Procter & Gamble Hygiene and Health Care Ltd. Vs. State of Himachal Pradesh

Introduction: This case revolves around the legal challenge posed by Procter & Gamble Hygiene and Health Care Ltd. (hereafter "P&G") against an order passed by the Judicial Magistrate directing the registration of an FIR based on a complaint alleging intellectual property infringement and misappropriation of patented technology. The core issue concerns the interplay between patent rights, the jurisdiction of the magistrate under criminal law, and the scope of judicial review in FIR registration. 

Factual Background: Procter & Gamble developed and patented a specialized textile dyeing process involving neem and holy basil extracts, which was tested and recognized for its anti-viral, anti-microbial, and other beneficial properties. The informant, a techno-innovator entrepreneur, claimed to have conceived this innovative process and secured a patent in India for it. He alleged that P&G, a multinational corporate with its headquarters in Cincinnati, Ohio, USA, clandestinely used and commercialized his patented technology to manufacture herbal-infused sanitary napkins—specifically a product named "Whisper Ultra Clean"—without proper authorization. The informant contended that P&G stole his patented idea, which had been shared with them under a partnership proposal that was later rejected. He filed a criminal complaint under Sections 120B, 415, 420, and 405 of the Indian Penal Code (IPC), emphasizing that P&G’s actions constituted criminal breach of trust and cheating.

Procedural Background: The informant approached the court under Section 156(3) of the Criminal Procedure Code (CrPC), seeking a direction to the police to register a formal FIR against P&G. The trial court, after examining the complaint, issued a detailed order on 30 December 2023, holding that the allegations in the complaint prima facie fulfilled the criteria of criminal offences and directing the Station House Officer (SHO) to register an FIR accordingly. However, the petitioners (P&G) challenged this order by filing a petition to quash the FIR registration in the High Court of Himachal Pradesh. The petition argued that the order was mechanical, lacked proper jurisdiction, and violated principles of fair investigation, as the petitioners’ proprietary process was different and they had not committed any criminal offence.

Legal Issue: The critical legal issues in this case concern whether the magistrate's order to register an FIR, based on the complaint, was justified and whether the court should interfere with such an order at this preliminary stage? Specifically, the questions are: Whether the complaint, which alleged intellectual property theft and criminal breaches, was sufficient to warrant the registration of an FIR under the relevant sections of IPC; and whether under the principles laid down in precedent cases, the High Court could exercise its inherent powers under Section 482 of CrPC to quash the FIR without a detailed investigation?

Discussion on Judgments:  The parties cited various judgments to substantiate their arguments. The informant relied on the Supreme Court’s decision in Mahmood Ali v. State of UP [(2023) SCC OnLine SC 950], supporting the proposition that allegations in a complaint—if prima facie truthful—are sufficient for FIR registration, and the court’s role is limited to a preliminary scrutiny. The defense highlighted the decision in Janata Dal v. H.S. Chowdhary [(1992) SCC 305], which emphasizes that the court should not interfere at an early stage unless the allegations are manifestly false or frivolous. They also referred to the principles laid in State of Haryana v. Bhajan Lal [(1992) Supp (1) SCC 335], which elaborates categories of cases where FIRs could be quashed, mainly when allegations are baseless or non-cognizable. Furthermore, the court considered the judgment in Raghubir Saran (Dr.) v. State of Bihar [(1964) SCR 336], which underscores the importance of respecting the investigative process unless there's a clear abuse of process.In the case at hand, the Supreme Court’s decision in B.N. John v. State of U.P. [(2025) SCC OnLine SC 7] was also relevant, as it clarifies that courts should avoid premature quashing of FIRs unless the allegations are clearly unfounded.

