Azure Hospitality Private Limited Vs Phonographic Performance Limited

The intersection of intellectual property law and commercial interests often gives rise to complex disputes, particularly in the realm of copyright law. The case of Azure Hospitality Private Limited versus Phonographic Performance Limited (PPL) before the High Court of Delhi is a landmark litigation that delves into the intricate provisions of the Copyright Act, 1957, specifically addressing the rights of copyright owners and the regulatory framework governing the licensing of sound recordings. This case study explores the nuances of the dispute, which centers on whether an assignee of copyrighted sound recordings, such as PPL, can issue licenses without being a registered copyright society or a member thereof, as mandated by Section 33 of the Copyright Act. The judgment, delivered on April 15, 2025, not only resolves the immediate conflict but also clarifies critical aspects of copyright law, balancing the rights of copyright owners with the public interest in preventing monopolistic practices.

Detailed Factual Background

Phonographic Performance Limited (PPL), a company registered under the Companies Act, 2013, operates as an assignee of copyrights in sound recordings, holding public performance rights for over 400 music labels and controlling 80 to 90% of all sound recordings in India. These rights were assigned to PPL by the original owners (producers) of the sound recordings under Section 18(1) of the Copyright Act, making PPL the deemed owner of the copyrights under Section 18(2). Azure Hospitality Private Limited, a company operating 86 high-end restaurants with a turnover of ₹161 crores, was found to be playing these copyrighted sound recordings in its outlets without obtaining a license from PPL. On July 20, 2022, PPL issued a cease-and-desist notice to Azure, demanding that it stop exploiting the sound recordings. Azure’s failure to comply prompted PPL to file a suit, CS (Comm) 714/2022, before the Delhi High Court, seeking a permanent injunction to restrain Azure from using PPL’s copyrighted works, along with damages and costs. PPL also filed an application (IA 16777/2022) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC) for an interim injunction, while Azure countered with an application (IA 17272/2022) under Order XXXIX Rule 4 to vacate the interim injunction granted on October 14, 2022. The Single Judge’s order on March 3, 2025, granting PPL’s application and dismissing Azure’s, led to the present appeal before the Division Bench of the Delhi High Court.

PPL’s dominance in the sound recording market stems from assignment deeds executed by original copyright owners, granting PPL the right to license public performances of these recordings. Notably, PPL was a registered copyright society from May 7, 1996, to June 21, 2014, under Section 33 of the Copyright Act. However, following the Copyright (Amendment) Act, 2012, which required re-registration of existing copyright societies within one year, PPL’s application for re-registration was rejected, leaving it unregistered as a copyright society at the time of the dispute. Azure argued that PPL’s lack of registration or membership in a registered copyright society, such as the Registered Music Performance Limited (RMPL), barred it from issuing licenses, rendering its suit and injunction application untenable.

Detailed Procedural Background

The procedural journey of this case began with PPL filing CS (Comm) 714/2022 before a Single Judge of the Delhi High Court, accompanied by IA 16777/2022 for an interim injunction to restrain Azure from using PPL’s copyrighted sound recordings. On October 14, 2022, the Single Judge issued summons in the suit and notice in the application, granting an ex parte ad interim injunction in favor of PPL, restraining Azure from exploiting PPL’s copyrighted works until further orders. Azure responded by filing IA 17272/2022 under Order XXXIX Rule 4 of the CPC, seeking to vacate the interim injunction. On March 3, 2025, the Single Judge pronounced a judgment allowing PPL’s application and dismissing Azure’s, thereby continuing the injunction pending the final adjudication of the suit. Aggrieved by this decision, Azure filed an appeal, FAO(OS) (Comm) 41/2025, before the Division Bench of the Delhi High Court, along with associated applications (CAV 106/2025, CM APPL. 16177/2025, CM APPL. 16178/2025, and CM APPL. 16179/2025). The Division Bench, comprising Justices C. Hari Shankar and Ajay Digpaul, reserved the judgment on April 8, 2025, and pronounced it on April 15, 2025, modifying the Single Judge’s order to balance the equities between the parties while addressing the core legal issue.

Issues Involved in the Case

The primary issue in this case was whether PPL, as an assignee of copyrights in sound recordings under Section 18 of the Copyright Act, could issue licenses for their public performance without being a registered copyright society or a member of one, as required by Section 33(1) of the Copyright Act? This issue necessitated an examination of the interplay between Sections 18, 30, and 33 of the Copyright Act, particularly the scope of the first proviso to Section 33(1), which allows a copyright owner to grant licenses in their individual capacity. A related question was whether PPL’s lack of registration or membership in a registered copyright society rendered it incapable of enforcing its copyright through an infringement suit or seeking an injunction. Additionally, the court had to consider whether the Single Judge’s grant of an interim injunction was justified, given the principles of prima facie case, balance of convenience, and irreparable loss, and whether an alternative equitable remedy, such as a deposit, could be imposed pending the suit’s final adjudication.

Detailed Submission of Parties

Azure argued that Section 33(1) of the Copyright Act was designed to prevent cartelization and monopolistic practices by entities like PPL, which control a significant portion of the sound recording market. They contended that the phrase “carrying on the business of issuing or granting licenses” in Section 33(1) applied to PPL, as acknowledged in the Single Judge’s judgment, which noted PPL’s engagement in such business. Azure emphasized that Section 33(1) prohibits any person or association from issuing licenses without registration as a copyright society under Section 33(3) or membership in one, subjecting them to the tariff regime under Section 33A. This regulatory framework, introduced by the Copyright (Amendment) Act, 2012, aims to ensure transparency and prevent exorbitant licensing fees. Azure argued that the first proviso to Section 33(1), which allows a copyright owner to grant licenses in their individual capacity, should not override the main section’s prohibition. The proviso’s requirement that such licenses be “consistent with obligations as a member of a registered copyright society” implies that the copyright owner must be a member of such a society, a condition PPL did not fulfill. Azure further relied on the 227th Report of the Parliamentary Standing Committee (PSC), which highlighted the need for transparency in tariff schemes to curb arbitrary pricing by copyright societies like PPL. Alternatively, Azure proposed that, if an injunction was deemed necessary, the court should direct a deposit based on RMPL’s tariff rates, balancing convenience and preventing irreparable loss.

