Metro Playing Card Co. Vs Wazir Chand Kapoor

Introduction: The case of Metro Playing Card Co. vs Wazir Chand Kapoor, decided by the Delhi High Court on April 5, 1972, is a seminal decision in Indian trademark law, illustrating the principles governing interim injunctions in cases of trademark infringement and passing off. This dispute centered on the use of a tractor device and the word "tractor" as a registered trademark by the respondent, Wazir Chand Kapoor, for playing cards, which the appellant, Metro Playing Card Co., allegedly infringed by using a similar tractor device and the word "Ferguson" on its playing cards. The case highlights the judiciary’s approach to protecting registered trademarks, the significance of visual similarity in infringement claims, and the limitations of defenses based on pending trademark applications or concurrent use. The Delhi High Court’s affirmation of the interim injunction underscores the robust protection afforded to registered trademarks under the Trade and Merchandise Marks Act, 1958, and the importance of establishing a prima facie case in interlocutory proceedings.

Detailed Factual Background:The respondent, Wazir Chand Kapoor, was a manufacturer and seller of playing cards, operating under a registered trademark comprising the device of a tractor and the word "tractor." This trademark was registered on February 8, 1968, under No. 233581 in Class 16, which pertains to paper goods, including playing cards. The registration granted Kapoor exclusive rights to use the trademark in relation to his playing cards, which were packaged in cartons bearing the tractor device.

The appellant, Metro Playing Card Co., also engaged in the manufacture and sale of playing cards. In early 1971, Kapoor discovered that Metro was marketing playing cards under the trademark "Ferguson," with a tractor device printed on the back of the cards. While the cartons containing Metro’s playing cards bore only the word "Ferguson" and lacked the tractor device, the cards themselves prominently featured the tractor, which Kapoor alleged was deceptively similar to his registered trademark. Metro claimed to have used the "Ferguson" mark since February 1966 and had applied for its registration in Class 16 at the Trade Mark Registry in Bombay. The application was accepted and advertised in the Trade Mark Journal No. 531 on July 16, 1971, to which Kapoor filed an opposition on September 11, 1971.

Kapoor contended that Metro’s use of the tractor device and the word "Ferguson" infringed his registered trademark and constituted passing off, as it could mislead consumers into believing Metro’s cards were his. He argued that "Ferguson," a well-known tractor brand, was synonymous with "tractor" in common parlance, exacerbating the likelihood of confusion. Metro countered that its use of the tractor was merely ornamental, not a trademark, and that the distinct packaging (cartons without the tractor device) eliminated any risk of confusion. Metro also asserted its prior use of "Ferguson" and the pending registration as defenses against the infringement claim.

Detailed Procedural Background:The dispute arose when Kapoor filed a suit in the Delhi High Court, seeking a permanent injunction to restrain Metro from infringing his registered trademark and passing off its playing cards as his, along with claims for damages and rendition of accounts. Concurrently, Kapoor moved an application under Order 39, Rules 1 and 2, read with Section 151 of the Code of Civil Procedure (CPC), requesting an interim injunction to prevent Metro from manufacturing, selling, or dealing in playing cards bearing the "Ferguson" mark and the tractor device during the pendency of the suit.

Metro opposed both the suit and the interlocutory application, arguing that its trademark application for "Ferguson" had been accepted, its use predated Kapoor’s registration, and the differences in packaging negated any infringement or passing off. The matter was heard by a learned Single Judge, P.N. Khanna, J., on the original side of the Delhi High Court. On November 29, 1971, the Single Judge granted an interim injunction, restraining Metro, its agents, and representatives from manufacturing, selling, or dealing in playing cards printed with the tractor device or any mark resembling Kapoor’s registered trademark. The injunction was limited to the tractor device on the cards, as the court found no infringement in the use of "Ferguson" on the cartons.Aggrieved by this order, Metro filed a First Appeal from Order (F.A.O. (OS) No. 1 of 1972) before a Division Bench of the Delhi High Court.

The court addressed the following key issues in adjudicating the appeal: Whether Kapoor established a prima facie case of trademark infringement to justify the interim injunction against Metro’s use of the tractor device on its playing cards. Whether Metro’s use of the tractor device was likely to cause confusion or deceive consumers, infringing Kapoor’s registered trademark rights under the Trade and Merchandise Marks Act, 1958. Whether Metro’s pending trademark application for "Ferguson" and its claim of prior use constituted a valid defense against the interim injunction. Whether the suit should have been stayed pending the outcome of Metro’s trademark registration application, or whether Kapoor should have been subjected to terms in case the suit was dismissed. Whether the scope of Kapoor’s registered trademark extended to the tractor device on the playing cards themselves, or was limited to the carton packaging.

Respondent’s (Kapoor’s) Submissions: Kapoor argued that his registered trademark, comprising the tractor device and the word "tractor," was infringed by Metro’s use of a similar tractor device on its playing cards. He contended that the visual similarity between the two tractor devices was patent, likely to confuse consumers purchasing playing cards. Kapoor emphasized that playing cards are often inspected before purchase, and the presence of the tractor device on Metro’s cards could lead unwary buyers to mistake them for his products. He further argued that "Ferguson," being a well-known tractor brand, was synonymous with "tractor" in common parlance, reinforcing the likelihood of confusion and supporting his passing off claim.

Kapoor relied on Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958, asserting that his registration conferred exclusive rights to use the trademark in relation to playing cards, including both the cards and their packaging. He maintained that Metro’s unregistered use of the tractor device violated his statutory rights, as Metro had not challenged the validity of his registration. Kapoor also argued that Metro’s pending application for "Ferguson" did not confer any rights until granted, and its advertisement in the Trade Mark Journal was irrelevant to the infringement claim. He urged the court to uphold the interim injunction to protect his trademark during the suit’s pendency.

Appellant’s (Metro’s) Submissions

Metro contested the interim injunction on several grounds. First, Metro argued that Kapoor failed to establish a prima facie case, as the tractor device on its cards was merely ornamental, not a trademark, and the cartons bore only the word "Ferguson," distinguishing them from Kapoor’s packaging. Metro asserted that playing cards are sold in sealed cartons, and consumers rely on the carton’s labeling, reducing the risk of confusion.

Second, Metro invoked Section 12(3) of the Trade and Merchandise Marks Act, 1958, which allows concurrent registration for honest use or special circumstances. Metro claimed that its application for "Ferguson" had been accepted and advertised, and Kapoor’s opposition was pending. It argued that the suit should be stayed until the Registrar decided on its application, citing Edwards v. Elkan (1888) 5 R.P.C. 70, where an interim injunction was deferred pending a defendant’s registration application due to prior use.

Third, Metro claimed prior use of "Ferguson" since February 1966, predating Kapoor’s 1968 registration, and argued that this entitled it to continue using the mark. Metro also contended that the injunction was overly broad, as Kapoor’s registration covered the tractor device on cartons, not the cards themselves, citing the statutory definitions in Section 2(2) of the Act.

