Ustad Faiyaz Wasifuddin Dagar Vs A.R. Rahman

Introduction: The case of Ustad Faiyaz Wasifuddin Dagar versus A.R. Rahman and others, adjudicated by the High Court of Delhi, represents a significant exploration of copyright law in the context of Hindustani classical music. This legal battle centers on the alleged infringement of a Dhrupad composition, "Shiva Stuti," by the song "Veera Raja Veera" in the film Ponniyin Selvan - 2. The plaintiff, a torchbearer of the Dagarvani Gharana, sought recognition of the moral and copyright rights of the Junior Dagar Brothers, claiming their original work was unlawfully used. This case study delves into the intricate details of the dispute, analyzing the factual background, procedural developments, legal issues, arguments, judicial reasoning, and the final decision, while highlighting the broader implications for copyright protection in traditional music.

Detailed Factual Background: Ustad Faiyaz Wasifuddin Dagar, the plaintiff, is a distinguished Dhrupad vocalist and a scion of the Dagarvani Gharana, a lineage spanning 20 generations of Hindustani classical musicians. He is the son of Late Ustad N. Faiyazuddin Dagar and nephew of Late Ustad Zahiruddin Dagar, collectively known as the Junior Dagar Brothers. The suit composition, "Shiva Stuti," is a Dhrupad piece composed in Raga Adana and Sultaal (a 10-beat rhythmic cycle), paying homage to Lord Shiva. The plaintiff asserts that this composition, created by the Junior Dagar Brothers in the 1970s, is an original work entitled to copyright protection. It was performed internationally, notably at the Royal Tropical Institute in Amsterdam in 1978, and later featured in the album Shiva Mahadeva by the Dagar Brothers, released by PAN Records.

The defendants include A.R. Rahman (Defendant No. 1), a globally acclaimed music composer who scored the music for Ponniyin Selvan - 2 (PS-2), where the impugned song "Veera Raja Veera" appears. Madras Talkies (Defendant No. 2) and Lyca Productions Private Limited (Defendant No. 3) are co-producers of the film, directed by Mani Ratnam. Tips Industries Limited (Defendant No. 4) holds the rights to the film’s audio and audio-visual content. Defendants No. 5 and 6, Shivam Bharadwaj and Arman Ali Dehlvi, are singers of the impugned song and former disciples of the plaintiff. The plaintiff alleges that Defendants No. 5 and 6 shared "Shiva Stuti" with A.R. Rahman without authorization, leading to its incorporation into "Veera Raja Veera."

The controversy surfaced when the audio of "Veera Raja Veera" was released on March 28, 2023, followed by its audio-visual version on YouTube on April 8, 2023. The song was credited as a "Composition based on a Dagarvani Tradition Dhrupad," but initially omitted specific reference to "Shiva Stuti" or the Junior Dagar Brothers. The plaintiff, upon discovering this, contacted A.R. Rahman on April 13, 2023, alleging infringement of the moral and copyright rights in "Shiva Stuti." Despite assurances from Rahman, no resolution was reached, prompting a legal notice on April 20, 2023. Madras Talkies responded on April 24, 2023, denying the plaintiff’s claims. The film PS-2 was released in theaters on April 28, 2023, and subsequently on Amazon Prime, intensifying the dispute. The plaintiff filed the suit seeking injunctions and recognition of the Junior Dagar Brothers’ authorship, alongside an interim application (I.A. 21148/2023) for immediate relief.

Detailed Procedural Background: The suit, registered as CS(COMM) 773/2023, was first listed before the High Court of Delhi on October 20, 2023. The court issued summons to the defendants and notice in the interim application, I.A. 21148/2023. During this hearing, the plaintiff’s counsel, relying on a notation chart, argued that while the lyrics of "Veera Raja Veera" differed, its taal and musical composition mirrored "Shiva Stuti" in Raga Adana. The court played both compositions in open court and issued ad-interim directions, requiring A.R. Rahman to produce the raw recording of "Veera Raja Veera" and correct a typographical error in the YouTube credits (from "Dargavani" to "Dagarvani") within 48 hours.

On November 10, 2023, the court rejected an intervention application by Pandit Abhishek Kumar Mishra, deeming it irrelevant to the dispute. On March 5, 2024, the court proposed expediting the suit’s final adjudication with limited witness evidence, subject to a monetary deposit, but the parties did not agree, and the interim application proceedings continued. The court permitted the parties to submit audio and audio-visual recordings of the compositions and related works. Extensive hearings followed, with arguments concluding on February 6, 2025. The judgment, reserved on that date, was pronounced on April 25, 2025, addressing the interim relief sought by the plaintiff.

Issues Involved in the Case: The court framed three primary issues for consideration in the interim application:  Originality of the Suit Composition: Whether "Shiva Stuti" is an original musical work of the Junior Dagar Brothers, entitled to copyright protection? Infringement by the Impugned Song: Whether "Veera Raja Veera" infringes the plaintiff’s copyright in "Shiva Stuti."?

Plaintiff’s Submissions: The plaintiff emphasized the Dagarvani Gharana’s legacy and the plaintiff’s credentials as a Padma Shri awardee. They argued that "Shiva Stuti," composed by the Junior Dagar Brothers in the 1970s, is an original work, as evidenced by its performance in Amsterdam and inclusion in the Shiva Mahadeva album. The plaintiff asserted that the composition’s unique arrangement of swaras (notes) in Raga Adana, combined with its taal and syncopation, distinguished it as a protectable musical work under Section 2(p) of the Copyright Act, 1957.

The plaintiff contended that "Veera Raja Veera" replicated the musical structure of "Shiva Stuti," particularly in its asthayi (main section), as demonstrated by a notation chart comparing the two works. While acknowledging that Raga Adana and the Dagarvani style are not copyrightable, the plaintiff argued that the specific arrangement of notes, their dragging, and transitions between Aroha and Avroha constituted original expression. The plaintiff cited Ram Sampath v. Rajesh Roshan (2008 SCC OnLine Bom 370) to argue that even copying a small but vital part of a composition constitutes infringement, and Sulamangalam R. Jayalakshmi v. Meta Musicals (2000 SCC OnLine Mad 381) to emphasize protection against unauthorized use.

The plaintiff further alleged that Defendants No. 5 and 6, as his disciples, shared "Shiva Stuti" with A.R. Rahman without permission, and Rahman’s acknowledgment of Dagarvani inspiration was insufficient without crediting the Junior Dagar Brothers. The plaintiff sought interim relief, including a mandatory injunction to remove the infringing portion, a monetary deposit, or proper credit acknowledgment, arguing that ongoing dissemination of the song on various platforms necessitated urgent protection of moral and copyright rights.

Defendants’ Submissions A.R. Rahman’s counsel argued that the plaintiff failed to prove the originality of "Shiva Stuti." He contended that Dhrupad, rooted in the Samaveda and governed by strict compositional rules, leaves minimal room for copyrightable elements. The suit composition, being in Raga Adana, adhered to traditional patterns, and the plaintiff did not specify which elements were original. Sibal cited Raga Parichay by Harishchandra Shrivastava to show that the swaras in "Shiva Stuti" were standard to Raga Adana, also appearing in other ragas like Darbari Kanada and Jaunpuri, and in Amir Khusro’s 13th-century composition "Yaar-e-man Biya Biya."

The defendants argued that "Shiva Stuti" was a traditional composition, as evidenced by similar renditions by other artists, including the Gundecha Brothers and Pandit Uday Bhawalkar, none of whom were covered by the plaintiff’s alleged family settlement. They challenged the plaintiff’s shifting stance on ownership, from sole owner to co-owner, and the lack of evidence supporting the Junior Dagar Brothers’ authorship. On infringement, the defendants asserted that "Veera Raja Veera" was an original work blending Western and Indian musical elements, distinct from "Shiva Stuti." They relied on Marcus Gray v. Katheryn Elizabeth Hudson (28 F.4th 87, 9th Cir. 2022) to argue that commonplace musical elements are not copyrightable, and Apple Computer Inc. v. Microsoft Corporation (35 F.3d 1435, 9th Cir. 1994) and R.G. Anand v. Delux Films ((1978) 4 SCC 118) to caution against monopolizing traditional music.

The defendants distinguished the plaintiff’s cited cases, noting that in Sulamangalam R. Jayalakshmi, the defendant used the plaintiff’s photographs, and in Ram Sampath, the plaintiff’s authorship was undisputed and supported by expert evidence, unlike the present case. They argued that granting relief would stifle creativity in Hindustani and Carnatic music, and the plaintiff’s delay in filing the suit after the film’s release weakened the case for interim relief.

Other Defendants’ Submissions: Counsel for Defendants No. 2 and 3  expressed willingness for amicable resolution but maintained that the composition was provided by A.R. Rahman, and they relied on his assertions of originality. Defendant No. 4 (Tips Industries) echoed the lack of originality in "Shiva Stuti," arguing that the Dagarvani style was not copyrightable. Defendants No. 5 and 6, the singers, did not make distinct submissions, but their role as the plaintiff’s disciples was noted as facilitating access to the suit composition.

Intervenor’s Submission:  The intervenor, Pandit Abhishek Kumar Mishra, sought to assist the court but was denied intervention, as the suit was not a public interest litigation. The court permitted written submissions on legal issues, though these did not significantly influence the judgment.

The parties relied on several judicial precedents to bolster their arguments, each applied in specific contexts:

Ram Sampath v. Rajesh Roshan (2008 SCC OnLine Bom 370): Cited by the plaintiff, this Bombay High Court decision addressed the infringement of a musical work where a six-second portion was copied and repeated multiple times. The court held that copying a small but essential part, the “catch part” or “hook,” constitutes actionable infringement, emphasizing that “what is worth copying is worth protecting.” The plaintiff used this to argue that the core of "Shiva Stuti" was replicated in "Veera Raja Veera." The defendants distinguished it, noting that the plaintiff’s authorship was undisputed in Ram Sampath, and expert evidence supported the claim, unlike the present case.