Reasoning and Analysis of the Judge: The Hon’ble Judge reasoned that the legal principles clearly state that the registration of an FIR is primarily a matter for the police and should not be disturbed lightly by the courts at an initial stage. The court acknowledged the allegations relating to intellectual property theft and the misconception that criminal breach of trust could be established merely on the basis of patent infringement. However, the judge emphasized that such allegations are inherently factual in nature and require detailed investigation rather than judicial invalidation at the stage of FIR registration. The court analyzed the various judgments cited and noted that the Supreme Court has consistently maintained that the power to quash criminal proceedings should be exercised with caution, and only in cases where the facts are absolutely clear that no offence has been committed. The judge observed that the complaint did prima facie suggest a cognizable offence and that the order of the magistrate, directing the police to register the FIR, was within the bounds of legal propriety. The court further noted that the allegations involved complex questions of patent law and commercial disputes, which are better suited for investigation rather than preemptive judicial intervention.

Final Decision: The court dismissed the petition filed by P&G, upholding the order of the magistrate directing the police to register the FIR. It held that at this juncture, the court should not interfere with the police’s discretion in registering the FIR, especially given the prima facie nature of the allegations. The court emphasized the importance of thorough investigation and clarified that the petitioners would be entitled to raise their defenses during the trial, rather than at the FIR stage. The order of registration of the FIR was thus confirmed, allowing the investigation to proceed without prejudgment.

Law Settled in This Case: This case reaffirmed the principle that FIR registration is a sensitive area, and courts should not quash FIRs at an initial stage if there is any prima facie basis for allegations, especially in matters involving complex issues such as intellectual property rights. The decision reinforced the guideline that courts should exercise their inherent jurisdiction under Section 482 CrPC sparingly and only when allegations are utterly baseless or frivolous. It also underscored that the scope of judicial review in FIR matters is limited and that the primary responsibility for determining the veracity of allegations resides with the police and criminal trial process.

Case Title: Procter & Gamble Hygiene and Health Care Ltd. & Anr. Vs. State of Himachal Pradesh & Others Date of Order: 28 May 2025 Case Number: Cr. MMO No. 266 of 2024 Neutral Citation: 2025:HHC:16349 Name of Court: High Court of Himachal Pradesh, Shimla Name of Judge: Hon’ble Mr. Justice Rakesh Kainthla

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

Ankur Warikoo Vs. John Doe

Ankur Warikoo Vs. John Doe:May 26, 2025:CS(COMM) 514/2025:ourt: Delhi High Court:Hon'ble Mr. Justice Amit Bansal 

Brief Facts: The plaintiffs, including celebrity entrepreneur and author Ankur Warikoo, allege that unknown defendants and social media platforms circulated deep fake and fabricated content falsely depicting the plaintiffs, especially Warikoo, promoting fake investment schemes and misusing his persona and trademarks. The content is malicious, unauthorized, and harms the plaintiffs' reputation and business.

Decision/Order: The Court granted interim relief, including directions to restrain defendants from illegal exploitation of the plaintiffs’ persona, images, and trademarks, and issued notices to the defendants. The Court also permitted some procedural exemptions for the plaintiffs and scheduled further proceedings. The court emphasized the need to prevent further circulation of the deep fake content and protected the plaintiffs' rights against misuse and infringement.

Law Settled: The Court reaffirmed protections under intellectual property rights, personality rights, and the importance of restraining the circulation of deep fake and defamatory content through interim measures under Indian civil procedure and relevant laws governing trademarks, personality rights, and online misconduct.

Dhanbad Fuels Private Limited Vs. Union of India

Introduction: The case of  Dhanbad Fuels Private Limited Vs. Union of India & Anr., decided by the Hon’ble Supreme Court of India, raised critical questions surrounding the applicability and enforcement of Section 12A of the Commercial Courts Act, 2015, which mandates pre-institution mediation in commercial disputes where no urgent interim relief is sought. The matter drew significant attention as it juxtaposed statutory mandates with practical impediments concerning legal infrastructure and judicial discretion. The ruling serves as an authoritative interpretation of procedural law and sets a precedent on the prospective application of mandatory mediation requirements.

