infringement and passing off, alongside ancillary reliefs. Meanwhile, Veda filed a counter-suit (COS No. 6 of 2024) on February 23, 2024, in the Rangareddy District Court, Telangana, asserting rights over the impugned marks. Kohinoor responded with a transfer petition (T.P.(C) No. 1161/2024) before the Supreme Court, which, on November 22, 2024, stayed the Telangana proceedings pending the Delhi High Court’s decision on the jurisdictional challenge.

Detailed Procedural Background

The procedural journey commenced with Kohinoor filing the suit (CS(COMM) 828/2022) on November 29, 2022, before the Delhi High Court, accompanied by multiple interim applications. On December 1, 2022, the court granted an ad interim injunction, restraining Veda from manufacturing, selling, or advertising BT cotton hybrid seeds under Kohinoor’s trademarks TADAAKHA, BASANT, and SADANAND. Veda’s appeal against this order was dismissed by the Division Bench on December 15, 2022.

Veda filed an application (I.A. 2200/2023) under Order VII Rule 10 of the CPC, seeking the return of the plaint for lack of territorial jurisdiction and alleging material suppression of facts by Kohinoor. Notice was issued on February 6, 2023, and Kohinoor filed a reply. Arguments were heard on January 9, January 30, February 10, and February 24, 2025, with judgment reserved on the latter date. Written submissions were filed by Veda on March 4, 2025, and by Kohinoor on March 5, 2025. Additionally, Kohinoor filed an application (I.A. 2500/2025) under Order VII Rule 14, which was allowed, permitting the filing of additional documents.

The Supreme Court’s stay on the Telangana suit, issued on November 22, 2024, linked its adjudication to the outcome of Veda’s jurisdictional application in Delhi. The Delhi High Court, presided over by Hon’ble Mr. Justice Amit Bansal, delivered its judgment on April 16, 2025, addressing the jurisdictional challenge.

Issues Involved in the Case

The case presented several critical issues for adjudication. First, whether the cause of action for Kohinoor’s suit was partly based on the Marketing Agreement executed in Delhi? Second, whether a sufficient cause of action, including the listing of Veda’s products on e-commerce platforms like India Mart, existed within Delhi to justify the court’s jurisdiction? Third, whether Kohinoor could invoke jurisdiction based solely on its head office in Delhi, given its subordinate office in Telangana, where the cause of action allegedly arose. Fourth, whether Kohinoor’s failure to disclose its subordinate offices constituted material suppression affecting jurisdictional claims. Finally, whether judicial precedents supported or restricted the Delhi High Court’s jurisdiction in this trademark infringement suit.

Detailed Submission of Parties

Defendant argued that Plaintiff failed to satisfy the twin conditions of cause of action and place of business under Section 134(2) of the Trade Marks Act, 1999, read with Section 20 of the CPC. They contended that Kohinoor deliberately concealed its subordinate offices in Andhra Pradesh and Telangana, where it held seed dealer licenses and raised invoices, indicating active business operations. Veda emphasized that the Marketing Agreement restricted its activities to specified states, excluding Delhi, and that Veda lacked a license to sell seeds in Delhi, rendering any sales there impossible. The alleged infringing activities, including advance bookings, occurred in Telangana, Andhra Pradesh, and Karnataka, with no dynamic effect felt in Delhi. Veda argued that the India Mart listings were by third parties, not Veda, and did not facilitate orders in Delhi, citing Banyan Tree Holding v. A Murali Krishna Reddy, 2009 SCC OnLine Del 3780. They further noted that the suit, filed during the Marketing Agreement’s subsistence, was for trademark infringement, not breach of contract, and that mere trademark registration in Delhi did not confer jurisdiction.

Plaintiff countered that only the plaint’s averments should be considered under Order VII Rule 10, assumed true on a demurrer. They asserted that Kohinoor’s registered office in Delhi, where it ordinarily conducts business, and the registration of TADAAKHA and SADANAND with the Delhi Trade Marks Registry, vested jurisdiction under Section 134(2). Kohinoor argued that the Marketing Agreement, executed in Delhi, formed part of the cause of action, as Veda’s infringing use breached its terms. They highlighted that Veda’s seed packets appeared on e-commerce platforms like India Mart, accessible in Delhi, which, per Marico Limited v. Mukesh Kumar, 2018 SCC OnLine Del 13412, and Shakti Fashion v. Burberry Limited, 2022 SCC OnLine Del 1636, sufficed for jurisdiction. Kohinoor maintained that Section 134(2) and Section 20 of the CPC operate alternatively, and part of the cause of action—evidenced by advance bookings and WhatsApp communications—arose in Delhi, justifying the suit’s maintainability.

Detailed Discussion on Judgments Cited by Parties

The court examined several precedents cited by both parties, each shaping the jurisdictional analysis:

Indian Performing Rights Society v. Sanjay Dalia, (2015) 10 SCC 161: Veda relied on this Supreme Court ruling, which interpreted Section 62 of the Copyright Act, 1957, analogous to Section 134(2) of the Trade Marks Act. The court held that a plaintiff with a principal office where the cause of action arises must sue there, not at a subordinate office’s location, to prevent inconvenience to defendants. In Sanjay Dalia, the plaintiff’s suit in Delhi was dismissed as the cause of action arose in Maharashtra, where its principal office was located. This precedent was pivotal, supporting Veda’s argument that Kohinoor, with a subordinate office in Telangana where the cause of action arose, could not sue in Delhi.

Ultra Home Construction v. Purushottam Kumar Chaubey, (2016) 227 DLT 320 (DB): Cited by Veda, this Delhi High Court Division Bench decision clarified four jurisdictional scenarios under Section 134(2). Relevant here was the third scenario: when a plaintiff has a principal office (Delhi) and a subordinate office (Telangana), and the cause of action arises at the subordinate office’s location, the plaintiff must sue there, not at the principal office. The court applied Sanjay Dalia, dismissing a suit filed in Delhi where the cause of action arose in Jharkhand, where the plaintiff had a subordinate office. This directly supported Veda’s contention that Kohinoor’s suit belonged in Telangana.

Banyan Tree Holding v. A Murali Krishna Reddy, 2009 SCC OnLine Del 3780: Veda invoked this Division Bench ruling, which addressed jurisdiction in internet-based disputes. The court held that mere website accessibility in the forum state (Delhi) does not confer jurisdiction unless the defendant specifically targets the forum state for commercial transactions, causing harm to the plaintiff there. A passive or non-targeted interactive website does not suffice. Veda argued that the India Mart and Kalgudi listings, made by third parties and not targeting Delhi, did not establish jurisdiction, aligning with this precedent.

Radico Khaitan v. Nakshatra Distilleries & Breweries, 2017 SCC OnLine Del 7682: Veda cited this case, later reported as 2023 SCC OnLine Del 1224, where the Delhi High Court rejected jurisdiction in Delhi for a plaintiff with a corporate office in Delhi but a subordinate office in Mumbai, where the cause of action (defendant’s sales) arose. The court dismissed claims of “dynamic effect” in Delhi as insufficient, reinforcing Ultra Home and Sanjay Dalia. This supported Veda’s argument that Kohinoor’s jurisdictional claim based on Delhi’s head office was untenable.

Dhodha House v. S.K. Maingi, (2006) 9 SCC 41: The court, not explicitly cited by parties but referenced in the judgment, relied on this Supreme Court ruling to dismiss Kohinoor’s claim that trademark registration in Delhi conferred jurisdiction. The court clarified that jurisdiction arises from trademark use, not registration, undermining Kohinoor’s reliance on Delhi’s Trade Marks Registry.

Provident Housing v. Central Park Estates, 2022 SCC OnLine Del 2167: Kohinoor cited this Division Bench decision, arguing that a plaintiff’s registered office in Delhi suffices for jurisdiction. The court upheld jurisdiction based on the plaintiff’s Delhi office, but the cause of action’s location was not discussed, distinguishing it from the present case where the cause of action was contested. The court found this precedent inapplicable, as Ultra Home’s scenarios were not addressed.

CP Century Hardware v. Skywood Interior Solutions, 2024 SCC OnLine Del 326: Kohinoor relied on this case, where jurisdiction was upheld in Delhi due to explicit pleadings of the defendant’s clandestine sales in Delhi. The court distinguished it, noting Kohinoor’s plaint lacked similar averments of sales in Delhi, rendering the precedent irrelevant.

Marico Limited v. Mukesh Kumar, 2018 SCC OnLine Del 13412: Kohinoor cited this Single Judge decision, where jurisdiction was upheld due to the defendant’s products being sold in Delhi’s Big Bazaar and listed on India Mart. The court distinguished it, as Marico involved direct sales evidence and an interactive India Mart listing, unlike the third-party listings in Kohinoor’s case.

Shakti Fashion v. Burberry Limited, 2022 SCC OnLine Del 1636: Kohinoor relied on this case, where an India Mart listing with the defendant’s address suggested their involvement, warranting trial. The court distinguished it, noting Veda’s listings were by third parties with no such connection, making jurisdiction untenable.

T. Arvindandam v. T.V. Satyapal, (1977) 4 SCC 467: The court referenced this Supreme Court ruling to caution against clever drafting to create jurisdiction. It emphasized that courts must scrutinize plaints to prevent vexatious suits, supporting the rejection of Kohinoor’s jurisdictional claims.

Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393: The court cited this Single Judge decision, which, relying on Banyan Tree, rejected jurisdiction in Delhi for lack of evidence of defendant’s sales, aligning with Veda’s argument against India Mart-based jurisdiction.

HSIL v. Marvel Ceramic, 2017 SCC OnLine Del 11571: The court noted this Division Bench decision, following Ultra Home, to reinforce that jurisdiction lies where the cause of action and plaintiff’s office coincide, supporting the return of Kohinoor’s plaint.

These precedents collectively underscored the need for a tangible cause of action in the forum state and restricted jurisdiction when a plaintiff’s subordinate office aligns with the cause of action’s location.

Detailed Reasoning and Analysis of Judge

On the first issue—whether the cause of action stemmed from the Marketing Agreement—the court scrutinized paragraphs 49 and 50 of the plaint. Paragraph 49 defined the cause of action as Veda’s use of Kohinoor’s trademarks in October 2022, with no mention of the Marketing Agreement. Paragraph 50, while referencing the agreement’s execution in Delhi, framed the suit as a trademark infringement and passing off action, not a contract breach. Paragraphs 47 and 48 reserved Kohinoor’s rights for other causes of action, including contract breaches, and the application under Order II Rule 2 (I.A. 20138/2022) sought leave for future breach claims, confirming the suit’s limited scope. The court concluded that the Marketing Agreement did not contribute to the cause of action, negating Delhi’s jurisdiction on this basis.

On the second issue—whether a cause of action, including India Mart listings, arose in Delhi—the court found no averments or evidence of Veda’s sales in Delhi. The plaint relied solely on third-party listings on India Mart and Kalgudi, by Shiva Agro Agency (Karnataka) and Bhavani Seeds Center (Andhra Pradesh), respectively, with no option for Delhi deliveries. Applying Banyan Tree, the court held that mere website accessibility or third-party listings without specific targeting of Delhi for commercial transactions did not confer jurisdiction. Kohinoor’s claim that India Mart was a dynamic website lacked supporting evidence of orders or communications in Delhi. The court distinguished Marico and Shakti Fashion, noting their reliance on direct sales or defendant-linked listings, unlike Veda’s case. The absence of pleadings on Delhi-specific harm or dynamic effects, as required by Radico Khaitan, further undermined Kohinoor’s claim.

On the third issue—whether Kohinoor’s Delhi head office sufficed for jurisdiction despite a Telangana subordinate office—the court applied Sanjay Dalia and Ultra Home. Ultra Home’s third scenario was decisive: when a plaintiff has a principal office (Delhi) and a subordinate office (Telangana) where the cause of action arises, jurisdiction lies at the subordinate office. Kohinoor’s invoices confirmed its Telangana office, and the cause of action—Veda’s bookings in Telangana, Andhra Pradesh, and Karnataka—aligned with this location. The court rejected Kohinoor’s reliance on Provident Housing and CP Century Hardware, as they involved different factual contexts. Kohinoor’s failure to disclose its Telangana office, though not fatal, supported Veda’s suppression argument. The court invoked T. Arvindandam to reject Kohinoor’s clever drafting, which attempted to invoke jurisdiction via the Marketing Agreement and vague e-commerce references.

The court concluded that no part of the cause of action arose in Delhi, and Kohinoor’s head office could not override the subordinate office’s jurisdictional primacy where the cause of action occurred.

Final Decision

The Delhi High Court allowed Veda’s application (I.A. 2200/2023) on April 16, 2025, ordering the return of the plaint and pending applications under Order VII Rule 10 of the CPC to be presented in a court with jurisdiction, likely in Telangana. The court found no cause of action within Delhi’s territorial jurisdiction and held that Kohinoor’s Delhi head office did not confer jurisdiction given its subordinate office in Telangana, where the cause of action arose.

Law Settled in This Case

This case reinforces several principles in Indian trademark law and civil procedure. First, under Order VII Rule 10 of the CPC, courts assess jurisdiction based solely on the plaint’s averments and accompanying documents, assuming their truth. Second, Section 134(2) of the Trade Marks Act, 1999, allows suits at the plaintiff’s principal office only if no cause of action arises at a subordinate office’s location; otherwise, jurisdiction lies where the cause of action and subordinate office coincide, per Sanjay Dalia and Ultra Home. Third, mere accessibility of infringing products on e-commerce platforms like India Mart does not confer jurisdiction unless the defendant specifically targets the forum state for commercial transactions, causing harm there, as per Banyan Tree. Fourth, trademark registration in a forum state does not establish jurisdiction; actual use does, per Dhodha House. Finally, courts guard against clever drafting to create illusory jurisdiction, emphasizing a meaningful reading of the plaint to prevent vexatious litigation.

Cause Title: Kohinoor Seed Fields India Pvt Ltd Vs Veda Seed Sciences Pvt Ltd

Case Number: CS (COMM) 828/2022

Neutral Citation: 2025:DHC:2593

Date of Order: 16 April 2025 

Court: High Court of Delhi at New Delhi

Presiding Judge: Hon’ble Mr. Justice Amit Bansal

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

AbbVie Biotherapeutics Vs Assistant Controller of Patents and Designs

Introduction:

In the intricate domain of patent law, the case of AbbVie Biotherapeutics Inc. & Anr. v. Assistant Controller of Patents stands as a critical examination of the boundaries of permissible claim amendments under India’s Patents Act, 1970. Adjudicated by the High Court of Delhi, this case delves into the tension between innovation in biopharmaceuticals and the stringent requirements of patentability, particularly when transitioning from method-of-treatment claims to product claims. Centered on a patent application for an anti-cMet antibody-drug conjugate (ADC) intended for cancer treatment, the dispute highlights the challenges faced by global innovators in navigating India’s patent regime, which excludes methods of treatment from patentability. The judgment reinforces the judiciary’s commitment to upholding statutory limits on claim amendments, offering valuable insights for patent practitioners and biopharmaceutical companies seeking to protect their inventions in India.

Detailed Factual Background:

AbbVie Biotherapeutics Inc. and AbbVie Inc., both U.S.-based biopharmaceutical companies, filed a national phase patent application in India on December 17, 2018, under the Patent Cooperation Treaty (PCT) with application number PCT/US2017/033176, dated May 17, 2017. The application claimed priority from a U.S. patent application (US 62/337,796) filed on May 17, 2016. The subject matter focused on anti-cMet antibody-drug conjugates (ADCs) for treating cMet-overexpressing cancers, such as non-small cell lung cancer (NSCLC). The original specification and 137 claims filed with the PCT application were directed exclusively to methods of treatment, detailing dosing regimens (e.g., 0.15 mg/kg to 3.3 mg/kg, administered every 2 or 3 weeks), patient selection criteria (e.g., IHC scores of 2+ or H-scores of 150+), and therapeutic strategies for resistant tumors. No standalone product or composition claims for the ADC itself were included.

The specification described the ADC’s components, including antibody sequences, linkers, and drug-to-antibody ratios, but these were framed within the context of therapeutic use, not as independent inventions. The claims emphasized administration protocols, such as specific dosages (e.g., 2.7 mg/kg for NSCLC adenocarcinoma) and combination therapies with agents like erlotinib or PD1 inhibitors. On May 15, 2020, AbbVie requested examination of the application, and the First Examination Report (FER), issued on November 5, 2020, raised objections under Section 2(1)(j) for lack of industrial applicability and Section 3(i) for non-patentability of method-of-treatment claims. In response, AbbVie submitted amended claims on May 5, 2021, via Form 13, reducing the claim set to eight, with Claim 1 as an independent product claim for the anti-cMet ADC (conjugated with monomethyl auristatin E) and Claims 2–8 as dependent claims, including pharmaceutical compositions.

A hearing was scheduled for December 6, 2022, where the Patent Office reiterated objections under Sections 2(1)(j) and 3(i), and added a new objection under Section 59(1), alleging that the amended claims broadened the scope of the original claims. AbbVie filed written submissions on January 19, 2023, defending the amendments. However, on July 31, 2023, the Assistant Controller refused the application, citing violations of Sections 2(1)(j), 3(i), and 59(1). A subsequent review petition filed on October 26, 2023, under Section 77(1)(f) was dismissed on March 6, 2024, as time-barred, prompting AbbVie to appeal to the Delhi High Court.

Detailed Procedural Background:

The procedural journey began with the filing of the PCT national phase application on December 17, 2018, at the Indian Patent Office in Delhi. Following the request for examination on May 15, 2020, the FER was issued on November 5, 2020, identifying deficiencies in industrial applicability and patentability due to the method-of-treatment nature of the claims. AbbVie’s response on May 5, 2021, included a new set of eight claims, shifting the focus to the ADC as a product. The Patent Office scheduled a hearing for December 6, 2022, and communicated additional objections, including the impermissibility of the amendments under Section 59(1).

