K. Mangayarkarasi & Anr. v. N.J. Sundaresan

Introduction: This case deals with the fundamental interplay between contractual agreements and the statutory framework governing trademarks. Specifically, it addresses the arbitrability of trademark disputes where the underlying contention stems from contractual assignment deeds containing arbitration clauses. The Supreme Court of India had to determine whether the matter should be referred to arbitration under Section 8 of the Arbitration and Conciliation Act, 1996, despite allegations of fraud and forgery surrounding the execution of the assignment deeds.

Detailed Factual Background:The plaintiffs (petitioners herein) K. Mangayarkarasi and her daughter Sreedevi filed a commercial suit against N.J. Sundaresan and Manonmani Angannan, seeking injunctive relief and damages concerning the use of the mark “SRI ANGANNAN BIRIYANI HOTEL.” The mark had emotional and commercial significance as it was associated with Mangayarkarasi’s late father Angannan, a renowned culinary figure in Coimbatore.

Following the death of Angannan in 1986 and subsequently her husband in 1990, Mangayarkarasi and her family allegedly retained control over the business and trademarks associated with “Sri Angannan.” Sundaresan, the son of Mangayarkarasi’s brother-in-law Jagadeeswaran (who had assisted in the family business), later claimed rights over the same trademark on the basis of two deeds of assignment dated 20.09.2017 and 14.10.2019, purportedly signed by Mangayarkarasi. The plaintiffs disputed the validity of these deeds, alleging fraud and forgery, stating they never consented to irrevocably assign the mark.

Detailed Procedural Background: A commercial suit (C.O.S. No. 147 of 2023) was filed by the plaintiffs before the Commercial Court, Coimbatore, seeking permanent injunctions and damages for the misuse of the trademark. In response, Sundaresan filed an application under Section 8 of the Arbitration and Conciliation Act, 1996, relying on the arbitration clauses embedded in the alleged assignment deeds.

The Commercial Court allowed the application, referring the parties to arbitration. This decision was affirmed by the Madras High Court in C.R.P. No. 1272 of 2024. Dissatisfied with these concurrent findings, the plaintiffs approached the Supreme Court through Special Leave Petition (Civil) No. 13012 of 2025.

Issues Involved in the Case:Whether the disputes involving trademark rights, arising out of assignment deeds containing arbitration clauses, are arbitrable in nature? Whether allegations of fraud in execution of assignment deeds bar the matter from being referred to arbitration?Whether non-signatory parties can be subjected to arbitration based on their derivation of rights under the agreement?

Detailed Submissions of Parties:The petitioners argued that the assignment deeds were fraudulently executed using blank stamp papers and that the arbitration clauses contained therein were not validly consented to. They contended that the alleged forgery and fraudulent inducement vitiated the contract entirely, making arbitration untenable.

Conversely, the respondents submitted that the disputes arose entirely from the contractual assignment deeds and not from any statutory violation under the Trade Marks Act. They emphasized that the arbitration clause clearly provided for disputes to be resolved through conciliation or arbitration, and that the plaintiffs' claim to the contrary was an afterthought to avoid arbitration.

Detailed Discussion on Judgments Cited:

Kvaerner Cementation India Ltd. v. Bajranglal Agarwal, (2012) 5 SCC 214: The Court emphasized that the arbitral tribunal is competent to rule on its own jurisdiction, including the validity of the arbitration agreement under Section 16 of the 1996 Act.

A. Ayyasamy v. A. Paramasivam, (2016) 10 SCC 386: The Court held that mere allegations of fraud do not bar arbitration unless such fraud permeates the entire contract or involves serious questions of public interest.

Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd., (2011) 5 SCC 532: This judgment clarified that rights in rem are generally not arbitrable, whereas rights in personam are. Disputes over assignment contracts are rights in personam and hence arbitrable.

Vidya Drolia v. Durga Trading Corporation, (2021) 2 SCC 1: Reinforced the distinction between arbitrable and non-arbitrable disputes and reiterated that matters involving rights in personam are subject to arbitration.

SBI General Insurance Co. Ltd. v. Krish Spinning, 2024 SCC OnLine SC 1754: The Court ruled that even if a discharge voucher was allegedly signed under coercion or fraud, the dispute remains arbitrable and should be determined by the arbitral tribunal.

National Insurance Co. Ltd. v. Boghara Polyfab (P) Ltd., (2009) 1 SCC 267: This case supported the proposition that an arbitration clause survives even if the contract's validity is challenged due to coercion or undue influence, making the dispute arbitrable.

Detailed Reasoning and Analysis of the Judge: The Supreme Court, carefully dissected the arbitrability of the present trademark dispute. The Court held that although the matter involved the use of a trademark, the rights claimed by both parties stemmed not from any statutory entitlement under the Trade Marks Act, but from private assignment deeds.

The Court emphasized that rights asserted under such agreements are personal in nature, and hence, arbitrable. Referring to Booz Allen and Vidya Drolia, it held that since the suit did not pertain to grant or cancellation of trademark registration—a sovereign function—but to contractual rights flowing from private deeds, it fell within the arbitral domain.

Further, the Court rejected the petitioners' allegations of fraud as being insufficient to oust arbitration jurisdiction. It noted that the existence of signatures, notarization, and evidence of consideration in the form of periodic payments made the plea of fraud unsubstantiated. Referring to Ayyasamy and Krish Spinning, the Court held that arbitrators are empowered to assess such claims.

The Court also addressed the issue of the third respondent being a non-signatory to the arbitration clause. It concluded, following the doctrine of “claiming through or under,” that a person deriving rights through a signatory (in this case, by a gift deed) is bound by the arbitration agreement, as per Section 8 of the Act.

Final Decision: The Supreme Court upheld the decisions of the Commercial Court and the Madras High Court, reaffirming that the dispute was rightly referred to arbitration. The Special Leave Petition was dismissed.

Law Settled in this Case: This judgment settles the position that: Trademark disputes arising out of assignment agreements are arbitrable as they concern private rights (in personam). Allegations of fraud, unless affecting the public domain or permeating the entire contract, do not bar arbitration.Parties deriving rights through or under signatories to an arbitration agreement are also bound by it.The scope of judicial interference under Section 8 of the Arbitration and Conciliation Act is limited; courts must favor arbitration where a valid agreement exists.

K. Mangayarkarasi & Anr. v. N.J. Sundaresan & Anr.:09 May 2025:: Special Leave Petition (Civil) No. 13012 of 2025: 2025 INSC 687: Supreme Court of India:Hon'ble Justice J.B. Pardiwala and Justice R. Mahadevan

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

Lummus Novolen Technology GmbH Vs. The Assistant Controller of Patents

Introduction: This case revolves around the refusal by the Controller of Patents to grant a patent to Lummus Novolen Technology GmbH for a claimed invention involving an improved Ziegler-Natta catalyst system. The appeal under Section 117A of the Patents Act, 1970, challenged the rejection on the ground that the invention lacked an "inventive step" under Section 2(1)(ja) of the Act. The High Court of Delhi adjudicated whether the appellant’s invention involved sufficient technical advance and non-obviousness to merit patent protection.

Factual Background: Lummus Novolen Technology GmbH is a German entity specializing in polymer process technologies. On May 19, 2015, the appellant filed Patent Application No. 4278/DELNP/2015 titled “High Performance Ziegler-Natta Catalyst Systems, Process for Producing Such MgCl₂-Based Catalysts and Use Thereof.” The claimed invention sought to provide a Ziegler-Natta catalyst using diether compounds as internal electron donors in order to produce phthalate-free polypropylene polymers with better polymerization activity and reduced environmental risks.

Procedural Background: The Patent Office issued the First Examination Report (FER) in February 2019, citing prior art documents D1 (EP 1840138 A1), D2 (EP 1609805 A1), and D3 (WO 2009152268 A1), challenging novelty and inventive step. The appellant responded with amended claims and arguments, and a hearing was held. Despite submissions, the Assistant Controller rejected the application on January 30, 2023, for lack of inventive step under Section 2(1)(ja). The appellant then filed the present appeal before the High Court of Delhi.