Metro cited several precedents to support its case. In Mitchell v. Henry (1880) 15 Ch D 181, an injunction was refused due to dissimilar goods, which Metro analogized to the distinct packaging of its cards. Bravingtons Ltd. v. Barrington Tennant (1957 RPC 183) and Tavener Rutledge Ltd. v. Specters Ltd. (1957 RPC 498) were cited to argue that injunctions should be denied where similarity is doubtful or there is delay, though Metro did not allege delay by Kapoor. Metro also relied on D. Adinarayana Setty v. Brooke Bond Tea of India Ltd. (AIR 1960 Mys 142) and an English case (1932 RPC 597) to urge that the suit be stayed or terms imposed on Kapoor, such as security for potential dismissal of the suit.Finally, Metro argued that its pending application, advertised in July 1971, warranted a stay or conditional relief, as concurrent use could be recognized if its registration was granted.

The parties cited several precedents, primarily by Metro, to support their respective positions on trademark infringement, interim relief, and concurrent use:

Edwards v. Elkan, (1888) 5 R.P.C. 70 (Chancery Division, England): Cited by Metro to argue that the suit should be stayed pending its trademark application. In this case, the defendant used the mark "Our Boys" for watches before the plaintiff’s registration, and the court deferred the interim injunction until the defendant’s registration application was decided, as prior use was unchallenged. The Delhi High Court distinguished this case, noting that Metro provided no evidence of prior use of the tractor device, and its application was for "Ferguson," not the tractor, which was the subject of the injunction.

Mitchell v. Henry, (1880) 15 Ch D 181 (Chancery Division, England): Cited by Metro to argue that dissimilar goods negate infringement. The plaintiff’s registered trademark for worsted goods with a specific selvage was not infringed by the defendant’s differently colored goods, despite a similar thread. The court refused an injunction due to lack of similarity. The Delhi High Court rejected this analogy, finding that the tractor devices on both parties’ playing cards were patently similar, unlike the distinct goods in Mitchell.

Bravingtons Ltd. v. Barrington Tennant, (1957 RPC 183) (Chancery Division, England): Cited by Metro to argue that doubtful similarity or delay precludes interim relief. The court refused an injunction where the defendant’s use of “Barrington” was unlikely to deceive customers compared to “Bravington,” and the plaintiff delayed action. The Delhi High Court found this inapplicable, as there was no delay by Kapoor, and the tractor devices’ similarity was clear, unlike the trade names in Bravingtons.

Tavener Rutledge Ltd. v. Specters Ltd., (1957 RPC 498) (Chancery Division, England): Cited by Metro to support its claim that delay and lack of similarity justify refusing an injunction. The plaintiff alleged that the defendant’s sweet canisters infringed its trademark and copyright, but the court denied relief due to delay and dissimilar labels. The Delhi High Court dismissed this precedent, noting no delay by Kapoor and the evident similarity of the tractor devices, unlike the distinct canisters in Tavener.

D. Adinarayana Setty v. Brooke Bond Tea of India Ltd., AIR 1960 Mys 142 (Mysore High Court): Cited by Metro to argue for a stay or imposition of terms on Kapoor. The Mysore High Court’s decision involved trademark disputes, but specific details were not elaborated in the Delhi High Court’s judgment. The court rejected this precedent, finding no basis to stay the suit or impose terms, as Metro’s appeal and original reply lacked such a prayer.

English Case, (1932 RPC 597): Cited by Metro without specific details, likely to support its stay argument. The Delhi High Court dismissed its relevance, stating that it was not attracted to the present case’s facts, without further elaboration due to Metro’s failure to demonstrate prior use or applicability.

Detailed Reasoning and Analysis of Judge: The Division Bench, upheld the Single Judge’s interim injunction, providing a clear and reasoned analysis rooted in trademark law principles. The court’s reasoning addressed Metro’s contentions systematically:

On the prima facie case, the court found that Kapoor established a strong case for infringement. The tractor device on Metro’s playing cards was “patently similar” to Kapoor’s registered trademark, satisfying the visual similarity test for infringement under Section 29 of the Trade and Merchandise Marks Act, 1958. The court rejected Metro’s argument that consumers rely solely on carton packaging, noting that it is “common knowledge” that playing cards are inspected before purchase, making the tractor device on the cards a critical factor in consumer perception. The court declined to opine on whether “Ferguson” itself infringed, as the injunction was limited to the tractor device, but acknowledged Kapoor’s argument that “Ferguson” is synonymous with “tractor,” suggesting potential for further scrutiny in the main suit.

Regarding Metro’s pending trademark application, the court held that mere acceptance or advertisement of an application confers no rights, as per Section 28, which grants exclusive rights only upon registration. Metro’s application for “Ferguson” was irrelevant to the injunction, which targeted the tractor device, not the word. The court dismissed Metro’s reliance on Section 12(3) for concurrent use, noting that until registration is granted, Kapoor’s registered trademark prevails, and Metro had not challenged the registration’s validity. The court distinguished Edwards v. Elkan, as Metro provided no evidence of prior use of the tractor device, unlike the defendant’s established use in Edwards.

On Metro’s claim that the tractor device was ornamental, not a trademark, the court found this unpersuasive, as the device’s placement on the cards mirrored Kapoor’s registered use, likely to influence consumer perception. The court also rejected Metro’s argument that Kapoor’s registration was limited to cartons. Citing Sections 2(2), 28, and 29, the court clarified that a registered trademark applies to the goods (playing cards) and their packaging, encompassing the tractor device on the cards themselves.

The court addressed Metro’s request for a stay or terms, finding no basis for either. Metro’s appeal and original reply lacked a prayer for terms, and the precedents cited (e.g., D. Adinarayana Setty) were inapplicable, as they did not align with the case’s facts. The court emphasized that Kapoor’s statutory rights under a valid registration took precedence, and Metro’s claim of concurrent use lacked prima facie evidence.

The court concluded that the balance of convenience favored Kapoor, as the interim injunction protected his registered trademark without unduly harming Metro, pending the suit’s resolution. The injunction’s scope, limited to the tractor device, was proportionate, leaving Metro free to use “Ferguson” on cartons, subject to the main suit’s outcome.

Final Decision: The Delhi High Court dismissed Metro Playing Card Co.’s appeal (F.A.O. (OS) No. 1 of 1972) with costs, affirming the Single Judge’s interim injunction of November 29, 1971. The injunction restrained Metro, its agents, and representatives from manufacturing, selling, offering for sale, or dealing in playing cards printed with the device of a tractor or any mark resembling Kapoor’s registered trademark, pending the disposal of the suit.

Law Settled in This Case: This case clarified several principles in Indian trademark law, particularly for interim injunctions in infringement disputes:

Protection of Registered Trademarks: A registered trademark under Section 28 of the Trade and Merchandise Marks Act, 1958, confers exclusive rights, and unregistered use of a similar mark constitutes infringement unless the registration’s validity is challenged. 

Visual Similarity in Infringement: Patent similarity between marks, especially on goods inspected by consumers (e.g., playing cards), establishes a prima facie case of infringement, regardless of differences in packaging. 

Pending Trademark Applications Confer No Rights: Acceptance or advertisement of a trademark application does not grant rights or justify staying a suit, as only registered marks enjoy statutory protection. 

Concurrent Use Defense: Claims of concurrent use under Section 12(3) require evidence of honest use or special circumstances, which must be substantiated at the interim stage to counter a registered trademark’s rights. 

Scope of Trademark Registration: A registered trademark applies to the goods and their packaging, encompassing marks on the goods themselves (e.g., playing cards), not just their containers. 