Sulamangalam R. Jayalakshmi v. Meta Musicals (2000 SCC OnLine Mad 381): The plaintiff cited this Madras High Court case, where the defendant’s unauthorized use of the plaintiff’s musical work and photographs was restrained. The court protected the plaintiff’s rights, reinforcing copyright in musical works. The plaintiff argued that similar protection applied to "Shiva Stuti." The defendants countered that the case involved clear misuse (version recording and photographs), unlike the present dispute over a composition’s originality.

Marcus Gray v. Katheryn Elizabeth Hudson (28 F.4th 87, 9th Cir. 2022): Cited by the defendants, this U.S. Ninth Circuit case applied the “scène à faire” doctrine, holding that commonplace musical elements (e.g., basic note sequences) are not copyrightable. The defendants used this to argue that "Shiva Stuti"’s swaras were standard to Raga Adana, precluding copyright. The court, however, found this less applicable, noting differences between Western and Indian classical music composition.

Apple Computer Inc. v. Microsoft Corporation (35 F.3d 1435, 9th Cir. 1994): The defendants cited this U.S. case to caution against granting copyright monopolies over common elements, arguing that protecting "Shiva Stuti" would restrict creativity in Dhrupad music. The court acknowledged the principle but prioritized the specific arrangement’s originality.

R.G. Anand v. Delux Films ((1978) 4 SCC 118): This Supreme Court of India case, cited by the defendants, established that copyright protects original expression, not ideas or common themes. The defendants argued that "Shiva Stuti" lacked originality due to its reliance on traditional Dhrupad structures. The court, however, focused on the unique arrangement of swaras as protectable expression.

Suresh Jindal v. Rizsoli Corriere Della Sera Prodzioni T.V. Spa (1991 Supp (2) SCC 3): Cited by the court (not the parties), this Supreme Court case recognized the importance of crediting creative contributions, granting interim relief for acknowledgment despite the film’s foreign exhibition. The court applied this to justify directing credit for the Junior Dagar Brothers.

Neha Bhasin v. Anand Raaj Anand ((2006) 132 DLT 196): Referenced by the court, this Delhi High Court case upheld a singer’s right to be credited as the lead female singer, relying on Suresh Jindal. It supported the plaintiff’s claim for moral rights recognition.

Fox Star Studios v. Aparna Bhat (2020 SCC OnLine Del 36): Cited by the court, this Delhi High Court case granted interim relief for crediting a plaintiff’s contribution to a film, emphasizing moral rights. It reinforced the court’s decision to mandate acknowledgment.

Francis Day and Hunter Ltd v. Bron ((1963) Ch 587): Cited by the court, this UK case established that the “ear, not eye” is the primary judge in music copyright disputes, prioritizing aural impact for lay listeners. It guided the court’s infringement analysis.

Bridgeport Music, Inc. v. Dimension Films (410 F.3d 792, 6th Cir. 2005): Cited by the court, this U.S. case held that even a brief sample (e.g., three notes) can infringe if identifiable, supporting the finding that "Veera Raja Veera"’s similarity to "Shiva Stuti" constituted infringement.

Trek Leasing, Inc. v. United States (66 Fed. Cl. 8, 2005): Cited by the court, this U.S. case noted that using a work as a model or inspiration indicates copying, bolstering the finding that Rahman’s acknowledgment of Dagarvani inspiration suggested reliance on "Shiva Stuti."

Detailed Reasoning and Analysis of Judge: This judgment meticulously analyzed the issues, balancing the nuances of Indian classical music with copyright law principles. The court first addressed the originality of "Shiva Stuti." Recognizing the challenges of applying copyright to Indian classical music, the court noted that Dhrupad’s strict rules limit creative freedom compared to genres like Thumri. However, it held that the specific arrangement of swaras, their dragging, and transitions between Aroha and Avroha in "Shiva Stuti" constituted original expression. The court found prima facie evidence of the Junior Dagar Brothers’ authorship, supported by the 1978 Amsterdam performance and the Shiva Mahadeva album. The plaintiff’s claim of copyright transfer via an oral family settlement was deemed credible at the interim stage.

On infringement, the court rejected the defendants’ argument that similarities arose from Raga Adana’s discipline, noting that "Veera Raja Veera" was not based on Raga Adana but incorporated Western music elements. The court applied the tests of “comprehensive non-literal similarity” and “fragmented literal similarity,” finding that the asthayi of "Veera Raja Veera" was identical to "Shiva Stuti" in swaras, bhava (emotion), and aural impact. The notation chart and the defendants’ own comparison with Amir Khusro’s composition inadvertently highlighted this identity. The court emphasized the “ear, not eye” principle from Francis Day v. Bron, holding that a lay listener would perceive the works as similar, satisfying the infringement test from Ram Sampath and Bridgeport Music.

The court distinguished foreign precedents like Marcus Gray, noting that Hindustani classical music’s aural effect, rather than written notes, determines similarity. The deliberate selection of "Shiva Stuti" by Rahman, facilitated by the plaintiff’s disciples, further supported the finding of copying. The court dismissed the defendants’ reliance on other artists’ renditions, as these were authorized performances by Dagarvani disciples, not commercial exploitations challenging the plaintiff’s copyright.

Regarding relief, the court considered the film’s release and widespread dissemination, finding that restraining the song would disrupt an acclaimed production. Instead, it prioritized moral rights, drawing on Suresh Jindal, Neha Bhasin, and Fox Star Studios. The court held that crediting the Junior Dagar Brothers was a just remedy, as monetary damages could not compensate for the loss of recognition. The balance of convenience favored the plaintiff, as delayed acknowledgment would render the relief infructuous, causing irreparable harm to the original composers’ legacy.

Final Decision:  The court allowed the interim application (I.A. 21148/2023) with the following directions:  On all OTT and online platforms, the credit slide for "Veera Raja Veera" must be updated from “Composition based on a Dagarvani Tradition Dhrupad” to “Composition based on Shiva Stuti by Late Ustad N. Faiyazuddin Dagar and Late Ustad Zahiruddin Dagar.”  Defendants No. 1 to 3 (A.R. Rahman, Madras Talkies, and Lyca Productions) must deposit Rs. 2 crores in a Fixed Deposit with the Registrar General, subject to the suit’s final outcome.  Costs of Rs. 2 lakhs were awarded to the plaintiff, payable by Defendants No. 1 to 3 within four weeks.  The court clarified that these findings would not bind the suit’s final adjudication.

Law Settled in This Case:  This case establishes several key principles in Indian copyright law, particularly for classical music:

Originality in Traditional Music: Specific arrangements of swaras, even within the constraints of a raga, can constitute original musical works eligible for copyright protection, provided they reflect unique creative expression.Infringement Test for Music: The “ear, not eye” principle governs infringement in musical works, prioritizing aural similarity for lay listeners over technical note comparisons. Even a small but vital part of a composition, if copied, constitutes infringement.Moral Rights Recognition: Moral rights, including the right to paternity, are enforceable through interim relief, such as mandatory credit acknowledgment, especially when monetary damages are inadequate.

Case Title: Ustad Faiyaz Wasifuddin Dagar Vs A.R. Rahman: Date of Order: 25 April, 2025: Case No.: CS(COMM) 773/2023: Neutral Citation: 2025:DHC:2907: Court: High Court of Delhi: Judge: Hon'ble Ms. Justice Prathiba M. 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

Levi Strauss & Co. Vs. Rajesh Agarwal

Introduction: Decided by the High Court of Delhi on January 3, 2018, this case addresses critical issues of trademark infringement, passing off, and the evidentiary value of a Local Commissioner's report. The dispute centers around the unauthorized use of the globally renowned "LEVI'S" trademark by a small-scale merchant in Hyderabad, highlighting the tension between established brand owners and local traders. This case study delves into the factual and procedural intricacies, the legal issues at play, the arguments presented, the judicial reasoning, and the broader implications of the decision for trademark law in India.

Detailed Factual Background:  Levi Strauss & Co., a globally recognized apparel company, has been using the "LEVI'S" and "LEVI STRAUSS" trademarks since 1850, particularly for its iconic jeans. The company is the registered proprietor of these trademarks in India, with registrations in Class 25 for apparel, as evidenced by trademark registration numbers 352692, 382357B, 290954, 350738, 317649B, and 270875B. The plaintiff claimed that its brand is synonymous with quality and enjoys significant goodwill, supported by substantial sales and advertising expenditures, including over Rs. 25 crores in sales and Rs. 4.7 crores in advertising in India in the year prior to the suit's filing in 2001.

The defendant, Rajesh Agarwal, operated a small retail shop in Hyderabad, where he was found selling apparel bearing logos and devices identical to those of Levi Strauss. The plaintiff alleged that these products infringed their registered trademarks and constituted passing off by misleading consumers into believing they were purchasing genuine Levi's products. The infringing goods were discovered during an inspection by a court-appointed Local Commissioner, who seized 57 pairs of jeans bearing the infringing marks. The defendant's actions prompted Levi Strauss to file a suit for permanent injunction, damages, and other reliefs to protect its intellectual property rights.

Detailed Procedural Background: The suit was initially filed in 2001 before the original side of the Delhi High Court, seeking a permanent injunction to restrain trademark infringement, copyright violation, and passing off. On October 3, 2001, the court granted an ex-parte ad-interim injunction in favor of Levi Strauss and appointed a Local Commissioner to inspect the defendant's premises in Hyderabad. The Commissioner conducted the inspection on October 6, 2001, and filed a detailed report on October 12, 2001, confirming the presence of infringing goods. The seized items were handed over to the defendant on superdari.

