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

Introduction: The case of PVS Knittings v. P. Prakash, adjudicated by the High Court of Judicature at Madras, is a significant trademark dispute involving allegations of infringement, passing off, and copyright violation. The plaintiff, M/s. P.V.S. Knittings, a registered partnership firm, sought to protect its registered trademark "TWIN BIRDS" against the defendant’s use of the allegedly deceptively similar mark "FLY BIRDS." The case also included a rectification petition to cancel the defendant’s trademark registration. The court’s decision addresses key issues of deceptive similarity, prior use, and the legal implications of delay and acquiescence, offering valuable insights into trademark law principles in India.

Detailed Factual Background: PVS Knittings, a partnership firm based in Tirupur, Tamil Nadu, has been engaged in manufacturing and marketing hosiery, ready-made garments, undergarments, and knitted apparel since its inception. The firm adopted the trademark "TWIN BIRDS" in 1969, claiming continuous use thereafter. The plaintiff secured multiple trademark registrations for "TWIN BIRDS" and its variants, including both word and device marks, under Class 25 (apparel) and other classes. These registrations, evidenced by legal use certificates, included a distinctive device mark featuring the words "TWIN BIRDS," a pictorial depiction of two birds, and a pink-and-white color scheme. The plaintiff also licensed the use of its trademarks to Network Clothing Company Private Limited, a registered user, which further expanded the mark’s market presence.

The defendant, P. Prakash, operating as M/s. S P S TEX, also based in Tirupur, adopted the trademark "FLY BIRDS" for apparel in Class 25. The defendant applied for registration of "FLY BIRDS" on 18 April 2016, claiming use since 1 April 2016, and obtained registration (No. 3237870) on 30 May 2019, following advertisement in the Trade Marks Journal on 14 January 2019. The "FLY BIRDS" mark similarly featured a device with two birds and a pink-and-white color scheme, which the plaintiff alleged was deceptively similar to its "TWIN BIRDS" mark. The plaintiff claimed that the defendant’s adoption was dishonest, intended to capitalize on the plaintiff’s goodwill and reputation, and likely to cause consumer confusion.

The plaintiff became aware of the defendant’s use in April 2022, prompting the filing of a rectification petition on 23 April 2022 and a legal notice on 29 April 2022. The defendant’s reply on 11 May 2022 disputed the plaintiff’s claims, asserting that "FLY BIRDS" was distinct and that the term "birds" was common in the garment trade. The plaintiff subsequently filed a civil suit in April 2023, alleging trademark infringement, passing off, and copyright infringement, and sought to cancel the defendant’s trademark registration through a rectification petition.

Detailed Procedural Background: The plaintiff initiated a civil suit (C.S. (Comm. Div.) No. 182 of 2023) under the Trade Marks Act, 1999, and the Copyright Act, 1957, seeking permanent injunctions to restrain the defendant from infringing the "TWIN BIRDS" trademark, passing off its products, and violating the plaintiff’s copyright in the artistic work of the "TWIN BIRDS" label. Concurrently, the plaintiff filed a rectification petition ((T) OP(TM) No. 10 of 2024) under Sections 47, 57, and 97 of the Trade Marks Act to cancel the defendant’s trademark registration (No. 3237870). The rectification petition was transferred to the Madras High Court on 16 April 2024 for joint adjudication with the suit.

The court framed nine issues on 8 January 2024, covering territorial jurisdiction, the plaintiff’s proprietorship of "TWIN BIRDS," the similarity of the marks, delay and acquiescence, the commonality of the term "birds," prior use, mala fide adoption of the color scheme, passing off, and appropriate reliefs. Evidence was recorded jointly for both matters, with the plaintiff examining Mr. M. Ravi, a partner, as PW1, who exhibited 31 documents (Ex.P1 to P31). The defendant, P. Prakash, testified as DW1, exhibiting 34 documents (Ex.D1 to D34). Both parties underwent cross-examination, and oral arguments were advanced by Senior Advocate Mr. Satish Parasaran for the plaintiff and Senior Advocate Ms. Chitra Sampath for the defendant. Written arguments were also submitted. The court reserved its order on 21 April 2025 and pronounced the judgment on 30 April 2025.

Issues Involved in the Case: The case presented several critical issues for adjudication. Whether the defendant’s "FLY BIRDS" mark was phonetically, visually, and structurally similar to "TWIN BIRDS."? Whether the suit was barred by delay, laches, or acquiescence? Whether the term "birds" was common to the ready-made garments trade, precluding exclusive rights? 

Detailed Submission of Parties: The plaintiff argued that PVS Knittings was the registered proprietor of multiple "TWIN BIRDS" trademarks, as evidenced by legal use certificates (Ex.P1 to P14). They asserted prior use since 1969, supported by invoices from 2007 (Ex.P18) showing use of the word mark "TWIN BIRDS" and from 2011 for the device mark. The plaintiff highlighted significant turnover (Rs.103,40,75,234 in 2021-22, per Ex.P17) and advertising efforts from 1995 to 2022 (Ex.P19), establishing substantial goodwill. They contended that "FLY BIRDS" was deceptively similar due to the shared word "birds," two-bird device, and pink-and-white color scheme, likely causing consumer confusion. The plaintiff challenged the defendant’s invoices (Ex.D19) as fabricated, citing discrepancies such as a pre-GST invoice bearing a GST number and inconsistent invoice values. They argued that the defendant’s adoption was dishonest, given the parties’ proximity in Tirupur, and that there was no delay, as the plaintiff acted promptly upon discovering the infringement in April 2022.

The defendant  countered that "FLY BIRDS" was distinct and applied for registration in 2016, claiming use since 1 April 2016. They argued that the plaintiff’s evidence, particularly invoices from Network Clothing, was unreliable, as the license agreement (Ex.P16) did not cover the device mark (Ex.P5), rendering its use unauthorized. The defendant claimed that the term "birds" was common to the trade, citing over 50 registered marks (Ex.D18), and that the pink-and-white color scheme was standard for women’s apparel, negating mala fide intent. They asserted that the plaintiff’s delay of five years, given the 2019 advertisement of "FLY BIRDS," constituted acquiescence under Section 33 of the Trade Marks Act. The defendant further argued that their local customer base differed from the plaintiff’s pan-India and global market, reducing the likelihood of confusion.

Detailed Discussion on Judgments Cited by Parties: The plaintiff relied on several precedents to support their claims. 

In Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), the Supreme Court held that the existence of registered trademarks on the register does not constitute evidence of use, supporting the plaintiff’s challenge to the defendant’s claim that "birds" was common based on registrations. 

Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) and Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited ((2001) 5 SCC 73) endorsed the anti-dissection rule, emphasizing that marks must be compared as a whole, which the plaintiff used to argue the overall similarity of "TWIN BIRDS" and "FLY BIRDS." 

National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (AIR 1953 SC 357) was cited for the proposition that minor changes (e.g., "Eagle" to "Vulture") do not dispel deceptive similarity, relevant to the substitution of "TWIN" with "FLY." 

Parle Products (P) Ltd. v. J.P. & Co. ((1972) 1 SCC 618) reinforced the need to examine overall similarity, supporting the plaintiff’s comparison of the marks’ visual and phonetic elements. 

M/s. Heinz Italia & Anr. v. Dabur India Ltd. ((2007) 6 SCC 1) and R. Gopalakrishnan v. M/s. Venkateshwara Camphor Works (2000 (IV) CTC 222) were cited for granting relief upon findings of dishonesty, which the plaintiff alleged in the defendant’s adoption. 

Neuberg Hitech Laboratories Pvt. Ltd. v. Dr. Ganesan’s Hitech Diagnostic Centre (2022 SCC OnLine Mad 8779) addressed the spectrum of distinctiveness, supporting the plaintiff’s claim that "birds" was arbitrary for apparel. 

P.M. Palani Mudaliar & Co. v. M/s. Jansons Exports (AIR 2017 Mad 105) and National Bell Co. v. Gupta Industrial Corporation ((1970) 3 SCC 665) required substantial use to establish a mark as common to trade, which the plaintiff argued the defendant failed to prove. 

Fatima Tile Works v. Sudarsan Trading Co. Ltd. (AIR 1992 Mad 12) allowed evidence of use by an entity with a trade connection, validating the plaintiff’s reliance on Network Clothing’s invoices.

The defendant cited Honda Motor Company Ltd. v. Kewal Brothers and Others (MANU/WB/0353/1999) to argue that the plaintiff must establish goodwill prior to the defendant’s adoption date (2016), challenging the plaintiff’s evidence. Brihan Karan Sugar Syndicate Private Limited v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (MANU/SC/1020/2023) emphasized the need to prove advertising expenditure in passing off actions, which the defendant claimed the plaintiff lacked. 

Pfizer Products Inc. v. Renovision Exports Pvt. Ltd. (2024 SCC OnLine Del 3140) required the plaintiff to satisfy the classic trinity test (reputation, misrepresentation, and loss) for passing off, which the defendant argued was not met. The defendant also referenced dictionary definitions and articles associating pink with girls to argue that the color scheme was generic, not proprietary.

Detailed Reasoning and Analysis of Judge: Court’s analysis addressed each issue systematically. On territorial jurisdiction, the court found that invoices from Chennai retailers (Ex.P26) selling "FLY BIRDS" products established a cause of action within the court’s jurisdiction. Regarding proprietorship, the court confirmed the plaintiff’s status as the registered proprietor of multiple "TWIN BIRDS" trademarks (Ex.P1 to P14), including word and device marks.