Legal Issue: The legal issue before the Court was whether the claimed invention in the patent application demonstrated an “inventive step” as defined under Section 2(1)(ja) of the Patents Act, 1970, and was thus patentable?

Discussion on Judgments:The appellant relied on several precedents to argue procedural impropriety and lack of reasoned decision-making by the Controller:

1. Wisig Networks Pvt. Ltd. v. Controller General of Patents, 2020 SCC OnLine IPAB 198 – to argue for a reasoned order under principles of natural justice.

2. Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496 – reinforcing the need for speaking orders.

3. Dolby International AB v. Assistant Controller of Patents, 2023:DHC:1854 – emphasizing that patent applications must be considered on their own merit and not merely follow foreign outcomes.

4. Stempeutics Research Pvt. Ltd. v. Assistant Controller of Patents, 2020 SCC OnLine IPAB 16 – recognizing the grant of patents in foreign jurisdictions as evidence of inventive merit.

The respondent relied heavily on the approach of combining teachings from prior arts and invoked judicial tests to justify the rejection. The following judgments were discussed:

1. F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2015:DHC:9674-DB – emphasized that a skilled person must find a teaching or suggestion in prior art to combine elements.

2. Bristol-Myers Squibb Holdings Ireland v. BDR Pharmaceuticals, 2020 SCC OnLine Del 1700 – reasserting the “obvious to try” test and the need for technical advancement.

3. Agriboard International LLC v. Deputy Controller of Patents, 2022 SCC OnLine Del 940 – held that the refusal of patent must consider the three-part test: prior art, invention, and obviousness to a skilled person.

4. Novozymes v. Assistant Controller of Patents, 2024:MHC:1344 – differentiated inventions solving distinct technical problems from prior art.

Reasoning and Analysis of the Judge

The court applied the tests of “Could-Would Approach”, “Obvious to Try”, and “Problem-Solution” to assess whether the appellant’s invention was a non-obvious technical advance over the cited prior art. The Court observed that all three cited documents D1, D2, and D3 described processes and compositions similar to the claimed invention. Example 13 of D1 already disclosed a catalyst with a molecular weight distribution (MWD) of 7—well within the claimed range of 5.75 to 9. D2 similarly described MWD values of 7 and 7.1 using diether compounds. D3 disclosed the same process steps as the appellant’s claims but described electron donors in broader terms.

The Court found that a person skilled in the art would logically be motivated to combine the teachings of D1, D2, and D3 to arrive at the claimed invention. Since one of the inventors in the application was also the inventor of D3, the Court held that he would have knowledge of prior arts and that the modification did not rise to the level of a patentable inventive step. The Court rejected the argument that the Controller copied from the European Patent Office’s decision, finding that the order met the standards set in Agriboard International and was reasoned.

Further, the Court noted the appellant had filed two nearly identical patent applications on the same day—4277/DELNP/2015 (granted) and 4278/DELNP/2015 (the subject case)—and failed to demonstrate any substantial distinction between the two. This raised the concern of evergreening, where a patentee attempts to secure extended monopoly by filing overlapping applications.

Final Decision:The High Court dismissed the appeal and upheld the Controller’s decision rejecting the patent. It held that the claimed invention lacked an inventive step as per Section 2(1)(ja) of the Patents Act, 1970, being obvious to a person skilled in the art in view of the combined disclosures of prior art documents D1, D2, and D3.

Law Settled in This Case:The judgment reaffirms that a patent application must clearly demonstrate a non-obvious technical advance over existing prior art to qualify for protection. The burden is on the applicant to show inventive step, particularly when prior art documents already describe similar processes or products. The Court clarified that mere modification or optimization of known parameters without surprising technical effect is not patentable. This case also endorses the application of the “Could-Would” approach in assessing inventive step and discourages attempts at evergreening through serial applications with negligible variation.

Case Title: Lummus Novolen Technology GmbH Vs. The Assistant Controller of Patents and Designs:Date of Order: May 29, 2025:Case Number: C.A.(COMM.IPD-PAT) 12/2023:Neutral Citation: 2025:DHC:4614:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Lummus Novolen Technology GmbH Vs. The Assistant Controller of Patents

Case Title: Lummus Novolen Technology GmbH Vs. The Assistant Controller of Patents  Date of Order: May 29, 2025 Case Number: C.A.(COMM.IPD-PAT) 12/2023 Neutral Citation: 2025:DHC:4614 Name of Court: High Court of Delhi Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Brief Facts: Lummus Novolen Technology GmbH filed patent applications for a high-performance Ziegler-Natta catalyst system. The Indian patent office rejected these claims, citing lack of inventive step and obviousness based on prior art documents D1, D2, and D3.

Decision: The High Court dismissed the appeal, affirming that the invention was obvious to a person skilled in the art and did not involve an inventive step, upholding the patent office’s decision.

Law Settled: The case clarifies that an invention must involve an inventive step involving technical advancement or economic significance beyond the existing knowledge to be patentable under Section 2(1)(ja) of the Patents Act, 1970. The evaluation of obviousness is grounded in whether the claimed invention is obvious in light of prior art.

Oswaal Books and Learnings Private Limited Vs Registrar of Trade Marks

Case Title: Oswaal Books and Learnings Private Limited Vs Registrar of Trade Marks Date of Order: 28 May 2025 Case Number: C.A.(COMM.IPD-TM) 19/2024 Neutral Citation: 2025:DHC:4519: Court: High Court of Delhi Judge: Hon'ble Ms. Justice Mini Pushkarna

Very Brief Facts:

Oswaal Books applied to register the trademark "ONE FOR ALL" for educational books; the application was rejected by the Trade Marks Registry due to lack of distinctiveness, as the mark was deemed descriptive and common, with no secondary meaning established.

Decision:

The Court dismissed the appeal, affirming the refusal, holding that the mark "ONE FOR ALL" is a laudatory, descriptive slogan that lacks inherent or acquired distinctiveness.

Law Settled:

A trademark must be inherently distinctive or have acquired secondary meaning to qualify for registration. Descriptive or common phrases, unless they have acquired secondary meaning, cannot be monopolized as trademarks under Section 9 of the Trade Marks Act, 1999. The applicant failed to prove that "ONE FOR ALL" had acquired such distinctiveness.

Selle Royal Group SpA. Vs Royal Group

Case Title: Selle Royal Group SpA. Vs Royal Group :Date of Order: May 28, 2025:Case Number: C.O.(COMM.IPD-TM) 196/2022:Neutral Citation: 2025:DHC:4526:Name of Court: High Court of Delhi:Name of Judge: Hon'ble Justice Mr. Saurabh Banerjee

Brief Facts: Selle Royal Group, an Italian company, uses the trademark "fi’zi:k" globally since 1995 for bicycle accessories and footwear, with extensive use and reputation established since 2004 in India. The respondent, ACE Footmark, registered "FIZIKFREAK" in 2017 for footwear, which Selle Royal claims is confusingly similar to "fi’zi:k," and was registered later. The company sought cancellation of the respondent’s registration to protect its brand.

Decision & Law: The Court held that the respondent’s mark "FIZIKFREAK" was deceptively similar to the registered "fi’zi:k," and the registration was liable for cancellation due to lack of honest use, deliberate copying, and reputation established since 1995. The Court directed the Registrar of Trade Marks to cancel the registration and remove "FIZIFREAK" from the register, emphasizing the protection of prior rights and trademarks.

Steelcase Inc. Vs. Mr. K.J. Bhuta

Introduction: This case revolves around a dispute concerning the alleged infringement of the registered trademark "STEELCASE" by the defendants, who were operating under the name "Steel Case India Private Limited". The plaintiff, Steelcase Inc., sought permanent injunction and other reliefs under trademark and copyright law, asserting that the defendants' use of an identical or deceptively similar mark amounted to infringement and misrepresentation. The case further saw a plea by the defendants seeking stay of the suit under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, on the ground that they intended to challenge the validity of the plaintiff’s trademark registration.

