K. Mangayarkarasi Vs N. J. Sundaresan

K. Mangayarkarasi Vs N. J. Sundaresan: January 9, 2025: Special Leave Petition (CIVIL) No. 13012 of 2025:2025 INSC 687:Supreme Court of India:Hon'ble Justice J.B. Pardiwala

Facts:

The petitioners, K. Mangayarkarasi and others, are proprietors of the trademark "SRI ANGANNAN BIRIYANI HOTEL." The respondent, N. J. Sundaresan, filed a suit in the Commercial Court at Coimbatore seeking a permanent injunction to restrain the petitioners from using the trademark and claiming damages for unauthorized use. The respondent also filed an application under Section 8 of the Arbitration and Conciliation Act, 1996, seeking to refer the dispute to arbitration, citing an arbitration clause in a Deed of Assignment of Trade Marks.

Procedural History:

The Commercial Court allowed the arbitration reference.The petitioners challenged this order before the Madras High Court.The High Court dismissed the revision petition, upholding the arbitration clause and the lower court's decision.The petitioners then filed a Special Leave Petition (SLP) before the Supreme Court.

Issues:

Whether disputes relating to the trademark can be referred to arbitration under the contract.Whether the matter falls within the jurisdiction of the courts or arbitration.The scope of the referral court’s powers under Section 11 and Section 8 of the Arbitration Act.

Decision:

The Supreme Court upheld the arbitration clause in the Deed of Assignment and confirmed that disputes concerning rights and obligations related to the trademark are arbitrable. Thus, it dismissed the SLP, affirming the high court's order to refer the dispute to arbitration.

Om Prakash Gupta Vs. Parveen Kumar

Introduction: In the intricate world of intellectual property law, the case of Om Prakash Gupta v. Parveen Kumar and Anr., decided by the High Court of Delhi on May 19, 2000, emerges as a compelling narrative of trademark rights, misrepresentation, and the consequences of abandonment. This dispute revolves around the trademark "SURAJ CHHAP," a label tied to the tobacco trade, and pits Om Prakash Gupta, claiming registered proprietorship, against Parveen Kumar and another, who challenge the plaintiff’s assertions with a tale of prior use and alleged deceit. The High Court’s ruling not only vacates an interim injunction but dismisses the suit entirely, spotlighting the sanctity of judicial processes and the fragility of trademark rights in the face of non-use and fraud.

Detailed Factual Background: Om Prakash Gupta, the plaintiff, asserts ownership of the trademark "SURAJ CHHAP," registered under number 287631 on April 24, 1973, in Class 34 for scented chewing tobacco. Initially, Gupta operated as part of a partnership firm, M/s. Prakash Sugandh Bhandar, alongside Sumer Chand and Promod Kumar, starting in 1973. Over time, one partner retired, another passed away, and Gupta became the sole proprietor. He claims extensive use of "SURAJ CHHAP" across states like Delhi, Rajasthan, Uttar Pradesh, Gujarat, and Madhya Pradesh since 1973, building a robust reputation. Gupta also asserts copyright in the artistic design of his product labels and pouches, characterized by a distinctive trade dress and color scheme, and invokes common law rights against passing off due to long-term use. However, he admits to a period of non-use—without specifying its duration—before resuming business in 1999.

The defendants, Parveen Kumar and another, counter that they have been in the tobacco trade since 1956, initially using trademarks "PATANGA" and "HARIBIHARI." They claim to have adopted "SURAJ CHHAP" for unmanufactured raw tobacco in 1993 (later contested as 1995 due to excise licensing), with significant sales figures: ₹10,62,257.50 in 1993-94 escalating to ₹17,66,250 in 1998-99. They assert a copyright registration for "SUN BRAND" Hukka Tobacco since May 10, 1976, and argue that their pouches differ from Gupta’s. The defendants allege that Gupta’s tobacco business faltered by 1979, leading to abandonment of "SURAJ CHHAP," and that his 1999 resumption was a belated attempt to capitalize on their established market presence. They further contend that Gupta’s trademark registration carries a disclaimer excluding exclusive rights to "SURAJ" and the "Sun" device, a fact he allegedly concealed.

Detailed Procedural Background: Gupta filed Suit No. 1744/99 in the High Court of Delhi, seeking a permanent injunction against the defendants for trademark infringement, copyright infringement, and passing off, alongside ancillary reliefs. Concurrently, he moved I.A. No. 7665/99 under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for a temporary injunction. On August 12, 1999, the court granted an ex parte interim injunction, restraining the defendants from using "SURAJ CHHAP" or similar labels, based on Gupta’s claims of registered trademark rights, as recorded on August 10 and 12, 1999.

