Crystal Crop Protection Limited Vs Safex Chemicals India Limited

Introduction: The case of Crystal Crop Protection Limited vs Safex Chemicals India Limited and Others is a significant patent infringement dispute adjudicated by the High Court of Delhi. The plaintiff, Crystal Crop Protection Limited, sought to protect its registered patent for a weedicidal formulation, alleging that the defendants, Safex Chemicals India Limited and its associated entities, infringed the patent by manufacturing and selling products with identical compositions. The dispute centered on an interim injunction application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), which was ultimately dismissed by the court. This case study provides a comprehensive analysis of the factual and procedural background, the issues involved, the submissions of the parties, the judicial reasoning, and the final decision, along with the legal principles established.

Detailed Factual Background: Crystal Crop Protection Limited, a prominent Indian company engaged in the manufacture and sale of agrochemicals, including pesticides, insecticides, weedicides, and herbicides, claimed ownership of patent no. 417213, titled "Weedicidal Formulation and Method of Manufacture thereof." The patent, filed on March 9, 2010, and granted on January 9, 2023, pertains to a novel composition comprising Clodinafop-Propargyl 9% and Metribuzin 20% in a ratio of 1:2.2, combined with a surfactant, a dyeing agent or pigment, and a safener. This formulation was designed to enhance weed control in wheat crops, reduce phytotoxicity, and improve crop yield, with the dyeing agent or pigment ensuring visible application for effective use. The plaintiff markets this patented product under the trademark "ACM-9" and has achieved significant commercial success, with annual sales exceeding Rs. 2,400 Crores in the financial year 2022-2023.

In January 2024, the plaintiff discovered that Safex Chemicals India Limited (defendant no. 1) was manufacturing and selling a product named "RACER," which, upon laboratory testing, was found to contain Clodinafop-Propargyl 9%, Metribuzin 20%, and a safener, identical to the plaintiff’s patented formulation. Further investigation revealed that Indo Swiss Chemicals Limited (defendant no. 2) and Smith N Smith Chemicals Limited (defendant no. 3), entities associated with Safex Chemicals, were also offering products named "Trophy" and "Jodi No.1," respectively, with the same composition. The plaintiff alleged that these products infringed its patent and sought a permanent injunction to restrain the defendants from manufacturing, selling, or marketing these products.

The suit patent faced legal challenges, including four pre-grant oppositions, all of which were dismissed by the Controller of Patents. Two writ petitions challenging the patent’s grant were also resolved: one was withdrawn, and the other was dismissed on January 8, 2024. A post-grant opposition by the Haryana Pesticides Manufacturers Association was pending but did not affect the patent’s validity or the plaintiff’s enforcement rights.

Detailed Procedural Background: The plaintiff filed the suit (CS(COMM) 196/2024) along with an interim injunction application (I.A. 5255/2024) under Order XXXIX Rules 1 and 2 of the CPC, seeking to restrain the defendants from infringing the suit patent. On March 12, 2024, the predecessor bench issued summons in the suit and notice in the interim injunction application. The court directed the defendants to disclose their product’s composition in their reply and ordered the plaintiff to file an affidavit clarifying the functional role of the dyeing agent or pigment in the suit patent, specifically addressing whether its absence in the defendants’ products would constitute infringement of Claim 1.

The defendants filed their reply to the interim injunction application on July 29, 2024. The court heard arguments on November 28, 2024, January 23, 2025, February 27, 2025, and March 24, 2025, when the judgment was reserved. Both parties submitted written arguments, expert reports, affidavits, and scientific journals to support their claims. The defendants also filed a counterclaim (CC(COMM) 28/2024) seeking revocation of the suit patent, challenging its validity on grounds of lack of novelty and inventive step. The court, however, focused primarily on the interim injunction application and the issue of infringement at this stage.

Issues Involved in the Case:  The primary issues before the court were:

Whether the defendants’ products ("RACER," "Trophy," and "Jodi No.1") infringed the plaintiff’s suit patent by replicating its claimed composition?Whether the absence of a dyeing agent or pigment in the defendants’ products constituted non-infringement, given its inclusion as an essential element in the suit patent’s claims?

Plaintiff’s Submissions: The plaintiff argued that its suit patent was valid, having overcome pre-grant oppositions and writ petitions, and was commercially successful under the "ACM-9" brand. The defendants’ products, containing Clodinafop-Propargyl 9%, Metribuzin 20%, and a safener, were identical to the patented formulation, constituting clear infringement. The plaintiff emphasized that the dyeing agent or pigment, described as an adjuvant, was not essential to the invention’s core function of weed control. In its affidavit, the plaintiff’s expert, Mr. Satish Kumar Chalna, stated that the dyeing agent or pigment merely enhanced visibility during application and did not materially affect the formulation’s efficacy. The plaintiff contended that, under the Doctrine of Equivalents, the defendants’ products infringed the suit patent by performing substantially the same function, even if the dyeing agent was absent.