After the hearing, AbbVie’s written submissions on January 19, 2023, sought to justify the amendments as within the scope of the original specification. Despite these efforts, the Assistant Controller’s order on July 31, 2023, rejected the application, finding the amended claims impermissible and the original claims non-patentable. AbbVie’s review petition, filed on October 26, 2023, was dismissed on March 6, 2024, due to a delay beyond the statutory period. Aggrieved, AbbVie filed an appeal under Section 117A of the Patents Act, registered as C.A.(COMM.IPD-PAT) 44/2023, before the Delhi High Court. The appeal was heard by Hon’ble Mr. Justice Amit Bansal, who delivered the judgment on March 25, 2025, after considering arguments from both parties and reviewing the case records.

Issues Involved in the Case:

The case raised several critical issues for adjudication. First, whether AbbVie’s proposed amendments, converting method-of-treatment claims to product claims for an anti-cMet ADC, were permissible under Section 59(1) of the Patents Act, which limits amendments to disclaimers, corrections, or explanations. Second, whether the amended claims fell within the scope of the original specification and claims, as required by Section 59(1). Third, whether the original method-of-treatment claims were non-patentable under Section 3(i) and lacked industrial applicability under Section 2(1)(j). Fourth, whether the Controller’s rejection of the amendments as an attempt to circumvent statutory restrictions was justified. Finally, whether judicial precedents supported allowing such amendments in the context of PCT national phase applications.

Detailed Submission of Parties:

AbbVie’s counsel argued that the amendments were permissible under Sections 57 and 59 of the Act, asserting that amendments could be made at any time during the patent application’s lifecycle, including during the national phase. They contended that the amended product claims, directed to the anti-cMet ADC, were disclosed in the original specification, which detailed the ADC’s structure, linkers, and antibody sequences. Thus, the amendments complied with Section 59(1) by remaining within the scope of the original disclosure. AbbVie further argued that the Controller’s objections under Sections 2(1)(j) and 3(i) should be waived, as the amended claims avoided method-of-treatment limitations. They relied on Allergan Inc. v. Controller of Patents (2023 SCC OnLine Del 295), where the court permitted amendments from method-of-treatment to product claims, arguing that the present case was analogous.

The Assistant Controller’s counsel countered that the amendments violated Section 59(1) by broadening the scope of the original claims. They noted that the PCT application’s 137 claims and the national phase claims were exclusively method-of-treatment claims, with no standalone product claims. Under Section 138(4), national phase applications must mirror the PCT claims, allowing only deletions, not additions of new claim types. The amended claims, covering the ADC and compositions without treatment limitations, expanded protection to all uses, unlike the original claims’ focus on specific cancer treatments. The Controller argued that this constituted impermissible broadening, citing Nippon A & L Inc. v. Controller of Patents (2022 SCC OnLine Del 1909). They defended the impugned order as well-reasoned, asserting that the original claims were non-patentable under Section 3(i) and lacked industrial applicability under Section 2(1)(j).

Detailed Discussion on Judgments Cited by Parties:

The court considered several precedents cited by the parties, each addressing the scope of amendments and patentability:

Allergan Inc. v. Controller of Patents, 2023 SCC OnLine Del 295: AbbVie relied on this case, where the Delhi High Court allowed amendments from method-of-treatment to product claims in a PCT application. The court found the amendments within the specification’s scope, as they pertained to the same disease. However, the judgment did not explicitly analyze whether the amendments were disclaimers, corrections, or explanations, limiting its applicability. In the present case, the court distinguished Allergan, noting that AbbVie’s amended claims omitted disease-specific limitations, broadening the scope beyond the original NSCLC focus.

Nippon A & L Inc. v. Controller of Patents, 2022 SCC OnLine Del 1909: Cited by the Controller, this case clarified Section 59(1)’s requirements, stating that amendments must be disclaimers, corrections, or explanations, incorporate actual facts, and not claim matter beyond the original specification or broaden the claim scope. The court’s framework was pivotal, guiding the analysis that AbbVie’s shift to product claims expanded protection impermissibly, as the original claims were limited to therapeutic use.

Ovid Therapeutics v. Controller of Patents & Designs, 2024 SCC OnLine Del 875: This case, following Nippon, involved a patent application with method-of-treatment and composition claims. The Controller rejected amendments to composition-only claims for broadening the scope by omitting disease-specific limitations. The court upheld the rejection, finding the amendments violated Section 59(1). This precedent was directly applicable, as AbbVie’s amendments similarly removed NSCLC limitations, expanding the ADC’s protection to all uses.

Novartis AG v. Union of India, (2013) 6 SCC 1: The Supreme Court’s ruling, cited by the court, emphasized that Indian patent law discourages artful claim drafting to broaden protection beyond an invention’s intrinsic worth. This principle supported the Controller’s view that AbbVie’s amendments were a strategic attempt to sidestep Section 3(i)’s exclusion of method-of-treatment claims, reinforcing the rejection under Section 59(1).

These judgments collectively underscored the strict interpretation of Section 59(1), prioritizing fidelity to the original specification and claims over strategic amendments.

Detailed Reasoning and Analysis of Judge:

Court’s analysis was rooted in a rigorous interpretation of the Patents Act and judicial precedents. The court began by examining the original specification and claims, which focused exclusively on methods of treating cMet-overexpressing cancers, particularly NSCLC, with specific dosing regimens and patient criteria. The specification described the ADC’s components but only in the context of therapeutic use, not as a standalone product. The 137 PCT claims and national phase claims were similarly method-centric, with no independent product claims.

The court then assessed the amended claims, which shifted to a product claim for the anti-cMet ADC (with monomethyl auristatin E) and included composition claims. These amendments eliminated references to dosing, patient populations, and cancer types, seeking protection for the ADC itself across all uses. The court identified four key differences: the amended claims covered a product, not a method; omitted treatment limitations; added new composition claims; and removed disease-specific references. These changes, the court held, broadened the scope significantly, as the original claims protected the ADC only in specific therapeutic contexts, while the amended claims sought a monopoly over the ADC universally.

Applying Section 59(1), as interpreted in Nippon, the court evaluated whether the amendments were disclaimers, corrections, or explanations. A disclaimer narrows scope by excluding subject matter, but AbbVie’s amendments expanded protection, disqualifying them as disclaimers. An explanation clarifies existing claims, but the shift to product claims was a transformation, not a clarification. A correction addresses clerical errors, not substantive changes like altering claim categories. The court concluded that the amendments were none of these, as they introduced new subject matter (composition claims) and exceeded the original specification’s scope, violating Section 59(1).

The court distinguished Allergan, noting that the amendments there remained disease-specific, unlike AbbVie’s, which removed NSCLC limitations. Ovid and Nippon reinforced that broadening amendments are impermissible, as they confer additional protection beyond the original disclosure. The court also invoked Novartis to caution against artful drafting, viewing AbbVie’s amendments as an attempt to circumvent Section 3(i)’s bar on method-of-treatment claims. The original claims, being method-centric, were correctly deemed non-patentable under Section 3(i) and lacking industrial applicability under Section 2(1)(j), as they did not fit the Act’s definition of an invention.

The Controller’s findings—that the amendments were a “clever move” to avoid Section 59(1) and that the original claims were non-patentable—were upheld as well-reasoned. The court found no infirmity in the impugned order, dismissing AbbVie’s appeal.

Final Decision:

The Delhi High Court dismissed the appeal, upholding the Assistant Controller’s order dated July 31, 2023, refusing the patent application under Section 15 of the Patents Act. The court affirmed that the proposed amendments violated Section 59(1) by broadening the claim scope, and the original method-of-treatment claims were non-patentable under Section 3(i) and lacked industrial applicability under Section 2(1)(j). The Registry was directed to supply a copy of the order to the Controller General of Patents, Designs, and Trade Marks for compliance. The judgment was delivered on March 25, 2025.

Law Settled in This Case:

This case establishes several key principles in Indian patent law. First, Patent amendments under Section 59(1) must be limited to disclaimers, corrections, or explanations, and must not broaden the scope of the original claims or introduce matter beyond the specification’s disclosure. Second, converting method-of-treatment claims to product claims, especially when the original claims lack standalone product protection, violates Section 59(1) if it expands protection to new uses or categories. Third, method-of-treatment claims are non-patentable under Section 3(i) and lack industrial applicability under Section 2(1)(j), reinforcing India’s exclusion of therapeutic methods. Fourth, the specification’s intent governs the permissible scope of amendments, and strategic drafting to circumvent statutory exclusions is impermissible. Finally, judicial scrutiny ensures fidelity to the original disclosure, protecting the patent system’s integrity.

Case Title:AbbVie Biotherapeutics Inc. & Anr. v. Assistant Controller of Patents

Date of Order:March 25, 2025

Case No. C.A.(COMM.IPD-PAT) 44/2023

Neutral Citation 2025:DHC:2594

Name of Court:High Court of Delhi at New Delhi

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

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

FDC Limited Vs. Palsons Derma Private Limited

Cause Title: FDC Limited v. Palsons Derma Private Limited

Case Number: CS(COMM) 487/2023

Neutral Citation: 2025 SCC OnLine Del 144843

Date of Order: 15 April 2025

Court: High Court of Delhi at New Delhi

Presiding Judge: Hon’ble Mr. Justice Amit Bansal

This matter involved a commercial intellectual property dispute between the plaintiff, FDC Limited, and the defendant, Palsons Derma Private Limited. FDC sought an ad interim injunction restraining the defendant from using the mark "CHROMALITE", alleging it to be deceptively similar to its own registered mark "KROMALITE".

