Viiv Healthcare Company Vs Deputy Controller of Patents

Viiv Healthcare Company & Anr. vs. Deputy Controller of Patents & Designs and Others:Court: High Court at Calcutta : Judge: Hon’ble Justice Ravi Krishan Kapur: Case Number: IA No. GA-COM/1/2025 (Appeal No. IPDPTA/1/2025):Order Date: 14 May 2025

Facts:

ViiV Healthcare filed a patent application in India for HIV medications including Dolutegravir and Cabotegravir. The application faced opposition from NATCO Pharma and other parties. The Patent Office initially rejected the application, citing issues related to inventive step and disclosure. During proceedings, parties settled, with NATCO withdrawing opposition under a settlement agreement, permitting ViiV to manufacture Dolutegravir but not Cabotegravir until 2026. Subsequently, the Deputy Controller issued a rejection order, dismissing ViiV’s patent application, which ViiV challenged in the High Court.

Legal Issues:

• Whether the Deputy Controller correctly interpreted the High Court's order dated 15 July 2024 related to reliance on expert evidence?Whether the rejection order was justified or resulted from misinterpretation or procedural flaws?Whether the consideration of expert evidence was adequately addressed during proceedings?

Reasoning:

The Court found that the Deputy Controller had misinterpreted the order from the High Court, which clarified that only NATCO's objections would be disposed of without considering expert evidence, not that all expert evidence relied upon by ViiV was to be ignored. The Court held that this misinterpretation rendered the rejection order "ex facie perverse" and legally unsustainable.

Additionally, the Court observed that the process was marred by extraordinary delays contravening statutory timelines, further undermining procedural fairness. The Court emphasized the fundamental importance of considering expert evidence in patent law and found that ignoring such evidence violated principles of natural justice and legal standards.

Conclusion:

The Court set aside the impugned order and remanded the case for fresh decision-making by a different Controller or Hearing Officer, who would consider all evidence and objections properly and fairly. The Court underscored the importance of adhering to legal and procedural norms to ensure justice in patent proceedings.

Andreas Gutzeit Vs. Controller General of Patents

Andreas Gutzeit Vs. Controller General of Patents Case No.: IPDPTA/7/2024 Date of Order: 15th May 2025 Court: High Court at Calcutta  Judge: Hon’ble Justice Ravi Krishan Kapur 

Fact:

Mr. Andreas Gutzeit, an applicant for a patent titled “Blood Flow Control System and Method for In-vivo Imaging,” filed his application in India in 2016. The original claims primarily covered a method involving specific steps for medical imaging using respiratory resistance devices. During prosecution, the applicant amended his claims, converting method claims into system/device claims, intending to cover a broader scope. The Indian Patent Office (IPO) rejected these amendments, citing Section 59 of the Patents Act, which restricts amendments that expand the scope of the original claims. The applicant challenged the rejection in the Calcutta High Court.

Legal Issue:

Can amendments that convert method claims into system/device claims, supported by the original disclosure, be deemed invalid under Section 59 for broadening the scope of the patent?

Reasoning:

The Court reviewed principles of patent law concerning amendments, emphasizing that amendments should not extend the original scope. Narrowing claims or clarifying them is permissible, but widening claims that introduce new matter or claims outside the original disclosure is not. It clarified that if amendments are within the original disclosure, converting a method claim to a system claim does not inherently constitute broadening.The Court criticized the IPO’s rejection for not adequately assessing whether the amendments stayed within the original disclosure. It emphasized the need for a case-specific examination of amendments.

Decision:

The Court found the IPO’s rejection unwarranted, holding that the amendments did not violate Section 59. It set aside the rejection order and remanded the case to the Patent Office for re-evaluation, requiring a proper assessment of whether the amended claims remained within the scope of the original disclosure.

Puja Agarwal Vs. Pravesh Narula

Case Title: Puja Agarwal Vs. Pravesh Narula Date of Order: 5th May 2025 Case No.: CS (COMM) No. 2732/2021 :2025:DHC:3800:Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal

Facts:

The plaintiff, Puja Agarwal, initially filed a suit primarily for copyright infringement. During the pendency of the suit, the plaintiff obtained registration of a trademark (no. 4242962) for the mark “RD SPECIAL” on goods in Class 25. Subsequently, the plaintiff sought to amend the plaint to incorporate a claim for trademark infringement and passing off, which was initially absent.

Procedural Details:

The defendant challenged the amendment, arguing that it changed the fundamental nature of the original suit. The Court allowed the amendment, noting that the suit was still at an early stage and issues had not yet been framed. The Court observed that the law encourages amendments to avoid multiplicity of litigation, provided it serves the cause of justice. The Court, however, did not delve into the merits of the case at this juncture.

Issue:

Whether the proposed amendment which introduces a claim for trademark infringement and changes the scope of the original suit from solely copyright infringement to include trademark infringement, should be permitted at this stage.

Decision:

The Court allowed the amendment, emphasizing that the suit was still at an early stage, and permitting amendments aligns with principles discouraging multiplicity of litigation. The Court clarified that it was not deciding on the merits but was ensuring that justice is served by allowing the amended pleadings.

Inder Raj Sahni Vs Neha Herbal

Case Title: Inder Raj Sahni  Vs  Neha Herbal Case No.:C.O. (COMM/IPD-TM) 355/2021 and CS (COMM) 207/2023 and  Date of Order: March 22, 2023 Neutral Citation: 2025:DHC:4037 Court: Delhi High Court Judge: Hon'ble Mr. Justice Sanjeev Narula

Facts of the Case:

The dispute centers on the use of the trademark "NEHA" in the personal care industry.

• The Plaintiffs, Neha Herbals Pvt. Ltd., represented by Vikas Gupta, have been using the mark "NEHA" since 1992, primarily in relation to henna (Mehandi) powders, cones, and herbal hair products. They hold a valid registration for "NEHA" under Registration No. 1198061 in Class 3, covering goods like henna, herbal powders, and hair dyes, with use dating back to 2012.