The plaintiff relied on three judgments to support its case:  Sotefin SA v. Indraprastha Cancer Society & Research Center: The plaintiff cited this case to argue that infringement could be established under the Doctrine of Equivalents if the defendants’ products included most essential elements of the patented invention, even if minor elements were omitted.  UPL Limited v. Pradeep Sharma: The plaintiff referenced this case to assert that the absence of a non-essential component (like the dyeing agent) did not preclude a finding of infringement, as long as the core function of the invention was replicated.  SNPC Machines (P) Ltd. v. Vishal Choudhary: The plaintiff used this case to argue that the pith and marrow of the invention—effective weed control—was achieved by the defendants’ products, regardless of the dyeing agent’s absence.

Defendants’ Submissions: The defendants argued that their products did not infringe the suit patent because they lacked the dyeing agent or pigment, an essential element explicitly claimed in the patent. They contended that the dyeing agent was critical to the invention’s objective of ensuring visible application, as highlighted in the patent’s complete specification. The defendants’ expert evidence supported their claim that the absence of the dyeing agent fundamentally altered the composition, rendering it non-infringing. They further argued that the plaintiff’s reliance on the Doctrine of Equivalents was misplaced, as the dyeing agent was not a trivial or substitutable component but a deliberate inclusion to address a specific problem in prior art.

The defendants also challenged the validity of the suit patent in their counterclaim, alleging lack of novelty and inventive step. However, they emphasized that the court should focus on non-infringement at the interim stage, as the absence of the dyeing agent was sufficient to dismiss the injunction application. The defendants asserted that granting an injunction would cause them irreparable harm, while the plaintiff could be compensated through damages if it succeeded at trial.

The plaintiff relied on the following judgments, which the court analyzed in the context of the present case:

Sotefin SA v. Indraprastha Cancer Society & Research Center (2022 SCC OnLine Del 4299): In this case, the defendant’s product included 17 out of 19 elements of the plaintiff’s patent claim. The court, relying on a report from independent scientific advisors, applied the Doctrine of Equivalents and found infringement because the omitted elements were not essential to the invention’s central purpose. The court in the present case distinguished Sotefin, noting that the dyeing agent or pigment was an essential element of the suit patent, explicitly claimed and tied to the invention’s objective of visible application. Additionally, unlike Sotefin, no independent scientific advisor’s report was available in this case.

UPL Limited v. Pradeep Sharma (2020 SCC OnLine Del 1770): This case involved an agrochemical formulation where the defendant’s product lacked a stabilizer. The court held that the stabilizer was not essential, as its absence did not affect the formulation’s core function. The court in the present case distinguished UPL, observing that the dyeing agent or pigment performed a specific function in the suit patent, addressing a problem identified in prior art (ensuring visible application). Its absence materially affected the invention’s objectives, making UPL inapplicable.

SNPC Machines (P) Ltd. v. Vishal Choudhary (2022 SCC OnLine Del 1746): In this case, the court found infringement because the defendant’s mobile brick-making machine achieved the same core function (mobile brick laying) as the plaintiff’s patented invention, despite lacking an in-built mobility mechanism. The court in the present case distinguished SNPC, noting that the absence of the dyeing agent or pigment prevented the defendants’ products from fully achieving the suit patent’s intended function, particularly the visibility aspect critical to effective application.  The court’s analysis of these judgments underscored that the essentiality of the dyeing agent or pigment was a key factor distinguishing the present case from the cited precedents.

Detailed Reasoning and Analysis of Judge: The Court’s reasoning focused on the interim injunction application, emphasizing a prima facie assessment of infringement, the balance of convenience, and the potential for irreparable injury. The court adopted the following approach:

The court first examined the composition of the suit patent, which explicitly included Clodinafop-Propargyl 9%, Metribuzin 20%, a surfactant, a dyeing agent or pigment, and a safener. The defendants’ products ("RACER," "Trophy," and "Jodi No.1") contained all elements except the dyeing agent or pigment. The plaintiff argued that the dyeing agent was a non-essential adjuvant, citing its expert’s affidavit, which described it as enhancing visibility without materially affecting weed control efficacy. The defendants countered that the dyeing agent was essential, as it was explicitly claimed and addressed a specific problem (visible application) identified in the patent’s complete specification.

