Modern Snacks Private Limited Vs. Kamran Ghani

Introduction: In the dynamic realm of intellectual property law, trademarks serve as vital identifiers of a brand’s identity, fostering trust and recognition among consumers. The case of M/s. Modern Snacks Private Limited v. Kamran Ghani and Another, adjudicated by the High Court of Delhi, exemplifies the complexities surrounding trademark disputes, particularly when marks are phonetically similar and operate within the same market segment. This case revolves around the petitioner’s plea for rectification of the trademark register by cancelling the respondent’s mark ‘MARDEM’, alleging deceptive similarity with their well-established mark ‘MODERN’. The judgment, delivered on April 25, 2025, underscores the judiciary’s role in safeguarding trademark integrity and preventing consumer confusion, offering significant insights into the principles of deceptive similarity and prior use under the Trade Marks Act, 1999.

Detailed Factual Background:Modern Snacks Private Limited, incorporated on November 7, 2005, under the Companies Act, 1956, is engaged in manufacturing and marketing namkeens, snacks, confectionery, and related food items classified under Class 30 of the Trade Marks Act. The petitioner claims proprietorship of the trademark ‘MODERN’ (in both English and Hindi), originally adopted by its predecessor, M/s. Modern Namkeen Bhandar, in 1990. This mark was assigned to the petitioner via an Assignment Deed dated October 20, 2008, and has since become a core component of its trade name. The petitioner holds multiple trademark registrations for ‘MODERN’ in Class 30, including registration nos. 1745147 (effective from October 20, 2008), 2688680 (effective from February 28, 2014), 641088 (effective from September 23, 1994), and 1937328 (effective from March 17, 2010). Over the years, the petitioner has expanded the use of ‘MODERN’ into various derivative trademarks and established a robust market presence through extensive sales, advertising, and online platforms such as Amazon, IndiaMart, and its own domain names, www.modernnamkeen.com and www.modernnamkeen.theshopfloor.in. The petitioner also holds copyright registrations for the artistic works in its ‘MODERN NAMKEEN’ labels, reinforcing its intellectual property portfolio.

The first respondent, Kamran Ghani, operates as the sole proprietor of ‘MARDEM NAMKEEN’ and secured registration for the trademark ‘MARDEM’ (registration no. 3739205) in Class 30 on July 22, 2018. Both parties operate in the same geographical area and cater to similar markets, dealing in snacks and confectionery. Notably, the petitioner alleges that respondent no. 1 previously served as a vendor to the petitioner, implying familiarity with the ‘MODERN’ mark. The petitioner contends that ‘MARDEM’ is phonetically and deceptively similar to ‘MODERN’, likely to confuse consumers and dilute the petitioner’s goodwill. The second respondent, the Registrar of Trade Marks, is a formal party tasked with maintaining the trademark register.

Detailed Procedural Background: The petition, originally filed before the Intellectual Property Appellate Board (IPAB), sought rectification of the trademark register by cancelling the ‘MARDEM’ mark. Following the abolition of the IPAB under the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021, the case was transferred to the High Court of Delhi and registered as C.O. (COMM.IPD-TM) 76/2021. Notices were issued to both respondents, but service to respondent no. 1 proved challenging due to an incomplete address. On March 10, 2023, the court permitted the petitioner to serve respondent no. 1 through his authorized attorney at the Trade Marks Registry. On August 22, 2023, the attorney appeared, clarifying that his authority was limited to the registration process and that he lacked instructions to represent respondent no. 1 in the present proceedings or knowledge of his whereabouts. On November 13, 2024, the court deemed respondent no. 1 served under Rule 2(b) of the Delhi High Court Intellectual Property Rights Division Rules, 2022, and proceeded with the hearing. Respondent no. 1 did not appear or file a reply, leaving the petitioner’s claims uncontroverted. The Registrar of Trade Marks, through counsel, expressed willingness to comply with the court’s directions.

Issues Involved in the Case:The case hinges on several critical issues under the Trade Marks Act, 1999:Whether the respondent’s trademark ‘MARDEM’ is deceptively similar to the petitioner’s registered trademark ‘MODERN’, both operating in Class 30, and likely to cause confusion among consumers?Whether the petitioner, as the prior adopter and user of the ‘MODERN’ mark since 1990, holds superior rights over respondent no. 1, whose ‘MARDEM’ mark was registered in 2018? Whether the registration of ‘MARDEM’ constitutes a wrongful entry in the trademark register, warranting rectification under Section 57 of the Trade Marks Act?Whether respondent no. 1’s adoption of ‘MARDEM’ lacks bona fide intent and represents an attempt to capitalize on the petitioner’s goodwill?

Whether the petitioner’s extensive use and reputation establish ‘MODERN’ as a well-known trademark, entitling it to enhanced protection?

Detailed Submission of Parties:The petitioner, represented by Mr. Ajay Amitabh Suman and his team, presented a robust case for rectification. They argued that since adopting ‘MODERN’ in 1990, the petitioner has used the mark continuously, openly, and exclusively, building a strong reputation and goodwill in Class 30 goods. The mark forms an integral part of the petitioner’s trade name and is the dominant feature of its derivative trademarks. The petitioner supported its claims with evidence of multiple trademark registrations, sales figures from 1991-92 to 2017-18 (showing significant growth, e.g., ₹29.11 crores in 2017-18), invoices, e-commerce listings, and newspaper advertisements. Additionally, the petitioner holds copyright registrations for its ‘MODERN NAMKEEN’ labels and has registered domain names to bolster its online presence. The petitioner contended that ‘MODERN’ has acquired secondary significance and well-known status under Section 2(1)(zg) of the Trade Marks Act, making it exclusively associated with its goods.

The petitioner further argued that ‘MARDEM’ is phonetically and deceptively similar to ‘MODERN’, particularly in the Hindi-speaking region where both parties operate. The similarity in sound (‘N’ in MODERN vs. ‘M’ in MARDEM) and the identical class of goods increase the likelihood of consumer confusion. The petitioner highlighted respondent no. 1’s prior role as a vendor, suggesting bad faith in adopting a similar mark to exploit the petitioner’s goodwill. They asserted that respondent no. 1 has neither used ‘MARDEM’ nor demonstrated any bona fide intent to do so, rendering the registration invalid. Citing the need to maintain the purity of the trademark register, the petitioner sought cancellation of ‘MARDEM’ under Section 57.Respondent no. 1 did not appear or submit any counter-arguments, resulting in the petitioner’s pleadings being deemed admitted. The Registrar of Trade Marks, represented by Mr. Rohan Jaitley, adopted a neutral stance, agreeing to abide by the court’s orders.

Detailed Discussion on Judgments Cited by Parties and Their Context:The court relied on several landmark judgments to assess deceptive similarity and prior use, each cited by the petitioner to bolster its case:

Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13:This Supreme Court case addressed the criteria for determining deceptive similarity under the Trade Marks Act. The court emphasized that the test is whether the mark is “likely to deceive or cause confusion,” requiring a case-specific analysis without rigid criteria. It advocated judging marks by their look and sound, considering the goods, customer profile, and surrounding circumstances. The court noted that deception arises if a mark resembles another on the register in a way likely to confuse consumers in the normal course of trade. In the present case, this precedent guided the court’s phonetic comparison of ‘MODERN’ and ‘MARDEM’, highlighting their similarity in sound and the potential for confusion among average consumers in a Hindi-speaking market.

Treasure Studio INC and Another v. Mohit Khungar and Another, 2024 SCC OnLine Del 6558:A recent Delhi High Court decision, this case clarified that infringement does not require an exact replica of a registered mark. Substantial resemblance, despite minor variations, suffices if the impugned mark is likely to deceive. The court held that minor differences are immaterial if the overall similarity is significant. In the present case, this ruling supported the petitioner’s argument that the phonetic similarity between ‘MODERN’ and ‘MARDEM’ outweighs any minor differences, as the marks are substantially similar and likely to confuse consumers purchasing snacks and namkeens.

Khoday Distilleries Limited v. Scotch Whiskey Association and Others, (2008) 10 SCC 723:This Supreme Court judgment addressed confusion among different classes of consumers. It held that the likelihood of confusion varies based on the customer’s education, economic status, and familiarity with the product. For goods like snacks, purchased by diverse groups including villagers and urban consumers, a prudent person’s perspective applies. The court emphasized considering the mark’s look, sound, goods, and customer profile. In the present case, this precedent underscored the likelihood of confusion among average consumers in the same geographical and linguistic region, given the phonetic similarity and identical goods.

Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727:The Supreme Court in this case clarified that the test for likelihood of confusion is similar in infringement and passing-off actions. Infringement occurs not only through exact imitation but also through the use of a mark so closely resembling the registered mark as to deceive. The court noted that statutory protection is absolute once a mark is shown to offend. This precedent reinforced the petitioner’s claim that ‘MARDEM’ infringes ‘MODERN’ by resembling it closely enough to deceive consumers, justifying cancellation.