Case Title: Metro Playing Card Co. Vs Wazir Chand Kapoor

Date of Order: April 5, 1972

Case No.: F.A.O. (OS) No. 1 of 1972

Neutral Citation: AIR 1972 Del 248

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon’ble Chief Justice Hardayal Hardy and Hon’ble Mr. Justice Prakash Narain

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

Educare Limited Vs S.K. Sachdev

Introduction: The case of Educare Limited & Anr vs S.K. Sachdev & Anr, decided by the Delhi High Court on November 14, 2014, stands as a significant precedent in Indian trademark law, particularly in the realm of educational institutions. This dispute revolved around the alleged passing off of the plaintiffs’ well-established trademark "SHRI RAM" by the defendants’ use of the phonetically similar "ShreeRam World School." The case encapsulates the tension between protecting a brand’s goodwill and the challenges posed by common or deity-derived names in trademark disputes. The plaintiffs, associated with the renowned Shri Ram Schools, sought to safeguard their reputation, while the defendants, experienced educationists, argued that "Shri Ram" was a generic term incapable of exclusive association. The judgment delves into principles of passing off, distinctiveness, and the equitable considerations of material concealment, offering valuable insights into trademark protection in India’s competitive educational sector.

Detailed Factual Background:The plaintiffs in this case were Educare Limited (Plaintiff No. 1), a company engaged in establishing schools in India and abroad, and a registered non-profit society (Plaintiff No. 2) operating the Shri Ram Schools since 1988. The first Shri Ram School was established in Vasant Vihar, New Delhi, on a 1.5-acre plot near the ridge forest, starting modestly with 64 students in five tents. Designed to provide a holistic education emphasizing values, self-discipline, and excellence, the school grew to over 700 students and 108 staff members. The Shri Ram School expanded to include a senior school in Moulsari, Gurgaon, and another branch, The Shri Ram School-Aravali, established in 2000 in DLF City Phase IV, Gurgaon.

To address the shortage of quality schools, Educare Limited partnered with Educomp Infrastructure and School Management (EISML), a subsidiary of Educomp Solutions, to establish The Shriram Millennium Schools in Noida (2010) and Faridabad (2012), adopting the pedagogical philosophy of the Shri Ram Schools. In 2011, the second plaintiff collaborated with the Haryana Police Department to set up The Shri Ram Police School in Bhondsi, Haryana, for children of police personnel and the public. By 2014, the plaintiffs operated schools at six locations, all prominently featuring "SHRI RAM" in their names.

The plaintiffs’ schools earned widespread acclaim for their child-centered, value-based education. The Shri Ram School, Vasant Vihar, was ranked fourth in Delhi by Outlook India in 2002 and the best day school in India by Education World Magazine in 2008, 2009, and 2011. In 2010, The Hindustan Times ranked the Delhi and Gurgaon branches as the top schools in Gurgaon and Southwest Delhi. In 2011, The Shri Ram School, Aravali, was ranked the number one school in India by the Delhi-based Center for Forecasting and Research Private Limited and Education World Magazine. By 2013, IndiaRanker.com placed The Shri Ram School, Vasant Vihar, sixth and Aravali twelfth among India’s top schools. The plaintiffs’ students excelled academically and in extracurricular activities, with notable achievements in ICSE exams, sports, photography, and international programs, further enhancing the brand’s reputation.

The plaintiffs claimed that 25 years of continuous use had made "SHRI RAM" synonymous with their schools’ excellence. They filed a trademark application for "THE SHRI RAM SCHOOL" on June 6, 2008 (No. 1696277, Class 41), which was pending at the time of the suit.

The defendants were S.K. Sachdev (Defendant No. 1), the Chairman of ShreeRam World School, and the school itself (Defendant No. 2), operated under the Mata Phoolan Wanti Educational Society. Sachdev, a seasoned educationist, also chaired Sachdeva Public School (Pitam Pura, 1986; Rohini, 1999), Sachdeva Global School (Dwarka, 2007), and Queens Valley School (2009), all under different educational societies. The defendants launched ShreeRam World School in Dwarka, with a domain name www.shreeram.in, and filed a trademark application for "SHREERAM WORLD SCHOOL" on February 17, 2011 (No. 2101083, Class 41), claiming use from 2014.

The plaintiffs alleged that "ShreeRam" was phonetically and conceptually identical to "SHRI RAM," adopted dishonestly to capitalize on their goodwill. They pointed to the defendants’ silence on the management details of ShreeRam World School’s website, contrasting with the transparency of their other schools’ websites, as evidence of intent to mislead. The defendants countered that "SHRI RAM," derived from the Hindu deity Lord Ram, was a common term in education, used by numerous schools since 1923, and thus incapable of exclusive association with the plaintiffs.

Detailed Procedural Background:The suit, CS(OS) No. 1151/2014, was filed by the plaintiffs in the Delhi High Court, seeking a permanent injunction to restrain the defendants from using "ShreeRam World School" and the domain name www.shreeram.in, along with damages and rendition of accounts. On April 25, 2014, the court issued summons and granted an ex parte interim injunction, restraining the defendants from using the trademark "ShreeRam World School" and the domain name, citing their deceptive similarity to "SHRI RAM."

The plaintiffs filed IA No. 7512/2014 under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC) to confirm the interim injunction. The defendants responded with IA No. 10541/2014 under Order 39 Rule 4 CPC, seeking vacation of the interim order. Both applications were heard together, with arguments concluding on September 4, 2014, and judgment reserved. The court pronounced its decision on November 14, 2014, disposing of both applications through a common order.

The plaintiffs submitted extensive documentary evidence, including school rankings, newspaper clippings, and student achievements, to demonstrate the goodwill and distinctiveness of "SHRI RAM." The defendants filed a written statement and documents, including trademark search reports, CBSE records, and third-party school details, to argue that "SHRI RAM" was a common term. 

Issues Involved in the Case

The court addressed the following key issues in adjudicating the applications:Whether the plaintiffs established a prima facie case of passing off, demonstrating that "SHRI RAM" had acquired distinctiveness and goodwill associated exclusively with their schools? Whether the defendants’ use of "ShreeRam World School" was likely to cause confusion or deception among the public, infringing the plaintiffs’ proprietary rights in their trademark? Whether the plaintiffs’ alleged concealment of trademark examination reports and prior statements to the Registrar constituted material misrepresentation, disentitling them to equitable relief? Whether the term "SHRI RAM," as a deity-derived name, was common to the trade and incapable of exclusive appropriation, or whether the plaintiffs’ long use rendered it distinctive?

Detailed Submission of Parties: The plaintiffs argued that their uninterrupted use of "SHRI RAM" since 1988 had made it an intrinsic part of their schools’ goodwill. They highlighted the schools’ top rankings, student achievements, and media recognition, asserting that "SHRI RAM" was exclusively associated with their educational philosophy and excellence. The defendants’ adoption of "ShreeRam World School" in 2014, they contended, was phonetically, structurally, and visually identical to "THE SHRI RAM SCHOOL," differing only by the omission of "THE" and addition of "WORLD." This similarity, coupled with the defendants’ operation in the same educational sector, was likely to deceive parents and students into believing ShreeRam World School was affiliated with the plaintiffs.

The plaintiffs alleged that the defendants, experienced educationists since 1986, were aware of their schools’ reputation, particularly after The Shri Ram School was ranked India’s best in 2011, the year the defendants applied for "SHREERAM WORLD SCHOOL." They pointed to the defendants’ failure to disclose management details on ShreeRam World School’s website, unlike their other schools, as evidence of dishonest intent to trade on the plaintiffs’ goodwill. The plaintiffs argued that this silence was intentional to create a false impression of association.

