Khilender Gupta Trading Bobby Vs Hind Food Product

Khilender Gupta Trading Bobby Vs Hind Food Product:25 April 2025:FAO (Comm) 100/2025:2025:DHC:2987-DB:High Court of Delhi:Honble Judges:C. Hari Shankar, Ajay Digpaul

Facts: 

Khilender Gupta, operating as Bobby Enterprises, filed a suit against Hind Food Product for alleged infringement of the registered trademark "BOOM BOOM" and unauthorized use that could mislead consumers. Gupta claimed that the respondents were passing off their products under names similar to those associated with his trademark.

Procedural Details:

Gupta sought an ex parte ad interim injunction under Order XXXIX Rules 1 and 2 and an appointment of a Local Commissioner under Order XXVI Rule 9 of the Civil Procedure Code (CPC). The Commercial Court initially dismissed these applications, citing the pending intervention application from Rakesh Kumar, who also claimed rights related to the trademark.

Issue:

The central issue was whether the Commercial Court properly declined to grant the ex parte relief sought by Gupta based on the assertion that an intervention application by Rakesh Kumar was pending, and whether the court adequately considered the merits of Gupta's claims.

Decision:

The High Court of Delhi set aside the impugned order from the Commercial Court and remanded the applications for a new decision. The court emphasized that the Commercial Court was obligated to consider the merits of the case for the requested relief without deferring to the pendency of Rakesh Kumar's application. The court confirmed that Gupta retained the right to assert proprietorial claims over the trademark in question.

Hamdard Laboratories India Vs Unani Drugs Manufacturer Association

Introduction

In the annals of Indian commercial litigation, the dispute between Hamdard Laboratories India (Medicine Division) and Unani Drugs Manufacturer Association (UDMA) emerges as a fascinating exploration of trademark rights, family settlements, and jurisdictional boundaries. Decided by the High Court of Delhi on April 2, 2025, this case encapsulates two appeals—FAO 328/2024 and FAO 347/2024—challenging a trial court’s dismissal of interim relief and contempt applications. At its heart lies the iconic "HAMDARD" trademark, a legacy dating back to 1906, and a modern-day tussle over its use in the Unani medicine market. This case study unravels the intricate factual tapestry, procedural maneuvers, legal arguments, and judicial reasoning that led to a pivotal ruling on the domain of commercial courts in intellectual property disputes.

Detailed Factual Background

Hamdard Laboratories India, originating from the Hamdard Group founded in 1906 by Hakeem Hafiz Abdul Majeed, has long been synonymous with Unani and Ayurvedic medicines. The appellant, Hamdard Laboratories India (Medicine Division), operates under an exclusive license from its sister entity, Hamdard National Foundation, via a 1975 agreement. Internal family disputes among the founder’s successors were resolved through a Supreme Court-mediated Family Settlement Deed dated October 22, 2019. This settlement bifurcated the Hamdard business into two divisions: the Medicine Division, led by Abdul Majeed and Asad Mueed, and the Food Division, headed by Hammad Ahmed and his sons, Hamid and Sajid Ahmed. Clause 11 of the settlement prohibited the Medicine Division from entering food-related trademark classes (29, 30, 32, 33, 34) and the Food Division from engaging in medicinal classes (3, 5, 10), barring mutual agreement. The respondent, UDMA, formed in 2017 under the Societies Registration Act, 1860, represents Unani drug manufacturers and claims over 70 members, constituting 95% of the Unani industry by volume and value, as stated on its website (www.udmaindia.com). The appellant, holding over 60% of the Unani medicine market and not a UDMA member, alleged that UDMA’s claims misrepresented its market share by including the appellant’s products and falsely portrayed Food Division products like Rooh Afza and Hamdard Honey as medicinal, breaching the family settlement.

Detailed Procedural Background

The dispute crystallized in CS No. 449/2022, filed by the appellant against UDMA before the Additional District Judge, Shahdara District, Karkardooma Courts, Delhi. The appellant sought an injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), to restrain UDMA from using the "HAMDARD" name and to compel a disclaimer of the appellant’s non-membership, alongside Rs. 5,00,000 in damages. A separate application under Order XXXIX Rule 2A alleged UDMA’s contempt of court directions. On August 29, 2024, the trial court dismissed both applications, prompting the appellant to file two First Appeals under Order XLIII Rule 1 CPC: FAO 328/2024 against the injunction dismissal and FAO 347/2024 against the contempt dismissal. The High Court reserved judgment on March 4, 2025, and pronounced its common verdict on April 2, 2025, addressing both appeals.

Issues Involved in the Case

The primary issue was whether the trial court erred in dismissing the appellant’s applications for interim relief and contempt. This hinged on two sub-issues: Did the dispute, involving the "HAMDARD" trademark and UDMA’s alleged misrepresentation, fall within the commercial courts’ jurisdiction under the Commercial Courts Act, 2015, rather than a regular civil court? Was the suit maintainable without joining the Hamdard Food Division (HFI) as a necessary party, given its alleged role in the misuse of the trademark?

Detailed Submission of Parties

Senior Advocate Sanjeev Sindhwani, representing the appellant, argued that UDMA’s website claims were defamatory and misleading, inflating its market share by including the appellant’s non-member contributions and misrepresenting Food Division products as Unani medicines, contrary to the 2019 settlement. He contended that the suit was not a commercial dispute, as no contract existed between the appellant and UDMA, and the grievance was reputational, not trade-related. Sindhwani asserted that HFI’s involvement was peripheral, and the suit targeted UDMA’s actions alone, negating the need to join HFI. He urged that the trial court’s failure to apply the "trinity test" (prima facie case, balance of convenience, irreparable injury) warranted reversal. Conversely, Advocate N.K. Jha for UDMA defended the trial court’s rulings, arguing that the dispute was inherently commercial, involving trademark use and intellectual property rights, thus falling under the Commercial Courts Act. He posited that HFI’s role was central, as the appellant’s claims implicated HFI’s products, rendering the suit defective for non-joinder. Jha maintained that no contempt occurred, as UDMA did not willfully disobey any court order, and the trial court lacked jurisdiction to enforce contempt in a misfiled suit.

Detailed Discussion on Judgments Cited by Parties and Their Context

The appellant implicitly relied on the trinity test framework from injunction jurisprudence, though no specific cases were cited in the judgment text. The respondent’s jurisdictional argument aligned with the Commercial Courts Act, 2015, particularly Sections 2(1)(c)(ix) (distribution and licensing agreements) and (xvii) (intellectual property rights), though not explicitly tied to precedents by UDMA’s counsel. The court independently referenced Namita Gupta v. Suraj Holdings Limited (2024 SCC OnLine Del 143), where the Delhi High Court directed the return of a plaint under Order VII Rule 10 CPC for filing before a competent court when jurisdiction was lacking. In Namita Gupta, the issue involved a commercial dispute misfiled in a regular civil court, akin to the present case, guiding the court’s directive to transfer the suit.

Detailed Reasoning and Analysis of Judge

Justice Dharmesh Sharma’s analysis was a meticulous blend of statutory interpretation and practical jurisprudence. He first dissected the appellant’s grievance: UDMA’s website claims suggested a market dominance that included the appellant’s output, despite its non-membership, and misrepresented HFI’s food products as medicinal, breaching the family settlement. Sharma noted that the appellant’s prayers—restraining UDMA from using "HAMDARD" and mandating a disclaimer—exceeded the suit’s scope, which also sought damages, indicating a broader commercial intent. He rejected the appellant’s claim that the dispute was non-commercial, observing that it centered on the "HAMDARD" trademark’s use in Unani medicine promotion, implicating intellectual property rights under Section 2(1)(c)(xvii) of the Commercial Courts Act. The involvement of HFI, whose products UDMA allegedly mischaracterized, was deemed central, rendering HFI a necessary party under CPC principles, as its absence prejudiced a complete adjudication. Sharma highlighted Clause 11 of the 2019 settlement, barring HFI from medicinal classes, and UDMA’s Memorandum of Association, aimed at Unani drug development, to underscore the commercial nexus. He reasoned that the trial court’s failure to apply the trinity test was moot, as it lacked subject-matter jurisdiction, a foundational flaw. For the contempt appeal, Sharma found no evidence of willful disobedience, and the jurisdictional defect precluded enforcement. Citing Namita Gupta, he mandated the plaint’s return for refiling before a commercial court, emphasizing the Act’s objective of expeditious commercial dispute resolution.