PPL countered that PPL, as the assignee and deemed owner of copyrights under Section 18(2), had an absolute right under Section 30 to grant licenses on its own terms, unfettered by Section 33(1). He argued that the first proviso to Section 33(1) preserved this right, allowing PPL to license its “own works” without needing to be a registered copyright society or a member thereof. Sibal distinguished between compulsory and voluntary licensing, asserting that PPL’s voluntary licensing under Section 30 was not subject to the regulatory constraints applicable to copyright societies. He relied on precedents like Novex Communication v Lemon Tree Hotels and Novex Communications v Trade Wings Hotel, which held that Section 33(1) does not curtail a copyright owner’s licensing rights under Section 30. Sibal also challenged Azure’s portrayal as a financially strained entity, noting its substantial turnover and arguing that Azure sought to exploit PPL’s sound recordings without payment. He opposed Azure’s deposit proposal, asserting that it undermined PPL’s proprietary rights and that an injunction was the appropriate remedy to protect PPL’s interests pending the suit’s outcome.

Detailed Discussion on Judgments Cited by Parties and Their Context

The parties and the court relied on several judicial precedents to support their interpretations of the Copyright Act, each contributing to the legal discourse on copyright ownership and licensing.

1. Novex Communication v Lemon Tree Hotels, 2019 SCC OnLine Del 6568
   Cited by PPL and the Single Judge, this Delhi High Court decision held that an assignee of copyrights under Section 18, like Novex, could grant licenses under Section 30 without being a registered copyright society. The court reasoned that Section 33(1) does not restrict the owner’s inherent right to license their works, as preserved by the first proviso. In the Azure-PPL case, PPL relied on this precedent to argue that its status as an assignee under Section 18(2) entitled it to license its sound recordings independently of Section 33(1). However, the Division Bench found this interpretation problematic, as it rendered Section 33(1)’s registration requirement redundant, failing to harmonize the proviso with the main section.
2. Novex Communications v Trade Wings Hotel, 2024 SCC OnLine Bom 252
   This Bombay High Court judgment, also cited by PPL and the Single Judge, reinforced the Novex v Lemon Tree holding, stating that Section 33(1) does not curtail the copyright owner’s licensing power under Section 30. The court emphasized that Sections 30 and 33 operate in distinct chapters, with the former granting unfettered licensing rights to owners. PPL leveraged this decision to assert its right to license sound recordings without registration. The Division Bench, however, critiqued this view for overlooking the phrase “or in respect of any other rights conferred by this Act” in Section 33(1), which subjects Section 30 rights to the registration requirement.
3. Entertainment Network India v Super Cassette Industries, (2008) 13 SCC 30
   Cited by both parties, this Supreme Court judgment clarified that the 1994 amendment to the Copyright Act did not divest copyright owners of their licensing rights but provided an option to exploit copyrights through copyright societies. PPL used this to argue that its Section 30 rights remained intact, while Azure highlighted the court’s discussion on compulsory licensing to underscore the regulatory intent behind Section 33. The Division Bench noted that Azure’s reliance on paragraph 88, which dealt with compulsory licensing, was misplaced in the context of PPL’s voluntary licensing but affirmed that the judgment supported the owner’s licensing autonomy, subject to statutory constraints.
4. Phonographic Performance Ltd. v Canvas Communication, Citation Not Provided in Document
   Referenced by the Single Judge, this Delhi High Court decision followed Novex v Lemon Tree, affirming that an assignee could license copyrights without being a copyright society. PPL cited it to bolster its position, but the Division Bench did not engage extensively with this case, focusing instead on the broader statutory interpretation.
5. Director of Supplies and Disposals v Member, Board of Revenue, AIR 1967 SC 1826
   Cited by the Division Bench, this Supreme Court decision defined “carrying on business” as requiring a systematic, profit-motivated activity. The court used this to establish that PPL’s licensing activities constituted a “business” under Section 33(1), triggering the registration requirement.
6. Assistant Commissioner v Hindustan Urban Infrastructure Ltd., (2015) 3 SCC 745
   This Supreme Court case, referenced by the court, expanded the meaning of “carrying on business” to encompass a wide range of activities beyond buying and selling. It supported the court’s view that PPL’s licensing operations fell within Section 33(1)’s ambit.
7. Narain Swadeshi Weaving Mills v Commissioner of Excess Profits Tax, AIR 1955 SC 176
   Cited by the court, this Supreme Court decision defined “business” as a systematic activity with a profit motive, reinforcing PPL’s engagement in the business of licensing under Section 33(1).
8. Barendera Prasad v ITO, AIR 1981 SC 1047
   This Supreme Court case, used by the court, described “business” as a continuous, income-generating activity, further confirming PPL’s activities as a business subject to Section 33(1).
9. Management of Tata Iron and Steel Company Ltd v Chief Inspecting Officer, AIR 2005 SC 1433
   Cited by the court, this decision defined “business” as a commercial enterprise for profit, aligning with the court’s interpretation of PPL’s licensing operations.
10. State of MP v Mukesh, (2006) 13 SCC 197
    Referenced by the court, this Supreme Court case emphasized the continuity aspect of “business,” supporting the application of Section 33(1) to PPL’s ongoing licensing activities.
11. Institute of Chartered Accountants of India v Price Waterhouse, (1997) 6 SCC 312
    Cited by the court, this Supreme Court decision underscored the principle that statutory interpretations should avoid rendering provisions redundant, guiding the court’s rejection of the Novex decisions’ interpretation.
12. Sales Tax Commissioner v B.G. Putal, 1995 Supp (1) SCC 429
    Used by the court, this Supreme Court case held that a proviso cannot dilute the main section’s efficacy, supporting the court’s view that the first proviso to Section 33(1) does not override the registration requirement.

