M. Rangaiah Naidu Vs Abdul Kareem Khan

Impact of Subsequent Events on Pendency of Appeal

Introduction: The case of M. Rangaiah Naidu (Died) By L.Rs. v. Abdul Kareem Khan And Ors. [1992 (1) ALT 336], decided by the Andhra Pradesh High Court on November 3, 1989, before Justice Radha Krishna Rao, is a significant ruling in the domain of rent control law, addressing the interplay between eviction proceedings for wilful default and subsequent events affecting the landlord’s title. The case arose from a revision petition challenging the eviction of a tenant from a non-residential premises owned by a usufructuary mortgagee, ordered due to non-payment of rent. The tenants argued that a subsequent decree for redemption of the mortgage extinguished the landlord’s right to pursue eviction. The court’s dismissal of the revision petition clarifies the principles governing wilful default, the consideration of subsequent events in rent control cases, and the legal obligations of mortgagees upon redemption.

Detailed Factual Background: The premises in question was a non-residential building located on Park Street, Pakala, originally owned by Syed Ahmed Saheb. On October 2, 1952, Syed Ahmed Saheb executed a usufructuary mortgage in favor of the respondents (landlords), as evidenced by Exhibit A-1. The landlords claimed they leased the premises to M. Rangaiah Naidu in April 1965 on a monthly rent of Rs. 25, payable on the first of each succeeding month. The tenant, M. Rangaiah Naidu, contended that despite the mortgage, Syed Ahmed Saheb and his family remained in possession until April 1965, when the premises was leased to him by Subhan Khan, a relative of Syed Ahmed Saheb, at Rs. 24 per month. The tenant claimed to have paid rent to Subhan Khan until March 1972.

The landlords filed an eviction petition before the Rent Controller, alleging wilful default in rent payment from June 1973 to June 1979. They relied on Exhibit A-5, a judgment in O.S. No. 527 of 1976, which confirmed a landlord-tenant relationship and decreed arrears of rent, and E.P. 126/79, an execution proceeding for rent up to May 30, 1979. The Rent Controller accepted the landlords’ plea, rejecting the tenant’s claim that Subhan Khan was the lessor, and ordered eviction. M. Rangaiah Naidu died during the appellate stage, and his legal representatives (L.Rs.) were impleaded as revision petitioners. Before the Appellate Authority, the tenants raised subsequent events: the heirs of Syed Ahmed Saheb filed O.S. No. 578 of 1982 for redemption of the mortgage against the landlords and the tenant, which was decreed on September 12, 1986. The tenants, as defendants 5 to 7 in that suit, filed an appeal (A.S. No. 20 of 1987) and obtained a stay of the redemption decree, conditional on depositing rent. Neither the mortgagor nor the mortgagee appealed the redemption decree.

Detailed Procedural Background: The landlords initiated eviction proceedings before the Rent Controller under the Andhra Pradesh Buildings (Lease and Rent Control) Act, 1960, citing wilful default. The Rent Controller, after examining evidence including Exhibit A-5 and E.P. 126/79, found a landlord-tenant relationship between the mortgagees and the tenant, confirmed the default from June 1973 to June 1979, and ordered eviction. The tenant appealed to the Appellate Authority, where M. Rangaiah Naidu’s death led to his L.Rs. being impleaded. The tenants introduced the redemption decree from O.S. No. 578 of 1982 at the appellate stage, arguing it extinguished the landlords’ title. The Appellate Authority held that the subsequent events did not alter the tenants’ default or the landlords’ right to eviction, affirming the Rent Controller’s order. The tenants filed a revision petition before the Andhra Pradesh High Court, represented by Mr. P.S. Narayana, challenging the concurrent findings. On November 3, 1989, Justice Radha Krishna Rao heard the revision petition and dismissed it, granting time for eviction until December 31, 1989.

Issues Involved in the Case: The case raised the following issues for determination:Whether the court could take cognizance of subsequent events in rent control proceedings and mould relief accordingly?

Petitioners submission: Represented by Mr. P.S. Narayana, the tenants argued that the eviction order was unsustainable due to subsequent events, particularly the redemption decree in O.S. No. 578 of 1982, which directed the mortgagee-landlords to deliver vacant possession to the mortgagor. They contended that upon redemption, the mortgagees’ title and right to continue eviction proceedings ceased, rendering the tenants trespassers rather than tenants, as per Section 74 of the Transfer of Property Act, 1882. The tenants claimed they paid rent to Subhan Khan until March 1972, believing him to be the lessor, and disputed the landlord-tenant relationship with the mortgagees. They argued that the stay of the redemption decree in A.S. No. 20 of 1987, conditional on rent deposits, further complicated the landlords’ claim. Citing precedents like Pasupuleti Venkateshwarlu v. Motor & General Traders and Kommera Mallaiah v. Yarlagadda Mahalakshmamma, the tenants urged the court to consider the redemption decree as a subsequent event that nullified the basis for eviction, asserting that the mortgagees lacked locus standi to enforce the eviction order.

Respondents submission:The landlords, represented by counsel (not named in the judgment), maintained that the tenant’s wilful default from June 1973 to June 1979 was established by the Rent Controller and Appellate Authority, supported by the decree in O.S. No. 527 of 1976 and execution in E.P. 126/79. They argued that a landlord-tenant relationship existed, as the mortgagees leased the premises to M. Rangaiah Naidu in April 1965, and the tenant’s claim of paying rent to Subhan Khan was rightly rejected. The landlords contended that the redemption decree did not extinguish their right to evict for prior default, as the default occurred during their lawful possession as mortgagees. They asserted that the tenants, as parties to the redemption suit, could not evade liability for default, and the stay in A.S. No. 20 of 1987 did not alter the eviction order’s validity. The landlords emphasized their obligation to deliver vacant possession post-redemption, which aligned with enforcing the eviction order, and cited the tenants’ failure to pay rent as a basis for upholding the lower courts’ findings.

Detailed Discussion on Judgments and Citations: The court relied on several precedents to address the consideration of subsequent events and the effect of mortgage redemption on tenancy rights. Below is a detailed discussion of each judgment, its citation, and its context:

Pasupuleti Venkateshwarlu v. Motor & General Traders, AIR 1975 SC 1409: Cited by the tenants, this Supreme Court decision, authored by Justice Krishna Iyer, held that courts must take cognizance of subsequent events to ensure just and meaningful remedies, provided fairness is maintained. The tenants used it to argue that the redemption decree altered the landlords’ title. The court applied this principle to consider the redemption decree but found it did not negate the eviction basis.

Kommera Mallaiah v. Yarlagadda Mahalakshmamma, 1980 (2) ALT 134: Cited by the tenants, this Andhra Pradesh High Court ruling held that a life estate holder lost locus standi to pursue eviction after a partition assigned the premises to another. The tenants argued it supported their claim that the mortgagees lost standing post-redemption. The court distinguished this case, as the mortgagees’ right to evict arose from prior default, not extinguished by redemption.

Ram Das v. Ishwar Chander, AIR 1988 SC 1422:Cited by the court, this Supreme Court decision reaffirmed that courts can mould relief based on subsequent events in rent control cases. The court used it to justify considering the redemption decree but held it supported the landlords’ right to vacant possession.

Gopalkrishna v. G. Satyanarayana, 1984 (1) ALT 56: Cited by the court, this Andhra Pradesh High Court ruling, authored by Justice Rama Rao, held that events nullifying the basis for eviction can be considered. The court applied this to assess the redemption decree’s impact but found it reinforced the eviction order.

Alagiriswami Mudali v. Akkulu Naidu, AIR 1921 Madras 393: Cited by the court, this Madras High Court decision held that a lease created by a mortgagee terminates upon redemption, rendering the tenant a trespasser unless a new tenancy arises. The court used it to clarify that the tenants’ status post-redemption did not absolve their prior default.

S.V. Venkatarama Reddiar v. Abdul Ghani Rowther, AIR 1980 Mad 276: Cited by the court, this Madras High Court Full Bench decision held that tenants of urban property leased by a usufructuary mortgagee are not protected under the Tamil Nadu Buildings (Lease and Rent Control) Act post-redemption, per Section 76(a) of the Transfer of Property Act. The court applied this to limit the tenants’ protection, reinforcing the eviction order.

Sachalmal Parasram v. Mst Ratanbai, AIR 1972 SC 637: Cited by the court, this Supreme Court decision clarified that Section 76(a) applies primarily to agricultural lands, not urban properties, limiting the binding effect of a mortgagee’s lease post-redemption. The court used it to hold that the tenants’ lease did not survive redemption, supporting the landlords’ claim for vacant possession.

Detailed Reasoning and Analysis of Judge: Justice Radha Krishna Rao’s reasoning centered on balancing the established wilful default with the impact of the redemption decree as a subsequent event. The court affirmed the Rent Controller and Appellate Authority’s findings of wilful default from June 1973 to June 1979, supported by the decree in O.S. No. 527 of 1976 and execution in E.P. 126/79, which confirmed the landlord-tenant relationship and rejected the tenants’ claim of paying rent to Subhan Khan. The court emphasized that the default was crystallized into a decree, making subsequent rent payments irrelevant, as the arrears had legal consequences.

Addressing the tenants’ reliance on subsequent events, the court accepted the principle from Pasupuleti Venkateshwarlu and Ram Das that courts can consider post-proceeding developments to mould relief, provided fairness is maintained. The redemption decree in O.S. No. 578 of 1982, directing the mortgagees to deliver vacant possession to the mortgagor upon payment of Rs. 5,000, was a significant event. However, the court held it did not extinguish the landlords’ right to evict for prior default, as the default occurred during their lawful possession as mortgagees. Citing Alagiriswami Mudali and Sachalmal Parasram, the court noted that a mortgagee’s lease terminates upon redemption, rendering the tenant a trespasser unless a new tenancy is created. For urban properties, S.V. Venkatarama Reddiar clarified that tenants lack protection under rent control laws post-redemption, limiting the tenants’ defense.