Final Decision

Both appeals, FAO 328/2024 and FAO 347/2024, were dismissed on April 2, 2025. The trial court’s order of August 29, 2024, was upheld, with the plaint ordered returned under Order VII Rule 10 CPC for presentation to a competent Commercial Court. All pending applications were disposed of accordingly.

Law Settled in This Case

The ruling clarified that disputes involving trademark use and intellectual property misrepresentation, even absent a direct contractual nexus, constitute commercial disputes under the Commercial Courts Act, 2015, requiring adjudication by specialized commercial courts. It reinforced the necessity of joining all relevant parties in suits implicating family settlements and trademark rights, and underscored that jurisdictional propriety trumps procedural merits like the trinity test when the forum is incorrect.

Case Title: Hamdard Laboratories India (Medicine Division) v. Unani Drugs Manufacturer Association (UDMA)

Date of Order: April 2, 2025

Case No.: FAO 328/2024 

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Dharmesh Sharma

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

Pernod Ricard India Private Limited Vs A B Sugars Limited

Introduction

The case of Pernod Ricard India Private Limited vs A B Sugars Limited & Another, decided on 31st October 2023 by the High Court of Delhi, is a critical precedent in the domain of trademark protection and the doctrine of deceptive similarity in the context of the alcoholic beverage industry. This case revolves around a claim of infringement and passing off, brought by Pernod Ricard India Private Limited, a well-established player in the spirits market, in relation to their whisky brand "Imperial Blue." The plaintiff alleged that the defendants had introduced a product named “Imperial Gold” with packaging and branding designed to mimic and exploit the goodwill of “Imperial Blue.” The court’s decision on the plaintiff’s application for interim injunction highlights the principles surrounding protectable elements of trade dress, phonetic similarity, and the concept of deceptive resemblance.

Factual Background

Pernod Ricard India Pvt. Ltd. is the registered proprietor of the trademark “Imperial Blue,” launched in 1997, and has since built considerable goodwill and recognition in the Indian market. The brand is one of the top-selling whiskies in India, enjoying substantial market penetration and extensive advertisement outreach. The mark is registered under Class 33 of the Trade Marks Act, 1999, covering alcoholic beverages. In 2023, the plaintiff discovered that A B Sugars Limited, in collaboration with a marketing company, had launched a competing whisky product titled “Imperial Gold.” The plaintiff alleged that the use of the word “Imperial,” coupled with a similar color scheme, typography, and bottle shape, amounted to both infringement and passing off. They claimed that the defendants’ product was intentionally designed to confuse consumers and misappropriate the brand equity of “Imperial Blue.”

The plaintiff pointed out specific similarities in the label layout, combination of gold and blue colors, the placement and design of product descriptors, as well as the shape and appearance of the bottle itself. They contended that these similarities were not coincidental but indicative of a deliberate attempt to ride upon the reputation of “Imperial Blue.”

Procedural Background

A commercial civil suit bearing number CS(COMM) 789/2023 was filed by the plaintiff before the Delhi High Court. The plaintiff sought a permanent injunction to restrain the defendants from manufacturing, selling, marketing, or dealing in any product using the term “Imperial Gold,” or any other mark deceptively similar to “Imperial Blue.” The present order was passed on the plaintiff’s application for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The court had to assess whether the plaintiff had established a prima facie case for interim protection, the balance of convenience, and the likelihood of irreparable harm.

Issues Involved

The primary issue was whether the use of “Imperial Gold” by the defendants amounted to trademark infringement and passing off by being deceptively similar to the plaintiff’s registered trademark “Imperial Blue.” A related issue was whether the word “Imperial” was inherently distinctive or had acquired secondary meaning sufficient to warrant exclusive proprietary rights. The court also had to determine whether the similarities in packaging, color combination, bottle design, and overall trade dress justified an interim injunction in favor of the plaintiff.

Submissions of the Parties

The plaintiff contended that “Imperial Blue” was a well-known mark and that the word “Imperial” had, over the years, become the dominant identifier of its brand. They emphasized that the defendants’ product, “Imperial Gold,” copied this dominant portion of the mark, and used similar packaging and branding elements to cause confusion. The plaintiff argued that the consumers, particularly in the alcoholic beverage market, would likely be misled by the similarities, thereby causing irreparable damage to the brand’s goodwill. They relied on several judicial precedents to support their argument, especially emphasizing that even partial adoption of a well-known mark constitutes infringement and that trade dress and packaging also enjoy protection under trademark law.

In contrast, the defendants submitted that the word “Imperial” is a dictionary word, commonly used and not distinctive by itself. They argued that the plaintiff could not claim monopoly over a generic or laudatory term and that the suffixes “Blue” and “Gold” created a sufficiently distinct identity. Further, they contended that the packaging was not deceptively similar, and their brand was independently created without any intention of misleading consumers or exploiting the plaintiff’s reputation.

Discussion on Judgments and Contextual References

The plaintiff relied heavily on the Supreme Court’s decision in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the court held that in cases involving health and safety, a stricter standard must be applied to determine deceptive similarity. Though whisky is not a medicinal product, the court considered this principle relevant because it underscored the need to assess consumer confusion from a public interest perspective. The judgment laid out various factors to be considered when evaluating similarity, such as the nature of marks, similarity in appearance and sound, nature of goods, class of purchasers, and the manner of purchasing.

Another significant citation was Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449. In this case, the court held that phonetic similarity could be sufficient to establish infringement or passing off, particularly where the overall impression conveyed by the marks is similar. This was particularly relevant in the present case because the court had to evaluate the phonetic identity of “Imperial Blue” and “Imperial Gold.”

The plaintiff also cited F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062. In that case, the court observed that ordinary consumers are not expected to have a perfect recollection of trademarks and that decisions must consider the overall impression formed in the mind of the average purchaser. This supported the plaintiff’s argument that even subtle similarities could lead to deception, especially when products are marketed to the same consumer base and sold through identical channels.

Each of these cases helped the court affirm that trademark protection is not limited to exact replicas and extends to cases where there is a likelihood of confusion or association due to visual, structural, or phonetic similarity.

Reasoning and Analysis by the Court

Justice C. Hari Shankar noted that the plaintiff was the registered proprietor of the mark “Imperial Blue” and had extensively used the mark over a long period, thus establishing both statutory and common law rights. The court held that the plaintiff had established a strong prima facie case that the word “Imperial” had become a distinctive identifier of its brand. Even if “Imperial” was a dictionary word, the long-standing and exclusive association with “Imperial Blue” had imbued it with a secondary meaning.

Upon examining the packaging of “Imperial Gold,” the court found striking visual and structural similarities with “Imperial Blue.” These included the use of blue and gold colors, identical font styles, label layout, and overall trade dress. The judge held that the defendants’ adoption of such elements could not be considered accidental or bona fide. The visual similarity, combined with phonetic overlap, created a high probability of confusion in the minds of consumers.

The court observed that trademark infringement does not require proof of actual confusion; a likelihood of confusion is sufficient. Moreover, in passing off cases, even without registration, goodwill and reputation must be protected from misappropriation. The balance of convenience favored the plaintiff as the brand was well-established, whereas the defendants’ product had been recently launched. The potential for irreparable harm to the plaintiff’s goodwill outweighed the commercial loss to the defendants. The court emphasized that where a mark has acquired distinctiveness and is associated with a particular source, it deserves strong protection, particularly against competitors attempting to trade upon its goodwill.

Final Decision

The Delhi High Court allowed the plaintiff’s application for interim injunction and restrained the defendants from manufacturing, selling, or advertising any whisky product under the name “Imperial Gold” or any other name that was deceptively similar to “Imperial Blue.” The injunction extended to the trade dress and packaging elements that resembled those of the plaintiff’s product. The order will remain in effect until the final adjudication of the suit.

Law Settled in This Case

This case reaffirmed that:A common or dictionary word can become distinctive and monopolizable if it acquires secondary meaning through prolonged and exclusive use. Trademark protection extends not only to the name but also to the visual elements such as color schemes, bottle shapes, and trade dress. In assessing deceptive similarity, the court considers phonetic, visual, and structural resemblance, along with the overall commercial impression. Even in interim stages, courts can restrain infringing use where the mark enjoys goodwill and a strong prima facie case is made out. The law favors preventing confusion rather than remedying it post facto.