• The Defendant, Mr. Inder Raj Sahni of M/s Sahni Cosmetics, claims to have adopted and used "NEHA" earlier for face creams and cosmetic products. He has also filed multiple applications for registration of the same mark, but these applications have been refused or abandoned, and he does not hold a valid registration.

• The Plaintiffs initially obtained registration for the mark but lost it due to non-renewal; they allege long-standing use and prior rights over the mark "NEHA".

• The Defendant began selling "NEHA" branded face creams in 2012, asserting prior use and challenging the Plaintiffs' rights based on earlier adoption.

Procedural History:

• The Plaintiffs filed a suit for infringement and passing off alleging that the Defendant's use of "NEHA" for face creams infringed their registered trademark and prior use rights.

• The Defendant moved to cancel the Plaintiffs’ registration and raised defenses based on prior common law rights and prior use.

• The suit and cancellation petitions were initially with the Intellectual Property Appellate Board (IPAB) and later transferred to the Delhi High Court following procedural changes.

• The Court consolidated the suit and cancellation proceedings, recorded evidence, and heard final arguments.

• Based on the evidence, the Court examined whether the Plaintiffs had superior rights due to prior use and registration, and whether the Defendant’s use amounted to infringement or passing off.

Issues: Is the Plaintiff the prior user and owner of the exclusive right to the mark "NEHA"? Does the Defendant’s use of "NEHA" for face creams infringe upon the Plaintiff’s registered trademark? Has the Plaintiff's goodwill extended to the cosmetic category, including face creams?

Decision:

The Court held that:

• The Plaintiffs have demonstrated prior use of the mark "NEHA" in relation to herbal powders, hair dyes, and henna products since 1992, supported by registration and continuous use.

• The Defendant’s use of "NEHA" for face creams, although after the Plaintiffs’ use, does not amount to infringement because the goods are different (herbal products vs. cosmetics/creams), and the likelihood of confusion among the consumers is less due to the different nature of products.

• The Plaintiffs’ registration was active and effective, covering related herbal and hair products, but did not extend explicitly to the cosmetic creams category.

• The Plaintiffs’ goodwill was confined mainly to mehandi and herbal products and not established across broader cosmetics. Thus, the pass-off claim for "NEHA" in the cosmetics category fails.

• Considering priority rights under the Trade Marks Act, the Defendant’s prior use of "NEHA" for face creams, although not registered, does not amount to infringement or passing off, given the distinct product lines and consumer perceptions.

• The injunctions sought by the Plaintiffs were not granted, and the Defendant’s use of "NEHA" in relation to face creams was found to be lawful.

• The suit for infringement and passing off was accordingly decided against the Plaintiffs.

• The cancellation petitions filed by the Defendant regarding the registration were also decided in favor of the Defendant, with the Court concluding no prior user rights of the Plaintiffs extended to the cosmetic category.

Final Outcome:

The Court dismissed the suit of infringement and passing off filed by Neha Herbals Pvt. Ltd., holding that there was no infringement of the registered rights nor passing off actions proved, especially in the broader cosmetic categories. The Defendant’s prior use in face creams was recognized, and the evidence indicated that consumer confusion was unlikely.

Vishal Gupta & Ors. Vs. Rahul Bansal

Case Title: Vishal Gupta & Ors. Vs. Rahul Bansal Date of Order: May 8, 2025 Case No.: FAO (COMM) 103/2025 Neutral Citation: 2025:DHC:3685-DB: Delhi High Court, Commercial Wing Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Facts:

The appeal arises from a civil suit filed by Rahul Bansal (plaintiff) against Vishal Gupta and others (defendants) before the District Court (Commercial Court) in Tis Hazari, Delhi. The core dispute concerns using the trademark/label "OM AMAR SHAKTI" / "SARKAR OM AMAR SHAKTI" by the defendants in the edible oil business. The plaintiff claims prior rights over the mark "MATA AMAR SHAKTI" and asserts that the defendants' use of a deceptively similar mark was infringing their trademark rights, which could cause consumer confusion and dilution of their goodwill.

The plaintiff's trademark, however, was not registered, though they held a copyright for the label. The defendants argued that the plaintiff's reliance on unregistered rights and the absence of registration undermined the injunction sought.

Procedural Details:

The defendant filed an application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (CPC) seeking to restrain the plaintiff from using the mark "MATA AMAR SHAKTI." The Commercial Court granted an ad interim injunction against the defendants, prohibiting them from using the mark "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI" on edible oils or related products.

The defendants, feeling aggrieved by the order, appealed and challenged the injunction, arguing that the injunction was improperly granted as the plaintiff's mark was not registered and that the order was based on a flawed understanding of trademark law.

The Delhi High Court, upon hearing the appeal, found that the trial court's decision was flawed legally and remitted the case for re-consideration at the trial level, emphasizing legal clarifications related to passing off and the scope of unregistered trademarks.

Issue:

The main legal issues addressed were:Whether an injunction can be granted based on unregistered trademark rights (passing off) and the sufficiency of such rights to prevent use of similar marks?Whether the trial court erred in granting injunction solely based on the belief that the respondent’s mark was prior and deceptively similar, without sufficient proof of reputation or goodwill?

Decision:

The High Court set aside the impugned order and remanded the matter for a de novo hearing before the Commercial Court. The Court emphasized that:

• The mere prior user of a mark does not automatically entitle the party to an injunction; the plaintiff must prove reputation, goodwill, and likelihood of deception.
• The trial court had committed an error by proceeding on assumptions without proper factual and legal examination.
• The unregistered status of the plaintiff's mark meant that the protections against passing off were limited unless reputation and consumer confusion could be conclusively demonstrated.
• The Court clarified that copyright registration does not equate to or substitute for trademark registration in passing off claims.

Legal Significance: This case clarifies the scope of injunctive relief in passing off actions involving unregistered trademarks, emphasizing a requirement for proof of reputation and consumer confusion. It highlights that trademark rights obtained through registration are generally stronger and easier to enforce, but unregistered marks can also be protected if reputation and deception are established sufficiently.