The court rejected the tenants’ argument that the mortgagees lost locus standi, distinguishing Kommera Mallaiah, as the mortgagees’ eviction right stemmed from a valid default during their tenure. The stay in A.S. No. 20 of 1987, obtained by the tenants, did not alter the redemption decree’s effect, as neither the mortgagor nor mortgagee appealed. The court reasoned that the mortgagees’ obligation to deliver vacant possession aligned with enforcing the eviction order, as the tenants’ default necessitated their removal. The tenants’ participation in the redemption suit as defendants 5 to 7 further bound them to the decree’s consequences, including their liability for default. The court concluded that the lower courts’ reasoning was sound, as the wilful default was incurable, and the redemption decree reinforced the landlords’ right to vacant possession.

Final Decision: On November 3, 1989, the Andhra Pradesh High Court dismissed the revision petition in M. Rangaiah Naidu (Died) By L.Rs. v. Abdul Kareem Khan And Ors., upholding the eviction order for wilful default. The court granted the tenants until December 31, 1989, to vacate the premises and deliver vacant possession to the landlords. No costs were awarded.

Law Settled in the Case: The case clarified several principles in rent control and property law:Wilful Default in Rent Payment: Non-payment of rent over an extended period, confirmed by a civil court decree, constitutes wilful default under rent control laws, justifying eviction, and subsequent payments do not cure the default.Subsequent Events in Rent Control Cases: Courts can take cognizance of events , during the pendency of Appeal, post-dating the eviction petition, such as a redemption decree, to mould relief, ensuring justice aligns with current realities, per Pasupuleti Venkateshwarlu.Effect of Mortgage Redemption: A usufructuary mortgagee’s lease terminates upon redemption, rendering the tenant a trespasser for urban properties, with limited protection under rent control laws, as per Alagiriswami Mudali and S.V. Venkatarama Reddiar.Mortgagee’s Eviction Rights: A mortgagee-landlord retains the right to evict for defaults occurring during their possession, unaffected by redemption, provided the default is legally established.Tenant’s Liability Post-Redemption: Tenants remain liable for prior defaults, and their status as trespassers post-redemption does not negate eviction orders based on earlier breaches.Interplay of Rent Control and Property Law: The obligation to deliver vacant possession post-redemption aligns with enforcing eviction for default, balancing the mortgagee’s duties and tenant’s obligations.

M. Rangaiah Naidu Vs Abdul Kareem Khan : November 3, 1989: 1992 (1) ALT 336; High Court of Andhra Pradesh: Radha 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

Keshav Kumar Aggarwal Vs NIIT Ltd.

Introduction:  The case of Keshav Kumar Aggarwal v. M/S NIIT Ltd. [CS (OS) No. 2237/2012], decided by the Delhi High Court on March 22, 2013, before Justice Kailash Gambhir, is a significant ruling in Indian trademark law, addressing issues of trademark infringement and passing off. The plaintiff, Keshav Kumar Aggarwal, sought an interim injunction to restrain the defendant, NIIT Ltd., from using the mark "NIIT THE TURNING POINT," alleging it infringed his registered trademark "TURNING POINT" and constituted passing off. The case highlights the protection afforded to registered trademarks with secondary meaning, the importance of prior use, and the principles governing interim injunctions in trademark disputes. The court’s decision to grant the injunction underscores the judiciary’s role in safeguarding distinctive marks against deceptive similarity, even when used by larger entities. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into trademark protection in the educational services sector.

Detailed Factual Background:  The plaintiff, Keshav Kumar Aggarwal, operated an educational institution under the trademark "TURNING POINT" since 1998, providing coaching and training for students in classes VIII to XII and preparing them for competitive entrance exams like BBA, BBS, LAW, IIT, AIEEE, MEDICAL, CFAS, HM, and CPT. The mark was registered under Class 41 (educational services) on November 15, 2005, valid until 2015, as a label mark "TP TURNING POINT." The plaintiff claimed to have coined the mark in 1998, building significant goodwill through high-quality education, with multiple centers in Delhi operated in association with his wife’s sole proprietorship, "Pyramid Classes." The institution was associated with reputed schools like Don Bosco, Apeejay, and Ryan International, and had a strong online presence via its website (www.theturningpoint.com), Facebook, and YouTube lectures. The plaintiff provided sales figures from 1999-2012, showing growth from Rs. 29,00,000 to Rs. 61,06,693, and substantial advertising expenses, claiming the mark had become well-known under Section 2(1)(zg) of the Trade Marks Act, 1999.

In June 2012, the plaintiff discovered that the defendant, NIIT Ltd., a prominent IT education and training company, had launched a computer training program under the name "NIIT THE TURNING POINT." The plaintiff alleged this infringed his registered trademark and constituted passing off by leveraging his goodwill, causing confusion among students. The plaintiff issued a cease-and-desist notice on June 1, 2012, which NIIT denied on June 15, 2012, rejecting claims of infringement or passing off. The plaintiff argued that NIIT’s use of "TURNING POINT" was dishonest, especially since both parties had previously collaborated in 2002 and provided services at Mody School, Rajasthan, suggesting NIIT’s prior knowledge of the plaintiff’s mark. The plaintiff further noted NIIT’s opposition to a third party in Chennai using "TURNING POINT," contradicting its claim that the mark was descriptive.

The defendant, NIIT Ltd., incorporated in 1981 as Pace Education Pvt. Ltd. and renamed NIIT Ltd. in 1990, was a global leader in IT education and software services, operating under the well-known mark "NIIT." NIIT claimed "NIIT THE TURNING POINT" was adopted in May 2012 for a cloud-centric curriculum, arguing the phrase was descriptive and not exclusive to the plaintiff. NIIT’s application to register "NIIT THE TURNING POINT" was pending, and it asserted its mark was distinct due to the prefix "NIIT."

Detailed Procedural Background: The plaintiff filed the suit (CS (OS) No. 2237/2012) in the Delhi High Court in 2012, seeking a permanent injunction, damages, and other reliefs for trademark infringement and passing off, along with an interim injunction application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). The plaintiff was represented by Mr. H.P. Singh and Mr. Navroop Singh, while NIIT was represented by counsel whose identity is not specified in the judgment. The court heard arguments on the interim injunction, focusing on the plaintiff’s registered trademark, NIIT’s use of "NIIT THE TURNING POINT," and the likelihood of confusion. The plaintiff filed documents including the trademark registration certificate, sales and advertising invoices, and school acknowledgments, while NIIT submitted a computer-generated search report and its written statement. On March 22, 2013, Justice Kailash Gambhir delivered the judgment, granting the interim injunction after reserving orders on an unspecified date. The court clarified that its observations were limited to the interim stage, with the suit’s merits to be decided later.

Issues Involved in the Case: The case raised the following issues for determination:Whether the plaintiff’s registered trademark "TURNING POINT" (as part of the label "TP TURNING POINT") was entitled to protection against NIIT’s use of "NIIT THE TURNING POINT" for similar educational services?Whether NIIT’s use of "NIIT THE TURNING POINT" constituted trademark infringement under Section 29 of the Trade Marks Act, 1999, due to deceptive similarity with the plaintiff’s mark? Whether NIIT’s use amounted to passing off by causing confusion or misrepresenting a connection with the plaintiff’s institution?

Plaintiff's submission: The plaintiff argued that "TURNING POINT" was a unique, coined mark adopted in 1998, registered in 2005 under Class 41, and had acquired distinctiveness through continuous use, substantial sales, and advertising. The plaintiff claimed "TURNING POINT" was a well-known mark under Section 2(1)(zg), associated exclusively with his institution, as evidenced by school affiliations, student success, and online presence. He alleged NIIT’s use of "NIIT THE TURNING POINT" infringed his registered mark under Section 29, as it was identical and used for identical services, causing confusion. The plaintiff further argued passing off, claiming NIIT’s use diluted his goodwill and misrepresented a connection, especially given their prior collaboration in 2002 and shared operations at Mody School. The plaintiff highlighted NIIT’s opposition to a Chennai party’s use of "TURNING POINT," exposing its mala fides in claiming the mark was descriptive. Citing precedents like Indian Shaving Products Ltd. v. Gift Pack [1998 PTC (18) 698], Ansul Industries v. Shiva Tobacco Co. [2007 (34) PTC 392 (Del.)], and Godfrey Philips India v. Girnar Foods [(2005) 30 PTC 1 (SC)], the plaintiff urged that long usage conferred secondary meaning, and deceptive similarity warranted an injunction to prevent irreparable loss.

Defendant's submission: NIIT’s counsel argued that the plaintiff’s registration was for the label "TP TURNING POINT," not "TURNING POINT" alone, and under Section 17 of the Trade Marks Act, 1999, no exclusivity applied to the words. NIIT contended that "NIIT THE TURNING POINT" was distinct due to the prefix "NIIT," a well-known mark since 1981, and that "TURNING POINT" was a descriptive, common phrase incapable of monopoly, especially in education. NIIT claimed honest adoption in May 2012 for a cloud-centric course, denying prior knowledge of the plaintiff’s mark or any collaboration at Mody School. It argued no confusion was likely, as its mark emphasized "NIIT," and submitted a search report showing multiple users of "TURNING POINT." NIIT reserved the right to seek rectification of the plaintiff’s registration if needed and cited Skyline Education Institute v. SL Vaswani [2010 (42) PTC 217 (SC)], Marico Ltd. v. Agro Tech Foods Ltd. [MIPR 2010 (3) 0226], and Three-N Products Pvt. Ltd. v. Emami Ltd. [MIPR 2008 (3) 0319] to argue that descriptive marks lack protection absent distinctiveness, and its mark was distinguishable.