Detailed Reasoning and Analysis of Judge

The Division Bench embarked on a meticulous analysis of the Copyright Act, focusing on Sections 13, 14, 17, 18, 30, and 33, to resolve the central issue. The court began by affirming that sound recordings are a distinct category of copyrightable works under Section 13(1)(c), with the producer as the first owner under Section 17, read with Section 2(d)(v). Section 18(2) unequivocally deemed PPL, as an assignee, the owner of the copyrights in the assigned sound recordings, entitling it to license them under Section 30. However, the court emphasized that Section 16 subjects all copyright rights to the Act’s provisions, setting the stage for examining Section 33(1)’s impact.

Section 33(1) prohibits any person or association from carrying on the business of issuing or granting licenses in copyrighted works except under or in accordance with a registration granted under Section 33(3), which pertains to copyright societies. The court, drawing on Supreme Court precedents like Director of Supplies and Disposals and Narain Swadeshi Weaving Mills, interpreted “carrying on the business” broadly, encompassing PPL’s systematic licensing activities, as admitted in the Single Judge’s judgment. The court noted that PPL’s prior status as a registered copyright society (1996–2014) and its unsuccessful re-registration attempt post-2012 underscored its obligation to comply with Section 33(1).

The first proviso to Section 33(1), allowing a copyright owner to grant licenses in their individual capacity “consistent with obligations as a member of a registered copyright society,” was pivotal. The court rejected PPL’s contention, supported by the Novex decisions, that the proviso exempted it from registration requirements. Instead, it held that the proviso assumes the copyright owner is a member of a registered copyright society, as evidenced by the phrase “consistent with obligations.” This interpretation aligned with the principle that a proviso cannot negate the main section’s intent, as per Sales Tax Commissioner v B.G. Putal. The court found that accepting the Novex decisions’ view would render Section 33(1) and Section 33A’s tariff regime redundant, undermining the legislative intent to regulate bulk copyright holders and prevent monopolistic practices, as highlighted in the 227th PSC Report.

The court further noted that sound recordings constitute a distinct class under Section 2(y)(iii), with RMPL being the sole registered copyright society for such works. PPL, not being a registered society or a member of RMPL, could not issue licenses independently. The court distinguished between the owner’s works (those created by the owner) and assigned works, suggesting that the proviso’s licensing right applies to the former, not the latter, though it left this distinction open for final adjudication. The court also addressed Azure’s argument that PPL’s lack of registration barred it from maintaining the suit but refrained from a conclusive finding, as it was not orally argued.

Balancing equities at the interim stage, the court acknowledged that outright vacating the injunction would allow Azure to exploit PPL’s recordings gratis, which was inequitable. Conversely, upholding the injunction without conditions ignored PPL’s non-compliance with Section 33(1). The court crafted an equitable solution, directing Azure to pay PPL at RMPL’s tariff rates for using PPL’s recordings, as if PPL were a member of RMPL, pending the suit’s outcome. This ensured PPL received compensation while aligning with the regulatory framework, subject to final adjudication in CS (Comm) 714/2022.

Final Decision

The Division Bench allowed Azure’s appeal, modifying the Single Judge’s order. It disposed of IA 16777/2022 by directing Azure to pay PPL for using its sound recordings at RMPL’s tariff rates, as per RMPL’s website terms, with both parties required to submit three-monthly payment statements to the Single Judge. The arrangement was subject to the final outcome of CS (Comm) 714/2022, ensuring interim equity without prejudicing the suit’s merits.

Law Settled in This Case

This judgment clarified that any person or association engaged in the business of issuing or granting licenses for copyrighted sound recordings must comply with Section 33(1) of the Copyright Act by being a registered copyright society or a member thereof. The first proviso to Section 33(1) does not exempt assignees under Section 18(2) from this requirement, as it presupposes membership in a registered copyright society. The decision reinforces the regulatory intent of Sections 33 and 33A to prevent monopolistic practices and ensure transparency in licensing tariffs, harmonizing the owner’s licensing rights under Section 30 with the Act’s broader framework. It also underscores the judiciary’s role in balancing proprietary rights with public interest at the interim stage, pending final adjudication.

Case Title: Azure Hospitality Private Limited Vs Phonographic Performance Limited

Date of Order: April 15, 2025

Case No.: FAO(OS) (Comm) 41/2025

Neutral Citation: 2025:DHC:2562-DB

Name of Court: High Court of Delhi

Name of Judges: Justice C. Hari Shankar, Justice Ajay Digpaul

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

Franco India Pharmaceuticals Pvt. Ltd. Vs. Corona Remedies Pvt. Ltd.

In the dynamic realm of intellectual property law, disputes over trademark validity often spotlight the delicate balance between proprietary rights and fair competition. The case of Franco India Pharmaceuticals Pvt. Ltd. versus Corona Remedies Pvt. Ltd., adjudicated by the Bombay High Court, exemplifies this tension. Centered on the registered trademarks "STIMULIV" and "STIMULET," the case delves into the intricacies of Section 124 of the Trade Marks Act, 1999, exploring the threshold for challenging trademark registration validity in infringement suits. This case study unravels the factual and procedural tapestry, dissects the legal issues, and analyzes the judicial reasoning that shaped the court's decision to frame an issue regarding the validity of the plaintiff’s trademark registration.

Detailed Factual Background

Franco India Pharmaceuticals Pvt. Ltd., the plaintiff, held registered trademarks for "STIMULIV" as both a word mark (Registration No. 297201 in Class 5) and a label mark (Registration No. 490598 in Class 5), with registrations dating back to 1974. These marks were used for an ayurvedic preparation aimed at liver stimulation. The plaintiff alleged that Corona Remedies Pvt. Ltd., the defendant, infringed upon its trademarks by using the registered trademark "STIMULET" for similar pharmaceutical products. The defendant countered, asserting that the plaintiff’s "STIMULIV" mark was invalidly registered due to its descriptive nature and misuse beyond a disclaimer limiting its exclusivity to non-descriptive elements. The dispute escalated when the defendant sought to challenge the validity of the plaintiff’s trademark registrations, invoking Section 124 of the Trade Marks Act, 1999, which allows courts to frame issues regarding trademark validity in infringement suits.