MS Oxygun Health Pvt Ltd Vs Pneumo Care Health Pvt Ltd.

Introduction: This appeal before the Hon’ble High Court of Delhi arises from a suit for trademark and design infringement, passing off, and damages, decreed ex parte by the Commercial Court in favour of the plaintiff, Pneumo Care Health Pvt. Ltd. The suit alleged unauthorized use of trademarks and design by former employees in collusion with Oxygun Health Pvt. Ltd., seeking to replicate Pneumo Care’s products. The Commercial Court passed a decree under Order VIII Rule 10 CPC owing to failure of the defendants to file a written statement within the statutory period. The appeal in RFA(COMM) 271/2025 challenged the decree on procedural and substantive grounds.

Detailed Factual Background:Pneumo Care Health Pvt. Ltd. claimed to be a leading medical device manufacturer specializing in critical care and orthopaedic products. It alleged that it had been commercially using the trademarks “HOSPIGRIP” and “HOSPICUFF” since 2016, registered under Class 10 of the Trade Marks Act, 1999. Pneumo Care also owned a registered design bearing No. 325003-001 concerning the surface pattern of ankle and wrist restrainers under the Designs Act, 2000.

Oxygun Health Pvt. Ltd. was incorporated in 2020. Two of its directors were previously associated with Pneumo Care—one as a general manager and the other terminated in 2022. Pneumo Care alleged that Oxygun, with insider knowledge, replicated its trademarks and designs to manufacture and sell similar products. Comparative images, packaging descriptions, branding, and technical specifications were provided to show the alleged similarities. Pneumo Care asserted the defendants deliberately passed off their products as those of the plaintiff, infringing upon registered intellectual property and undermining brand value.

Detailed Procedural Background: Pneumo Care instituted CS (Comm) 523/2023 before the Commercial Court, Rohini. Summons were served on 08 August 2023. Oxygun and co-defendants filed their written statement on 01 February 2024, which was over 120 days from the date of service. This was in violation of the mandatory timeline under Order VIII Rule 1 CPC, as amended by the Commercial Courts Act, 2015. Citing the Supreme Court decision in SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd., (2019) 12 SCC 210, the Commercial Court struck off the written statement.

The defendants' challenge to this order in CM(M)-IPD 23/2024 was dismissed for non-prosecution on 28 November 2024. No further remedy was pursued. Consequently, the Commercial Court proceeded to adjudicate the suit under Order VIII Rule 10 CPC, and by judgment dated 05 November 2024, passed a decree of permanent injunction, damages of ₹3 lakhs, and other ancillary reliefs. This judgment was challenged in RFA(COMM) 271/2025.

Issues Involved in the Case: Whether a decree passed under Order VIII Rule 10 CPC in the absence of a written statement could be challenged on grounds of non-user of trademark?Whether the Commercial Court erred in passing an ex parte decree of injunction and damages without calling for additional evidence?

Detailed Submission of Parties: Counsel for the appellants argued that the trademark “HOSPIGRIP” had fallen into disuse, rendering the infringement claim untenable. It was further argued that Pneumo Care had failed to demonstrate any actual loss or damage, hence damages awarded were speculative. They also contended that Appellants 4 and 5 were wrongly implicated without proof of independent infringement.

On the other hand, counsel for Pneumo Care contended that the defendants were barred from raising any defense, including that of non-user, owing to their written statement having been struck off. The appeal was termed procedurally incompetent and factually devoid of merit. It was argued that the decree was based on comparative analysis, undisputed registration certificates, sales figures, and the Local Commissioner’s unchallenged report.

Detailed Discussion on Judgments Cited:

The Commercial Court and the Appellate Court relied extensively on SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd., (2019) 12 SCC 210, where the Supreme Court held that in commercial suits, a written statement not filed within 120 days of service cannot be taken on record. This principle was dispositive of the procedural default in this case.

In Balraj Taneja v. Sunil Madan, (1999) 8 SCC 396, the Supreme Court held that even under Order VIII Rule 10 CPC, courts must ensure the plaintiff’s case is prima facie established before passing judgment. This was followed by reference to Asma Lateef v. Shabbir Ahmad, (2024) 4 SCC 696, which similarly emphasized that judgment by default must be grounded in evidence.

Delhi High Court judgments in Nirog Pharma Pvt. Ltd. v. Umesh Gupta, 2016 SCC OnLine Del 5961, Parsvnath Developers Ltd. v. Vikram Khosla, and Kleenoil Filtration India Pvt. Ltd. v. Udit Khatri, 2023 SCC OnLine Del 18 reiterated that decree under Order VIII Rule 10 CPC is proper if the claim is prima facie unchallenged and defendants choose not to contest.

On damages, the Commercial Court relied on Koninklijke Philips v. Amazestore, 260 (2019) DLT 135 and Rule 20 of the Delhi High Court IPD Rules, 2022, to quantify ₹3 lakhs as appropriate statutory damages despite lack of specific financial loss. This was deemed proportionate, considering willful infringement and unchallenged LC report.

The defense of trademark abandonment due to non-use was rejected citing Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022) 5 SCC 1, where the Supreme Court affirmed that statutory rights of a registered proprietor exist irrespective of actual use unless removed under Section 47 of the Trade Marks Act. The court held that unless registration is cancelled, non-user is irrelevant to a claim of infringement.

Detailed Reasoning and Analysis of Judge: The Court held that the appellants’ procedural conduct resulted in forfeiture of their right to defense, making any substantive challenge untenable. The decision to proceed under Order VIII Rule 10 CPC was legally sound. The appellants had full opportunity to participate but consciously defaulted.

The allegation of non-user was deemed an evidentiary issue requiring proof through pleadings and affidavits, which the appellants failed to file. The registered trademarks were valid and subsisting. The court noted the difference between statutorily invalid marks (via rectification under Section 47) and a defense based merely on oral argument in appeal.