Detailed Reasoning and Analysis of Judge:Justice Mini Pushkarna’s judgment meticulously analyzed the evidence and legal principles to grant the rectification petition. The court noted respondent no. 1’s absence and lack of reply, deeming the petitioner’s pleadings admitted. The petitioner’s extensive documentation, including trademark registrations, sales figures (e.g., ₹29.11 crores in 2017-18), e-commerce listings, and advertisements, established its prior adoption of ‘MODERN’ since 1990 and continuous use thereafter. The court recognized the petitioner’s multiple registrations in Class 30 and its copyright registrations, reinforcing its proprietary rights.

The phonetic comparison of ‘MODERN’ and ‘MARDEM’ was central to the court’s analysis. The judge observed that the marks share a similar rhythm, with ‘MODERN’ ending in ‘N’ and ‘MARDEM’ in ‘M’, creating a deceptive similarity in sound. This was particularly significant in a Hindi-speaking region where both parties operate, as consumers might not distinguish the marks. The court applied the Amritdhara Pharmacy test, assessing the marks’ look, sound, goods, and consumer profile, concluding that ‘MARDEM’ is likely to deceive or confuse average consumers purchasing snacks and namkeens.

The court also considered respondent no. 1’s prior role as a vendor, inferring knowledge of the ‘MODERN’ mark and potential bad faith in adopting ‘MARDEM’. The lack of evidence showing respondent no. 1’s use or intent to use ‘MARDEM’ further weakened its claim. Citing Treasure Studio INC, the court held that minor differences between the marks were immaterial given their substantial resemblance. The Khoday Distilleries judgment supported the finding that confusion was likely among diverse consumers, while Ruston & Hornsby affirmed that ‘MARDEM’ infringed ‘MODERN’ by resembling it closely enough to deceive.

Final Decision:The High Court of Delhi allowed the rectification petition on April 25, 2025, cancelling the trademark ‘MARDEM’ (registration no. 3739205) in Class 30. The court directed the Trade Marks Registry to rectify the register and issue a notification accordingly. The petitioner’s claims were upheld, affirming its prior rights over ‘MODERN’ and the deceptive similarity of ‘MARDEM’.

Law Settled in This Case:This case reinforces several key principles under the Trade Marks Act, 1999:

Deceptive Similarity: Phonetic similarity between marks, especially in the same class and market, is sufficient to establish deceptive similarity if it is likely to confuse average consumers, as per the Amritdhara Pharmacy test.

Prior Use: A prior adopter and user of a mark holds superior rights over a later registrant, particularly when the latter’s mark is deceptively similar and lacks bona fide intent.

Rectification of Register: Section 57 empowers courts to cancel wrongful trademark registrations to maintain the register’s purity, especially when the mark infringes a prior registered mark.

Consumer Confusion: The likelihood of confusion is assessed based on the marks’ look, sound, goods, and consumer profile, with special consideration for regional and linguistic contexts.

Bad Faith: Adoption of a similar mark by a party with prior knowledge of the original mark, such as a former vendor, may indicate bad faith, justifying cancellation.

Case Title: Modern Snacks Private Limited Vs. Kamran Ghani

Date of Order: April 25, 2025

Case No.: C.O. (COMM.IPD-TM) 76/2021

Neutral Citation: 2025:DHC:2905

Name of Court: High Court of Delhi Name of 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

Corona Remedies Pvt. Ltd. Vs. Umac Pharmaceuticals

Section 134 of the Trade Marks Act, 1999, provides an additional forum for infringement suits

Introduction:In the dynamic landscape of trademark litigation, where brand identity and territorial jurisdiction collide, the case of Corona Remedies Pvt. Ltd. vs. Umac Pharmaceuticals & Ors., decided by the Delhi High Court on August 10, 2023, emerges as a significant pronouncement on the scope of territorial jurisdiction in intellectual property disputes. This first appeal, adjudicated by Justice C. Hari Shankar, challenged the Additional District Judge’s (ADJ) decision to return a trademark infringement suit for lack of territorial jurisdiction. The appellant, Corona Remedies Pvt. Ltd., sought to protect its registered trademark “MAC-RD” against the respondents’ allegedly infringing “MAC-DSR” mark, used for similar pharmaceutical products. The High Court’s reversal of the ADJ’s order underscores the interplay between Section 134 of the Trade Marks Act, 1999, and Section 20 of the Code of Civil Procedure, 1908 (CPC), offering a nuanced perspective on jurisdictional competence in trademark suits. This case study explores the factual matrix, procedural intricacies, legal issues, parties’ arguments, judicial precedents, the court’s reasoning, and the broader implications, painting a vivid picture of a jurisdictional tug-of-war in India’s pharmaceutical trademark arena.

Detailed Factual Background:Corona Remedies Pvt. Ltd., a pharmaceutical company based in Ahmedabad, Gujarat, manufactures a combination drug comprising Rabeprazole Sodium and Domperidone SR, sold under its registered trademark “MAC-RD.” The company alleged that Umac Pharmaceuticals (Respondent No. 1), based in Nangloi, Delhi; Hemkunt Medical Store (Respondent No. 2), located in Govindpuri, Kalkaji, New Delhi; and Athens Life Sciences (Respondent No. 3), operating in District Sirmour, Himachal Pradesh, were infringing its trademark by using “MAC-DSR” for a similar combination of Pantoprazole Sodium (EC) and Domperidone SR. Corona claimed to have discovered the infringing products in South East Delhi in June 2018, specifically citing a purchase from Hemkunt Medical Store, evidenced by an invoice dated June 12, 2018, issued to one Prashant Thakur for 10 MAC-DSR units worth Rs. 850. The invoice, marked as ‘A,’ was issued on the prescription of Dr. Anil Kumar. Corona further asserted that its MAC-RD products were sold extensively in South East Delhi through authorized distributors like Novopharm and at outlets such as Balaji Medicos in Kotla Mubarakpur, establishing its business presence in the region. Additionally, Corona’s products were available on e-commerce platforms like 1mg.com and apollopharmacy.in, accessible within South East Delhi. The respondents, alleged to be selling MAC-DSR in areas like Okhla, Badarpur, and Kalkaji, were accused of trademark infringement and passing off, prompting Corona to seek a permanent injunction to restrain their use of the deceptively similar mark.

Detailed Procedural Background:The dispute originated in CS(COMM) 328/2019, filed by Corona Remedies Pvt. Ltd. before the Additional District Judge, South-East District, Saket, Delhi, seeking a permanent injunction against the respondents for trademark infringement and passing off. The suit was instituted by Dr. Atul Pansuria, Associate Vice President, under a Board Resolution dated September 21, 2017. On July 25, 2018, the ADJ issued summons and granted an ex parte ad interim injunction in Corona’s favor. By August 16, 2018, all respondents were duly served, but they failed to appear, leading to an ex parte order against them on September 24, 2018. The only witness, Bhupender Kumar, Corona’s attorney, testified as PW-1, filing an affidavit and relying on documents, including the invoice from Hemkunt Medical Store. On September 5, 2020, the ADJ returned the plaint, holding that the court lacked territorial jurisdiction, primarily due to insufficient evidence linking Hemkunt Medical Store’s sales to the infringement and suggesting its impleadment was merely to confer jurisdiction. Aggrieved, Corona filed RFA-IPD 7/2022 under Section 96 of the CPC, along with CM APPL. 378/2021, before the Delhi High Court. The respondents remained ex parte, and the appeal was heard by Justice C. Hari Shankar, who delivered an oral judgment on August 10, 2023.

Issues Involved in the Case: The case centered on a singular yet critical legal question:

Whether the Additional District Judge, South-East District, Saket, possessed territorial jurisdiction to entertain Corona’s trademark infringement suit under Section 134 of the Trade Marks Act, 1999, or Section 20 of the CPC, given the locations of the parties and the alleged infringing activities in South East Delhi? This issue encompassed sub-questions, including whether Corona’s business activities and sales in South East Delhi satisfied Section 134’s requirements, whether the respondents’ alleged sales of MAC-DSR in the same region constituted a cause of action under Section 20(c), and whether the ADJ erred in dismissing the invoice evidence and Hemkunt Medical Store’s role as insufficient to establish jurisdiction?

Detailed Submission of Parties:Corona Remedies asserted that Ld. Trial Court  erred in returning the plaint, as the suit was territorially maintainable under both Section 134 of the Trade Marks Act and Section 20 of the CPC. Corona emphasized paragraphs 43 and 44 of the plaint, which detailed the cause of action arising in South East Delhi in June 2018, when it discovered the respondents’ MAC-DSR products. The plaint specifically averred that Corona procured the infringing product from Hemkunt Medical Store at Govindpuri, Kalkaji, within the Saket court’s jurisdiction, supported by the June 12, 2018 invoice. Corona further asserted its business presence in South East Delhi, with MAC-RD sales through distributors like Novopharm and at Balaji Medicos in Kotla Mubarakpur, invoking Section 134(2), which allows suits where the plaintiff carries on business. Under Section 20(c), Corona argued that the respondents’ sales in areas like Okhla, Badarpur, and Kalkaji constituted a cause of action within the Saket court’s jurisdiction. Corona also highlighted its e-commerce presence on platforms accessible in Delhi, reinforcing jurisdictional ties. The respondents, having been ex parte throughout, did not file any response or appear in the appeal, leaving Corona’s averments unrebutted.