The court assessed prior use, finding that the plaintiff’s invoices from 2007 (Ex.P18) evidenced use of the word mark "TWIN BIRDS," and from 2011 for the device mark (Ex.P5). The defendant’s earliest invoice was from 2017 (Ex.D19), which was discredited due to discrepancies, such as a pre-GST invoice bearing a GST number and inconsistent values. The court rejected the defendant’s objection to Network Clothing’s invoices, noting that the license agreement (Ex.P16) did not cover Ex.P5 because it was unregistered in 2015, but Section 2(1)(r) of the Trade Marks Act allowed non-registered mark licensing. The connection between the plaintiff and Network Clothing, evidenced by Mr. M. Ravi’s dual role, further validated the plaintiff’s reliance on these invoices, per Fatima Tile Works.

On deceptive similarity, the court compared the marks holistically, as mandated by Amritdhara Pharmacy and Parle Products, finding that the shared word "birds," two-bird device, and pink-and-white color scheme rendered "FLY BIRDS" deceptively similar to "TWIN BIRDS." The court noted that a consumer with average intelligence and imperfect recollection would likely confuse the marks, satisfying the test in Cadila Healthcare.

The court examined whether "birds" was common to trade, applying National Bell Co. and Palani Mudaliar. The defendant’s evidence (Ex.D18) listed numerous "birds"-containing marks, but most were registered post-2016 or were composite device marks, lacking evidence of substantial use. The court concluded that "birds" was arbitrary for apparel and not publici juris, favoring the plaintiff.

On mala fide adoption, the court acknowledged that pink is associated with women’s products but found the defendant’s adoption of the entire pink-and-white scheme, combined with the word "birds" and two-bird device, to be mala fide, given the plaintiff’s prior use and the parties’ proximity in Tirupur, aligning with Heinz Italia.

Regarding passing off, the court found that the plaintiff established the classic trinity test (per Pfizer Products): reputation and goodwill through turnover (Ex.P17) and advertising (Ex.P19), misrepresentation due to the deceptive similarity of the marks, and likely loss to the plaintiff. The defendant’s claim of a distinct local customer base was dismissed, as both parties sold identical goods to a common market.

On delay and acquiescence, the court noted that the plaintiff became aware of the defendant’s use in April 2022 and filed the suit in April 2023, negating delay. Section 33 of the Trade Marks Act required five years of acquiescence, which was not met, as less than five years had elapsed since the defendant’s advertisement in 2019. The court cited Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (AIR 1990 Del 19) to hold that delay does not bar relief in infringement and passing off actions.

For the rectification petition, the court found that the defendant’s registration violated Section 11 of the Trade Marks Act, as it was likely to cause confusion with the plaintiff’s prior mark, warranting cancellation due to insufficient cause.

Final Decision: The court decreed the civil suit in favor of the plaintiff, granting permanent injunctions against the defendant’s use of "FLY BIRDS," ordering the destruction of infringing materials, and directing 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 within two weeks. The plaintiff was awarded costs of Rs. 5,00,000. The rectification petition was allowed, directing the Registrar of Trade Marks to cancel the defendant’s trademark (No. 3237870) within 30 days.

Law Settled in This Case: The case reaffirms several principles of trademark law. It underscores that deceptive similarity is assessed holistically, considering phonetic, visual, and structural elements from the perspective of a consumer with average intelligence and imperfect recollection. The decision clarifies that a mark’s commonality to trade requires evidence of substantial use by others, not mere registrations. It establishes that mala fide adoption can be inferred from the cumulative copying of distinctive elements, especially in close geographical proximity. The case also confirms that delay or laches does not preclude relief in trademark infringement and passing off actions, and acquiescence under Section 33 requires a continuous five-year period of aware inaction. Finally, it highlights that trademark registrations obtained in violation of Section 11, causing confusion with prior marks, are liable for cancellation.

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 Hon'ble Judge: Senthilkumar Ramamoorthy J.

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

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

New Life Laboratories Private Limited Vs. NLCARE Private Limited

Introduction: Heard in the High Court at Calcutta, Commercial Division, the case revolves around the plaintiff’s claim to exclusive rights over the trademark "NEW LIFE" and the defendant’s alleged infringement through the use of "NL" in its corporate name "NLCARE Private Limited." The plaintiff sought an interim injunction to restrain the defendant, while the defendant countered with an application to vacate an ex-parte ad-interim order granted in favor of the plaintiff. The court’s decision hinges on issues of prior use, family rights to a trademark, and the plaintiff’s alleged suppression of material facts, offering insights into the principles governing trademark exclusivity and equitable relief.

Detailed Factual Background:The origins of the dispute trace back to Dr. Mohammad Idrees, who began practicing homeopathy in Bhopal, Madhya Pradesh, in 1952, establishing the "NEW LIFE HOMEO CLINIC" with a distinctive leaf device. His eldest son, Dr. Mohammad Ilyas, joined the practice in 1970, opening the "NEW LIFE HOMEO STORE" and adopting the "NEW LIFE" trademark, inspired by patients who referred to him as a giver of "new life." Dr. Ilyas expanded the family business, and in 1995, he founded New Life Laboratories Private Limited, the plaintiff, with his wife, Mrs. Ishrat Begum, and sons, Dr. Mohammad Zakariya, Mohammad Zaki, and Dr. Salman Mohammad. The company later included other family members as directors, such as Mohammad Zaheer, Mohammad Azam, and Faizan Mohammad.

The plaintiff company took over the family’s homeopathic medicine business, claiming proprietary rights over the "NEW LIFE" trademark, which it registered in 2013 under Class 35 (Registration No. 2477030) for trading, marketing, and business management of pharmaceutical preparations. The registration was subject to a condition limiting the mark to specific colors as depicted in the application. The plaintiff alleged that it had used the mark since 1970, building significant goodwill and reputation, making "NEW LIFE" a household name for homeopathic medicines across India.

The defendant, NLCARE Private Limited (initially incorporated as Dr. Ilyas New Life Homoeo and Herbals Pvt. Ltd. in 2019), was promoted by Mohammad Zaki, Faizan Mohammad, and Mrs. Saima Zaki, who had resigned from the plaintiff company in 2018 due to internal family disputes. These individuals, all descendants or relatives of Dr. Ilyas, established NLCARE to manufacture and market pharmaceuticals, adopting the "NEW LIFE" mark and the abbreviation "NL" in their corporate name. The defendant claimed that the "NEW LIFE" mark was a family legacy, used by multiple family members across approximately 20 shops and clinics in Bhopal since the 1970s, including by Dr. Idrees’ other sons, Dr. Mohammad Tariq and Dr. M.M. Siddiqui.

The plaintiff discovered the defendant’s use of "NL" and "NEW LIFE" and alleged that it infringed their registered trademark and constituted passing off by eroding their market share and goodwill. The defendant, in turn, argued that the mark was a family asset, with no single entity entitled to exclusivity, and accused the plaintiff of suppressing material facts about prior litigation and the widespread family use of the mark.

Detailed Procedural Background: The plaintiff initiated the suit (IP (COM) No. 22 of 2024) before the High Court at Calcutta, Commercial Division, seeking remedies for trademark infringement and passing off. Concurrently, it filed an application (G.A. (Com) No. 1 of 2024) for an interim injunction to restrain the defendant from using the "NEW LIFE" mark or "NL." On 19th August 2024, the court granted an ex-parte ad-interim injunction in favor of the plaintiff, which remained in effect pending further hearings. The defendant responded with an application (G.A. (Com) No. 2 of 2024) to vacate this interim order, arguing that the plaintiff had misrepresented facts and that the mark was a shared family asset.

Prior to this, the plaintiff had filed a similar suit (CS (COMM) No. 323 of 2023) before the Delhi High Court against the defendant, which was withdrawn after arguments on interim relief were heard but no injunction was granted. The plaintiff disclosed the filing and withdrawal of the Delhi suit but omitted details of the defendant’s pleadings and the court’s refusal to grant interim relief, a point heavily contested by the defendant as suppression of material facts.The court considered the pleadings, affidavits, and documentary evidence, including a family business chart submitted by the plaintiff in the Delhi proceedings and an affidavit from Dr. M.M. Siddiqui, a family member, supporting the defendant’s claim of shared family use.

Issues Involved in the Case: The case presented several critical issues for adjudication. First, whether the plaintiff, as the registered proprietor of the "NEW LIFE" trademark, was entitled to exclusive use of the mark to the exclusion of the defendant, a company formed by family members with historical ties to the mark’s origin? Second, whether the defendant’s use of "NL" and "NEW LIFE" constituted trademark infringement or passing off, given the plaintiff’s registration and alleged prior use? Third, whether the "NEW LIFE" mark was a family-owned asset, with rights accruing to all descendants of Dr. Idrees, or whether the plaintiff’s registration conferred exclusive proprietary rights? 

Detailed Submission of Parties: The plaintiff argued that New Life Laboratories was the sole proprietor of the "NEW LIFE" trademark, having inherited the goodwill and assets of Dr. Ilyas’ business. They claimed continuous use since 1970, reinforced by the 2013 registration, which they argued conferred statutory protection under the Trade Marks Act, 1999. The plaintiff asserted that the defendant’s use of "NL" in "NLCARE Private Limited" and "NEW LIFE" on its products and packaging was deceptively similar, infringing their registered mark and passing off their goods as those of the plaintiff. They highlighted the defendant’s directors—Mohammad Zaki, Faizan Mohammad, and Saima Zaki—as former shareholders and directors of the plaintiff who, after resigning in 2018, established NLCARE to exploit the plaintiff’s goodwill. The plaintiff further argued that Dr. Ilyas had permitted family members to use the "NEW LIFE" mark on a profit-sharing basis, which did not confer proprietary rights on them.