The defendant initially appeared in the suit and filed a written statement but subsequently stopped participating, leading to ex-parte proceedings against him on two occasions. Due to an increase in the pecuniary jurisdiction of the district courts, the case was transferred to the Additional District Judge, who dismissed the suit on November 28, 2006. The trial court cited two primary reasons for dismissal: the plaintiff's failure to examine the Local Commissioner as a witness and the absence of evidence showing an assignment of trademarks to Levi's Strauss India Pvt. Ltd., the plaintiff's Indian affiliate.

Aggrieved by the dismissal, Levi Strauss filed an appeal (RFA 127/2007) before the Delhi High Court. The respondent could not be served despite repeated attempts, leading the court to order service by publication in the Indian Express, Hyderabad edition, on May 28, 2007. The publication was completed, but the respondent did not appear. The appeal was admitted on October 23, 2007, and the interim injunction from 2001 was continued. The matter was finally heard on January 3, 2018, with no appearance from the respondent.

Issues Involved in the Case:  The case presented several critical legal issues for adjudication: Whether the trial court erred in dismissing the suit on the ground that the Local Commissioner was not examined, despite the Commissioner's report being part of the record?

Appellant's Submissions:

Appellant argued that the trial court's dismissal was fundamentally flawed. On the issue of the Local Commissioner's report, they relied on Order 26 Rule 10(2) of the Code of Civil Procedure (CPC), which stipulates that a Commissioner's report and the evidence collected form part of the suit's record and are admissible without the Commissioner's examination. They cited two judgments to bolster this position: Misrilal Ramratan & Ors. v. A.S. Shaik Fathimal & Ors. (1995 Supp (4) SCC 600) and Harbhajan Singh v. Smt. Shakuntala Devi Sharma & Anr. (AIR 1976 Delhi 175). These cases establish that a Commissioner's report cannot be rejected merely because the Commissioner was not examined, especially when no party challenges its contents.

Regarding the assignment issue, the appellant contended that Levi Strauss & Co., as the registered proprietor of the trademarks, was not required to assign its marks to its Indian subsidiary. The plaintiff and its affiliates, including Levi's Strauss India Pvt. Ltd., operated as a single economic entity, a concept supported by the Delhi High Court's decision in George V. Records, SARL v. Kiran Jogani & Anr. (2004 (28) PTC 347 (Del)). The counsel emphasized that the trademarks were owned by Levi Strauss globally, and their use by affiliates under license or permission did not necessitate a formal assignment. Evidence of sales (over Rs. 25 crores) and advertising (Rs. 4.7 crores) in India, certified by a Chartered Accountant (Exhibit PW1/4), and advertisements in prominent magazines like Filmfare and Elle (Exhibits PW1/6) demonstrated the extensive use and reputation of the marks in India.  The appellant further argued that the Local Commissioner's report, which documented 57 pairs of jeans with infringing marks, conclusively proved infringement and passing off. The scanned copies of the infringing labels showed identical copying of the plaintiff's trademarks, violating their proprietary rights and misleading consumers.

Detailed Discussion on Judgments Cited by Parties and Their Context:  The appellant relied on three key judgments to support their arguments, each addressing specific aspects of the case:

Misrilal Ramratan & Ors. v. A.S. Shaik Fathimal & Ors. (1995 Supp (4) SCC 600): This Supreme Court decision was cited to argue that a Local Commissioner's report is part of the suit's record and cannot be rejected merely because the Commissioner was not examined. The court held that the report is admissible evidence, and non-examination is not a valid ground for dismissal unless a party raises specific objections. In the context of this case, the judgment was directly relevant, as the respondent did not challenge the Commissioner's report, and the trial court's insistence on examination was erroneous.

Harbhajan Singh v. Smt. Shakuntala Devi Sharma & Anr. (AIR 1976 Delhi 175): This Delhi High Court ruling reinforced the principle that a Commissioner's report is evidence under Order 26 Rule 10(2) of the CPC. The court clarified that examination of the Commissioner is not mandatory unless required for clarification or challenged by a party. The appellant used this precedent to argue that the trial court's dismissal for non-examination was contrary to established law, given the respondent's reliance on the report without objection.

George V. Records, SARL v. Kiran Jogani & Anr. (2004 (28) PTC 347 (Del)): This Delhi High Court decision was pivotal in addressing the assignment issue. The court recognized the concept of a "single economic entity," where a parent company and its subsidiaries or affiliates are treated as one for trademark protection purposes. The appellant argued that Levi Strauss & Co., as the registered proprietor, did not need to assign its marks to its Indian subsidiary, as the subsidiary's use was under the parent's authority. This precedent supported the plaintiff's claim that their global business structure did not undermine their trademark rights in India.The respondent did not cite any specific judgments in his written statement, relying instead on factual assertions about his status as a petty merchant and the nature of the seized goods.

Detailed Reasoning and Analysis of Judge: The court delivered a comprehensive judgment that systematically addressed the trial court's errors and upheld the plaintiff's trademark rights. The reasoning focused on three main aspects: the evidentiary value of the Local Commissioner's report, the assignment issue, and the substantive issue of infringement and passing off.

Evidentiary Value of the Local Commissioner's Report:  The judge found the trial court's dismissal for non-examination of the Local Commissioner to be legally untenable. Citing Order 26 Rule 10(2) of the CPC, the court noted that a Commissioner's report and accompanying evidence are part of the suit's record and admissible without the Commissioner's testimony. The Supreme Court's ruling in Misrilal Ramratan clarified that rejecting a report for non-examination is a "specious plea" unless specific objections are raised. Similarly, the Delhi High Court's decision in Harbhajan Singh affirmed that examination is not compulsory, particularly when the report is unchallenged.

In this case, the respondent's written statement relied on the Commissioner's report to argue that no manufacturing unit existed and the goods were not for sale, without disputing the report's authenticity or contents. The judge emphasized that the respondent's failure to challenge the report obviated the need for examination. The Local Commissioner's detailed report, filed on October 12, 2001, documented 57 pairs of jeans with infringing marks, supported by scanned copies of the labels. The court held that the trial court's insistence on examination was erroneous and contrary to settled law.

Assignment and Single Economic Entity:  The trial court's second ground for dismissal—lack of evidence of assignment to Levi's Strauss India Pvt. Ltd.—was equally flawed. The judge accepted the appellant's argument that Levi Strauss & Co., as the registered proprietor of the trademarks, did not need to assign its marks to its Indian subsidiary. The court relied on the Delhi High Court's decision in George V. Records, which recognized that a parent company and its affiliates operate as a single economic entity for trademark purposes. The plaintiff provided evidence of trademark registrations (Exhibit PW1/9) in its name, confirming its proprietary rights.

The judge further noted that the sales and advertising figures (Exhibits PW1/4, PW1/5, PW1/6) submitted by the plaintiff, though pertaining to the Indian subsidiary, were relevant to establish the marksVestive use and reputation of the trademarks in India. The court held that requiring an assignment to the subsidiary was unnecessary, as the subsidiary's activities were under the plaintiff's authority. The concept of a single economic entity ensured that the plaintiff's global business structure did not prejudice its trademark rights, aligning with the fundamental purpose of trademarks as source identifiers.

Infringement and Passing Off:  The court found that the respondent's use of identical logos and labels constituted a "classic case of identical copying." The scanned copies of the infringing labels showed misuse of the plaintiff's name and accompanying devices, violating their registered trademarks and constituting passing off. The judge emphasized that the trust consumers place in a brand transcends the entities selling the products locally, reinforcing the need to protect trademarks as source identifiers.

Final Decision:  The High Court set aside the trial court's judgment dated November 28, 2006, and decreed the suit in favor of Levi Strauss. The plaintiff was granted a permanent injunction restraining the respondent from infringing the "LEVI'S" and "LEVI STRAUSS" trademarks, as prayed in clauses (i), (ii), and (iii) of the plaint. The appellant did not press the claim for damages. The court awarded costs of Rs. 14,750, comprising Rs. 7,400 in suit court fees and Rs. 7,350 in appeal court fees, reflecting the modest scale of the infringement (57 pairs of jeans). The appeal was allowed, and all miscellaneous applications were disposed of as infructuous.

Law Settled in This Case: This case settled several important principles in Indian trademark law:

A Local Commissioner's report is admissible evidence under Order 26 Rule 10(2) of the CPC and does not require the Commissioner's examination unless specifically challenged by a party.A parent company and its subsidiaries or affiliates are treated as a single economic entity for trademark protection, eliminating the need for formal assignments to local entities when the parent is the registered proprietor.The use of identical logos and labels constitutes trademark infringement and passing off, particularly when it misleads consumers about the source of the goods.

Case Title: Levi Strauss & Co. Vs. Rajesh Agarwal

Date of Order: January 3, 2018

Case No.: RFA 127/2007

Neutral Citation: 2018:DHC:34

Name of Court: High Court of Delhi

Name of Judge: Justice Prathiba M. 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

Agriboard International Vs Deputy Controller of Patents

Introduction: The case of Agriboard International LLC vs Deputy Controller of Patents and Designs, decided by the Delhi High Court on March 31, 2022, stands as a landmark in Indian patent law, highlighting the critical need for reasoned and transparent decision-making in the adjudication of patent applications. This appeal, filed under Section 117A of the Patents Act, 1970, challenged the Deputy Controller’s order rejecting the appellant’s patent application for an “Efficient Method and Apparatus for Producing Compressed Structural Fiberboard” on the grounds of lacking inventive step. The Delhi High Court’s decision to set aside the cryptic order and remand the matter for fresh consideration underscores the judiciary’s commitment to ensuring that patent offices adhere to principles of natural justice and provide detailed justifications for rejections. This case sets a robust precedent for the analytical rigor required in assessing inventive step, particularly in the context of technical advancements in industrial processes.