Detailed Discussion on Judgments and Citations: The court analyzed several precedents cited by both parties to determine the protectability of the plaintiff’s mark and the likelihood of infringement or passing off. Below is a detailed discussion of each judgment, its citation, and its context:

Indian Shaving Products Ltd. v. Gift Pack, 1998 PTC (18) 698:Cited by the plaintiff, this Delhi High Court decision supported granting injunctions for trademark infringement where the defendant’s mark was deceptively similar, causing confusion. The plaintiff used it to argue that NIIT’s mark was identical and likely to deceive students, warranting protection.

Ansul Industries v. Shiva Tobacco Co., 2007 (34) PTC 392 (Del.):Cited by the plaintiff, this Delhi High Court ruling emphasized that trademark similarity is judged by the impression on an unwary consumer, not a vigilant one, focusing on overall similarity. The court applied this to hold that "NIIT THE TURNING POINT" could confuse students due to its similarity to "TURNING POINT."

Amritdhara Pharmacy v. Satyadeo Gupta, PTC (Suppl) (2) 1 (SC): Cited by the plaintiff, this Supreme Court decision clarified that a mark’s distinctiveness is assessed by its overall impression, not minor differences. The plaintiff argued that "TURNING POINT" was distinctive, and NIIT’s mark was deceptively similar despite the prefix.

Greaves Cotton Ltd. v. Mohammad Rafi & Ors., 2011 (46) PTC 466 (Del.):Cited by the plaintiff, this Delhi High Court case restrained the use of "GREAVES INDIA" due to its similarity to "GREAVES," protecting consumer interests. The court relied on it to find that NIIT’s use could mislead students into believing both marks shared a common origin.

United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 (50) PTC 433 (Del.) (DB):Cited by the plaintiff, this Delhi High Court Division Bench decision held that a label mark’s essential feature (e.g., "ORZID") is protected under Section 17, rejecting claims of non-exclusivity for parts. The court used this to affirm that "TURNING POINT" was protectable as an essential feature of the plaintiff’s label.

ACL Education Centre Pvt. Ltd. v. American Centre for Languages, 2008 (36) PTC 113 (Del.): Cited by the plaintiff, this Delhi High Court ruling granted an injunction for the mark "American Centre for Languages," finding it distinctive due to long use. The court applied this to hold that "TURNING POINT" had acquired secondary meaning through 14 years of use.

Godfrey Philips India v. Girnar Foods, (2005) 30 PTC 1 (SC): Cited by the plaintiff, this Supreme Court decision (reported as Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd., (2004) 5 SCC 257) held that descriptive marks gain protection if they acquire secondary meaning. The court relied on this to find "TURNING POINT" distinctive.

S.P. Chengalvaraya v. Jagannath, AIR 1994 SC 853: Cited by the plaintiff, this Supreme Court judgment denied relief to dishonest litigants. The plaintiff used it to question NIIT’s bona fides, given its Chennai opposition. The court did not directly apply it but noted NIIT’s contradictory stance.

Automatic Electric v. R.K. Dhawan, 1999 PTC (19) 81: Cited by the plaintiff, this Delhi High Court decision supported protecting marks with established goodwill. The plaintiff argued it reinforced his claim to exclusive rights over "TURNING POINT."

Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960] 1 SCR 968: Cited by the plaintiff, this Supreme Court decision (reported as Corn Products v. Shangrila Foods, AIR 1960 SC 142) held that the defendant must substantiate claims of third-party use. The court applied this to reject NIIT’s search report as insufficient evidence of other users.

Skyline Education Institute v. SL Vaswani, 2010 (42) PTC 217 (SC): Cited by the defendant, this Supreme Court ruling denied protection to descriptive marks without distinctiveness. NIIT argued "TURNING POINT" was descriptive, but the court distinguished it, finding the plaintiff’s mark had secondary meaning.

Marico Ltd. v. Agro Tech Foods Ltd., MIPR 2010 (3) 0226: Cited by the defendant, this Delhi High Court decision held that descriptive marks require strong evidence of distinctiveness. The court found it inapplicable, as "TURNING POINT" was coined, not descriptive of the plaintiff’s services.

Three-N Products Pvt. Ltd. v. Emami Ltd., MIPR 2008 (3) 0319: Cited by the defendant, this Delhi High Court ruling emphasized comparing marks as a whole. NIIT argued its mark was distinct due to "NIIT," but the court held that "TURNING POINT" was the dominant feature, causing confusion.

Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court (reported as 2001 IXAD SC 472 in some databases), this Supreme Court decision restrained the use of "Mahendra" due to its distinctiveness. The court used it to affirm that "TURNING POINT" was associated with the plaintiff.

Standard Electricals Ltd. v. Rocket Electricals, 2004 (72) DRJ 794: Cited by the court, this Delhi High Court ruling held that common words can acquire distinctiveness through long use. The court applied this to find "TURNING POINT" protectable.

Ramdev Food Products Ltd. v. Arvindbhai Rambhai, 2006 (33) PTC 281 (SC):Cited by the court via United Biotech, this Supreme Court decision clarified that a label mark’s essential feature is protected. The court used it to reject NIIT’s Section 17 argument.

Pionotist Case, (1906) 23 RPC 774: Cited by the court, this UK decision outlined the test for deceptive similarity, comparing marks by look, sound, and consumer perception. The court applied it to find NIIT’s mark confusingly similar.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 SCR (1) 737: Cited by the court, this Supreme Court ruling held that close similarity in marks establishes infringement without further evidence. The court used it to support the plaintiff’s claim.

Clock Ltd. v. Clock House Hotel Ltd., (1936) 53 RPC 269 (CA): Cited by the court via Wadlow’s Law of Passing-Off, this UK case defined passing off as misrepresenting a connection with the claimant’s business. The court applied it to find NIIT’s use misleading.

Detailed Reasoning and Analysis of Judge:Court focused on the interim injunction’s triple test: prima facie case, balance of convenience, and irreparable injury. The court found that the plaintiff adopted "TURNING POINT" in 1998, registered it in 2005, and used it continuously, as evidenced by sales figures, advertising, and school affiliations, establishing prior use and goodwill. The mark’s long usage (14 years) conferred secondary meaning, making it well-known under Section 2(1)(zg), as supported by Godfrey Philips, Mahendra & Mahendra, ACL Education, and Standard Electricals. The court rejected NIIT’s claim that "TURNING POINT" was descriptive, finding it coined and distinctive, unlike the cases in Marico and Three-N Products.

On infringement, the court applied Sections 28 and 29 of the Trade Marks Act, 1999, noting the plaintiff’s valid registration and NIIT’s use of an identical mark for identical services (education under Class 41). The court dismissed NIIT’s Section 17 argument, relying on United Biotech and Ramdev Food to hold that "TURNING POINT" was an essential feature of the plaintiff’s label, protectable as a whole. The Pionotist and Kaviraj Pandit tests confirmed deceptive similarity, as "NIIT THE TURNING POINT" incorporated the plaintiff’s mark, likely causing confusion among students, per Ansul Industries and Greaves Cotton. The court found NIIT’s adoption lacked bona fides, given its operations at Mody School and opposition to a Chennai party, contradicting its descriptive claim, as noted in S.P. Chengalvaraya.

On passing off, the court applied Clock Ltd. principles, finding NIIT’s use misrepresented a connection with the plaintiff, risking damage to his goodwill. NIIT’s search report was dismissed as unsubstantiated, per Corn Products. The court held that the plaintiff’s prima facie case was strong, the balance of convenience favored him due to his prior use, and irreparable injury loomed from continued confusion. NIIT’s larger size did not justify riding on the plaintiff’s goodwill, and the prefix "NIIT" did not sufficiently distinguish the mark.

Final Decision: On March 22, 2013, the Delhi High Court granted the plaintiff’s interim injunction application in CS (OS) No. 2237/2012, restraining NIIT Ltd., its directors, employees, and agents from using, marketing, or selling services under the mark "TURNING POINT" or any deceptively similar mark in Class 41 until the suit’s final disposal. The court clarified that its observations were preliminary, not affecting the suit’s merits.

Law Settled in the Case:The case clarified several principles in trademark law: Protection of Label Marks: Under Section 17, a registered label mark’s essential feature (e.g., "TURNING POINT") is protectable, even if the registration is for the whole label, extending exclusive rights to prevent infringement or passing off.Secondary Meaning for Descriptive Marks: Descriptive or common words can acquire distinctiveness through long, continuous use, gaining secondary meaning and well-known status under Section 2(1)(zg).Deceptive Similarity Test: Marks are compared as a whole, considering visual, phonetic, and structural similarity, and the perception of an unwary consumer, as per Pionotist and Kaviraj Pandit, to determine infringement under Section 29.Passing Off: Use of a similar mark misrepresenting a connection with the plaintiff’s business constitutes passing off, causing actionable damage, per Clock Ltd..Bona Fides and Prior Knowledge: A defendant’s adoption is dishonest if it has prior knowledge of the plaintiff’s mark, especially in the same industry, and contradictory actions (e.g., opposing third-party use) undermine claims of honest adoption.Interim Injunction Criteria: A plaintiff must establish a prima facie case, balance of convenience, and irreparable injury, with prior use and goodwill weighing heavily in favor of protection.