The plaintiff relied on several precedents to support their case. In Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. & Ors. (MANU/DE/0513/1982), the Delhi High Court held that even a person named Surjeet could not use the name as a trademark if it was registered by a prior entity, emphasizing the exclusivity of registered marks. In Sri Narasu’s Coffee Company Ltd. vs. Narasu’s Sarathy Industries & Anr. (2019 SCC OnLine Mad 38978), the Madras High Court ruled that only the registered proprietor has proprietary rights over a mark, excluding descendants of the mark’s originator. The plaintiff also cited M/s. Power Control Appliances vs. Sumeet Machines Pvt. Ltd. ((1994) 2 SCC 448) for the principle that a trademark cannot have multiple origins or proprietors, precluding rival use. In Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. & Ors. (MANU/DE/3191/2023), they argued that their registration trumped the defendant’s pending applications. Finally, Gujarat Bottling Co. Ltd. vs. Coca Cola Co. & Ors. ((1995) 5 SCC 545) was cited to assert that family members using the mark were common law licensees, enhancing the mark’s distinctiveness for the plaintiff.

The defendant  countered that the "NEW LIFE" mark was a family legacy, adopted by Dr. Idrees in 1952 and used by his descendants across multiple shops and clinics in Bhopal. They argued that approximately 20 family-run entities operated under the "NEW LIFE" name, including those of Dr. Mohammad Tariq and Dr. M.M. Siddiqui, without objection from the plaintiff. The defendant’s directors, Mohammad Zaki and Faizan Mohammad, had used the mark since 2002 and 2017, respectively, in their individual shops, with the plaintiff’s knowledge, as their shops shared a common boundary wall. The defendant contended that the plaintiff’s registration in Class 35 was limited to a specific label and color scheme, not the word mark "NEW LIFE," and did not confer exclusivity over the term.

The defendant accused the plaintiff of suppressing material facts, particularly the Delhi High Court proceedings where interim relief was denied, citing Satish Khosla vs. Eli Lilly Ranbaxy Ltd. (MANU/DE/0763/1998), which held that non-disclosure of prior adverse orders warrants vacation of interim relief. They relied on Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. (MANU/DE/3191/2023) and Shri Ram Education Trust vs. SRF Foundation & Ors. (2016 SCC OnLine Del 472) to argue that a family name adopted by a common ancestor cannot be appropriated by one branch to exclude others, with goodwill accruing to all heirs. In Prosanta Kumar Dutta vs. Prosanta Shilpa Protishtan Pvt. Ltd. (2014 SCC OnLine Cal 19929), they asserted that the mark’s adoption by Dr. Ilyas did not preclude other family members’ rights. The defendant supported their claims with documents, including a 1975 tax notice to Dr. Idrees’ New Life Clinic and an affidavit from Dr. M.M. Siddiqui affirming the family’s shared use of the mark.

Detailed Discussion on Judgments Cited by Parties: The parties cited several judgments, each applied to specific aspects of the case. The plaintiff’s reliance on Surjeet Book Depot vs. Surjeet Book Depot (P) Ltd. & Ors. (MANU/DE/0513/1982) was to underscore the exclusivity of a registered trademark, where the Delhi High Court prohibited an individual from using their own name as a trademark when it was registered by a prior entity. However, the court found this distinguishable, as the present case involved a family mark with historical shared use, unlike a personal name appropriated by a single entity.

In Sri Narasu’s Coffee Company Ltd. vs. Narasu’s Sarathy Industries & Anr. (2019 SCC OnLine Mad 38978), the Madras High Court emphasized the registered proprietor’s exclusive rights, denying descendants of the mark’s originator proprietary claims. The Calcutta High Court deemed this inapplicable, as the "NEW LIFE" mark was a family asset used by multiple branches, not solely the plaintiff’s property.

M/s. Power Control Appliances vs. Sumeet Machines Pvt. Ltd. ((1994) 2 SCC 448) was cited by the plaintiff for the principle that a trademark cannot have multiple proprietors or origins. The court found this distinguishable, as the family context and shared historical use suggested a common origin under Dr. Idrees, not rival proprietary claims.

The plaintiff’s use of Dhananjay Rathi vs. Shree Vasu Steels Pvt. Ltd. & Ors. (MANU/DE/3191/2023) to assert the primacy of their registration was countered by the defendant’s interpretation of the same case, which held that a family name adopted by a common ancestor cannot be exclusively appropriated by one branch. The court favored the defendant’s reading, given the evidence of widespread family use.

Gujarat Bottling Co. Ltd. vs. Coca Cola Co. & Ors. ((1995) 5 SCC 545) was cited by the plaintiff to argue that family members using the mark were licensees, reinforcing the plaintiff’s control. The court did not directly address this, focusing instead on the family’s shared rights.

The defendant’s reliance on Satish Khosla vs. Eli Lilly Ranbaxy Ltd. (MANU/DE/0763/1998) was pivotal, as the Delhi High Court held that non-disclosure of prior adverse orders in similar proceedings constitutes suppression of material facts, justifying the vacation of interim relief. The Calcutta High Court applied this principle, finding the plaintiff’s omission of the Delhi High Court’s refusal to grant interim relief critical.

Shri Ram Education Trust vs. SRF Foundation & Ors. (2016 SCC OnLine Del 472) supported the defendant’s claim that a family mark adopted by a common ancestor benefits all heirs unless explicitly excluded. The court found this directly applicable, given the family’s extensive use of "NEW LIFE."

Prosanta Kumar Dutta vs. Prosanta Shilpa Protishtan Pvt. Ltd. (2014 SCC OnLine Cal 19929) reinforced the defendant’s argument that Dr. Ilyas’ adoption of the mark did not preclude other family members’ rights, aligning with the court’s view of shared family entitlement.

Detailed Reasoning and Analysis of Judge: Court’s analysis focused on the plaintiff’s claim to exclusivity versus the defendant’s assertion of shared family rights. The court examined the plaintiff’s registration (No. 2477030, Class 35), noting it was limited to a specific label and color scheme, not the word mark "NEW LIFE." The plaintiff’s claim of use since 1970 was unsupported by documents predating 1999, whereas the defendant provided a 1975 tax notice evidencing Dr. Idrees’ use of "New Life Clinic." The affidavit from Dr. M.M. Siddiqui, a family member, corroborated the defendant’s claim that approximately 20 family-run shops used the "NEW LIFE" mark without objection, undermining the plaintiff’s exclusivity claim.

The court found the plaintiff’s statements contradictory, particularly their assertion in the Delhi suit that they used the mark exclusively since 1970, contrasted with admissions in the Calcutta proceedings that Dr. Ilyas permitted family members to use it. The plaintiff’s failure to provide evidence of profit-sharing arrangements with family members further weakened their case. The family business charts disclosed in the Delhi suit revealed extensive use of "NEW LIFE" by Dr. Idrees’ and Dr. Ilyas’ descendants, supporting the defendant’s argument of a shared family legacy.

The court applied the principles from Shri Ram Education Trust and Dhananjay Rathi, holding that a family mark adopted by a common ancestor cannot be appropriated by one branch to exclude others. The goodwill of "NEW LIFE" accrued to all family members, and the plaintiff’s registration did not extinguish these rights, especially given the mark’s historical use since 1952.

Crucially, the court addressed the plaintiff’s suppression of material facts, invoking Satish Khosla. The plaintiff’s failure to disclose the Delhi High Court’s refusal to grant interim relief and the defendant’s pleadings in that suit was deemed a deliberate attempt to mislead the court. This suppression alone justified vacating the ad-interim injunction, as it tainted the plaintiff’s claim to equitable relief.

The court assessed the interim injunction criteria—prima facie case, balance of convenience, and irreparable injury—finding that the plaintiff failed to establish a prima facie case due to the shared family use and lack of exclusivity. The balance of convenience favored the defendant, who had operated under the mark for years, and no irreparable injury was demonstrated, given the plaintiff’s coexistence with other family users.

Final Decision:The court dismissed the plaintiff’s application (G.A. (Com) No. 1 of 2024) and allowed the defendant’s application (G.A. (Com) No. 2 of 2024), vacating the ad-interim injunction granted on 19th August 2024. The plaintiff’s request for a stay of the order was refused, affirming the defendant’s right to continue using the "NEW LIFE" mark pending the suit’s final adjudication.

Law Settled in This Case: The case reinforces the principle that A family trademark adopted by a common ancestor cannot be exclusively appropriated by one branch unless other heirs are explicitly excluded. It underscores that goodwill in such marks accrues to all family members with a common lineage. The decision also highlights the importance of full disclosure in interim injunction applications, with suppression of material facts, such as prior adverse orders, warranting the vacation of equitable relief. The court clarified that a limited trademark registration (e.g., for a specific label or class) does not confer exclusivity over a word mark, particularly in the context of historical family use.

Case Title: New Life Laboratories Private Limited Vs. NLCARE Private Limited: Date of Order: 29 April 2025: Case No.: G.A. (COM) No. 1 of 2024: High Court at Calcutta: Name of Hon'ble Judge: Krishna Rao J.

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

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

UTO Nederland B.V. & Anr. Vs. Tilaknagar Industries Ltd.

Introduction: The interplay between judicial discretion and adjudication in the context of temporary injunctions is a cornerstone of civil litigation, particularly in intellectual property disputes. The case of UTO Nederland B.V. v. Tilaknagar Industries Ltd., decided by a Larger Bench of the Bombay High Court on April 28, 2025, under Chief Justice Alok Aradhe, Justices M.S. Karnik, and Shyam C. Chandak, addresses a critical conflict in judicial interpretations regarding the nature of orders on temporary injunction applications and the scope of appellate review. Stemming from a trademark dispute over “Mansion House” and “Savoy Club,” this reference case clarifies whether such orders are exercises of discretion or prima facie adjudications and delineates the appellate court’s role in reviewing them. By resolving conflicting Division Bench decisions, the court reinforces the discretionary nature of injunction orders and limits appellate interference to cases of arbitrary or perverse exercise of discretion. This case study provides a comprehensive analysis of the factual and procedural background, the issues at stake, the parties’ submissions, the judicial reasoning, and the legal principles established, offering insights into the procedural nuances of injunction appeals in India.