The Court found that the Local Commissioner’s report, along with uncontroverted pleadings, comparative tabulation, and sales turnover data, justified the grant of permanent injunction. Further, the IPD Rules empowered the court to award reasonable damages based on mala fide infringement. The defendants’ conduct was found to be deliberate and dishonest, invoking principles of unjust enrichment and unfair competition.

The Court clarified that registered rights cannot be collaterally challenged in appeal on factual assertions not made before the trial court. The procedural default foreclosed such arguments.

Final Decision:  The High Court dismissed the appeal, upheld the Commercial Court’s decree, and affirmed the award of damages and costs. It reiterated that procedural indiscipline in commercial litigation attracts strict consequences and that intellectual property rights enjoy robust protection, especially where unrefuted infringement is established.

Law Settled in this Case: A written statement filed beyond 120 days in a commercial suit cannot be taken on record. Procedural deadlines under the Commercial Courts Act are strict and final. A defendant cannot raise factual defenses in appeal which were never pleaded or proven before the trial court due to procedural default. Non-use of a registered trademark cannot be pleaded as a defense in an infringement action unless the mark is first removed through proceedings under Section 47 of the Trade Marks Act. Decrees under Order VIII Rule 10 CPC must be based on un controverted, prima facie credible pleadings and documentary evidence. Courts may award statutory damages under IPD Rules and judicial precedents, even in the absence of quantified actual losses, when mala fide infringement is established.

Case Title: Oxygun Health Pvt. Ltd. & Ors. Vs. Pneumo Care Health Pvt. Ltd. & Anr.:Date of Order: 13 May 2025:Case No.: RFA(COMM) 271/2025:Neutral Citation: 2025:DHC:3897-DB:Name of Court: High Court of Delhi:Name of Judge(s): Hon’ble Mr. Justice 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

Inder Raj Sahni Vs. Neha Herbals

Case Title: Inder Raj Sahni Vs. Neha Herbals Pvt. Ltd. & Others Case Number: C.O. (COMM.IPD-TM) 355/2021 Date of Order:  19.05.2025 Neutral Citation: 2025:DHC:4037   Name of Court: Delhi High Court  Name of Judge: Hon’ble Justice Sanjeev Narula

Facts:

The dispute concerns the use of the trademark "NEHA" by two entities—Plaintiff Neha Herbals Pvt. Ltd., which has used "NEHA" since 1992 in connection with herbal Mehandi and related products, and Defendant Sahni Cosmetics, which uses "NEHA" for cosmetic products, including creams. The plaintiff claims prior use and registration rights, asserting that the defendant’s use is infringing and causing confusion. The defendant, however, does not hold any trademark registration for "NEHA" and has had applications refused or abandoned.

Procedural History:

• The suit was filed in 2019 claiming infringement and passing off.
• The case was transferred to the Delhi High Court following the abolition of the IPAB in 2021.
• The court framed issues in September 2020 and ordered expedited disposal.
• Parties jointly requested that the related cancellation petitions be heard simultaneously.
• The suit, along with cancellation petitions, was consolidated and the evidence in the suit was admitted in the cancellation proceedings.
• Final arguments concluded by January 2024, with the court directed to decide within 12 months.

Issue:

1. Whether the plaintiff’s use of "NEHA" in relation to herbal Mehandi products predates the defendant’s use in the cosmetic category?
2. Whether the defendant’s use of "NEHA" for face creams causes confusion or deception, amounting to passing off or infringement?

Decision:

The court found that:

• The plaintiff's "NEHA" mark has been in use since 1992, primarily for herbal Mehandi products.
• The defendant's applications to register the mark for creams were refused, and thus, no valid exclusive rights were established for the defendant.
• There was insufficient evidence to prove that the plaintiff's mark had acquired reputation beyond herbal Mehandi, especially in the segment of face creams.
• The overlapping product categories do not automatically establish infringement, especially given the distinct fields and lack of reputation evidence for creams.
• The court held that the use of "NEHA" by the defendant was not likely to cause confusion or constitute passing off.

Hence, the suit was decided against the plaintiff on the merits of infringement and passing off. 

Dura-Line India Pvt Ltd Vs Jain Irrigation Systems Ltd.

Case Title: Dura-Line India Pvt Ltd Vs Jain Irrigation Systems Ltd.Court: High Court of DelhiJudgment Date: 19th May 2025Case Number: CS(COMM) 245/2017 Order Date: 19th May 2025Neutral Citation:  2025:DHC:4036 Judge: Hon’ble Mr. Justice Sanjeev Narula

Fact

Dura-Line India Pvt Ltd (Plaintiff) filed a lawsuit against Jain Irrigation Systems Ltd (Defendant) alleging infringement of Indian Patent No. IN 199722 and Design Registration No. 192665. The patent relates to a non-metallic pipe with a co-extruded tracer cable embedded on its outer surface, enabling precise underground detection of leaks. Dura-Line contended that Jain’s products, marketed as “Jain Insta Tracer Pipes,” incorporate the essential features of their patented invention, infringing upon their rights. Jain Irrigation challenged the validity of the patent, claiming it lacked novelty and inventive step.

Procedural Detail

• The suit was initiated in 2013 (originally numbered CS(OS) 796/2013) and later renumbered as CS(COMM) 245/2017 under the Commercial Courts Act.
• Extensive hearings spanned over a decade, including the appointment of a Local Commissioner and allegations regarding the patent’s validity.
• The Court examined technical evidence, patent claims, and prior art references, while also considering the trade and contractual context related to the irrigation project.

Issue

• Whether Jain Irrigation’s products infringe upon Dura-Line’s patent for a tracer-embedded pipe? 
• Whether the patent IN 199722 is valid, considering allegations of lack of novelty, inventive step, and insufficient disclosure? 