The court analyzed the role of the dyeing agent or pigment, noting that the plaintiff’s own submissions highlighted its advantages, such as ensuring effective application by making the formulation visible on crops. The court referenced the Merriam-Webster Dictionary’s definition of an adjuvant as an ingredient that modifies the action of principal ingredients. While adjuvants are not principal ingredients, the court found that the dyeing agent played a crucial role in achieving the invention’s objectives, as outlined in the patent specification. This distinguished the present case from precedents like UPL, where the omitted component (stabilizer) was non-essential.

The court applied the Doctrine of Equivalents but concluded that the absence of the dyeing agent was not a trivial variation. Unlike Sotefin, where omitted elements were deemed non-essential by scientific advisors, the dyeing agent’s role in the suit patent was integral to its claimed advantages. Similarly, unlike SNPC, where the core function was achieved despite a variation, the absence of the dyeing agent undermined the suit patent’s objective of visible application. The court emphasized that determining the essentiality of the dyeing agent required a full trial, as both parties had submitted conflicting expert reports and scientific journals.

On the validity of the suit patent, the court declined to delve into the defendants’ counterclaim at the interim stage, given its finding of non-infringement. The court noted that patent validity, involving complex issues of novelty and inventive step, should be tested at trial. The court’s prima facie view was that the defendants’ products did not infringe the suit patent due to the absence of the dyeing agent, and material questions raised by the defendants warranted a full trial.

The court assessed the balance of convenience, finding it in favor of the defendants. Granting an injunction would cause undue hardship to the defendants by halting their business operations, while the plaintiff could be compensated through damages if it succeeded at trial. The court also considered the potential for irreparable injury, concluding that the plaintiff had not demonstrated that monetary compensation would be inadequate.

Final Decision:  The court dismissed the plaintiff’s application for an interim injunction (I.A. 5255/2024) on May 7, 2025. However, it directed the defendants to maintain complete accounts of the manufacture and sale of the impugned products ("RACER," "Trophy," and "Jodi No.1") and file half-yearly statements of accounts. The court clarified that its observations were solely for the purpose of deciding the interim application and would not affect the final outcome of the suit or counterclaim. The suit, counterclaim, and other pending applications were listed before the Joint Registrar on July 30, 2025.

Law Settled in this Case:  This case reinforces several key principles in patent law, particularly in the context of interim injunctions:

Essentiality of Claimed Elements: In patent infringement disputes, the court must assess whether all elements of the patent’s claims are present in the allegedly infringing product. If an explicitly claimed element is absent, the court will evaluate its essentiality to determine infringement.

Doctrine of Equivalents: The Doctrine of Equivalents applies only when omitted elements are non-essential or perform substantially the same function in substantially the same way. If an omitted element is integral to the invention’s objectives, infringement cannot be established.

Case Title: Crystal Crop Protection Limited Vs Safex Chemicals India Limited:Date of Order:May 7, 2025:Case No.CS(COMM) 196/2024:Neutral Citation:2025:DHC:3382:Name of Court:High Court of Delhi:Name of Hon'ble Judge:Mr. Justice Amit Bansal

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

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

Aloys Wobben Vs Yogesh Mehra

Introduction:The case of Dr. Aloys Wobben and Another vs. Yogesh Mehra and Others is a landmark judgment delivered by the Supreme Court of India on June 2, 2014. It addresses critical issues in patent law, particularly concerning the interplay between revocation petitions filed before the Intellectual Property Appellate Board (IPAB) and counter-claims for revocation filed in response to patent infringement suits before a High Court. The case delves into the interpretation of Section 64 of the Patents Act, 1970, and the procedural propriety of pursuing multiple remedies simultaneously to challenge the validity of a patent. The judgment clarifies the legal position on whether a party can pursue both a revocation petition and a counter-claim concurrently and establishes principles to avoid multiplicity of proceedings, thereby ensuring judicial efficiency and fairness.

Detailed Factual Background:Dr. Aloys Wobben, a scientist-engineer and the first appellant, is renowned for his contributions to wind turbine generators and wind energy converters. He holds approximately 2,700 patents across more than 60 countries, including about 100 in India. Wobben Properties GmbH, the second appellant, acquired the rights to Dr. Wobben’s Indian patents and designs through an assignment agreement dated January 5, 2012. Dr. Wobben is also involved in manufacturing wind turbines through Enercon GmbH, a company among the top three global manufacturers in this field, operating in 27 countries with over 8,000 employees.

In India, Dr. Wobben conducted his manufacturing operations through a joint venture with Yogesh Mehra and Ajay Mehra (respondents nos. 1 and 2), forming Enercon India Limited (respondent no. 3), later renamed Wind World (India) Limited. Established in 1994, this joint venture operated under intellectual property license agreements granted by Dr. Wobben, with the last agreement executed on September 29, 2006, superseding prior agreements from 1994 and 2000. Enercon GmbH terminated this agreement on December 8, 2008, citing non-fulfillment of obligations by Enercon India Limited.