Case Title: Pernod Ricard India Private Limited Vs A B Sugars Limited & Another

Date of Order: 31st October 2023

Case Number: CS(COMM) 789/2023

Neutral Citation: 2023:DHC:7749

Court: High Court of Delhi

Presiding Judge: Hon’ble Mr. Justice C. Hari Shankar

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

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

Torrent Pharmaceuticals Ltd. vs. Indorbit Pharmaceuticals P. Ltd.

Case Title: Torrent Pharmaceuticals Ltd. vs. Indorbit Pharmaceuticals P. Ltd.:Case No.: CS(COMM) 912/2024: 2025:DHC:3758:Date of Order: May 14, 2025:Court: High Court of Delhi:Judge: Hon'ble Mr. Justice Saurabh Banerjee

Facts: Torrent Pharmaceuticals claimed that Indorbit Pharmaceuticals adopted a trade dress for its product ORBITCAL-500 that was deceptively similar to Torrent's SHELCAL-500 label and packaging used for calcium and vitamin D3 supplements. Torrent asserted that it had acquired rights to its trade dress through an assignment and had applied for trademark registration. The defendant’s packaging was noticed in the market in September 2024, leading Torrent to file a suit for infringement and passing off, seeking a permanent injunction.

Procedural Details: Torrent filed the suit and obtained an ex parte ad interim injunction. The defendants neither appeared nor filed a written statement despite service, leading to their rights being closed and the defendants being proceeded against ex parte. Torrent then moved for a decree under Order VIII Rule 10 CPC, based on the defendants’ failure to contest the case and the similarity of packaging.

Issue: The primary issue was whether the court could pass a decree under Order VIII Rule 10 CPC in favor of Torrent, primarily based on the allegedly similar trade dress, without full trial evidence, considering the provisions and limitations under the CPC, especially given the disputed questions of fact regarding the adoption and usage of the trade dress.

Decision: The court rejected Torrent's application for a decree under Order VIII Rule 10 CPC at this stage. It observed that Torrent failed to establish with sufficient evidence that it was the prior adopter and user of the new trade dress before the defendant. The court emphasized that the threshold for granting such a decree was high and required that Torrent prove its case through evidence, not merely on the basis of pleadings or the absence of defense. Since the case involved disputed facts and the defendants had not entered appearance, the court held that trial was necessary for a proper adjudication.

The Foundry Visionmongers Limited vs. Singarajan VFX Private Limited

Case Title: The Foundry Visionmongers Limited vs. Singarajan VFX Private Limited & Anr. Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal Case No.: CS(COMM) 461/2022 Date of Order: 05 May 2025 Neutral Citation:2025:DHC:3758

Fact:

The plaintiff, The Foundry Visionmongers Limited, a UK-based company specializing in VFX and image processing software, owns the copyright of its flagship software, NUKE. The software is widely used globally and in India, authorized for sale by its exclusive distributor, Ark Infosolutions. The defendants, Singarajan VFX Private Limited and its director, allegedly used unauthorized cracked or pirated versions of NUKE in their computer systems. Evidence showed infringements across multiple computers, including files and usage reports, despite the defendants' approach to buy licenses and subsequent default.

Procedural History:

The plaintiff filed a suit for permanent injunction and damages in July 2022. An ex-parte interim injunction was granted and later made absolute. The defendants did not participate in the proceedings despite service and an interim injunction, leading to proceedings ex-parte. Evidence was led by the plaintiff, including reports from a Local Commissioner confirming unauthorized use of the plaintiff’s software.

Issue:

Whether the defendants infringed the plaintiff’s copyright by using unauthorized versions of NUKE software and whether the plaintiff is entitled to damages and injunction.

Decision:

The Court found that the defendants infringed the plaintiff’s copyright in the NUKE software. They used unauthorized versions on multiple computers, gaining unlawful benefits, which resulted in copyright infringement. Consequently, the Court ordered a decree for damages of Rs. 22,60,895, and awarded costs of approximately Rs. 6,55,108. Additionally, costs in the sum of Rs. 5,00,000 were awarded to the plaintiff. The Court also granted a permanent injunction against the defendants.

Sun India Pharmacy Pvt. Ltd. vs. Hyeto Herbals Private Limited

Case Title: Sun India Pharmacy Pvt. Ltd. vs. Hyeto Herbals Private Limited Case No.: CS(COMM) 381/2020 Date of Order: 7th May 2025 Neutral Citation: [2025:DHC:3623] Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice Amit Bansal

---

Facts:

Sun India Pharmacy (plaintiff), a well-established manufacturer and seller of Ayurvedic and pharmaceutical products under the mark “Sun India,” alleges that Hyeto Herbals (defendant) has copied its trademark, packaging, and trade dress, leading to consumer confusion and trademark infringement. The plaintiff claims long-standing use since 2002-2004, extensive sales, and goodwill in India. The defendant was found to have used deceptively similar packaging and applied for a similar trademark after promising not to do so.

Procedural Details:

• The suit was filed seeking permanent injunction against infringement of trademarks and copyright, damages, and costs.
• An ex-parte ad interim stay/order was granted on 16th September 2020.
• Multiple attempts at mediation were made but were unsuccessful.
• The court heard the matter on 21st February 2025, with evidence recorded.
• The defendant initially stopped manufacturing but later resumed using similar branding, prompting the suit.
• On 3rd May 2023, the court made the interim injunction absolute.
• The case was finally decided on 7th May 2025.

Issue:

The key legal issues were whether the defendant's use of similar marks and trade dress constituted infringement of registered trademarks, passing off, and copyright violations, and whether damages and costs should be awarded due to the defendant's dishonest conduct.

Decision:

The court held in favor of the plaintiff, reiterating that the defendant's use of deceptively similar packaging and marks was dishonest and violated the plaintiff’s rights. The court awarded damages of Rs. 5,00,000, granted a permanent injunction restraining the defendant from infringing upon the plaintiff’s trademarks, and imposed costs and aggravated damages due to the defendant's misconduct.

Ramway Foods Limited Vs. Rajendra Sharma

Case Title:M/S Ramway Foods Limited vs. Rajendra Sharma & Anr.: Date of Order:7th May 2025: Case Number:CS(COMM) 182/2023:Neutral Citation: 2025:DHC:3624:Name of Court:High Court of Delhi: Name of Judge:2025:DHC:3624: Hon'ble Mr. Justice Amit Bansal

Facts:

Ramway Foods Limited, engaged in manufacturing and trading in various food items under the 'DOUBLE TAALA' mark since 2011, alleged that the defendants adopted and used deceptively similar marks and trade dress, causing confusion and damage to Ramway's reputation and goodwill. The defendants allegedly copied distinctive elements of Ramway’s label, including words like "ALIGARH," "7 Levers," and the initials "RF."

Procedural Details:

The suit was filed seeking, among other reliefs, permanent injunction, damages, and costs.An ex-parte ad interim injunction was granted on 11th April 2023.The defendants did not file a timely written statement; their application for condonation of delay was dismissed.The defendants' written statement was eventually taken off record, and they were proceeded against ex-parte.The court referred the case for mediation, but the efforts failed. The defendants did not participate further after service.

Issue:

Whether the defendants’ use of marks and labels was deceptive, infringing Ramway’s trademarks and copyright, thereby constituting passing off and infringement under the law.

Decision:

The court held that the defendants had dishonestly adopted and used deceptively similar marks, causing confusion and infringing Ramway’s rights. The court found the defendants liable for trademark infringement, passing off, and copyright infringement, and awarded damages of Rs. 5,00,000 along with costs. The court also granted a permanent injunction restraining the defendants from infringing Ramway's trademarks and copyright.

Romil Gupta Vs. Registrar of Trade Mark

Case Title:Romil Gupta Trading as Sohan Lal Gupta vs. Registrar of Trade Marks & Ors.: Court:High Court of Delhi: Date of Order: May 14, 2025:Case Number:C.A.(COMM.IPD-TM) 1/2023:Neutral Citation: 2025:DHC:3679: Name of Judge:Hon’ble Mr. Justice Amit Bansal

Facts:

The appellant, Romil Gupta, engaged in manufacturing and trading self-tapping metal screws, filed a trademark application in Class 6 on October 30, 2018, claiming user since February 27, 2013. Due to a clerical error, the applied mark was different from the intended subject mark, but the appellant sought to correct this error by amending the application. The respondent (Registrar of Trade Marks) initiated proceedings, alleging “substantial alteration” of the mark, and issued a notice under Section 57(4) of the Trade Marks Act, 1999, without providing the mandated minimum one-month notice. Subsequently, an order was passed canceling the registration of the trade mark.