FDC Limited, the plaintiff, a pharmaceutical company incorporated in 1940, claimed to be the proprietor and prior user of the coined mark "KROMALITE", used in connection with dermatological formulations, specifically skin brightening creams. The mark was adopted in December 2014 and commercially launched in April 2016. FDC registered the mark in Class 5 and also filed a subsequent application in Class 3. Their product was available nationwide and across major online pharmacies, with net sales from 2016 to 2023 evidencing commercial usage and public association with the mark.

In January 2023, FDC discovered the defendant's products under the mark "CHROMALITE", which was adopted by Palsons in 2016 and launched in September 2022. FDC issued a cease-and-desist notice and filed rectification petitions against Palsons’ registrations. As no counter statements were filed, they proceeded with the suit alleging passing off and infringement.

Palsons, in its defense, claimed independent and bona fide adoption of the mark derived from the Greek word "CHROMA" and denied knowledge of the plaintiff’s brand. It stated that it had previously marketed similar products under the mark "FAIRLITE" but rebranded due to social pressures against the term “fair.” It also argued that their products were distinct in packaging and trade dress, used a different customer base, and were sold primarily on prescriptions.

Justice Amit Bansal assessed the case primarily on the principles of passing off, holding that infringement would not apply due to both parties holding trademark registrations. Relying on Supreme Court precedent, particularly S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the Court reiterated that common law rights of a prior user take precedence over statutory rights of a subsequent registered proprietor. The criteria for passing off were emphasized—goodwill, misrepresentation, and damage.

The Court found that FDC was indeed the prior user of the mark "KROMALITE", having consistently marketed the product since April 2016, and that it had achieved substantial goodwill and market presence. In contrast, Palsons only began use in September 2022. The marks "KROMALITE" and "CHROMALITE" were found to be phonetically identical and structurally similar, with the only difference being the substitution of “K” with “CH”, a distinction held to be phonetically negligible.

The trade dress used by Palsons was also found to resemble that of FDC’s product. Despite Palsons’ assertions of distinctive packaging, the Court held that minor variations such as geometric patterns (e.g., a double helix) were insufficient to overcome the likelihood of consumer confusion, especially considering overlapping trade channels and the identical purpose of the products—skin brightening and depigmentation.

Arguments that the impugned products were sold only via prescription or at a premium price were dismissed. The Court observed that the products were readily available on online platforms, making them accessible to the general public without prescriptions, thereby increasing the potential for confusion.

Further, the Court dismissed Palsons’ arguments of innocent adoption and lack of knowledge, emphasizing that such a defense is not tenable in cases of passing off, as per Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65. The failure to conduct a due diligence search, especially for a commercially significant player in the pharmaceutical domain, was deemed reckless.

Palsons’ reliance on coexistence of other "CHROMA"-formative marks was also rejected for want of evidence showing active commercial use or degree of similarity to the plaintiff’s mark. The coined nature of "KROMALITE" warranted a higher threshold of protection.

Allegations of forum shopping and delay were also found meritless. The Court held that jurisdiction was established through a purchase of the impugned product by the plaintiff’s representative in Delhi. Moreover, the timeline between the plaintiff gaining knowledge of the defendant’s product in January 2023, issuing a legal notice, filing rectifications, and then the present suit in July 2023, indicated no inordinate delay.

Accordingly, the Court found a prima facie case in favour of the plaintiff, noting irreparable harm and balance of convenience also tilted towards the plaintiff. The interim injunction was granted.

Final Relief Granted :

The Court, vide its order dated 15 April 2025, allowed I.A. 13241/2023. The defendant, Palsons Derma Private Limited, and persons acting in concert with it were restrained from manufacturing, marketing, advertising, offering for sale, or selling any product under the mark “CHROMALITE” or any deceptively similar mark to “KROMALITE”, until the final adjudication of the suit.

Mars Incorporated Vs The Registrar of Trademarks

Introduction:

In the intricate landscape of trademark law, the case of Mars Incorporated v. The Registrar of Trade Marks & Ors. emerges as a pivotal exploration of procedural fairness and the sanctity of due process. Adjudicated by the High Court of Delhi, this case underscores the critical importance of effective service of notices in trademark opposition proceedings and the judiciary’s role in rectifying administrative oversights. At its core, the dispute revolves around the erroneous abandonment of Mars Incorporated’s trademark application due to alleged non-receipt of opposition notices, raising questions about the interpretation of statutory provisions and the balance between procedural rules and substantive rights. The judgment not only rectifies an administrative error but also sets a significant precedent for ensuring that trademark applicants are not unfairly prejudiced by lapses in communication, making it a cornerstone case for intellectual property practitioners and multinational corporations navigating India’s trademark regime.

Detailed Factual Background:

Mars Incorporated, a globally renowned multinational company incorporated under the laws of the United States, is a titan in the production of chocolate, confectionery, snack foods, main meals, drinks, and pet care products. With a presence in over 100 countries across five continents, Mars owns a portfolio of iconic trademarks, including GALAXY, M&M’s, PEDIGREE, WHISKAS, MILKY WAY, BOUNTY, MARS, TWIX, and SNICKERS. The present case centers on its trademark application no. 4083355 in Class 30, filed on February 11, 2019, for a mark related to its product offerings. The application was published in Trade Marks Journal No. 2017 on September 13, 2021, inviting public opposition as per standard procedure.

Following the publication, two parties—respondent no. 2 (Cadbury UK Limited) and respondent no. 3 (Celebration)—filed notices of opposition, bearing nos. 1141655 and 1141733, respectively, challenging Mars’ application. The Registrar of Trade Marks purportedly served these notices on Mars on March 7, 2022, via despatch nos. 5527006 (for respondent no. 2) and 5527087 (for respondent no. 3). However, Mars contended that it never received these notices, either through email, post, or courier. On February 6, 2023, the Trade Marks Registry issued a public notice in Journal No. 2090, declaring Mars’ application, among others, “deemed to have been abandoned” under Section 21(2) of the Trade Marks Act, 1999, for failing to file a counter-statement within the stipulated two-month period.

Upon discovering its application’s inclusion in the abandonment list, Mars promptly submitted a representation to the Trade Marks Registry on March 6, 2023, supported by affidavits from relevant personnel, asserting non-receipt of the opposition notices. Mars argued that the abandonment was erroneous, as the statutory period for filing a counter-statement had not commenced due to ineffective service. Despite these efforts, the Registry marked the application as abandoned on July 20, 2023, prompting Mars to file a review petition on September 4, 2023 (registered on September 5, 2023), seeking reinstatement of the application and rectification of its status to “Opposed.” The Deputy Registrar dismissed the review petition on October 25, 2024, upholding the abandonment order, leading Mars to file the present appeal before the Delhi High Court.

Detailed Procedural Background:

The procedural journey of this case began with Mars’ trademark application filing on February 11, 2019, followed by its publication in the Trade Marks Journal on September 13, 2021. The subsequent filing of opposition notices by respondents no. 2 and no. 3 triggered the Registrar’s obligation to serve these notices on Mars, which was allegedly done on March 7, 2022. The Registry’s public notice of February 6, 2023, declaring the application abandoned, marked a critical turning point, prompting Mars’ representation on March 6, 2023, to contest the decision.

Concurrently, a related writ petition, Intellectual Property Attorneys Association (IPAA) & Anr. v. Controller General of Patents Designs & Trade Marks (CGPDTM) & Anr. (W.P.(C)-IPD 21/2023), was filed before the Delhi High Court, challenging the issuance of similar public notices and fresh notices by the Controller General. On April 13, 2023, the respondent in that case voluntarily withdrew the impugned notices, and a public notice dated April 21, 2023, restored all affected applications to their original status. Despite this, Mars’ application was inexplicably marked abandoned on July 20, 2023, without considering its earlier representation.

Mars’ review petition, filed on September 4, 2023, sought to rectify this error, but the Deputy Registrar’s dismissal on October 25, 2024, led to the filing of the present appeal under Section 91 of the Trade Marks Act, 1999, registered as C.A.(COMM.IPD-TM) 88/2024. The appeal was accompanied by two interlocutory applications: I.A. 49485/2024 (unspecified in the document) and I.A. 8631/2025, filed by respondent no. 3 seeking condonation of a 28-day delay in filing its reply affidavit. Notice in the appeal was issued on December 23, 2024, with respondents no. 1 and 2 accepting notice in court, and respondent no. 3 filing its reply affidavit on March 28, 2025. The case was heard by Hon’ble Mr. Justice Amit Bansal, who delivered an oral judgment on April 2, 2025.

Issues Involved in the Case:

The case presented several critical issues for adjudication. First, whether the Notices of Opposition were effectively served on Mars, triggering the statutory period for filing a counter-statement under Section 21(2) of the Trade Marks Act, 1999. Second, whether the Trade Marks Registry’s abandonment order of July 20, 2023, and the subsequent dismissal of Mars’ review petition on October 25, 2024, were legally sustainable given the alleged non-receipt of notices. Third, whether the provisions of Section 21(2) of the Act and Rule 18 of the Trade Marks Rules, 2017, create procedural ambiguity regarding the commencement of the counter-statement filing period. Fourth, whether Mars’ affidavits asserting non-receipt were adequately considered by the Registrar. Finally, whether the court should restore Mars’ application to allow it to file a counter-statement, balancing procedural compliance with the principles of natural justice.