On the defendants’ claim that "SHRI RAM" was a common deity name, the plaintiffs countered that their 25-year use had rendered it distinctive, and the proliferation of "Shri Ram" schools post-1988 was due to their success. They cited only 12 schools with "Shri Ram" before 1988, compared to 23 between 1988-2000 and 42 from 2001-2014, attributing this increase to their brand’s influence. The plaintiffs also argued that the defendants’ trademark application for "SHREERAM WORLD SCHOOL" contradicted their claim that the term was publici juris, as seeking registration implied a claim to proprietary rights.

Regarding alleged concealment, the plaintiffs clarified that their letter dated June 8, 2012, to the Registrar, admitting "SHRI RAM" was a deity name, pertained to a different trademark application (No. 1696276, SHRI RAM EDUCARE vs. USHA SHRIRAM), not "THE SHRI RAM SCHOOL." This letter was withdrawn on April 15, 2014, before the suit’s filing on May 25, 2014, and no advantage was derived from it. They denied material concealment, asserting that their plaint focused on the distinctiveness of "SHRI RAM" through long use, not its registrability.

The plaintiffs relied on several precedents to support their passing off claim. In Century Traders v. Roshan Lal Duggar & Co. (AIR 1978 Del 250), the court held that prior use establishes a passing off claim, and proof of fraud or actual damage is unnecessary if the defendant’s mark is likely to deceive. B.K. Engineering and Company v. Ubhi Enterprises (1985 PTC (DB) 1) emphasized that defendants cannot misappropriate a plaintiff’s goodwill, as passing off protects the property in business reputation. Laxmikant V. Patel v. ChetanBhat Shah (2002 (24) PTC 1 (SC)) underscored that a mark acquiring goodwill through long use is protected against competitors’ deceptive use, even without fraudulent intent. The plaintiffs also cited India Hotels Company Ltd. v. Jiva Institute of Vedic Science and Culture (2008 (37) PTC 468 (Del.) (DB)) and Automatic Electric Limited v. R.K. Dhawan (1999 (19) PTC 81 (Del)) to argue that the defendants’ trademark application estopped them from claiming "ShreeRam" was generic.

Defendants’ Submissions:The defendants sought vacation of the interim injunction, arguing that the plaintiffs’ claim was based on material concealment and inconsistent positions. They contended that the plaintiffs withheld trademark examination reports indicating that "SHRI RAM" was registered or pending in other parties’ names and their June 8, 2012, letter to the Registrar admitting that "SHRI RAM" was a common deity name not subject to monopoly. The defendants alleged that the plaintiffs’ withdrawal of this letter on April 15, 2014, was dubious, as it was not reflected in the Registrar’s electronic records, suggesting manipulation.

The defendants argued that "SHRI RAM" was a generic term, widely used in education since 1923, with approximately 100 schools bearing the name by 2014. They cited examples from 1932, 1951, 1960, and later decades, supported by CBSE records, photographs, and brochures, to assert that "SHRI RAM" lacked distinctiveness and co-existed peacefully among schools. They relied on McCarthy on Trade Marks and Unfair Competition (4th Ed.), which states that marks in a crowded field are weak and unlikely to cause confusion, as consumers distinguish them based on subtle differences. The defendants also argued that "SHRI RAM," as a deity name associated with learning, was inherently apt for educational use, citing telephone directories showing its widespread adoption.

The defendants invoked judicial reluctance to grant monopolies over deity names, referencing Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd. (2011 (45) PTC 217 (Del) and 2011 (48) PTC 235 (DB)), where interim relief was denied despite high sales, as "Krishna" was common in dairy products. Similarly, Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices (2011 (46) PTC 152 (Del)) and Goenka Institute of Education v. Anjani Kumar Goenka (AIR 2009 Del 139) denied protection to common names like "Kamdhenu" and "Goenka." In Skyline Education Institute v. S.L. Vaswani (2010 (42) PTC 217 (SC)), the Supreme Court held that the generic term "SKYLINE" warranted no injunction due to its common use.

The defendants further argued that the plaintiffs failed to prove goodwill or distinctiveness, as they provided no financial data, fee collections, or advertisement expenditure. They contended that the plaintiffs’ evidence—website printouts and media clippings—was insufficient to establish exclusive association. The defendants also highlighted the cautious nature of parents selecting schools, noting differences in board affiliations (ICSE for plaintiffs, CBSE for defendants) and geographical locations, which minimized confusion.

On adoption, the defendants claimed that "SHREERAM WORLD SCHOOL" was chosen honestly to honor Defendant No. 1’s mother, a devout Hindu who worshipped Lord Ram and desired a school in his name. They asserted their own goodwill, built through decades of educational ventures, negated any need to rely on the plaintiffs’ reputation. The defendants offered to include a disclaimer stating that ShreeRam World School was run by the Mata Phoolan Wanti Educational Society to clarify its distinct source.

The defendants cited S.P. Chengalvaraya Naidu v. Jagannath (1994 SCC (1) 1) to argue that concealment of material facts, like the plaintiffs’ letter to the Registrar, rendered their claim inequitable. Living Media India Ltd. v. Alpha Dealcom Pvt. Ltd. (2014 (28) DLT 145) and Unichem Laboratories Ltd. v. Ipca Laboratories Ltd. (2011 (45) PTC 488) supported their claim that inconsistent positions before the Registrar and court warranted denial of relief. Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. (2012 (50) PTC 380) and Heeralal v. Kalyan Mal (AIR 1998 SC 618) reinforced that admissions cannot be withdrawn without Registrar approval. Rajinder Kumar Aggarwal v. Union of India (2007 (35) PTC 616) and P.P. Jeweller v. P.P. Buildwell (2009 (41) PTC 217) held that long use alone does not establish distinctiveness in a crowded field.

Detailed Discussion on Judgments Cited by Parties:Both parties relied on a robust array of precedents, each applied to specific legal principles in the context of passing off and trademark protection:

Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250 (DB): Cited by the plaintiffs to establish that prior use is critical in a passing off action, and the defendant’s mark need only be likely to deceive to warrant an injunction, without proving fraud or actual damage. The court held that the plaintiff’s prior use of "RAJARANI" entitled them to relief, emphasizing that registration is irrelevant in passing off unless user evidence exists. This supported the plaintiffs’ claim of 25-year use since 1988.

B.K. Engineering and Company v. Ubhi Enterprises, 1985 PTC (DB) 1: Cited by the plaintiffs to argue that passing off protects the property in goodwill, and defendants cannot misappropriate a plaintiff’s labor. The court, dealing with the mark "B.K.," held that a distinctive mark’s misuse injures the plaintiff’s business reputation, even if the defendant uses their own name, if it causes confusion. This bolstered the plaintiffs’ claim that "ShreeRam" exploited their goodwill.

Laxmikant V. Patel v. ChetanBhat Shah, 2002 (24) PTC 1 (SC): Cited by the plaintiffs to underscore that a mark acquiring goodwill through long use is protected against competitors’ deceptive use, regardless of intent. The Supreme Court, in a case involving "MUKTAJIVAN," held that prior use and goodwill establish a prima facie case for injunction if confusion is likely. This supported the plaintiffs’ argument that their established reputation warranted protection.