Factual Background: Steelcase Inc., a US-based entity, has been operating under the mark "STEELCASE" since 1920 and entered the Indian market in 2000, providing office furniture and architectural products. It owns registered trademarks for “STEELCASE” under Classes 9, 11, 16, and 20 since 1995. Defendant no.1, Mr. K.J. Bhuta, operated "M/s. Steel Case India Private Limited" and was alleged to have adopted a deceptively similar name and domain (“www.steelcaseindia.com”) for commercial gain. The plaintiff alleged that this use infringed its trademark rights and amounted to passing off, causing confusion among consumers and harming the plaintiff’s goodwill.

Procedural Background: The present order arose from an interlocutory application under Section 124 of the Trade Marks Act, 1999, filed by the defendant no.1. The defendant sought a stay of proceedings in the main suit to allow for rectification of the trademark register, contesting the validity of the plaintiff’s registered trademark “STEELCASE”. The defendant asserted prior use of the mark since 1981 and challenged the bona fides of the plaintiff’s registration.

Legal Issue:The primary legal issue was whether the defendant’s plea of invalidity regarding the plaintiff’s trademark was “prima facie tenable” under Section 124(1)(b)(ii) of the Trade Marks Act, 1999, and whether this justified a stay of the trial proceedings in the main suit pending rectification proceedings?

Discussion on Judgments: The defendant relied upon the decision in Lupin Ltd. v. Johnson and Johnson, 2015(1) Mh.L.J, where the Bombay High Court held that a court may assess the invalidity of a registered trademark at the interlocutory stage with a lower threshold of scrutiny. The purpose was to allow challenges to questionable registrations that may have been fraudulently obtained or are legally infirm.

Additionally, reliance was placed on Franco India Pharmaceuticals v. Corona Remedies Pvt. Ltd., COMMERCIAL IP SUIT NO. 105 OF 2022, where the Bombay High Court permitted a rectification challenge based on detailed pleadings showing invalidity.

In contrast, the plaintiff cited Burger King Corporation v. Ranjan Gupta and Others, 2023 SCC OnLine Del 1383, where the Delhi High Court clarified that mere allegations do not entitle a party to seek rectification unless the plea of invalidity is shown to be prima facie tenable. The Court in Pepsico Inc. v. Parle Agro Pvt. Ltd., CS(COMM) 268/2021, further clarified that "prima facie tenability" means the plea must be arguable and not frivolous or based on bald assertions.

The plaintiff also relied upon McCarthy on Trademarks & Unfair Competition, 5th Ed., Vol. 2, which distinguishes between "descriptive" and "suggestive" marks, arguing that "STEELCASE" required interpretive imagination and was therefore not descriptive.

Reasoning and Analysis of the Judge:Court held that the defendant’s pleadings failed to raise a prima facie tenable issue regarding the invalidity of the plaintiff’s trademark. The alleged descriptiveness of the mark "STEELCASE" was not supported by substantive evidence or analysis in the pleadings. Rather, the assertion was made in passing and lacked the detailed reasoning necessary for raising a legal issue under Section 124(1)(b)(ii).

The Court emphasized that not all suggestive marks are descriptive. The test, as per McCarthy, requires that a mark be immediately informative without interpretive effort to qualify as descriptive. The Court found that "STEELCASE" did not directly describe the plaintiff’s products and thus could not be dismissed as descriptive.

The judge further noted that abandonment of the plaintiff’s earlier 1968 application for the trademark did not, by itself, render the subsequent 1995 registration invalid. The mere fact that objections were raised by the Examiner or that the mark was initially proposed to be used did not establish fraud or illegality.

Thus, the Court held that there was no prima facie tenable plea of invalidity that could justify staying the suit or granting liberty for rectification proceedings.

Final Decision: The High Court of Delhi dismissed the application under Section 124(1)(b)(ii) of the Trade Marks Act, 1999. The Court found no justification to stay the trial proceedings or to entertain the rectification plea. The matter was listed for framing of issues on the next date of hearing.

Law Settled in This Case: This judgment reinforces that a party invoking Section 124(1)(b)(ii) of the Trade Marks Act, 1999 must demonstrate a prima facie tenable plea of invalidity through detailed and reasoned pleadings. Mere assertions, absence of cogent evidence, or prior use claims unsupported by documentary proof will not suffice to invoke the protection of rectification proceedings or to stall trademark enforcement suits. The judgment affirms the principle that the discretion under Section 124 lies with the Court and is not a matter of right.

Case Title: Steelcase Inc. Vs. Mr. K.J. Bhuta and Anr.: Date of Order: May 28, 2025: Case Number: CS(COMM) 1180/2018: Neutral Citation: 2025:DHC:4521:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Steelcase Inc. Vs. Mr. K.J. Bhuta

Case Title: Steelcase Inc. Vs. Mr. K.J. Bhuta and Others Date of Order: May 28, 2025 Case Number: CS(COMM) 1180/2018 Neutral Citation: 2025:DHC:4521 Court: High Court of Delhi Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

Steelcase Inc. filed a suit for infringement of its registered trademark "STEELCASE" against Mr. K.J. Bhuta, who operates as "M/s. Steel Case India Private Limited." The defendant claimed prior use of the trade name since 1981 and contested the plaintiff’s rights based on abandoned applications and the descriptive nature of the mark.

Decision:

The Court dismissed the defendant's application under Section 124(1)(b)(ii) of the Trade Marks Act to specify that the trademark "STEELCASE" was invalid or descriptive. It found that the defendant failed to demonstrate a prima facie case of invalidity or that the plaintiff's mark was merely descriptive. The Court clarified that the trademark was distinctive due to continuous use by the plaintiff and that mere prior use by defendant did not establish prior rights sufficient to oppose the registration.

Law Settled:

• The Court clarified the scope of Section 124(1)(b)(ii) of the Trade Marks Act regarding prima facie tenability of invalidity claims.
• Registration and ongoing use of a mark over time can establish distinctiveness.
• Abandoned applications or prior use alone do not necessarily invalidate a trademark absent proof of descriptiveness or prior rights.

ITC Limited Vs. The Controller of Patents, Designs and Trademark

Case Title:ITC Limited Vs. The Controller of Patents, Designs and Trademark:Court:High Court at Calcutta:Case No.:IPDPTA/13/2024:Date of Order:20 May 2025:Judge:Hon’ble Mr. Justice Ravi Krishan Kapur

Facts:

ITC Limited filed an appeal against the rejection of its patent application titled “A Heater Assembly to Generate Aerosol”. The Controller of Patents rejected the application under Section 3(b) of the Patents Act, 1970, stating that the invention was prejudicial to human life, health, public order, and morality. The invention involved a heater for aerosol-generating articles, potentially used with or without tobacco.

Legal Issue:

Whether the invention is hit by Section 3(b) of the Patents Act, i.e., whether its primary or intended use or commercial exploitation is contrary to public order or morality or causes serious prejudice to human or environmental health.

Reasoning:

The Court held that the Controller had fundamentally misunderstood the nature of the invention and failed to provide any cogent reasons or scientific evidence to justify the rejection. The invention was not inherently linked to tobacco use and could be applied in other contexts. Moreover, the Controller relied on documents not supplied to the applicant, violating principles of natural justice. The invocation of Article 47 of the Constitution and Section 83 of the Patents Act was held to be irrelevant. The Court emphasized that patent rights are exclusionary and do not confer a right to use or sell an invention, and that moral or public health concerns require evidence-based reasoning.

Final Decision:

The impugned order rejecting the patent was set aside. The matter was remanded back to the Controller for fresh consideration, with a direction to give the appellant a proper hearing and adjudicate the matter within three months.

Issues Discussed: Interpretation and scope of Section 3(b) of the Patents Act. Principles of natural justice.Nature of patent rights as exclusionary.Improper reliance on extraneous documents and constitutional provisions.Misapplication of public order and morality clause without evidence.

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

Introduction:This case revolves around a critical interpretation of the jurisdictional scope of Section 72 of the Copyright Act, 1957, as amended by the 2021 legislative changes. The dispute arose regarding whether the High Court of Jharkhand at Ranchi had jurisdiction to hear an appeal against the order of the Deputy Registrar of Copyrights, whose office is located in New Delhi. 