Keshav Kumar Aggarwal Vs NIIT Ltd.: Date of Order: March 22, 2013: : CS (OS) No. 2237/2012: High Court of Delhi:Hon'ble Judge Shri Kailash Gambhir, 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

V Guard Industries Ltd. Vs. Sukan Raj Jain

Introduction

The case of V Guard Industries Ltd. v. Sukan Raj Jain is a significant intellectual property dispute adjudicated by the High Court of Delhi, focusing on the issue of territorial jurisdiction in trademark infringement and passing off actions. The plaintiff, V Guard Industries Ltd., a company engaged in manufacturing and selling electrical goods under the registered trademark "V-GUARD," sought to restrain the defendants from using the mark "N-GUARD," alleging infringement and passing off. The primary contention arose from an application by Defendant No. 1 under Order VII Rule 10 of the Code of Civil Procedure (CPC), challenging the Delhi High Court’s jurisdiction to entertain the suit. The judgment, delivered on July 5, 2021, by Justice Manoj Kumar Ohri, provides a comprehensive analysis of jurisdictional principles in the context of online commerce and trademark law, reinforcing the evolving judicial approach to virtual business presence.

Detailed Factual Background

V Guard Industries Ltd., the plaintiff, is a well-established company based in Kerala, engaged in the manufacture, distribution, and sale of electrical goods under its registered trademark "V-GUARD" and its variants. The plaintiff claimed a strong market presence across 29 states in India, including Delhi, where it maintained a supply office and a network of distributors and retailers. Defendant No. 1, Sukan Raj Jain, operates as the sole proprietor of M/s N-Guard Electronic Industries, with its registered office in Bengaluru, Karnataka. Defendant No. 2 provides web designing services to Defendant No. 1. The plaintiff alleged that the defendants were manufacturing and selling electrical products under the mark "N-GUARD" and through the domain name "www.nguard.in," which were deceptively similar to its "V-GUARD" trademark. The plaintiff further asserted that the defendants’ products were available for sale in Delhi through third-party e-commerce platforms such as Amazon, Flipkart, Indiamart, Shopclues, and Snapdeal, and that a representative of the plaintiff had purchased an offending product via Amazon.in, which was delivered in Delhi.

The defendants, particularly Defendant No. 1, contested the plaintiff’s claims, denying any business operations or product sales in Delhi. They argued that their website was not interactive, no products could be purchased directly from it, and the alleged sale relied upon by the plaintiff was a solitary, self-generated transaction from an unrelated vendor, insufficient to establish jurisdiction in Delhi.

Detailed Procedural Background

The suit, filed as CS(COMM) 25/2021, sought a permanent injunction to restrain the defendants from infringing and passing off the plaintiff’s trademark and design, along with a prayer for rendition of accounts. On January 18, 2021, the Delhi High Court issued an ex-parte ad-interim injunction, restraining the defendants from manufacturing, selling, or advertising products under the "N-GUARD" mark or any similar mark/domain name. Defendant No. 1 subsequently filed an application (I.A. 3044/2021) under Order VII Rule 10 CPC, seeking the return of the plaint on the ground that the Delhi High Court lacked territorial jurisdiction, as no part of the cause of action arose in Delhi. The plaintiff opposed this application, relying on its pleadings and documents, including screenshots of the defendants’ website and third-party e-commerce platforms, as well as a sale invoice evidencing the purchase of the defendants’ product in Delhi.

The court also noted additional applications pending in the suit, including I.A. 803/2021 (under Order XXXIX Rules 1 & 2 CPC for interim injunction), I.A. 3043/2021 (under Order XXXIX Rule 4 CPC by Defendant No. 1 for vacation of the interim injunction), and I.A. 3046/2021 (under Section 124 of the Trade Marks Act by Defendant No. 1). However, the judgment focused solely on the jurisdictional challenge under I.A. 3044/2021. The matter was reserved on May 7, 2021, and the decision was pronounced on July 5, 2021.

Issues Involved in the Case

The central issue before the court was whether the Delhi High Court had territorial jurisdiction to entertain the suit under Section 20(c) CPC and Section 134 of the Trade Marks Act, 1999, given the defendants’ contention that no part of the cause of action arose in Delhi. Sub-issues included:

1. Whether the availability of the defendants’ products on third-party e-commerce websites accessible in Delhi constituted a cause of action within the court’s jurisdiction.
2. Whether the plaintiff’s purchase of the defendants’ product in Delhi via Amazon.in was sufficient to establish jurisdiction, or whether it constituted an impermissible “trap sale.”
3. Whether the plaintiff’s supply office in Delhi and its business operations in the city provided additional grounds for jurisdiction under Section 134 of the Trade Marks Act.
4. The extent to which the defendants’ website and online presence could be deemed as “purposeful availment” of the Delhi market to attract jurisdiction.

Detailed Submission of Parties

Plaintiff’s Submissions: The plaintiff invoked Section 20(c) CPC, arguing that the cause of action arose in Delhi due to the defendants’ business activities in the city. It relied on the following assertions:

• The defendants were selling their products in Delhi through third-party e-commerce platforms like Amazon, Flipkart, Indiamart, Shopclues, and Snapdeal, which were accessible to Delhi customers.
• The defendants’ website, www.nguard.in, was interactive, allowing customers to place orders, including from Delhi.
• A representative of the plaintiff had purchased an offending product via Amazon.in, which was delivered in Delhi, as evidenced by a sale invoice dated October 28, 2020.
• The defendants likely had substantial customers in Delhi, given their online presence.
• The plaintiff maintained a supply office in Delhi and conducted business through a network of distributors and retailers, reinforcing Delhi as a forum for the suit.

The plaintiff cited several judicial precedents to support its claim:

• M/s RSPL Limited v. Mukesh Sharma & Anr., 2016 SCC OnLine Del 4285 (DB): Emphasized that averments in the plaint must be taken as true when deciding an application under Order VII Rule 10 CPC.
• World Wrestling Entertainment, Inc. v. M/s Reshma Collection & Ors., 2014 SCC OnLine Del 2031 (DB): Equated virtual shops on the internet with physical shops, holding that online availability of products constitutes carrying on business in the forum state.
• Marico Limited v. Mukesh Kumar & Ors., 253 (2018) DLT 8: Held that the availability of products on interactive websites like Indiamart satisfies the “purposeful availment” test.
• Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260: Stressed that jurisdiction can be invoked where injury or deception occurs due to the defendants’ actions.
• Burger King Corporation v. Techchand Shewakramani & Ors., 2018 SCC OnLine Del 10881: Clarified that “use” of a trademark includes advertising and promotion, not merely sales, for jurisdictional purposes.

Defendant’s Submissions: Defendant No. 1 argued that the Delhi High Court lacked jurisdiction, as no part of the cause of action arose in Delhi. Key submissions included:

• The defendant did not carry on business in Delhi, with its registered office located in Bengaluru, Karnataka.
• The plaintiff admitted in the plaint that the defendant’s registered office was in Karnataka, and the plaintiff’s registered office was in Kerala, negating Delhi’s relevance.
• The defendant’s website, www.nguard.in, was not interactive, and no products could be purchased directly from it.
• The sale relied upon by the plaintiff was a solitary, self-generated transaction from an unrelated vendor on Amazon.in, not attributable to the defendant or its authorized agents.
• A single sale was insufficient to establish jurisdiction, especially if engineered by the plaintiff.

The defendant relied on the following precedents:

• Patel Roadways Limited, Bombay v. Prasad Trading Company, (1991) 4 SCC 270: Highlighted the need for the defendant’s actual business presence in the forum state for jurisdiction under Section 20 CPC.
• Dhodha House v. S.K. Maingi, (2006) 9 SCC 41: Emphasized that jurisdiction cannot be invoked without a substantial cause of action in the forum state.
• Indian Performing Right Society Ltd. v. Sanjay Dalia and Anr., 2008 SCC OnLine Del 1238 (IPRS (Delhi)) and (2015) 10 SCC 161 (IPRS (SC)): Clarified that jurisdiction under Section 134 of the Trade Marks Act is subject to restrictions, such as the plaintiff’s principal office location.
• Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780 (DB): Established the “purposeful availment” test for jurisdiction based on website activity, prohibiting reliance on solitary trap transactions.

Detailed Discussion on Judgments Cited by Parties

The court meticulously analyzed the precedents cited by both parties, applying their principles to the facts of the case. Below is a detailed discussion of each judgment and its context in the case:

1. M/s RSPL Limited v. Mukesh Sharma & Anr., 2016 SCC OnLine Del 4285 (DB): Cited by the plaintiff, this case reinforced the principle that an application under Order VII Rule 10 CPC is decided by treating the plaint’s averments as true, without considering the defendant’s written statement or documents. The court applied this principle to limit its inquiry to the plaintiff’s pleadings and documents, disregarding the defendant’s factual denials at this stage.
2. World Wrestling Entertainment, Inc. v. M/s Reshma Collection & Ors., 2014 SCC OnLine Del 2031 (DB): The plaintiff relied on this case to argue that the defendants’ online presence equated to carrying on business in Delhi. The court found this precedent persuasive, noting that the availability of the defendants’ products on e-commerce platforms constituted a “virtual shop” akin to a physical shop, thereby attracting jurisdiction in Delhi.
3. Marico Limited v. Mukesh Kumar & Ors., 253 (2018) DLT 8: Cited by the plaintiff, this case supported the argument that the defendants’ products on Indiamart satisfied the “purposeful availment” test. The court agreed, observing that the defendants’ listing as a verified supplier on Indiamart indicated targeted commercial activity in Delhi.
4. Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260: The plaintiff used this case to emphasize that jurisdiction arises where injury or deception occurs. The court applied this principle, noting that the plaintiff’s pleaded injury in Delhi, coupled with the defendants’ online sales, supported jurisdiction.
5. Burger King Corporation v. Techchand Shewakramani & Ors., 2018 SCC OnLine Del 10881: Cited by the plaintiff, this case clarified that “use” of a trademark includes advertising and promotion, not just sales. The court found this relevant, as the defendants’ products were promoted on e-commerce platforms accessible in Delhi, constituting “use” under the Trade Marks Act.
6. Patel Roadways Limited, Bombay v. Prasad Trading Company, (1991) 4 SCC 270: Cited by the defendant, this case emphasized the need for the defendant’s physical business presence in the forum state. The court distinguished this case, noting that Section 134 of the Trade Marks Act and the virtual presence of the defendants’ products provided additional jurisdictional grounds.
7. Dhodha House v. S.K. Maingi, (2006) 9 SCC 41: The defendant relied on this case to argue that a substantial cause of action was required. The court found this less applicable, as the plaintiff’s pleadings and documents prima facie established a cause of action in Delhi.
8. Indian Performing Right Society Ltd. v. Sanjay Dalia and Anr., 2008 SCC OnLine Del 1238 (IPRS (Delhi)) and (2015) 10 SCC 161 (IPRS (SC)): Cited by the defendant, these cases clarified jurisdictional restrictions under Section 134. The court relied heavily on IPRS (SC), which held that Section 134 provides additional forums based on the plaintiff’s residence or business, subject to the cause of action arising in that forum. This supported the plaintiff’s reliance on its Delhi supply office and the cause of action in Delhi.
9. Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780 (DB): The defendant cited this case to argue that a solitary trap sale could not establish jurisdiction. The court clarified that Banyan Tree prohibited only unfair trap sales, not legitimate purchases, and found that the plaintiff’s purchase, combined with the defendants’ online presence, satisfied the “purposeful availment” test.

Additional precedents referenced by the court included:

• D. Ramachandran v. R.V. Janakiraman and Others, (1999) 3 SCC 267: Affirmed that only the plaint’s averments are considered in preliminary objections.
• Liverpool & London S.P. & I Association Ltd. v. M.V. Sea Success I and Another, (2004) 9 SCC 512: Reiterated that jurisdiction is determined by the plaint’s averments.
• ABN-AMRO Bank v. The Punjab Urban Planning and Development Authority, AIR 2000 P&H 44: Expanded the scope of inquiry to include documents filed by the plaintiff before the hearing.
• Hari Gokal Jewellers v. Satish Kapur, 2006 SCC OnLine Del 482, and Rajiv Kumar (Deaf and Dumb) v. M/s Kewal Cargo Carriers (P) Ltd., 2006 SCC OnLine Del 496: Followed ABN-AMRO Bank, supporting the inclusion of additional documents.
• Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors., 2016 SCC OnLine Del 376: Provided a framework for jurisdiction under Section 134, applied to the plaintiff’s Delhi supply office.
• Icon Health and Fitness, Inc. v. Sheriff Usman and Anr., 2017 SCC OnLine Del 10481: Supported the plaintiff’s argument that online sales through e-commerce platforms constitute carrying on business.

Detailed Reasoning and Analysis of Judge

Justice Manoj Kumar Ohri’s reasoning was grounded in a careful application of statutory provisions (Section 20(c) CPC and Section 134 of the Trade Marks Act) and judicial precedents, tailored to the context of online commerce. The court’s analysis proceeded as follows:

1. Scope of Inquiry under Order VII Rule 10 CPC: The court emphasized that its inquiry was limited to the plaintiff’s pleadings and documents, treating all averments as true at this stage, as per D. Ramachandran (1999) and Liverpool & London (2004). The defendant’s written statement and factual denials were irrelevant, aligning with M/s RSPL Limited (2016).
2. Plaintiff’s Pleadings and Evidence: The plaintiff pleaded that the defendants’ products were available on e-commerce platforms accessible in Delhi, supported by screenshots and a sale invoice dated October 28, 2020. Additional documents filed with an application under Order XXXIX Rule 2A CPC, including screenshots showing the defendant as a verified supplier on Indiamart and Shopclues, were considered permissible under ABN-AMRO Bank (2000). These documents prima facie established the defendants’ commercial activity in Delhi.
3. Jurisdiction Based on Online Presence: The court relied on World Wrestling Entertainment (2014) to equate the defendants’ online presence with a physical shop, noting that e-commerce platforms constituted “virtual shops” accessible in Delhi. Burger King Corporation (2018) was applied to hold that “use” of the trademark included advertising and promotion, not just sales, as the defendants’ products were promoted on multiple platforms. Marico Limited (2018) supported the finding that the defendants’ listing on Indiamart satisfied the “purposeful availment” test from Banyan Tree (2009).
4. Trap Sale Argument: The defendant’s reliance on Banyan Tree (2009) to label the plaintiff’s purchase as a trap sale was rejected. The court clarified that Banyan Tree prohibited only unfair trap sales, and the defendant’s counsel conceded that the sale was not a trap but a solitary transaction. The court held that the sale, combined with the defendants’ broader online presence, was sufficient to establish jurisdiction, with the fairness of the sale being a matter for trial.
5. Injury and Cause of Action in Delhi: Applying Millennium & Copthorne (2018), the court found that the plaintiff suffered injury in Delhi due to the defendants’ deceptive use of the “N-GUARD” mark, as customers in Delhi could access and purchase the products. The cause of action thus arose in Delhi under Section 20(c) CPC.
6. Section 134 of the Trade Marks Act and Plaintiff’s Supply Office: The court analyzed IPRS (SC) (2015) and Ultra Home Construction (2016) to hold that Section 134 provides additional jurisdictions based on the plaintiff’s residence or business. The plaintiff’s supply office in Delhi, coupled with the cause of action arising from the defendants’ sales, placed the case within the “third situation” outlined in Ultra Home Construction, where jurisdiction lies at the place of the subordinate office (Delhi) where the cause of action arose.
7. Defendant’s Contentions: The defendant’s argument that its Karnataka office negated Delhi’s jurisdiction was dismissed, as Section 134 and the online cause of action overrode the need for the defendant’s physical presence in Delhi. The court found the defendant’s cited cases (e.g., Patel Roadways, Dhodha House) distinguishable, as they did not account for the virtual business context or Section 134’s provisions.
8. Prima Facie Conclusion: The court concluded that the plaintiff’s pleadings and documents prima facie established jurisdiction under both Section 20(c) CPC and Section 134 of the Trade Marks Act. The observations were expressly limited to the jurisdictional issue and would not prejudice the trial.

Final Decision

The court dismissed the defendant’s application under Order VII Rule 10 CPC, holding that the Delhi High Court had territorial jurisdiction to entertain the suit. The plaint was not returned, and the suit was directed to proceed before the Roster Bench on July 22, 2021, for further adjudication of pending applications. The court clarified that its observations were prima facie and would not affect the parties’ contentions at trial.

Law Settled in this Case:The judgment clarified several key principles in trademark law and territorial jurisdiction:

Availability of a defendant’s products on e-commerce platforms accessible in the forum state constitutes a cause of action under Section 20(c) CPC, as it equates to carrying on business in a “virtual shop” (World Wrestling Entertainment). The “purposeful availment” test from Banyan Tree is satisfied when a defendant’s products are promoted or sold on interactive websites targeting the forum state, such as Indiamart or Amazon (Marico Limited). Jurisdiction can be invoked at the place of the plaintiff’s subordinate office where the cause of action arises, as per Ultra Home Construction, even if the defendant has no physical presence in that forum (IPRS (SC)). “Use” of a trademark includes advertising and promotion, not just sales, for jurisdictional purposes (Burger King Corporation). A single sale by the plaintiff is not per se a trap sale under Banyan Tree unless proven to be unfair, and its validity is a matter for trial.

V Guard Industries Ltd. v. Sukan Raj Jain & Anr.:July 5, 2021:CS(COMM) 25/2021:High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice Manoj Kumar Ohri

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

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

Introduction: The case of Sana Herbal Pvt. Ltd. Vs. Dehlvi Ambar Herbals Pvt. Ltd. & Anr. [FAO(COMM) 104/2025] represents a significant procedural ruling by the Delhi High Court, addressing the appropriateness of denying an ex parte ad interim injunction solely on the ground that the defendant is already active in the market. This appea arose from a commercial suit involving intellectual property disputes. The High Court’s decision underscores the principles governing interim relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), emphasizing that the defendant’s market presence alone is an insufficient basis for rejecting such relief. This case study provides a detailed analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into the judicial approach to interim injunctions in commercial litigation.

Detailed Factual Background: The appellant, Sana Herbal Pvt. Ltd., initiated a commercial suit (CS (COMM) 152/2025) against the respondents, Dehlvi Ambar Herbals Pvt. Ltd. and another party, before the District Judge (Commercial Court-01), Delhi. The suit involved claims related to intellectual property infringement, such as trademarks, given the nature of the parties (herbal product companies) and the context of commercial litigation. In the suit, the appellant sought an ex parte ad interim injunction under Order XXXIX Rules 1 and 2 CPC to restrain the respondents from engaging in activities allegedly infringing the appellant’s rights, such as using similar trademarks or trade names.

On March 29, 2025, the learned Commercial Court passed an order refusing the appellant’s prayer for an ex parte ad interim injunction. The sole ground cited by the court was that the respondent was already active in the market, implying that the respondent’s established presence negated the need for immediate injunctive relief. Dissatisfied with this reasoning, the appellant filed an appeal (FAO(COMM) 104/2025) before the Delhi High Court, challenging the Commercial Court’s order to the extent it denied the ex parte injunction. The appeal was accompanied by applications (CM APPLs. 25826-829/2025), likely for interim relief and procedural directions.