India Hotels Company Ltd. v. Jiva Institute of Vedic Science and Culture, 2008 (37) PTC 468 (Del.) (DB): Cited by the plaintiffs to counter the defendants’ claim that "SHRI RAM" was publici juris. The court held that a party applying for trademark registration (like the defendants for "SHREERAM WORLD SCHOOL") cannot argue the mark is descriptive, as it implies a claim to proprietary rights. This estopped the defendants from denying the mark’s distinctiveness.

Automatic Electric Limited v. R.K. Dhawan, 1999 (19) PTC 81 (Del): Cited by the plaintiffs to reinforce that the defendants’ trademark application for "SHREERAM WORLD SCHOOL" contradicted their generic term argument. The court, dealing with "DIMMERSTAT" vs. "DIMMERDOT," held that seeking registration precludes claiming a mark is generic, supporting the plaintiffs’ estoppel argument.

S.P. Chengalvaraya Naidu v. Jagannath, 1994 SCC (1) 1: Cited by the defendants to argue that the plaintiffs’ concealment of the June 8, 2012, letter and examination reports was fraudulent, rendering their claim inequitable. The Supreme Court held that a litigant must disclose all relevant documents, and non-disclosure constitutes fraud on the court. The defendants used this to challenge the plaintiffs’ equitable relief.

Living Media India Ltd. v. Alpha Dealcom Pvt. Ltd., 2014 (28) DLT 145: Cited by the defendants to argue that the plaintiffs’ inconsistent positions—admitting "SHRI RAM" was common before the Registrar but claiming exclusivity in court—disentitled them to relief. The court denied an injunction where the plaintiff took contradictory stands on "INDIA TODAY" vs. "NATION TODAY," supporting the defendants’ concealment argument.

Unichem Laboratories Ltd. v. Ipca Laboratories Ltd., 2011 (45) PTC 488: Cited by the defendants to reinforce that inconsistent stands before the Registrar and court preclude injunctive relief. The Mumbai High Court denied an injunction due to the plaintiff’s contradictory positions, aligning with the defendants’ claim of material misrepresentation.

Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 (50) PTC 380: Cited by the defendants to argue that parties cannot approbate and reprobate by taking inconsistent stands. The court’s ruling supported the defendants’ contention that the plaintiffs’ shifting positions undermined their claim.

Heeralal v. Kalyan Mal, AIR 1998 SC 618: Cited by the defendants to assert that the plaintiffs’ June 8, 2012, admission could not be withdrawn without Registrar approval. The Supreme Court held that admissions are binding unless properly retracted, supporting the defendants’ challenge to the withdrawal letter’s authenticity.

Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities (P) Ltd., 2011 (45) PTC 217 (Del) and 2011 (48) PTC 235 (DB): Cited by the defendants to argue that deity names like "SHRI RAM" are common and not protectable. The court denied interim relief for "Krishna" in dairy products despite high sales, as it was widely used, supporting the defendants’ claim of a crowded field.

Kamdhenu Ispat Limited v. Kamdhenu Pickles & Spices, 2011 (46) PTC 152 (Del): Cited by the defendants to argue that common names like "Kamdhenu" lack distinctiveness. The court’s denial of protection reinforced the defendants’ position that "SHRI RAM" was not exclusive.

Goenka Institute of Education v. Anjani Kumar Goenka, AIR 2009 Del 139: Cited by the defendants to argue that surnames like "Goenka" are not distinctive in education. The court’s refusal to protect the name supported the defendants’ claim that "SHRI RAM" was a common term.

Skyline Education Institute v. S.L. Vaswani, 2010 (42) PTC 217 (SC): Cited by the defendants to argue that generic terms like "SKYLINE" warrant no protection in a crowded field. The Supreme Court’s ruling that common use negates injunction supported the defendants’ publici juris argument.

Rajinder Kumar Aggarwal v. Union of India, 2007 (35) PTC 616: Cited by the defendants to argue that long use alone does not establish distinctiveness for common names like "Aggarwal." The court’s ruling supported the defendants’ claim that "SHRI RAM" lacked exclusivity.

P.P. Jeweller v. P.P. Buildwell, 2009 (41) PTC 217: Cited by the defendants to assert that search reports showing third-party use can negate distinctiveness. The court’s denial of passing off relief due to a crowded field supported the defendants’ argument.

McCarthy on Trade Marks and Unfair Competition, 11:85 (4th Ed.): Cited by the defendants to argue that marks in a crowded field, like "SHRI RAM," are weak and unlikely to cause confusion, as consumers distinguish them based on minor differences. Examples like "GRAND HOTEL" and "BROADWAY" illustrated this principle.

Detailed Reasoning and Analysis of Judge: The court confirmed the interim injunction, dismissing the defendants’ application to vacate it, based on the following reasoning:

On the issue of concealment, the defendants alleged that the plaintiffs withheld trademark examination reports and their June 8, 2012, letter admitting "SHRI RAM" was a common deity name. The court acknowledged the settled principle that litigants must disclose all relevant documents, and concealment can disentitle equitable relief, as per S.P. Chengalvaraya Naidu. However, it found no material misrepresentation. The plaintiffs clarified that the 2012 letter pertained to a different application (SHRI RAM EDUCARE vs. USHA SHRIRAM), not "THE SHRI RAM SCHOOL," and was withdrawn on April 15, 2014, before the suit’s filing. The court accepted this explanation, noting that the plaintiffs derived no advantage from the letter and their plaint focused on goodwill through use, not registrability. The court deemed the alleged concealment immaterial, as it did not affect the core claim of distinctiveness.

The court then assessed whether "SHRI RAM" was distinctive to the plaintiffs’ schools. The defendants argued that it was a common deity name, used by schools since 1923, and thus publici juris, citing Bhole Baba and McCarthy’s crowded field doctrine. They provided evidence of approximately 100 schools with "Shri Ram," asserting peaceful co-existence and consumer ability to distinguish based on differences like "WORLD" vs. "SCHOOL." The plaintiffs countered that their 25-year use since 1988, coupled with top rankings and student achievements, made "SHRI RAM" synonymous with their brand, and post-1988 schools adopted the name due to their success.

The court found that the plaintiffs prima facie established immense goodwill and distinctiveness. It relied on extensive documentary evidence, including 2010 and 2011 rankings naming The Shri Ram School as Delhi’s and India’s best, and newspaper clippings showcasing student achievements (e.g., 98.75% in ICSE exams, sports awards). The court emphasized that for schools, financial metrics are secondary to reputation built on academic and extracurricular excellence. It held that public perception associated "SHRI RAM" with the plaintiffs’ schools, distinguishing them from older or newer "Shri Ram" schools. The court rejected the defendants’ crowded field argument, finding that the plaintiffs’ schools “stood out in the crowd” due to their unique reputation.

On phonetic and visual similarity, the court agreed that "THE SHRI RAM SCHOOL" and "SHREERAM WORLD SCHOOL" were nearly identical, differing only in minor elements. This similarity, in the same educational services, was likely to cause confusion among parents, satisfying the passing off test under Laxmikant V. Patel.