Detailed Factual Background:  UTO Nederland B.V. and its affiliate, major Dutch producers and distributors of spirits and liquors, including scotch whiskey, gin, vodka, rum, liqueurs, and cognac, claimed proprietorship over the trademarks “Mansion House” and “Savoy Club.” UTO Nederland asserted registration of “Mansion House” and continuous use of “Savoy Club” since 1947. Tilaknagar Industries Ltd., an Indian company engaged in manufacturing and marketing industrial alcohol, spirits, Indian-made foreign liquor, and sugar cubes, approached UTO in 1982 to explore collaboration for selling UTO’s products in India. On July 7, 1983, UTO entered into a license agreement permitting Tilaknagar to use the “Mansion House” and “Savoy Club” trademarks for alcoholic beverages like whisky, gin, brandy, and rum.

UTO alleged that Tilaknagar, with mala fide intent, applied for registration of these trademarks in India, including the “Herman Jensen” logo used by UTO’s affiliate since 1947. Claiming infringement of copyright and passing off, UTO filed a suit in the Bombay High Court, accompanied by a Notice of Motion seeking a temporary injunction to restrain Tilaknagar’s use of the trademarks. On December 22, 2011, the Single Judge rejected the injunction, prompting UTO to file Appeal No. 66 of 2012. During the appeal, a Division Bench identified conflicting precedents on the nature of injunction orders and the scope of appellate review, leading to a reference to a Larger Bench on December 15, 2014, to resolve the discord between decisions like Colgate Palmolive v. Anchor Health and Parksons Cartamundi v. Suresh Kumar.

Detailed Procedural Background: The dispute originated when UTO filed a suit for trademark infringement and passing off, along with Notice of Motion No. 993 of 2009, seeking a temporary injunction. The Single Judge’s rejection of the injunction on December 22, 2011, led to UTO’s Appeal No. 66 of 2012. Related proceedings included Cross Objection No. 3 of 2012, Notice of Motion No. 445 of 2012, Notice of Motion No. 740 of 2013, Notice of Motion No. 1427 of 2014, and Interim Application No. 2979 of 2024 by Allied Blender and Distillers Ltd., all linked to the main appeal. During the appeal’s hearing, the Division Bench noted irreconcilable views in prior Bombay High Court decisions—Colgate Palmolive (2005), Parksons Cartamundi (2012), and Goldmines Telefilms (2014)—on whether injunction orders are discretionary or adjudicatory and the extent of appellate scrutiny.

On December 15, 2014, the Division Bench referred two questions to a Larger Bench: whether Colgate Palmolive, holding injunction orders as discretionary, or Parksons Cartamundi and Goldmines Telefilms, treating them as prima facie adjudications, set out the correct law, and what is the scope of an appeal from an injunction order. The Larger Bench, comprising Chief Justice Alok Aradhe, Justices M.S. Karnik, and Shyam C. Chandak, heard arguments from counsel L.M. Jenkins for UTO, Ashish Kamat for Allied Blender, and senior advocates Ravi Kadam and Venkatesh Dhond for Tilaknagar. The judgment, reserved on April 21, 2025, and pronounced on April 28, 2025, answered the reference, directing the appeal’s listing before the appropriate bench for further orders.

The Larger Bench addressed two referred questions: Whether the decision in Colgate Palmolive v. Anchor Health, holding that a temporary injunction order is discretionary despite a finding on prima facie case, or the decisions in Parksons Cartamundi v. Suresh Kumar and Goldmines Telefilms v. Reliance Big Entertainment, treating such orders as prima facie adjudications, represents the correct legal position? What is the scope and ambit of an appeal from an order passed by a trial judge on an interlocutory injunction application pending suit disposal?

Detailed Submission of Parties: UTO Nederland argued that the Single Judge’s order denying the injunction involved a prima facie adjudication of the parties’ rights, particularly on trademark infringement and passing off. They contended that the appellate court’s scope was not limited to checking for perversity or errors apparent but extended to a comprehensive review of all aspects of the order. UTO asserted that the court could substitute the trial judge’s conclusions with its own findings, especially given allegations of trademark assignment, abandonment, or acquiescence. They relied on Hiralal Parbhudas v. Ganesh Trading to argue that adjudication, not discretion, characterized the Single Judge’s decision, necessitating broader appellate scrutiny.

Tilaknagar Industries countered that injunction decisions are discretionary, guided by the trinity test of prima facie case, balance of convenience, and irreparable injury. They argued that the Single Judge’s order was an exercise of discretion to maintain status quo, not an adjudication on merits. Tilaknagar submitted that appellate review is confined to assessing whether the discretion was exercised arbitrarily, capriciously, or perversely, or ignored settled principles, as established in Wander Ltd. v. Antox India. They contended that Hiralal Parbhudas, dealing with a statutory order under the 1958 Act, was inapplicable to CPC-based injunctions, and Parksons Cartamundi erred in relying on it. Tilaknagar cited Gujarat Bottling Co. v. Coca Cola, Shyam Sel v. Shyam Steel, and Ramakant Choksi v. Harish Choksi to reinforce the discretionary nature of injunction orders and limited appellate interference.

Detailed Discussion on Judgments Cited by Parties and Their Context: The Larger Bench analyzed a robust array of precedents to resolve the conflict and define the scope of injunction appeals:

Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 2005 (1) Mh.L.J. 613: Cited by the court, this Bombay High Court Division Bench decision held that a temporary injunction order remains discretionary, even if the judge finds no prima facie case, and does not involve merits adjudication. It distinguished Hiralal Parbhudas and National Chemicals, which dealt with statutory orders, as irrelevant to CPC-based injunctions. The court upheld this as the correct principle, aligning with Supreme Court precedents.

Parksons Cartamundi Pvt. Ltd. v. Suresh Kumar Jasraj Burad, 2012 SCC OnLine Bom 438: Cited by the court, this Division Bench treated an injunction order as a prima facie adjudication, relying on Hiralal Parbhudas to argue that no discretion was exercised when the judge found no deceptive similarity. The Larger Bench found this view erroneous, as it ignored Colgate Palmolive and misapplied Hiralal Parbhudas to CPC contexts.

Goldmines Telefilms Pvt. Ltd. v. Reliance Big Entertainment Pvt. Ltd., Appeal (L) No. 458/2014 in NM/452/2014 in Suit/194/2014, Bombay High Court, decided on September 24, 2014: Cited by the court, this Division Bench followed Parksons Cartamundi, treating injunction orders as adjudicatory. The Larger Bench criticized its failure to consider Colgate Palmolive and its reliance on Hiralal Parbhudas and National Chemicals, rendering it inconsistent with Supreme Court guidelines.

Hiralal Parbhudas v. Ganesh Trading Company, AIR 1984 Bom 218: Cited by UTO and Tilaknagar, this Bombay High Court decision distinguished discretion from adjudication in the context of a Registrar’s order under Section 56(1) of the 1958 Act. It held that rejecting a rectification application based on non-deceptive similarity was adjudication, not discretion. The Larger Bench clarified its irrelevance to CPC-based injunctions, limiting its applicability to statutory contexts.

Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727: Cited by Tilaknagar and the court, this Supreme Court three-judge bench decision is a locus classicus, holding that appellate courts should not interfere with a trial court’s discretionary injunction order unless it is arbitrary, capricious, perverse, or ignores settled principles. The Larger Bench endorsed this as the guiding principle for appellate review.

Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545: Cited by Tilaknagar, this Supreme Court case defined prima facie case as a serious question requiring trial, emphasizing the discretionary nature of injunctions based on the trinity test. The Larger Bench relied on it to affirm the discretionary framework.

Shyam Sel and Power Ltd. v. Shyam Steel Industries Ltd., (2023) 1 SCC 634: Cited by Tilaknagar, this Supreme Court decision reaffirmed Wander, limiting appellate interference to cases of perverse or arbitrary discretion. The Larger Bench used it to reinforce the restricted scope of appeal.

Ramakant Ambalal Choksi v. Harish Ambalal Choksi, 2024 SCC OnLine SC 3538: Cited by Tilaknagar, this Supreme Court case approved Wander, clarifying that appellate courts examine discretion’s propriety and may adjudicate facts within limited contours. The Larger Bench adopted its principles to define appellate scope.

American Cynamid Co. v. Ethicon Ltd., [1975] 1 All ER 504 (House of Lords): Cited by the court, this seminal UK case defined prima facie case as a serious question to be tried, avoiding merits resolution at the interlocutory stage. The Larger Bench used it to clarify the trinity test’s application.

Garden Cottage Foods Ltd. v. Milk Marketing Board, [1983] 2 All ER 770: Cited by the court, this UK case reiterated American Cynamid, emphasizing the discretionary nature of injunctions. The Larger Bench referenced it to support the trinity test framework.

Martin Burn Ltd. v. R.N. Banerjee, AIR 1958 SC 79: Cited by the court, this Supreme Court case defined prima facie case as one established if evidence is believed, not requiring proof to the hilt. The Larger Bench used it to elucidate the standard for injunction applications.