Detailed Discussion on Judgments Cited by Parties:The court’s analysis relied on a single precedent, cited by Corona, which clarified the jurisdictional framework for trademark suits:

Ultra Homes Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey, 227 (2016) DLT 320 (DB): In this Delhi High Court Division Bench decision, authored by Justice S. Ravindra Bhat, it was held that Section 134 of the Trade Marks Act provides an additional forum for infringement suits, beyond the courts with jurisdiction under Section 20 of the CPC. Section 134 allows a plaintiff to file a suit where they reside or carry on business, irrespective of the defendant’s location or the cause of action’s origin, supplementing Section 20’s provisions based on the defendant’s residence or cause of action. Corona relied on this to argue that its business activities in South East Delhi, through distributors and sales, conferred jurisdiction on the Saket court under Section 134, while the respondents’ sales established a cause of action under Section 20(c). The court applied this precedent to affirm that both provisions independently supported the Saket court’s jurisdiction, given Corona’s averments of local business and infringing sales.

Detailed Reasoning and Analysis of Judge:Justice C. Hari Shankar delivered a concise yet robust judgment, overturning the ADJ’s decision for its failure to appreciate the plaint’s averments and the applicable legal framework. The court identified three reasons in the ADJ’s judgment for returning the plaint: Corona’s business base in Ahmedabad, Respondent No. 1’s operations in Nangloi and Respondent No. 3’s in Himachal Pradesh, and insufficient evidence linking Respondent No. 2 (Hemkunt Medical Store) to the infringement, with its impleadment deemed a jurisdictional ploy. The court found these reasons flawed, particularly the ADJ’s exclusive focus on Respondent No. 2 and neglect of paragraphs 43 and 44 of the plaint.

The court emphasized that paragraphs 43 and 44 clearly averred a cause of action in South East Delhi, with Corona procuring MAC-DSR from Hemkunt Medical Store in Govindpuri, Kalkaji, supported by the June 12, 2018 invoice. The plaint further detailed respondents’ sales in areas like Okhla and Badarpur, within the Saket court’s jurisdiction, satisfying Section 20(c) of the CPC, which allows suits where the cause of action arises. The court criticized the ADJ’s dismissal of the invoice for lack of Prashant Thakur’s testimony or additional records, noting that the respondents’ ex parte status left Corona’s averments unchallenged. Requiring further proof at the jurisdictional stage was deemed unnecessary, as the plaint’s allegations sufficed to establish a prima facie cause of action.

On Section 134 of the Trade Marks Act, the court noted Corona’s averments of carrying on business in South East Delhi through MAC-RD sales via Novopharm and Balaji Medicos. This satisfied Section 134(2), which permits suits where the plaintiff conducts business, regardless of the defendant’s location. The court also considered Corona’s e-commerce presence, per paragraph 17, as reinforcing its business activities in Delhi, accessible within the Saket court’s jurisdiction. Citing Ultra Homes, the court affirmed that Section 134 provides an additional forum, complementing Section 20, and both provisions independently conferred jurisdiction on the Saket court.

The court found the ADJ’s analysis deficient for ignoring Section 134 entirely and misapplying Section 20 by overemphasizing Respondent No. 2’s role while disregarding the plaint’s broader averments. The respondents’ ex parte status further weakened any challenge to Corona’s claims, rendering the ADJ’s findings unsustainable. The court concluded that the suit was competently instituted, warranting its remand for a merits-based adjudication.

Final Decision:On August 10, 2023, the Delhi High Court allowed RFA-IPD 7/2022, quashing the ADJ’s judgment dated September 5, 2020. The court remitted CS(COMM) 328/2019 to the Additional District Judge, South-East District, Saket, for adjudication on merits. The interim injunction dated July 25, 2018, was revived, to remain in force pending further orders by the ADJ. No costs were ordered.

Law Settled in this Case:The judgment clarified key principles governing territorial jurisdiction in trademark suits:

Section 134 of the Trade Marks Act, 1999, provides an additional forum for infringement  suits, allowing filing where the plaintiff carries on business, independent of the defendant’s location or cause of action (Ultra Homes).

Section 20 of the CPC complements Section 134, conferring jurisdiction where the defendant resides, carries on business, or the cause of action arises, wholly or in part.

Averments in the plaint alleging the plaintiff’s business activities or the defendant’s infringing sales within a court’s jurisdiction suffice to establish territorial competence at the preliminary stage, especially when unchallenged by ex parte defendants.

Courts must consider all relevant plaint averments, including those under Sections 134 and 20, and not restrict analysis to a single defendant’s role, ensuring a holistic jurisdictional assessment.

Evidence like invoices, even without corroborative testimony, can establish a prima facie cause of action for jurisdiction, absent rebuttal from defendants.

E-commerce sales and accessibility within a court’s jurisdiction reinforce a plaintiff’s business presence under Section 134, reflecting modern commercial realities.

Case Title: Corona Remedies Pvt. Ltd. Vs. Umac Pharmaceuticals & Ors.

Date of Order: August 10, 2023

Case No.: RFA-IPD 7/2022

Neutral Citation: 2023:DHC:5718

Name of Court: High Court of Delhi

Name of Judge: Justice C. Hari Shankar

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

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

UPL Ltd. Vs The Controller of Patents

Background and Invention

UPL Ltd filed a patent application for a novel agrochemical invention involving a combination of fungicides. The invention specifically combined succinate dehydrogenase inhibitor (SDHI) fungicides with at least one other fungicide selected from ergosterol biosynthesis inhibitors or quinone outside inhibitors and added a multi-site fungicide. This combination aimed to improve disease control in crops, particularly addressing resistance developed against existing fungicide combinations. The invention was supported by experimental data demonstrating increased efficacy and a surprising reduction in fungal diseases.

Patent Office Rejection

The patent application was initially examined and objections were raised under various provisions of the Patents Act, including for lack of inventive step under Section 2(1)(j) and for being a mere admixture under Section 3(e). The Controller of Patents rejected the application, finding that the combination lacked synergy and represented only an aggregation of known fungicide components without functional interrelation. The decision relied heavily on select experimental data while disregarding other submitted evidence showing therapeutic efficacy and synergistic effects. Procedural issues were also noted, including the failure to issue a Second Examination Report (SER) despite new documents being cited during the examination process.

Contentions and Court Findings

UPL Ltd contested the rejection, arguing that the patent office failed to appreciate the unexpected advantages and the improved disease control achieved by the specific combination with multi-site fungicide. The appellants highlighted that even small increases in efficacy could have a significant long-term impact, and that the order was cryptic and did not adequately consider all experimental data and prior art documents. 

The Court agreed that the impugned order was flawed both on merits and procedure. It emphasized that a mere aggregation of known substances is not patentable only if there is no working interrelation producing a new or improved result. The Court observed that the authorities did not properly analyze the data and failed to issue the SER as mandated by section 13(3) of the Patents Act. Consequently, the Court set aside the rejection order and remanded the matter for fresh consideration, leaving questions of merit open for decision after affording the appellant a proper hearing. The fresh exercise was directed to be completed within four months.

Case Title: UPL Ltd VS The Controller of Patents Designs and Trademark Date of Order: 30 April 2025 Case No.: IPDPTA/2/2025: High Court at Calcutta Original Side (Intellectual Property Rights Division) Name of Hon'ble Judge: Justice Ravi Krishan Kapur

Maya Appliances Pvt. Ltd. Vs Deputy Controller of Patents

Introduction

This appeal concerns the revocation of Patent No. 452008 titled “An Intelligent Cooking Stove System,” originally granted to Mr. Vijay Srinivasan and later assigned to Maya Appliances Pvt. Ltd. The revocation was made by the Deputy Controller of Patents and Designs following a post-grant opposition filed by Versuni India Home Solutions Ltd. The High Court was called upon to review the validity of this revocation order.

Background and Grounds of Revocation

The patent in question was challenged on four grounds under Section 25(2) of the Patents Act, 1970. The Deputy Controller rejected three objections, including those based on insufficiency of disclosure, lack of novelty, and patent ineligibility under Section 3(f). However, the patent was ultimately revoked solely on the ground of lack of inventive step, particularly with reference to prior art documents D1, D2, and D5.

Appellant’s Contentions

Maya Appliances argued that reliance on prior art documents D2 and D3—originally in Chinese and not taken on record under Rule 61(2) of the Patent Rules, 2003—was improper. The Deputy Controller had explicitly stated that these documents were excluded, yet still relied on their drawings to support the conclusion of lack of inventive step. This inconsistency was challenged as being legally untenable.

It was also pointed out that the Controller did not identify any specific teachings or motivation in the cited prior art that would lead a skilled person to combine their features in a manner leading to the claimed invention. Furthermore, the appellant emphasized that it had enforced the patent in several infringement suits, which were settled in its favor, and that the revocation would enable widespread infringement.

Respondents’ Submissions

The second respondent defended the revocation order by asserting that the decision did not rest solely on D2 and that even the combination of D1 and D5 was sufficient to establish lack of inventive step. It was also argued that the claims were overly broad and resulted in unjust monopoly. The respondent, without prejudice, requested that if the order was to be set aside, then the matter be remanded for fresh consideration of all objections, including those earlier rejected.