Detailed Factual Background:  Agriboard International LLC, a U.S.-based company, filed a patent application in India (No. 202014010848) on March 13, 2020, for an invention titled “Efficient Method and Apparatus for Producing Compressed Structural Fiberboard.” This application claimed priority from a U.S. patent application (No. 16/353,624) filed on March 14, 2019. The invention involved a method and apparatus for producing compressed structural fiberboard from agricultural fibrous matter, such as rice straw, using a novel extruder mechanism. The core innovation lay in the use of electric linear actuators to drive a cyclic ram, replacing conventional mechanical systems like drive flywheels and crankshafts, which offered greater control, energy efficiency, reduced maintenance, and enhanced safety.

The Indian Patent Office (IPO) issued a First Examination Report (FER) on July 21, 2020, raising objections on novelty under Section 2(1)(j) and inventive step under Section 2(1)(ja) of the Patents Act, 1970. The FER cited three prior art documents—D1 (US5945132A), D2 (US20090188642A1), and D3 (CN102026785B)—claiming that claims 1-15 were anticipated and obvious. D1, also filed by Agriboard Industries Inc. and granted in 1999, described a similar process for producing fiberboard but used a conventional mechanical extruder with a reciprocating ram driven by a connecting rod, crank, and flywheel.

Agriboard responded to the FER on February 21, 2021, distinguishing the invention from D1 by highlighting the shift from mechanical to electric linear actuators, which provided technical advantages. The response emphasized the invention’s specification, particularly paragraph 45, which detailed the linear actuators’ efficiency and control mechanisms. After a hearing and submission of written arguments on April 30, 2021, the Deputy Controller issued an order on June 16, 2021, rejecting the application under Section 2(1)(ja) for lack of inventive step, primarily relying on D1. The order also noted an unresolved objection regarding notarization of the power of attorney (PA).

Detailed Procedural Background: The procedural timeline began with the filing of the Indian patent application on March 13, 2020, following the U.S. priority application. The IPO’s examination process commenced upon Agriboard’s request, leading to the FER on July 21, 2020. Agriboard’s response on February 21, 2021, addressed the objections, and a hearing was held, followed by written submissions on April 30, 2021. The Deputy Controller’s rejection order on June 16, 2021, prompted Agriboard to file an appeal under Section 117A(2) of the Patents Act, registered as C.A. (COMM. IPD-PAT) 4/2022, before the Delhi High Court.

Agriboard also filed an application (I.A. 161/2022) to condone a 100-day delay in filing the appeal, which was granted based on the Supreme Court’s order in Suo Moto Writ Petition (C) No. 3 of 2020, extending limitation periods due to the COVID-19 pandemic. The appeal was heard by Justice Prathiba M. Singh, with Agriboard represented by Mr. Vineet Rohilla, Mr. Rohit Rangi, and Mr. Debashish Banerjee, and the IPO by Mr. Harish V. Shankar, Central Government Standing Counsel, along with Ms. S. Bushara Kazim and Mr. Srish Kumar Mishra. The court delivered its oral judgment on March 31, 2022, with the corrected order released on April 4, 2022.

Issues Involved in the Case

The court addressed the following key issues in adjudicating the appeal: Whether the Deputy Controller’s order rejecting the patent application for lack of inventive step was sufficiently reasoned and compliant with principles of natural justice. Whether the Controller adequately considered Agriboard’s submissions distinguishing the invention from the prior art, particularly D1. Whether the shift from a mechanical to an electric linear actuator constituted a mere workshop modification or a patentable inventive step. Whether the impugned order’s reliance on D1, without addressing D2, D3, or the International Search Report (ISR), rendered it deficient. Whether the matter should be remanded for fresh consideration, and if so, what scope should be allowed for considering additional prior art.

Appellant’s (Agriboard’s) Submissions: Agriboard argued that the Deputy Controller’s order was cryptic and lacked reasoning, violating the principle of audi alteram partem. The order merely reproduced the FER’s objections on D1 without addressing Agriboard’s response, which distinguished the invention’s electric linear actuators from D1’s mechanical system. Referring to figure 9 and paragraph 45 of the specification, Agriboard emphasized that the invention’s extruder used linear actuators controlled by motion control software, offering superior efficiency, lower energy use, and reduced maintenance compared to D1’s flywheel-driven ram. The appellant contended that this represented a significant technical advance, not a routine modification.

Agriboard cited the U.S. Patent Office’s allowance of the priority application, which considered D1 and found the electric actuators non-obvious due to a “significant change in the operating principle of the ram.” The appellant relied on Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, (2010) 4 SCC 785, to argue that reasoned orders are essential for fairness. Agriboard urged the court to set aside the order and remand the matter, asserting that the Controller failed to analyze how D1 rendered the invention obvious to a person skilled in the art.

Respondent’s (IPO’s) Submissions: The IPO defended the rejection, arguing that the order’s reasoning, though brief, was sufficient, as it extracted D1’s relevant disclosures. The IPO contended that the shift from D1’s mechanical extruder to electric linear actuators was a “workshop modification,” lacking inventive step. The IPO noted that D1 was Agriboard’s own patent, granted in 1999 and set to expire in 2019, suggesting the new application was an attempt to extend the earlier patent’s term. The IPO cited US20100307349A1 to argue that electric linear actuators were widely used in pressing apparatuses over the 20-year period, rendering the invention obvious.

The IPO also highlighted the International Search Report (ISR) from the Patent Cooperation Treaty (PCT) Office, which found the claims lacking inventive step under Article 33(3). The IPO argued that the Controller’s conclusion was justified, and the court should not interfere with the technical assessment of obviousness.

Detailed Discussion on Judgments Cited by Parties: The parties, primarily Agriboard, relied on judicial precedents to frame their arguments:

Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, (2010) 4 SCC 785 (Supreme Court of India): Cited by Agriboard, this case emphasized that reasoned orders are integral to the principle of audi alteram partem. The Supreme Court held that authorities must provide a fair procedure, apply their mind, and dispose of matters with a speaking order, ensuring transparency. The Delhi High Court applied this principle, finding the Deputy Controller’s order deficient for lacking analysis of Agriboard’s response to D1.

Manohar v. State of Maharashtra & Ors., AIR 2013 SC 681 (Supreme Court of India): Referenced by the court in its analysis, this Supreme Court decision reiterated that application of mind and reasoned decision-making are core elements of natural justice. The court used this precedent to underscore the Patent Office’s obligation to provide detailed justifications when rejecting patent applications.

The IPO cited US20100307349A1 (a U.S. patent document, not a judgment)** to argue that electric linear actuators were common, but this was not considered in the impugned order, limiting its relevance. The ISR, while mentioned, was also not part of the Controller’s reasoning, and the court declined to opine on it or other uncited prior art (e.g., Sullivan et al., US6143220; Pittman et al., US8052842; DE102006004779 A1) referenced in the U.S. examiner’s analysis.

Detailed Reasoning and Analysis of Judge: The court examined the invention’s specification, particularly figure 1 (depicting the apparatus’s cells) and figure 9 (detailing the extruder’s linear actuators), alongside paragraph 45, which highlighted the technical advantages of electric linear actuators over D1’s mechanical system. The court noted that the actuators’ linear motion, controlled by software, reduced energy, maintenance, and safety risks, distinguishing the invention from D1’s flywheel-driven ram.

The court found the Deputy Controller’s order “completely lacking in reasoning,” as it merely reproduced the FER’s objections on D1 without engaging with Agriboard’s response. The order failed to discuss how D1’s disclosures rendered the invention obvious or why Agriboard’s distinctions were inadequate. The court emphasized that Section 2(1)(ja) defines “inventive step” as a feature involving technical advance or economic significance that is not obvious to a person skilled in the art. To reject an application, The Controller must analyze three elements: the prior art’s disclosure, the invention’s disclosure, and the obviousness to a skilled person. The absence of this analysis rendered the order arbitrary.

The court drew support from the U.S. Patent Office’s analysis, which found the electric actuators non-obvious over D1 due to a significant change in the ram’s operating principle. While not binding, this bolstered Agriboard’s claim of inventiveness. The court rejected the IPO’s argument that the shift to electric actuators was a workshop modification, noting that the Controller’s order lacked such reasoning and failed to consider the specification’s technical advancements.

Citing Shukla and Brothers and Manohar, the court underscored that reasoned orders are essential to ensure fairness, particularly in patent rejections affecting applicants’ rights. The court declined to opine on D2, D3, or the ISR, as they were not addressed in the impugned order, but permitted the IPO to consider these upon remand. The court clarified that its observations on D1 were not binding on the Controller, ensuring a fresh and unbiased reconsideration.

Final Decision: The Delhi High Court allowed the appeal (C.A. (COMM. IPD-PAT) 4/2022), setting aside the Deputy Controller’s order dated June 16, 2021, and remanding the matter to the Indian Patent Office for fresh consideration within four months. The IPO was permitted to consider D1, other prior art (D2, D3), and the ISR, ensuring a comprehensive evaluation. 

Law Settled in This Case: This case established several pivotal principles in Indian patent law, particularly for inventive step assessments:

Requirement of Reasoned Orders: Patent rejections, especially for lack of inventive step, must be supported by a speaking order analyzing the prior art, the invention, and the obviousness to a person skilled in the art, as mandated by Section 2(1)(ja) and natural justice principles. 

Three-Element Analysis for Inventive Step: Controllers must evaluate the prior art’s disclosure, the invention’s features, and the reasoning for obviousness, unless the lack of inventiveness is patently clear. 

Engagement with Applicant’s Submissions: The Patent Office must address applicants’ responses to prior art objections to ensure procedural fairness and avoid arbitrary decisions. Scope of Remand: Courts may remand matters for fresh consideration, allowing the IPO to consider additional prior art not addressed in the original order, while ensuring impartiality. 

Judicial Oversight: Courts will intervene when patent rejections lack reasoning, reinforcing transparency and accountability in intellectual property administration.