The court addressed the defendants’ claim of honest adoption, based on Defendant No. 1’s mother’s wish to honor Lord Ram. It found this explanation unconvincing, noting the defendants’ long experience in education since 1986 and operation of schools under distinct names like Sachdeva and Queens Valley. The absence of management details on ShreeRam World School’s website, unlike the defendants’ other schools, was deemed suspicious and intentional, suggesting an attempt to mimic the plaintiffs’ brand. The court also noted the defendants’ failure to specify when the mother’s wish was expressed or her date of death, undermining their bona fides.

The defendants’ trademark application for "SHREERAM WORLD SCHOOL" was a critical factor. Citing India Hotels and Automatic Electric, the court held that seeking registration estopped the defendants from claiming the mark was generic, as it implied a proprietary claim. This contradiction weakened their publici juris argument.

On the balance of convenience, the court found that the plaintiffs, with 25 years of use, would suffer irreparable injury if the defendants continued using "ShreeRam," while the defendants, with use only since 2014, faced minimal harm from an injunction. The court rejected the defendants’ disclaimer offer, as the core issue was the mark’s deceptive similarity, not merely source clarification.

Final Decision

The Delhi High Court allowed IA No. 7512/2014, confirming the interim injunction of April 25, 2014, restraining the defendants from using "ShreeRam World School" and www.shreeram.in. IA No. 10541/2014 was dismissed, denying vacation of the injunction. The matter was listed for further proceedings on February 11, 2015, for admission/denial of documents and March 3, 2015, for framing issues.

Law Settled in This Case: This case clarified several principles in Indian trademark law, particularly for passing off in educational services:

Distinctiveness Through Use: Long, uninterrupted use of a mark, coupled with evidence of reputation (e.g., rankings, achievements), can render even a deity-derived name distinctive, overriding claims of it being publici juris. 

Estoppel by Trademark Application: A defendant applying for trademark registration cannot claim the mark is generic, as it implies a proprietary claim, estopping contradictory arguments. Material Concealment: Concealment disentitles equitable relief only if material and intentional, affecting the claim’s core. Inconsistent positions in unrelated proceedings may not constitute material misrepresentation if withdrawn before suit. 

Passing Off in Education: In educational services, goodwill is assessed through academic and extracurricular reputation, not financial metrics. Phonetic and visual similarity in school names can cause confusion among cautious parents. 

Bona Fide Adoption: Claims of honest adoption, especially by experienced players in the same field, require robust evidence. Suspicious omissions (e.g., website details) can indicate dishonest intent.

Case Title: Educare Limited & Anr Vs S.K. Sachdev & Anr

Date of Order: November 14, 2014

Case No.: CS(OS) No. 1151/2014

Name of Court: High Court of Delhi, New Delhi

Name of Judge: Hon’ble Mr. Justice G.S. Sistani

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

F. Hoffmann-La Roche Ltd. Vs. Cipla Ltd.

Introduction: The case of F. Hoffmann-La Roche Ltd. & Anr. vs. Cipla Ltd. represents a pivotal moment in Indian patent law, particularly in the pharmaceutical sector. This high-profile dispute centered on the alleged infringement of a patent for Erlotinib, a groundbreaking cancer treatment drug marketed as Tarceva. The case raised critical questions about patent validity, infringement, and the scope of protection for polymorphic forms of pharmaceutical compounds. It also highlighted the tension between intellectual property rights and public interest in access to affordable life-saving drugs. Decided by the Delhi High Court in 2012, the judgment offers profound insights into the application of India’s Patents Act, 1970, particularly Section 3(d), which governs the patentability of new forms of known substances.

Detailed Factual Background: F. Hoffmann-La Roche Ltd. (Roche), a Swiss pharmaceutical giant, and OSI Pharmaceuticals Inc. (OSI), a New York-based company, were the plaintiffs in this case. Roche, known for its extensive research in pharmaceuticals and diagnostics, invests heavily in collaborative research, spending approximately 7 billion Swiss Francs annually. OSI, along with Pfizer Products Inc., jointly owned a patent for Erlotinib, a Human Epidermal Growth Factor Receptor (HER/EGFR) inhibitor used to treat advanced or metastatic non-small cell lung cancer (NSCLC). Erlotinib, sold under the Trademark Tarceva by Roche, was a tablet formulation approved by the U.S. FDA in 2004 and the European Union in 2005. In India, Roche introduced Tarceva in April 2006, following its registration by the Central Drug Standard Control Organization in December 2005.

The patent in question, Indian Patent No. 196774 (IN’774), was granted on February 23, 2007, to OSI and Pfizer for Erlotinib Hydrochloride, chemically named NOVEL [6,7-BIS(2-METHOXYETHOXY) QUINAZOLIN-4-YL]-(3-ETHYNYLPHENYL) AMINE HYDROCHLORIDE. The patent covered both the drug and its manufacturing process. Roche, under a licensing agreement with OSI dated January 8, 2001, was authorized to manufacture, market, and enforce intellectual property rights for Tarceva in India and other countries.

Cipla Ltd., a prominent Indian pharmaceutical company, was the defendant. Cipla announced plans to launch a generic version of Erlotinib, named Erlocip, in India and for export, as reported in the English daily Mint on January 11, 2008. This prompted Roche and OSI to file a suit against Cipla, alleging infringement of IN’774. Cipla, in turn, challenged the validity of the patent and argued that its product, Erlocip, was a polymorphic form (Polymorph B) of Erlotinib Hydrochloride, distinct from the patented compound, which was a mixture of Polymorphs A and B.

The dispute also involved a subsequent U.S. patent, US 6900221 (US’221), which described Polymorph B of Erlotinib Hydrochloride as a more stable form suitable for tablet formulation. In India, Roche’s application for a patent on Polymorph B (IN/PCT/2002/00507/DEL) was rejected under Section 3(d) of the Patents Act, which requires new forms of known substances to demonstrate enhanced therapeutic efficacy. This rejection became a focal point in the case, as Cipla argued that its product aligned with the unpatented Polymorph B, thus not infringing IN’774.

Detailed Procedural Background:The suit, CS(OS) No. 89/2008, was filed by Roche and OSI on January 15, 2008, in the Delhi High Court, seeking a permanent injunction to restrain Cipla from manufacturing, selling, or marketing Erlocip, along with claims for damages, rendition of accounts, and delivery up. Concurrently, the plaintiffs filed an interim injunction application under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure (CPC). On January 16, 2008, the court issued a notice on the interim application, and Cipla admitted to marketing Erlocip for three weeks. The interim application was argued over several hearings, but on March 19, 2008, the court dismissed the injunction request, directing Cipla to maintain accounts and provide an undertaking to pay damages if the suit was decreed.

Roche appealed the interim order in FAO(OS) No. 188/2008, but the Division Bench dismissed the appeal on April 24, 2009. A subsequent Special Leave Petition (SLP) before the Supreme Court (Civil No. 20111/2009) was dismissed on September 28, 2009, with a direction to expedite the trial without being influenced by the Division Bench’s observations.

Cipla filed a written statement and a counterclaim (C.C. No. 52/2008) on January 21, 2008, seeking revocation of IN’774 on grounds including lack of inventive step, obviousness, and non-patentability under Section 3(d). The plaintiffs filed a replication and a written statement to the counterclaim. On September 18, 2008, the court framed five issues, covering infringement, patent validity, the effect of US’221, and the plaintiffs’ entitlement to relief.