Detailed Submission of Parties:

Appellant argued that the impugned order was fundamentally flawed due to the non-receipt of the Notices of Opposition. Mars relied on affidavits from its personnel, confirming that neither its advocates nor agents received the notices via email, post, or courier. Appellant emphasized that Section 21(2) of the Act mandates that the counter-statement period begins upon receipt of the notice, and without effective service, the abandonment was premature. Appellant cited precedents from the Delhi and Madras High Courts to argue that non-service invalidates abandonment orders and that the Registry’s reliance on Rule 18(2) of the Trade Marks Rules, which deems service complete upon sending an email, creates ambiguity contrary to the Act’s intent. Mars further contended that the Registrar’s impugned order failed to consider its affidavits, undermining procedural fairness.

The Registrar of Trade Marks conceded that no acknowledgment of the email enclosing the Notices of Opposition was received from Mars. This admission weakened the Registry’s position, as it suggested a lack of evidence confirming effective service. Respondent no. 3,  argued that the appeal should be dismissed, asserting that the notices were duly served at the email address provided in Mars’ application. Respondent no. 3 pointed to the Registry’s records, which showed no email delivery failure, and argued that Mars’ failure to file a counter-statement within the prescribed period justified the abandonment. However, respondent no. 3’s reliance on the Registry’s email success report was challenged by Mars’ affidavits and the Registrar’s admission of non-acknowledgment.

Detailed Discussion on Judgments Cited by Parties:The court relied on three key precedents cited by Mars, each addressing procedural fairness in trademark opposition proceedings:

Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990: In this case, the Delhi High Court addressed a similar issue where the petitioner claimed non-receipt of a Notice of Opposition due to an incorrect email address. The court found no evidence of service at the specified email and set aside the impugned order, allowing the appeal. This precedent was directly relevant, as Mars similarly contended that the notices were not served at its registered email, supported by affidavits. The court applied this ruling to question the Registry’s claim of service.

Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641: Another Delhi High Court decision, this case involved an appellant who asserted non-service of a Notice of Opposition. The court, after reviewing the records, found no proof of service and set aside the abandonment order. This judgment reinforced Mars’ argument that the absence of verifiable service invalidates an abandonment order under Section 21(2), particularly when supported by affidavits attesting to non-receipt.

Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309: The Madras High Court’s ruling was pivotal, as it addressed the ambiguity between Section 21(2) of the Act and Rule 18(2) of the Trade Marks Rules. The court held that Rule 18(2), which deems service complete upon sending an email, must be purposively interpreted to align with Section 21(2)’s requirement of receipt. The Madras High Court allowed the appellant to file a counter-statement, directing the Registrar to consider the opposition on merits. This precedent guided the Delhi High Court’s reasoning, emphasizing that a literal interpretation of Rule 18(2) would undermine applicants’ rights.

Detailed Reasoning and Analysis of Judge:

Court's reasoning was anchored in a meticulous analysis of statutory provisions, judicial precedents, and the case’s factual matrix. The court began by examining Section 21(2) of the Trade Marks Act, 1999, which mandates that the counter-statement period commences upon receipt of the Notice of Opposition. In contrast, Rule 18(2) of the Trade Marks Rules, 2017, deems service complete when an email is sent, creating a procedural inconsistency. The court agreed with the Madras High Court’s reasoning in Samsudeen A, holding that Rule 18(2) must be interpreted purposively to align with Section 21(2)’s emphasis on receipt, ensuring fairness to applicants.

The court scrutinized the Registrar’s impugned order, which claimed that the notices were served on Mars’ email (trademark@anandandand.com) on March 7, 2022, with an “email sent success report.” However, the order lacked evidence of acknowledgment from Mars, unlike the documented acknowledgment for the opponents’ service. The Registrar’s failure to address Mars’ affidavits, which deposed non-receipt, further undermined the order’s validity. The court noted the Registrar’s admission, through Ms. Nidhi Raman, that no acknowledgment was received from Mars, casting doubt on the effectiveness of service.

Drawing on Rishabh Jain and Purushottam Singhal, the court emphasized that abandonment orders cannot stand without proof of service, particularly when applicants provide credible evidence of non-receipt. The court found Mars’ affidavits compelling, and the Registry’s reliance on an email success report insufficient to counter this evidence. The court also considered the broader context of the IPAA writ petition, where the Registry’s withdrawal of similar notices indicated systemic issues in service procedures, further supporting Mars’ claim of procedural error.

The court concluded that the abandonment order and the dismissal of Mars’ review petition were unsustainable, as they violated the principles of natural justice and statutory intent. To rectify this, the court directed the Registry to re-serve the Notices of Opposition and allow Mars to file a counter-statement, ensuring its right to a fair hearing.

Final Decision:

The Delhi High Court allowed the appeal, setting aside the impugned order dated October 25, 2024. The matter was remanded to the Trade Marks Registry, with directions to serve the Notices of Opposition afresh to Mars’ counsel within two weeks. Mars was granted the opportunity to file a counter-statement within the prescribed statutory period. The court disposed of the appeal on April 2, 2025, directing the Registry to supply a copy of the order to the Controller General of Patents, Designs, and Trade Marks for compliance.

Law Settled in This Case:

This case establishes several key principles in trademark law. First, effective service of a Notice of Opposition is a prerequisite for triggering the counter-statement period under Section 21(2) of the Trade Marks Act, 1999, and abandonment orders based on unverified service are invalid. Second, Rule 18(2) of the Trade Marks Rules, 2017, must be interpreted purposively to align with Section 21(2)’s requirement of receipt, prioritizing applicants’ rights over procedural presumptions. Third, affidavits attesting to non-receipt of notices constitute credible evidence, and the Registrar must consider them before upholding abandonment. Finally, the judiciary plays a critical role in rectifying administrative errors to uphold natural justice, ensuring that trademark applicants are not unfairly prejudiced by procedural lapses.

Cause Title: Mars Incorporated Vs The Registrar of Trademarks

Case Number: C.A.(COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:2463

Date of Decision: 2 April 2025

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

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

Falcon Licensing Limited Vs. PRI Enterprises Private Limited

Introduction:

In the dynamic realm of intellectual property law, the case of Falcon Licensing Limited v. PRI Enterprises Private Limited stands as a compelling testament to the judiciary’s commitment to preserving the integrity of trademark rights. This landmark case, adjudicated by the High Court of Delhi, addresses critical issues of trademark squatting, non-use, and the protection of prior user rights in the face of deceptive registration practices. Centered around the trademark "BOLDIFY," the dispute encapsulates the tension between a foreign entity’s established brand identity and a domestic entity’s alleged mala fide registration. The judgment not only reinforces the sanctity of the trademark register but also sets a robust precedent for combating opportunistic trademark practices, making it a pivotal study for intellectual property practitioners and businesses alike.

Detailed Factual Background:

Falcon Licensing Limited, a New Zealand-based company, emerged as the petitioner in this case, seeking the cancellation of the trademark "BOLDIFY," registered by PRI Enterprises Private Limited (Respondent No. 1) under application no. 3867168 in Class 3. The petitioner’s claim rested on its long-standing association with the "BOLDIFY" mark, which was first adopted in 2016 by its predecessor-in-interest for hair care products. The mark was used continuously and exclusively, gaining significant global recognition through sales on platforms like www.amazon.com since August 2016 and via the domain www.getboldify.com. The predecessor-in-interest secured trademark registrations in the United States as early as March 27, 2016, for hair shampoos, conditioners, and sprays, with further registrations in countries like New Zealand, the United Kingdom, and the European Union.

In 2017, the petitioner was incorporated to manage the intellectual property assets of the "BOLDIFY" brand. Boldify Inc., a U.S.-based subsidiary, was established in 2018 to operate the brand, and by 2020, it had filed for trademark registration in India under Class 35, which was granted in 2022. An Assignment Agreement dated January 25, 2021, transferred all rights in the "BOLDIFY" trademarks to the petitioner, solidifying its global ownership. The petitioner’s business flourished, with annual sales escalating from USD 48,662 in 2016-17 to a projected USD 17,000,000 in 2023-24, supported by substantial advertising investments.

In contrast, PRI Enterprises, incorporated in December 2017, operated as a micro-enterprise dealing in rubber and plastic products, vacuum storage bags, and household articles. In June 2018, PRI Enterprises allegedly adopted the "BOLDIFY" mark for cosmetics and beauty products, securing registration in Class 3 on December 23, 2018, on a "proposed to be used" basis. However, the petitioner alleged that PRI Enterprises had never used the mark for the registered goods. A critical piece of evidence was the email communication from May 2018, where PRI Enterprises, using the email pri.enterprises64@gmail.com, expressed interest in distributing the petitioner’s "BOLDIFY" products in India. This interaction, followed by PRI Enterprises’ registration of the identical mark, formed the crux of the petitioner’s claim of dishonest adoption and trademark squatting.