Court’s Analysis

The High Court found that the Deputy Controller’s approach was flawed. Although the Controller stated that D2 and D3 were inadmissible due to lack of proper translation, he nonetheless relied on the drawings from D2 to support his conclusion. The Court held that such partial reliance was impermissible under Rule 61(2) and undermined the integrity of the decision-making process.

Further, the Court observed that while the Controller summarized individual features of prior art documents, he failed to explain how a skilled person would be led to combine those features. The absence of any “teaching, suggestion or motivation” to combine references was a significant lapse. The Controller also did not adequately address the rejection of other objections raised in the opposition.

Final Decision

The High Court set aside the impugned order dated 04.04.2025 and remanded the matter for fresh consideration. It directed that the reconsideration be done by an officer other than the one who passed the original order to avoid pre-determination. The Court permitted the filing of translated versions of D2 and D3 and ordered that all parties be given a fair opportunity to present their case, with a reasoned decision to be issued within two months.

Case Details

Case Title: Maya Appliances Pvt. Ltd. Vs Deputy Controller of Patents and Designs

Date of Order: 29 April 2025

Case No.: CMA(PT) No. 5 of 2025

Name of Court: Madras High Court

Name of Judge: Justice Senthilkumar Ramamoorthy

Vertex Pharmaceuticals Inc. Vs Controller General of Patents

Introduction

This case involves two writ petitions filed by Vertex Pharmaceuticals Inc. challenging the issuance of a notice and a subsequent order by the Controller General of Patents that allowed a pre-grant opposition to proceed, despite the fact that the patent had already been granted. The core legal question before the Delhi High Court was whether a pre-grant opposition is maintainable after the patent has been granted by the Controller but before the grant order is uploaded on the official patent office website.

Factual Background

Vertex Pharmaceuticals, a biotechnology company focusing on therapies for cystic fibrosis, filed Indian Patent Application No. 202017026584 on June 23, 2020, through the national phase of a PCT application. The application was examined, and after objections were addressed, the Controller passed an order on November 28, 2023, granting the patent. This order was signed and finalized at around 17:25 hours.

However, before the patent grant order was uploaded on the Indian Patent Office website, a third party (respondent no. 3) filed a pre-grant opposition at around 17:18 hours on the same day. Citing this opposition, the Controller later issued a notice on December 8, 2023, and an order on April 5, 2024, stating that the patent would be re-examined in light of newly cited prior art references submitted in the opposition.

Petitioner’s Arguments

Vertex argued that the Controller, having signed and finalized the grant order, had already exercised his statutory authority and become functus officio. Therefore, any opposition filed after that moment was not maintainable. The company emphasized that uploading the order and issuance of the certificate were merely ministerial acts and should not affect the legal finality of the grant.

It was also argued that entertaining the pre-grant opposition after the patent was granted was not only contrary to the Patents Act but also prejudicial, particularly since no opposition was pending at the time of the grant order.

Respondents’ Submissions

The Patent Office and respondent no. 3 countered that the grant of the patent only becomes effective upon the uploading of the Controller’s order on the IPO website. Since the opposition was filed before the upload occurred—even if after the order was signed—it should be deemed valid. They argued that systemic delays in uploading grant orders should not deprive opponents of their rights to file pre-grant oppositions.

Court’s Analysis

The Delhi High Court ruled in favor of Vertex, holding that the date of signing the order by the Controller is the legal date of grant, not the date of upload. It concluded that once the Controller signs the grant order, he becomes functus officio and cannot subsequently entertain a pre-grant opposition. The Court observed that the uploading of the order or issuance of a certificate is purely procedural and does not determine the validity of the grant.

Citing earlier decisions including Dr. Snehlata C. Gupte and Dhaval Diyora, the Court reaffirmed that the act of granting a patent is complete once the Controller exercises his discretion and passes a signed order to that effect. Any action thereafter, including online publication, is merely evidentiary or administrative.

Final Decision

The Delhi High Court allowed both writ petitions, quashing the impugned notice dated December 8, 2023, and the order dated April 5, 2024. The Court held that the Controller acted beyond his jurisdiction by entertaining the opposition and reopening the case. It confirmed that the patent had been validly granted in favor of Vertex, and no further opposition under Section 25(1) could be entertained thereafter.

Case Title: Vertex Pharmaceuticals Inc. Vs Controller General of Patents

Date of Order: 30 April 2025

Case No.: W.P.(C)-IPD 10/2024 

Neutral Citation: 2025:DHC:3096

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Saurabh Banerjee

Glaxo Group Limited Vs. Arisen Pharmaceuticals India Private Limited

Introduction

The case of Glaxo Group Limited vs. Arisen Pharmaceuticals India Private Limited, decided on April 17, 2025, by the High Court of Delhi, is a landmark in trademark law, illustrating the judiciary’s vigilance in safeguarding intellectual property in the pharmaceutical sector. This commercial suit, centered on the plaintiff’s registered trademark FLIXONASE and the defendant’s allegedly infringing marks FLIXONE and FLIXONE SB, underscores the critical interplay of trademark infringement, passing off, and the procedural nuances of commercial litigation under the Commercial Courts Act, 2015. The High Court’s grant of an ex parte interim injunction highlights the urgency of protecting established brands from deceptive similarity, particularly in a sector where consumer confusion can have serious implications. This case study provides a comprehensive analysis of the factual and procedural background, legal issues, judicial reasoning, and the principles established, offering a deep dive into the dynamics of trademark protection in India.

Detailed Factual Background

Glaxo Group Limited, a UK-based subsidiary of GSK plc, a global healthcare giant operating since 1715, initiated this suit to protect its registered trademark FLIXONASE. Used since the 1990s globally and 2001 in India, FLIXONASE is applied to pharmaceutical preparations, specifically nasal sprays containing Fluticasone Propionate, for treating seasonal and perennial rhinitis, including hay fever. The trademark, registered in India under Registration No. 530885 in Class 5 since June 1, 1990, and renewed until June 1, 2034, enjoys extensive goodwill due to its long-standing use across over 150 countries.

The defendant, Arisen Pharmaceuticals India Private Limited, incorporated under the Companies Act, 2013, is engaged in manufacturing and marketing pharmaceutical products, including injections bearing the marks FLIXONE and FLIXONE SB. These products, containing Ceftriaxone and Sulbactam, are used to treat bacterial infections and are marketed through the defendant’s website (www.arisenpharma.com) and offline channels. The plaintiff first became aware of the defendant’s activities in January 2024 upon discovering a trademark application (No. 5892825) for FLIXONE in Class 5, filed on April 14, 2023, on a “proposed to be used” basis.

The plaintiff responded by issuing a cease-and-desist notice on February 23, 2024, and initiating opposition proceedings against the FLIXONE application on February 5, 2024. The defendant’s failure to file a counter-statement led to the application’s abandonment by the Trade Marks Registry on April 23, 2024. A subsequent letter on March 7, 2024, reserved the plaintiff’s rights to act against future use. Investigations in September 2024 revealed the defendant’s plans to market FLIXONE products, and by November 2024, the defendant had updated its website to include FLIXONE SB under a new antibiotics category. In December 2024, the plaintiff’s investigator purchased FLIXONE SB products, confirming active sales. Further cease-and-desist notices on December 16 and December 31, 2024, went unanswered. In January 2025, the plaintiff discovered another trademark application (No. 6656387) for FLIXONE SB, filed on October 5, 2024, still pending. A WhatsApp confirmation in March 2025 from a defendant director affirmed plans to supply FLIXONE products in Delhi.

The plaintiff argued that FLIXONE and FLIXONE SB were deceptively similar to FLIXONASE, differing only by the omission of the letters “A” and “S,” and were used for similar pharmaceutical goods, risking consumer confusion and free-riding on FLIXONASE’s reputation.

Detailed Procedural Background

The suit, registered as CS(COMM) 349/2025, was filed before the High Court of Delhi, accompanied by five interlocutory applications (I.A. 9750–9755/2025). On April 17, 2025, the court addressed these applications and the suit’s preliminary stages. I.A. 9751/2025 sought leave to file additional documents, which was granted under the Commercial Courts Act, 2015, and Delhi High Court (Original Side) Rules, 2018. I.A. 9752/2025 requested exemptions from filing clear copies and originals, allowed with a directive to file compliant copies within four weeks. I.A. 9753/2025 sought exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, granted due to the suit’s urgent interim relief, citing Yamini Manohar v. T.K.D. Krithi. I.A. 9754/2025 permitted filing video evidence via CD/pen drive, and I.A. 9755/2025 allowed confidential sales data for FLIXONASE to be filed in a sealed cover.

The court registered the plaint as a suit, issued summons to the defendant via all permissible modes, and set a 30-day deadline for filing a written statement with an affidavit of admission/denial. The plaintiff was given 30 days to file a replication, and both parties were directed to file original documents or specify sources for documents not in their possession. The case was listed before the Joint Registrar on July 24, 2025, for service and pleading completion, and before the court on September 26, 2025.