Procedural Details:

• The respondent issued a notice on October 31, 2022, invoking Section 57(4), but without adhering to the prescribed notice period as mandated by Rule 100 of the Trade Marks Rules, 2017.

• The appellant attended a hearing scheduled on November 17, 2022.

• The Registrar passed the impugned order on December 15, 2022, canceling the trademark registration.

• The appellant challenged this order in the present appeal filed under Section 91.

• The Court stayed the impugned order on January 25, 2023.
• 
  

Issues:

• Whether the Registrar of Trade Marks rightly invoked Section 57(4) based on a complaint, or if procedural violations (not adhering to the notice period) nullify the proceedings.

• Whether the amendment sought by the appellant constituted a “substantial alteration” in the mark, justifying proceedings under Section 57.

• Whether the notice issued was compliant with statutory requirements under Rule 100 and Section 57(4).

• If procedural irregularities invalidated the cancellation order.

Decision:

The Court found that:

• The notice issued under Section 57(4) did not comply with the mandatory minimum notice period of one month, violating the principles of natural justice.

• The proceedings were initiated based on a complaint and not sua motu, but the procedural rules were not properly followed.

• The order of cancellation was therefore unsustainable and was set aside.

• The Court emphasized adherence to statutory procedures and upheld the appellant’s right to proper notice.

Consequently, the cancellation order was quashed, and the appeal was allowed.

Vishal Gupta & Ors. Vs. Rahul Bansal

Case Title: Vishal Gupta & Ors. v. Rahul Bansal Date of Order: 8th May 2025 Case Number: FAO (COMM) 103/2025 Neutral Citation: 2025:DHC:3685-DB Court Name: High Court of Delhi Presiding Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Fact

The case concerns a dispute over the use of trademarks and labels related to edible oils by the parties. The respondent-plaintiff (Rahul Bansal) filed a suit against the appellants (Vishal Gupta & Ors.) alleging infringement of unregistered trademarks and copyright labels used on edible oils. The respondent claimed prior use of the name "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI" and sought an injunction against the appellants for using similar marks/trademarks.

Procedural Details

The Commercial Court issued an order restraining the appellants from dealing with edible oils under the names "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI," based on the perceived similarity to the respondent’s unregistered trademark "MATA AMAR SHAKTI" and the copyright of the label. The appellants appealed that order. The High Court is now reviewing the legality of the injunction, remanding the matter for a de novo review of the application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code.

Issue

The core issue is whether the injunction restraining the appellants from using or dealing in edible oils under the similar marks was legally justified, especially considering the respondent’s unregistered trademark and copyright, and whether the law applicable to trademark infringement or passing off was correctly applied.

Decision

The Court noted a fundamental error in the Commercial Court’s order, particularly that the injunction was granted based on unregistered trademarks. The High Court quashed and set aside the impugned order concerning the application under Order XXXIX Rules 1 and 2 of the CPC, remanding it for a fresh, lawful consideration. The court clarified that the law of passing off and the principles of trade mark law require careful evaluation of prior user, goodwill, and the nature of misrepresentation, especially when trademarks are unregistered.

Mankind Pharma Limited vs. Zhejiang Yige Enterprise

Case Title: Mankind Pharma Limited vs. Zhejiang Yige Enterprise Management Group Co. Ltd. Case No.: C.A.(COMM.IPD-TM) 2/2024 Date of Order: May 14, 2025 Court: High Court of Delhi Judge: Hon’ble Justice Saurabh Banerjee Neutral Citation:2025:DHC:3706

Facts:

Mankind Pharma Limited, an established pharmaceutical company, has been using the trademark "FLORA" in India since 1995, and obtained registration for it in 2007 for pharmaceutical preparations. Zhejiang Yige Enterprise Management Group Co. Ltd. applied for registration of the mark "FLORASIS" in Class 5 in India in August 2019, for sanitary and health-related products, on a "proposed to be used" basis. Mankind Pharma opposed this registration, alleging similarities to the well-known "FLORA" trademark, which could cause confusion among consumers.

Procedural Details:

• Mankind Pharma filed an opposition to the registration of "FLORASIS."
• The Deputy Registrar of Trade Marks dismissed the opposition, allowing the registration.
• Feeling aggrieved, Mankind Pharma filed an appeal before the High Court under Section 91 of the Trade Marks Act, 1999.
• The appellant argued that the registration was erroneously granted, citing prior use, similarity of marks, and likelihood of consumer confusion.
• Zhejiang Yige did not participate in the proceedings; the order was ex-parte against the respondent.

Issue:

Whether the registration of the mark "FLORASIS" by Zhejiang Yige, which is similar to the registered "FLORA" owned by Mankind Pharma, infringes prior rights and is likely to cause consumer confusion, thereby warranting its refusal under the Trade Marks Act.

Decision:

The High Court allowed the appeal, set aside the impugned order dated 29.05.2023, and directed the Registrar of Trade Marks to remove the registration of "FLORASIS" from the Register. The Court held that:

• The marks "FLORA" and "FLORASIS" are visually, phonetically, and structurally similar.
• The registration of "FLORASIS", despite some differences, was likely to create confusion and deceive the public.
• The prior use and reputation of "FLORA" favored the appellant's claim.
• Registration in other countries does not automatically entitle the respondent to register the same or similar marks in India.

The Court emphasized caution in the registration of marks, especially within the pharmaceutical industry, to avoid public confusion and protect consumer welfare.

Pluto Travels India Private Limited Vs. PTW Holidays Private Limited

Case Title: Pluto Travels India Private Limited Vs. PTW Holidays Private Limited Court: High Court of Delhi Judge: Hon’ble Mr. Justice Saurabh Banerjee Case No.: CS(COMM) 334/2024 Order Date: May 14, 2025 Neutral Citation: 2025:DHC:3709 Date of Order: May 14, 2025

Fact:

Pluto Travels India Private Limited (Plaintiff) has been in operation since 2004, offering luxury car rentals and travel services under the trademarks “PLUTO” and a distinctive device mark. They obtained trademark registrations and have been using these marks continuously for years. The defendant, PTW Holidays Private Limited, started its business around 2016 and adopted the mark “PLUTO TOURS” for providing travel services. The plaintiff contended that the defendant’s mark is identical and deceptively similar, leading to consumer confusion and infringement of their trademarks.

Procedural Detail:

The plaintiff filed a suit for permanent injunction and an interlocutory application seeking an interim injunction to restrain the defendant from using the mark “PLUTO TOURS.” The defendant opposed the injunction, claiming that their use was honest, since their adoption dates back to 2016, and that their marks are different in appearance and nature of services.

Issue:

The key issue was whether the defendant’s use of “PLUTO TOURS” infringed upon the plaintiff’s trademarks “PLUTO” and associated device mark, and whether an interim injunction should be granted to prevent further use by the defendant.

Decision:

The Court held that the plaintiff successfully established a prima facie case of trademark infringement and that the balance of convenience favored granting an interim injunction. It was found that the plaintiff’s longstanding use and registration of “PLUTO” and the device mark could be harmed irreparably if the defendant continued using “PLUTO TOURS.” The Court thus granted the interim injunction restraining the defendant from using the impugned marks.

Diamond Modular Pvt. Ltd. Vs. Vikash Kumar

Introduction

The case of Diamond Modular Pvt. Ltd. v. Vikash Kumar & Anr. is a pivotal trademark infringement dispute adjudicated by the High Court of Delhi, addressing the protection of registered trademarks and the scope of deceptive similarity under the Trade Marks Act, 1999. The appellant, Diamond Modular Pvt. Ltd., alleged that the respondents’ use of the unregistered mark “DIAMOND GOLD” infringed its registered trademark “DIAMOND” for electrical goods, seeking a permanent injunction. The Commercial Court dismissed the appellant’s suit, prompting an appeal before the High Court. The judgment, delivered on May 5, 2025, by Justices C. Hari Shankar and Ajay Digpaul, overturned the lower court’s decision, granting the injunction and reinforcing key principles of trademark law, including the irrelevance of identical goods for infringement and the evidential weight of uncontested trademark registrations. This case underscores the robust protections afforded to registered trademark proprietors and clarifies the application of Sections 28, 29, and 34 of the Trade Marks Act.