Detailed Procedural Background

The plaintiff initiated a commercial intellectual property suit (Commercial IP Suit No. 105 of 2022) in the Bombay High Court’s Commercial Division, seeking to restrain the defendant from using "STIMULET." On March 1, 2021, a Single Judge granted interim relief, prohibiting the defendant from using its trademark during the suit’s pendency. The defendant appealed, and on January 20, 2023, the Division Bench overturned the interim order, finding no prima facie case of similarity between the marks. The plaintiff’s subsequent challenge before the Supreme Court was dismissed, leaving no interim relief in place. Meanwhile, on April 30, 2024, the court framed an issue regarding the validity of the defendant’s "STIMULET" mark at the plaintiff’s behest, under Section 124(1)(b)(ii). The defendant then pressed for a similar issue concerning the plaintiff’s "STIMULIV" marks, relying on pleadings in paragraphs 18 and 41 of its written statement. This request, opposed by the plaintiff, led to the order dated April 7, 2025, by Justice Manish Pitale, which forms the core of this case study.

Issues Involved in the Case

The primary issue was whether the court should frame an issue under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, regarding the validity of the plaintiff’s "STIMULIV" trademark registrations. Sub-issues included: whether the defendant’s pleadings in paragraphs 18 and 41 of the written statement met the statutory requirement of prima facie tenability? whether the defendant’s alleged mutually inconsistent pleas negated its challenge to the plaintiff’s trademark validity; whether the defendant’s prior filing of a rectification petition disqualified it from invoking Section 124; and the appropriate legal threshold for framing such an issue, particularly in light of judicial precedents defining "prima facie tenability.?

Detailed Submission of Parties

The defendant argued that paragraphs 18 and 41 of its written statement sufficiently challenged the validity of the plaintiff’s "STIMULIV" marks. Paragraph 18 alleged that the plaintiff concealed a disclaimer limiting exclusive rights to non-descriptive elements and misused the mark beyond its ayurvedic scope. Paragraph 41 claimed the mark was descriptive, as it directly referenced liver stimulation, rendering its registration invalid. The defendant relied on Section 124(1)(b)(ii), asserting that these pleadings satisfied the "low threshold prima facie case" test, as elucidated in Patel Field Marshal Agencies v. P. M. Diesels Ltd., (2018) 2 SCC 112. Citing Pepsico Inc. v. Parle Agro Pvt. Ltd. (CS (COMM) 268 of 2021, Delhi High Court, September 18, 2023) and Dharampal Satyapal Ltd. v. Basant Kumar Makhija, 2023 SCC OnLine Del 6598, the defendant emphasized that the court need only form a tentative view of tenability, not delve into merits. The defendant further argued that its alternative pleas under Sections 12, 28(3), and 30(2)(e) were permissible and did not undermine its validity challenge, as it never admitted similarity between the marks. On the rectification petition issue, the defendant cited Resilient Innovations Pvt. Ltd. v. Phonepe Pvt. Ltd., 2023 SCC OnLine Del 2972, advocating that such petitions could be held in abeyance to avoid multiplicity of proceedings.

The plaintiff opposed framing the issue, arguing that the defendant’s prior rectification petition rendered Section 124 jurisdiction inapplicable, as the section contemplates prospective filings within three months of issue framing. The plaintiff contended that the defendant’s pleadings were frivolous, given "STIMULIV’s" 50-year distinctive use and registration under the Trade and Merchandise Marks Act, 1958. Citing Burger King Corporation v. Ranjan Gupta, (2023) 94 PTC 137, the plaintiff argued that the defendant’s descriptive nature claim was untenable. The plaintiff further asserted that the defendant’s reliance on Sections 12, 28(3), and 30(2)(e) admitted mark similarity, creating mutually destructive pleas that disqualified its validity challenge, as per R. N. Gosain v. Yashpal Dhir, (1992) 4 SCC 683, and Neon Laboratories Ltd. v. Themis Medicare Ltd., 2014 SCC OnLine Bom 1087.

Detailed Discussion on Judgments Cited by Parties

The defendant relied on Patel Field Marshal Agencies v. P. M. Diesels Ltd., (2018) 2 SCC 112, where the Supreme Court clarified that Section 124 (pari materia with Section 111 of the 1958 Act) aims to eliminate false, frivolous, or untenable invalidity claims. The court emphasized a two-step test: specific pleadings challenging validity and arguable grounds demonstrating prima facie tenability. This precedent was pivotal in defining the court’s jurisdiction and the low threshold for issue framing. In Pepsico Inc. v. Parle Agro Pvt. Ltd. (CS (COMM) 268 of 2021, Delhi High Court, September 18, 2023), the Delhi High Court held that "tenable" requires only a subjective, tentative assessment of arguability, not a merits-based inquiry. Similarly, Dharampal Satyapal Ltd. v. Basant Kumar Makhija, 2023 SCC OnLine Del 6598, reinforced that the court need not rigidly interpret "tenable," focusing on a preliminary finding. Lupin Ltd. v. Johnson & Johnson, AIR 2015 Bom 50, a Full Bench decision, distinguished the low threshold under Section 124 from the higher threshold for interim relief, using the term "low threshold prima facie case." Resilient Innovations Pvt. Ltd. v. Phonepe Pvt. Ltd., 2023 SCC OnLine Del 2972, supported holding rectification petitions in abeyance to streamline proceedings.