Decision

• The Court held that Jain’s products do infringe the patent, as they embody the core features claimed by Dura-Line.
• The patent was found valid; the Court upheld the patent’s validity, including the specific structural and functional features.
• The suit was decreed in favor of Dura-Line, and the Court directed the issuance of a certificate confirming the patent’s validity.
• The Court also ordered Jain Irrigation to render accounts of profits and pay costs, reaffirming principles under the Commercial Courts Act and relevant legal standards. 
  

Romil Gupta Trading As Sohan Lal Gupta Vs Registrar of Trademarks

Case Title: Romil Gupta Trading As Sohan Lal Gupta Vs Registrar of Trademarks Case No.: C.A.(COMM.IPD-TM) 1/2023 Date of Order: 14 May 2025 Court: High Court of Delhi Judge: Hon’ble Mr. Justice Amit Bansal Neutral Citation:2025:DHC:3697

Facts:

Romil Gupta, the appellant, is engaged in manufacturing and trading self-tapping metal screws and claims to have used the trademark in question since 2013. The appellant initially filed a trademark application on 30 October 2018 with a user claim from 27 February 2013. A clerical error occurred, whereby the application was made for an incorrect mark ("applied mark") instead of the intended "subject mark." The appellant filed an application on 13 December 2018 seeking correction of this clerical mistake to reflect the actual "subject mark."

Procedural Details:

• The respondent, the Registrar of Trademarks, initiated proceedings based on a complaint filed by respondent no.2, who also filed a rectification petition and a civil suit opposing the registration.
• The Registrar issued a show cause notice on 31 October 2022 under Section 57(4) of the Trade Marks Act, 1999, and scheduled a hearing on 17 November 2022.
• The Registrar passed an order on 15 December 2022 cancelling the registration of the trademark in favor of the appellant, citing procedural lapses and alleged substantial alterations in the mark and overlooking the appellant's correction request.
• The appellant filed this appeal challenging the cancellation.

Issue:

Whether the Registrar of Trademarks properly followed the procedures under the Trade Marks Act, and whether the cancellation of the trademark based on alleged "substantial alteration" was justified, especially considering the clerical error and the processes followed.

Court’s Decision:

The Court set aside the impugned order of cancellation, holding that:

• The Registrar failed to observe the mandatory procedural safeguards, including adequate notice.
• The grounds for cancellation based on "substantial alteration" were not substantiated, especially since the alteration was minimal (inverting the letters "SD") and the appellant had sought correction for a clerical error.
• The Registrar’s order was unsustainable due to violations of statutory requirements, and the appeal was allowed.

Conclusion:

The order cancelling the registration was set aside, and the registration in favor of Romil Gupta was reinstated. The Court clarified that pending rectification proceedings or civil suits do not automatically impact the validity of proceedings under Section 57(4).

Rieter AG and Others Vs. Kavassery Narayanaswamy

Case Title:Rieter AG and Others Vs. Kavassery Narayanaswamy Venkatasubramanian: Court:High Court of Delhi:Date of Order:13th May 2025:Case Number :2025:DHC:3937:  CS(COMM) 729/2024:Hon'ble Mr. Justice Amit Bansal

Facts:

The plaintiffs, subsidiaries of Rieter Holding AG, filed this suit alleging infringement of their registered designs, trademarks, and patents. They claimed that their products were similar to those of the defendant, which was observed at the India International Textile Machinery Exhibition in Greater Noida in December 2022. An investigation was initiated, leading to communication with the defendant via email, and delivery of goods in Delhi. The plaintiffs contended that the defendant had engaged in commercial activities in Delhi by participating in exhibitions, placing orders, and delivering goods there.

Procedural Details:

The defendant filed an application under Order VII Rule 10 of CPC, contesting the court’s territorial jurisdiction, arguing that the suit should be dismissed for lack of jurisdiction. The court examined the pleadings, relevant documents, and judgments, including those distinguishing offline and internet-based transactions, to decide on the jurisdictional challenge.

Issue:

Whether the Delhi High Court has territorial jurisdiction to try the suit, given that the defendant’s activities, such as participating in exhibitions, placing and receiving orders in Delhi, and delivering goods there, suffice to establish a cause of action within the court’s territory?

Decision:

The Court held that a part of the cause of action had arisen in Delhi, supporting the court's jurisdiction. It noted that the defendant participated in exhibitions in Greater Noida and engaged in commercial transactions involving delivery of goods in Delhi. Consequently, the application challenging jurisdiction was dismissed, and the suit was maintained in Delhi.

Al Hamd Tradenation Vs. Phonographic Performance Limited

Introduction

The case of Al Hamd Tradenation v. Phonographic Performance Limited is a significant copyright dispute adjudicated by the High Court of Delhi, addressing the issue of compulsory licensing under Section 31 of the Copyright Act, 1957. The petitioner, Al Hamd Tradenation, sought a compulsory license to use the respondent’s sound recordings for a corporate event, alleging that the respondent, Phonographic Performance Limited (PPL), demanded unreasonable and prohibitive license fees, effectively amounting to a refusal to license. The case delves into the balance between the copyright owner’s rights and the public’s interest in accessing copyrighted works, raising critical questions about the applicability of compulsory licensing provisions, the reasonableness of tariff structures, and the legal status of PPL as a licensing entity. The judgment, delivered on May 13, 2025, by Justice Mini Pushkarna, underscores the court’s authority to intervene when copyright owners impose arbitrary fees, reinforcing the statutory objective of ensuring equitable access to copyrighted works.

Detailed Factual Background

Al Hamd Tradenation, a Delhi-based event organizer, planned a corporate event for 50 persons on July 14, 2024, at Hotel Lutyens in Delhi. During the booking process, the hotel informed the petitioner that a license from PPL was required to play music at the event, with a quoted license fee of ₹49,500 for events hosting 1–150 persons. Upon checking PPL’s website, the petitioner noted that the fee had increased to ₹55,440, effective April 29, 2024. Deeming the fee excessive for a 50-person event, the petitioner, on July 2, 2024, offered PPL ₹16,500 (one-third of the original ₹49,500 fee), arguing that the reduced amount was proportionate to the event’s scale. PPL rejected this offer on the same day, prompting the petitioner to reiterate its proposal on July 3, 2024. Meanwhile, on July 9, 2024, PPL filed a copyright infringement suit (CS(COMM) 564/2024) against the petitioner, alleging unauthorized use of its sound recordings. Aggrieved by PPL’s high fees, which the petitioner deemed unreasonable, Al Hamd Tradenation filed the present petition seeking a compulsory license and determination of fair license rates.