Detailed Factual Background: The Union of India filed Money Suit No. 28 of 2019 on 09.08.2019 before the Commercial Court, Alipore, against M/s Dhanbad Fuels Private Limited seeking recovery of Rs. 8,73,36,976 towards differential freight and penalty. Notably, the suit did not seek any urgent interim relief. The cause of action arose from allegations that the appellant had wrongfully claimed concessional freight rates under specific rate circulars.

Upon the institution of the suit, the appellant, as defendant, submitted its written statement on 20.12.2019. Subsequently, the appellant contended that the suit was instituted in violation of Section 12A of the Commercial Courts Act, 2015 and the Pre-Institution Mediation and Settlement Rules, 2018. It was argued that the mandatory requirement of attempting pre-litigation mediation had been bypassed, thus rendering the suit institutionally defective.

Detailed Procedural Background:On 30.09.2020, the appellant filed an application under Order VII Rule 11(d) of the Civil Procedure Code, 1908, read with Section 12A of the 2015 Act, seeking rejection of the plaint. The application was dismissed by the Commercial Court on 21.12.2020, holding that although Section 12A was mandatory, its enforcement in the given facts would delay justice and the suit was already in its early stages. The Commercial Court observed that due to the absence of an effective infrastructure for commercial mediation and lack of a notified standard operating procedure at the time of suit filing, strict enforcement of Section 12A would be inequitable. However, the court ordered the parties to proceed with post-institution mediation and appointed a mediator.

The appellant challenged this order before the Calcutta High Court. The High Court upheld the Commercial Court’s decision with slight modifications, including directing the parties to approach the District Legal Services Authority (DLSA) as per the SOP notified on 11.12.2020. The High Court directed that the suit be kept in abeyance for a period of seven months or until the receipt of the mediation report.

Aggrieved, the appellant preferred a civil appeal before the Hon’ble Supreme Court of India, challenging the legality of the High Court’s order, reiterating that the non-compliance with Section 12A of the Act should have resulted in outright rejection of the plaint.

Issues Involved in the Case: The principal issues that arose in this case were whether the suit filed by the Union of India was liable to be rejected under Order VII Rule 11(d) of the CPC for non-compliance with Section 12A of the Commercial Courts Act, 2015, and whether the prospective declaration of the mandatory nature of Section 12A in Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. [(2022) 10 SCC 1] applied to suits instituted prior to 20.08.2022.

Detailed Submissions of Parties: The appellant contended that the decision in Patil Automation conclusively declared Section 12A mandatory and that any suit instituted without prior mediation, where no urgent interim relief is sought, must be rejected under Order VII Rule 11(d) CPC. He argued that the legislative intent was clear and emphasized that the stage of litigation or infrastructural constraints could not override the statutory mandate. He further contended that even under the doctrine of prospective overruling, the declaration of law relates back to the date of the enactment. Hence, the suit being in a nascent stage should not be distinguished from a newly filed one and must be dismissed.

The Union of India contended that no error had been committed by the lower courts. She acknowledged the mandatory nature of Section 12A but emphasized that the doctrine of impossibility applied due to the absence of a mediation framework at the time of suit filing. She submitted that SOPs were notified only on 11.12.2020, long after the suit was instituted. Thus, the Union could not be expected to comply with mediation requirements in an environment devoid of supporting infrastructure. She invoked the equitable maxim lex non cogit ad impossibilia, supported by the Supreme Court decision in Raj Kumar Dey v. Tarapada Dey, (1987) 4 SCC 398.

Detailed Discussion on Judgments Cited by Parties and Their Context:

The pivotal judgment cited was Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd., (2022) 10 SCC 1, wherein the Supreme Court held that Section 12A is mandatory in nature and suits instituted without adhering to it must be rejected under Order VII Rule 11. However, the Court also granted prospective effect to this declaration from 20.08.2022 to safeguard pending matters and avoid unjust consequences. The Court clarified that rejection would not apply to suits instituted prior to the said date unless they met specific exceptions.