The matter delves into the territorial jurisdiction, the forum of appeal, and the applicable procedure, especially in light of the amended statutory framework post-2021. The ruling provides a reasoned approach to jurisdictional limitations and the legislative intent of decentralizing appellate forums for copyright-related disputes.

Detailed Factual Background: Samriddhi Rice Mill Private Limited, the appellant, is a company engaged in business within the state of Jharkhand. It filed an appeal under Section 72(2) of the Copyright Act, 1957, challenging the order passed by the Deputy Registrar of Copyrights situated in New Delhi. The impugned order adversely affected the copyright-related interests of the appellant, and thus, they approached the High Court of Jharkhand for redressal.

The dispute took a jurisdictional turn when the respondent, particularly Respondent No. 6, raised objections asserting that only the Delhi High Court could entertain such appeals, as the office of the authority passing the order was located there. The appellant, on the other hand, contended that both parties, including Respondent No. 6, carried out business operations within Jharkhand, and thus the Jharkhand High Court had jurisdiction under the amended provisions of Section 72.

Detailed Procedural Background:The appeal was registered as Misc. Appeal No. 316 of 2024 before the High Court of Jharkhand. The matter came before court for hearing on the issue of maintainability, as preliminary objections were raised by the respondents. Extensive arguments were presented concerning the interpretation of Section 72 of the Copyright Act as amended in 2021, particularly the omission of territorial restrictions seen in the earlier version of the law.

The respondents relied on prior judgments and statutory interpretations to assert that jurisdiction solely vests with the Delhi High Court, whereas the appellants referred to their business operations within Jharkhand as sufficient to establish territorial jurisdiction.

Issues Involved in the Case:The case involved two principal legal issues. First, whether the High Court of Jharkhand had the territorial jurisdiction to entertain an appeal under Section 72 of the Copyright Act, 1957, after its 2021 amendment! Second, whether such appeals are mandatorily required to be heard by a Division Bench or whether a Single Judge is competent to hear the matter at the initial stage? 

Detailed Submission of Parties:The  Respondent No. 6 submitted that as the order under challenge was passed by the Deputy Registrar of Copyrights whose office is situated at New Delhi, only the Delhi High Court possessed territorial jurisdiction. He relied upon the case of Ambica Industries Vs. Commissioner of Central Excise, (2007) 6 SCC 769, particularly paragraphs 13 and 38, to argue against forum shopping and the dangers of conflicting jurisdictional interpretations among different High Courts. He further contended that the amendment to Section 72 should not be interpreted to override the requirement of centralised jurisdiction where the authority resides.

Respondent No. 6 further argued that under Jharkhand High Court Rules, 2001, Rule 384 mandates that appeals under Section 72 of the Copyright Act should be heard by a Division Bench, and therefore, the appeal was not maintainable before a Single Judge.

The appellant  rebutted these submissions by asserting that post the 2021 amendment to the Copyright Act, Section 72 allows appeals to the "High Court" without restricting it to the jurisdiction of the Delhi High Court. He cited Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, to argue that an appeal can be maintained where the appellant resides or conducts business. 

He also referred to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, to support the proposition that territorial jurisdiction can lie where the cause of action arises and where the affected party resides or operates.

On the issue of Single Judge vs. Division Bench, it was contended that under amended Section 72(2), an appeal is to be heard by a Single Judge, who may refer it to a Bench if deemed appropriate. He distinguished the Jharkhand High Court Rules, 2001, by noting that these rules predate the statutory amendment and therefore cannot override legislative provisions.

Detailed Discussion on Judgments Cited:

The key judgment relied upon by the respondent was Ambica Industries v. Commissioner of Central Excise, (2007) 6 SCC 769. In that case, the Supreme Court addressed the issue of forum shopping and stressed that jurisdiction cannot be extended arbitrarily to High Courts based merely on the location of tribunals or appellate authorities. The judgment emphasized consistency in judicial decisions and the risk of legal uncertainty if multiple High Courts entertain similar matters leading to divergent views.

The appellant countered this reliance by referring to Calcutta Gujarati Education Society v. Regional Provident Fund Commissioner, (2020) 19 SCC 380, where the Supreme Court distinguished Ambica Industries by affirming the territorial jurisdiction of the Calcutta High Court even though the tribunal was based elsewhere. It held that the place of original cause of action remains a relevant consideration for establishing jurisdiction under Articles 226 and 227.

In Sumitra Nandan Gupta v. Copyright Board, 1970 SCC OnLine Del 103, the Delhi High Court acknowledged that multiple High Courts can have jurisdiction based on the residence and business of the parties, and that the existence of jurisdiction in one court does not negate it in another, provided statutory conditions are met.

Detailed Reasoning and Analysis of Judge:Justice Sanjay Kumar Dwivedi began by analyzing both the unamended and amended texts of Section 72 of the Copyright Act. The earlier provision explicitly granted jurisdiction to the High Court within whose jurisdiction the appellant resided or carried on business. The 2021 amendment simplified this provision, stating that an appeal may lie to “the High Court,” without incorporating any restrictive territorial clause.

The judge observed that this change signaled a legislative intention to decentralize the appeal process, enabling High Courts to hear cases where parties reside or operate, thereby reducing dependency on the Delhi High Court. The Judge reasoned that if the legislature intended exclusive jurisdiction for the Delhi High Court, such language would have been expressly provided in the amended statute.

He further held that the presence of both parties in Jharkhand, along with their business operations within the State, clearly vested jurisdiction with the Jharkhand High Court. The judge emphasized that jurisdiction is determined not just by the location of the authority passing the order but also by where the cause of action arises and where the parties reside or carry on business.

Regarding the question of whether a Single Judge could hear the matter, the Court interpreted Section 72(2) to mean that the appeal is to be heard by a Single Judge unless he deems it appropriate to refer the matter to a Division Bench. The Judge clarified that the High Court Rules cannot override a statutory provision, and the discretion vested in the Single Judge under the proviso of Section 72(2) remains paramount.

The Court also cited Rajnish Kumar Rai v. Union of India, (2023) 14 SCC 782, to affirm that a High Court need not await decisions in pending references before other benches and must decide based on the law existing at the time of hearing.

Final Decision:The High Court of Jharkhand held that it has territorial jurisdiction to hear the appeal under Section 72 of the Copyright Act, 1957. The preliminary objection regarding jurisdiction raised by Respondent No. 6 was rejected. The appeal was held to be maintainable before the Single Judge, with the option of reference to Division Bench if the judge so decides during the course of hearing on merits.

Law Settled in this Case:This case establishes that post the 2021 amendment of Section 72 of the Copyright Act, High Courts , other than Delhi can exercise jurisdiction over appeals, provided the parties conduct business or reside within their territorial limits. It also affirms that such appeals are maintainable before a Single Judge, who retains discretion to refer the matter to a Division Bench. The ruling further clarifies that procedural High Court Rules cannot override substantive statutory amendments and that the law in force at the time of hearing governs the court's adjudicatory authority.

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

Date of Order: 30th April 2025

Case No.: Misc. Appeal No. 316 of 2024

Court: High Court of Jharkhand, Ranchi

Judge: Hon’ble Mr. Justice Sanjay Kumar Dwivedi

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

Hals Foods Kitchen Private Limited VS. Pithiya Jitendrakumar

Introduction:This case arose from an appeal filed under Order 43 of the Code of Civil Procedure, challenging the grant of an interim injunction by the learned 10th Additional District and Sessions Judge, Ahmedabad (Rural). The original suit involved allegations of infringement of trademark and copyright concerning the mark and artistic label "TAAM JHAAM". The legal conflict centered on competing claims of prior use, authorship of artwork, and an alleged attempt to misappropriate an artistic and brand identity. The High Court of Gujarat was called upon to decide whether the interim injunction granted to the plaintiff/respondent was proper and justified in law.