The plaintiff cited Burger King Corporation v. Ranjan Gupta, (2023) 94 PTC 137, where the Delhi High Court rejected a validity challenge due to identical marks and frivolous defenses, but the Bombay High Court distinguished this case due to differing factual contexts. R. N. Gosain v. Yashpal Dhir, (1992) 4 SCC 683, and Neon Laboratories Ltd. v. Themis Medicare Ltd., 2014 SCC OnLine Bom 1087, were invoked to argue against mutually destructive pleas, asserting that the defendant’s reliance on similarity-based defenses contradicted its validity challenge. However, the court found these inapplicable, as the defendant’s alternative pleas were permissible and did not admit similarity.

Detailed Reasoning and Analysis of Judge

Justice Manish Pitale meticulously analyzed the defendant’s pleadings, the plaintiff’s objections, and the legal framework under Section 124. The court applied the two-step test from Patel Field Marshal, first confirming that paragraphs 18 and 41 explicitly challenged the plaintiff’s trademark validity by alleging descriptive use and disclaimer violations. The second step assessed prima facie tenability, adopting the "low threshold prima facie case" test from Lupin Ltd. The court found the defendant’s claims arguable, noting that whether "STIMULIV" was descriptive or misused beyond its disclaimer warranted further scrutiny, without delving into merits.

The plaintiff’s argument on mutually destructive pleas was rejected, as the court recognized the defendant’s right to take alternative defenses. The Division Bench’s prior ruling clarified that the defendant never admitted mark similarity, undermining the plaintiff’s reliance on R. N. Gosain and Neon Laboratories. The court also dismissed the plaintiff’s objection to the defendant’s prior rectification petition, aligning with Resilient Innovations and Pepsico to avoid procedural multiplicity. Emphasizing Patel Field Marshal’s broader interpretation of Section 124, the court held that the section’s heading did not restrict its application to prospective rectification filings. The court concluded that the defendant’s pleas were neither false, frivolous, nor untenable, justifying the framing of an issue on the validity of the plaintiff’s trademarks.

Final Decision

The Bombay High Court, on April 7, 2025, framed the following issue: "Whether the registration of the trademark ‘STIMULIV’ bearing registration No. 297201 in Class 5 and registration of the label mark ‘STIMULIV’ bearing registration No. 490598 in Class 5, in the name of the plaintiff, is valid or not?" The suit’s proceedings were stayed, allowing the defendant to pursue its existing rectification petition. The court rejected the plaintiff’s contentions, affirming the defendant’s right to challenge the plaintiff’s trademark validity under Section 124.

Law Settled in This Case

This case reinforces the "low threshold prima facie case" test for framing issues under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, requiring only specific pleadings" and arguable grounds, not a merits-based inquiry. It clarifies that defendants may raise alternative and mutually inconsistent pleas without undermining a validity challenge, provided no admission of mark similarity exists. The decision also establishes that prior rectification petitions do not preclude Section 124 jurisdiction, with courts favoring procedural efficiency by holding such petitions in abeyance. The ruling underscores the judiciary’s role in filtering false or frivolous claims while facilitating legitimate challenges to trademark registrations.

Case Title:Franco India Pharmaceuticals Pvt. Ltd. Vs. Corona Remedies Pvt. Ltd.
Date of Order:April 7, 2025
Case No.Commercial IP Suit No. 105 of 2022
Name of Court:High Court of Bombay
Name of Judge:Manish Pitale, H.J

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

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

Johnson & Johnson Vs. Pritamdas Arora

The plaintiff, Johnson & Johnson, is a globally recognized healthcare conglomerate based in New Jersey, USA, with over 230 subsidiaries and operations in more than 60 countries. Through its subsidiary Ethicon, it manufactures and distributes surgical medical devices under registered trademarks such as ‘SURGICEL’, ‘ETHICON’, and ‘LIGACLIP’. These marks have been in use in India since the 1990s and are registered across several jurisdictions including India. Johnson & Johnson’s products are particularly critical for bleeding management during surgery and have a high reputation for sterility, safety, and reliability.

The suit was initiated after a counterfeit ‘SURGICEL’ device was discovered during brain surgery at the University of Kentucky in the USA in 2019. An investigation revealed that over 1,000 counterfeit units were supplied to the university by XS Supply, a U.S.-based entity, which had sourced the devices from Lion Heart Surgical Supply LLC. Lion Heart had, in turn, obtained the products from Pure Care Traders F.Z.E., based in the UAE. Crucially, Pure Care provided documentation identifying Pritamdas Arora, operating through his business M/s Medserve in New Delhi, India, as the original supplier. Johnson & Johnson undertook international legal proceedings including seizures and preliminary injunctions in the U.S., and subsequently filed this suit in India.

The plaintiff’s evidence revealed that counterfeit products originating from the defendants were found to be contaminated and inadequately oxidized, posing severe health risks. Further investigation uncovered a deliberate international distribution network managed by defendant no.1, Mr. Pritamdas Arora, aided by his wife, defendant no.2, Ms. Ritika Arora. Evidence extracted from raids, including WhatsApp chats, emails, and hard drives, showed that the defendants had knowingly manufactured, repackaged, and exported counterfeit surgical devices, including expired goods with falsified expiry labels.

On 11 October 2019, an ad-interim injunction was granted in favour of the plaintiff, and Local Commissioners were appointed to seize infringing goods. Multiple premises were raided, and a vast volume of counterfeit products, shipping records, forged authorization letters, and digital evidence were seized. Defendant no.1 was later found to have forged stamps of Johnson & Johnson and maintained communication with international counterfeit suppliers from Turkey and China. Despite court orders, both defendants absconded and failed to appear before the court, resulting in ex-parte proceedings from 6 December 2022.

In evaluating the evidence, the Court noted that the defendants deliberately engaged in counterfeiting and intellectual property violations on an international scale. The court took serious note of voice messages and transcripts in which the defendant admitted to selling expired goods and instructed associates to falsify documentation to conceal the nature of the products. Financial records revealed proceeds exceeding ₹9.39 crores, and additional evidence of Hawala transactions was also placed on record.