The appellant also cited I.C. Golaknath v. State of Punjab, AIR 1967 SC 1643, to argue that the court's declaration of law must be understood as discovering the correct law, hence retroactive in nature. The principle from Spectrum Plus Ltd., In re: (2005) 3 WLR 58 (House of Lords) was invoked to explain forms of prospective overruling and the implications of judicial declarations affecting past transactions.

The respondent relied on Raj Kumar Dey v. Tarapada Dey (1987) 4 SCC 398, to support the maxim lex non cogit ad impossibilia, asserting that law cannot compel performance where performance is not feasible due to infrastructural limitations.

Detailed Reasoning and Analysis of Judge:

The court reiterated that Section 12A is mandatory as per Patil Automation but emphasized that the declaration of mandatory compliance was given prospective effect. The Court emphasized that at the time the Union of India filed the suit in 2019, the required mediation infrastructure, including trained mediators and SOPs, was not in place in West Bengal. Hence, expecting compliance with Section 12A in such circumstances would amount to imposing an impossible requirement, violating equitable principles.

The Court rejected the appellant’s reliance on the retrospective application of judicial declarations, noting that Patil Automation clearly limited its applicability to post-20.08.2022 suits. The court distinguished between declaration of law and operational consequences, thereby reinforcing the importance of judicial discretion in applying procedural norms.

Justice Pardiwala also clarified the scope and intent of Section 12A, observing that it seeks to reduce the burden on courts and promote mediation as an efficient dispute resolution method. However, the Court affirmed that procedural mandates cannot override substantive justice, especially when external circumstances render compliance impracticable.

Final Decision: The Supreme Court dismissed the appeal filed by Dhanbad Fuels Pvt. Ltd. and upheld the High Court’s order to keep the suit in abeyance and proceed with pre-institution mediation through the DLSA. It confirmed that the plaint should not be rejected under Order VII Rule 11(d) as the institution of the suit predated the declaration in Patil Automation and fell outside its purview.

Law Settled in this Case:The Supreme Court reaffirmed that Section 12A of the Commercial Courts Act, 2015 is mandatory. However, it also established that its strict enforcement through rejection of plaints under Order VII Rule 11(d) CPC shall apply only prospectively from 20.08.2022, as held in Patil Automation. Additionally, where infrastructural mechanisms for pre-institution mediation were absent, courts must apply equitable considerations before penalizing litigants for non-compliance. The decision further reinforced that courts possess discretion to avoid procedural rigidity when it contradicts the principles of substantive justice.

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

Date of Order: 15.05.2025

Case No.: Civil Appeal No. 6846 of 2025 

Neutral Citation: 2025 INSC 696

Court: Supreme Court of India

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

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

Andreas Gutzeit Vs. Controller General of Patents

Andreas Gutzeit Vs. Controller General of Patents:High Court at Calcutta: Hon'ble Justice Ravi Krishan Kapur:15 May 2025: IPDPTA/7/2024

 

Facts:

The appellant, Andreas Gutzeit, filed an application for a patent titled "Blood Flow Control System and Method for In-vivo Imaging and Other Application" on January 1, 2016, based on an international application (PCT/CH2014/000151) claiming priority from Switzerland. The invention pertains to controlling blood flow during medical imaging, notably by using a respiratory resistance device to enhance image quality during procedures like CT scans.

Procedural Detail:

The Controller of Patents rejected the patent application on the grounds of non-compliance with Section 59 of the Patents Act, 1970, specifically regarding amendments to the claims that were alleged to broaden the scope of original claims or change the nature of the claims (method to system claim). The appellant challenged this rejection through an appeal before the Calcutta High Court.

Issue:

The core issue was whether the amendments made to the patent application, particularly the change from method claims to system claims, were permissible under Section 59 of the Patents Act, 1970, and whether the Controller’s rejection was justified?