Dalpat Kumar v. Prahlad Singh, (1992) 1 SCC 719: Cited by the court, this Supreme Court case clarified that prima facie case involves a bona fide substantial question, not a title to be proved at trial. The Larger Bench relied on it to define the trinity test’s scope.

Anand Prasad Agarwal v. Tarkeshwar Prasad, (2001) 5 SCC 568: Cited by the court, this Supreme Court case reinforced that prima facie case requires a serious question, not full proof. The Larger Bench used it to support the discretionary framework.

State of Kerala v. Union of India, (2024) 7 SCC 183: Cited by the court, this Supreme Court case reiterated the prima facie case standard, aligning with Gujarat Bottling. The Larger Bench referenced it to affirm the trinity test.

Fellowes & Son v. Fisher, [1975] 2 All ER 829: Cited by the court, this UK case outlined the balance of convenience as weighing plaintiff’s and defendant’s injury risks. The Larger Bench used it to clarify the trinity test’s second prong.

Halsbury’s Laws of England, Fourth Edition, Vol. 24, para 856: Cited by the court, this legal treatise supported the balance of convenience test, emphasizing protection against uncompensated injury. The Larger Bench referenced it to frame the trinity test.

Shiv Kumar Chadha v. Municipal Corporation of Delhi, 1993 SCC (3) 161: Cited by the court, this Supreme Court case held that injunctions are discretionary, requiring the trinity test and clean hands. The Larger Bench used it to affirm the equitable nature of relief.

Seema Arshad Zaheer v. Municipal Corporation of Greater Mumbai, (2006) 5 SCC 282: Cited by the court, this Supreme Court case emphasized that injunctions require clean hands, reinforcing their discretionary nature. The Larger Bench referenced it to highlight equitable considerations.

Printers (Mysore) Pvt. Ltd. v. Pothan Joseph, (1960) 3 SCR 713, AIR 1960 SC 1156: Cited indirectly via Wander, this Supreme Court case outlined appellate restraint in discretionary orders, quoted by Gajendragadkar, J. The Larger Bench used it to support limited appellate interference.

Charles Osenton & Co. v. Johnston, [1942] AC 130 (House of Lords): Cited indirectly via Wander, this UK case, per Viscount Simon L.C., established appellate restraint unless discretion is perverse. The Larger Bench relied on it to define appellate scope.

Moffett v. Gough, (1878) 1 LR Ir 331: Cited by the court, this case defined a perverse verdict as against all evidence, supporting the Larger Bench’s criteria for appellate interference.

Godfrey v. Godfrey, 106 NW 814: Cited by the court, this US case defined “perverse” as deviating from what is right, aiding the Larger Bench’s interpretation of perversity.

Damodar Lal v. Sohan Devi, (2016) 3 SCC 78: Cited by the court, this Supreme Court case held that perversity requires a conclusion impossible on evidence, not mere inadequacy. The Larger Bench used it to clarify appellate review standards.

Government of West Bengal v. Tarun K. Roy, (2004) 1 SCC 347: Cited by the court, this Supreme Court case held that an earlier decision prevails over a conflicting later one if the former addresses the issue specifically. The Larger Bench applied this to favor Colgate Palmolive over Parksons Cartamundi and Goldmines Telefilms.

Detailed Reasoning and Analysis of Judge:  Chief Justice’s reasoning centered on resolving the conflict between Colgate Palmolive and the Parksons Cartamundi-Goldmines Telefilms line of decisions, grounding the analysis in Supreme Court precedents and common law principles. The court began by outlining the equitable roots of injunctions, which prevent future injury through discretionary relief, guided by the trinity test: prima facie case, balance of convenience, and irreparable injury. Drawing on American Cynamid and Gujarat Bottling, the court clarified that a prima facie case requires a serious question to be tried, not a merits adjudication, ensuring the trial court avoids resolving contested facts or complex legal issues prematurely.

The court then addressed the nature of injunction orders, affirming that they are discretionary, as per Wander, Shyam Sel, and Ramakant Choksi. Wander’s locus classicus status was emphasized, limiting appellate interference to cases where the trial court’s discretion is arbitrary, capricious, perverse, or ignores settled principles. The court defined perversity, citing Moffett, Godfrey, and Damodar Lal, as a conclusion impossible on evidence, not merely a different interpretation. This framework underscored that appellate courts should not substitute their discretion unless the trial court’s order is fundamentally flawed.

Examining the conflicting Bombay High Court decisions, the court upheld Colgate Palmolive, which correctly held that injunction orders remain discretionary, even if no prima facie case is found, and do not adjudicate merits. Colgate Palmolive’s reliance on Dalpat Kumar and its distinction of Hiralal Parbhudas and National Chemicals as irrelevant to CPC-based injunctions was endorsed. In contrast, Parksons Cartamundi and Goldmines Telefilms were deemed erroneous for treating injunction orders as adjudicatory, misapplying Hiralal Parbhudas (a 1958 Act case) to Order XXXIX CPC contexts, and ignoring Colgate Palmolive and Supreme Court precedents like Wander.

The court invoked Government of West Bengal v. Tarun Roy to resolve the conflict, holding that Colgate Palmolive, as the earlier decision specifically addressing injunction appeals, prevailed over the later Parksons Cartamundi and Goldmines Telefilms, which failed to engage with its principles. The distinction between statutory orders under Section 56(1) of the 1958 Act (adjudicatory, as in Hiralal Parbhudas) and CPC-based injunctions (discretionary) was pivotal, ensuring clarity in appellate scope.

On the second question, the court delineated appellate review as examining the propriety of discretion, not reassessing evidence de novo, unless the trial court’s findings are perverse or ignore the trinity test. Ramakant Choksi’s allowance for limited factual adjudication was acknowledged, but within Wander’s contours. The court’s answers reaffirmed the discretionary nature of injunction orders and a restrained appellate role, aligning with equitable and statutory frameworks.

Final Decision:  On April 28, 2025, the Bombay High Court’s Larger Bench answered the reference, holding that Colgate Palmolive correctly states the law: a temporary injunction order is discretionary, not an adjudicatory, even if no prima facie case is found. The court clarified that appellate review is limited to assessing arbitrary, capricious, or perverse discretion or disregard of settled principles, as per Wander, Shyam Sel, and Ramakant Choksi. The decisions in Parksons Cartamundi and Goldmines Telefilms were overruled as incorrect for treating injunction orders as adjudicatory. The reference was answered, and the appeal was directed to be listed before the appropriate bench for further orders.

Law Settled in This Case: The decision established several principles under the CPC and trademark law:  A temporary injunction order is an exercise of discretion, not a prima facie adjudication, even if the trial judge finds no prima facie case. The trinity test—prima facie case, balance of convenience, and irreparable injury—guides discretionary injunction decisions, with prima facie case meaning a serious question to be tried, not merits resolution.Appellate review of injunction orders is limited to examining whether the trial court’s discretion was exercised arbitrarily, capriciously, perversely, or ignored settled principles, as per Wander Ltd. v. Antox India.Perversity in an injunction order requires a conclusion impossible on evidence, not merely inadequate evidence or a different interpretation.Decisions under statutory provisions like Section 56(1) of the Trade and Merchandise Marks Act, 1958, involving adjudication, are distinct from CPC-based injunction orders, rendering cases like Hiralal Parbhudas inapplicable to the latter.When conflicting Division Bench decisions exist, the earlier decision specifically addressing the issue prevails, as per Government of West Bengal v. Tarun Roy.Appellate courts may adjudicate facts in injunction appeals but within the limited contours of assessing discretion’s propriety, not substituting their own findings unless the trial court’s order is perverse.

Case Title: UTO Nederland B.V. & Anr. Vs. Tilaknagar Industries Ltd.: Date of Order: April 28, 2025: Case No.: Appeal No. 66 of 2012: Neutral Citation: 2025:BHC-OS:7110-DB: Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction: Name of  Hon'ble Judge: Alok Aradhe (Chief Justice), M.S. Karnik, Shyam C. Chandak

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

ITC Limited Vs. The Controller of Patents

Introduction:  The case of ITC Limited Vs. The Controller of Patents, Designs & Trademark represents a significant clash between intellectual property rights and public health considerations in India. At its core, the dispute revolves around the rejection of a patent application for a novel nicotine aerosol delivery device, which ITC Limited claimed was distinct from electronic nicotine delivery systems (ENDS) like e-cigarettes. The Calcutta High Court, in its judgment, grappled with issues of procedural fairness, statutory interpretation, and the balance between innovation and public policy. This case study delves into the intricate details of the case, analyzing the factual and procedural background, the arguments presented, the judicial reasoning, and the broader implications for patent law in India.

Detailed Factual Background:  ITC Limited, a prominent Indian conglomerate, filed a patent application (Indian Patent Application No. 685/KOL/2015) on June 10, 2015, for an invention titled "A Device and Method for Generating and Delivery of a Nicotine Aerosol to a User." The device was described as a non-electronic system comprising a tube with two components: one containing an aerosol-generating substance (nicotine or alkaloids) and another holding an aerosol-promoting substance (pyruvic acid). These components were arranged in a parallel configuration, and upon inhalation, a chemical reaction between the substances produced a nicotine salt-based aerosol for delivery to the user. ITC emphasized that the device did not rely on electrical or electronic heating mechanisms, distinguishing it from e-cigarettes or ENDS.

The Controller of Patents and Designs, Kolkata, rejected the application on June 26, 2023, under Section 15 of the Patents Act, 1970, citing Section 3(b), which prohibits inventions whose primary or intended use is contrary to public order, morality, or causes serious prejudice to human, animal, or plant life, health, or the environment. The Controller’s decision referenced various statutes, an Indian Council of Medical Research (ICMR) White Paper, and other documents, including a newspaper article, to argue that the device posed health risks akin to e-cigarettes. ITC challenged this rejection in the Calcutta High Court, alleging procedural irregularities and misapplication of the law.