Detailed Procedural Background: The procedural journey began with the filing of CS (COMM) 152/2025 by Sana Herbal Pvt. Ltd. before the Commercial Court-01, Tis Hazari Courts, Delhi. The appellant’s application for an ex parte ad interim injunction was considered by the learned District Judge, who, on March 29, 2025, rejected the prayer, citing the respondent’s existing market presence. Aggrieved, the appellant invoked the appellate jurisdiction of the Delhi High Court under Section 13 of the Commercial Courts Act, 2015, filing FAO(COMM) 104/2025 along with related applications. T

Issues Involved in the Case: The primary issue before the Delhi High Court was whether the Commercial Court erred in denying the appellant’s prayer for an ex parte ad interim injunction solely on the ground that the respondent was already in the market?

Appellant's submission:The appellant argued that the Commercial Court’s refusal of the ex parte injunction was legally unsustainable. They contended that the respondent’s market presence was not a valid ground for denying interim relief, as it failed to address the established criteria for granting an injunction: prima facie case, balance of convenience, and irreparable injury. Citing the Division Bench’s decision in Hulm Entertainment Pvt. Ltd. v. SBN Gaming Network Pvt. Ltd. [FAO(COMM) 209/2023, dated October 11, 2023], they argued that prior market presence alone cannot negate the need for injunctive relief, especially in intellectual property disputes where ongoing infringement could cause irreparable harm. The appellant urged the High Court to set aside the impugned order and either grant the injunction or direct the Commercial Court to reconsider the application on merits.

Detailed Discussion on Judgments and Citations: The High Court relied on a single precedent cited by the appellant, which was directly relevant to the issue of denying an injunction based on the defendant’s market presence. Below is a detailed discussion of the judgment, its citation, and its context in the case:

Hulm Entertainment Pvt. Ltd. v. SBN Gaming Network Pvt. Ltd., FAO(COMM) 209/2023, dated October 11, 2023: This Delhi High Court Division Bench decision was pivotal to the appellant’s case and the court’s reasoning. In Hulm Entertainment, the court held that the defendant’s prior presence in the market cannot be the sole basis for rejecting an ex parte ad interim injunction. The judgment emphasized that the grant or refusal of an injunction under Order XXXIX Rules 1 and 2 CPC must be based on a comprehensive assessment of the three-pronged test: a prima facie case, balance of convenience in favor of the plaintiff, and the likelihood of irreparable injury if the injunction is not granted. The court found that the Commercial Court’s reliance on the respondent’s market presence in the present case mirrored the error in Hulm Entertainment, as it failed to engage with these essential criteria. The precedent underscored that market presence is merely one factor and cannot override the plaintiff’s entitlement to relief if the requisite legal thresholds are met.

Analysis of Judge: The Division Bench provided a concise yet incisive analysis, focusing on the legal propriety of the Commercial Court’s reasoning and the appropriate procedural remedy. Relying on Hulm Entertainment Pvt. Ltd. v. SBN Gaming Network Pvt. Ltd., the court held that this ground was prima facie untenable, as prior market presence alone cannot justify denying an injunction. The court emphasized that Order XXXIX Rules 1 and 2 CPC require a holistic evaluation of the plaintiff’s prima facie case, the balance of convenience, and the potential for irreparable harm. By focusing exclusively on the respondent’s market activity, the Commercial Court failed to apply these principles, rendering its order legally flawed.   The court mandated that both parties file written submissions within ten days and appear before the Commercial Court on May 22, 2025, for a final hearing on the Order XXXIX Rules 1 and 2 application. The court further requested the Commercial Court to decide the application expeditiously, ensuring no undue delay in resolving the dispute.

Final Decision:The Delhi High Court disposed of the appeal (FAO(COMM) 104/2025) and associated applications (CM APPLs. 25826-829/2025) on May 1, 2025. The court set aside the Commercial Court’s reasoning in the order dated March 29, 2025, to the extent it denied the ex parte ad interim injunction based solely on the respondent’s market presence. Instead of granting the injunction itself, the court directed both parties to file written submissions before the Commercial Court within ten days and appear on May 22, 2025, for a final hearing on the Order XXXIX Rules 1 and 2 application. The Commercial Court was requested to decide the application expeditiously, uninfluenced by the impugned order’s observations.

Law Settled in the Case: The case clarified the following principles under Order XXXIX Rules 1 and 2 CPC in the context of commercial disputes: Invalidity of Market Presence as Sole Ground: The defendant’s prior market presence cannot be the sole basis for denying an ex parte ad interim injunction, as it fails to address the mandatory criteria of prima facie case, balance of convenience, and irreparable injury. Comprehensive Evaluation Required: The grant or refusal of an interim injunction requires a holistic assessment of the three-pronged test under Order XXXIX Rules 1 and 2 CPC, ensuring that all relevant factors are considered. Appellate Discretion in Procedural Errors: Appellate courts may refrain from deciding the merits of an injunction application if the defendant is present, opting instead to remand the matter for expeditious reconsideration by the trial court with proper legal standards.

Sana Herbal Pvt. Ltd. Vs. Dehlvi Ambar Herbals Pvt. Ltd. & Anr.: May 1, 2025: FAO(COMM) 104/2025: High Court of Delhi: Hon'ble Justices Shri C. Hari Shankar, J. and Ajay Digpaul, 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

Goldmines Telefilms Vs Viacom 18 Media

Introduction

Goldmines Telefilms Pvt. Ltd. filed a suit against Viacom 18 Media Pvt. Ltd. and associated parties, alleging breach of contractual rights related to the licensing and exploitation of numerous films. The dispute primarily concerns the validity of termination notices issued by Goldmines and the alleged unauthorized creation of multiple versions of the films by Viacom.

Background of the Agreements

The core of the case revolves around two film assignment agreements entered into in 2015 and 2016. Under these agreements, Goldmines licensed various rights, including broadcast and on-demand rights, in approximately 250 films for significant consideration. The rights included the ability to sublicense, broadcast, and modify the films under specific contractual clauses.

Allegations of Breach

Goldmines contended that Viacom violated key clauses of the agreements, especially clauses 3.11 and 3.15. Clause 3.11 explicitly granted Viacom the authority to delete, edit, or cut portions of the films, but only in accordance with internal standard practices. Goldmines alleged that Viacom created multiple versions of the same films without adhering to these internal standards, effectively breaching the contractual terms. Such actions, according to Goldmines, amounted to unauthorized mutilation and created confusion regarding the authentic versions of the films.

Furthermore, Goldmines claimed that Viacom did not respond to cure notices sent by the plaintiff, despite alleged breaches, and continued exploiting the films improperly. Goldmines argued that these breaches justified the termination of the license agreements and asserted continuous rights over the films, seeking an order to restrain Viacom from further exploitation.

Legal Contentions

The plaintiff emphasized that the agreements clearly delineated the scope of Viacom's rights, especially concerning the editing and creation of multiple versions. The contention was that Viacom’s actions went beyond permitted standard practices, constituting a breach. Goldmines also relied on provisions under the Indian Contract Act, particularly Section 39, to argue that breach justified termination.

The defendants, on the other hand, contended that Viacom had a broad, unconditional right to create multiple versions, as per clause 3.11 of the agreements, exercised within the scope of internal policies. They argued that the actions taken did not breach the agreements and that the alleged breaches were either justified or did not amount to violations warranting termination.

Court Proceedings and Arguments

The court examined the clauses of the agreements in detail and reviewed the conduct of the parties. It analyzed whether creating multiple versions was within Viacom’s contractual rights or a breach. The court noted that the creation of different versions during broadcast was a known industry practice, but whether such actions violated contractual clauses depended on compliance with internal standards.

Both parties relied on various legal precedents addressing contractual interpretation, breach, and termination rights. The court observed that Goldmines had issued notices notifying Viacom of breaches, but Viacom argued that prior consent or adherence to internal standards exempted their actions from breach.

Interim Relief Considerations

The court considered whether to grant interim relief in favor of Goldmines. It considered the likelihood of irreparable harm, the balance of convenience, and whether Goldmines had established a prima facie case. The court noted that since the agreements involved specific rights and restrictions, the issue of damages versus irreparable injury was significant.

Based on the evidence, the court found that Goldmines’s case for breach and wrongful termination was plausible but that the question of whether Viacom’s actions breached contractual obligations required detailed examination. Nonetheless, the court acknowledged the potential for irreparable damage to the plaintiff if Viacom continued to exploit the films unlawfully.

Legal Principles and Final View

The court referred to various legal principles pertaining to contract interpretation, especially the importance of adhering to clear contractual terms and the consequences of breach. It also emphasized that termination is a serious remedy and should adhere strictly to the contractual provisions and lawful notices.

While the court observed that the agreements granted broad rights to Viacom for editing, whether they were exercised appropriately remained to be seen. The court emphasized that the restrictions on creating multiple versions and the requirement to follow internal standards were central issues.

Conclusion

The court reserved its final decision but granted a temporary injunction preventing Viacom from further exploiting the films until the case was fully adjudicated. The court underscored that the matter involved complex contractual interpretations and evidence pertaining to the creation of multiple film versions, necessitating detailed examination at trial.

Summary

This case centers around allegations by Goldmines that Viacom breached contractual provisions by creating unauthorized multiple versions of films, violating the scope of their rights as defined in the licensing agreements. The dispute involves contractual interpretation, breach, and the legality of termination notices issued by Goldmines. The court is examining whether Viacom’s actions were within their contractual rights or constituted breaches that justified termination, with interim relief granted pending final judgment.