The critical application, I.A. 9750/2025, sought an interim injunction under Order XXXIX Rules 1 and 2 of the CPC. Despite advance service, the defendant did not appear, leading to an ex parte hearing. The court issued notice on the injunction application, set timelines for reply and rejoinder, and granted an interim injunction restraining the defendant from using FLIXONE and FLIXONE SB marks until the next hearing.

Issues Involved in the Case

The case presented several key issues. First, whether the defendant’s FLIXONE and FLIXONE SB marks infringed the plaintiff’s registered FLIXONASE trademark by being deceptively similar and used for similar pharmaceutical goods. Second, whether the defendant’s actions constituted passing off by leveraging FLIXONASE’s goodwill. Third, whether the plaintiff satisfied the requirements for an ex parte interim injunction, including prima facie case, balance of convenience, and irreparable harm. Fourth, whether procedural exemptions (e.g., pre-institution mediation, document filing) were justified under the Commercial Courts Act and CPC.

Detailed Submission of Parties

The plaintiff, represented by Mr. Urfee Roomi and others, argued that FLIXONASE, registered since 1990 and used in India since 2001, enjoyed significant goodwill due to its global and domestic presence. The defendant’s FLIXONE and FLIXONE SB marks, differing only by the removal of “A” and “S,” were deceptively similar, risking confusion among consumers, especially in the pharmaceutical sector where precision is critical. The plaintiff highlighted the identical nature of the goods (pharmaceutical preparations), the defendant’s marketing through online and offline channels, and the potential for public harm due to mistaken associations. The plaintiff’s proactive steps—cease-and-desist notices, opposition proceedings, and investigations—demonstrated diligence, while the defendant’s non-response and continued use underscored bad faith. The plaintiff sought an interim injunction, arguing a prima facie case, balance of convenience in its favor, and irreparable harm from ongoing infringement and consumer confusion.

The defendant, despite advance service, did not appear or file submissions, leaving the court to rely solely on the plaintiff’s pleadings and evidence. The absence of representation strengthened the plaintiff’s case, as no counterarguments or defenses were presented to challenge the allegations of infringement or passing off.

Detailed Discussion on Judgments and Citations

The court referenced one key precedent in its order, which was pivotal to the procedural aspect of the case:

Yamini Manohar v. T.K.D. Krithi (2023 SCC OnLine SC 1382): This Supreme Court decision was cited to justify exempting the plaintiff from pre-institution mediation under Section 12A of the Commercial Courts Act. The Court held that suits requiring urgent interim relief are exempt from mandatory mediation to prevent delay in protecting rights. In the present case, the High Court applied this precedent to grant exemption, noting the plaintiff’s urgent need for an injunction to halt the defendant’s alleged infringement, which could cause immediate harm to FLIXONASE’s reputation and consumer trust.

No other judgments were cited, as the ex parte nature of the hearing and the straightforward trademark issues did not necessitate extensive precedent analysis. The court’s reliance on Yamini Manohar was sufficient to address the procedural exemption, while the substantive trademark issues were evaluated based on statutory provisions and pleaded facts.

Detailed Reasoning and Analysis of Judge

Justice Amit Bansal’s reasoning was concise yet robust, addressing both procedural and substantive issues with clarity. On the procedural front, the court efficiently disposed of the interlocutory applications. The exemption from pre-institution mediation was granted under Section 12A, aligning with Yamini Manohar, as the suit’s urgency—stemming from ongoing infringement—warranted immediate judicial intervention. The permissions to file additional documents, video evidence, and confidential data reflected adherence to the Commercial Courts Act’s flexible yet structured approach to evidence in commercial disputes. The directive to file clear copies within four weeks ensured compliance with procedural norms without delaying the suit’s progress.

On the substantive issue of the interim injunction, the court applied the classic triumvirate for granting interim relief: prima facie case, balance of convenience, and irreparable harm. The court found a prima facie case based on the deceptive similarity between FLIXONASE and FLIXONE/FLIXONE SB. The marks’ visual and phonetic proximity—differing only by two letters—and their use for pharmaceutical goods heightened the risk of confusion. The plaintiff’s long-standing use since 2001, global registrations, and registered status in India (valid until 2034) established FLIXONASE’s strong market presence and goodwill, which the defendant’s marks threatened to exploit. The defendant’s failure to respond to notices and continued marketing despite opposition proceedings suggested an intent to free-ride on FLIXONASE’s reputation.

The balance of convenience favored the plaintiff, as halting the defendant’s use would preserve the status quo without significant prejudice, given the defendant’s recent adoption of FLIXONE (post-2023). Conversely, allowing continued use would erode FLIXONASE’s distinctiveness and mislead consumers. The court recognized irreparable harm, particularly in the pharmaceutical context, where confusion could compromise public health and damage the plaintiff’s reputation irretrievably. The defendant’s non-appearance despite advance service further tilted the scales, as no countervailing factors were presented.

The injunction’s scope was comprehensive, restraining the defendant and its affiliates from manufacturing, selling, or marketing FLIXONE and FLIXONE SB products, whether online or offline. The court’s directive for compliance under Order XXXIX Rule 3 within five days ensured prompt enforcement, while the timelines for notice, reply, and rejoinder maintained procedural fairness for the defendant’s eventual response.

Final Decision

The High Court granted an ex parte interim injunction, restraining the defendant, its directors, and affiliates from using FLIXONE and FLIXONE SB marks or any deceptively similar marks for pharmaceutical products until the next hearing on September 26, 2025. The court disposed of the interlocutory applications, allowing document filings, exemptions, and mediation waiver as requested. Summons were issued, with a 30-day deadline for the defendant’s written statement and affidavit of admission/denial. The case was listed before the Joint Registrar on July 24, 2025, for service and pleading completion, and before the court on September 26, 2025, for further proceedings.

Law Settled in This Case

This case reinforced several principles in trademark law and commercial litigation. First, it affirmed that deceptively similar marks in the pharmaceutical sector, even with minor differences (e.g., omission of letters), constitute infringement and passing off when used for similar goods, due to the heightened risk of consumer confusion and public harm. Second, it underscored the judiciary’s willingness to grant ex parte interim injunctions in clear cases of infringement, particularly when the defendant fails to appear despite service, provided the plaintiff establishes a prima facie case, balance of convenience, and irreparable harm. Third, the case clarified that urgent interim relief justifies exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, as per Yamini Manohar, ensuring swift protection of intellectual property rights. These principles strengthen trademark enforcement in India, particularly for global brands in sensitive sectors like healthcare.

Case Title: Glaxo Group Limited Vs. Arisen Pharmaceuticals India Private Limited
Date of Order: April 17, 2025
Case No.: CS(COMM) 349/2025
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Justice Amit Bansal

Annikki GMBH Vs. Controller of Patents and Designs

Introduction:

This case pertains to an appeal filed by Annikki GMBH against the rejection of their Indian Patent Application No. 467/CHENP/2012 titled “Process for the Production of Carbohydrate Cleavage Products from a Lignocellulosic Material” by the Assistant Controller of Patents and Designs. The High Court of Madras adjudicated the matter under Section 117-A of the Patents Act, 1970.

Factual Background and Procedural History:

Following the filing of the patent application, the Patent Office issued a First Examination Report (FER) in 2017, citing prior art documents D1 to D6 and raising objections related to novelty and inventive step. Annikki GMBH responded with amended claims and written submissions. Despite a hearing in July 2018 and further representations, the application was rejected on 10.12.2019, leading to the current appeal.

Appellant’s Contentions:

Annikki argued that the claimed invention presents a non-fermentative process for producing xylitol, which distinguishes it from the cited prior art. The counsel highlighted specific technical advantages such as selective lignin degradation, low energy use, and absence of fermentation. The appellant contended that prior art D5, which the Controller heavily relied upon, involves fermentation, contrary to the conclusion drawn. The appellant also argued that objections under Section 3(d) were inapplicable as the process was not merely a known process and that the objections raised in the final decision were not previously communicated.

Respondent’s Contentions:

The Controller maintained that the invention lacked inventive step and fell within the scope of Section 3(d), asserting that the combination of processes from prior arts D1-D5 rendered the invention obvious. The Controller also concluded that the invention did not result in enhanced efficacy or a new product or reactant.

Judicial Analysis and Reasoning:

The Court critically analyzed the findings of the Controller, especially the application of Section 3(d). It held that combining two or more known processes does not amount to a “known process” under Section 3(d). Furthermore, it found that the conclusion regarding D5 being a non-fermentative process was erroneous, as D5 clearly describes fermentation. The Court also emphasized that conclusions based on general knowledge must be substantiated by source material. It found the treatment of prior art D2 and the overall reasoning as flawed and lacking evidentiary support.

Final Decision:

The High Court set aside the impugned order and remanded the matter for reconsideration by a different officer, requiring a fresh, reasoned decision to be made within four months. The Court expressly refrained from commenting on the merits of the patent application.