Detailed Procedural Background:

The dispute crystallized when the petitioner applied for registration of the "BOLDIFY" word and label marks in Class 3 on March 20, 2023. The Trade Marks Registry objected, citing PRI Enterprises’ existing registration in the same class. Falcon Licensing filed a petition under Section 47 and Section 57 of the Trade Marks Act, 1999, before the Delhi High Court on October 26, 2023, seeking cancellation of PRI Enterprises’ "BOLDIFY" registration. 

Issues Involved in the Case:

The case presented several pivotal issues for adjudication: Whether PRI Enterprises’ registration of the "BOLDIFY" mark was dishonest and constituted trademark squatting, given its prior knowledge of the petitioner’s brand? Whether PRI Enterprises had used the "BOLDIFY" mark for the goods under Class 3, and if not, whether the non-use warranted cancellation under Section 47 of the Trade Marks Act.

Detailed Submission of Parties:

The petitioner contended that PRI Enterprises, aware of the brand’s goodwill, dishonestly registered an identical mark in Class 3 for allied goods like cosmetics, which overlapped with the petitioner’s hair care products. The petitioner emphasized its prior use since 2016, supported by global registrations and substantial sales figures, asserting a strong trans-border reputation. It further argued that PRI Enterprises had never used the mark for Class 3 goods, rendering the registration vulnerable to cancellation under Section 47 for non-use. The petitioner also claimed to be a “person aggrieved,” as PRI Enterprises’ registration obstructed its own trademark application, causing legal and commercial prejudice.

PRI Enterprises countered that it independently adopted the "BOLDIFY" mark in June 2018 for its cosmetics and household goods business, which it later abandoned in 2020 to focus on sanitizers, PPE kits, and plastic products. It argued that the petition was premature, as the five-year non-use period under Section 47 had not elapsed by October 2023, when the petition was filed. PRI Enterprises denied the alleged email communications, though it admitted ownership of the email address pri.enterprises64@gmail.com, claiming no authorized person sent the inquiries. It further contended that the petitioner’s inaction from August 2020 to March 2023 implied acceptance of its registration. Finally, PRI Enterprises asserted that its goods were unrelated to the petitioner’s, negating any likelihood of confusion or prejudice.

Detailed Discussion on Judgments Cited by Parties: The court relied on several precedents to navigate the complex issues, each cited for its relevance to specific aspects of trademark law:

Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan and Another, 2023 SCC OnLine Del 4796: This case was pivotal in addressing non-use under Section 47. The court held that genuine use in the relevant class is essential, and unexplained non-use justifies removal of the mark. In the present case, PRI Enterprises’ failure to provide evidence of use for Class 3 goods aligned with this principle, supporting the petitioner’s claim for cancellation.

Kabushiki Kaisha Toshiba v. Tosiba Appliances Company and Others, 2008 SCC OnLine SC 960: The Supreme Court emphasized that a genuine intention to use a trademark is crucial, and registration without such intent amounts to trafficking, which the law seeks to prevent. The court applied this to PRI Enterprises’ “proposed to be used” registration, which lacked evidence of bona fide intent or actual use, reinforcing the case for cancellation.

BPI Sports LLC : Referenced for its discussion on trademark squatting, this precedent defined squatting as registering a third party’s mark to preempt the legitimate owner’s rights. The court found PRI Enterprises’ actions to be a textbook example of squatting, as its registration appeared designed to block the petitioner’s entry into the Indian market.

Kia Wang v. Registrar of Trademarks and Another, 2023 SCC OnLine Del 5844: This case clarified the scope of “person aggrieved” under Section 57, holding that a party whose legal rights are restrained by an impugned registration qualifies. The court applied this to recognize the petitioner’s locus standi, as PRI Enterprises’ mark hindered its registration efforts.

Khoday Distilleries Limited v. Scotch Whisky Association, (2008) 10 SCC 723: The Supreme Court underscored the public interest in maintaining the purity of the trademark register, advocating rectification to prevent deception. This principle guided the court’s decision to prioritize the petitioner’s prior rights over PRI Enterprises’ unused mark.

Hardie Trading Ltd. : Cited for its interpretation of “person aggrieved” under the 1958 Act, this precedent supported a liberal construction of locus standi for rectification petitions, particularly when public interest is at stake. The court adopted this approach to affirm the petitioner’s standing.

Powell’s Trade Mark, Re, (1894) 11 RPC 4 : [1894] A.C. 8 : 70 LT 1 (HL): This House of Lords decision emphasized that a “person aggrieved” includes those whose legal rights are limited by a mark’s presence on the register. The court used this to bolster the petitioner’s claim, as PRI Enterprises’ registration restricted its commercial activities.

Larsen & Toubro Limited v. M/S Lachmi Narain Trades and Ors., 2008 SCC OnLine Del 183: The Division Bench rejected the “field of activity” test, holding that confusion can arise even between dissimilar goods if a mark’s reputation is strong. This was critical in dismissing PRI Enterprises’ argument that its goods’ distinct nature negated prejudice to the petitioner.

Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bom 24: The Bombay High Court held that a well-known mark’s use on unrelated goods can cause confusion, as consumers may assume a connection. This supported the court’s finding that PRI Enterprises’ registration could dilute the petitioner’s brand.

Bata India Ltd. v. Pyare Lal & Co., AIR 1985 All 242: The Allahabad High Court ruled that a passing-off action lies even for dissimilar goods if a mark’s use creates a false impression of origin. This precedent reinforced the potential for consumer confusion in the present case.

Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Del 239: The Delhi High Court protected a famous mark (“Benz”) from use on unrelated goods (underwear), emphasizing the need to prevent dilution. This supported the petitioner’s claim of trans-border reputation.

Aktiebolaget Volvo & Ors. v. Vinod Kumar & Ors., 2011 SCC OnLine Del 1180: The court restrained the use of “VOLVO” for ice cream, despite its primary association with automobiles, citing confusion and dilution risks. This precedent underpinned the court’s rejection of PRI Enterprises’ claim that dissimilar goods negated prejudice.

McCarthy on Trademarks and Unfair Competition (Volume 3, 5th Edition): Though not a judicial precedent, this treatise was cited for its exposition on bona fide intent to use a trademark. It states that failure to provide documentary evidence of intent equates to a lack thereof, which the court applied to PRI Enterprises’ absence of usage proof.

Detailed Reasoning and Analysis of Judge:

On the issue of dishonest adoption, the court found compelling evidence in the May 2018 email exchanges, where PRI Enterprises used its verified email to inquire about distributing the petitioner’s “BOLDIFY” products. Despite PRI Enterprises’ denial of sending these emails, its admission of owning the email address, coupled with its failure to explain the communication’s origin, led the court to dismiss its defense as an afterthought. This established PRI Enterprises’ prior knowledge of the petitioner’s mark, rendering its subsequent registration mala fide.

Regarding non-use, the court noted that PRI Enterprises’ registration was on a “proposed to be used” basis, yet no evidence of actual use for Class 3 goods (cosmetics, soaps, etc.) was produced. Citing Section 47 and the Russell Corpn. case, the court held that unexplained non-use warrants cancellation, as PRI Enterprises failed to demonstrate any special circumstances or bona fide intent, per McCarthy’s treatise and the Toshiba case. The court further identified PRI Enterprises’ actions as trademark squatting, aligning with the BPI Sports precedent, as the registration appeared designed to preempt the petitioner’s rights in India.

On the petitioner’s status as a “person aggrieved,” the court applied the liberal interpretation from Kia Wang and Powell’s Trade Mark, finding that PRI Enterprises’ registration restrained the petitioner’s legal rights by blocking its Class 3 application. The court rejected PRI Enterprises’ argument of acquiescence, noting that the petitioner’s three-year delay did not imply acceptance, especially since PRI Enterprises had not used the mark commercially.

Addressing the argument that dissimilar goods negated prejudice, the court relied on Larsen & Toubro, Bata India, Daimler Benz, and Volvo to dismiss the outdated “field of activity” test. It held that the petitioner’s well-known mark, bolstered by global registrations and sales, faced a likelihood of confusion or dilution, even if PRI Enterprises’ goods differed. The court emphasized the public interest in maintaining a pure trademark register, as articulated in Khoday Distilleries, and concluded that PRI Enterprises’ unused mark was a “public mischief” warranting removal.

Final Decision

The Delhi High Court allowed the petition, directing the Trade Marks Registry to remove the “BOLDIFY” trademark, registered under application no. 3867168 in Class 3, from the Register of Trade Marks. The court ordered the Registry to send a copy of the judgment to the Trade Marks Registry for compliance, disposing of the petition on April 15, 2025.

Law Settled in This Case:

A trademark registered without bona fide use or intent, particularly on a “proposed to be used” basis, is vulnerable to cancellation under Section 47 if no evidence of use is shown.Trademark squatting, where a party registers a third party’s mark to block its legitimate owner, is impermissible and contravenes the Trade Marks Act’s objective of preventing trafficking.The “person aggrieved” criterion under Section 57 is interpreted liberally, encompassing parties whose legal or commercial rights are restrained by an impugned registration.Fourth, the “field of activity” test is obsolete; a well-known mark’s reputation can be protected against use on dissimilar goods if confusion or dilution is likely.Finally, the public interest in maintaining a pure trademark register overrides claims of acquiescence, especially when the registered mark remains unused.

Case Title: Falcon Licensing Limited Vs. PRI Enterprises Private Limited & Anr.