Detailed Procedural Background: The procedural journey of the case began with ITC’s patent application in 2015. The Controller issued a First Examination Report (FER), which did not cite documents supporting an objection under Section 3(b). Subsequently, a hearing notice dated May 1, 2023, introduced new documents, including an online newspaper article and references to the ICMR White Paper on ENDS dated May 29, 2019. ITC participated in a hearing on May 30, 2023, and submitted a reply on June 14, 2023. However, the Assistant Controller’s order on June 26, 2023, relied on additional documents and statutes not previously disclosed, including the Prohibition of Electronic Cigarettes Act, 2019, and various environmental and drug-related laws.

ITC appealed the rejection under Section 117A of the Patents Act, 1970, before the Calcutta High Court’s Commercial Division. The appeal, heard by Justice Krishna Rao, concluded on April 8, 2025, with the judgment delivered on April 30, 2025. ITC argued that the Controller’s reliance on undisclosed documents violated principles of natural justice, while the Controller defended the rejection, asserting that the device’s nicotine content exceeded permissible limits and posed public health risks.

The case raised several critical issues:  First, whether the Controller’s reliance on documents not disclosed to ITC during the examination process violated principles of natural justice? Second, whether the invention fell within the scope of Section 3(b) of the Patents Act, 1970, as an invention causing serious prejudice to human health? Third, whether the Controller’s classification of the device as an e-cigarette or ENDS was justified, given ITC’s claim of a non-electronic chemical reaction-based mechanism?

ITC Limited’s Submissions:  ITC argued that the device was a novel, non-electronic invention that generated nicotine aerosol through a chemical reaction, not electrical heating, distinguishing it from e-cigarettes or ENDS. It emphasized the device’s parallel configuration of nicotine (60-90 microliters) and pyruvic acid (120-140 microliters), delivering 0-15 micrograms of nicotine per puff, which he claimed was within safe limits. It contended that the Controller’s reliance on Section 3(b) was misplaced, as the provision required proof of “serious prejudice” tied to the invention’s primary or intended use, not speculative health risks.

It highlighted procedural lapses, arguing that the Controller introduced new documents, including the ICMR White Paper and various statutes, without providing ITC an opportunity to respond, violating natural justice. He cited Ssangyong Engineering and Construction Company Limited vs. National Highways Authority of India (2019 SCC OnLine SC 677), where the Supreme Court set aside an arbitral award for relying on undisclosed evidence, as analogous to the Controller’s actions.

It further argued that the Controller’s reliance on the Prohibition of Electronic Cigarettes Act, 2019, was erroneous, as the device was not an e-cigarette. He referenced a presentation by Shri DPS Parmar, former Deputy Controller, which excluded tobacco-related inventions from Section 3(b) examples, and cited Balsinor Nagrik Co-op. Bank Ltd. vs. Babubhai S. Pandya (AIR 1987 SC 849) to argue that statutory provisions must be read holistically. He also invoked Article 27(2) of the TRIPS Agreement and Article 4quarter of the Paris Convention, asserting that patentability should not be denied merely due to domestic sales restrictions. Finally, he cited Manganese Ore (India) Ltd. vs. Regional Asstt. CST ((1976) 4 SCC 124) to argue that the Controller’s inconsistent treatment of tobacco-related patents was arbitrary.

Controller’s Submissions: Controller argued that the device fell under Nicotine Replacement Therapy (NRT), which was not approved under the Drugs and Cosmetics Act, 1940, for the claimed nicotine levels (60-90 mg per tube). Chakraborty asserted that nicotine, even in therapeutic use, posed health risks, particularly to the lungs and cardiovascular system, and cited the ICMR White Paper to link ENDS, vapes, and NRT to nicotine addiction and lung diseases. He argued that the device’s aerosol delivery mechanism was akin to e-cigarettes, falling under Section 3(b) due to its potential to promote addiction.

He defended the procedural fairness, noting that ITC received a hearing notice on May 1, 2023, attended the hearing, and submitted a reply. He claimed the relied-upon documents were publicly available on government websites, and the ICMR White Paper was referenced in the hearing notice. He cited Article 47 of the Constitution, which mandates the State to improve public health, to justify the rejection. He also relied on Basawaraj and Another vs. Special Land Acquisition Officer ((2013) 14 SCC 81) and Fuljit Kaur vs. State of Punjab and Others ((2010) 11 SCC 455) to argue that prior erroneous grants of patents did not confer a right to similar relief.

Detailed Discussion on Judgments Cited by Parties: 

Ssangyong Engineering and Construction Company Limited vs. National Highways Authority of India (2019 SCC OnLine SC 677):  ITC cited this case to argue that the Controller’s reliance on undisclosed documents violated natural justice. The Supreme Court held that an arbitral tribunal’s use of government guidelines not in evidence prejudiced the appellant’s ability to present its case, warranting the award’s annulment under Section 34(2)(a)(iii) of the Arbitration and Conciliation Act, 1996. The Calcutta High Court found this precedent persuasive, noting that ITC was similarly denied an opportunity to address the Controller’s cited statutes and documents.

Balsinor Nagrik Co-op. Bank Ltd. vs. Babubhai S. Pandya (AIR 1987 SC 849):  ITC relied on this case to argue that Section 3(b)’s “serious prejudice” must be read with “primary or intended use.” The Supreme Court emphasized holistic statutory interpretation, which ITC used to contend that the Controller misapplied Section 3(b) by focusing on potential health effects rather than the device’s intended purpose. The High Court indirectly endorsed this by questioning the Controller’s broad application of Section 3(b).

Manganese Ore (India) Ltd. vs. Regional Asstt. CST ((1976) 4 SCC 124): ITC cited this case to highlight the Controller’s arbitrary rejection, given prior grants of tobacco-related patents. The Supreme Court held that administrative actions must be consistent to avoid arbitrariness under Article 14. The High Court acknowledged this argument but focused primarily on procedural fairness.

Basawaraj and Another vs. Special Land Acquisition Officer ((2013) 14 SCC 81): The Controller cited this case to argue that prior erroneous patent grants did not entitle ITC to similar relief. The Supreme Court clarified that Article 14 does not perpetuate illegality. The High Court did not directly engage with this precedent, prioritizing procedural issues.

Fuljit Kaur vs. State of Punjab and Others ((2010) 11 SCC 455): The Controller used this case to reinforce that mistaken relief in other cases does not confer legal rights. The Supreme Court held that equality under Article 14 cannot justify extending erroneous decisions. The High Court’s focus on natural justice rendered this argument secondary.

Detailed Reasoning and Analysis of Judge: Court’s reasoning centered on procedural fairness and the misapplication of Section 3(b). The Court found that the Controller’s reliance on undisclosed documents, including the ICMR White Paper, various statutes, and a newspaper article, violated natural justice. Citing Ssangyong Engineering, the Court held that ITC was prejudiced by its inability to address these materials, which were not referenced in the FER or hearing notice. The Court noted that the Controller’s claim of public availability did not excuse the failure to provide ITC an opportunity to respond.

On the substantive issue, the Court scrutinized the Controller’s classification of the device as an e-cigarette or ENDS. It highlighted ITC’s claim that the device used a chemical reaction, not electrical heating, and noted that the Controller’s reliance on the Prohibition of Electronic Cigarettes Act, 2019, was not raised in the hearing notice, denying ITC a chance to rebut. The Court also examined Section 3(b), referencing Shri DPS Parmar’s presentation, which excluded tobacco-related inventions from typical Section 3(b) exclusions like gambling machines or biological warfare devices. This suggested that the Controller’s application of “serious prejudice” was overly broad.

The Court further considered international obligations under Article 27(2) of the TRIPS Agreement and Article 4 quarter of the Paris Convention, which discourage patent denials based solely on domestic sales restrictions. It also noted Section 83(d) and (e) of the Patents Act, which distinguish patent grants from commercial exploitation, reinforcing that patentability should not hinge on public health policy alone. While acknowledging the Controller’s public health concerns under Article 47, the Court prioritized procedural fairness and remanded the case for fresh consideration.

Final Decision: The Calcutta High Court allowed ITC’s appeal (IPDPTA No. 121 of 2023) on April 30, 2025, setting aside the Controller’s order dated June 26, 2023. The matter was remanded to the Controller for fresh consideration within six months by a different officer, with instructions to decide without influence from the Court’s observations.

Law Settled in the Case:  The case clarified that patent examination processes must adhere to principles of natural justice, requiring controllers to disclose all relied-upon documents to applicants for a fair opportunity to respond. It also underscored that Section 3(b) of the Patents Act, 1970, should be applied narrowly, focusing on an invention’s primary or intended use, not speculative health risks. The judgment reinforced that patent grants are distinct from commercial exploitation, aligning with TRIPS and Paris Convention principles, and highlighted the need for consistent application of patent law to avoid arbitrariness.

Case Title:ITC Limited Vs. The Controller of Patents: Date of Order:April 30, 2025: Case No.IPDPTA No. 121 of 2023: Name of Court:High Court at Calcutta: Name of Hon'ble Judge:Justice Krishna Rao

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

Annikki GmbH Vs Assistant Controller of Patents and Designs

Combining processes from multiple prior arts does not constitute a “known process” under Section 3 d of Patent Act unless previously integrated

Introduction: In the intricate world of intellectual property, patent disputes often hinge on the delicate balance between innovation and prior art. The case of Annikki GmbH v. Assistant Controller of Patents and Designs, adjudicated by the Madras High Court, exemplifies this tension. Annikki GmbH, an Austrian company, sought to overturn the rejection of its patent application for a novel non-fermentative process to produce xylitol from lignocellulosic material. The appeal, filed under Section 117-A of the Patents Act, 1970, challenged the Assistant Controller’s order dated 10.12.2019, which dismissed the application on grounds of lacking novelty, inventive step, and falling under the exclusionary provisions of Section 3(d). This case study delves into the factual and procedural intricacies, the legal issues at play, the arguments of the parties, the judicial reasoning, and the broader implications of the court’s decision, offering a comprehensive analysis of a pivotal moment in patent law adjudication.