Decision:

The Court held that the amendments, which broadened or altered the scope of the claims, were not permissible under the relevant statutory provisions. The Court set aside the impugned order, remanding the matter back to the Controller for fresh decision in accordance with law, ensuring proper opportunity for hearing. The Court emphasized that amendments should not expand the scope of claims beyond the original disclosure.

Dell International Services India Private Limited Vs Adeel Feroze

Case Title: Dell International Services India Private Limited Vs Adeel Feroze & Ors.  :Date of Order:July 2, 2024  :Case No.:W.P.(C) 4733/2024  :Citation: 2024 SCC OnLine Del 1234  :Name of Court: High Court of Delhi : Name of Judge: Hon'ble Mr. Justice Subramonium Prasad  

Facts:  The case emerged from a Consumer Complaint Case No. 113/2022 filed against Dell International Services by Respondent Adeel Feroze. Following the issuance of a summons by the District Commission, which the Petitioner received on December 23, 2022, Dell contended that the documents received were incomplete. On January 31, 2023, the Petitioner submitted its written statement, which was rejected by the District Commission due to the delay in filing. Notably, WhatsApp conversations were presented by the Petitioner, alleging that the complete set of documents was not received.

Legal Issue:The key legal issue was whether the delay in the submission of the written statement could be condoned, and whether the District Commission's reliance on WhatsApp communications as evidence for the alleged incomplete documentation was appropriate? 

Reasoning:The High Court scrutinized the findings of the District Commission, which concluded that the complete set of documents had indeed been delivered to the Petitioner along with the summons on December 23, 2022. 

The Court found that the claims made through the WhatsApp communications did not suffice as evidence to validate the Petitioner's position. 

Furthermore, it emphasized that a valid rationale for the delay had not been presented, as there was clear documentation contradicting the assertion of incomplete delivery. The Court reaffirmed that it respects the decisions made by lower authorities, intervening only if those decisions reflect arbitrariness or jurisdictional errors.

Decision: The High Court dismissed W.P.(C) 4733/2024, along with any pending applications. The Court upheld the District Commission's conclusions regarding the inability of the Petitioner to substantiate the claim of not receiving a complete document set and found no merit in the argument based on WhatsApp evidence.

Hals Foods Kitchen Vs. Pithiya Jitendrakumar

Case Title: Hals Foods Kitchen Vs. Pithiya Jitendrakumar Case No.: C/AO/104/2024 Date of Order: 25th April 2025) Court: High Court of Gujarat  Judge: Nikhil S. Kariel, J.

Fact:

The dispute arises over the intellectual property rights related to the trademark and artistic work "TAAM JHAAM." The respondent, Pithiya Jitendrakumar (Jahal Enterprise), claims prior creation and use of the artistic work and trademark, alleging infringement by the appellant, Hals Foods Kitchen, which intended to use similar branding. The respondent filed a suit seeking injunction, damages, and account of profits, asserting that they are the original creator and owner of the mark and artwork.

Procedural Detail:

The trial court initially granted an interim injunction in favor of the respondent. The appellant filed an appeal challenging this order. The court considered the application of trademark law and copyright law, examining the likelihood of deception, prior use, and registration applications. The appellate court reviewed whether the trial court reasonably exercised its discretion in granting the injunction, focusing on the prima facie case, balance of convenience, and irreparable injury.

Issue:

The main issue was whether the respondent had established a prima facie case of prior ownership and infringement over the "TAAM JHAAM" mark and artwork, warranting interim relief, and whether the appellate court should interfere with the trial court’s discretionary order?

Decision:

The court upheld the trial court’s decision to grant the interim injunction, concluding that the respondent made out a prima facie case based on evidence of prior use, creation of artwork, and similarity of logos. The court noted that the appellant's claims of prior use and independence of creation were unsubstantiated, and that the balance of convenience and risk of deception favored continued injunction. The appellate court disposed of the appeal, affirming the trial court’s order, and disposed of related civil applications.

References:

• The judgment emphasizes that the appellate court should not reassess the material unless the trial court’s exercise of discretion was unreasonable,.
• The court noted the importance of establishing a prima facie case through evidence of prior use, artistic creation, and likelihood of deception,.