PPL, a company claiming ownership of public performance rights in its repertoire of sound recordings through assignments, maintained that its tariff was reasonable and publicly available, applied uniformly to over 9,100 entities that had obtained 32,000 licenses since April 2023. The petitioner argued that PPL’s fee structure, which charged the same amount for 1–150 attendees and did not account for the number of songs or event duration, was arbitrary and constituted a de facto refusal to license, justifying a compulsory license under the Copyright Act.

Detailed Procedural Background

The petitioner filed the petition (C.O.(COMM.IPD-CR) 8/2024) under Section 31 of the Copyright Act, 1957, read with Rule 6 of the Copyright Rules, 2013, before the Delhi High Court, accompanied by applications I.A. 33181/2024 and I.A. 33182/2024. The petition sought a compulsory license to use PPL’s sound recordings and a court-determined reasonable license fee. The matter was heard by Justice Mini Pushkarna, with arguments presented by Mr. Aditya Ganju for the petitioner and Mr. Chander M. Lall, Senior Advocate, for the respondent. During the proceedings, the court noted a related legal development: PPL’s licensing authority had been challenged in Phonographic Performance Limited v. Azure Hospitality Private Limited (CS(COMM) 714/2022). In that case, a Single Judge had upheld PPL’s right to issue licenses on March 3, 2025, but the Division Bench, in Azure Hospitality Private Limited v. Phonographic Performance Limited (FAO(OS) (COMM) 41/2025, decided April 15, 2025), ruled that PPL, not being a registered copyright society, could not issue licenses independently and must operate through Recorded Music Performance Limited (RMPL), a registered copyright society. This ruling was stayed by the Supreme Court on April 21, 2025, in Phonographic Performance Limited v. Azure Hospitality Private Limited (SLP(C) No. 10977/2025), pending a hearing on July 21, 2025. The court clarified that its judgment would be subject to the Supreme Court’s final decision. The judgment was reserved and pronounced on May 13, 2025, directing the parties to file affidavits to determine compensation and listing the matter for further directions on May 29, 2025.

Issues Involved in the Case

The case raises several pivotal issues:Whether PPL’s license fee of ₹55,440 for a 50-person event constitutes an unreasonable demand, amounting to a refusal to license under Section 31(1)(a) of the Copyright Act?Whether the petitioner is entitled to a compulsory license for public performance of PPL’s sound recordings under Section 31(1)(a), given that it is not a broadcasting organization?

Petitioner’s Submissions (Al Hamd Tradenation): The petitioner argued that PPL’s license fee was unreasonable and prohibitive, effectively withholding its sound recordings from the public. The petitioner contended that even if PPL owned the copyright, it could not charge arbitrary fees, as this would undermine public access to copyrighted works. The fee of ₹55,440 for 1–150 persons was deemed excessive for a 50-person event, prompting the petitioner’s offer of ₹16,500, which PPL rejected. This rejection, the petitioner argued, constituted a refusal under Section 31(1)(a), as unreasonable terms equate to withholding the work, per the Supreme Court’s ruling in Entertainment Network (India) Limited v. Super Cassette Industries Limited. The petitioner highlighted PPL’s tariff structure, which charged the same fee regardless of audience size or event specifics, contrasting it with RMPL’s more flexible tariff, which accounted for venue type and event duration. The petitioner asserted that PPL’s market dominance allowed it to impose an arbitrary licensing regime, necessitating court intervention to grant a compulsory license on fair terms.

Respondent’s Submissions (PPL): PPL defended its tariff as reasonable and uniformly applied, noting that over 9,100 entities had obtained licenses since April 2023. PPL argued that it had not withheld its repertoire, which was freely licensed to various establishments, and that the petitioner’s refusal to pay the published tariff did not justify a compulsory license. PPL contended that Section 31(1)(a) applies only when a work is withheld, not when a licensee disputes the fee. As the petitioner was not a broadcaster, PPL argued that Section 31(1)(b), which addresses unreasonable terms for broadcasts, was inapplicable, and the court’s role under Section 31(1)(a) was limited to addressing outright refusal, not assessing fee reasonableness. PPL further asserted that the right to perform in public under Section 31(1)(a) applies to literary, dramatic, and musical works, not sound recordings, which are limited to broadcasting under Section 31(1)(b). Citing Pune Video Theaters Association v. Cinemaster, PPL argued that its repertoire was publicly available, negating the petitioner’s claim. Finally, PPL maintained that its status as a copyright owner through assignments entitled it to set its own rates, subject to market acceptance.

Detailed Discussion on Judgments Cited by Parties

Entertainment Network (India) Limited v. Super Cassette Industries Limited, (2008) 13 SCC 30: Cited by the petitioner, this Supreme Court judgment elaborates on compulsory licensing under Section 31. The court emphasized balancing the copyright owner’s rights with public access, holding that unreasonable terms or arbitrary demands by the owner amount to a refusal to license, triggering compulsory licensing provisions. The judgment clarified that monopoly practices are discouraged, and copyrighted works, once public, must be available on reasonable terms. In the present case, the petitioner relied on this to argue that PPL’s high fees constituted a de facto refusal, justifying a compulsory license.

Anand Bhushan and Others v. Union of India, 2018 SCC OnLine Del 9316: Cited by the court, this Delhi High Court Division Bench decision addressed tariff reasonableness under Section 33A. The court held that the Commercial Court, when reviewing a tariff scheme, can consider prevailing royalty standards for similar commercial exploitations. The petitioner indirectly benefited from this precedent, as the court used it to justify examining PPL’s tariff against RMPL’s standards, finding PPL’s structure unreasonable.