The defendants responded with I.A. No. 8739/99 under Order 39 Rule 4, CPC, seeking to vacate the injunction, alleging misrepresentation and prior use. They did not file a written statement but presented detailed facts in their application. Both parties submitted extensive documentation and written arguments, supplemented by lengthy oral submissions. Justice J.B. Goel adjudicated the applications together, delivering a comprehensive judgment on May 19, 2000, which not only addressed the injunction but also disposed of the suit itself.

Issues Involved in the Case: The case hinges on several key issues: whether Gupta’s suit for trademark infringement is maintainable given the disclaimer on "SURAJ" and the "Sun" device; whether his concealment of this disclaimer constitutes fraud sufficient to warrant dismissal; whether prolonged non-use of "SURAJ CHHAP" amounts to abandonment, extinguishing his rights; whether the defendants’ prior use since 1993 (or 1995) establishes superior rights; and whether Gupta’s passing off claim survives despite the disclaimer and non-use?

Detailed Submission of Parties: Gupta’s counsel argued that he is the registered proprietor of "SURAJ CHHAP" under registration No. 287631, renewed and valid as of 1994, entitling him to sue for infringement under Section 28 of the Trade and Merchandise Marks Act, 1958. He emphasized extensive use since 1973, claiming goodwill and reputation, and asserted copyright in his pouch designs. On non-use, he attributed the hiatus to a partner’s death, insisting it did not erode his rights, and cited precedents to argue that registration persists despite temporary disuse. For passing off, he contended that the disclaimer under Section 17’s proviso preserves common law remedies, unaffected by registration limitations.

The defendants’ counsel challenged Gupta’s claims, asserting that the registration certificate (No. 287631) includes a disclaimer excluding "SURAJ" and the "Sun" device, rendering his infringement claim baseless. They accused Gupta of suppressing this fact, obtaining the injunction fraudulently, and argued that such misrepresentation justifies dismissal. They claimed prior use of "SURAJ CHHAP" since 1993, supported by sales data, and argued that Gupta abandoned the mark by 1979, losing all rights after 20 years of non-use. They denied similarity in pouch designs and asserted their established market reputation, urging the court to vacate the injunction and dismiss the suit.

Detailed Discussion on Judgments Cited by Parties and Their Context:The parties and court relied on several precedents, each illuminating distinct facets of the dispute:

• Chandra Shashi v. Anil Kumar Verma, (1995) 1 SCC 421: Cited by the defendants and court, this Supreme Court case involved contempt proceedings against a respondent who fabricated a document in a matrimonial dispute. The court emphasized the need to punish fraud to preserve judicial integrity, sentencing the respondent to imprisonment. Justice Goel applied this to Gupta’s concealment, underscoring its severity as a fraud on the court.
• Indian Bank v. Satyam Fibres (India) Pvt. Ltd., (1996) 5 SCC 550: The defendants referenced this Supreme Court ruling, where a forged letter led to the recall of a National Consumer Disputes Redressal Commission judgment. The court affirmed inherent powers under Section 151, CPC, to set aside orders obtained by fraud. Justice Goel used this to justify vacating the injunction and dismissing the suit.
• S.P. Chengalvaraya Naidu (Dead) by LRs v. Jagannath (Dead) by LRs, (1994) 1 SCC 1: Another Supreme Court case cited by the defendants, it declared judgments obtained by fraud as nullities, stressing clean hands in litigation. The court linked non-disclosure of material documents to fraud, a principle Justice Goel applied to Gupta’s omission of the disclaimer certificate.
• Registrar of Trade Marks v. Ashok Chandra Rakhit, AIR 1955 SC 558: Both parties cited this Supreme Court decision, which explained disclaimers under the Trade Marks Act, 1940 (predecessor to Section 17 of the 1958 Act). It clarified that disclaimed elements lack statutory protection but retain common law rights. Gupta used it to support his passing off claim, while the court interpreted it to limit his infringement claim.
• Wander Ltd. v. Antox India P. Ltd., 1990 (Supp) SCC 727: The court referenced this Supreme Court case to distinguish infringement (statutory) from passing off (common law) remedies, noting Gupta’s infringement claim failed due to the disclaimer, though passing off remained theoretically viable.
• Polson Ltd. v. Polson Dairy Ltd., 1996 (16) PTC 709 (Delhi): Gupta relied on this Delhi High Court ruling, where non-use due to government policy did not constitute abandonment. The court distinguished it, finding Gupta’s non-use lacked such justification.
• Avis International Ltd. v. Avi Footwear Industries, AIR 1991 Del 22: Cited by Gupta, this Delhi High Court case placed the burden on defendants to prove non-use leading to abandonment, which they disputed. Justice Goel found sufficient evidence of Gupta’s non-use.
• Garden Perfume (P) Ltd. v. Anand Soaps and Detergents, : Gupta referenced this case to argue non-abandonment, but the court found it factually inapplicable due to Gupta’s unexplained hiatus.
• Godfrey Philips India Ltd. v. Girnar Food & Beverages Pvt. Ltd., : Cited by the court, this case likely elaborated on trademark use and recognition, supporting the defendants’ prior use claim.
• Ruston and Hornby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649: Implicitly referenced via Polson, this Supreme Court case upheld registered trademark rights, but Justice Goel noted its irrelevance given the disclaimer.