IndiaMART Intermesh Ltd. Vs. PUMA SE

Case Title: IndiaMART Intermesh Ltd. Vs. PUMA SE Date of Order: June 2, 2025 Case Number: FAO(OS)(COMM) 6/2024 Neutral Citation: 2025:DHC:4819-DB Court Name: High Court of Delhi Name of Judge: Hon'ble Mr. Justice Vibhu Bakru and Hon'ble Ms. Justice Tara Vitasta Ganju

Brief Facts: PUMA SE filed a suit claiming that IndiaMART’s platform facilitated the sale of counterfeit PUMA products by allowing sellers to describe their goods using PUMA’s trademarks. PUMA sought injunctions to prevent IndiaMART from using the trademark in the search options and from hosting infringing listings.

Discussion by Judge: The court observed that IndiaMART’s use of the PUMA trademark in its drop-down menu was the primary issue. It found that IndiaMART’s actions, under the business model, amounted to infringement under the Trade Marks Act. The court noted the platform’s role in facilitating the sale of counterfeit goods and restrictions under relevant laws, including the IT Act, regarding safe harbor protections. The court balanced the need to protect trademark rights against IndiaMART’s functions as an intermediary, ultimately deciding that IndiaMART must remove infringing listings and not use the trademark as a search term, but it could continue to offer branded options with reasonable efforts.

Decision: The court restrained IndiaMART from offering the PUMA trademark in its search options and directed it to remove infringing listings. However, the court set aside the order prohibiting IndiaMART from offering PUMA as a dropdown option, considering the balance of interests.

Trodat GMBH Vs Addprint India Enterprises

Case Title: Trodat GMBH Vs Addprint India Enterprises. Date of Order: May 20, 2025 Case Number: FAO(OS) (COMM) 93/2025 Neutral Citation: 2025:DHC:4270-DB, High Court of Delhi Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Ajay Digpaul

Brief Facts: The appellant (TRODAT GmbH) filed a suit challenging the respondent’s new self-inking stamp design, claiming infringement of their registered designs for similar stamps.

Decision: The court dismissed the appeal, confirming the impugned order which permitted the respondent to use their proposed design, finding no infringement after examining the features from the perspective of an 'informed eye.'

Law Settled: The case clarified that in design infringement disputes, the standard of comparison is that of an 'informed user' or 'instructed eye,' not an average consumer, and that courts should respect the discretionary powers of the trial court unless arbitrariness or perversity is shown.

Impresario Entertainment & Hospitality Pvt. Ltd. Vs. S & D Hospitality

Case Title: Impresario Entertainment & Hospitality Pvt. Ltd. Vs. S & D Hospitality Case Number: CS(COMM) 111/2017 Date of Order: 3rd January 2018 Court: High Court of Delhi Judge: Hon'ble Ms. Justice Mukta Gupta Neutral Citation: 2018:DHC:14

Brief Facts:

The plaintiff, a company operating ‘SOCIAL’ cafes across India, owns registered trademarks and has developed a distinctive branding concept involving prefixing ‘SOCIAL’ with specific locations. The defendant was operating restaurants in Hyderabad using the mark ‘SOCIAL MONKEY’ and ‘STONE WATER’, allegedly infringing upon the plaintiff’s marks and branding. The plaintiff claimed that the defendant’s use caused confusion, passing off, and damage to their reputation.

Legal Issues & Decision:

• The court considered whether territorial jurisdiction exists since part of the cause of action arose in Delhi through online promotion and targeted advertising.
• It held that actionable aggression involves purposeful availment of the forum’s jurisdiction, especially via online activities. Mere online presence isn’t enough unless the defendant purposefully directs activities to the forum.
• The court found that the defendant's online advertisements and targeted promotions in Delhi established a sufficient connection, granting jurisdiction.
• The plaintiff’s claims of passing off, trademark infringement, and dilution were scrutinized, and the court allowed the suit to proceed based on the territorial jurisdiction being established via online activity.