The Court found the defendants liable for trade mark infringement, counterfeiting, passing off, and fraudulent misrepresentation. The Judge stressed that counterfeiting of surgical products posed an egregious threat to public health and could not be viewed merely as commercial infringement. The defendants' conduct was declared calculated, willful, and malicious, necessitating punitive action.

Accordingly, the Hon’ble Court granted a permanent injunction restraining the defendants from using the plaintiff’s marks or dealing in counterfeit medical devices. The plaintiff was authorized to destroy the seized infringing goods. The Court awarded compensatory damages of ₹2,34,82,986/- (calculated at 25% of the established sales of counterfeit goods) and exemplary damages of ₹1,00,00,000/- to deter similar violations in the future. Actual costs were also granted, to be determined upon submission of a bill of costs by the plaintiff under the Delhi High Court (Original Side) Rules, 2018.

This judgment strongly reaffirms the Court's commitment to protecting intellectual property, particularly in the medical domain, and sends a powerful message against those engaged in counterfeiting of life-saving devices. The judgment upholds both statutory and equitable principles, balancing enforcement of trade mark rights with the overriding public interest in health and safety.

Cause Title: Johnson & Johnson Vs. Pritamdas Arora 

Case Number: CS(COMM) 570/2019 

Neutral Citation: [2025:DHC:1585] 

Date of Order: 11 March 2025

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Arddy Engineering Innovations Pvt. Ltd. Vs Heraeus Technologies Indian Pvt. Ltd.

Introduction

In the intricate landscape of intellectual property disputes, the intersection of civil and criminal law often presents complex challenges, particularly when allegations of trademark infringement escalate into accusations of criminal misconduct. The case of Arddy Engineering Innovations Pvt. Ltd. & Ors. v. Heraeus Technologies India Pvt. Ltd., adjudicated by the High Court at Calcutta, exemplifies this convergence. This criminal revisional application, decided on April 16, 2025, addresses the contentious issue of whether a criminal proceeding for cheating, forgery, and criminal conspiracy should be quashed when rooted in a terminated distributorship agreement and alleged trademark misuse. Centered on the misuse of the trademark 'Hydris' for hydrogen sensors critical to railway safety, the case underscores the judiciary’s cautious approach to quashing criminal proceedings at a preliminary stage, emphasizing the need for trial to test serious allegations. The Calcutta High Court’s ruling reinforces the distinction between civil disputes and criminal offenses, offering significant insights for businesses navigating trademark enforcement in India.

Detailed Factual Background

Heraeus Technologies India Pvt. Ltd., the complainant, is a company that owns proprietary trademarks and technologies, including the 'Hydris' hydrogen sensor, uniquely approved by the Research Design and Standard Organization for measuring hydrogen levels in liquid steel, a critical safety component for railway tracks. Arddy Engineering Innovations Pvt. Ltd., along with its managing directors (petitioners 2 and 3), entered into an International Exclusive Distributorship Agreement (IEDA) with Heraeus in 2002, granting Arddy the right to distribute Heraeus’s products, including those bearing the 'Hydris' trademark, for advertising purposes only. This agreement was terminated by Heraeus on October 24, 2013, ending Arddy’s entitlement to use Heraeus’s trademarks.

Heraeus alleged that post-termination, Arddy developed a hydrogen sensor named 'Hysen' and affixed the 'Hydris' trademark to it, falsely representing it as Heraeus’s genuine product. These counterfeit sensors were allegedly supplied to Indian Railways, Bhilai Steel Plant (approximately 7,000–8,000 units in 2014), and other steel factories, deceiving customers and compromising railway and defense safety. Heraeus claimed this caused wrongful loss to its reputation and finances, constituting cheating under Section 415, illustration (b) of the Indian Penal Code (IPC), as well as forgery and criminal conspiracy. Despite a civil court injunction on October 28, 2015, from the District Judge of Sundergarh, prohibiting Arddy from using the 'Hydris' mark, Heraeus alleged that Arddy continued these infringing activities with impunity.

Arddy countered that the 11-year business relationship under the IEDA was unblemished until its termination, negating any initial intent to cheat. They argued that Heraeus’s allegations were a civil dispute over breach of contract, already addressed in a 2015 civil suit where Heraeus obtained the injunction, and a 2013 suit by Arddy for damages against Heraeus for IEDA violations, both pending. Arddy claimed the criminal complaint, filed six years after the civil suit, was a belated attempt to harass them.

Detailed Procedural Background

Heraeus initiated a criminal complaint (Case No. 743 of 2021) before the Judicial Magistrate, 4th Court, Barrackpore, under Sections 420 (cheating), 406 (criminal breach of trust), 461 (breaking open receptacle with intent to commit offense), 471 (using forged document as genuine), 120B (criminal conspiracy), and 34 (common intention) of the IPC. The Magistrate took cognizance on December 29, 2021, and, after examining witnesses under Section 200 of the Code of Criminal Procedure (Cr.P.C.), issued process against Arddy on January 4, 2022, finding a prima facie case.

Arddy challenged this order in a prior revisional application before the Calcutta High Court, arguing that the Magistrate issued process without conducting a mandatory inquiry under Section 202 Cr.P.C., as the accused resided outside the court’s jurisdiction. The High Court directed the Magistrate to order an inquiry by the Officer-in-Charge, Noapara Police Station. The police submitted a report on October 14, 2022, verifying the complainant’s accusations. On November 14, 2022, the Magistrate reissued process under Section 204 Cr.P.C., prompting Arddy to file the present revisional application (CRR 4690 of 2022) with an interim application (CRAN 2 of 2024), seeking to quash the proceedings and the November 14, 2022, order.

The matter was heard on January 29, 2025, by Hon’ble Dr. Justice Ajoy Kumar Mukherjee, with judgment delivered on April 16, 2025, after considering arguments from both parties.