Despite the termination, the respondents continued to use Dr. Wobben’s patented technology, prompting allegations of unauthorized exploitation of intellectual property. In response, Enercon India Limited filed 19 revocation petitions in January 2009 before the IPAB under Section 64(1) of the Patents Act, seeking to revoke Dr. Wobben’s patents. Subsequently, Dr. Wobben initiated multiple patent infringement suits against the respondents, starting with the first suit on July 27, 2009, followed by additional suits filed between October 2009 and July 2010. In response to these suits, the respondents filed counter-claims seeking revocation of the same patents, and later filed four additional revocation petitions before the IPAB in 2010 and 2011.

The simultaneous pursuit of revocation petitions and counter-claims led to a complex legal dispute, with some revocation petitions being resolved by the IPAB while others remained pending. The respondents’ actions raised questions about the permissibility of pursuing multiple remedies for the same purpose, the jurisdiction of the IPAB versus the High Court, and the procedural propriety of such parallel proceedings.

Detailed Procedural Background:The procedural history of the case is intricate, reflecting the multiplicity of legal actions initiated by both parties. In January 2009, Enercon India Limited filed 19 revocation petitions before the IPAB, challenging the validity of Dr. Wobben’s patents. In response, Dr. Wobben filed a series of patent infringement suits before the Delhi High Court, beginning with suit no. 1349 of 2009 on July 27, 2009. Additional suits (nos. 1963, 1967, and 1968 of 2009) were filed on October 20, 2009, followed by suit no. 176 of 2010 on January 28, 2010, suit no. 1305 of 2010 on July 2, 2010, and suit no. 1333 of 2010 on July 5, 2010, totaling ten infringement suits.

In response to these suits, the respondents filed counter-claims seeking revocation of the patents in question. For instance, a counter-claim was filed on September 9, 2009, in suit no. 1349 of 2009, on January 30, 2010, in suit no. 1963 of 2009, and on April 30, 2010, in suit no. 176 of 2010. Additionally, the respondents filed four more revocation petitions before the IPAB in 2010 and 2011, further complicating the proceedings.

On September 1, 2010, the Delhi High Court passed a consent order consolidating the infringement suits and counter-claims for expedited trial, with the parties agreeing to a schedule for pleadings, document filing, and evidence recording. Despite this, the respondents continued pursuing their revocation petitions before the IPAB, resulting in orders revoking six of Dr. Wobben’s patents, which were also under consideration in the counter-claims before the High Court.

Dr. Wobben appealed to the Supreme Court, challenging the High Court’s handling of the case and arguing that the respondents’ simultaneous pursuit of revocation petitions and counter-claims was legally impermissible. The Supreme Court was tasked with resolving the legal and procedural issues arising from these parallel proceedings.

Issues Involved in the Case:The case presented several critical issues for adjudication, primarily centered on the interpretation of the Patents Act, 1970, and the procedural propriety of pursuing multiple remedies to challenge a patent’s validity. The key issues were:

Permissibility of Simultaneous Remedies: Whether a party, as “any person interested” under Section 64(1) of the Patents Act, can simultaneously pursue a revocation petition before the IPAB and a counter-claim for revocation in a patent infringement suit before the High Court?

Jurisdictional Conflict: Whether the filing of a counter-claim in a High Court ousts the IPAB’s jurisdiction to adjudicate a revocation petition concerning the same patent, and vice versa?

Interpretation of Section 64: Whether the use of the word “or” in Section 64(1) indicates that the remedies of filing a revocation petition and a counter-claim are mutually exclusive, preventing a party from pursuing both concurrently?

Consent Order’s Binding Nature: Whether the consent order dated September 1, 2010, consolidating the suits and counter-claims before the High Court, precluded the respondents from pursuing revocation petitions before the IPAB?

Appellants’ Submissions (Dr. Aloys Wobben and Wobben Properties GmbH): The appellants, represented by learned counsel, advanced several arguments to challenge the respondents’ simultaneous pursuit of revocation petitions and counter-claims:

Exclusive Jurisdiction of High Court: The appellants contended that once a counter-claim for revocation is filed in response to an infringement suit, the High Court assumes exclusive jurisdiction to determine the patent’s validity. They argued that the IPAB, as an administrative tribunal, lacks the authority to adjudicate the same issue once a counter-claim is pending before a superior forum like the High Court.