Law Settled:

• The case clarifies the scope of jurisdiction issues in internet-related disputes, emphasizing purposeful availment and targeted activity over passive website access.
• It affirms that online promotion with targeted intent can establish jurisdiction for passing off and infringement actions in India.

KG Marketing India Vs Rashi Santosh Soni

Case Title: KG Marketing India Vs Rashi Santosh Soni & Others Date of Order: August 23, 2024 Case Number: RFA(OS)(COMM) 16/2024 Neutral Citation: 2024:DHC:6385-DB: Name of Court: Delhi High Court Name of Judge: Hon'ble Mr. Justice Vibhu Bakhru and Hon'ble Mr. Sachin Datta

Brief Facts: KG Marketing India alleged that Rashi Santosh Soni produced forged documents to claim prior use of the trademark "SURYA," which was used to seek interim relief. The court found that the documents filed by the appellant were fabricated and supported the respondent's contention that the appellant filed false statements and forged evidence to secure interim injunctions.

Decision: The court dismissed the appeal and imposed a cost of ₹2,00,000 on the appellant for unjustifiable use of judicial time. The court directed the appellant to deposit the amount with the Delhi High Court Legal Services Committee within four weeks. 

Law Settled: The case reaffirmed that filing forged documents and false statements can lead to initiation of proceedings under Section 340 of the CrPC, and such conduct is punishable. The court emphasized the importance of truthful disclosure and upheld the court's authority to impose costs and direct lodging of criminal complaints in cases involving fabrication and forgery.

Dr. Praveen R. Vs. Dr. Arpitha

Case Title: Dr. Praveen R. Vs. Dr. Arpitha Date of Order: 31 August 2021 Case Number: Writ Petition No.19448 of 2015 Court: High Court of Karnataka, Bengaluru Judge: Hon'ble Mr. Justice Krishna S. Dixit

Brief Facts: Dr. Praveen sought to annul his marriage with Dr. Arpitha, who filed for maintenance and litigation costs, which were rejected. The case involves allegations of perjury, false statements, and the conduct of both parties in ongoing matrimonial and related proceedings.

Decision: The Court set aside the impugned order and remitted the matter for fresh consideration, holding that the earlier rejection was premature and lacked proper examination of perjury and related issues. The court emphasized the importance of prompt action against perjury to preserve judicial integrity.

Law Settled:

• Perjury is a serious offense, and courts must act effectively and promptly to prevent and penalize it,,.
• The discretion to initiate proceedings for perjury lies with the Court, but such discretion must be exercised in accordance with rules of reason and justice,.
• Delay in addressing allegations of perjury can pollute the judicial process, and courts should discourage falsehoods in testimonies

Star India Pvt Ltd Vs. IPTV Smarters

Case Title: Star India Pvt Ltd Vs. IPTV Smarters Pro & Others Date of Order: May 29, 2025 Case Number: CS(COMM) 108/2025 Court: Delhi High Court Judges: Hon'ble Mr. Justice Saurabh Banerjee 

 Facts: Star India sought a permanent injunction against IPTV Smarters and others for illegally streaming their content. The court had previously granted interim relief, including blocking infringing websites and mobile applications. The plaintiff requested real-time blocking of new infringing platforms, especially before upcoming major sporting events.

  Decision: The court extended the interim relief to enable real-time blocking of newly discovered rogue websites and apps until July 3, 2025, emphasizing the need for swift action to prevent piracy during live events.

Legal Principle: The court recognized the importance of real-time relief in cases of online infringement and allowed extending blocking measures to include rogue mobile applications and associated domains to protect intellectual property rights effectively during time-sensitive events.