Issues Involved in the Case

The case raised several pivotal issues. First, whether the allegations in the complaint constituted prima facie offenses under Sections 420, 406, 461, 471, 120B, and 34 of the IPC, or were merely a civil dispute over breach of contract? Second, whether the criminal complaint, filed six years after Heraeus’s civil suit, was a malicious attempt to harass Arddy, warranting quashing under Section 482 Cr.P.C? Third, whether the stands taken by Heraeus in the civil and criminal proceedings were contradictory, undermining the criminal case. Fourth, whether specific allegations against petitioners 2 and 3 (managing directors) were sufficient to implicate them, or if they were vicariously targeted. Fifth, whether the Magistrate applied judicial mind in issuing process, or if the order was mechanical, violating procedural norms.

Detailed Submission of Parties

Arddy argued that the complaint failed to establish the ingredients of the alleged IPC offenses. They emphasized the 11-year unblemished business relationship under the IEDA, terminated in 2013, negating any initial intent to cheat under Section 420 IPC. 

The allegations, they contended, amounted to a civil breach of contract, as evidenced by Heraeus’s 2015 civil suit and Arddy’s 2013 damages suit, both pending. The six-year delay in filing the criminal complaint suggested malice, supported by State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335, which lists malicious prosecution as a ground for quashing. 

Arddy cited All Cargo Movers India (P) Ltd. v. Dhanesh Badarmal Jain, (2007) 14 SCC 776, arguing that Heraeus’s civil suit claimed breach of IEDA terms, while the criminal complaint alleged counterfeiting, indicating contradictory stands. They relied on Mitesh Kumar J. Shah v. State of Karnataka, (2022) 14 SCC 572, to assert that civil disputes should not be criminalized.

For petitioners 2 and 3, Arddy argued no specific overt acts were alleged, citing Sharad Kumar Sanghi v. Sangita Rane, (2015) 12 SCC 781, and Maksud Saiyed v. State of Gujarat, (2008) 5 SCC 668, which protect directors from vicarious liability without evidence of active involvement. They further contended that the Magistrate’s order was mechanical, lacking judicial application, per Mehmood Ul Rehman v. Khazir Mohammad Tunda, (2015) 12 SCC 420. Arddy relied on admitted documents (civil suit plaint, injunction order) as sterling evidence for quashing under Section 482 Cr.P.C.

Heraeus countered that the complaint clearly alleged cheating under Section 415, illustration (b) IPC, as Arddy affixed the 'Hydris' mark to counterfeit 'Hysen' sensors, deceiving customers like Bhilai Steel Plant. They argued that the Noapara Police inquiry, ordered under Section 202 Cr.P.C., verified these allegations, and the Magistrate’s November 14, 2022, order reflected satisfaction, negating claims of mechanical issuance. Heraeus cited M. Krishnan v. Vijay Singh, (2001) 8 SCC 645, to assert that pending civil suits do not bar criminal proceedings, as civil and criminal actions have distinct yardsticks. They relied on State of Bihar v. P.P. Sharma, 1992 Supp (1) SCC 222, to argue that Arddy’s untested documents (supplementary affidavits) should not be considered at this stage.

Heraeus maintained that their civil and criminal stands were consistent, both alleging Arddy’s unauthorized use of 'Hydris' post-termination, violating the 2015 injunction. They distinguished All Cargo Movers, noting no contradiction, and Mitesh Kumar J. Shah, as factually irrelevant, given Heraeus’s unilateral termination rights under the IEDA. For petitioners 2 and 3, Heraeus pointed to specific allegations in the complaint (paragraphs 4, 6, 13), negating vicarious liability claims, distinguishing Sharad Kumar Sanghi and Maksud Saiyed. They urged the court to allow the trial to proceed, citing the inquiry report’s findings and public safety concerns, and sought expeditious disposal.

Detailed Discussion on Judgments Cited by Parties

The court analyzed several precedents cited by the parties, each shaping its approach to quashing criminal proceedings:

State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335: Arddy relied on paragraph 102(7), which lists malicious prosecution with ulterior motives as a ground for quashing under Section 482 Cr.P.C. The court found this inapplicable, as Heraeus’s complaint, supported by the police inquiry, disclosed prima facie offenses, negating claims of malice or personal grudge.

All Cargo Movers India (P) Ltd. v. Dhanesh Badarmal Jain, (2007) 14 SCC 776: Arddy cited this Supreme Court ruling, where contradictory stands in civil and criminal proceedings justified quashing. The court distinguished it, noting that Heraeus’s civil suit (breach of IEDA) and criminal complaint (counterfeiting) were consistent, both alleging unauthorized use of 'Hydris,' as evidenced by the 2015 injunction order.

Mitesh Kumar J. Shah v. State of Karnataka, (2022) 14 SCC 572: Arddy invoked this Supreme Court decision, which cautioned against criminalizing civil disputes. The court deemed it inapplicable, as Heraeus’s allegations of cheating and forgery involved distinct criminal elements (deceptive counterfeiting), not merely contractual breaches, and the IEDA’s termination clause supported Heraeus’s unilateral action.

Sharad Kumar Sanghi v. Sangita Rane, (2015) 12 SCC 781: Arddy relied on this Supreme Court ruling, which protects directors from vicarious liability absent specific allegations. The court distinguished it, noting that Heraeus’s complaint (paragraphs 4, 6, 13) detailed petitioners 2 and 3’s roles, implicating them directly, and the company (petitioner 1) was also a party, unlike in Sanghi.

Maksud Saiyed v. State of Gujarat, (2008) 5 SCC 668: Arddy cited this Supreme Court case, reinforcing that directors require specific allegations for liability. The court found it inapplicable, as Heraeus’s complaint specified individual roles for petitioners 2 and 3, distinguishing it from cases of vicarious implication.

Mehmood Ul Rehman v. Khazir Mohammad Tunda, (2015) 12 SCC 420: Arddy argued that the Magistrate’s order lacked judicial application, per this Supreme Court ruling, which requires magisterial satisfaction for issuing process. Heraeus countered, citing the same case, that no formal speaking order is needed. The court agreed with Heraeus, noting the Magistrate’s reliance on the Section 202 inquiry report, reflecting satisfaction.