Case Title: Agriboard International LLC Vs Deputy Controller of Patents and Designs

Date of Order: March 31, 2022

Case No.: C.A. (COMM. IPD-PAT) 4/2022

Neutral Citation: 2022 SCC OnLine Del 940

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Prathiba M. 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

Hulm Entertainment Pvt Ltd Vs SBM Gaming Network Private Limited

This case involves Hulm Entertainment Pvt Ltd challenging an order by the Delhi High Court that refused to consider their application for an interim injunction against SBM Gaming Network Private Limited. 

Hulm Entertainment desired to prevent SBM Gaming from engaging in certain gaming activities that Hulm claimed infringed upon its rights, and sought immediate relief before SBM could respond to the allegations. 

The key issue revolved around whether the court could grant an ex parte or ad interim injunction without providing the opposing party a prior opportunity to be heard.

The Delhi High Court observed that, according to the ruling in Dabur India Ltd. v. Emami Ltd., courts should generally avoid granting ad interim or ex parte relief if the defendant has not been given a chance to respond, especially when the defendant’s product or activity has been in the market for some time. 

The Court cited Dabur India to emphasize the importance of fairness and the necessity of recording reasons before granting such relief, advocating for providing parties with a preliminary opportunity to oppose the injunction unless exceptional circumstances justify otherwise.

The Court analyzed whether the principles outlined in Dabur India restrict courts from granting urgent relief when circumstances demand it. The Court clarified that Dabur India does not prohibit such relief, provided that the circumstances justify it. 

It emphasized that the main focus should be on whether the case warrants immediate action and whether the applicant has established sufficient grounds for urgent relief, rather than rigidly following a rule that prior notice is always necessary.

Ultimately, the Court remanded the matter back to the single judge to reconsider the application for interim relief after ensuring that the principles of fairness and adequate opportunity to respond were maintained. The Court cautioned that grant or denial of such relief should be made based on the facts and merits of the case, balancing the interests of the parties and the public.

Hulm Entertainment Pvt Ltd Vs SBM Gaming Network Private Limited
Date of Order: October 11, 2023
Case No.: FAO (COMM) 209/202
Judge: Hon'ble Justice Yashwant Varma and Hon'ble Justice Dharmesh Sharma

Sulphur Mills Limited Vs Dharmaj Crop Guard Limited

This case involves a patent infringement dispute between Sulphur Mills Limited (Plaintiff) and Dharmaj Crop Guard Limited (Defendant) before the Delhi High Court. Sulphur Mills Limited filed a suit claiming that the Defendant was infringing on its patent related to a sulphur-based formulation. 

The proceedings encompass multiple procedural steps including the filing of written statements, counterclaims, and interim relief applications. 

The Defendant initially sought condonation of delay in filing its written statement, which the Court condoned, allowing the case to proceed smoothly. The Court directed the parties to submit affidavits, file counterclaims, and undertake undertakings related to the withdrawal of opposition filings before the Patent Office.

Important aspects was this Defendant was not allowed to pursue post grant notice of opposition and cointer claim simultaneously. The Defendant's counter claim was entertained subject to withdrawal of post grant notice of opposition. 

Case Title: Sulphur Mills Limited Vs Dharmaj Crop Guard Limited

Date of Order: December 20, 2018

Case Number: CS (COMM) 1225/2018

Court Name: Delhi High Court

Judge Name: Justice Prathiba M. Singh

Goethe Institute Vs Abhishek Yadav

Introduction and Background

The case involves the Goethe-Institut, known for promoting German culture and language worldwide, which has been operating in India since 1957 under the name MAX MUELLER BHAVAN. The institute is a well-established entity with a significant presence in India and globally, offering German language courses, examinations, and cultural programs. It has built a strong reputation and brand recognition, not only through its official name but also via the trademark MAX MUELLER/BHAVAN. The institute's name has become synonymous with quality German language education in the country, and it claims extensive use of the mark over several decades.

In recent times, the plaintiff alleges that the defendants, including Abhishek Yadav, have adopted similar marks such as MAX MUELLER, MAX MUELLER INSTITUTE, and other related identifiers. The defendants are said to have started using these marks around 2018, including operating a website called maxmuellerinstitute.com. The plaintiff contends that such use is likely to cause confusion among the public and constitutes infringement and passing off of its well-established mark, thereby risking its brand integrity and causing potential damage to its reputation and goodwill.

Legal Dispute

The core legal issue is whether the defendants' use of marks similar to the plaintiff’s MAX MUELLER/BHAVAN infringes upon its prior rights and constitutes passing off under Indian trademark law. The plaintiff asserts that it has developed exclusive rights through continuous and extensive use since 1957, establishing a strong reputation and associating these marks exclusively with its institute.

The plaintiff seeks an interim injunction to restrain the defendants from using the impugned marks or any similar marks that could cause confusion. The injunction aims to prevent any further dilution of its trademarks and protect its business interests. The application for injunction was filed under relevant provisions of the Civil Procedure Code, seeking urgent relief until the case is fully decided.

Court’s Findings

The court observed that the plaintiff had established prior and continuous use of the marks MAX MUELLER and MAX MUELLER BHAVAN since 1957, and that these marks are well-recognized and associated exclusively with the plaintiff’s institute. The court recognized that the name "MAX MUELLER" had acquired distinctiveness and goodwill over the years through consistent use and branding.

It further noted that the defendant's adoption of similar marks and a website bearing the same name could likely lead to confusion among consumers, especially given the common practice of searching online for the institute’s services.

Conclusion and Orders

Accordingly, the court granted the interim injunction restraining the defendants from using the marks MAX MUELLER, MAX MUELLER INSTITUTE, or any similar marks that could cause confusion with the plaintiff’s established marks.

Goethe Institute Vs Abhishek Yadav/06.05.2025:CS(COMM) 541/2024/2025:DHC:3337/Mini Pushkarna

Trodat GMBH & Anr. Vs. Addprint India Enterprises

Introduction This case involves a legal dispute between Trodat GMBH, a leading global manufacturer of stamps under the brand "Trodat," and Addprint India Enterprises. Trodat filed a suit alleging that Addprint’s "KVIK" branded rubber stamps infringed upon Trodat’s registered designs "FLASHY 6330" and "FLASHY 6903," which protect the unique shape, layout, and appearance of their stamp products.

Background and Registration of Designs Trodat’s products under the "FLASHY" brand were designed in Austria around 2015 and launched in India in 2017. Their designs are registered under the Indian Designs Act, with registration numbers 272348 and 272349. The plaintiffs claimed that their designs were distinctive, innovative, and had acquired goodwill in the market. The defendant, Addprint, entered the Indian market with stamps under the "KVIK" brand, which Trodat alleged were copies of their protected designs.

Initial Court Order and Injunction On 28 October 2022, the court granted an ex-parte ad interim injunction against Addprint, restraining them from manufacturing and selling rubber stamps that were identical or deceptively similar to Trodat’s registered designs. The court observed that the overall look, layout, color schemes, and feel of the products appeared almost identical, justifying the injunction. The injunction also allowed the defendant to sell existing stock after reporting the inventory.

Dispute Over the New Design Following the injunction, the defendant developed an alternative design and proposed it to Trodat during the court-mandated mediation process. However, Trodat rejected the proposed design, asserting that it too was similar enough to infringe their registered rights. The defendant argued that their new design was sufficiently different, claiming a bonafide effort to avoid infringement.

Court Proceedings and Analysis The court’s analysis involved comparing the plaintiffs’ registered designs with the defendant’s proposed products. The court emphasized that protection revolves around the overall impression of the design, and that designs which are deceptively similar would infringe upon the registered rights, even if certain features are changed. The court referred to legal principles and previous judgments to assess whether the new proposed design fell within the scope of the existing injunction.

Defendant’s Argument and Court’s View The defendant claimed they had pioneered the "box-type" stamp design in India back in 1999, decades before Trodat’s registration, and that they had registered several similar designs. They contended that their new design was a bona fide effort to create a distinct product, and that prior use and registration of similar designs by third parties diluted Trodat’s claims. Conversely, Trodat insisted that their designs were original, registered rights, and that the defendant’s new design still mirrored the protected elements too closely.

Current Status and Court’s Direction The court noted that the design in question was retained under the injunction, and that the defendant was not permitted to launch the proposed design unless it was found to be non-infringing. The court also indicated that the dispute over the new design was ongoing, and further examination was required to determine whether it infringed Trodat’s registered rights.

Conclusion This case highlights the complexities of design rights enforcement, especially with evolving product designs and prior art. The court’s primary concern was whether the defendant’s new product design was sufficiently different from the registered designs to avoid infringement, considering the overall visual impression, prior art, and the scope of the existing injunction. The decision underscored the importance of protecting the distinctive visual features that elements of product design confer under the law.

Case Title: Trodat GMBH & Anr. Vs. Addprint India Enterprises Pvt. Ltd. Date of Order: 6 May 2025 Case No.: CS(COMM) 737/2022 Neutral Citation: 2025:DHC:3336: High Court of Delhi Judge: Hon’ble Justice Mini Pushkarna

Sana Herbal Pvt. Ltd. Vs Dehlvi Ambar Herbals Pvt. Ltd.

This case before the Delhi High Court involves Sana Herbal Pvt. Ltd. as the appellant and Dehlvi Ambar Herbals Pvt. Ltd. as the respondent. The core issue revolves around the appellant's request for an ex parte ad interim injunction to prevent the respondent from continuing certain market activities, which the appellant claimed were infringing upon its rights. The learned District Judge (Commercial Court-01) refused to grant this injunction on the grounds that the respondent was already established in the market, potentially making the injunction unnecessary or ineffective. The appellant challenged this order by filing an appeal before the High Court, which scrutinized the appropriateness of the refusal.

The Court observed that the respondent's existing market presence could not be the sole basis for denying an injunction, referencing an earlier Division Bench ruling in Hulm Entertainment Pvt Ltd v SBN Gaming Network Pvt Ltd. The Court did not delve deeply into the merits of the case but directed both parties to prepare and submit written arguments within ten days and to appear before the Commercial Court on 22 May 2025 for further hearing.