Evidence was recorded by a court-appointed commissioner, with both parties submitting affidavits from witnesses, including experts in pharmaceutical sciences and patent law. The plaintiffs presented affidavits from Mr. Shivprasad Laud (PW-1), Prof. Roger Griffin (PW-2), and Prof. Nick Thatcher (PW-3). Cipla’s witnesses included Mr. R. Gopalakrishnan (DW-1), Ms. Shashikala Kanathala (DW-2), Prof. Ashwini Nangia (DW-3), and Dr. Rajender Kumar Lohiya (DW-4). Extensive documentary evidence, including patent specifications, X-ray diffraction (XRD) data, and prior art references, was exhibited.

Cross-examination occurred between April 2009 and November 2010, with final arguments concluding on June 1, 2012. The court reserved judgment on June 1, 2012, and pronounced it on September 7, 2012.

Issues Involved in the Case:The court framed the following issues for adjudication:

Whether the manufacture, marketing, and sale of Erlocip by Cipla infringes the plaintiffs’ Indian Patent No. 196774? (Onus on Plaintiffs)? Whether Indian Patent No. 196774 is liable to be revoked on the grounds raised in Cipla’s written statement and counterclaim? Whether the plaintiffs are entitled to a permanent injunction as prayed for?Whether Cipla proves that the plaintiffs’ US Patent 6900221 indicates that the compound of claim No. 1 of IN’774 is a mixture of Polymorphs A and B, requiring separation for acceptable efficacy, and its effect on IN’774? 

Plaintiffs’ Submissions:Roche and OSI argued that IN’774 was a valid patent covering Erlotinib Hydrochloride, and Cipla’s Erlocip infringed it by replicating the patented compound. They emphasized Tarceva’s significance as a life-saving drug, developed after substantial research, and its global approvals. The plaintiffs contended that Section 48 of the Patents Act grants exclusive rights to prevent unauthorized use, and their licensing agreement authorized Roche to enforce these rights.

On infringement, the plaintiffs asserted that Erlocip contained Erlotinib Hydrochloride, identical to the patented compound, and Cipla’s marketing violated their rights. They argued that IN’774’s claims were not limited to a specific polymorphic form, covering both Polymorphs A and B. The plaintiffs relied on the Catnic approach for claim construction, urging a purposive interpretation to include variants like Polymorph B. They cited clinical trial data from 1997 (Ex. PW1/X2) showing Erlotinib’s administration in tablet form, predating Polymorph B’s invention, to argue that the suit patent encompassed solid forms.

Regarding Polymorph B, the plaintiffs argued that it was irrelevant to therapeutic efficacy, as per Dr. Nick Thatcher’s testimony (PW-3), who stated that polymorphism does not affect patient outcomes. They contended that Section 3(d)’s explanation, which considers polymorphs as the same substance unless differing significantly in efficacy, supported their claim that Polymorph B fell within IN’774. The plaintiffs also referenced the Controller’s order in pre-grant opposition (December 15, 2008), which treated Polymorph B as the same substance as IN’774’s compound.

On patent validity, the plaintiffs argued that Cipla failed to prove obviousness or lack of inventive step. They disputed Cipla’s reliance on European Patent 0566226 (EP’226) as prior art, asserting that EP’226’s Markush structure covered millions of compounds, and Example 51 (a methyl-substituted quinazoline) was not the closest prior art. Instead, they highlighted EP’851’s compound (6,7-dimethoxy-4-(5-indolylamino)-quinazoline) with a superior IC50 value (1 nM) as the starting point for a skilled person. The plaintiffs argued that substituting methyl with ethynyl required inventive ingenuity, not mere workshop improvement, and Cipla provided no evidence of motivation to make this substitution.

The plaintiffs cited cases like Daiichi Sankyo v. Matrix Laboratories (670 F. Supp. 2d 359, Fed. Cir. 2010) to explain IC50 values and Glaverbel v. British Coal Corporation (1995 RPC 255) for claim construction, emphasizing that external documents like US’221 should not limit IN’774’s scope. They also relied on Pfizer Inc. v. Ranbaxy (457 F.3d 1284, Fed. Cir. 2006) and Abbott v. Dey (287 F.3d 1097, Fed. Cir. 2002) to argue that subsequent patents (US’221) do not negate earlier claims.

Defendant’s Submissions

Cipla challenged IN’774’s validity, seeking revocation under Section 64 of the Patents Act on grounds of obviousness, lack of inventive step, and non-patentability under Section 3(d). They argued that IN’774 was a derivative of known quinazoline compounds, particularly those disclosed in EP’226, filed by Zeneca Ltd. in 1993. Cipla contended that Example 51 of EP’226, a methyl-substituted quinazoline, was the closest prior art, and replacing methyl with ethynyl to arrive at Erlotinib was obvious to a person skilled in the art. They supported this with Prof. Ashwini Nangia’s affidavit (DW-3), which cited five patents (EP 0477700, US 4138590, US 5427766, US 5736534, WO 93/04047) demonstrating the interchangeability of methyl and ethynyl substituents.

Cipla argued that IN’774 lacked inventive step, as quinazoline derivatives were known for anti-cancer properties, and EP’226 provided sufficient motivation to experiment with substitutions. They referenced C.W. Thornber’s article on bio-isosterism (Ex. D-4) to support the predictability of such substitutions. Cipla also alleged that IN’774 was a derivative of Gefitinib (AstraZeneca’s drug), which was denied a patent in India for being in the public domain, accusing Roche of “evergreening” to extend patent monopolies.

On infringement, Cipla asserted that Erlocip was Polymorph B of Erlotinib Hydrochloride, distinct from IN’774’s mixture of Polymorphs A and B. They relied on US’221’s specification, which described Polymorph B as more stable and suitable for tablets, and Ms. Shashikala Kanathala’s XRD analysis (DW-2) confirming that Tarceva and Erlocip were Polymorph B. Since Roche’s application for Polymorph B (IN’507) was rejected, Cipla argued that manufacturing Polymorph B did not infringe IN’774. They cited the rejection order under Section 3(d) to argue that Polymorph B was not patentable without enhanced efficacy.

Cipla also raised public interest concerns, noting that Tarceva cost ₹4,800 per tablet, while Erlocip was priced at ₹1,600, making it more accessible for cancer patients. They argued that granting an injunction would harm public access to affordable drugs, citing the need to balance patent rights with public welfare.

Cipla referenced cases like Merck (applying Catnic principles to chemical compounds) and EPO Board of Appeal decisions (Ex. DW4/40-42) to support their interpretation of prior art and obviousness. They also relied on Sudhir Engineering Company vs. Nitco Roadways Ltd. (1995 (34) DRJ 86) to argue that public documents could be considered despite marking objections.

Detailed Discussion on Judgments Cited by Parties

Both parties relied on several precedents to support their arguments, each applied in specific contexts: 

Daiichi Sankyo v. Matrix Laboratories (670 F. Supp. 2d 359, Fed. Cir. 2010): Cited by the plaintiffs to explain IC50 values as a measure of drug potency. The case clarified that lower IC50 values indicate higher potency, supporting the plaintiffs’ argument that EP’851’s compound (IC50 of 1 nM) was the most potent prior art, not EP’226’s Example 51.

Glaverbel v. British Coal Corporation (1995 RPC 255): Cited by the plaintiffs for claim construction principles, emphasizing that courts should interpret patent claims purposively without relying on external documents like US’221 to limit IN’774’s scope. The court in Glaverbel held that specifications should be read in context, which the plaintiffs argued supported a broad interpretation of IN’774.