Case Number: C.O. (COMM.IPD-TM) 271/2023

Neutral Citation: 2025:DHC:2592

Date of Order: 15 April 2025

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

The Indian Hotels Company Limited Vs. Ankit Sethi

Neutral Citation: 2025:DHC:2266

Date of Order: 3rd March 2025

Case Title: The Indian Hotels Company Limited Vs. Ankit Sethi & Ors.

Case Number: CS(COMM) 882/2023

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

In the matter of The Indian Hotels Company Limited v. Ankit Sethi & Ors., the Delhi High Court delivered a summary judgment on 3rd March 2025 under Order XIII-A of the Code of Civil Procedure, 1908, read with the Commercial Courts Act, 2015, in favour of the plaintiff, The Indian Hotels Company Limited, part of the Tata Group and proprietor of the “GINGER” chain of hotels. The suit was instituted to restrain infringement of the plaintiff’s registered trademark “GINGER” in Class 43, as well as to address passing off, dilution, and copyright infringement involving original professional photographs hosted on the plaintiff’s official website.

The plaintiff operates under various prominent hospitality brands such as TAJ, VIVANTA, SELEQTIONS, and GINGER, and maintains the website www.gingerhotels.com. The “GINGER” mark, first adopted in 2004 for its 'Smart Basics' category, has been extensively used and registered in various forms, with the earliest registration dating back to December 2005. The plaintiff also owns the copyright in professionally photographed images of GINGER hotel properties, which are hosted on its official site. Over the years, the GINGER brand has earned widespread recognition and accolades, with its financial reports for FY 2022-23 reflecting revenues exceeding Rs. 300 Crores and EBITDA of Rs. 120 Crores.

The dispute arose when the plaintiff, through its brand monitoring tool locobuzz.com, discovered infringing websites—www.gingerhotelmumbai.info and www.hotelgingermumbai.info—that used the “GINGER” trademark and the plaintiff’s copyrighted images to mislead customers into believing that the websites were associated with the plaintiff’s GINGER hotels. These infringing domain names were registered in November and December 2023 respectively, and were used to impersonate the plaintiff’s brand, causing both reputational and financial damage.

The High Court had granted an ex-parte ad interim injunction on 13th December 2023, directing the suspension of the impugned domain names and blocking the bank accounts and mobile numbers associated with the fraudulent activity. Domain registrars, banks, and telecom operators were directed to submit KYC documents and block further misuse. Investigation revealed that defendant no. 1, Ankit Sethi, operated under the alias 'Hackploit' and created the infringing websites in collusion with defendants 8, 9, and 10. Evidence included transactions made by unsuspecting customers into accounts held by the said defendants and use of common email IDs linking these individuals to the infringing operations.

The Court took judicial note of previous authoritative decisions, notably Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, wherein the Supreme Court recognized domain names as business identifiers that enjoy protection akin to trademarks. The Court emphasized that misrepresentation by the defendants created likelihood of confusion and deception among consumers and amounted to both trademark and copyright infringement. It also held that use of a similar domain name to divert users away from the rightful owner amounts to passing off.

Defendants 1, 9, and 10 did not appear or file written statements. Defendant 8, though present in earlier hearings, failed to file a written response. The Court deemed their silence as an admission of the plaintiff’s claims. Accordingly, invoking Order XIII-A CPC, the Court determined that there was no prospect of a defense and that oral evidence was unnecessary.

Citing Cartier International A.G. v. Gaurav Bhatia, 2016 SCC OnLine Del 8, and Microsoft Corporation v. Rajendra Pawar, 2008 (36) PTC 697 (Del.), the Court reiterated that deliberate evasion of judicial process should not allow infringers to escape liability. Recognizing the egregious nature of the conduct and its potential to cause serious harm to the plaintiff and mislead the public, the Court awarded both compensatory and punitive damages.

Accordingly, the Court decreed a permanent injunction in favour of the plaintiff, restraining the defendants from any further use of the GINGER trademarks, copyrighted images, or misleading domain names. It also awarded damages and costs totaling Rs. 20 Lakhs to the plaintiff, payable jointly and severally by defendants 1, 8, 9, and 10, to be paid within four months. The decree sheet was directed to be drawn up and the case was disposed of.

Diageo Scotland Limited Vs. Prachi Verma

Neutral Citation: 2025:DHC:2612

Date of Order: April 16, 2025

Case Title: Diageo Scotland Limited Vs. Prachi Verma and Anr.

Case Number: C.A. (COMM.IPD-TM) 7/2025

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Saurabh Banerjee

In Diageo Scotland Limited v. Prachi Verma and Anr., C.A. (COMM.IPD-TM) 7/2025, the Delhi High Court adjudicated an appeal filed under Section 91 of the Trade Marks Act, 1999, challenging the order dated October 1, 2024, passed by the Assistant Registrar of Trade Marks. The impugned order had dismissed the appellant’s opposition to trademark application no. 4398295 for the mark “CAPTAIN BLUE” in Class 33. The appellant, Diageo Scotland Limited, part of the globally recognized Diageo Group and owner of the reputed “CAPTAIN MORGAN” family of marks, claimed proprietary rights in the registered trademarks “CAPTAIN” (reg. no. 1485228) and “CAPTAIN MORGAN” (reg. no. 708544), both registered in Class 33 for alcoholic beverages.

According to the appellant, “CAPTAIN MORGAN” has been used in India since 2006 and has gained immense recognition and commercial success, with reported sales in 2023 alone amounting to approximately USD 6.48 million. The appellant also owns multiple sub-brands under the “CAPTAIN” series, including “CAPTAIN MORGAN GOLD” and “CAPTAIN MORGAN WHITE RUM.” The respondent no. 1 filed a trademark application for “CAPTAIN BLUE” in Class 33 on a proposed-to-be-used basis. Upon its publication in the Trade Marks Journal on January 27, 2020, the appellant opposed it, citing deceptive similarity, likelihood of confusion, and absence of bona fide adoption. The Assistant Registrar dismissed the opposition, finding “CAPTAIN BLUE” distinctive when considered as a whole and citing the presence of unrelated third-party “CAPTAIN” marks.

In appeal, the appellant argued that the impugned order ignored both the statutory and common law rights vested in the family of “CAPTAIN” marks, and that the impugned mark was deceptively similar to its own, incorporating the dominant source-identifying element “CAPTAIN.” The addition of “BLUE,” it was contended, was insufficient to differentiate the mark. The appellant pointed out that the respondent no. 1 failed to produce any evidence of use, bona fide adoption, or commercial intent, and filed no documents under Rule 46 of the Trade Marks Rules, 2017. It was submitted that allowing the impugned mark to remain would cause consumer confusion, particularly as the mark might be mistaken for a variant of the appellant’s “CAPTAIN” products. The appellant further argued that permitting such registrations would compromise the distinctiveness of well-known marks and create a precedent for copycat filings.

Respondent no. 1 neither filed a reply nor appeared, and was accordingly proceeded against ex parte. Respondent no. 2 supported the impugned order, contending that “CAPTAIN BLUE” was not derived from the appellant’s marks, and that the parties' marks were dissimilar. Citing Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 3249, and Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, respondent no. 2 maintained that no semantic similarity or likelihood of confusion existed. The appellant responded that third-party “CAPTAIN” marks referred to in oral arguments were either not part of the original proceedings or had been abandoned, opposed, or withdrawn. In the case of one such user, IFB Agro Industries, the appellant had entered a confidential settlement and had deliberately refrained from opposition. The appellant relied on Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and reiterated that even slight conceptual similarities in identical goods can cause confusion, particularly where the prior mark is well-established.

The Court undertook a comprehensive analysis. It noted that the appellant was the prior user and registered proprietor of the “CAPTAIN” and “CAPTAIN MORGAN” marks, with continuous use and significant goodwill both internationally and domestically. The Court held that the use of “CAPTAIN” in “CAPTAIN BLUE” constituted a clear adoption of the appellant’s dominant mark. The addition of the word “BLUE” was insufficient to dispel confusion, especially when the goods—alcoholic beverages—were identical and marketed in the same class. The likelihood of “CAPTAIN BLUE” being misconstrued as a variant or extension of the appellant’s “CAPTAIN” product line was high. The Court was particularly concerned by the complete absence of any evidence of actual use or commercial intention by the respondent, especially given the proposed-to-be-used basis of the application.

The Court noted that the opposition materials submitted by the appellant, including a detailed list of over 80 “CAPTAIN” marks which had been withdrawn, refused, abandoned or opposed by the appellant, were disregarded in the impugned order. There was no indication that the word “CAPTAIN” was in common use for alcoholic beverages in India. The Court found that the Assistant Registrar failed to consider these critical elements. The argument regarding a prior rejection of a similar opposition by the appellant in an unrelated matter was not found sufficient to preclude the appellant from pursuing this appeal, especially as that case had not been contested.

The Court reiterated the principles laid down in Corn Products Refining Co. and Vinita Gupta, affirming that the impugned mark was indeed likely to create confusion and did not deserve registration. Emphasizing the statutory protections under Section 28 of the Trade Marks Act for registered proprietors, the Court concluded that the impugned mark should have been refused registration under Section 11. Accordingly, the Court allowed the appeal, set aside the order dated October 1, 2024, and directed that the impugned trademark application no. 4398295 for “CAPTAIN BLUE” be removed from the Register of Trade Marks.