M. Krishnan v. Vijay Singh, (2001) 8 SCC 645: Heraeus relied on this Supreme Court decision, which held that pending civil suits do not justify quashing criminal proceedings, as civil and criminal actions have distinct standards. The court found this persuasive, noting that Heraeus’s allegations of cheating and forgery required independent trial adjudication, despite civil litigation.

State of Bihar v. P.P. Sharma, 1992 Supp (1) SCC 222: Heraeus cited this Supreme Court ruling to argue that Arddy’s untested documents should not be considered under Section 482 Cr.P.C. The court agreed, limiting its analysis to the complaint and police report, excluding Arddy’s supplementary affidavits.

Faisal v. State of U.P., (2013) 2 SCC 801: Heraeus referenced this Supreme Court case (though not detailed in the judgment), likely to support the coexistence of civil and criminal proceedings. The court implicitly accepted this, aligning with M. Krishnan.

Hira Lal Hari Lal Bhagwati v. CBI, (2009) 11 SCC 529: Heraeus cited this Supreme Court decision, possibly to emphasize criminal liability for deceptive practices. The court did not elaborate but found Heraeus’s allegations sufficient for trial.

These precedents underscored the court’s reluctance to quash proceedings when prima facie offenses are disclosed, prioritizing trial for evidence testing.

Detailed Reasoning and Analysis of Judge

Court’s analysis was grounded in the principles governing Section 482 Cr.P.C., which allows quashing only when no prima facie case is disclosed or proceedings are an abuse of process. The court focused on the complaint’s allegations, the Section 202 inquiry report, and Section 415, illustration (b) IPC, which defines cheating as deceiving by counterfeit marks to induce purchase.

The court found that Heraeus’s complaint detailed Arddy’s post-termination use of the 'Hydris' mark on 'Hysen' sensors, deceiving customers like Bhilai Steel Plant into believing they were Heraeus’s products. This aligned with illustration (b), establishing a prima facie case of cheating. Specific allegations of supplying 7,000–8,000 counterfeit units in 2014, violating the 2015 injunction, and causing monetary and reputational loss to Heraeus, further supported offenses under Sections 406, 461, 471, 120B, and 34 IPC. The Noapara Police report, following a court-directed inquiry, corroborated these claims, indicating witness examination and verification.

Addressing Arddy’s arguments, the court rejected the claim that the dispute was purely civil. While acknowledging civil elements (breach of IEDA), it relied on M. Krishnan to hold that criminal allegations of cheating and forgery required independent trial adjudication. The six-year delay in filing the complaint was not fatal, as the complaint disclosed ongoing violations post-injunction. The court found no contradiction between Heraeus’s civil and criminal stands, distinguishing All Cargo Movers, as both proceedings targeted Arddy’s unauthorized 'Hydris' use. The 2015 injunction order’s narrative confirmed consistency, undermining Arddy’s reliance on contradictory pleadings.

For petitioners 2 and 3, the court noted specific allegations in the complaint, distinguishing Sharad Kumar Sanghi and Maksud Saiyed, as Heraeus implicated the company and directors directly. On the Magistrate’s order, the court, per Mehmood Ul Rehman, held that the November 14, 2022, process issuance, based on the October 14, 2022, inquiry report, reflected judicial satisfaction, not mechanical action. The court adhered to State of Bihar v. P.P. Sharma, excluding Arddy’s untested documents, limiting analysis to the complaint and police report.

The court dismissed Arddy’s Bhajan Lal argument, finding no evidence of malicious intent, as Heraeus’s allegations were substantiated. Public safety concerns, given the sensors’ railway applications, further justified trial. The court concluded that the complaint disclosed prima facie offenses, and quashing would prematurely halt justice, relegating both parties to prove their case at trial.

Final Decision

The Calcutta High Court dismissed the revisional application (CRR 4690 of 2022) on April 16, 2025, refusing to quash the criminal proceedings (Complaint Case No. 743 of 2021) or the Magistrate’s order dated November 14, 2022. The court directed the Judicial Magistrate, 4th Court, Barrackpore, to expedite the trial, ensuring urgent certified copies of the judgment were provided upon request.

Law Settled in This Case

This case establishes several key principles in Indian criminal and intellectual property law. First, under Section 482 Cr.P.C., courts will not quash criminal proceedings when the complaint discloses prima facie offenses, such as cheating under Section 415 IPC, even if civil disputes coexist, per M. Krishnan v. Vijay Singh. Second, allegations of trademark misuse post-termination of a distributorship agreement can constitute criminal offenses like cheating, forgery, and conspiracy, warranting trial to test evidence. Third, civil and criminal proceedings can proceed concurrently, as they involve distinct legal standards, and pending civil suits do not bar criminal action. Fourth, specific allegations against company directors negate claims of vicarious liability, per Sharad Kumar Sanghi, requiring individual roles to be detailed. Fifth, magisterial orders issuing process under Section 204 Cr.P.C. need not be elaborate, provided satisfaction is reflected, per Mehmood Ul Rehman, especially when supported by a Section 202 inquiry. Finally, untested defense documents are inadmissible under Section 482, limiting analysis to the complaint and inquiry reports, per State of Bihar v. P.P. Sharma.

Final Outcome: CRR 4690 of 2022 dismissed. Complaint proceeding in C. Case No. 743 of 2021 to continue. Trial court directed to expedite trial.

Case Title:Arddy Engineering Innovations Pvt. Ltd. Vs Heraeus Technologies Indian Pvt. Ltd.

Judge: Hon’ble Dr. Justice Ajoy Kumar Mukherjee

Court: High Court at Calcutta 

Case No.CRR 4690 of 2022

Date of Order: 16 April 2025

Name of Judge: Ajoy Kumar Mukherjee

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

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