Ultimately, the High Court disposed of the appeal with directions to the Commercial Court to finalize and decide on the application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (CPC) as expeditiously as possible. The case emphasizes the importance of timely legal proceedings for protection of rights in commercial disputes involving herbal product companies.

Case title: Sana Herbal Pvt. Ltd. Vs Dehlvi Ambar Herbals Pvt. Ltd. Date of order: 1 May 2025 Case No.: FAO (COMM) 104/2025 Neutral Citation: 2025:DHC:3304:DB: Court: Delhi High Court Judge: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Arddy Engineering Innovations Vs Heraeus Technologies

Introduction and Background

This case involves a criminal revision petition filed by Arddy Engineering Innovations Pvt. Ltd. challenging the initiation of criminal proceedings against it by Heraeus Technologies Indian Pvt. Ltd. The core issue revolves around allegations of trademark infringement, counterfeiting, cheating, and violations of court orders related to the trademark ‘Hydris,’ a product used for measuring the hydrogen levels in liquid steel, crucial for railway safety and defense purposes.

Dispute and Allegations

Heraeus Technologies owned the exclusive rights to the ‘Hydris’ trademark and technical know-how. Arddy Engineering, previously authorized as a distributor under a distributorship agreement, allegedly manufactured and supplied counterfeit hydrogen sensors branded ‘Hydris’ even after the termination of the distributorship agreement on 24th October 2013. Heraeus accused Arddy of developing a product called ‘Hysen’ with identical markings and falsely representing it as genuine ‘Hydris.’ The counterfeit products were allegedly supplied to Indian Railways and steel factories, posing significant safety risks and causing financial and reputational damage to Heraeus.

Court Proceedings and Legal Contentions

The criminal case was initiated based on a complaint lodged by Heraeus, which also involved an inquiry under section 202 of the Criminal Procedure Code (CrPC). The magistrate issued process against Arddy after being satisfied of credible grounds, based on police reports and documents indicating that counterfeit products were manufactured and supplied with the intent to deceive customers and infringe upon Heraeus’s trademarks.

Arddy contended that the proceedings should be quashed, claiming that the complaint lacked sufficient grounds, that the allegations were civil disputes mischaracterized as criminal matters, and that the magistrate did not properly apply judicial mind before issuing process. They argued that the civil injunction order restraining them from using the ‘Hydris’ mark was still in force, emphasizing contradictions in the plaintiff’s stance in civil and criminal courts, as well as reliance on precedents suggesting that criminal proceedings should not be initiated without proper prima facie evidence.

Court’s Analysis

The court examined whether the complaint disclosed an offense under relevant sections of the Indian Penal Code, including cheating, criminal breach of trust, and forgery. It noted that the complaint, along with police reports, laid down factual foundations for criminal liability, including specific allegations of counterfeit manufacturing, misappropriation, and deliberate deception. The court stated that at this stage, the court was required to consider whether there was a prima facie case, not to determine the guilt or innocence.

Regarding Arddy’s argument that the magistrate failed to apply judicial mind, the court observed that orders issuing process under section 204 of CrPC do not necessarily require a formal detailed order, provided that the magistrate was satisfied after due inquiry. The inquiry under section 202, which included police investigations and reports, was deemed sufficient to satisfy this requirement.

The court also considered arguments on whether contradictory pleadings in civil and criminal proceedings could justify quashing the criminal case. It concluded that the complaint’s allegations were detailed enough to show a prima facie offense, especially given the specific role assigned to the accused, including counterfeiting and fraudulent representation, and that the civil injunction did not prevent criminal proceedings.

Decision and Conclusion

The court dismissed the petition, ruling that the initiation of criminal proceedings was justified based on the available evidence and procedural compliance. It emphasized the importance of allowing the case to proceed to trial for a full factual adjudication. The court also urged the lower courts to expedite proceedings, recognizing the ongoing civil injunction and the seriousness of the allegations. In conclusion, the court rejected Arddy’s plea to quash the criminal case, asserting that the process was initiated in accordance with law, with sufficient grounds for the case to be tried on merit.

Arddy Engineering Innovations Vs Heraeus Technologies/16th April 2025/CRR 4690 of 2022/High Court at Calcutta/Ajoy Kumar Mukherjee

Capital Ventures Pvt Ltd Vs Registrar of Trade Marks

This case involves the appellant, Capital Ventures Pvt Ltd, challenging the refusal of their trademark applications for the word "PARLIAMENT" and related "PARLIAMENT-formative" marks by the Registrar of Trade Marks. The appellant had been using these marks extensively since 2013 and had obtained several registrations, claiming genuine use and reputation associated with the marks. The Registrar, however, refused registration under Sections 9(1)(a) and 9(2)(d) of the Trade Marks Act, mainly on the grounds that the word "PARLIAMENT" is a common generic term used to refer to legislative bodies, specifically the Indian Parliament, and is protected under the Emblems and Names Act, which prohibits registration of certain names or emblems that may cause deception or misrepresentation.

The appellant contended that their use was bona fide, and registration granted earlier had established their rights. They further argued that the term "PARLIAMENT" has been used extensively in commerce and should not be denied registration solely because it is a common term or because some prior registrations exist. The respondent, the Registrar, maintained that the word "PARLIAMENT" is a public and legislative term, and registration of such marks could create undue monopoly over a term that describes a legislative institution, which is contrary to statutory provisions and public policy.

A significant aspect of the case involved the legal interpretation of Sections 9(2)(d) and 9(1)(a) of the Act, along with the applicability of the Emblems and Names Act. The Court examined whether existing registrations of similar marks by third parties were lawful or in violation of the law, and whether the Registrar had the authority to cancel or expunge any registrations that were improperly granted.

Throughout the proceedings, the appellant kept asserting their rights based on prior use and registration, while the respondent highlighted the statutory prohibitions on registering such common and public property terms. The proceedings also addressed procedural issues following the abolition of the Intellectual Property Appellate Board (IPAB), with the case now being heard directly by the High Court under the new tribunals framework.

In its final order, the Court observed that registration of marks containing the word "PARLIAMENT" is not absolutely prohibited but is subject to compliance with legal provisions, especially the restrictions under the Emblems and Names Act. The Court allowed the appeals, directed the respondent to process the applications according to law, and set aside the earlier refusals, emphasizing the need for careful consideration of the legal restrictions and prior rights.

Capital Ventures Pvt Ltd Vs Registrar of Trade Marks/29th April 2025/C.A.(COMM.IPD-TM) 5/2022/2025:DHC:3311/Mr. Justice Amit Bansal

Boon Rawd Brewery Co Ltd. Vs Yunnan Xiangkeng

This case involves the Thai brewery Boon Rawd Brewery Co Ltd. (petitioner), renowned for its iconic SINGHA beer, challenging the registration of a device mark by Yunnan Xiangkeng Trading Co. Ltd. (respondent) in India. The petition was filed under Sections 47 and 57 of the Trade Marks Act, seeking the cancellation of the respondent's mark registered in class 32, which covers beer and similar goods. The petitioner’s longstanding use and extensive international registration of the SINGHA trademarks, along with its reputation and goodwill built since 1933, form the basis of its claim. The petitioner alleges that the respondent's mark, which closely copies the lion device and the word SINGHA, is deceptively similar and intended to cause confusion among consumers, infringing on the petitioner’s rights.

The petitioner asserted that the respondent’s registration was obtained dishonestly, in bad faith, and in violation of statutory provisions, especially given the respondent's prior infringement of the petitioner’s trademarks in other jurisdictions. The petition highlighted that the respondent’s adoption of the mark with an intent to trade upon the petitioner’s goodwill and reputation constituted an act of bad faith and statutory infringement. The petitioner also emphasized that the respondent had not filed any reply or appeared in court despite repeated notices, which was deemed an admission of the claims.

The court noted that the respondent’s mark was almost identical to the petitioner’s registered trademarks, which had achieved significant goodwill in India. It observed that the respondent's registration was granted erroneously by the trademark registry without recognizing the prior rights of the petitioner. Moreover, the court pointed out that the respondent’s failure to contest the petition and the similarity of the marks strengthened the case against the respondent’s registration.

After examining the evidence, including the similarities of the marks and the reputation of the SINGHA brand, the court concluded that the respondent’s registration was in violation of the provisions of the Trade Marks Act. The court further held that the registration was made in bad faith and that the respondent’s use of the mark was likely to deceive and cause confusion among ordinary consumers, who associate the SINGHA mark exclusively with the petitioner.The final order directed the registry to remove the impugned mark from the register within four weeks. 

Case Title: Boon Rawd Brewery Co Ltd. Vs Yunnan Xiangkeng Trading Co. Ltd. Date of Order: May 1, 2025 Case No.: C.O. (COMM.IPD-TM) 25/2025 Neutral Citation: 2025: DHC:3334 Name of Court: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Amit Bansal

BMI Group Denmark APS Vs The Assistant Controller of Patents

This case pertains to a legal appeal filed by BMI Group Denmark (formerly Icopal Danmark APS) against the refusal of their patent application by the Indian Patent Office. The patent application was for a multilayer sealing web designed for structures such as roofs, cladding, tanks, and cellars. The application was refused primarily on the grounds of lacking inventive step, as per the objections raised by the Controller of Patents during the examination process.

The Indian Patent Office and its Controller had cited multiple prior art references, specifically D1 to D4, which allegedly represented existing technologies that the invention could be obvious in light of. The patent office interpreted the claims as comprising a carrier insert made solely of a glass nonwoven and a separate glass reinforcement of knitted fabric, and concluded that the invention did not involve an inventive step over the cited prior art. Consequently, the Controller rejected the application under Section 2(1)(ja) of the Patents Act, 1970, stating that the claims lacked novelty and inventive step.