Detailed Factual Background:Annikki GmbH, based in Graz, Austria, filed Indian Patent Application No. 467/CHENP/2012, titled “Process for the Production of Carbohydrate Cleavage Products from a Lignocellulosic Material.” The invention proposed a non-fermentative method to produce xylitol, a valuable sugar alcohol, from lignocellulosic material. Unlike traditional fermentative processes, Annikki’s method emphasized high selectivity in lignin degradation, reduced enzyme costs, and limited energy expenditure. The process utilized alcohol and treated lignin as a valuable byproduct rather than a mere energy source for fermentation, marking a significant departure from conventional techniques. 

The complete specification highlighted these advantages, particularly on internal pages 5 and 7, underscoring the technical and economic benefits of the invention. However, the Assistant Controller of Patents and Designs rejected the application, citing prior art documents (D1 to D6) that allegedly rendered the invention obvious and lacking inventive step. The rejection also invoked Section 3(d) of the Patents Act, claiming the process was a mere combination of known processes without enhanced efficacy.

Detailed Procedural Background:The procedural journey of the patent application began with the issuance of the First Examination Report (FER) on 30.11.2017, which raised objections based on lack of novelty and inventive step, referencing prior art documents D1 to D6. Annikki responded on 28.05.2018, submitting amended claims to address the objections. A hearing notice dated 31.05.2018 maintained the FER’s objections, leading to a hearing on 13.07.2018. Post-hearing, Annikki filed written submissions on 09.08.2018. Despite these efforts, the Assistant Controller issued the impugned order on 10.12.2019, rejecting the application. 

The order relied heavily on prior art D5, which was interpreted as disclosing a non-fermentative process, and combined elements from D1 to D4 to argue that the invention lacked inventiveness and was barred under Section 3(d). Aggrieved, Annikki filed a Transferred Civil Miscellaneous Appeal (T)CMA(PT) No. 70 of 2023 before the Madras High Court, seeking to quash the order and secure the grant of the patent.

Issues Involved in the Case:The case presented several critical legal issues for adjudication. First, did the Assistant Controller err in concluding that the invention lacked novelty and inventive step based on prior art documents D1 to D6? Second, was the rejection under Section 3(d) of the Patents Act, which excludes the mere use of a known process unless it results in a new product or employs a new reactant, legally sustainable?  Third, did the Assistant Controller adequately consider Annikki’s responses to the FER and the hearing submissions, or were the reasons in the impugned order inconsistent with prior objections?   Finally, did the non-fermentative nature of Annikki’s process constitute a technical advancement over the cited prior art, warranting patent protection? These issues required a meticulous examination of the prior art, the statutory framework, and the procedural fairness of the patent examination process.

Detailed Submission of Parties:Annikki’s  presented a robust defense of the invention’s patentability. They argued that the invention’s non-fermentative process for xylitol production was novel and inventive, as it avoided fermentation, reduced enzyme costs, and enhanced lignin utilization. Referencing the complete specification, they highlighted the process’s high selectivity and energy efficiency. Addressing prior art D5, they contended that the Assistant Controller misconstrued it as non-fermentative, pointing to Figure 3 and column 7 of D5, which clearly described a fermentative process. For D1, titled “Selective Solvent Delignification for Fermentation Enhancement,” they noted its explicit reliance on fermentation, with lignin used as an energy source, as evidenced by Table 3. D2 was dismissed as irrelevant due to its alkali treatment, distinct from Annikki’s method. D3 was argued to operate at significantly higher temperatures, and D4 was criticized for involving fermentation in its fourth step. Annikki further alleged procedural lapses, asserting that the Assistant Controller ignored their FER response and raised new objections in the impugned order without prior notice. They supported their claim of technical advancement with a declaration from Mr. Mag. Ortwin Ertl, the co-inventor and CEO, which included experimental data not previously submitted due to the absence of specific objections.

Detailed Discussion on Judgments and Citations: The court’s analysis referenced one key precedent, Novozymes v. Assistant Controller of Patents & Designs (2023:MHC:4261), to interpret Section 3(d) of the Patents Act. In Novozymes, the Madras High Court elucidated that Section 3(d) comprises three limbs, with the third limb excluding the “mere use of a known process” unless it results in a new product or employs a new reactant. The court applied this interpretation to scrutinize the Assistant Controller’s reliance on Section 3(d). Annikki’s  cited Novozymes to argue that combining processes from multiple prior arts (D1 to D5) did not constitute a “known process” under Section 3(d), as the exclusion applies only to a single known process. 

Detailed Reasoning and Analysis of Judge:The Court meticulously dissected the Assistant Controller’s order, identifying multiple errors in law and fact. On Section 3(d), the court found the Assistant Controller’s conclusion unsustainable. The impugned order’s assertion that Annikki’s process was a mere combination of known processes from D1 to D5 was flawed, as Section 3(d)’s third limb applies to a single known process. The court reasoned that combining distinct processes from multiple prior arts did not qualify as a “known process” unless previously integrated, rendering the objection legally invalid. This analysis leaned heavily on the Novozymes precedent, which clarified the scope of Section 3(d)’s exclusions.Regarding the inventive step, the court scrutinized the Assistant Controller’s reliance on D5, which was erroneously interpreted as disclosing a non-fermentative process. The court examined paragraph 3 of column 7 and Figure 3 of D5, confirming that D5 involved fermentation, contrary to the impugned order’s findings. This misinterpretation undermined the objection of obviousness. The court also criticized the Assistant Controller’s reliance on “common general knowledge” to assert that enzyme-based xylose degradation was obvious, noting the absence of cited sources or materials to substantiate this claim. For D2, the court found the Assistant Controller’s conclusion that it was analogous art illogical, given its focus on ethanol production rather than xylitol, and the lack of explanation for its relevance.The court further addressed procedural irregularities, noting that the Assistant Controller failed to consider Annikki’s FER response and introduced new objections in the impugned order without prior notice. This lack of fairness necessitated judicial intervention. Annikki’s submission of Mr. Ertl’s declaration, which included experimental data supporting the non-fermentative process’s technical advantages, was deemed significant. Since this evidence was not presented earlier due to the absence of specific objections, the court found it an additional reason for remanding the matter.

Final Decision:The Madras High Court set aside the impugned order dated 10.12.2019 and remanded the matter to the Patent Office for reconsideration. The court stipulated that a different officer, not the one who issued the original order, should conduct the review to avoid bias. The Patent Office was directed to provide Annikki a reasonable opportunity to present its case and issue a reasoned decision within four months. The court refrained from opining on the patent application’s merits, ensuring an impartial re-evaluation. The appeal was disposed of without costs.

Law Settled in This Case:This case clarified the application of Section 3(d) of the Patents Act, particularly its third limb, which excludes the “mere use of a known process.” The court established that combining processes from multiple prior arts does not constitute a “known process” under Section 3(d) unless previously integrated, preventing overbroad rejections of patent applications. It also underscored the importance of procedural fairness in patent examinations, requiring controllers to consider applicants’ responses and provide consistent objections. Additionally, the judgment reinforced the need for evidence-based conclusions when asserting obviousness or relying on common general knowledge, setting a higher standard for patent office determinations.

Case Title: Annikki GmbH Vs Assistant Controller of Patents and Designs: Date of Order: 24.04.2025: Case No.: (T)CMA(PT) No. 70 of 2023 (OA/19/2020/PT/CHN): Name of Court: High Court Madras: Name of Judge: Senthilkumar Ramamoorthy J.

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

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

Surya Food and Agro Limited Vs. Om Traders

Unveiling the Clash of Jurisprudence: Adversarial Vs. Inquisitorial 

Introduction: The Indian legal system, rooted in the common law tradition, operates predominantly on an adversarial model where the court acts as a neutral arbiter, adjudicating disputes based on the evidence and arguments presented by the parties. However, the case of Surya Food and Agro Limited v. Om Traders, adjudicated by the Delhi High Court, brings to the forefront a critical tension between adversarial and inquisitorial approaches to jurisprudence. This case, centered on allegations of copyright infringement and passing off concerning the packaging of biscuit products, highlights the procedural intricacies of commercial disputes and the judiciary’s role in ensuring fairness. The court’s decision to set aside a summary judgment rendered by a Single Judge underscores the importance of adhering to adversarial principles, particularly in the context of commercial litigation governed by the Commercial Courts Act, 2015. This article delves into the factual and procedural nuances of the case, the legal issues at play, the parties’ submissions, the judicial reasoning, and the broader implications for the interplay between adversarial and inquisitorial jurisprudence.

Detailed Factual Background: Surya Food and Agro Limited, a company incorporated in 1992, is a prominent manufacturer of cookies, cakes, confectioneries, juices, and beverages, owning several trademarks, including “Butter Bite,” “Italiano,” and “Butter Delite.” The dispute revolves around its product “Butter Delite,” launched in October 2015 with distinctive packaging claimed to be an artistic work under the Copyright Act, 1957. This packaging was designed by Mr. Sachin More of Oberoi IBC India Pvt. Ltd. in August 2015 and assigned to Surya Food via a deed dated 10 August 2015. The packaging was later registered under the Copyright Act (Registration No. A-132116 of 2019) and as a trademark (Registration No. 4329956 in Class 30). Surya Food asserted that the packaging’s trade dress, characterized by its red color scheme and layout, had become synonymous with “Butter Delite” due to extensive use and sales, evidenced by annual figures: INR 7.18 crores (2015-16), INR 53.12 crores (2016-17), INR 120.07 crores (2017-18), and INR 83.40 crores (up to 30 November 2018).