Factual Background:The respondent-plaintiff filed Trade Mark Civil Suit No. 17 of 2022 asserting his rights over the mark "TAAM JHAAM", which was described as a unique artwork/label used in connection with restaurant services. The plaintiff claimed to be the creator and prior adopter of the said mark, and supported his claim with documents such as a deed of assignment from an artist, invoices related to logo design, menu card printing, and T-shirts bearing the mark—all allegedly created in mid-2022.

The defendant-appellant was the proprietor of a company that operated restaurants under various brand names including "Ghee Gud", "Octant Pizza", and allegedly, "TAAM JHAAM". The plaintiff alleged that despite knowing the plaintiff's prior use, the defendant was attempting to commercially exploit the "TAAM JHAAM" label and had even begun using it in various locations. This led the plaintiff to file the suit seeking permanent injunction, damages, and other reliefs.

Procedural Background:Upon institution of the suit, the plaintiff filed an injunction application under Exh. 5 seeking to restrain the defendant from using the disputed label/artwork. In response, the defendant filed a counterclaim along with a separate injunction application under Exh. 20, asserting his own prior rights and challenging the plaintiff’s assertions.

The learned District Court heard both applications together and passed an order dated 29.05.2024 granting interim injunction in favour of the plaintiff (allowing Exh. 5) while rejecting the defendant’s counterclaim for injunction (under Exh. 20). Aggrieved by this, the defendant filed an appeal before the High Court of Gujarat limited to challenging the grant of interim injunction.

Issues Involved in the Case:The central issue was whether the District Court was justified in granting interim relief in favour of the plaintiff based on a prima facie case of copyright infringement and the likelihood of passing off?The corollary issues included whether the plaintiff was indeed the prior user of the mark, whether the assignment deed was genuine, whether the label/artwork qualified for protection under the Copyright Act, and whether the defendant’s documents supporting its claim were credible?

Submissions of the Parties: The defendant  contended that the plaintiff was a former franchisee of the defendant's brand "Octant Pizza" and had instituted the suit as a retaliatory measure after the franchise agreement was terminated. It was argued that the plaintiff’s claims were fabricated and that the artwork being asserted as copyright was in fact a label mark defined under Section 2(m) of the Trade Marks Act. The defendant challenged the authenticity of the assignment deed and other supporting documents such as invoices and claimed that the plaintiff had falsely backdated his user. It was further submitted that the suit was barred since the plaintiff had declared the mark in his trademark application as “proposed to be used,” thereby contradicting his claim of prior use.To support these submissions, the defendant relied upon the following decisions:

Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 – laying down the principles for grant of interim injunction and emphasizing the need for a prima facie case, balance of convenience, and irreparable harm.

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 – concerning protection against passing off and requirement of goodwill.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 – emphasizing deceptive similarity and comparable strength of trademarks.

K. Narayanan v. S. Murali, (2008) 10 SCC 479 – on the accrual of right to sue post-registration.

Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577 – concerning proof of goodwill and misrepresentation in passing off cases.

The plaintiff  defended the injunction, arguing that the suit was primarily based on copyright infringement, and registration was not necessary under the Copyright Act. It was emphasized that copyright subsists in both published and unpublished works, and under Section 14(c), the exclusive right to reproduce an artistic work in material form rests with the owner. Plaintiff asserted that it  had a valid assignment deed dated 28.05.2022 from the artist and had begun using the artwork on menus and T-shirts by June and August 2022 respectively. The defendant, he submitted, had not established any credible use of the mark prior to the plaintiff, and the documents relied upon by the defendant—including suspicious invoices and contradictory addresses—were manipulated. He also highlighted that the defendant had previously been injuncted in a related case involving another mark "DHAAM DHOOM" and that similar injunctions had been granted against his alleged associates.

Discussion on Judgments and Contextual Application:The Gujarat High Court considered the principles laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd. and reiterated that appellate interference with interim orders should be minimal if the trial court’s exercise of discretion is based on reasonable and judicially considered grounds.

The Court examined the relevance of Wander Ltd. and Cadila Healthcare, distinguishing them to the extent that those cases pertained primarily to trademark disputes. Here, the interim injunction had been granted for copyright infringement as well, and the standard of proving goodwill in a passing off claim was not a prerequisite at this stage.

The Court accepted the application of Laxmikant V. Patel to the extent that it supported protection against unfair commercial exploitation, but found that even without satisfying the classical trinity test (prior use, goodwill, misrepresentation), the plaintiff was entitled to protection due to the strong prima facie case of authorship and ownership of the artwork.

Reasoning and Analysis of the Judge: The court observed that the plaintiff had sufficiently established a prima facie case of copyright ownership through a valid assignment deed, timely issuance of invoices, and documentary proof of usage of the label/artwork prior to the defendant’s alleged adoption.

The judge noted discrepancies in the defendant’s documents, including invoices issued before rental agreements for the same address and failure to credibly establish a prior creation of the logo. The High Court emphasized that these inconsistencies raised doubts about the genuineness of the defendant’s claims.

The judge further held that the plaintiff's act of filing the trademark as "proposed to be used" did not defeat the claim under copyright law, which operates independently of trademark registration. The existence of a similar mark, possibility of confusion, and the earlier artistic creation being used by the plaintiff tilted the balance in his favour.

Court underscored that once a prima facie case for copyright infringement was made, the requirement to prove the trinity test for passing off could be bypassed at the interim stage, particularly when the defendant’s materials lacked reliability.

Final Decision :The High Court dismissed the appeal and upheld the interim injunction granted by the District Court. It held that the order was based on cogent reasoning and did not warrant interference. The Court emphasized that the trial court had considered all relevant factors and that the plaintiff had demonstrated a prima facie case, balance of convenience, and potential irreparable harm if the injunction were denied.

Law Settled in this Case: The case reaffirms that in suits involving both copyright infringement and passing off, interim injunction may be granted solely on the basis of a prima facie case of copyright infringement, without necessarily establishing all elements of a passing off claim. It also reiterates that ownership of copyright in an artistic label can be established through an assignment deed, and registration is not mandatory. The judgment cautions against entertaining suspicious documents produced to undermine prior artistic ownership and upholds the broader objective of protecting genuine creative work from unfair exploitation.

Case Title: Hals Foods Kitchen Private Limited VS. Pithiya Jitendrakumar :Date of Order: 25th April, 2025:Case No.: Appeal From Order No. 104 of 2024:Name of Court: High Court of Gujarat at Ahmedabad:Name of Judge: Hon’ble Mr. Justice Nikhil S. Kariel

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

Exclusive Capital Ltd. v. Silver & C.Z. International

Exclusive Capital Ltd. Vs. Silver and C.Z. International: May 2, 2025: RFA (COMM) 257/2025:2025:DHC:3212-DB:High Court of Delhi: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Renu Bhatnagar

Facts:

Exclusive Capital Ltd. (the appellant) extended a Rs. 2 crore loan to Silver & C.Z. International (the respondent) under a Loan Agreement dated April 29, 2022. The respondent defaulted on multiple monthly installments starting from July 2022, despite making some payments. The appellant claimed that the respondent owed over Rs. 42 lakh, including penalties and interest, and initiated a suit for recovery, asserting the respondent's breach and seeking security and injunctions to prevent asset alienation.

Procedural Details:

The appellant filed a civil suit in the District Court of Delhi seeking recovery of dues along with interim relief. It also moved an application under Section 12A of the Commercial Courts Act, seeking to bypass the statutory pre-litigation mediation requirement, alleging urgency due to risk of asset disposal by the respondent. The trial court dismissed the application and rejected the plaint, holding that there was no justification for bypassing mediation, and that the suit did not demonstrate the urgency needed to exempt from mediation.

Issue:

Whether the appellant's suit and application for exemption from pre-institution mediation under Section 12A of the Commercial Courts Act should be entertained, considering the alleged urgency and nature of relief sought.

Decision:

The High Court upheld the decision of the trial court. It dismissed the appeal, affirming that the suit did not meet the conditions for exemption from mediation, as there was no sufficient urgency or circumstance justifying bypassing the statutory process. The court emphasized that prayers for interim relief cannot be used as a mask to circumvent Section 12A’s mandate.