The applicant challenged this rejection by filing an appeal before the High Court of Delhi. The appellant's legal team argued that the patent examiner and the Controller had misinterpreted the invention, particularly concerning the combination of the carrier insert features. They asserted that the invention was innovative, as it combined a glass nonwoven with a knitted fabric reinforcement in a manner that was not obvious from the cited prior art. Further, the appellant contended that the patent office had improperly segmented the features of the invention, failing to appreciate the claimed combination as a whole, which imparted unique properties like cost-effectiveness, low shrinkage, and high dimensional stability.

The appellant also challenged the patent office's reliance on prior art D2, which related to decorative textile fabrics, arguing that it was non-analogous and irrelevant for establishing obviousness against the sealing web invention. They emphasized adherence to legal principles that mosaic of prior art can only be used when references are analogous, and this was not proven in the present case.

The court examined the detailed technical features of the invention, particularly focusing on the specific claim that the carrier insert must contain both a glass non woven and a knitted fabric reinforcement – a combination that the patent office reportedly did not recognize properly. The court found that the Controller had failed to consider the invention as a whole and had not adequately demonstrated how the prior art rendered the invention obvious. The court therefore allowed the appeal, setting aside the order of the patent office, and directed the authorities to proceed with the grant of patent.

Case Title: BMI Group Denmark APS Vs The Assistant Controller of Patents and Designs Date of Order: April 23, 2025 Case No.: C.A.(COMM.IPD-PAT) 7/2024 Neutral Citation: 2025:DHC:3174 Court Name: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Amit Bansal

Blackberry Limited Vs Assistant Controller of Patent

Introduction Blackberry Limited filed a patent application in India for a method and system related to signaling release cause indication in a UMTS network. The application was examined by the Indian Patent Office, which raised several objections, including issues of novelty, inventive step, clarity, and amendments to the claims.

Proceedings and Objections The Patent Office issued a First Examination Report highlighting objections under Sections 2(1)(j), 3(k), 3(m), 8, 10(4)(c), and 10(5) of the Patents Act. Blackberry responded with detailed amendments and written submissions aiming to overcome those objections. Subsequently, the Controller conducted hearings but rejected the amendments, citing non-compliance with Sections 57 and 59 of the Act. The Controller’s order was cryptic, failing to analyze whether the amendments were within the scope of these sections.

Legal Contentions and Court’s Analysis Blackberry argued that their amendments were in the nature of corrections or explanations supported by the original specification, and therefore, should have been allowed. They relied on legal precedents emphasizing that amendments should be supported by the specification and within the scope of the relevant sections. The Court noted that the Controller’s rejection lacked adequate reasoning and did not consider whether the amendments were permissible under Sections 57 and 59. The Court observed that decisions on patent amendments must be reasoned and based on application of mind, as mandated by judicial precedents.

Order and Remand The Court set aside the Controller’s order due to this lack of reasoning and remanded the matter back for de novo consideration. It directed the Controller to afford a fresh opportunity for hearing, including a detailed examination of the proposed amendments in light of applicable legal provisions. 

Case Details Case Title: Blackberry Limited Vs Assistant Controller of Patent Date of Order: 23 April 2025 Case Number: C.A.(COMM.IPD-PAT) 125/2022 Neutral Citation:2025:DHC:3100 High Court of Delhi Judge: Hon’ble Mr. Justice Amit Bansal

Abhi Traders Vs Fashnear Technologies

Introduction Abhi Traders, a business engaged in designing and selling ethnic clothing under the trademark "Ibrana," filed a lawsuit against Fashnear Technologies Private Limited and other related defendants. The core issues revolve around copyright infringement and passing off, as Abhi Traders alleged that the defendants were unlawfully reproducing and using their copyrighted photographs to promote counterfeit products online.

Background and Allegations Abhi Traders owned copyrights over specific photographs used for advertising and promoting their products. These images were custom-created to showcase their designs, which contributed to their brand identity and success. The company claimed that the defendants, operating through an online platform managed by Fashnear Technologies (notably the platform 'Meesho'), had used identical or substantially similar photographs without authorization to sell counterfeit items, thereby infringing on Abhi Traders’ copyright rights and passing off their goods as genuine.

Repeated attempts were made by the plaintiff to resolve the matter amicably by approaching the platform provider, but the defendants continued their infringing activities. The plaintiff sought legal intervention to prevent ongoing infringement and misuse of their intellectual property.

Legal Proceedings The court noted that the defendants failed to appear or file any written statements after being served, resulting in their cases being deemed admitted under the procedural rules. The plaintiff presented photographic evidence demonstrating the resemblance between their original images and those used by the defendants. The court acknowledged that the long and continuous use of these photographs had established an inherent copyright ownership for the plaintiff in the relevant images.

The court found sufficient evidence to establish a prima facie case of copyright infringement and passing off, noting that the defendants had substantially reproduced the copyrighted images and misled consumers about the origin and authenticity of the products. An ad interim injunction was granted early on, restraining the defendants from showcasing, reproducing, or publishing the infringing images or products. The defendants' failure to contest or appear further supported the grant of a final decree.

Final Judgment and Relief The court ultimately passed a decree of permanent injunction in favor of Abhi Traders, restraining the defendants from infringing their copyright and passing off their products under the plaintiff’s well-known mark. The court also dismissed the other reliefs sought by the plaintiff and ordered that the decree sheet be prepared accordingly. All pending applications were disposed of, and the case was concluded in favor of the plaintiff.

Case Title: Abhi Traders Vs Fashnear Technologies Pvt. Ltd. Date of Order: 28th April, 2025 Case No.: CS(COMM) 180/2024 Neutral Citation: 2025:DHC:3280 Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal

Nirmal Kushwaha Vs Kailashnath Agarwal

A pivotal aspect in the case was the nature of possession—whether it was as a lessee or licensee. The courts underscored that the legal character of possession depends strictly on pleadings—what the parties explicitly claim and establish in their pleadings. The respondent asserted that the appellant was a licensee; the appellant claimed co-tenancy or lease rights. The courts emphasized that the settled legal principle constrains courts to determine the nature of possession based purely on the pleadings, not by making a fresh case or expanding beyond what was pleaded.

Legal Principles and Court's Rationale The court reiterated that no argument beyond the pleadings can be considered. The position is that the courts are bound by the claims and contentions made by the parties in their pleadings. In this case, the respondent's pleadings clearly characterized the appellant's position as that of a licensee. The appellant's assertion of co-tenant rights was deemed beyond the pleadings, and the court could not venture to decide on a different stance—that she was a tenant—without pleadings to support such a claim.

The court observed that the distinction between a lease and license is fine but crucial. Here, the evidence showed that the appellant was allowed exclusive possession, and her use of the shop was continuous and formalized under a license agreement, not a lease, especially since rent and other lease conditions were not conclusively established.

The court further noted that the initial pleadings reflected the license arrangement, and subsequent assertions could not alter that legal position. The courts stress that the factual and legal basis for such cases must be limited to the pleadings, and any decision beyond that would amount to a breach of the principle that 'no argument beyond pleadings is permissible.'

Conclusion In the final analysis, the court held that the proper way to determine the nature of the occupation was based solely on the pleadings. Since the pleadings made it clear that the appellant's possession was as a licensee, the court reaffirmed her status as such. Consequently, the appeal was dismissed, and the eviction order based on the license was upheld. The case underscores the importance of pleadings in thrashing out legal issues related to possession and the prohibition against courts making judgments on arguments or facts not pleaded.

Case Details Case Title: Lady Dr. Nirmal Kushwaha vs Kailashnath Agarwal And Ors. Date of Order: 14 February 2002 Case Number: Not explicitly mentioned in the provided pages but identifiable as part of the cited order. Neutral Citation: 2002(2)AWC1189; AIR 2003 (NOC) 553 (ALL); 2003 ALL L. J. 1630; 2003 A I H C 3109 Court: Allahabad High Court Judge: B.K. Rathi

Bansi Dhar Bajaj Vs Bajaj Biscuit Products

The case involves a legal dispute over the registration and use of the trademark "BAJAJ" in relation to biscuits and confectionary goods. The appellant, Bansi Dhar Bajaj, and his company, Bajaj Biscuit Products, opposed the respondent's application to register the same mark for similar products in certain Indian states. The appellant claimed that they had been using the mark since 1983 and had established significant goodwill and reputation in the market, which would be harmed by the respondent’s registration and use of an identical or similar mark. They argued that the respondent’s application for registration, filed in 1984, should be rejected due to the likelihood of confusion and deception among consumers.

The respondent contended that they honestly and bonafidely adopted the "BAJAJ" mark in 1981, knowing that no such mark was in use or registered for similar goods. They claimed that the word "Bajaj" is a surname of all partners involved and that their use was legitimate and prior to the appellant’s. Additionally, the respondent argued that the appellant had only begun using the mark a few years later and that the respondent's use was genuine. They also pointed out that the appellant's use of the letter "R" with the mark was an error, further complicating their claim to exclusivity.

The Deputy Registrar of Trade Marks considered the evidence, including bills and documents submitted by both parties, as well as the dates of use, to determine prior adoption and use of the mark. The Registrar found that the respondent had been using the mark earlier than the appellant and thus had rights to register it. The Registrar dismissed the opposition filed by the appellant and allowed the respondent’s application for registration.

The appellant challenged this decision in the High Court of Delhi, which also upheld the Registrar’s ruling, affirming that the respondent was entitled to register the mark based on prior use. The Court noted that both parties’ marks were identical and that the goods in question were of the same description, increasing the potential for confusion. Nonetheless, the court considered the evidence and concluded that the respondent had established prior and honest adoption of the trade mark "BAJAJ," thereby rejecting the appellant’s opposition.