Mankind Prime Labs Private Limited Vs. Registrar of Trade Marks

Neutral Citation: Mankind Prime Labs Private Limited Vs. Registrar of Trade Marks, 2025:DHC:2611

Date of Order: April 16, 2025/Case Number: C.A. (COMM.IPD-TM) 7/2024/Saurabh Banerjee

In the matter of Mankind Prime Labs Private Limited v. Registrar of Trade Marks, the Delhi High Court,  adjudicated an appeal under Section 91 of the Trade Marks Act, 1999, read with Section 151 of the Code of Civil Procedure, 1908, and Section 13 of the Commercial Courts Act, 2015. The appellant challenged the order dated October 17, 2023, passed by the learned Examiner of Trade Marks, New Delhi, which had refused registration of the trademark application no. 4804262 for the word mark “CROSSRELIEF” in Class 5 of the Act.

The appellant, a company incorporated under the Indian Companies Act, 2013 and a subsidiary of Mankind Pharma Limited, one of the leading pharmaceutical companies in India, applied on January 2, 2021, for the registration of the trademark “CROSSRELIEF” on a ‘proposed to be used’ basis. The Trade Marks Registry issued an Examination Report on January 13, 2021, objecting to the application under Section 11(1) of the Trade Marks Act, 1999, stating that the mark was deceptively similar to existing trademarks in respect of similar goods, which may cause a likelihood of confusion among the public.

The impugned order upheld the objection raised in the Examination Report. The Examiner concluded that the mark “CROSSRELIEF” was identical or deceptively similar to earlier marks and covered goods of similar description, thereby refusing registration under Section 11(1). The appellant, aggrieved by this decision, filed the present appeal.

The appellant argued that “CROSSRELIEF” is a coined term, a portmanteau of the terms “CROSS” and “RELIEF.” The term “CROSS,” it was argued, is commonly used in the medical industry to denote aid or assistance and is thus generic and publici juris. Likewise, the word “RELIEF” is descriptive in nature. However, their combination forms a new, arbitrary and fanciful term which has no existing dictionary meaning and is capable of functioning as a trademark with its own distinct identity. The appellant further contended that the mark should be assessed as a whole and not dissected into individual parts. Citing the anti-dissection principle, the appellant relied on the decision in Ticona Polymers, Inc. v. Registrar of Trade Marks, 2023 SCC OnLine Del 1234, which emphasized that a composite mark must be evaluated as a whole and that dissecting its elements is impermissible in assessing registrability.

The appellant also cited F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716, where the Supreme Court upheld registration of the coined term “Dropovit,” which, though composed of known words, formed a novel expression not easily recognizable without analysis. In line with this precedent, the Court was urged to consider “CROSSRELIEF” as an invented word entitled to registration.

In further support, the appellant relied on the Supreme Court’s judgment in J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, wherein it was held that descriptive words used commonly in the trade, such as “micro,” cannot be monopolized and do not justify refusal of trademark registration when forming part of a larger distinctive mark. Additionally, the Madras High Court in Indo-pharma Pharmaceuticals Works Ltd. v. Citadel Fine Pharmaceuticals Ltd., 1998 SCC OnLine Mad 414, observed that where a common element such as “Enerj” is used in rival marks, customers tend to focus on the distinctive suffixes and are unlikely to be confused by the common prefix.

It was the appellant’s submission that the word “CROSS” is widely used in the pharmaceutical industry and is incapable of being monopolized. The term “CROSSRELIEF,” though incorporating a generic component, creates a unique commercial impression when read as a whole. Reference was also made to Disposafe Health & Life Limited v. Rajiv Nath, 2025 SCC OnLine Del 1271, which reiterated that even combinations of common words can acquire distinctiveness and be eligible for registration if they produce a unique identity.

The High Court analyzed the matter under Section 11(1) of the Trade Marks Act, which disallows registration of a trademark that is identical or similar to an earlier mark and is used in respect of similar goods or services, thereby giving rise to a likelihood of confusion. The Court noted that “CROSSRELIEF” is a coined expression and is not found in any dictionary. It was further noted that the mark does not directly describe the nature or quality of the goods, and when viewed in its entirety, is arbitrary and fanciful.

The Court strongly affirmed the anti-dissection rule, holding that a trademark must be evaluated holistically, both at the stage of registration and in infringement proceedings. The Court referred to Ticona Polymers to reinforce this principle, noting that it applies mutatis mutandis even at the stage of assessing entitlement for registration, and not only post-registration in infringement scenarios.

The Court accepted that while “CROSS” may be common in pharmaceutical marks, its combination with “RELIEF” in a non-standard, creative fashion resulted in a mark that is visually, phonetically, and structurally distinct from the cited marks. The Court concluded that the likelihood of confusion was remote and unsupported by any material placed on record by the respondent.

Accordingly, the Delhi High Court set aside the impugned order dated October 17, 2023, and allowed the appeal. It directed that trademark application no. 4804262 for the mark “CROSSRELIEF” be allowed to proceed for registration. However, it clarified that the registration of the composite mark “CROSSRELIEF” shall not grant any exclusive rights to either component part, “CROSS” or “RELIEF,” in isolation. A copy of the judgment was ordered to be sent to the Registrar of Trade Marks for necessary compliance.

Grey Swift Pvt. Ltd. Vs. Registrar of Trade Marks

The case involved an appeal filed by Grey Swift Private Limited under Section 91 of the Trade Marks Act, 1999, read with Rule 156 of the Trade Marks Rules, 2017, challenging the rejection of its application for the trademark “BharatStamp” in Class 9 by the Senior Examiner of Trade Marks, vide order dated January 2, 2024.

Grey Swift applied for registration of the word mark “BharatStamp” on February 20, 2021, on a ‘proposed to be used’ basis. The mark faced objection under Section 9(1)(a) of the Act, which bars registration of marks devoid of distinctive character. The Examiner, after reviewing the evidence and submissions, concluded that the mark lacked distinctiveness and was common in use, and therefore unregistrable.

Aggrieved, the appellant contended that “BharatStamp” is a novel and arbitrary juxtaposition of two unrelated terms: “Bharat,” a Sanskrit-origin proper noun, and “Stamp,” an English word with multiple meanings. The appellant argued that the term, when taken as a whole, has no direct reference to digital stamping or the product itself and thus qualifies as suggestive. Consequently, it was inherently distinctive and registrable.

The appellant emphasized the anti-dissection rule, asserting that trademarks must be evaluated as a whole. They relied on decisions such as Global Super Parts v. Blue Super Flame Industries, Ticona Polymers, Inc. v. Registrar of Trade Marks, and T.V. Venugopal v. Ushodaya Enterprises Ltd. to assert that distinctiveness cannot be determined by dissecting the mark into its parts. Moreover, the mark was claimed to have acquired secondary meaning through prolonged and consistent use, with the product used across 20 states, catering to over 300 clients and receiving public recognition, awards, and government empanelments.

Conversely, the respondent argued that the mark lacked distinctiveness and could not be associated with the appellant's goods. It was also asserted that since the application was filed on a ‘proposed to be used’ basis, the appellant could not claim acquired distinctiveness or secondary meaning. Further, the evidence supporting secondary meaning post-dated the impugned order and therefore could not be considered.

In its analysis, the Court reiterated that under Section 9(1)(a), a trademark must have the capacity to distinguish the goods or services of one party from another. The Court held that “BharatStamp” is not a dictionary term nor a colloquial phrase. Instead, it is a coined, arbitrary, and fanciful term with no immediate reference to the appellant’s services. Citing the Supreme Court in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., the Court emphasized that invented words, even if derived from known terms, are registrable if the resulting expression is novel and requires thought to interpret.

The Court further cited McCarthy on Trademarks and Unfair Competition to affirm that a combination of generic words could result in a distinctive composite mark. It upheld the principle that such composite marks must be evaluated as a whole (anti-dissection), a view echoed in Ticona Polymers and affirmed by a Division Bench in Marico Ltd. v. Agro Tech Foods Ltd.

On the issue of secondary meaning, the Court agreed with the precedent in Zydus Wellness Products Ltd. and Marico Ltd., clarifying that distinctiveness may be assessed up to the date of registration and not just the date of application.

Lastly, the Court acknowledged that the Registrar had allowed other marks with similar structural elements (“Bharat” and “Stamp”) or closely related word marks across various classes. While each application must be assessed independently, inconsistency in the Registrar’s approach, especially given the allowance of “BharatSign” to the same applicant, was noted.

Decision:

The Court allowed the appeal, set aside the impugned order dated January 2, 2024, and directed that the mark “BharatStamp” (Application No. 4872027) be processed for registration. However, the Court clarified that registration of the composite mark does not grant exclusive rights over its individual components, i.e., “Bharat” or “Stamp.”

Case Title: Grey Swift Pvt. Ltd. Vs. Registrar of Trade Marks

Neutral Citation: 2025:DHC:2609

Court: High Court of Delhi

Coram: Hon’ble Mr. Justice Saurabh Banerjee

Case No.: C.A.(COMM.IPD-TM) 18/2024

Date of Judgment: April 16, 2025