Disjunctive Nature of “Or” in Section 64(1): The appellants emphasized that the word “or” in Section 64(1) indicates that the remedies of filing a revocation petition and a counter-claim are mutually exclusive. They argued that a party must choose one remedy, and pursuing both simultaneously could lead to conflicting decisions, undermining judicial consistency.

Subservience of Section 64: The appellants highlighted that Section 64 is prefaced with “Subject to the provisions contained in this Act,” making it subservient to other provisions, such as Section 25(2), which governs post-grant opposition. They argued that if a party has initiated proceedings under Section 25(2), they cannot subsequently file a revocation petition or counter-claim under Section 64(1).

Res Judicata and Procedural Bar: The appellants invoked principles akin to res judicata, arguing that once a party files a revocation petition, they cannot file a counter-claim on the same grounds, and vice versa. They relied on Section 10 and Section 151 of the Code of Civil Procedure, 1908 (CPC), to assert that parallel proceedings on the same cause of action should be stayed to prevent abuse of process.

Consent Order’s Binding Effect: The appellants pointed to the consent order dated September 1, 2010, where the respondents agreed to consolidate the suits and counter-claims before the High Court. They argued that the respondents’ continued pursuit of revocation petitions before the IPAB violated this agreement and constituted an abuse of judicial process.

Analogy with Trade Marks Act: The appellants drew a parallel with Section 124 of the Trade Marks Act, 1999, which allows courts to stay infringement suits pending rectification proceedings before the IPAB. They argued that the absence of a similar provision in the Patents Act implies that parallel proceedings should not be permitted, and the High Court’s jurisdiction should prevail.

Respondents’ Submissions (Yogesh Mehra, Ajay Mehra, and Enercon India Limited):The respondents, defending their actions, presented counter-arguments to justify their pursuit of both revocation petitions and counter-claims:

Independent Remedies under Section 64(1): The respondents argued that Section 64(1) provides two independent remedies—filing a revocation petition before the IPAB and a counter-claim in an infringement suit—without explicitly prohibiting their simultaneous pursuit. They contended that the word “or” does not necessarily imply mutual exclusivity and that both remedies could be pursued to protect their interests.

IPAB’s Statutory Jurisdiction: The respondents asserted that the IPAB, established under the Patents Act, has statutory jurisdiction to adjudicate revocation petitions under Section 64(1). They argued that the filing of a counter-claim in the High Court does not oust the IPAB’s jurisdiction, as both fora are competent to address patent validity.

No Procedural Bar: The respondents contended that neither the Patents Act nor the CPC explicitly bars a party from pursuing both a revocation petition and a counter-claim. They argued that their actions were within the legal framework, as the revocation petitions were filed before most infringement suits, giving them precedence.

Broader Remedial Scope of Revocation Petitions: The respondents highlighted that revocation petitions offer broader remedial avenues, including appeals and reviews, compared to counter-claims, which are limited to the High Court’s adjudication. They argued that restricting them to counter-claims would curtail their statutory rights.

Consent Order’s Scope: The respondents maintained that the consent order of September 1, 2010, was limited to consolidating the suits and counter-claims for procedural convenience and did not preclude them from pursuing revocation petitions before the IPAB, which were already pending.

Detailed Discussion on Judgments and Citations:The Supreme Court’s judgment extensively analyzed the provisions of the Patents Act and drew upon legal principles to resolve the issues. While the judgment did not cite specific case law, it relied on statutory provisions and procedural principles to arrive at its conclusions. The key provisions and their contexts are discussed below:

Section 64 of the Patents Act, 1970:Context: Section 64(1) allows a patent to be revoked by the IPAB on a petition by “any person interested” or the Central Government, or by the High Court on a counter-claim in an infringement suit. The appellants argued that the word “or” indicates mutual exclusivity, while the respondents contended that both remedies could be pursued.Court’s Analysis: The Court held that the word “or” is disjunctive, meaning a party cannot simultaneously pursue both a revocation petition and a counter-claim for the same patent. The prefatory phrase “Subject to the provisions contained in this Act” was interpreted to make Section 64 subservient to other provisions, such as Section 25(2), which governs post-grant opposition.

Section 25 of the Patents Act, 1970:Context: Section 25(1) allows “any person” to oppose a patent application before its grant, while Section 25(2) permits “any person interested” to oppose a granted patent within one year of publication. The appellants argued that Section 25(2) proceedings eclipse subsequent Section 64(1) remedies.Court’s Analysis: The Court clarified that if a party initiates proceedings under Section 25(2), they cannot later file a revocation petition or counter-claim under Section 64(1) for the same patent. This ensures that the patent’s validity is finalized through the opposition process before further challenges are raised.