Detailed Factual Background

Diamond Modular Pvt. Ltd., the appellant, claimed proprietary rights over the “DIAMOND” trademark, used since 1975 for electrical goods such as switches, plugs, sockets, lamp shade holders, and fans, registered under Classes 9 and 11 of the Trade Marks Act. The appellant’s registrations included: (1) Registration No. 426403 (Class 9, electric switches, plugs, sockets, since April 1, 1975, valid until August 28, 2025); (2) Registration No. 709611 (Class 9, electric switches, sockets, connectors, proposed use, valid until April 8, 2033); (3) Registration No. 831578 (Class 9, electrical accessories, since January 1, 1975, valid until December 10, 2028); (4) Registration No. 337296 (Class 11, lamp shade holders, since April 1, 1975, valid until June 8, 2026); and (5) Registration No. 831577 (Class 11, electrical fans, coolers, geysers, since January 1, 1975, valid until December 10, 2028). The appellant, through its predecessor, Lalita Gupta, adopted the “DIAMOND” mark in 1975 under the proprietorship Diamond Products (India), later renamed New Diamond Electricals. In 1984, Rajesh Gupta, Lalita’s son, started Diamond Enterprises as a permissive user, acquiring the mark via an assignment deed dated October 19, 2001. The mark was further assigned to the appellant company, incorporated by Rajesh and Priti Gupta, on July 19, 2018. The appellant claimed a turnover of ₹23.7 crores in 2020–2021, asserting that “DIAMOND” was a well-known trademark and its logo an original artistic work under the Copyright Act, 1957. The appellant operated an interactive website, www.diamondindia.co.in.

The respondents, Vikash Kumar and another, used the unregistered mark “DIAMOND GOLD” for electrical goods, including fans, wires, cables, switches, and heaters, applying for registration in Classes 9, 11, and 35 on July 1 and 4, 2022. The appellant opposed these applications, which remained pending. The respondents promoted their products through an interactive website (https://sites.google.com/view/wwwadfancom/home), social media platforms (Facebook, WhatsApp, YouTube), and email addresses, actively marketing across India. The appellant alleged that “DIAMOND GOLD” was phonetically, visually, and structurally deceptively similar to “DIAMOND,” causing confusion and infringing its trademark rights. Evidence included screenshots of the respondents’ online presence and a WhatsApp conversation where the respondents agreed to deliver goods to a Delhi address within the court’s jurisdiction. The appellant claimed the respondents’ use was dishonest, aimed at exploiting its goodwill.

Detailed Procedural Background

The appellant filed a suit, CS (Comm) 444/2023, before the District Judge (Commercial Court)-05, South, Saket, under Sections 134, 135, and 27(2) of the Trade Marks Act, seeking a permanent injunction, delivery-up, rendition of accounts, damages, and costs. Despite summons, the respondents did not appear, and the court proceeded ex parte on April 9, 2024. The appellant led evidence through Piyush Gupta (PW-1), who filed an affidavit detailing the trademark’s history, the respondents’ infringing activities, and supporting documents, including a Legal Proceedings Certificate (LPC) dated March 12, 2021, from the Registrar of Trade Marks. The Commercial Court dismissed the suit on October 15, 2024, citing four grounds: (1) the respondents’ use of “DIAMOND GOLD” for fans did not infringe “DIAMOND” used for switches and LED lights; (2) reliance on Section 34, requiring continuous manufacture; (3) failure to prove assignment deeds from Lalita Gupta; and (4) Piyush Gupta’s incompetence as a witness. Aggrieved, the appellant filed an appeal, RFA (COMM) 166/2025, before the Delhi High Court. The appeal was heard by Justices C. Hari Shankar and Ajay Digpaul, represented by Mr. Rishi Bansal and others for the appellant, with no appearance for the respondents. The court pronounced its judgment on May 5, 2025, quashing the Commercial Court’s order and decreeing the suit.

Issues Involved in the Case

The case raises several critical issues: Whether the respondents’ use of “DIAMOND GOLD” infringes the appellant’s registered “DIAMOND” trademark under Section 29, given the alleged difference in goods (fans versus switches/LED lights). Whether the Commercial Court’s reliance on Section 34, requiring continuous manufacture, is legally sound in denying infringement relief. Whether the appellant failed to prove its proprietorial rights over the “DIAMOND” trademark due to unproduced assignment deeds. Whether Piyush Gupta was competent to testify as PW-1, given his authorization in 2024 and the historical facts dating back to 1975. Whether the appellant is entitled to a permanent injunction against the respondents’ use of “DIAMOND GOLD” for electrical goods.

Detailed Submission of Parties

Appellant’s Submissions (Diamond Modular Pvt. Ltd.): Represented by Mr. Rishi Bansal and others, the appellant argued that the Commercial Court erred on all grounds. On infringement, they contended that “DIAMOND GOLD” was deceptively similar to “DIAMOND,” phonetically, visually, and structurally, likely to cause confusion among consumers of average intelligence, per Section 29(2)(a) and (b). The goods (fans versus switches, LED lights, fans) were allied or cognate, as electrical goods are often produced by the same manufacturers, negating the need for identical goods. The appellant’s registrations in Classes 9 and 11, including fans, and priority of use since 1975, established its rights. On Section 34, the appellant argued the provision was irrelevant, as it protects prior users, not applicable here since the respondents’ use began in 2022. Regarding proprietorial rights, the appellant acknowledged not filing assignment deeds but relied on the LPC, which documented the trademark’s transfer from Lalita Gupta to Rajesh Gupta (2001) and to the appellant (2018), arguing that Section 31(1) deems registration prima facie valid, unchallenged by the respondents. On Piyush Gupta’s competence, the appellant submitted that as a company representative, Gupta relied on company records, not personal knowledge, and his testimony was uncontested, rendering the Commercial Court’s reliance on Janki Vashdeo Bhojwani misplaced, as it involved natural persons, not juristic entities.

Respondents’ Submissions (Vikash Kumar & Anr.): The respondents did not appear or file a written statement, leaving the appellant’s evidence and submissions uncontested. The court noted their absence, proceeding ex parte and refraining from awarding damages or costs due to their non-participation.

Detailed Discussion on Judgments Cited by Parties

Janki Vashdeo Bhojwani v. Indusind Bank Ltd., (2005) 2 SCC 217: Cited by the Commercial Court to question Piyush Gupta’s competence, this Supreme Court case held that a power of attorney holder cannot depose on facts within the personal knowledge of another natural person. The High Court distinguished this, noting that the appellant, a juristic entity, required a natural person to represent it. Gupta’s affidavit relied on company records, not personal knowledge, and went uncontested, rendering the precedent inapplicable.

No other judgments were explicitly cited by the parties, but the court referenced statutory provisions and principles from the Trade Marks Act, particularly Sections 28, 29, 31, and 34, to analyze infringement, registration validity, and prior use. The court’s reasoning implicitly drew on established trademark jurisprudence, such as the likelihood of confusion test and the scope of “similar” goods, without citing specific cases.

Detailed Reasoning and Analysis of Judge

Justices C. Hari Shankar and Ajay Digpaul systematically dismantled the Commercial Court’s findings, addressing each ground of dismissal. On infringement, the court held that the Commercial Court erred in requiring identical goods. Section 29(2)(a) and (b) defines infringement as the use of a similar mark for identical or similar goods, likely to cause confusion or association. Fans, switches, and LED lights, as electrical goods often produced by the same manufacturers, are “similar” or cognate. The marks “DIAMOND” and “DIAMOND GOLD” were deceptively similar, sharing the dominant element “DIAMOND,” likely to confuse consumers of average intelligence. The appellant’s registrations, including for fans, and priority of use since 1975, reinforced its claim. The court clarified that actual use of the registered mark is not required for infringement under Section 28(1), and non-use only permits removal under Section 47, not denial of infringement relief.