Pfizer Inc. v. Ranbaxy (457 F.3d 1284, Fed. Cir. 2006): Cited by the plaintiffs to argue that subsequent patents (US’221) do not negate the validity or scope of earlier patents (IN’774). The case involved a challenge to a patent’s validity, where the court upheld the earlier patent’s claims, supporting Roche’s position.

Abbott v. Dey (287 F.3d 1097, Fed. Cir. 2002): Cited by the plaintiffs to reinforce that subsequent developments or patents do not limit the scope of an earlier patent. The case dealt with claim construction, aligning with the plaintiffs’ reliance on Catnic principles.

Catnic Components Ltd. v. Hill & Smith Ltd. ([1982] RPC 183): Referenced by both parties, particularly by the plaintiffs, for purposive claim construction. The House of Lords in Catnic established that patent claims should be interpreted to cover variants that achieve the same result in substantially the same way. The plaintiffs argued that Polymorph B was a variant within IN’774’s scope, while the court applied Catnic to conclude that IN’774 did not intend to cover Polymorph B.

Sudhir Engineering Company vs. Nitco Roadways Ltd. (1995 (34) DRJ 86): Cited by Cipla to address objections to document marking. The Delhi High Court held that public documents could be considered despite procedural objections, supporting Cipla’s reliance on patent specifications and Controller’s orders.

EPO Board of Appeal Decisions (T 424/86, T 133/84, T 145/84, dated 1984-1986): Cited by Cipla (Ex. DW4/40-42) to support their obviousness argument. These decisions discussed prior art and the predictability of chemical substitutions, aligning with Cipla’s claim that methyl-to-ethynyl substitution was obvious based on EP’226.

Patent Validity:The court examined Cipla’s counterclaim for revocation, which alleged obviousness, lack of inventive step, and non-patentability under Section 3(d). Cipla argued that IN’774 was obvious based on EP’226’s Example 51, supported by Prof. Nangia’s testimony and prior art patents demonstrating methyl-ethynyl interchangeability. The plaintiffs countered that EP’851’s compound was the closest prior art due to its superior IC50 value, and the substitution required inventive ingenuity.

The court found that Cipla failed to discharge its onus to prove obviousness. It noted that EP’226’s Markush structure encompassed millions of compounds, and selecting Example 51 as the starting point was not sufficiently motivated. The court accepted the plaintiffs’ argument that a skilled person would prioritize EP’851’s compound, and Cipla’s evidence did not establish why ethynyl substitution was an obvious “workshop result.” The court also rejected Cipla’s bio-isosterism argument, finding insufficient evidence of a predictable outcome. Thus, IN’774 was upheld as valid.

Infringement:The court’s analysis of infringement was central to the judgment. The plaintiffs argued that Erlocip contained Erlotinib Hydrochloride, infringing IN’774, and that Polymorph B was covered by the patent’s claims. Cipla contended that Erlocip was Polymorph B, distinct from IN’774’s mixture of Polymorphs A and B, and that the rejection of IN’507 permitted its manufacture.

Applying the Catnic approach, the court construed IN’774’s claims purposively to determine whether Polymorph B was intended to be covered. The court found that Roche’s separate patent applications for Polymorph B (US’221 and IN’507) indicated an intent to treat it as a distinct invention. US’221’s specification revealed that IN’774’s compound was a mixture of Polymorphs A and B, while Polymorph B was more stable and suitable for tablets. The court noted Roche’s failure to disclose US’221 or IN’507 in the suit, suggesting non-disclosure of Polymorph B’s relevance.

The court emphasized that the plaintiffs bore the onus to prove infringement by showing that Polymorph B was subsumed within IN’774’s claims. However, Roche provided no positive evidence to clarify the role of reactants in US’221 or demonstrate that Polymorph B’s properties were inconsequential. The court rejected the plaintiffs’ reliance on Dr. Thatcher’s testimony, finding it insufficient to address how reactants affected the compound’s stability or dosage.

Cipla’s evidence, particularly Ms. Shashikala’s XRD analysis (Ex. DW2/3-4), confirmed that both Tarceva and Erlocip were Polymorph B, aligning with US’221’s specifications. The court found that Roche’s non-denial of marketing Polymorph B and failure to clinically examine Erlocip undermined their case. The rejection of IN’507 under Section 3(d) further supported Cipla’s position, as Polymorph B was not patented in India.

The court also addressed the plaintiffs’ “fiction” argument under Section 3(d), which considers polymorphs as the same substance unless differing in efficacy. The court held that Section 3(d) creates a limited consideration for patentability, not a deeming fiction for infringement purposes. Extending the fiction beyond Section 3(d)’s scope was impermissible, and the plaintiffs’ failure to prove infringement independently was fatal.

Effect of US’221: The court found that Cipla discharged its onus to prove that US’221 indicated IN’774’s compound was a mixture of Polymorphs A and B, requiring conversion to Polymorph B for stability. The court relied on US’221’s specification and Cipla’s XRD evidence, noting that Roche’s separate patent applications for Polymorph B contradicted their claim that it was covered by IN’774. The court rejected the plaintiffs’ argument that US’221 only taught conversion, not separation, finding that the need for additional steps to achieve Polymorph B distinguished it from IN’774.

Injunction and Relief:Given the finding of non-infringement, the court held that Roche was not entitled to a permanent injunction or damages. The plaintiffs’ prayer focused on Tarceva, which was Polymorph B, not strictly IN’774’s compound, further weakening their case.

Public Interest: The court briefly addressed public interest, noting Cipla’s argument about Erlocip’s affordability (₹1,600 vs. ₹4,800 for Tarceva). However, since non-infringement was established, public interest did not influence the outcome.

Final Decision:The Delhi High Court dismissed both the suit (CS(OS) No. 89/2008) and Cipla’s counterclaim (C.C. No. 52/2008). The court held that Cipla’s Erlocip did not infringe IN’774, as it was Polymorph B, not covered by the patent’s claims. The court upheld IN’774’s validity, finding that Cipla failed to prove obviousness or grounds for revocation. No costs were awarded.

Law Settled in This Case:

This case clarified several aspects of Indian patent law: Purposive Claim Construction: The Catnic approach applies to chemical patents, requiring courts to interpret claims to determine the inventor’s intent, especially when variants like polymorphs are involved.

Section 3(d) Interpretation: The explanation to Section 3(d) considers polymorphs as the same substance for patentability unless they significantly differ in efficacy, but this does not create a deeming fiction for infringement purposes.

Burden of Proof in Infringement: Plaintiffs must provide positive evidence to prove that a defendant’s product falls within the patent’s claims, particularly when variants are involved. Non-disclosure of relevant patents (e.g., US’221) can weaken the plaintiff’s case.

Polymorphic Forms: Separate patent applications for polymorphic forms suggest an intent to treat them as distinct inventions, impacting infringement analysis.

Public Documents: Courts can consider public documents like patent specifications despite procedural objections, as per Sudhir Engineering.

Case Title: F. Hoffmann-La Roche Ltd. & Anr. Vs. Cipla Ltd.

Date of Order: September 7, 2012

Case No.: CS(OS) No. 89/2008

Name of Court: High Court of Delhi, New Delhi

Name of Judge: Hon’ble Mr. Justice Manmohan Singh

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

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