Kamdhenu Ispat Vs Kamdhenu Industries

Kamdhenu Ispat Vs Kamdhenu Industries: 2010 SCC 43 (PTC) 533 Del

The key legal principles settled in this case include:

1. Validity and Recognition of Family Settlements: Courts generally favor family settlements that are bona fide, voluntary, and made to promote harmony among family members. Such arrangements can be inferred from long-standing dealings and conduct of the parties. The law recognizes that family arrangements are intended to preserve peace, avoid future disputes, and can be implied from conduct, even if not documented in writing initially. Relevant law: The principles laid down in Lala Khunni Lal v. Kunwar Gobind Krishna Narain and Kale and Others v. Deputy Director of Consolidation, which affirm that family settlements aim at promoting family harmony and are to be upheld by courts if bona fide and equitable,.

2. Essentials of a Valid Family Settlement: A family settlement must be bona fide, voluntary, and made with a genuine intent to resolve disputes. It should not be induced by fraud, coercion, or undue influence. Whether written or oral (except where registration is required), the settlement must clearly reflect the genuine intentions of the parties to be enforceable. Key reference: The case of Kale (1976), which articulates the essential principles, including bona fide nature, voluntariness, and the absence of coercion or fraud.

3. Family Arrangements are More Lenient than Dealings Between Strangers: The court considers the broader interests of the family in upholding these arrangements, permitting transactions or agreements that might be objectionable in dealings among strangers. Legality does not strictly require formal documentation if the agreement is genuine and intended to benefit the family.

4. Family Settlements and Transfer of Title: A family settlement may recognize or define rights and may result in relinquishing some claims relating to property, and no formal conveyance is necessarily required if the settlement is bona fide and acts to settle disputes. In such cases, the agreement itself is deemed to carry the necessary effect of passing rights. Legal basis: The doctrine as explained in Sahu Madho Das v. Pandit Mukand Ram and upheld in other rulings suggests that a family agreement acknowledging rights is sufficient for its enforcement.

5. Trademark Rights and Use by Family Members: The law recognizes that trademarks that have been used extensively and possess goodwill should be protected from infringement. The fact that a business is family-run does not exempt it from intellectual property laws. The courts uphold rights over trademarks and reject passing off or infringement if the plaintiff can establish prior exclusive use, registration, and reputation. Relevant legal principle: The protection of trademarks and the principle that prior user and reputation are key factors, as established through statutory and case law,.

6. Circumstances Under Which Family Settlements Can Be Questioned: While courts prioritize family settlements, they are subject to scrutiny if made under undue influence, coercion, or fraudulent circumstances. Misrepresentation or suppression of material facts can lead to the setting aside of such agreements. Legal standard: Family settlements are to be upheld if made bona fide, voluntary, and with full disclosure; otherwise, they may be challenged.

Procter & Gamble Hygiene Vs. State of Himachal Pradesh

Case Title: Procter & Gamble Hygiene Vs. State of Himachal Pradesh & Others Date of Order: 28 May 2025 Case Number: Cr. MMO No. 266 of 2024 Neutral Citation: 2025:HHC:16349 Name of Court: High Court of Himachal Pradesh, Shimla Name of Judge: Hon’ble Mr. Justice Rakesh Kainthla

Brief Facts:

Procter & Gamble (P&G) challenged an order directing the registration of an FIR against them, alleging use of patented textile dyeing technology involving neem and holy basil without authorization. The informant claimed to have developed this patent technology and accused P&G of stealing and using it for commercial benefit, specifically in their sanitary products. P&G argued that their process is proprietary and different from the patented technology, and there was no intent to deceive.

Decision:

The court acknowledged the allegations and the trial court’s order directing registration of the FIR but also noted the need for a proper investigation. The court emphasized that mere allegations are not sufficient to quash an FIR and that investigation is necessary to establish the facts. The petition was pending further proceedings, and the order for FIR registration was not quashed.

Law Settled:

The court reaffirmed that the magistrate's order to register an FIR should not be interfered with unless it is clearly unfounded or without basis. The principles laid down in Ch. Bhajan Lal and other precedents establish that the court should not interfere in the initial stages of an FIR unless there are gross irregularities or manifest illegality.

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