Case Title: Goldmines Telefilms Pvt. Ltd. vs. Viacom 18 Media Pvt. Ltd. Date of Order: 7th May 2025 Case No.: Commercial IP Suit (Lodging) No. 33463 of 2024 Neutral Citation: 2025:BHC-OS-7679: Court: High Court of Bombay, Judge: Hon'ble Justice Manish Pitale

Outlook Publishing Solution Vs R R India

This case involves Outlook Publishing Pvt. Ltd. (the appellant) filing a suit against R R Solution (the respondent) to recover a sum of Rs. 9,77,000, which the appellant claimed was outstanding for advertising services provided in their magazines Outlook, Outlook Business, and Outlook Web. The agreement between the parties was executed on April 24, 2020, and the appellant contended that the respondent had defaulted on the payments for advertisements published in the issues dated April 20, 2020, July 27, 2020, and August 1, 2020. The plaintiff produced invoices, copies of advertisements, and agreements as evidence. However, the respondent did not appear in court and did not file a defense.

The trial court examined the evidence and observed that the appellant relied on photocopies of magazine pages rather than original copies, which are essential under law for evidence. Consequently, the court dismissed the suit, stating that the photocopies were not admissible and that the appellant had failed to prove its case satisfactorily. The court also noted the respondent's absence and held that mere affidavits and photocopies could not establish the claim comprehensively.

On appeal, the appellant argued that the original magazines could not be traced due to pandemic-related difficulties. The appellate court acknowledged this hardship and observed that since the original magazines were now available, the case should not suffer solely due to the pandemic. Accordingly, the appellate court set aside the impugned judgment and permitted the appellant to lead additional evidence, including the original magazines and electronic proofs of digital publications, in accordance with legal procedures. The matter was remanded for fresh proceedings to allow the appellant to substantiate its claim with proper evidence.

Case Details:Outlook Publishing Solution Vs R R India: May 6, 2025: RFA(COMM) 233/2025: 2025:DHC:3481-DB:High Court of Delhi: Prathiba M. Singh and Rajneesh Kumar Gupta, H.J.

Astrazeneca AB Vs. Westcoast Pharmaceutical

Maintainability of Patent Infringement Suit during pendency of Post Grant Opposition

Introduction: The case of Astrazeneca AB & Anr. v. Westcoast Pharmaceutical Works Limited [2023:DHC:3337] is a pivotal decision by the Delhi High Court addressing the maintainability of a patent infringement suit under the Patents Act, 1970, when post-grant opposition proceedings are pending. The defendant sought rejection of the plaintiff’s suit under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC), arguing, inter alia, that the Supreme Court’s observations in Aloys Wobben v. Yogesh Mehra [(2014) 15 SCC 360] preclude such suits until the patentee’s rights are crystallized post-opposition. The High Court’s ruling clarifies the scope of Order VII Rule 11, the jurisdictional requirements for patent suits, and the statutory rights of a patentee under Section 48 of the Patents Act, emphasizing that no provision prohibits infringement actions during pending oppositions. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering critical insights into patent enforcement in India.

Detailed Factual Background:  The plaintiffs, Astrazeneca AB (a Swedish company) and its Indian subsidiary, initiated CS(COMM) 101/2022 against the defendant, Westcoast Pharmaceutical Works Limited, alleging infringement of Indian Patent No. 297581 (IN’581), granted on June 11, 2018, for the compound Osimertinib, used in cancer treatment. The plaintiffs claimed that the defendant had begun manufacturing and was either selling or preparing to sell products infringing IN’581 in India. The suit sought an injunction, damages of Rs. 2,00,01,000, and other reliefs, asserting that the defendant’s actions violated their exclusive rights under Section 48 of the Patents Act.

The defendant contested the suit’s maintainability, filing an application (I.A. 21995/2022) under Order VII Rule 11 CPC for its rejection. The application was based on three grounds: lack of pecuniary jurisdiction, lack of territorial jurisdiction, and the pendency of post-grant oppositions under Section 25(2) of the Patents Act. Specifically, post-grant oppositions were filed by Sunshine Organics Pvt. Ltd. on May 14, 2019, and Natco Pharma Ltd. on June 10, 2019, challenging IN’581, and were pending before the Controller General of Patents when the suit was filed on February 8, 2022. The defendant relied on paragraph 19 of Aloys Wobben, arguing that the plaintiffs’ right to sue for infringement had not crystallized due to these pending oppositions.

Detailed Procedural Background: The suit was instituted on February 8, 2022, before the Delhi High Court, invoking its original jurisdiction based on the damages claimed (Rs. 2,00,01,000), which exceeded the pecuniary threshold for district courts. The defendant responded by filing I.A. 21995/2022 under Order VII Rule 11 CPC, seeking rejection of the plaint. The application was argued before Justice C. Hari Shankar, with Mr. Vikas Khera representing the defendant and Mr. Pravin Anand representing the plaintiffs. The court heard extensive submissions on May 12, 2023, reserved its judgment, and pronounced it on May 15, 2023, dismissing the defendant’s application. A related application (I.A. 1079/2023) under Order XIIIA Rule 3 CPC was re-notified for August 1, 2023, indicating ongoing proceedings.

Issues Involved in the Case:The case raised the following issues for determination:Whether the suit was liable to be rejected under Order VII Rule 11 CPC for lack of pecuniary jurisdiction, given the plaintiffs’ claim for damages in a purported quia timet action?Whether the suit could be rejected under Order VII Rule 11 CPC for lack of territorial jurisdiction, considering the defendant’s location outside Delhi and the plaintiffs’ operational presence.?Whether the pendency of post-grant oppositions under Section 25(2) of the Patents Act barred the plaintiffs from filing an infringement suit, as per the Supreme Court’s observations in Aloys Wobben?Whether paragraph 19 of Aloys Wobben constituted binding precedent or obiter dicta, and its impact on the plaintiffs’ statutory rights under Section 48 of the Patents Act?

Defendant's submission: The defendant argued for rejection of the plaint on three grounds. First, they contended that the suit lacked pecuniary jurisdiction, as it was a quia timet action based on mere apprehension of infringement, not actual infringement. Citing Toni & Guy Products Ltd. v. Shyam Sunder Nagpal [2007 (34) DLT 309], they argued that damages are not claimable in such suits, reducing the suit’s valuation to Rs. 1,000, below the High Court’s pecuniary threshold. Second, they challenged territorial jurisdiction under Section 20 CPC, noting that the defendant was based outside Delhi and Plaintiff 1 was in Sweden, despite Plaintiff 2’s Delhi office. However, this ground was not pressed during arguments. Third, relying on paragraph 19 of Aloys Wobben [(2014) 15 SCC 360], they argued that the plaintiffs’ right to sue had not crystallized due to pending post-grant oppositions by Sunshine and Natco. They emphasized the Supreme Court’s observation that it was “unlikely and quite impossible” for an infringement suit to be filed during such proceedings. The defendant also cited Pharmacosmos Holding A/S v. La Renon Healthcare Pvt. Ltd. [2019 (78) PTC 329] and Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd. [2015 SCC OnLine Bom 6984], along with a related Supreme Court order, to support their interpretation of Aloys Wobben.

Plaintiff's submission: The plaintiff opposed the application, arguing that the plaint disclosed a valid cause of action and met jurisdictional requirements. On pecuniary jurisdiction, they distinguished Toni & Guy, asserting that the plaint alleged actual manufacture and sale (or imminent sale) by the defendant, not mere apprehension, justifying the damages claim and High Court jurisdiction. On territorial jurisdiction, they noted the issue was not argued and was irrelevant under Order VII Rule 11, as Order VII Rule 10 governs such challenges. On the Aloys Wobben issue, they relied on the proviso to Section 11A(3) of the Patents Act, which permits infringement suits post-grant without further restrictions. They argued that Aloys Wobben addressed a different issue—simultaneous revocation petitions and counterclaims—not the maintainability of infringement suits during post-grant oppositions. They contended that paragraph 19 was obiter dicta, not binding, as per Career Institute Educational Society v. Om Shree Thakur Educational Society [2023 SCC OnLine SC 586], and cited Novartis AG v. Natco Ltd. [CS(Comm) 299/2019, dated May 2, 2019] and CDE Asia Ltd. v. Terex India Pvt. Ltd. [MANU/DE/0584/2020] to show that infringement suits are maintainable post-grant. They warned that barring such suits would undermine patentees’ rights and encourage infringement during opposition proceedings.

Detailed Discussion on Judgments and Citations: The court extensively analyzed the cited judgments to resolve the issues, particularly the interpretation of Aloys Wobben and the scope of Order VII Rule 11 CPC. Below is a detailed discussion of each judgment, its citation, and its context in the case:

Toni & Guy Products Ltd. v. Shyam Sunder Nagpal, 2007 (34) DLT 309:  Cited by the defendant to argue lack of pecuniary jurisdiction, this Delhi High Court decision held that damages are not claimable in a quia timet suit based on mere apprehension of trademark infringement, as no proprietary rights were invaded. The court distinguished this case, noting that the plaintiffs alleged actual manufacture and sale by the defendant, not mere apprehension, making the damages claim valid and conferring pecuniary jurisdiction on the High Court.

Aloys Wobben v. Yogesh Mehra, (2014) 15 SCC 360: Central to the defendant’s case, this Supreme Court decision was cited for paragraph 19, which suggests that a patentee’s right to hold a patent crystallizes only after favorable disposal of post-grant oppositions or expiry of the one-year opposition period, and that infringement suits are “unlikely and quite impossible” during such proceedings. The plaintiffs argued that this paragraph was obiter, as the case addressed whether a defendant could simultaneously pursue revocation petitions and counterclaims, not the maintainability of infringement suits. The court agreed, applying the inversion test from Career Institute to find paragraph 19 unnecessary to the decision, thus obiter. It further noted that Aloys Wobben distinguished between patent grant and crystallization, with Section 48 rights arising upon grant, not crystallization.