In December 2018, Surya Food discovered that Om Traders, a retailer, was selling biscuits under the brand “Butter Krunch,” manufactured by Raja Udyog Private Limited, in packaging allegedly similar to “Butter Delite.” Surya Food claimed that the respondents had copied the artwork, color scheme, and placement of elements, constituting copyright infringement and passing off. The company argued that the similarities in packaging could deceive consumers, leveraging the goodwill of “Butter Delite.” The respondents, however, maintained that their packaging was distinct and that the elements cited by Surya Food were generic to the biscuit industry.

Detailed Procedural Background: Surya Food filed a suit, CS(COMM) 10/2019, before the Delhi High Court, seeking a permanent injunction, damages, and rendition of accounts against Om Traders and Raja Udyog. On 7 January 2019, summons were issued, but Surya Food’s request for an ex parte interim injunction was denied. On 26 February 2019, Raja Udyog appeared, seeking time to file a written statement and respond to Surya Food’s application for interim relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC). Om Traders did not appear, and on 25 March 2019, the Single Judge proceeded ex parte against them. The following day, 26 March 2019, the Single Judge heard arguments, ostensibly on the interim relief application, but clarified that the suit could be disposed of based on pleadings and admitted documents unless evidence was deemed necessary. Without framing issues or allowing evidence, the Single Judge dismissed the suit, finding the packaging of “Butter Delite” generic and not entitled to protection.

Aggrieved, Surya Food filed an intra-court appeal, RFA(OS)(COMM) 28/2019, challenging the procedural propriety of the Single Judge’s summary disposal. The Division Bench, comprising Justices Vibhu Bakhru and Amit Mahajan, examined whether the Single Judge’s approach adhered to the procedural mandates of the CPC, particularly Order XIII-A, and the Delhi High Court (Original Side) Rules, 2018.

Issues Involved in the Case: The case raised several critical issues. First, whether the Single Judge was justified in rendering a summary judgment without an application under Order XIII-A of the CPC, which governs summary judgments in commercial disputes? Second, whether the Single Judge’s reliance on personal impressions and unpleaded facts violated adversarial principles? Third, whether the provisions of Chapter X-A of the 2018 Rules, allowing suo motu summary judgments, conflicted with Order XIII-A of the CPC. Fourth, whether the packaging of “Butter Delite” was distinctive or generic, warranting protection against infringement and passing off. The core issue, however, was the balance between adversarial and inquisitorial approaches, as the Single Judge’s proactive findings suggested an inquisitorial stance, bypassing the parties’ pleaded case.

Detailed Submission of Parties: Surya Food argued that the Single Judge erred in dismissing the suit without framing issues or permitting evidence, contravening the adversarial framework mandated by the CPC. They contended that Order XIII-A requires a formal application for summary judgment, with a structured procedure ensuring both parties’ participation, including 30 days’ notice and the opportunity to file a reply. Surya Food emphasized that the Single Judge’s findings—such as the packaging being generic or biscuits targeting children—were based on impressions, not evidence or pleadings. They highlighted their substantial sales and registered intellectual property rights, asserting that the similarities in packaging warranted a trial to assess deceptive similarity and consumer confusion.

The respondents argued that the Single Judge’s decision was within the court’s jurisdiction under Chapter X-A of the 2018 Rules, which permits suo motu summary judgments. They contended that the packaging of “Butter Krunch” was distinct, bearing the prominent “Raja” trademark, unlike Surya Food’s “Priya Gold.” They argued that the red color and rectangular shape were common in the biscuit industry, negating claims of distinctiveness. The respondents further submitted that the case management hearing under Order XV-A allowed the court to dispose of the suit summarily, aligning with the Commercial Courts Act’s objective of expeditious resolution.

Detailed Discussion on Judgments and Citations: The Division Bench extensively analyzed the Single Judge’s approach, referencing several precedents to underscore the procedural and jurisprudential issues. The Single Judge had relied on foreign judgments to support the finding that the packaging was generic. In The Paddington Corporation v. Attiki Importers & Distributors, Inc., 996 F.2d 577 (2d Cir. 1993), the U.S. Second Circuit held that trade dress common to an industry is generic and not inherently distinctive. Similarly, in Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993 (2d Cir. 1997), the court reiterated that industry-standard packaging lacks protectable distinctiveness. The Single Judge also cited Keebler Company v. Nabisco Brands, Inc., 1992 U.S. Dist. LEXIS 6826, noting that similar colors are common in the cookie market, making exclusive claims over a color untenable. Additionally, Colgate Palmolive Company Limited v. Patel & Anr., 2005 SCC OnLine Del 1439, was referenced to assert that no party can claim a monopoly over a color.

The Division Bench, however, focused on procedural propriety, drawing heavily from Bright Enterprises Private Limited & Anr. v. MJ Bizcraft LLP & Anr., 2017 SCC OnLine Del 6394. This case emphasized that Order XIII-A mandates a formal application and adherence to a prescribed procedure, including notice and opportunity for response, to ensure fairness. The court in Bright Enterprises held that summary judgments are exceptional and require scrupulous compliance with procedural safeguards to avoid injustice. The Division Bench also cited HPL (India) Ltd. & Ors. v. QRG Enterprises & Anr., 2017 SCC OnLine Del 6955, and Indian Style Wrestling Association of India & Anr. v. Wrestling Federation of India, 2019 SCC OnLine Del 9902, to affirm that the Commercial Courts Act prevails over conflicting High Court rules, reinforcing the primacy of Order XIII-A.

The respondents’ reliance on Chapter X-A of the 2018 Rules was countered by the Division Bench’s reference to G.P. Stewart v. Brojendra Kishore Roy Choudhury, 1939 SCC OnLine Cal 116, which clarified that repugnancy between laws need not be direct but can arise when one provision nullifies another’s effect. The court found that Rule 1 of Chapter X-A, allowing suo motu summary judgments, conflicted with Order XIII-A’s requirement of a party-initiated application, undermining the adversarial process.

Detailed Reasoning and Analysis of Judge: The Division Bench, in a judgment meticulously dissected the Single Judge’s approach, highlighting its deviation from adversarial norms. The court noted that the Single Judge’s decision to dispose of the suit summarily, without an application under Order XIII-A, violated the procedural framework established by the Commercial Courts Act. Order XIII-A, inserted via Section 16 of the Act, enables summary judgments only upon a party’s application, with clear stipulations for notice, reply, and evidence. The Single Judge’s failure to follow this procedure, coupled with the absence of framed issues or evidence, rendered the judgment procedurally infirm.

The court further criticized the Single Judge’s reliance on personal recollections, such as the red packaging of “Britannia Tiger Biscuits” and “Britannia Vita Marie Gold,” which were not part of the record. This approach, the Division Bench held, transformed the court into a witness, violating the adversarial principle that judges adjudicate based on pleaded facts and evidence. The Single Judge’s findings that the packaging was generic, that biscuits target children, and that red is a common color were speculative, lacking evidentiary support or alignment with the respondents’ defense.

On the conflict between Chapter X-A of the 2018 Rules and Order XIII-A, the court reasoned that the Commercial Courts Act, as a special enactment, prevails over High Court rules. Section 16(3) explicitly states that CPC provisions amended by the Act override conflicting High Court rules. The court rejected the respondents’ argument that Chapter X-A’s suo motu power could coexist with Order XIII-A, noting that the latter’s structured procedure ensures natural justice, which a suo motu judgment bypasses. The absence of a comparable procedure in Chapter X-A further underscored the conflict, as it left parties without adequate opportunity to contest the court’s initiative.

The Division Bench also addressed the substantive merits briefly, noting that Surya Food’s claims of deceptive similarity and consumer confusion warranted a trial. The packaging’s color scheme, size, and element placement raised triable issues, which the Single Judge prematurely dismissed by deeming them generic. The court emphasized that such findings required evidence, particularly given the respondents’ denial of similarity and the ex parte status of Om Traders.

Final Decision: The Division Bench allowed the appeal, set aside the Single Judge’s judgment dated 26 March 2019, and restored the suit, CS(COMM) 10/2019, to its position as of that date. The Registry was directed to list the suit before the concerned Roster Bench on 30 January 2023 for further proceedings, ensuring adherence to adversarial procedures, including issue framing and evidence.

Law Settled in This Case: This case settles significant procedural and jurisprudential principles in commercial litigation. It establishes that courts cannot render suo motu summary judgments in commercial disputes under Order XIII-A of the CPC, which requires a party-initiated application and strict procedural compliance. The decision reinforces the primacy of the Commercial Courts Act over conflicting High Court rules, particularly Chapter X-A of the 2018 Rules. It underscores the adversarial nature of civil proceedings, prohibiting judges from relying on personal impressions or unpleaded facts. The case also highlights the necessity of a trial when triable issues, such as deceptive similarity in trade dress, are raised, ensuring parties’ rights to present evidence and contest claims.

Case Title: Surya Food and Agro Limited Vs. Om Traders and Anr.: Date of Order: 20 January 2023: Case No.: RFA(OS)(COMM) 28/2019 : Neutral Citation: 2023/DHC/000445: Name of Court: High Court of Delhi: Name of Hon'ble Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Amit Mahajan

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