Case Title: Annikki GMBH vs. Controller of Patents and Designs

Date of Order: 24 April 2025

Case No.: (T)CMA(PT) No.70 of 2023 (OA/19/2020/PT/CHN)

Neutral Citation: Not provided

Court: High Court of Judicature at Madras

Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Zine Davidoff S.A. Vs. Union of India

Background and Dispute

The petitioner, M/s Zine Davidoff S.A., challenged an order passed by the Intellectual Property Appellate Board (IPAB) on 9 March 2012, which removed its registered trademark ‘DAVIDOFF’ (No. 454875 in Class 25) from the Register. The basis for removal was the alleged failure to renew the mark within the statutory deadline, thus treating it as lapsed. The petition was brought before the Delhi High Court seeking restoration of the mark.

Timeline of Renewal Attempts

The original trademark application was filed in May 1986 and was valid until May 1993. However, the registration certificate was issued only in December 1997. Upon receipt, the petitioner applied for renewal in June 1998, which was within the statutorily allowed six-month window post-expiry. A second renewal was sought in April 2001, covering the period from 2000 to 2007. Therefore, the petitioner argued that there was no break in renewal and that the trademark never actually lapsed.

Procedural Irregularity by Trademark Registry

The petitioner argued that the mandatory notice under Form O3—as required by Section 25 of the Trade Marks Act, 1958 and Rule 64 of the Trade Marks Rules, 1959—was never issued prior to the removal of the trademark from the Register. The High Court had previously directed the Trademark Registry to confirm issuance of the notice. An affidavit filed by the Registry later admitted that no records of issuing such a notice were available.

Legal Precedents and High Court's Reasoning

The petitioner relied on several judgments, including Union of India v. Malhotra Book Depot, CIPLA Ltd. v. Registrar of Trade Marks, and Epsilon Publishing House v. Union of India, which established that failure of the Trademark Registry to follow due procedure should not prejudice the trademark proprietor. The High Court noted that it had followed this line of reasoning in multiple recent cases, where it directed restoration of marks removed without due process.

Court’s Findings and Directions

The Delhi High Court found that the IPAB’s decision did not take into account the evolving legal position, particularly regarding the mandatory nature of issuing Form O3 notices. In the absence of any proof that such a notice was issued, the petitioner could not be penalized. Therefore, the court directed that the trademark ‘DAVIDOFF’ be restored to its original position in the Register and that the necessary database corrections be made by the Trademark Office.

Conclusion

The judgment emphasized that procedural lapses by the Trademark Registry cannot result in loss of rights for a diligent trademark owner. It reaffirmed the obligation of authorities to follow statutory processes before removing a registered mark.

Case Details

Case Title: Zine Davidoff S.A. Vs. Union of India and Anr.

Date of Order: 22 April 2025

Case No.: W.P.(C)-IPD 57/2021

Neutral Citation: DHC:2025:2991

Name of Court: High Court of Delhi

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

The Coca-Cola Company Vs. The Controller of Patents

Background and Subject Patent Application

The Coca-Cola Company filed a patent application (No. 1771/DELNP/2010) for a next-generation beverage dispenser capable of offering customized beverages to consumers. This invention aimed to overcome the limitations of traditional dispensers by enabling greater variety and personalization using consumer identification through wireless technology and a graphical user interface (GUI).

Rejection by the Patent Office

The Indian Patent Office refused the application via order dated 29 January 2020, primarily under Section 15 of the Patents Act, 1970. The rejection cited a lack of inventive step as defined under Section 2(1)(ja), referencing several prior art documents (D1 through D5) which allegedly disclosed similar features.

Objections Raised and Applicant’s Response

Initial objections raised in the First Examination Report (FER) included lack of novelty and inventive step, exclusion under Section 3(k) (computer programs), and insufficient disclosure. Coca-Cola responded in detail and submitted written arguments distinguishing its invention from the cited prior art. A hearing was held, followed by written submissions. Despite this, the Controller reiterated the lack of inventive step in the final order, asserting the invention was obvious in light of prior art.

Court’s Analysis and Findings

Justice Amit Bansal of the Delhi High Court found the Controller’s order cryptic and lacking in reasoning. The judgment criticized the Patent Office for failing to examine and discuss Coca-Cola’s detailed responses and for not applying the mandatory three-pronged analysis: (i) the invention disclosed in prior art, (ii) the invention in the current application, and (iii) why the current invention would be obvious to a person skilled in the art. This failure violated the standard laid out in precedent including the Agriboard case.

Remand and Direction to Patent Office

The High Court set aside the rejection order and remanded the matter to the Patent Office for fresh consideration. It directed that a reasoned order must be passed after giving Coca-Cola an opportunity for another hearing and ensuring that all its submissions are addressed. The court reiterated the duty of the Patent Office to pass speaking and reasoned orders, especially in matters involving technical analysis under patent law.

Conclusion

The court did not grant the patent but ensured procedural fairness by requiring the Patent Office to reconsider the application properly. It reaffirmed judicial expectations for administrative authorities to offer detailed reasoning when rejecting patent applications, especially when applicants have made substantive technical submissions.

Case Details

Case Title: The Coca-Cola Company Vs. The Controller of Patents & Anr.

Date of Order: 17 April 2025

Case No.: C.A.(COMM.IPD-PAT) 342/2022

Neutral Citation: 2025:DHC:2947

Name of Court: High Court of Delhi

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

Coty Germany GMBH Vs. Xeryus Retail Private Limited

Background and Plaintiff’s Rights

The plaintiff, Coty Germany GmbH, a globally reputed company in the fragrance industry, holds registered trademarks in India for several well-known brands including “Calvin Klein,” “CK,” “CK One,” “Obsession,” “Eternity,” and “Euphoria.” These trademarks are used in relation to a wide range of perfumes and related goods, with stylized representations forming original artistic works protected under copyright law. Coty also operates the website www.calvinklein.com to promote its products.

Allegations Against the Defendants

Coty alleged that the defendants—Xeryus Retail Private Limited and another entity—were infringing its trademarks by selling Coty’s tester perfumes through unauthorized platforms such as www.perfumery.co.in and www.unboxed.in. These testers, intended only for sampling and not for commercial sale, were being marketed deceptively as retail products. The plaintiff also claimed that the defendants were using marks identical or deceptively similar to Coty’s registered trademarks, thereby indulging in unfair trade practices and passing off their goods as those of Coty’s.

Legal Proceedings and Default by Defendants

The defendants initially filed written statements, which were later struck off due to non-compliance. Subsequently, they stopped appearing in the matter and were proceeded ex parte. Given the defendants' failure to respond, Coty filed an application under Order XIII-A of the CPC (as amended by the Commercial Courts Act, 2015) seeking a summary judgment based on admitted facts and unrebutted evidence.

Court’s Findings and Reasoning

The court accepted Coty's claims, noting that the use of registered trademarks by the defendants for unauthorized commercial purposes, including selling tester products, amounted to trademark infringement, passing off, and copyright violation. Since the defendants failed to appear or contest the allegations, the assertions in the plaint were deemed admitted. The court also found that the defendants’ conduct involved bad faith and constituted an unethical business practice.

Relief Granted

The court granted a permanent injunction restraining the defendants from using the infringing marks or selling tester perfumes as retail products. The court also ordered delivery of infringing goods, disclosure of supply chains, and awarded costs of ₹1,00,000 to Coty, payable by the defendants within four weeks. Other monetary claims like damages and rendition of accounts were not adjudicated in this order.

Conclusion

The decision underscores the seriousness of trademark and copyright violations, especially in the context of deceptive online sales, and reinforces the legal remedies available to brand owners against rogue sellers who misrepresent or misuse their brand identity.

Case Details

Case Title: Coty Germany GMBH Vs. Xeryus Retail Private Limited and Another

Date of Order: July 21, 2023

Case No.: CS(COMM) 1298/2018 

Neutral Citation: 2023 SCC OnLine Del 4273

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

San Nutrition Pvt. Ltd. Vs. Arpit Mangal

Introduction and Context

This case concerns the rising influence of social media influencers in India and their dual role as brand promoters and consumer watchdogs. The lawsuit arises from the tension between influencers’ freedom of expression and the rights of businesses to protect their reputation. San Nutrition Pvt. Ltd. (the plaintiff), a company selling nutraceutical products under the trademark "DC DOCTOR’S CHOICE," has filed a suit for permanent injunction against several influencers, alleging defamation, trademark infringement, product disparagement, and unfair trade practices through videos posted on YouTube and Instagram.

Plaintiff’s Allegations

San Nutrition claims that its ISO PRO whey protein product was wrongly targeted in videos by the defendants, who are influencers. These videos allegedly misrepresented the nutritional content of the product using questionable testing methods and thereby misled consumers. The plaintiff contends that the videos have caused a significant drop in sales and have harmed the brand’s reputation. The plaintiff also alleges that these influencers have a vested interest in promoting rival brands and violated ASCI (Advertising Standards Council of India) guidelines by failing to disclose sponsorships.

Defendant No.1’s Defense (Arpit Mangal)

The defendant claimed to have conducted independent lab tests on the plaintiff’s products, which allegedly revealed discrepancies in the stated and actual protein content. Asserting his right to freedom of speech, he maintained that his videos served public interest and were based on scientific data from accredited labs. He invoked the defenses of truth and fair comment, arguing his intention was to inform the public about potential quality issues in the fitness supplement industry.

Legal Issues and Applications

Two applications were central:

1. Plaintiff's request for interim injunction (I.A. 29793/2024) to restrain the publication of the allegedly defamatory content.