Pune Video Theaters Association v. Cinemaster, 2001 SCC OnLine CB 1: Cited by PPL, this Copyright Board decision involved video parlors exhibiting films. The Board found no withholding, as the films were publicly available, and the petitioner failed to identify withheld works. PPL argued that its repertoire was similarly accessible, negating the need for a compulsory license. The court distinguished this case, noting that the Supreme Court’s ruling in Entertainment Network established that unreasonable terms constitute refusal, rendering Pune Video inapplicable.

Phonographic Performance Limited v. Azure Hospitality Private Limited, CS(COMM) 714/2022, decided March 3, 2025: Referenced by the court, this Single Judge decision upheld PPL’s right to issue licenses based on assigned public performance rights. However, it was overturned by the Division Bench in Azure Hospitality Private Limited v. Phonographic Performance Limited, FAO(OS) (COMM) 41/2025, 2025 SCC OnLine Del 2407, which held that PPL, not being a registered copyright society, could not issue licenses independently and must align with RMPL’s tariff. The Supreme Court’s stay in Phonographic Performance Limited v. Azure Hospitality Private Limited, SLP(C) No. 10977/2025, order dated April 21, 2025, suspended the Division Bench’s directions, leaving PPL’s licensing authority unresolved. The court noted this context but proceeded, subject to the Supreme Court’s final ruling.

Copinger and Skone James on Copyright (19th Edition, 2025, Para 32-02, Pg. 1147, Vol. II): Cited by the court, this treatise explains compulsory licenses as mechanisms allowing use of copyrighted works without owner consent, subject to payment. It distinguishes compulsory licenses, where rates are negotiated, from statutory licenses with fixed rates. The court used this to underscore that compulsory licenses ensure public access while compensating owners, supporting its authority to intervene in PPL’s tariff.

Detailed Reasoning and Analysis of Judge

Justice Mini Pushkarna’s reasoning focused on the statutory framework of the Copyright Act, the balance between copyright owners and public interest, and the specific circumstances of PPL’s tariff. The court began by addressing PPL’s licensing authority, noting the Division Bench’s ruling in Azure Hospitality that PPL, as a non-registered copyright society, must operate through RMPL. However, the Supreme Court’s stay of that ruling allowed the court to proceed, with a caveat that its directions were subject to the Supreme Court’s final decision.

On the merits, the court analyzed Section 31(1)(a), which allows compulsory licenses when a copyright owner refuses to republish or allow public performance, withholding the work from the public. The court rejected PPL’s contention that Section 31(1)(a) excludes sound recordings or limits the court’s role to outright refusal. Citing Entertainment Network, the court held that unreasonable terms constitute a refusal, as they effectively withhold the work. The court found PPL’s tariff unreasonable, as it charged ₹55,440 uniformly for 1–150 attendees, regardless of event specifics, contrasting this with RMPL’s nuanced tariff, which varied by venue and duration. The court noted that PPL’s structure did not account for the petitioner’s 50-person event, rendering the fee disproportionate.

The court clarified that “work” under Section 2(y) includes sound recordings, and “publication” under Section 3 encompasses public communication, including performance (Section 2(ff)). Thus, public performance of sound recordings falls under Section 31(1)(a), contrary to PPL’s argument that it is limited to literary, dramatic, and musical works. The court dismissed Pune Video Theaters as inapplicable, given the Supreme Court’s broader interpretation of refusal. The court also invoked Section 33A and Anand Bhushan to justify examining tariff reasonableness against prevailing standards, finding PPL’s fees arbitrary and monopolistic.

The court emphasized that the Copyright Act discourages monopolies and ensures public access on fair terms. Rule 8 of the Copyright Rules allowed the court to determine compensation based on prevailing royalty standards, reinforcing its authority to grant a compulsory license. The court concluded that PPL’s market dominance could not justify an arbitrary licensing regime, and the petitioner’s request for a compulsory license was meritorious.

Final Decision

The court held that the petitioner was entitled to a compulsory license due to PPL’s unreasonable tariff. To determine compensation, terms, and conditions, the court directed both parties to file affidavits of evidence within eight weeks. The matter was listed for further directions before the Roster Bench on May 29, 2025, with the judgment subject to the Supreme Court’s ruling in Phonographic Performance Limited v. Azure Hospitality Private Limited.

Law Settled in This Case

The judgment reinforces several principles under the Copyright Act:Unreasonable license fees by a copyright owner constitute a refusal to license under Section 31(1)(a), triggering compulsory licensing provisions. The court can assess the reasonableness of license terms in Section 31(1)(a) cases, including for public performance of sound recordings, which are covered as “works” under the Act.

Al Hamd Tradenation Vs. Phonographic Performance Limited: May 13, 2025: C.O.(COMM.IPD-CR) 8/2024: 2025:DHC:3695:High Court of Delhi:Hon’ble Ms. Justice Mini Pushkarna

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

Dhanbad Fuels Private Limited Vs. Union of India & Anr.

Case Title:Dhanbad Fuels Private Limited Vs. Union of India & Anr.

Date of Order: 2025

Case No.: Civil Appeal No. 6846 of 2025 (@SLP (C) No. 4980 of 2021)

Neutral Citation: 2025 INSC 696

Court: Supreme Court of India

Judge: Hon’ble Mr. Justice J.B. Pardiwala

Facts:

The Union of India filed a Money Suit No. 28 of 2019 in the Commercial Court, Alipore, against Dhanbad Fuels Pvt. Ltd. to recover approximately Rs. 8.73 crores. The suit was filed without initiating pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The defendant challenged the maintainability of the suit on the ground of non-compliance with Section 12A, seeking rejection of the plaint under Order VII Rule 11(d) CPC.

Procedural History:

The Commercial Court rejected the application to dismiss the suit and referred the parties to post-institution mediation.

The Calcutta High Court upheld the trial court's order, directing that the suit be kept in abeyance while the plaintiff approached the District Legal Services Authority for mediation.