On Section 34, the court found the Commercial Court’s reliance misplaced. Section 34 protects prior users of identical or similar marks, inapplicable here as the respondents’ use began in 2022, long after the appellant’s 1975 adoption and 1984 registration. The Commercial Court’s interpretation, requiring continuous manufacture, was unsupported by the provision’s text, reflecting a non-application of mind.

Regarding proprietorial rights, the court addressed the Commercial Court’s rejection due to unproduced assignment deeds. While the appellant did not file the 2001 and 2018 deeds, the LPC dated March 12, 2021, exhibited as PW1/11, documented the trademark’s transfer from Lalita Gupta to Rajesh Gupta (October 19, 2001) and to the appellant (July 19, 2018). Section 31(1) deems registration and assignments prima facie valid, and the uncontested LPC sufficed to prove proprietorship, especially absent respondent rebuttal.

On Piyush Gupta’s competence, the court rejected the Commercial Court’s skepticism. As a juristic entity, the appellant required a representative. Gupta’s affidavit, based on company records and verified on May 22, 2024, was uncontested, as the respondents neither appeared nor cross-examined. The Commercial Court’s reliance on Janki Vashdeo Bhojwani was erroneous, as it involved natural persons, not companies. The court further noted that courts cannot construct a case for a non-participating party, reinforcing the weight of Gupta’s unchallenged testimony.

Final Decision

The High Court quashed the Commercial Court’s judgment dated October 15, 2024, and decreed CS (Comm) 444/2023 in the appellant’s favor. A permanent injunction was granted, restraining the respondents and their agents from using “DIAMOND GOLD” or any mark identical or deceptively similar to “DIAMOND” for electrical goods or allied/cognate goods, including fans. No damages or costs were awarded due to the respondents’ absence. The Registry was directed to draw up a decree sheet, and the appeal was allowed.

Law Settled in This Case

The judgment clarifies several principles under the Trade Marks Act: Infringement under Section 29(2) of Trademarks Act 1999 does not require identical goods; similar or cognate goods (e.g., fans, switches) suffice if the marks are deceptively similar and likely to cause confusion. Section 34 is irrelevant unless the defendant proves prior use, inapplicable to late adopters. Trademark Registration and assignments are prima facie valid under Section 31(1), and uncontested evidence, like an LPC, proves proprietorship without original deeds. A company’s representative can testify based on records, and uncontested testimony carries significant weight. Courts cannot construct defenses for non-appearing parties.

Diamond Modular Pvt. Ltd. Vs. Vikash Kumar & Anr.:May 5, 2025:RFA (COMM) 166/2025:2025:DHC:3619-DB:High Court of Delhi:Hon’ble Mr. Justice C. Hari Shankar, Hon’ble Mr. Justice Ajay Digpaul

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

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal

Introduction

The case of Abros Sports International Pvt. Ltd. v. Ashish Bansal and Ors. is a significant trademark dispute adjudicated by the High Court of Delhi, addressing complex issues of trademark infringement, passing off, and the legal implications of registered trademarks under the Trade Marks Act, 1999. The case revolves around the appellant, Abros Sports International Pvt. Ltd. (ASIPL), alleging that the respondents’ use of the mark “NEBROS” infringes its registered trademark “ABROS” and constitutes passing off. The appeal arises from a Single Judge’s dismissal of ASIPL’s application for an interim injunction, prompting a deeper examination of whether an infringement suit can be maintained against a registered trademark and the procedural nuances involved. The Division Bench, unable to reconcile its interpretation with a prior coordinate bench decision, referred critical legal questions to a Larger Bench, leaving the appeal’s final resolution pending.

Detailed Factual Background

ASIPL, incorporated on February 14, 2020, claimed proprietorship of the “ABROS” trademark, used for footwear and related products. The mark, a portmanteau of “A” (from Anil Sharma, the founder) and “BROS” (indicating the family business), was conceived in March 2017 by Anil Sharma’s proprietorship and assigned to ASIPL via a deed dated January 15, 2021. ASIPL held multiple trademark registrations for “ABROS” across Classes 25 (footwear), 28 (sporting articles), and 35 (trading and e-commerce), with the earliest registration dated March 3, 2017, claiming use since March 1, 2017. ASIPL operated the domain www.abrosshoes.com since June 2018 and reported substantial sales (₹7.84 crores in 2020 and ₹216.45 crores in 2021) and advertising expenses (₹35.12 lakhs in 2020 and ₹337.69 lakhs in 2021), underscoring the mark’s market reputation.

The respondents, led by Ashish Bansal (Respondent 1), used the mark “NEBROS” for similar footwear products in the same price range (₹1500–₹2000). Respondent 1 held a trademark registration for “NEBROS” in Class 25 (clothing and footwear) from September 25, 2019, applied on a “proposed to be used” basis. Respondent 1 claimed “NEBROS” was derived from “Nice Footwear” (a business run by Bansal’s uncle) and “BROS” (indicating brothers), asserting it as a coined, distinctive mark. Respondents 2 to 6 were involved in manufacturing or trading goods bearing the “NEBROS” mark. ASIPL alleged that “NEBROS” was deceptively similar to “ABROS,” causing confusion and infringing its trademark rights, while also challenging the validity of the “NEBROS” registration. The respondents countered that “NEBROS” was distinct, with prior use since September 2020, and that “BROS” was a generic suffix, precluding ASIPL’s claim to exclusivity.

Detailed Procedural Background

ASIPL filed a suit (CS (Comm) 702/2022) before the Delhi High Court, seeking a permanent injunction against the respondents’ use of “NEBROS,” alleging trademark infringement and passing off. Alongside, ASIPL moved an application (IA 16555/2022) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for an interim injunction. On May 2, 2024, a learned Single Judge dismissed the interim application, finding no phonetic, visual, or structural similarity between “ABROS” and “NEBROS,” and noting Respondent 1’s prior use (since September 2020) compared to ASIPL’s earliest invoice from February 2021. The Single Judge also observed that ASIPL failed to oppose the “NEBROS” registration and that the marks’ distinct logos negated passing off.

Aggrieved, ASIPL appealed to a Division Bench of the Delhi High Court vide FAO(OS) (COMM) 140/2024, accompanied by CM APPL. 38801/2024. The appeal was reserved on May 6, 2025, and pronounced on May 13, 2025. During adjudication, the Division Bench identified a fundamental legal conflict with the precedent in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708), which held that an infringement suit could lie against a registered trademark if its invalidity was pleaded. Disagreeing with this view, the Division Bench referred the matter to a Larger Bench to resolve critical questions regarding the maintainability of infringement suits against registered trademarks and the scope of interlocutory relief in such cases.

Issues Involved in the Case

The case presents several key issues:

1. Whether the respondents’ use of “NEBROS” infringes ASIPL’s registered “ABROS” trademark under Section 29 of the Trade Marks Act, 1999?
2. Whether an infringement suit can be maintained against the proprietor of a registered trademark, particularly when the plaintiff pleads invalidity of the defendant’s registration?

Detailed Submission of Parties

ASIPL’s Submissions (Appellant):

ASIPL, represented by Mr. Ranjan Narula, argued that the Single Judge erred in dismissing the interim injunction application. Key submissions included:

• Priority of Use and Registration: ASIPL claimed priority of use since March 2017, evidenced by Narmada Polymers’ use of “ABROS” on soles, which are cognate to shoes. The mark’s presence on ASIPL’s Certificate of Incorporation and PAN Card (February 14, 2020) constituted “use” under Sections 2(2)(b) and (c) of the Trade Marks Act. The earliest “ABROS” registration (March 3, 2017) predated the “NEBROS” registration (September 25, 2019), granting ASIPL priority.
• Deceptive Similarity: “ABROS” and “NEBROS” were phonetically similar, satisfying the “triple identity test” (identical goods, same trade channels, same customer segment). The Single Judge’s focus on the “BROS” suffix was misplaced, as marks must be compared holistically, per Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13) and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980).
• Invalidity of NEBROS Registration: ASIPL challenged the “NEBROS” registration under Sections 9, 11, 12, 18, and 57, alleging it was deceptively similar, lacked distinctiveness, and was obtained in bad faith. The failure to oppose the registration was due to inadvertent oversight, not acquiescence.
• Passing Off: The distinct logos did not negate passing off, as “NEBROS” was prominently visible, likely to confuse consumers. Actual confusion was unnecessary, per Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1.
• Respondent’s Evidence: The respondents’ invoice (September 1, 2020) lacked the “NEBROS” mark, undermining their claim of prior use, per Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC).
• Legal Precedents: ASIPL relied on FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381) for the definition of “use,” Raj Kumar Prasad for infringement suits against registered trademarks, and K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131) for phonetic similarity.