2. Defendant’s application (I.A. 36110/2024) under Order VII Rule 10 and 11 CPC to reject/return the plaint, arguing the case was barred by limitation and lacked jurisdiction.

Court's Ruling on Maintainability

The court rejected the defendant’s plea that the suit was time-barred, holding that since the defamatory content remained accessible online, each view constituted fresh publication, thereby creating a continuing cause of action. It also ruled that the case fell within the ambit of a commercial dispute under the Commercial Courts Act, 2015 due to its intellectual property and economic implications.

Interim Injunction and Legal Principles

The court applied principles from Indian and foreign jurisprudence, notably the "Bonnard v. Perryman" rule, which discourages pre-trial injunctions in defamation suits unless the defense is bound to fail. It found that since the defendant had produced lab reports and the plaintiff failed to submit counter-reports, the defense of truth could not be dismissed summarily.

Balancing Fundamental Rights

The court emphasized the need to balance Article 19(1)(a) (freedom of speech), Article 21 (right to reputation), and the public’s right to know. It recognized that influencer speech could be "commercial" if it was revenue-driven or affiliated with competing brands, but also acknowledged the growing legitimacy of critical content in the digital age.

Final Decision on Interim Relief

The court denied the plaintiff’s request for interim injunction, holding that the defendant had a credible defense based on truth and fair comment supported by lab evidence. However, it left open the possibility for the plaintiff to prove its claims during the trial.

Conclusion

The court reiterated that social media criticism backed by evidence, even if commercially motivated, does not automatically amount to defamation or trademark infringement. Businesses must be prepared to withstand scrutiny, especially when no prima facie case of malice or falsity is proven. The matter will proceed to full trial for detailed adjudication.

Case Details

Case Title: San Nutrition Pvt. Ltd. Vs. Arpit Mangal & Ors.

Date of Order: 28 April 2025

Case No.: CS(COMM) 420/2024

Neutral Citation: 2025:DHC:2973

Name of Court: High Court of Delhi

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

Balar Marketing Pvt. Ltd. Vs. Lakha Ram Sharma:Obiter of High Court is not binding

Introduction: In a significant reaffirmation of judicial discipline and statutory interpretation, the Delhi High Court in Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma resolved a pressing question of precedent: can obiter dicta—especially those made without reasoning—bind a coordinate bench of the same High Court? The question emerged from a trademark dispute, but its implications stretch far into how Indian courts must treat passing judicial observations when they conflict with established law.

Factual Background:The petitioner, Balar Marketing Pvt. Ltd., has been engaged in manufacturing electrical goods under the trademark "KUNDAN" and "KUNDAN CAB" since 1975 through its predecessor-in-interest. The respondent, Lakha Ram Sharma, trading as Kundan Cable India, also deals in similar electrical products using the trademarks "KUNDAN" and "KUNDAN CABLE." This overlap in trademarks led to a series of legal battles dating back to the 1990s, with both parties initiating various suits relating to trademark infringement and passing off, and in one instance, copyright infringement.

These suits included TM Nos. 968/2016, 971/2016, 1030/2016, 932/2016 and 931/2016, which were consolidated for the purpose of trial. In 2018, the Trial Court declined to grant interim injunctions in favor of the petitioner. Subsequently, by an order dated 30 May 2022, the Trial Court allowed the suits to proceed solely on the issue of passing off, while staying proceedings related to infringement, citing the precedents in Puma Stationer Pvt. Ltd. & Anr. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del) (DB) and J.K. Oil Industries v. Adani Wilmar Ltd., 2007 (75) PTC 44 (Del).

In January 2025, the respondent sought a stay of the entire proceedings—including those for passing off—under Section 124 of the Trade Marks Act, 1999, citing a stray reference to passing off in paragraph 44 of the Division Bench judgment in Amrish Aggarwal Trading as Mahalaxmi Product v. Venus Home Appliances, 2024 SCC OnLine Del 3652. The Trial Court allowed this request and stayed all proceedings except the suit under the Copyright Act. This order prompted the petitioner to approach the High Court once again.

Submissions of the Parties: Petitioner, submitted that the reference to "passing off" in Amrish Aggarwal was a non-binding obiter dicta, made without any analysis, and therefore could not displace established precedent. He emphasized that Section 124 of the Trade Marks Act applies only to suits for infringement, not to actions for passing off, which derive from common law principles and remain independent of trademark registration. The Petitioner relied on authoritative decisions such as Mohinder Singh Gill & Anr. v. Chief Election Commissioner, New Delhi & Ors., (1978) 1 SCC 405, State of Orissa v. Sudhansu Sekhar Misra & Ors., AIR 1968 SC 647, and Gudri v. Ram Kishun, 1983 SCC OnLine All 415: AIR 1984 All 5, to argue that judicial observations made in passing, especially where no issue was raised or decided, do not create binding law.

The respondent, countered that paragraph 44 of the Division Bench’s ruling in Amrish Aggarwal explicitly referred to passing off claims being subject to stay, and therefore the Trial Court was justified in relying on it. Respondent relied on Naseemunisa Begum v. Shaikh Abdul Rehman, 2002 (2) Mah LJ 115, and Crocs Inc. USA v. Aqualite India Ltd., 2019 SCC OnLine Del 11957, to assert that even the obiter dicta of a larger bench ought to be followed by a smaller one.

Judicial Analysis and Reasoning:Delhi High Court delivered a meticulous opinion that began by contextualizing the Division Bench’s judgment in Amrish Aggarwal. The core issue in that case was whether rectification proceedings pending after the abolition of the IPAB under the Tribunals Reforms Act, 2021, should compel the stay of infringement suits under Section 124. The High Court held they should. However, a reference to “passing off” appeared in paragraph 44 of the judgment, without any analysis or argument on that issue. Justice Bansal examined this in light of the precedential authority of Puma Stationer, where the Division Bench had unambiguously held that only infringement actions must be stayed pending rectification, while passing off claims can proceed.

It was noted that Amrish Aggarwal did not overrule Puma Stationer, nor did it engage with the distinction between infringement and passing off. The reference to passing off, in the absence of any legal reasoning, was determined to be a passing comment—not binding precedent. Justice Bansal also emphasized the clear language of Section 124, which applies only to suits for infringement. Moreover, Section 27(2) of the Trade Marks Act, 1999 explicitly preserves the right to bring a passing off action irrespective of trademark registration.

In discussing whether the obiter dicta of a High Court Division Bench binds a coordinate or subordinate bench, the Court referred to the Constitution Bench ruling in Mohinder Singh Gill, which clarified that a precedent is binding only for the proposition of law that it actually decides. In State of Orissa v. Sudhansu Sekhar Misra, the Supreme Court similarly held that stray observations or casual expressions in a judgment are not binding authority. The judgment in Gudri v. Ram Kishun was invoked to show that when a larger bench makes an observation without actually considering or deciding the issue, it is not binding on a later bench that must adjudicate the issue directly.

The Court distinguished Crocs Inc. and Naseemunisa Begum, holding that those judgments dealt with issues that were squarely raised and decided, whereas in the present case, the issue of stay of passing off suits was not even under consideration in Amrish Aggarwal.

Final Decision: The Delhi High Court allowed the petition, setting aside the Trial Court’s order dated 18 January 2025, which had stayed all proceedings including those concerning passing off. It held that the reference to passing off in Amrish Aggarwal was an inadvertent obiter dicta, lacking any binding force. The Court directed that the consolidated suits, particularly those involving passing off, must proceed to trial without delay.

Law Declared:This judgment firmly establishes that Section 124 of the Trade Marks Act, 1999 applies only to suits for infringement and does not affect the trial of passing off actions. It reaffirms that passing off is a common law remedy not dependent on trademark registration. Most significantly, it underscores the principle that obiter dicta—especially those made without analysis or contextual necessity—do not create binding precedent, even when made by a larger bench of the same court.

Case Title: Balar Marketing Pvt. Ltd. Vs. Lakha Ram Sharma , Date of Order: 27th March 2025,Case No.: CM(M)-IPD 5/2025 ,Neutral Citation: 2025:DHC:2322,Name of Court: High Court of Delhi at New Delhi,Name of Judge: Hon’ble Mr. Justice Amit Bansal

Advocate Ajay Amitabh Suman, Patent and Trademark Attorney, Delhi High Court

Uto Nederland B.V. Vs Tilaknagar Industries Ltd.

Introduction

The case of Uto Nederland B.V. vs Tilaknagar Industries Ltd. arose from a trademark dispute involving alleged infringement and misuse of marks such as "Mansion House" and "Savoy Club" originally licensed by the appellants to the respondent. The primary legal issue centered around whether orders on temporary injunctions are discretionary in nature or constitute prima facie adjudications, thereby affecting the scope of appellate review.

Factual Background

Uto Nederland B.V., a Dutch company engaged in liquor exports, entered into a licensing agreement in 1983 with Tilaknagar Industries Ltd., permitting use of its trademarks in India. The appellants later alleged that the respondents dishonestly attempted to register the same trademarks in India and filed a suit for infringement and passing off. An application for interim injunction was dismissed by the trial court in 2011, prompting an appeal in 2012.