Pharmacosmos Holding A/S v. La Renon Healthcare Pvt. Ltd., 2019 (78) PTC 329: Cited by the defendant, this interlocutory Delhi High Court order expressed tentative concern that Aloys Wobben’s paragraph 19 might bar infringement suits during post-grant oppositions, but noted the absence of statutory provisions supporting such a bar and the potential hardship to patentees. The court dismissed its precedential value, describing paragraph 19 as an inconclusive reflection (using “perhaps”) and highlighting the judge’s discomfort with barring suits, especially given the 20-year patent term.

Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd., 2015 SCC OnLine Bom 6984: Cited by the defendant, this Bombay High Court Division Bench order admitted an appeal and stayed an injunction, partly due to a pending post-grant opposition, citing Aloys Wobben. However, the Supreme Court’s order in SLP(C) 34749-34751/2015 (December 16, 2015) set aside the stay, restoring the injunction despite the opposition, indicating that Aloys Wobben did not bar such suits. The court relied on this to reject the defendant’s interpretation, noting the Supreme Court’s disapproval of prioritizing oppositions over merits.

Career Institute Educational Society v. Om Shree Thakur Educational Society, 2023 SCC OnLine SC 586: Cited by the plaintiffs to argue that Aloys Wobben’s paragraph 19 was obiter, this Supreme Court decision clarified the distinction between ratio decidendi and obiter dicta, introducing the inversion test: if removing a passage does not alter the case’s conclusion, it is obiter. The court applied this test, finding that removing paragraph 19 from Aloys Wobben would not change its outcome, confirming its obiter status. The decision also emphasized that only the ratio binds lower courts under Article 141.

Novartis AG v. Natco Ltd., CS(Comm) 299/2019, dated May 2, 2019:  Cited by the plaintiffs, this interlocutory Delhi High Court order held that Aloys Wobben does not bar infringement suits during post-grant oppositions, as the patentee’s rights under Section 48 arise upon grant. The court noted this supported the plaintiffs’ position but did not rely heavily on it due to its interlocutory nature.

CDE Asia Ltd. v. Terex India Pvt. Ltd., MANU/DE/0584/2020: Cited by the plaintiffs, this Delhi High Court order similarly held that Aloys Wobben does not preclude infringement suits post-grant, emphasizing Section 48 rights. The court acknowledged this but gave it limited weight as an interlocutory view.

Director of Settlements v. M.R. Apparao, (2002) 4 SCC 638: Cited by the court, this Supreme Court decision elucidated the binding nature of Supreme Court judgments under Article 141, stating that only the ratio decidendi binds, while obiter dicta, though not binding, carry considerable weight. The court used this to balance respect for Aloys Wobben’s observations with their non-binding status.

Arun Kumar Aggarwal v. State of Madhya Pradesh, (2014) 13 SCC 707: Cited by the court, this Supreme Court decision discussed obiter dicta, defining them as observations unnecessary to the decision, lacking binding force but persuasive value. The court referenced this to reinforce that Aloys Wobben’s paragraph 19 was non-binding.

MCD v. Gurnam Kaur, (1989) 1 SCC 101: Cited by the court, this Supreme Court decision held that casual expressions by judges are not authoritative. The court used this to argue that Aloys Wobben’s observation about the improbability of infringement suits was not a binding legal pronouncement.

Karnataka SRTC v. Mahadeva Shetty, (2003) 7 SCC 197:Cited by the court, this Supreme Court decision reiterated that passing remarks lack authoritative weight, supporting the court’s view that Aloys Wobben’s paragraph 19 was not binding.

State of Haryana v. Ranbir, (2006) 5 SCC 167:Cited by the court, this Supreme Court decision clarified that obiter dicta are unnecessary to the decision and non-authoritative, reinforcing the court’s classification of Aloys Wobben’s paragraph 19.

Girnar Traders v. State of Maharashtra, (2007) 7 SCC 555:Cited by the court, this Supreme Court decision held that only the ratio decidendi is binding, not general observations, supporting the court’s finding that Aloys Wobben’s paragraph 19 was obiter.

Skill Lotto Solutions (P) Ltd. v. Union of India, (2021) 15 SCC 667:Cited by the court, this Supreme Court decision distinguished obiter from ratio, emphasizing that observations integral to the decision are binding. The court used this to contrast Aloys Wobben’s incidental remarks with its core holding.

U.O.I. v. Chhajju Ram, (2003) 5 SCC 568:Cited by the court, this Supreme Court decision held that a precedent is authority only for what it decides, not logical extensions, supporting the court’s refusal to extend Aloys Wobben’s observation into a prohibition on infringement suits.Detailed Reasoning and Analysis of Judge: Justice C. Hari Shankar’s reasoning meticulously addressed each ground for rejection under Order VII Rule 11 CPC, focusing heavily on the Aloys Wobben controversy and the statutory framework of the Patents Act. 

The analysis can be summarized as follows:

Pecuniary Jurisdiction: The court rejected the defendant’s claim that the suit was a quia timet action lacking a basis for damages. Unlike Toni & Guy, where no trademark use was alleged, the plaintiffs’ plaint asserted actual manufacture and sale, taken as true under Order VII Rule 11. The damages claim of Rs. 2,00,01,000 justified High Court jurisdiction, as it exceeded the district court threshold.

Territorial Jurisdiction: The court noted that territorial jurisdiction challenges fall under Order VII Rule 10 CPC (return of plaint), not Order VII Rule 11 (rejection). Since the defendant did not argue this ground, the court reserved the issue for a potential future application, returning no finding.

Aloys Wobben and Post-Grant Oppositions: The court’s core analysis centered on whether Aloys Wobben’s paragraph 19 barred the suit due to pending oppositions. The court agreed with the plaintiffs that the Patents Act imposes no restriction on infringement suits post-grant, as per the proviso to Section 11A(3). Section 48 confers exclusive rights upon grant, without conditions related to oppositions or a one-year waiting period. The court found that requiring patentees to wait would undermine these rights, allowing unchecked infringement and reducing the patent’s 20-year term, as noted in Pharmacosmos Holding.

Interpretation of Aloys Wobben: The court conducted a detailed analysis of Aloys Wobben, concluding that paragraph 19 was obiter. The case addressed whether a defendant could pursue simultaneous revocation petitions and counterclaims, not the patentee’s right to sue during oppositions. No post-grant oppositions were involved in Aloys Wobben, and the issue of suit maintainability was neither argued nor decided. Applying the inversion test from Career Institute, the court found that removing paragraph 19 would not alter Aloys Wobben’s outcome, confirming its obiter status. The court also noted that Aloys Wobben distinguished between patent grant (conferring Section 48 rights) and crystallization (post-opposition finality), supporting the plaintiffs’ right to sue upon grant.

Precedential Value of Obiter: Citing Director of Settlements and Arun Kumar Aggarwal, the court acknowledged that Supreme Court obiter carries weight but is not binding under Article 141. Paragraph 19’s observation that infringement suits are “unlikely and quite impossible” during oppositions was not a legal prohibition but a possibility, not warranting a bar on suits. The court emphasized that judicial precedents are authority only for what they decide, per U.O.I. v. Chhajju Ram.Supporting Precedents: The court found support in the Supreme Court’s order in Sergi, where an injunction was upheld despite a pending opposition, indicating no bar under Aloys Wobben. The interlocutory orders in Novartis and CDE Asia were noted but not heavily relied upon due to their prima facie nature. Pharmacosmos Holding was dismissed as lacking precedential value, given its tentative and interlocutory nature.

Policy Considerations: The court highlighted the absurdity of barring infringement suits during oppositions, as it would incentivize frivolous oppositions to delay enforcement and erode the patent’s term. Such an interpretation would contravene the Patents Act’s ethos of protecting patentees’ rights.

Final Decision: The Delhi High Court dismissed the defendant’s application (I.A. 21995/2022) under Order VII Rule 11 CPC, holding that no grounds for rejecting the plaint existed. The court found the suit maintainable, with valid pecuniary jurisdiction based on the damages claim, and reserved the territorial jurisdiction issue for a potential Order VII Rule 10 application. The pendency of post-grant oppositions did not bar the infringement suit, as Aloys Wobben’s paragraph 19 was obiter and the Patents Act imposed no such restriction. The related application (I.A. 1079/2023) was re-notified for August 1, 2023.

Law Settled in the Case: The case clarified several principles under the Patents Act and CPC:

Maintainability of Infringement Suits: A patentee can institute an infringement suit upon grant of a patent under Section 48, without waiting for the expiry of the one-year post-grant opposition period or resolution of pending oppositions under Section 25(2).

Scope of Order VII Rule 11 CPC: Rejection of a plaint for lack of pecuniary jurisdiction requires demonstrating that the plaint’s averments, taken as true, do not meet the court’s threshold. Territorial jurisdiction challenges fall under Order VII Rule 10, not Order VII Rule 11.

Interpretation of Aloys Wobben: Paragraph 19 of Aloys Wobben is obiter dicta, not binding, as it addresses a different issue and does not prohibit infringement suits during post-grant oppositions.

Statutory Rights Under Patents Act: Section 48 confers immediate rights to prevent infringement upon patent grant, per the proviso to Section 11A(3), without conditions related to oppositions.

Obiter Dicta’s Precedential Value: Supreme Court obiter, while persuasive, is not binding under Article 141, as clarified by the inversion test and principles in Career Institute and Director of Settlements.

Case Title: Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Limited:Date of Order: May 15, 2023:Case No.: CS(COMM) 101/2022:Citation: 2023:DHC:3337:Name of Court: High Court of Delhi:Name of Hon'ble Judge: C. Hari Shankar, 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