Respondents’ Submissions:

Represented by Mr. Sanchay Mehrotra, the respondents defended the Single Judge’s findings, arguing:

• Distinctiveness of NEBROS: “NEBROS” was a coined mark derived from “Nice Footwear” and “BROS,” with no intent to imitate “ABROS.” The marks were visually and phonetically distinct, with different logos, negating confusion.
• Priority of Use: Respondents claimed use of “NEBROS” since September 2020, supported by invoices, predating ASIPL’s earliest invoice (February 2021). ASIPL’s reliance on Narmada Polymers’ use was irrelevant, as it pertained to soles, not shoes.
• Registered Trademark Defense: As “NEBROS” was registered, Sections 28(1), 28(3), and 30(2)(e) barred infringement claims. The respondents cited S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683) to emphasize the higher threshold for passing off against a registered mark.
• Generic Suffix: “BROS” was a common suffix, publici juris, and could not be monopolized, per the respondents’ written statement.
• Sales and Reputation: Respondent 1’s sales (₹8.5 crores in 2021–22) demonstrated “NEBROS”’s market presence, supporting its independent goodwill.
• Precedents: The respondents relied on Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95), Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022), and Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246) to argue distinctiveness and priority of use.

ASIPL’s Rejoinder:

ASIPL countered that the respondents’ sales figures reflected total turnover, not “NEBROS” sales. Section 34 (saving for vested rights) was inapplicable, as it required both prior use and registration, which Respondent 1 lacked. The “BROS” suffix argument was rebutted with Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744), emphasizing holistic comparison. Additional precedents included Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672) and Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020).

Detailed Discussion on Judgments Cited by Parties

1. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980): Cited by ASIPL to argue that marks must be compared holistically for deceptive similarity, considering phonetic, visual, and structural aspects. The Supreme Court emphasized that slight differences do not negate infringement if the marks are likely to confuse consumers.
2. Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13): ASIPL relied on this to stress phonetic similarity as a key factor in trademark disputes. The Supreme Court held that “Amritdhara” and “Lakshmandhara” were deceptively similar due to phonetic resemblance, despite minor differences.
3. K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131): ASIPL cited this to argue that “ABROS” and “NEBROS” were phonetically similar, akin to “Ambal” and “Andal.” The Supreme Court ruled that phonetic similarity in marks for identical goods warrants injunction.
4. Russell Corp. Australia Pty. Ltd. v. Ashok Mahajan (2023 SCC OnLine Del 4796): ASIPL referenced this Delhi High Court decision to support its infringement claim, though the court’s specific findings were not detailed in the judgment.
5. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. ((2018) 2 SCC 1): ASIPL cited this to argue that actual confusion is not required for passing off or infringement. The Supreme Court clarified that likelihood of confusion suffices, particularly for well-known marks.
6. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC): ASIPL relied on this to challenge the respondents’ September 2020 invoice, which lacked the “NEBROS” mark. The Supreme Court held that evidence of use must clearly demonstrate the mark’s application.
7. FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381): ASIPL cited this to argue that “use” under the Trade Marks Act includes non-physical applications, such as on corporate documents, supporting its claim of use since 2017.
8. Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708): ASIPL relied on this Division Bench decision, which held that an infringement suit could lie against a registered trademark if its invalidity is pleaded, with interlocutory relief permissible under Section 124(5).
9. Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672): ASIPL cited this to argue that Section 34 was inapplicable, as it protects only prior users with continuous use, which Respondent 1 lacked.
10. Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744): ASIPL used this to counter the respondents’ claim that “BROS” was generic, emphasizing that marks must be assessed as a whole.
11. Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020): ASIPL cited this Delhi High Court decision to support its passing off claim, though specific findings were not elaborated.
12. S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683): Respondents cited this to argue that passing off against a registered mark requires a higher threshold, as registration confers statutory rights.
13. Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95): Respondents relied on this to argue that distinct marks do not infringe, emphasizing visual and structural differences.
14. Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022): Respondents cited this to support their claim of distinctiveness between “ABROS” and “NEBROS,” though ASIPL distinguished it as irrelevant (involving “AIRTEC” and “AIRNET”).
15. Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246): Respondents used this to argue that prior use and registration protect against injunction.
16. In re. Pianotist Co. Application (1906) 23 RPC 774): Cited by the Single Judge to emphasize holistic comparison of marks, considering appearance, sound, goods, and consumer perception.

Detailed Reasoning and Analysis of Judge

The Division Bench conducted a meticulous analysis, focusing on both the merits of the appeal and a critical legal question regarding infringement suits against registered trademarks. The reasoning unfolded as follows:

Merits of the Appeal:

The Bench noted ASIPL’s contention that the Single Judge erred in finding no similarity between “ABROS” and “NEBROS” and in prioritizing Respondent 1’s use. ASIPL argued phonetic similarity, supported by substantial sales and prior registration (March 2017). The respondents countered with their registered status, prior use (September 2020), and distinct logos. The Single Judge’s findings included:

• No phonetic, visual, or structural similarity between the marks.
• Respondent 1’s prior use (September 2020) over ASIPL’s (February 2021).
• No evidence of Narmada Polymers’ use on shoes, rendering sole-related use irrelevant.
• Distinct logos negating passing off, with no proof of actual confusion.
• “BROS” being a generic suffix, per S. Syed Mohideen, and the Trade Marks Registry’s Examination Report not citing “ABROS” as conflicting with “NEBROS.”

The Division Bench did not conclusively rule on these findings, as a fundamental legal issue necessitated referral to a Larger Bench.

Legal Issue on Infringement Against Registered Trademarks:

The Bench identified a conflict with Raj Kumar Prasad, which permitted infringement suits against registered trademarks if invalidity was pleaded, with interlocutory relief under Section 124(5). The Bench disagreed, reasoning:

• Section 29 (Infringement): Sub-sections (1) to (4) define infringement as occurring only by a person “not being a registered proprietor or a person using by way of permitted use.” Thus, a registered trademark cannot infringe, as explicitly reinforced by Section 30(2)(e), which exempts use of a registered mark from infringement claims.
• Section 28 (Rights Conferred by Registration): Section 28(1) grants the registered proprietor exclusive use and relief against infringement, but is “subject to other provisions,” including Section 28(3), which prohibits one registered proprietor from restraining another’s use of an identical or similar mark. Granting an injunction against a registered mark would violate the defendant’s exclusive rights.
• Section 124 (Stay of Proceedings): The Bench rejected Raj Kumar Prasad’s interpretation that Section 124 permits suits alleging infringement by registered marks with a plea of invalidity. Instead, Section 124(1)(b) applies when a plaintiff sues for infringement (assuming the defendant’s mark is unregistered), and the defendant raises a Section 30(2)(e) defense (asserting registration). Only then can the plaintiff plead invalidity, triggering a procedural sequence: the court assesses the plea’s tenability, frames an issue, adjourns the suit for three months, and stays the trial if rectification proceedings are initiated. Section 124(5) allows interlocutory orders only post-stay, and injuncting a registered mark would contravene Sections 28 and 30.
• Critique of Raj Kumar Prasad: The Bench found Raj Kumar Prasad’s reliance on Section 124 misplaced, as it overlooked Section 29’s restriction of infringement to unregistered marks. Permitting suits against registered marks based solely on invalidity pleas undermines the statutory scheme, effectively nullifying the defendant’s rights without rectification.
• Harmonization: The Bench emphasized harmonizing provisions but found Raj Kumar Prasad’s interpretation contradictory to Sections 28, 29, and 30. A suit alleging infringement by a registered mark is “fundamentally unsound” unless the mark’s registration is invalidated.

Referral to Larger Bench:

Given the conflict with Raj Kumar Prasad and its subsequent affirmation in Corza International v. Future Bath Products Pvt. Ltd. (2023 SCC OnLine Del 153), the Bench referred the following questions to a Larger Bench:

1. Can an infringement suit lie against a registered trademark’s proprietor?
2. If so, can the court grant an interlocutory injunction against such use?
3. If permissible, must the court follow the procedural steps under Section 124 (defendant’s Section 30(2)(e) defense, plaintiff’s invalidity plea, tenability assessment, issue framing, adjournment, rectification, and stay)?
4. Is Raj Kumar Prasad, particularly para 18, correct in its legal position?