Legal Controversy and Reference

The Division Bench, while hearing the appeal, identified conflicting judicial views within the Bombay High Court regarding the nature of orders on temporary injunctions—whether they are discretionary decisions or amount to prima facie adjudication. The court found inconsistency between its previous rulings in Colgate Palmolive v. Anchor Health, which treated injunction orders as discretionary, and other rulings like Parksons Cartamundi and Goldmines Telefilms, which treated them as adjudicatory. Hence, the matter was referred to a larger bench.

Submissions by Parties

The appellants argued that the trial court's order involved prima facie determination and not mere discretion, thereby allowing a wider scope for appellate interference. The respondents contended that injunctions are discretionary reliefs decided based on established principles like prima facie case, balance of convenience, and irreparable harm, and appellate review should be limited unless discretion was exercised perversely or arbitrarily.

Judicial Analysis

The Court analyzed the “trinity test” for injunctions: prima facie case, balance of convenience, and irreparable harm. It reviewed leading judgments from Indian and English law, including Wander Ltd. v. Antox India, Dalpat Kumar v. Prahlad Singh, and American Cynamid Co. v. Ethicon Ltd., emphasizing that the court at the interim stage does not conclusively decide merits but only ensures that the claim is serious and not frivolous.

Scope of Appeal in Injunction Orders

The Court reaffirmed the principle in Wander Ltd. that appellate courts should not substitute the trial court’s discretion unless the order is arbitrary, capricious, or against settled legal principles. It rejected the view taken in Parksons Cartamundi and Goldmines Telefilms that interim injunction orders are not discretionary. It concluded that the discretion of trial courts must be respected unless shown to be perversely or unreasonably exercised.

Final Decision on Reference

Answering the reference, the larger bench held that the decision in Colgate Palmolive correctly represents the law. It affirmed that orders on temporary injunctions are discretionary, and their appellate review is limited to examining whether that discretion was exercised properly. The contrary decisions relying on Hiralal Prabhudas and National Chemicals, which addressed Registrar decisions under trademark law, were held irrelevant in the context of CPC-based injunction appeals.

Case Title: Uto Nederland B.V. & Anr. Vs Tilaknagar Industries Ltd.

Date of Order: 28 April 2025

Case No.: Appeal No. 66 of 2012

Neutral Citation: 2025:BHC-OS:7110-DB

Name of Court: High Court of Judicature at Bombay (Original Side)

Name of Hon'ble Judges: Chief Justice Alok Aradhe, Justice M. S. Karnik, Justice Shyam C. Chandak

Curewin Hylico Pharma Pvt. Ltd. Vs Curewin Pharmaceuticals Pvt. Ltd.

Introduction

The case concerns a commercial dispute between Curewin Hylico Pharma Pvt. Ltd. (petitioner/defendant) and Curewin Pharmaceuticals Pvt. Ltd. (respondent/plaintiff), primarily involving issues of delay in filing a written statement, proper institution of suit, and payment of appropriate court fees under the Commercial Courts Act, 2015 and CPC provisions.

Factual Background

The plaintiff filed a commercial suit in 2021 against the defendant for copyright infringement relating to the artistic work on a product called "ENERZY." The plaintiff initially paid a nominal court fee with an undertaking to pay the full amount later.

Procedural History

The petitioner challenged the suit under Order VII Rule 11 of the CPC for undervaluation and insufficient court fee. The trial court upheld the objection and directed the plaintiff to deposit the ad valorem court fee. The plaintiff amended the plaint and deposited the requisite court fee in May 2024. Subsequently, the trial court struck off the petitioner’s right to file a written statement, accepting the plaintiff’s application under Order VIII Rule 10 of the CPC, citing expiry of 120 days from service of summons.

Legal Issues

1. Whether the suit could be treated as properly instituted before payment of ad valorem court fee.

2. Whether the 120-day limitation for filing a written statement in a commercial suit begins from the date of service of summons or from the date of proper institution upon payment of the full court fee.

3. Whether striking off the defence under Order VIII Rule 10 CPC was justified.

Submissions

The petitioner argued that the suit was properly instituted only after payment of the correct court fee, and thus the 120-day timeline to file the written statement should begin from that date. The plaintiff contended that the deadline is fixed and not extendable under commercial suit procedure.

Judicial Reasoning

The High Court held that a commercial suit is not duly instituted until proper court fees are paid and pre-institution mediation (if not exempted) is complied with. Relying on precedents and provisions of the Commercial Courts Act and CPC, the Court ruled that in such a scenario, the countdown for filing a written statement starts only after proper institution of the suit. Since the petitioner filed the written statement within 120 days of the payment of full court fees, the defence could not have been struck off.

Final Decision

The High Court allowed the petition, set aside the Commercial Court's order dated 07.11.2024, and restored the petitioner’s right to file a written statement.

Case Title: Curewin Hylico Pharma Pvt. Ltd. Vs Curewin Pharmaceuticals Pvt. Ltd. and Others

Date of Order: 22 April 2025

Case No.: Misc. Petition No. 6965 of 2024

Neutral Citation: 2025:MPHC-IND:10912

Court: High Court of Madhya Pradesh, Indore Bench

Hon'ble Judges: Justice Vivek Rusia and Justice Gajendra Singh

L’Oréal S.A. Vs. Registrar of Trademarks

Introduction

This case involves an appeal filed by L’Oréal S.A. under Section 91(1) of the Trade Marks Act, 1999, challenging the removal of its registered trademark “GARNIER SKIN NATURALS” (Registration No. 1021740) from the trademark register.

Appellant’s Argument

L’Oréal argued that it had been using the mark since 2001 and had acquired ownership after the merger of Laboratoire Garnier Et Cie with L’Oréal. The registration was valid till June 2011, and L’Oréal had applied to be recorded as the subsequent proprietor. During a random website check in 2017, they found the mark listed for removal due to non-renewal. Although they filed an interlocutory petition for restoration in January 2018, the Registrar proceeded to remove the mark without permitting fee deposit. L’Oréal claimed it never received the mandatory renewal notice under Section 25(3).

Respondent’s Argument

The Registrar produced a copy of the renewal notice allegedly sent on 6th April 2011 and maintained that removal was justified as L’Oréal did not renew the mark on time.

Court’s Analysis and Decision

The Court noted that although the Registrar claimed to have sent the notice, no proof of dispatch was provided. L’Oréal’s denial of receipt was consistent and recorded earlier in the interlocutory petition. Since the removal happened much later in 2019 and without clear evidence of notice, the Court found the removal unsustainable.

Conclusion

The Court allowed the appeal, set aside the removal order, and directed restoration and renewal of the trademark, instructing L’Oréal to deposit the necessary fee within two weeks.

Case Title: L’Oréal S.A. Vs. Registrar of Trademarks
Date of Order: 9th December, 2022
Case No.: C.A.(COMM.IPD-TM) 30/2021
Name of Court: High Court of Delhi
Name of Judge: Hon'ble Mr. Justice Sanjeev Narula

Hari Chand Shri Gopal Vs. Chaurasia Tobacco Products

Introduction

The case concerns a trademark and copyright infringement dispute where the plaintiff, M/s Hari Chand Shri Gopal, sought a permanent injunction against Chaurasia Tobacco Products for using deceptively similar branding on their tobacco products.

Plaintiff’s Case

The plaintiff, engaged in the manufacture and sale of flavoured chewing tobacco under the mark ‘GOPAL’, has been using the trademark since 1950 and owns multiple registrations under Class 34. Their branding prominently features the ‘Lord Krishna’ device along with distinct packaging elements protected under copyright law. The plaintiff claimed substantial goodwill and reputation due to consistent sales and promotional activities.

Defendant’s Case

The defendant, operating under the proprietorship of Mr. Rajesh Kumar Chaurasiya, contended that 'GOPAL' is a common name associated with Lord Krishna and therefore generic. They argued that they adopted 'RAJESH GOPAL 65' in good faith and had been using it openly since September 2022.

Proceedings

The Court initially granted an ex parte ad interim injunction restraining the defendant from using the mark ‘GOPAL 65’ along with the ‘Lord Shiva’ device. A Local Commissioner was appointed who seized 592 cartons of infringing products from the defendant's premises. Despite opportunities, the defendant failed to actively contest the suit and was proceeded against ex parte.

Court’s Analysis and Findings

The Court held that the plaintiff had proven its rights over the trademarks and copyrights. The defendant's packaging and branding were found to be deceptively similar to the plaintiff’s, involving identical use of Hindu deity imagery, similar colour combinations, and layout design. The Court observed that the defendant unfairly leveraged the plaintiff’s established goodwill, leading to a clear case of infringement and passing off.

Relief Granted

The Court awarded a decree of permanent injunction against the defendant and granted damages and costs amounting to ₹5,00,000 to the plaintiff. It also accounted for the expenses incurred by the plaintiff on court fees and the local commissioner's fees.

Case Title: Hari Chand Shri Gopal Vs. Chaurasia Tobacco Products

Date of Order: 15th April, 2025

Case No.: CS(COMM) 895/2022

Neutral Citation: 2025:DHC:2783

Name of Court: High Court of Delhi

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