The matter reached the Supreme Court through a civil appeal.

Issues:

1. Whether the suit should be dismissed for non-compliance with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015? 

2. Whether the decision in Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. (2022) should be applied retrospectively to invalidate the suit.

Decision:

The Supreme Court dismissed the appeal, holding:

Section 12A is mandatory, but its enforcement was declared to be prospective from 20.08.2022 by the decision in Patil Automation.

Since the suit was filed in 2019, before the cutoff date, it was protected by the prospective ruling.

Infrastructure for mediation (rules, SOP, mediators) was not in place at the time of suit filing, making compliance impractical.

The equitable maxim "lex non cogit ad impossibilia" (the law does not compel the impossible) applied.

Hence, the High Court was right in directing that the suit be kept in abeyance and mediation be attempted.

Kamdhenu Limited Vs. Union of India.

Case Title: Kamdhenu Limited Vs. Union of India.

Date of Order: 09 May 2025

Case No.: W.P.(C)-IPD 29/2025, 

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

The petitioner, M/s Kamdhenu Limited, challenged the Examination Report cum Acceptance Order dated 24.04.2025 issued by the Registrar of Trademarks regarding trademark application No. 6890699 in Class 6. Although the Examination Report cited two of the petitioner’s registered trademarks, it omitted 16 other valid and subsisting registrations of the petitioner. These omissions raised concerns about the completeness and reliability of the trademark examination process.

Procedural Details:

The writ petition was filed under Articles 226 and 227 of the Constitution seeking a writ of certiorari to quash the impugned Examination Report and a mandamus directing the Registrar to duly consider all existing registrations of the petitioner during examination of similar marks. The matter was listed along with similar petitions (W.P.(C)-IPD 30-33/2025). Despite repeated court queries, the Respondents failed to respond satisfactorily due to lack of instructions.

Issues:

Whether the Registrar of Trademarks failed to consider all relevant prior registered marks of the petitioner during examination.

Whether such omissions affect the legality and validity of the Examination Report.

Decision:

The Court found prima facie irregularities and considered the situation “not in order.”

Directed either of the Examination Officers (Mr. Nehul Kumar or Mr. Rahul Kumar) to appear physically with a device to demonstrate the software used for the Search Report.

Directed the Registrar of Trademarks to join virtually on 15.05.2025 to assist in clarifying the matter.

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents

Samriddhi Rice Mill Private Limited Vs. The Controller General of Patents, Designs and Trade Marks & Others:Misc. Appeal No. 316 of 2024:Date of Order: 30th April 2025:High Court of Jharkhand, Ranchi: Hon’ble Mr. Justice Sanjay Kumar Dwivedi

Facts:

The appellant, Samriddhi Rice Mill Pvt. Ltd., filed an appeal under Section 72(2) of the Copyright Act, 1957, challenging the order passed by the Deputy Registrar of Copyrights, who is based in New Delhi. Both the appellant and Respondent No. 6 conduct business and have offices in the state of Jharkhand.

Procedural History:

Respondent No. 6 objected to the maintainability of the appeal in the Jharkhand High Court, arguing that such appeals must be filed only in the Delhi High Court, where the Registrar of Copyrights is based. He also contended that the appeal should be heard by a Division Bench and not a Single Judge.

Issues:

1. Whether the Jharkhand High Court has territorial jurisdiction to entertain the appeal under Section 72 of the Copyright Act, 1957?

2. Whether the appeal should be heard by a Single Judge or a Division Bench?

Decision:

The Court held that the Jharkhand High Court has jurisdiction to entertain the appeal as both parties conduct business in Jharkhand and the statute (post-2021 amendment) does not restrict jurisdiction to the Delhi High Court alone.

The Court clarified that under Section 72(2) of the Copyright Act (amended), the appeal is to be heard by a Single Judge, with discretion to refer it to a Division Bench if needed.

The Court also noted that statutory provisions override High Court rules, and the current legal framework does not mandate Division Bench hearing unless specifically ordered.

Outcome:

The preliminary objection regarding maintainability was rejected. The Court held that the appeal is maintainable before the Jharkhand High Court and will be heard on merits in due course.

Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks

Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks & Anr.:21st April 2025:Case Number: C.A.(COMM.IPD-TM) 13/2024 :2025:DHC:3153:High Court of Delhi:Hon'ble Mr. Justice Amit Bansal

Facts:

Respondent No. 2 filed a trademark application on 6th December 2016, which was opposed by the appellant on 20th February 2020. A counter-statement was served to the appellant on 13th February 2023. The appellant claims to have sent the Evidence in Support of Opposition (EISO) on 30th March 2023 within the statutory time, albeit in photocopy form. The Trade Marks Registry, however, returned the documents requesting the original. The appellant subsequently filed the original EISO on 28th June 2023, which was uploaded to the Registry’s portal on 3rd July 2023. Despite this, the Registrar deemed the opposition abandoned for not filing the EISO in original within time.

Procedural History:Opposition filed: 20 February 2020,Counter-statement served: 13 February 2023,Photocopy EISO sent: 30 March 2023,Original EISO filed: 28 June 2023,Registrar’s order (impugned): 3 November 2023, treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017,Appeal filed under Section 91 of the Trade Marks Act, 1999

Issues:

Whether the Registrar of Trade Marks erred in treating the opposition as abandoned under Rule 45(2) due to non-filing of original EISO within the prescribed timeline? 

Decision:

The Delhi High Court held that:The appellant had demonstrated intent to contest by timely sending a photocopy of the EISO.Upon notification of the error, the original EISO was promptly submitted and accepted on the e-portal.The Registrar's insistence on original copies without prior intimation or flexibility contradicted the intent and procedural fairness.The impugned abandonment order was arbitrary.

Final Order:

The Court set aside the impugned order and directed the Registrar to take the EISO on record and proceed with the opposition proceedings. The registration granted to Respondent No. 2 was also cancelled.

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.