Western Digital Technologies, Inc. Vs. Hansraj Dugar

Western Digital Technologies, Inc. Vs. Hansraj Dugar: May 16, 2025: CS(COMM) 586/2019: 2025:DHC:3844: High Court of Delhi: Amit Bansal

Facts
The plaintiffs, Western Digital Technologies Inc. and its subsidiary Western Digital UK Ltd., are among the world’s largest manufacturers of hard disk drives (HDDs), using the trademarks “WESTERN DIGITAL” and “WD” since 1997 and 1999, respectively. They alleged that the defendant, Hansraj Dugar, operating through his proprietorship M/s Supreme Enterprise, had imported large quantities of infringing HDDs bearing their registered trademarks. The Customs Authorities alerted the plaintiffs about three consignments imported via Kolkata Port in September 2019. Upon inspection, some drives were found to be damaged or second-hand, though claimed to be new. The plaintiffs filed a suit for permanent injunction and related reliefs under the Trade Marks Act, 1999.

Procedural History
The Delhi High Court granted an ex parte ad interim injunction on 21 October 2019, restraining the defendant from dealing in the infringing products and appointed a Local Commissioner to seize the goods. Around 7500 HDDs were seized and held in customs custody. The matter was referred to mediation, which failed. The defendant filed an application in 2024 to vacate the injunction, relying on a recent judgment in Seagate Technology LLC v. Daichi International (2024:DHC:4193), which dealt with import and sale of refurbished HDDs. Plaintiffs opposed, distinguishing their case from Daichi, citing non-compliance with Indian laws and impairment of product quality.

Issue
The core issue was whether importation of second-hand genuine goods bearing the plaintiffs’ trademarks constituted trademark infringement under Section 29(6) of the Trade Marks Act, 1999, or was protected under Section 30(3) and (4), particularly in light of the principle of international exhaustion of rights.

Decision
The Court held that the principle of international exhaustion under Section 30(3) of the Trade Marks Act permits lawful importation and resale of genuine goods, including second-hand ones, as long as full disclosure is made regarding their refurbished nature, lack of original manufacturer warranty, and condition. Relying on Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2012:DHC:6136:DB) and Seagate Technology LLC v. Daichi International, the Court ruled that the defendant had a right to import second-hand goods and that there was no misrepresentation, as the goods had not yet entered the market. It ordered release of the seized goods, subject to their sale as scrap after removing the plaintiffs’ trademarks. For future imports, the defendant must follow full disclosure norms as outlined in Xerox Corporation v. Shailesh Patel and Daichi.

National Fire Protection Association Vs Swets Information Services

Introduction: This case before the Delhi High Court delves into the consequences of procedural non-compliance in the context of commercial litigation, especially with regard to filing of a written statement without the requisite affidavit of admission/denial of documents under the Delhi High Court (Original Side) Rules, 2018 and the Commercial Courts Act, 2015. The matter specifically concerns the striking off of the written statement of a defendant for failure to cure a defect in filing over a period of several years, despite being on notice.

Detailed Factual Background: The plaintiff, National Fire Protection Association, Inc., a reputed international entity in the domain of fire safety standards and publications, filed a commercial suit for permanent injunction and related reliefs against Swets Information Services Pvt. Ltd. and several other defendants, including defendant no.11, later renumbered as defendant no.8. The suit was filed under CS(COMM) 987/2018, with the primary allegation being unauthorized commercial use and distribution of its protected content.

Defendant no.11, now defendant no.8, filed its written statement on 08.08.2018 via Diary No.199399/2018. However, the said filing was defective as it lacked the affidavit of admission/denial of documents, a mandatory requirement under the Original Side Rules. The parties were thereafter referred to the Delhi High Court Mediation and Conciliation Centre for potential settlement.

Detailed Procedural Background: After initial filing, the case proceeded to mediation in 2018 and continued until early 2024 without any significant litigation activity before the Court. During this time, no steps were taken by defendant no.11 to rectify the defect in its written statement.

On 13.08.2024, the suit came up for hearing again and was listed before the learned Joint Registrar for further proceedings. On 02.09.2024, the learned Joint Registrar passed an order striking off the written statement of defendant no.11 due to the persisting defect, i.e., non-filing of the mandatory affidavit, and the inordinate delay in curing it.

Aggrieved, the defendant filed a chamber appeal (O.A. 166/2024) under Chapter IV Rule 3(d) of the Original Side Rules, 2018 challenging the said order of the Joint Registrar.

Issues Involved in the Case: Whether the omission to file the affidavit of admission/denial along with the written statement renders the filing non-est under the Original Side Rules and the Commercial Courts Act? Whether the delay of nearly six years in curing the defect, despite registry notice, can be condoned in the interest of justice?Whether mediation proceedings can be used as a ground to seek enlargement of time for curing defects or for re-filing defective pleadings?

Detailed Submission of Parties:The learned counsel for the defendant no.11 argued that the written statement was filed well within the statutory period of 30 days on 08.08.2018, but inadvertently without the affidavit of admission/denial. He contended that neither the Registry nor the website flagged this as a defect till 2022, and the defendant was unaware of the non-compliance. He relied on judicial precedents to argue that such omission does not render the filing non-est unless formally communicated. It was also argued that time spent in mediation proceedings should be excluded from limitation computation, citing Greaves Cotton Ltd. v. Newage Generators Pvt. Ltd. (2019:DHC:172) and Bharat Singh v. Karan Singh & Ors. (2025:DHC:777). He further submitted that procedural law should not be used punitively, especially when no prejudice was caused to the plaintiff.

Conversely, counsel for the plaintiff submitted that the filing was defective ab initio and could not be regularized after six years. She highlighted that an "Urgent Notice" was issued by the Registry on 18.08.2022 specifically alerting parties to collect their defective filings, including the subject written statement, failing which the documents would be weeded out. The failure to act even after that notice, coupled with no application for condonation of delay, showed gross negligence. The plaintiff relied on SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd. (2019 SCC OnLine SC 226), ITD Cementation India Ltd. v. Indian Oil Corporation Ltd. (2023 SCC OnLine Del 6263), and Unilin Beheer B.V. v. Balaji Action Buildwell (2019 SCC OnLine Del 8498), all of which established that a written statement not accompanied with the requisite affidavit is non-est and liable to be struck off. They argued that the limitation under the Commercial Courts Act is strict and cannot be extended beyond 120 days.

Detailed Discussion on Judgments Cited:

In SCG Contracts India Pvt. Ltd. v. K.S. Chamankar Infrastructure Pvt. Ltd., (2019) SCC OnLine SC 226, the Supreme Court emphasized that the timelines for filing written statements under the Commercial Courts Act are mandatory and not directory. The ruling clarified that a written statement filed beyond 120 days cannot be taken on record.

In Unilin Beheer B.V. v. Balaji Action Buildwell, 2019 SCC OnLine Del 8498, the Delhi High Court ruled that the absence of the affidavit of admission/denial renders a written statement defective and liable to be struck off under Chapter VII Rule 3 of the Original Side Rules, 2018.

Greaves Cotton Ltd. v. Newage Generators Pvt. Ltd., 2019:DHC:172, and Bharat Singh v. Karan Singh & Ors., 2025:DHC:777 were cited by the defendant to argue for exclusion of time spent in mediation. However, the Court distinguished these decisions on the facts, holding that mediation did not justify a delay in curing known procedural defects.

Friends Motel Pvt. Ltd. v. Shreeved Consultancy LLP, 2020:DHC:271 and 3M Company v. Mr. Vikas Sinha, 2022:DHC:2447 reiterated that strict adherence to procedural timelines in commercial suits is necessary to fulfill the objective of expeditious adjudication.

Detailed Reasoning and Analysis of the Judge: The Court held that the written statement filed by the defendant was defective from inception due to the absence of the mandatory affidavit under Chapter VII Rule 3 of the Original Side Rules, 2018. The defendant was under an obligation to cure the defect within 30 days of being notified. The “Urgent Notice” issued by the Registry in August 2022 was deemed sufficient communication of the defect. The defendant’s failure to act upon the notice and to file any application seeking condonation of delay or extension of time, for nearly two years thereafter, showed complete negligence and disregard for procedural norms.