Section 104 of the Patents Act, 1970:Context: Section 104 provides that infringement suits and counter-claims for revocation must be filed before the High Court. The appellants relied on this to argue that counter-claims take precedence over IPAB proceedings.Court’s Analysis: The Court affirmed that counter-claims are adjudicated by the High Court, a superior forum, but clarified that the timing of proceedings determines which remedy prevails. If a revocation petition is filed before an infringement suit, the counter-claim is barred, and vice versa.

Section 10 and Section 151 of the Code of Civil Procedure, 1908:Context: Section 10 allows courts to stay suits where the same issue is pending in a previously instituted suit, while Section 151 preserves the court’s inherent powers to prevent abuse of process. The appellants invoked these provisions to argue that parallel proceedings should be stayed.Court’s Analysis: The Court applied these principles analogously, treating a counter-claim as a suit and holding that a subsequently filed revocation petition or counter-claim on the same cause of action is barred, akin to res judicata, to prevent multiplicity of proceedings.

Section 124 of the Trade Marks Act, 1999:Context: Section 124 allows courts to stay trademark infringement suits pending rectification proceedings before the IPAB. The appellants argued that the absence of a similar provision in the Patents Act implies that parallel proceedings are not contemplated.

Court’s Analysis: The Court noted this analogy but did not rely on it, as the Patents Act’s framework was deemed sufficient to resolve the issue. The Court’s focus remained on harmonizing Section 64 with other provisions to avoid conflicting outcomes.

Detailed Reasoning and Analysis of Judge:The Supreme Court, presided over by Justices Jagdish Singh Khehar and A.K. Patnaik, provided a comprehensive analysis of the legal and procedural issues, grounding its reasoning in statutory interpretation, procedural fairness, and judicial efficiency. The key aspects of the Court’s reasoning are:

Interpretation of Section 64(1):The Court emphasized that the prefatory phrase “Subject to the provisions contained in this Act” renders Section 64 subservient to other provisions, such as Section 25(2). This implies that if a party has initiated post-grant opposition under Section 25(2), they cannot pursue revocation under Section 64(1), ensuring a sequential approach to patent challenges.The word “or” in Section 64(1) was interpreted as disjunctive, meaning a party must choose between filing a revocation petition or a counter-claim. The Court reasoned that allowing both remedies simultaneously could lead to conflicting decisions, undermining judicial consistency and fairness.

Timing of Proceedings:The Court introduced a temporal framework to determine which remedy prevails:If a revocation petition is filed before an infringement suit, the counter-claim is barred, as the issue is already under adjudication before the IPAB.

If an infringement suit is filed first, followed by a counter-claim, a subsequent revocation petition is barred, as the High Court assumes jurisdiction over the revocation issue.This approach was grounded in the principle of res judicata, analogized through Section 10 of the CPC, which prevents parallel proceedings on the same cause of action.

Jurisdictional Harmony:The Court rejected the appellants’ argument that the High Court’s jurisdiction is inherently superior to the IPAB’s. Instead, it held that both fora have statutory jurisdiction under the Patents Act, and the choice of remedy depends on the timing of initiation. This ensured that neither forum’s authority was undermined, while preventing abuse of process.

Consent Order’s Validity:The Court upheld the consent order of September 1, 2010, as a procedural agreement that streamlined adjudication before the High Court. It reasoned that such agreements, being consensual and within the High Court’s jurisdiction, are valid and binding, especially when they promote judicial efficiency by consolidating related disputes.

Judicial Efficiency and Procedural Fairness:The Court underscored the importance of avoiding multiplicity of proceedings to prevent conflicting outcomes and conserve judicial resources. By limiting parties to a single remedy, the Court ensured that the patent’s validity is adjudicated in one forum, reducing the risk of contradictory rulings.The application of CPC principles (Sections 10 and 151) reinforced the Court’s commitment to preventing abuse of process, treating counter-claims as independent suits subject to procedural constraints.

Practical Considerations:The Court acknowledged the complexity of the case, with 19 revocation petitions, 10 infringement suits, and multiple counter-claims. It encouraged parties to consensually resolve disputes before a single forum, as reflected in the consent order, to simplify adjudication and reduce litigation burdens.