The Bench deferred the appeal’s final decision pending the Larger Bench’s resolution, as the “NEBROS” registration and ASIPL’s invalidity plea made the legal question pivotal.

Final Decision

The Division Bench did not deliver a final ruling on the appeal, instead referring the case to a Larger Bench to resolve the conflict with Raj Kumar Prasad. The appeal was re-notified for hearing on July 7, 2025, with the Registry directed to place the order before the Chief Justice for constituting the Larger Bench.

Law Settled in This Case

No definitive law was settled, as the appeal’s resolution was deferred. However, the Division Bench articulated a provisional legal position:

• A registered trademark cannot infringe, per Sections 29 and 30(2)(e).
• Infringement suits against registered trademarks are generally unsustainable unless the registration is invalidated through rectification.
• Section 124 does not permit suits alleging infringement by registered marks based solely on invalidity pleas; it applies when a defendant raises a registration defense in an infringement suit.
• The right to relief under Section 28(1) cannot override another registered proprietor’s exclusive use rights under Sections 28(3) and 30(2)(e). The final legal position awaits the Larger Bench’s determination.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.: 13 May 2025: FAO(OS)(COMM) 140 of 2024: 2025:DHC:3606-DB: High Court of Delhi: Hon'ble Justice Mr. C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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

Calvin Klein Trademark Trust Vs. Gurvinder Singh

Case Title: Calvin Klein Trademark Trust Vs. Gurvinder Singh & Others Case Number: CS(COMM) 114/2023 Date of Order: 6th May, 2025 Court Name: High Court of Delhi Judge Name: Hon'ble Mr. Justice Amit Bansal Neutral Citation: 2025:DHC:3675

Facts:

The plaintiff, Calvin Klein Trademark Trust, a global brand owner, has filed a suit against multiple defendants including Gurvinder Singh and others for manufacturing, selling, and distributing counterfeit products bearing Calvin Klein trademarks (CK). The defendants engaged in infringing activities by selling counterfeit garments, stickers, and other products that seriously threaten the goodwill, reputation, and copyright of the plaintiff’s trademarks and artistic works.

Procedural History:

The suit was filed seeking permanent injunctions to restrain defendants from infringing trademarks and copyright, along with damages and costs. The court initially granted an ex-parte interim injunction. Local Commissioners found counterfeit CK products at the premises of defendants. Several defendants, including Gurvinder Singh, did not appear and were proceeded ex-parte. The court also allowed impleadment of additional defendants and issued notices, with mediation proceedings being conducted.

Issue: The core issues are:

• Whether the defendants infringed the plaintiff’s trademarks and copyrights through manufacturing, selling, and distributing counterfeit CK products.
• Whether the defendants’ activities constitute passing off.
• The appropriate relief and damages to be awarded to the plaintiff.

Decision:

The court held that the defendants were engaged in willful infringement of the CK trademarks and copyright, and adopted a successful case of passing off. The defendants’ activities posed a serious threat to the plaintiff's goodwill and business. It was noted that defendants no.1, 2, and 8 failed to appear and contest the suit, leading to ex-parte decrees. Damages of Rs.1,00,000 each were awarded to defendants no.1, 2, and 8. The court also directed the defendants to pay settlement amounts and imposed costs. Finally, the court pronounced the decree and disposed of the pending applications.

Al Hamd Tradenation Vs. Phonographic Performance Limited

Case Title: Al Hamd Tradenation Vs. Phonographic Performance Limited Case Number: C.O.(COMM.IPD-CR) 8/2024 Date of Order: 13th May 2025 Court: High Court of Delhi Judge: Hon'ble Ms. Justice Mini Pushkarna Neutral Citation: 2025:DHC:3695

Facts: Al Hamd Tradenation, the petitioner, organized a corporate event on July 14, 2024, in Delhi. The petitioner was informed that a license from the respondent, Phonographic Performance Limited (PPL), was required to play music, with a fee of Rs. 49,500 for 1-150 persons. The petitioner disputed this high fee, offering to pay only a third of it, citing unfairness compared to market standards.

Procedural Details: The petitioner filed this petition under Section 31 of the Copyright Act, 1957, seeking a compulsory license and correct license fees, asserting that the respondent’s fees were unreasonable and amounted to a refusal to allow public performance of copyrighted works. The respondent responded by filing a suit for copyright infringement. The matter reached the High Court, which examined the licensing structure and the legality of the respondent's demands.

Issue: Whether the license fee demanded by the respondent is fair, reasonable, and in accordance with the law, and whether the petitioner is entitled to a compulsory license under Section 31 of the Copyright Act?

Decision: The court acknowledged that the respondent’s license fee structure was disproportionate and not aligned with market standards, especially as it was the same regardless of audience size, content, or duration. The court emphasized the obligation to charge fair and reasonable fees and noted that the respondent's failure to register as a copyright society or be a member of a registered society compromised its authority to issue licenses. The court directed the parties to file affidavits to determine the appropriate license terms and rates, considering statutory provisions and licensing standards.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal

Case Title: Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.

Date of Order: 13 May 2025

Case No.: FAO(OS)(COMM) 140 of 2024

Neutral Citation: 2025:DHC:3606-DB

Court: High Court of Delhi

Bench: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

Facts:

Abros Sports International Pvt. Ltd. (ASIPL), owner of the registered trademark “ABROS”, alleged that the respondents were using a deceptively similar mark “NEBROS” for footwear, which was likely to confuse consumers and dilute its brand.

Procedural Detail:

ASIPL filed a trademark infringement suit and sought interim injunction before the Single Judge, which was rejected on 2 May 2024. ASIPL then filed the present appeal before the Division Bench. 

Issue:

Whether an action for trademark infringement can be maintained against the registered proprietor of a similar trademark? 

Decision:

The Division Bench held that no infringement action can lie against a registered proprietor of a trademark, as per Sections 28, 29, and 30 of the Trade Marks Act, 1999. Since “NEBROS” was also a registered mark, its use could not constitute infringement. The Court noted divergence from earlier precedent (Raj Kumar Prasad v. Abbott Healthcare) and suggested the matter may require reference to a larger bench for authoritative resolution.

Sanjay Vs Karan Johar

Background

This case concerns the unauthorized use of the name and personality attributes of film director Karan Johar in a film titled Shaadi Ke Director Karan Aur Johar. The film was co-produced by appellant Sanjay and was scheduled for theatrical release on 14 June 2024. On discovering the film’s trailer, Karan Johar filed a commercial intellectual property suit alleging infringement of his personality and publicity rights.

Relief Sought by Plaintiff

Karan Johar sought an injunction restraining the defendants from using his name or any related attributes in the film’s title, promotional materials, or public communications. He argued that the film was attempting to commercially exploit his brand, goodwill, and reputation without consent.

Arguments by Appellant

Sanjay argued that the film was fictional and that the characters “Karan” and “Johar” were common names not uniquely associated with Karan Johar. He contended there was no reference to Karan Johar personally, and that CBFC certification and pre-existing title registration legitimized the film. He further emphasized the financial loss due to last-minute injunctive relief and stated that the disclaimer clarified there was no connection with Karan Johar.

Court’s Findings

The Bombay High Court held that Karan Johar, as a widely recognized personality and brand, enjoys protectable personality and publicity rights. The title Shaadi Ke Director Karan Aur Johar clearly evoked a reference to the respondent, who is famously associated with films themed around grand weddings. The Court observed that even if the characters were fictional, the juxtaposition of name and profession created a direct connection to Karan Johar in public perception. The use was not incidental but a calculated attempt to ride on his fame. CBFC certification did not preclude legal scrutiny under personality rights.

Decision

The Court upheld the Single Judge’s order granting interim injunction. It restrained the defendants from using the name “Karan Johar” or any related identifiers in the title or promotions of the film. The appeal was dismissed, affirming that celebrities have enforceable rights against unauthorized commercial exploitation of their identity.

Sanjay Vs Karan Johar & Ors.:7 May 2025:Commercial Appeal (L) No. 9786 of 2025:2025:BHC-OS:7666-DB:High Court of Bombay:Hon'ble Chief Justice Alok Aradhe and M.S. Karnik