The Court rejected the defense that mediation justified the delay, especially since mediation had conclusively failed by April 2023. The Court also emphasized that the Commercial Courts Act, 2015 mandates strict timelines to ensure speedy resolution, and indulgence in such delays would defeat the very purpose of the statute.

The Court also found the defendant’s appeal to be frivolous and a clear abuse of process aimed at delaying the adjudication. The striking off of the written statement by the Joint Registrar was found to be legally sound and well-reasoned.

Final Decision: The chamber appeal filed by defendant no.11 was dismissed with costs of ₹25,000 payable to the Army Central Welfare Fund. The order of the Joint Registrar dated 02.09.2024 striking off the written statement was upheld.

Law Settled in this Case: A written statement in a commercial suit that is not accompanied by an affidavit of admission/denial under Chapter VII Rule 3 of the Original Side Rules, 2018 is a defective and non-est filing.Such a defect must be cured within 30 days of notification, failing which the court is entitled to strike off the pleading.Mediation proceedings do not automatically justify non-compliance with statutory procedural requirements unless appropriate applications for extension are filed.Courts are to adopt a strict view on procedural timelines in commercial litigation, in line with the Commercial Courts Act, 2015, which aims for expeditious resolution.Failure to cure defects despite notices by the Registry bars the party from seeking further indulgence and re-entry of pleadings.

Case Title: National Fire Protection Association, Inc. Vs. Swets Information Services Pvt. Ltd. & Ors.:Date of Order: May 15, 2025:Case No.: CS(COMM) 987/2018:Neutral Citation: 2025:DHC:3771:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents

Law Settled in the Case

1. Section 3(d) and Section 2(1)(ja) of the Patents Act are not mutually exclusive: 

A patent application may be novel and still fail the test under Section 3(d) if the claimed compound is a derivative of a known substance without demonstrating enhanced therapeutic efficacy. Even if an invention meets the requirements under Section 2(1)(j) or 2(1)(ja), it can still be rejected under Section 3(d).

2. Enhanced efficacy under Section 3(d) must be “therapeutic efficacy”: 

Relying on Novartis AG v. Union of India, (2013) 6 SCC 1, the Court reiterated that the test of efficacy in pharmaceutical inventions relates strictly to therapeutic efficacy. Physico-chemical improvements like solubility, stability, or reaction yield are not sufficient unless directly linked to enhanced therapeutic effect.

3. Routine experimentation by a person skilled in the art (PSITA) negates inventive step: 

If a claimed invention involves modifications (e.g., substituting ethoxy with methoxy) that are within the realm of routine choices or predictable variations, such invention lacks an inventive step under Section 2(1)(ja).

4. Burden of proof on the applicant to demonstrate inventive step and therapeutic efficacy: 

It is the responsibility of the applicant to provide adequate and specific data supporting therapeutic superiority or inventive technical advancement over the prior art. Unsupported claims or reliance on non-therapeutic advantages are insufficient.

5. “Teaches away” argument requires strong proof: 

The Court clarified that merely because a prior art does not directly teach the invention does not imply it "teaches away" from it. The absence of contrary suggestion is not proof that the prior art discourages the claimed invention.

6. Disclosure in prior art includes generic suggestions: 

Where prior art generically suggests both methoxy and ethoxy substitutions, and the invention merely selects one, it may not suffice to demonstrate inventiveness if no unexpected results or efficacy improvements are shown.

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents:May 27, 2025:C.A. (COMM.IPD-PAT) 452/2022:2025:DHC:4431: High Court of Delhi :Hon’ble Mr. Justice Saurabh Banerjee

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks:May 27, 2025:W.P.(C)-IPD 40/2024:2025:DHC:4432:High Court of Delhi :Hon'ble Mr. Justice Saurabh Banerjee

Law Settled in the Case:

1. Mandatory Issuance of Form O-3 Notice: The Court reaffirmed that under Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of the Trade Marks Rules, 2002, it is mandatory for the Registrar to issue a Form O-3 notice to the registered proprietor of a trademark before its removal from the Register. This notice must be sent at least one month and not more than three months prior to the expiry of the registration.

2. Non-compliance Makes Removal Illegal: If the Form O-3 notice is not issued in accordance with the statutory mandate, any removal of a trademark from the Register is illegal, unsustainable and without jurisdiction, regardless of whether the renewal application was filed.

3. Judicial Precedent Applied: The Court relied on previous judgments including:

Union of India v. Malhotra Book Depot (2013 SCC OnLine Del 828),

Cipla Ltd. v. Registrar of Trade Marks (2013 SCC OnLine Bom 1270),

Promoshirt SM. (P) Ltd. v. Registrar of Trade Marks (2024 SCC OnLine Del 7722),

Ashok Bhutani v. The Registrar of Trade Marks (W.P.(C)-IPD 22/2024), affirming that the issuance of the notice is a condition precedent for valid removal.

4. Restoration and Renewal Directed: Since Form O-3 notice was not issued in this case, the Court ordered the restoration of the trademark MILTON (Application No. 627446, Class 9) and directed the Registrar to process the renewal applications for the periods 2004–2014, 2014–2024, and 2024–2034 upon completion of formalities by the petitioner.

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

Case Title: MS Oxygun Health Pvt Ltd Vs Pneumo Care Health Pvt Ltd Case No.: RFA (Comm) 271/2025 Date of Order: 13 May 2025 :2025:DHC:3897-DB: Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

Facts:

Pneumo Care, a reputed manufacturer of medical and surgical products, registered trademarks "HOSPIGRIP" and "HOSPICUFF" and a registered design for ankle and wrist restrainers. Oxygun Health Pvt Ltd, along with its directors and former employees, allegedly copied these trademarks and designs to pass off its products as Pneumo Care’s, aiming to divert trade and profiteer from Pneumo Care's goodwill.

Procedural History:

Pneumo Care filed a civil suit in the Commercial Court at Delhi for infringement of trademarks, design, passing off, damages, and injunctions. The Commercial Court, after examining the evidence and comparison of marks and products, decreed the suit in favor of Pneumo Care, issuing a permanent injunction restraining Oxygun from infringing the trademarks and designs. Oxygun appealed against this judgment to the Delhi High Court.

Issues:

Whether Oxygun’s use of identical or deceptively similar trademarks "HOSPIGRIP" and "HOSPICUFF" constituted infringement and passing off?Whether the registered design was infringed by Oxygun's products?The legal validity of issuing a decree under Order VIII Rule 10 CPC in the absence of a written statement from the defendant.

Decision:

The High Court upheld the Commercial Court’s ruling, confirming that Oxygun’s use of the marks and designs was likely to cause confusion and deceive consumers, amounting to infringement and passing off. It granted a permanent injunction restraining Oxygun and related parties from manufacturing, selling, or dealing with products bearing the contested marks or designs.

KRB Enterprises Vs. KRBL Ltd

KRB Enterprises Vs. KRBL Ltd.:26th May, 2025:

FAO (COMM) 69/2024:2025:DHC:4364-DB:High Court of Delhi:Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

Law Settled in the Case:

1. Use of a Corporate Name as a Trademark: 

A corporate name can qualify as a trademark under the Trade Marks Act, 1999 if it is used in such a way as to indicate a connection in the course of trade between the goods or services and the company. The term “mark” under Section 2(1)(m) and “trademark” under Section 2(1)(zb) includes a name that serves as a source identifier.

2. Trademark Use Not Limited to Physical Goods: 

The “use” of a mark in relation to goods under Section 2(2)(c) of the Act includes not just physical affixation but any relation whatsoever to the goods — including advertising, marketing, distribution, etc.

3. Trademark Infringement Not Confined to Registered Class: 

Protection of a registered mark under one class (e.g., Class 35 for services like advertising, distribution, and retail of rice) can extend to other allied and cognate classes (like Class 30 for rice) if the infringing goods or services are similar and likely to cause confusion. Thus, infringement under Section 29 can be attracted even when marks are registered in different classes.