Final Decision:The Supreme Court set aside the impugned order of the Delhi High Court and disposed of the appeal with the following conclusions: Eclipse by Section 25(2) Proceedings: If a party initiates post-grant opposition under Section 25(2), they cannot file a revocation petition or counter-claim under Section 64(1) for the same patent.Revocation Petition Precedes Counter-Claim: If a revocation petition is filed before an infringement suit, the counter-claim is barred, and the IPAB retains jurisdiction to adjudicate the revocation.Counter-Claim Precedes Revocation Petition: If a counter-claim is filed in response to an infringement suit, a subsequent revocation petition is barred, and the High Court adjudicates the revocation.Consent Order Upheld: The consent order of September 1, 2010, consolidating suits and counter-claims before the High Court, was affirmed as a valid procedural agreement.Single Remedy Principle: A party cannot pursue both Patent revocation petition and a counter-claim seeking revocation of Patent simultaneously under Section 64(1), as the remedies are mutually exclusive.The Court directed that the proceedings be governed by these principles, ensuring that only one remedy is pursued based on the timing of initiation, and affirmed the parties’ ability to consensually choose a single forum for adjudication.

Law Settled in the Case:The judgment settled several important principles in Indian patent law:

Mutual Exclusivity of Remedies under Section 64(1): The remedies of filing a revocation petition and a counter-claim under Section 64(1) are mutually exclusive, and a party must choose one based on the timing of proceedings.

Subservience of Section 64: Section 64 is subservient to other provisions of the Patents Act, particularly Section 25(2), which takes precedence if initiated first.

Temporal Priority: The forum for adjudicating patent revocation depends on whether a revocation petition or an infringement suit (with a counter-claim) was filed first, preventing parallel proceedings.

Res Judicata in Patent Disputes: Principles akin to res judicata apply to patent revocation proceedings, barring subsequent challenges on the same cause of action in a different forum.

Consent Orders for Procedural Efficiency: Parties can consensually agree to resolve patent disputes before a single forum, and such agreements are binding, provided they align with statutory jurisdiction.

Prevention of Abuse of Process: The judiciary has the authority to streamline proceedings to avoid multiplicity and ensure judicial efficiency, drawing on CPC principles where necessary.

Case TitleDr. Aloys Wobben and Another vs. Yogesh Mehra and Others:Date of Order June 2, 2014:Case No. Civil Appeal No. 6718 of 2013:Neutral Citation AIR 2014 SC 2210, (2014) 15 SCC 360 :Name of Court: Supreme Court of India:Name of Hon'ble Judge Justice Jagdish Singh Khehar and Justice A.K. Patnaik

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

Maheshbhai Hajibhai Sojitra Vs. Babu Lime Private Limited

Introduction: This case pertains to a civil revision application filed by Maheshbhai Hajibhai Sojitra, proprietor of Siddhi Lime, challenging an order passed by the 7th Additional District Judge, Rajkot, in a trademark suit. The core issue revolves around the jurisdiction of the court to entertain the suit, specifically whether the Commercial Court had exclusive jurisdiction based on the nature and valuation of the dispute. The case highlights the nuances of jurisdictional jurisdiction under the Commercial Courts Act, 2015, and the applicability of Order VII Rule 11 CPC in dismissing plaints. The recent order by the Gujarat High Court involves a correction of a previous judgment, underscoring the importance of accurate citations and proper procedural considerations.

Detailed Factual Background: The plaintiff, Maheshbhai Hajibhai Sojitra, filed a suit for permanent injunction, claiming infringement of trademark, passing off, and copyright. The plaint sought to restrain the defendant, Babu Lime Private Limited, from manufacturing, marketing, and selling edible lime using a deceptively similar trademark ‘SIDDHI’, along with reproduction of artistic work representing copyright infringement. The plaintiff asserted that the defendant’s use of the mark and artistic work was an imitation of the plaintiff’s registered copyright and trademark rights. The reliefs included permanent injunctions, a declaration of exclusive rights over the trademarks ‘BABU’ and ‘DELUXE’, accounts of profits, and damages with interest.

Procedural Background: The defendant moved an application under Order VII Rule 11 CPC to reject the plaint on the ground that the suit did not fall within the jurisdiction of the Commercial Court, primarily because the valuation of the suit was below Rs. 3 lakhs and the dispute did not satisfy the statutory criteria for a commercial dispute as per Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. The Trial Court rejected this application, holding that the suit was maintainable in the regular civil jurisdiction. The defendant challenged this order through a civil revision application before the High Court. The High Court, upon re-examining the case, noted that an omission had occurred in citing relevant legal authorities, which was later rectified by the court’s order dated 01/05/2025, citing a pivotal judgment, MANU/KA/1066/2024. The court then modified its earlier judgment accordingly.

Issues Involved in the Case: The primary issue concerned whether the civil suit was maintainable within the jurisdiction of a commercial court, specifically whether the dispute qualified as a ‘commercial dispute’ under Section 2(1)(c) of the Commercial Courts Act, and whether its valuation exceeded Rs. 3 lakhs? The second issue was whether the application under Order VII Rule 11 CPC should have been allowed, leading to rejection of the plaint on the grounds of non-compliance with jurisdictional and valuation criteria?