This affirmation of the registration rights of the respondent was based on the evidence of use, the date of adoption, and the absence of deliberate deception. The court emphasized that even minimal evidence of use could establish rights over unregistered marks if shown to be prior and genuine. The case reaffirmed the principles that prior user can gain superior rights against an earlier application, provided the use is honest and continuous.

In conclusion, the court dismissed the appeal of Bansi Dhar Bajaj, rendering the registration of the "BAJAJ" mark in favor of the respondent for biscuits and related goods. The decision reinforced the importance of proof of prior use and the honest intent behind trade mark adoption in trade mark law.

Case Title: Bansi Dhar Bajaj vs Bajaj Biscuit Products And Ors. Date of Order: 05 February 2004 Case Number: TA/78/2003/TM/DEL Neutral Citation: (2004) 28 PTC 680 (IPAB) Court: Intellectual Property Appellate Board, Chennai Judge: S. Jagadeesan, J.

Royal Challengers Sports Vs. Uber India Systems

Introduction

The case involves Royal Challengers Sports Private Limited (the plaintiff) and Uber India Systems Private Limited along with its associates (the defendants). The dispute centers around a social media advertisement posted by Uber that the plaintiff claims disparages and infringes upon its well-known trademark "Royal Challengers Bengaluru" (RCB), associated with its IPL cricket team.

Background

The plaintiff is the registered owner of the RCB trademark and has built a significant reputation around it in India. The defendants, a ride-hailing company and its affiliates, posted an advertisement on various social media platforms collaborating with an Australian cricketer, featuring a promotional campaign that included references to the RCB team. The advertisement used the phrase "Royally Challenged Bengaluru," which the plaintiff contends is derogatory and damaging to its brand.

Legal Contentions

The plaintiff argued that the advertisement not only infringes upon their registered trademark under Section 29(4) of the Trade Marks Act but also disparages their reputation. It claimed that the depiction and language used are demeaning, designed to mock or devalue the brand. The plaintiff sought a temporary injunction to restrain the defendants from broadcasting, publishing, or further disseminating this advertisement, asserting that they would suffer irreparable harm if the ad remained.

The defendants contended that the advertisement was a humorous, light-hearted parody or tease based on city names ("Hyderabad" and "Bengaluru") and did not intend or cause any trademark infringement or disparagement. They claimed the ad was a form of satire common in sporting culture and did not harm the reputation of the RCB team.

Court's Analysis

The court examined whether the advertisement constituted infringing use of the RCB trademark and if it caused disparagement. It considered the likelihood of confusion, the intent behind the advertisement, and whether the depiction was derogatory or merely humorous. The court noted that while the ad featured references to the RCB team, the overall tone and context pointed towards playful teasing rather than malicious intent.

Furthermore, the court balanced the rights of the plaintiff against the freedom of expression and the nature of the advertisement as part of sports-related humor. It acknowledged that the advertisement was in the context of a cricket game, where parody and teasing are customary. Considering the absence of clear evidence of irreparable harm or direct infringement sufficient to justify injunction, the court decided that temporarily restraining the advertisement was not warranted at this stage.

Conclusion

The court dismissed the application for a temporary injunction, stating that there was no prima facie case of trademark infringement or disparagement strong enough to outweigh the public interest and the rights of the defendants to free expression. The court emphasized that interference at this preliminary stage would be premature and could unduly restrict the defendants' freedom to create humor and satire related to cricket.

Case Significance

This case highlights the tension between trademark rights and freedom of speech in the context of sports and advertising. It underscores that parody, satire, and humor, especially related to popular culture, may have a protective space under freedom of expression, provided they do not cross into actual infringement or defamatory disparagement.

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Case Details

Case Title: Royal Challengers Sports Private Limited Vs. Uber India Systems Private Limited Order Date: May 5, 2025 Case No.: CS (COMM) 345/2025 Neutral Citation: 2025:DHC:3292. Court: Delhi High Court Judge: Hon’ble Mr. Justice Saurabh Banerjee

Maheshbhai Hajibhai Sojitra Vs. Babu Lime Private Limited

This case involves a legal dispute between Maheshbhai Hajibhai Sojitra, proprietor of Siddhi Lime, and Babu Lime Private Limited. The matter pertains to a civil revision application filed by Maheshbhai challenging the lower court’s order that rejected an application under Order VII Rule 11 of the Civil Procedure Code (CPC). The rejection was based on the contention that the suit filed by Maheshbhai was not within the jurisdiction of the proper court due to valuation issues and the nature of the dispute falling under the exclusive jurisdiction of a Commercial Court.

The main issue in this revision was whether the Civil Court could have rejected the plaint on the grounds of undervaluation or jurisdiction under Order VII Rule 11, especially considering that the suit involved matters of trademark infringement, passing off, and copyright infringement. Maheshbhai argued that the dispute was purely commercial and fell within the jurisdiction of the Commercial Court, which the defendant contended was not the case due to undervaluation and other technicalities. The lower court had rejected Maheshbhai’s application, leading to his filing of this revision.

The High Court, after hearing the arguments and reviewing the case records, found that the rejection of the plaint under Order VII Rule 11 was not justified. The Court observed that such a drastic step could only be taken if the suit discloses no cause of action and is barred by law, which was not established in this case. The Court emphasized that under Order VII Rule 11, the Court’s scope of inquiry is limited solely to the averments in the plaint and the valuation as per the plaintiff’s pleadings. It further noted that the valuation of the suit is to be based on the objection or the plaint itself, and any undertakings or subsequent assessments are of no consequence at this preliminary stage.

In conclusion, the High Court upheld the principle that applications under Order VII Rule 11 should only reject a plaint if the grounds are clearly and unambiguously established from the pleadings and valuation. The case was remanded, and the earlier order was corrected to reflect the proper legal citations and reasoning.

Case Title: Maheshbhai Hajibhai Sojitra Vs. Babu Lime Private Limited Date of Order: 05/05/2025 Case No.: R/CRA/447/2023 Neutral Citation: 2025:GUJHC:24876 Court: High Court of Gujarat, Ahmedabad Judge: Honourable Mr. Justice Sanjeev J. Thaker

P.V.S. Knittings Vs. P. Prakash

Background: P.V.S. Knittings, a registered partnership firm, initiated legal proceedings against P. Prakash, trading as  S P S TEX, alleging trademark infringement, copyright violation, and passing off. The dispute centered on the plaintiff's registered trademark "TWIN BIRDS" and the defendant's use of the trademark "FLY BIRDS" for apparel in Class 25. The plaintiff also sought rectification of the trademark register to cancel the defendant's trademark registration.

Plaintiff's Claims: P.V.S. Knittings claimed that their "TWIN BIRDS" trademark, used since 1969, was infringed by the defendant's "FLY BIRDS" mark, which was deceptively similar in name, design, and pink-and-white color scheme. The plaintiff argued that the defendant's actions constituted trademark infringement under the Trademarks Act, 1999, and copyright infringement under the Copyright Act, 1957, due to the substantial reproduction of their artistic label. Additionally, the plaintiff alleged passing off, asserting that the defendant's use of "FLY BIRDS" misled consumers and capitalized on the plaintiff's goodwill.

Defendant's Defense: P. Prakash contended that the "FLY BIRDS" mark was distinct and not deceptively similar to "TWIN BIRDS." The defendant argued that the term "birds" was common in the garment trade, citing numerous registered trademarks containing the word. They also claimed that the pink-and-white color scheme was standard for women’s apparel and not exclusive to the plaintiff. The defendant raised issues of delay, laches, and acquiescence, asserting that the plaintiff was aware of their trademark since its advertisement in 2019 but failed to act promptly.

Court’s Findings:The High Court of Judicature at Madras found that the plaintiff was the registered proprietor of multiple "TWIN BIRDS" trademarks and had used the mark since at least 2007, establishing prior use over the defendant’s 2017 use of "FLY BIRDS." The court determined that the two marks were deceptively similar due to their shared use of the word "birds," the two-bird device, and the pink-and-white color scheme, likely causing consumer confusion. The court rejected the defendant’s claim that "birds" was common to the trade, as evidence showed insufficient substantial use by others before the defendant’s application in 2016. The court also found the defendant’s adoption of the color scheme to be mala fide, given the similarities and the parties’ proximity in Tirupur.

Issues of Delay and Acquiescence: The court addressed the defendant’s argument of delay and acquiescence, noting that the plaintiff became aware of the defendant’s use in April 2022 and filed the suit in April 2023. Since less than five years had elapsed since the defendant’s trademark advertisement in 2019, acquiescence under Section 33 of the Trademarks Act was not established. The court held that any delay did not bar relief in an infringement and passing-off action.

Passing Off and Goodwill: The court concluded that the plaintiff established goodwill through evidence of substantial turnover and advertising from 1995 to 2022. The defendant’s use of "FLY BIRDS" was deemed a misrepresentation likely to cause loss to the plaintiff, satisfying the classic trinity test for passing off: reputation, misrepresentation, and damage.

Rectification Petition: In the rectification petition, the court found that the defendant’s trademark registration (No. 3237870) violated Section 11 of the Trademarks Act, as it was likely to cause confusion with the plaintiff’s prior mark. The registration was deemed to lack sufficient cause, warranting its cancellation.

Relief Granted:The court granted permanent injunctions against the defendant’s use of "FLY BIRDS," ordered the destruction of infringing materials, and directed the defendant to render an account of profits. To allow the defendant to liquidate existing inventory, the injunction was deferred for four months, subject to filing an affidavit detailing the inventory. The plaintiff was awarded costs of Rs. 5,00,000. The rectification petition was allowed, with the Registrar of Trade Marks directed to cancel the defendant’s trademark within 30 days.

Case Title: P.V.S. Knittings Vs. P. Prakash

Date of Order: 30 April 2025

Case No.: C.S. (Comm. Div.) No. 182 of 2023

Neutral Citation: 2025:MHC:1141

Name of Court: High Court of Madras

Name of Judge: Senthilkumar Ramamoorthy J.