4. Principle Against Dissecting a Mark: 

While assessing deceptive similarity, the mark should be viewed as a whole; however, the dominant part of the mark can be considered. The court held that “KRB” was deceptively similar to “KRBL” considering the dominance of the letters and the nature of goods and services.

5. Scope of Appellate Interference in Interim Orders: 

Following the principle laid down in Wander Ltd. v. Antox India P. Ltd. and reiterated in Ramakant Ambalal Choksi v. Harish Ambalal Choksi, appellate courts will not interfere with discretionary interim orders unless they are shown to be perverse, arbitrary, or contrary to settled principles.

6. No Acquiescence Without Knowledge and Delay with Inaction: 

Mere delay or past transactions without demonstrable knowledge of trademark misuse by the right holders does not amount to acquiescence. A positive act of knowingly allowing infringement is required.

7. Withdrawal of a Trademark Application Does Not Equal Abandonment: 

If the proprietor withdraws a trademark registration based on mistaken legal advice and promptly reapplies for it, this does not amount to abandonment or loss of rights in the trademark.

Darrameks Hotels and Developers Pvt. Ltd. Vs. Brilltech Engineers Pvt.Ltd

Law Settled in the Case:

The judgment clarifies and settles important procedural law concerning the filing of additional documents in commercial suits under Order XI Rule 1(5) of the Civil Procedure Code (CPC), as amended for commercial disputes.

The High Court of Delhi held that:

1. Standard for Late Filing of Documents:

Under Order XI Rule 1(5) CPC, while the rule is strict, it allows for late filing of documents if the plaintiff can show a reasonable cause for non-disclosure at the time of filing the plaint. The term “reasonable cause” is broader and less stringent than “sufficient cause” or “good cause,” making the provision somewhat less rigid in application.

2. Nature and Relevance of Documents:

Documents which are of "impeccable and unquestionable nature," such as email communications already referred to in the pleadings, can be permitted to be filed even at a belated stage, especially when they assist in adjudicating the controversy fairly and cause no prejudice to the other party.

3. Discretion of Trial Court:

The discretion exercised by the trial court to allow additional documents, particularly before the framing of issues and at an early stage of the suit, does not warrant interference under Article 227 of the Constitution unless there is manifest perversity or jurisdictional error.

4. Supervisory Jurisdiction under Article 227:

The High Court reaffirmed that supervisory jurisdiction under Article 227 is limited and should be used sparingly, especially in the context of commercial litigation where the legislative intent is geared towards expeditious disposal.

5. Replication and Procedural Fairness:

The Court emphasized procedural fairness by allowing both parties reciprocal rights—permitting the plaintiff to file a replication and the defendant to file any trailing emails—thus maintaining parity and avoiding prejudice.

Darrameks Hotels and Developers Pvt. Ltd. Vs. Brilltech Engineers Pvt.Ltd.:26 May 2025:CM(M) 2333/2024:2025:DHC:4404:High Court of Delhi:Hon’ble Mr. Justice Manoj Jain

Promoshirt SM SA Vs. Armasuisse

Law Settled in the Case:

The case of Promoshirt SM SA Vs. Armasuisse and Anr. addressed a critical issue regarding the maintainability of Letters Patent Appeals (LPAs) under the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908 (CPC). 

The court established several key legal principles:First, the court clarified that Section 100-A of the CPC, which bars further appeals from judgments of a Single Judge exercising appellate jurisdiction, applies only to decrees or orders as defined under the CPC, specifically those emanating from a civil court. The court emphasized that the terms "decree" and "order" in Section 100-A, as per Sections 2(2) and 2(14) of the CPC, refer to formal adjudications by a civil court, not decisions by tribunals or authorities like the Registrar of Trade Marks, which do not qualify as civil courts. Consequently, Section 100-A does not bar LPAs against decisions of a Single Judge hearing appeals under Section 91 of the 1999 TM Act, as the Registrar’s decisions are not decrees or orders of a civil court.Second, the court held that the Registrar of Trade Marks does not satisfy the "trappings of a court" test, as enunciated in cases like Nahar Industrial Enterprises Ltd. v. Hong Kong & Shanghai Banking Corpn. and Paramjeet Singh Patheja v. ICDS Ltd. The Registrar lacks the attributes of a civil court, such as the ability to conduct a full-fledged trial under the CPC or the Evidence Act, and its decisions do not constitute decrees or orders as defined by the CPC. Thus, an appeal from the Registrar’s decision to a Single Judge under Section 91 of the 1999 TM Act does not attract the bar of Section 100-A.Third, the court distinguished the 1999 TM Act from its predecessors, the Trade Marks Act, 1940, and the Trade and Merchandise Marks Act, 1958, which had provisions (Sections 76(3) and 109(8), respectively) applying CPC rules to appeals. The absence of such a provision in the 1999 TM Act indicates that appeals under Section 91 are not governed by CPC appeal provisions, preserving the right to an LPA under the Letters Patent unless expressly barred by the statute.Fourth, the court reconciled conflicting precedents, such as Avtar Narain Behal and Mahli Devi, by holding that Section 100-A applies to appeals under special statutes only when the statute explicitly subjects the appeal to CPC provisions, as in Section 299 of the Indian Succession Act, 1925. Where the special statute, like the 1999 TM Act, is silent on further appeals and does not adopt CPC rules, an LPA remains maintainable under the Letters Patent, as supported by National Sewing Thread Co. Ltd. v. James Chadwick & Bros.Finally, the court underscored that the non-obstante clause in Section 100-A overrides Letters Patent provisions only for appeals involving civil court decrees or orders or where the special statute incorporates CPC appeal provisions. In the absence of such conditions, the Letters Patent remedy remains intact, ensuring an additional layer of judicial scrutiny for trademark disputes.Case DetailsCase Title: Promoshirt SM SA v. Armasuisse and Anr.Date of Order: September 6, 2023Case Number: LPA 136/2023 & LPA 137/2023Neutral Citation: 2023:DHC:6352-DBName of Court: High Court of Delhi at New DelhiName of Judges: Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

Vinod Infra Developers Ltd. Vs. Mahaveer Lunia

Vinod Infra Developers Ltd. Vs. Mahaveer Lunia:23 May 2025:Civil Appeal No. 7109 of 2025: 2025 INSC 772S:upreme Court of IndiaH:on'ble Mr. Justice J.B. Pardiwala and Hon'ble Mr. Justice R. Mahadevan

Law Settled:

1. Rejection of Plaint under Order VII Rule 11 CPC:
   A plaint can only be rejected at the threshold if it does not disclose a cause of action, is barred by any law, or is deficient in valuation or court fee. The examination must be confined to the plaint itself. Where even one cause of action survives, the plaint cannot be rejected in its entirety. [Central Bank of India v. Prabha Jain, 2025 INSC 95]

2. Unregistered Agreement to Sell & Power of Attorney:
   Unregistered agreements to sell and powers of attorney cannot confer title or interest in immovable property. Such documents are inadmissible for the purpose of transferring property rights under Sections 17, 23, and 49 of the Registration Act, 1908 and Section 54 of the Transfer of Property Act, 1882. [S. Kaladevi v. V.R. Somasundaram, (2010) 5 SCC 401; Suraj Lamp & Industries (P) Ltd. v. State of Haryana, (2012) 1 SCC 656]

3. Revocation of Power of Attorney:
   If a power of attorney is revoked before execution of sale deeds, any subsequent transaction made under that power is void ab initio.

4. Triable Issues & Civil Court Jurisdiction:
   Questions relating to title, validity of sale deeds, and redemption of mortgages are triable issues and must be adjudicated by civil courts, not revenue authorities. Mutation entries do not confer title. [Suraj Bhan v. Financial Commissioner, (2007) 6 SCC 186]

5. Insufficient Court Fee:
   A plaint cannot be rejected solely for deficient court fee without giving the plaintiff an opportunity to rectify the defect. [Tajender Singh Ghambhir v. Gurpreet Singh, (2014) 10 SCC 702]