Parties' Detailed Submissions: The petitioner contended that the dispute fell squarely within the domain of Section 2(1)(xvii) of the Commercial Courts Act, as it involved infringement of trademarks and copyright related to goods valued above Rs. 3 lakhs. He argued that the defendant under-valued the claim just to keep the suit within the ordinary jurisdiction, which was outside the legislative intent of the law. Relying on judgments such as 2022 (0) AIJEL – 7000 and an unreported judgment from Karnataka High Court in Civil Revision Application No.426 of 2023, he submitted that the commercial court’s jurisdiction was barred only if both the nature of dispute and its valuation met the statutory conditions, which it did. He further emphasized that the defendant’s argument about the suit’s valuation was unfounded since the plaintiff’s initial valuation was above the threshold.

The respondent, Babu Lime Pvt. Ltd., argued that the suit was not a ‘commercial dispute’ as per the definition, and the valuation was less than Rs. 3 lakhs, which should limit the jurisdiction to the ordinary civil courts. Their advocate relied on established legal principles, including the Supreme Court’s judgment in Vishal Pipes and the Karnataka High Court decision in Kirloskar Aaf Limited v. American Air Filters Company Inc., to assert that the discretion to choose the forum rested solely with the plaintiff and that the defendant could not insist on a specific court unless jurisdiction was lacking.

Discussion of Judgments and Their Citations: The High Court’s order of 01/05/2025 referenced the Karnataka High Court judgment in Kirloskar Aaf Limited v. American Air Filters Company Inc., which clarified that the two essential criteria for jurisdiction under the Commercial Courts Act are the existence of a ‘commercial dispute’ as per Section 2(c) and a minimum pecuniary threshold of Rs. 3 lakhs. The court also relied on the judgment in Vishal Pipes, which underscored that a suit involving intellectual property rights can qualify as a ‘commercial dispute’ if it involves commercial transactions and the valuation exceeds the stipulated amount. The cited case MANU/KA/1066/2024 clarified the importance of proper citation and what constitutes a ‘commercial dispute’.

Further, the court noted that the legislative intent behind the Commercial Courts Act was to establish a specialized forum for disputes of a certain value, and that the valuation and nature must be analyzed in conjunction to determine jurisdiction. It reaffirmed that the plaintiff’s valuation, if properly documented, could not be disregarded solely on the basis of under-valuation by the defendant, and that the court must rely on the contents of the plaint and statutory provisions.

Reasoning and Analysis by the Judge: The Judge emphasized that jurisdictional questions must be approached holistically, considering both the nature of the dispute and the valuation as per Section 12 of the Commercial Courts Act. The court acknowledged the principles laid down in the judgments cited by both parties but noted a potential oversight regarding the citation of legal authorities in the previous order. The court, therefore, corrected the omission and held that the initial order was based on a thorough judicial appreciation of the facts and applicable law. It observed that the essential question was whether the suit involved a ‘trade dispute’ of the kind envisaged under the law and whether it pertained to goods or intellectual property valued above Rs. 3 lakhs.

The court found that the plaintiff’s claims regarding copyright infringement and trademark violations, coupled with the valuation, clearly qualified the dispute as a ‘commercial dispute’. Consequently, the application under Order VII Rule 11, which sought to reject the plaint for lack of jurisdiction, was not justified. The order of the Trial Court was thus set aside, and the suit was allowed to proceed in the appropriate forum.

Final Decision: The High Court, upon considering all aspects, dismissed the application for rejection under Order VII Rule 11 CPC, holding that the suit was properly maintainable within the jurisdiction of a commercial court. The earlier rejection of the suit was set aside, and the judgment was modified accordingly, with clarification on the importance of proper citation and legal referencing. The case was remanded for further proceedings on merits.

Law Settled in This Case: This case reaffirmed the legal proposition that in cases involving intellectual property rights and commercial disputes, the jurisdiction of the commercial courts depends on both the nature of the dispute and the valuation. The twin requirements must be satisfied for the court to entertain the commercial suit, and mere undervaluation by the defendant does not automatically bar the suit if the plaintiff’s valuation and statement of facts qualify under the statutory criteria. It also clarified the importance of precise legal citations and the need for courts to rely on established judgments for clarity in legal proceedings.

Case Title: Maheshbhai Hajibhai Sojitra vs Babu Lime Private Limited: Date of Order: 01/05/2025: Case Number: R/CRA/447/2023: Neutral Citation: 2025:GUJHC:24876: Name of Court: High Court of Gujarat at Ahmedabad: Name of Judge: Hon’ble Mr. Justice Sanjeev J. Thaker: 

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

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