Detailed Reasoning and Analysis of Judge: Justice J.B. Goel’s analysis is a dual-pronged examination of fraud and trademark rights. He first tackled Gupta’s misrepresentation, noting that the plaint and court submissions claimed "SURAJ CHHAP" as a registered trademark under No. 287631, yet the certificate—produced by both parties—revealed a disclaimer excluding "SURAJ" and the "Sun" device. Gupta’s failure to disclose this, coupled with reliance on a non-legal certificate, constituted a material suppression and misrepresentation. Drawing from Chandra Shashi, Indian Bank, and Chengalvaraya Naidu, the judge held that such fraud vitiates judicial proceedings, justifying not only the injunction’s recall but the suit’s dismissal under inherent powers (Section 151, CPC).

On trademark merits, Justice Goel interpreted Section 17, citing Ashok Chandra Rakhit, to confirm that disclaimed elements lack statutory protection under Section 28, restricting Gupta’s registered rights to "Zafrani Patti." The infringement claim thus collapsed. For passing off, the judge assessed non-use, finding Gupta’s business ceased in 1979, with a 20-year gap until 1999. His explanation—death of a partner in 1985—failed to account for prior cessation, and excise license lapses post-1982 reinforced abandonment. Contrasting cases like Polson (justified non-use) and Avis (disputed non-use), Goel inferred an intent to abandon from the prolonged, unexplained hiatus, per Narayana’s treatise on trademark law.The defendants’ use since 1993 (or 1995) predated Gupta’s 1999 resumption, establishing prior rights. Their pouch design, adopted earlier, negated copyright infringement claims. Balancing equities, the judge found no prima facie case, irreparable harm, or convenience favoring Gupta, especially given his deceitful conduct.

Final Decision: On May 19, 2000, the High Court allowed the defendants’ I.A. No. 8739/99, vacating the August 12, 1999, interim injunction, and dismissed Gupta’s I.A. No. 7665/99 and Suit No. 1744/99 with costs of ₹20,000, citing fraud and abandonment.

Law Settled in This Case: The judgment reinforces that concealment of material facts, such as a trademark disclaimer, constitutes fraud on the court, warranting dismissal under inherent powers. It clarifies that disclaimed elements of a registered trademark lack statutory protection under Section 28, limiting infringement claims, though passing off remains viable under Section 17’s proviso. Prolonged, unjustified non-use can infer abandonment, extinguishing common law rights, especially against prior users.

Case Title: Om Prakash Gupta Vs. Parveen Kumar and Anr.:Date of Order: May 19, 2000:Case No.: Suit No. 1744/99: Neutral Citation: 86 (2000) DLT 181:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice J.B. Goel

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

Principal Commissioner of Customs Vs. Loreal SA

Introduction: The case of Principal Commissioner of Customs & Anr. v. L’Oréal S.A. came before the Delhi High Court under Article 227 of the Constitution of India, raising significant questions concerning jurisdictional overreach, the concept of a court becoming functus officio, and the limits of post-decree judicial proceedings. The matter pertained to intellectual property enforcement at the border and a broader conflict between administrative procedure and judicial process in post-decree scenarios.

Factual Background: L’Oréal S.A., a multinational cosmetic brand, filed a commercial suit for permanent injunction against M/s Oneness Enterprises (defendant no.1), as well as customs authorities—namely the Principal Commissioner of Customs (defendant no.2) and Commissioner of Customs (RI&I) (defendant no.3). The core of the suit revolved around the alleged import of counterfeit goods bearing the plaintiff’s registered trademarks “L’OREAL” and “MAYBELLINE” under Bill of Entry No. 9605576 dated 08.05.2017.L’Oréal sought extensive reliefs, including a decree for permanent injunction, confiscation and destruction of the impugned goods, rendition of accounts, disclosure of the entire chain of importation, and a restraint on asset disposal by the importer to secure any potential monetary relief.

Procedural Background:The trial was conducted before the District Judge (Commercial Court)-02, Patiala House Courts, New Delhi. The suit—CS(COMM) 128/2023—culminated in a judgment dated 19.10.2024, whereby a decree was passed in favour of L’Oréal. The decree directed that the suit was decreed with costs against the defendants. On the same date, however, the Trial Court passed a separate order whereby it continued post-decree proceedings and called for comments from customs counsel, issued show cause notices, and directed filing of an Action Taken Report (ATR).

This led to a new case being registered—MISC DJ/3623/2024. The proceedings in this miscellaneous case continued after the decree, with further orders being passed on 24.10.2024, 11.11.2024, and finally on 17.01.2025, the latter being the specific order challenged in the present petition under Article 227.

Issues Involved in the Case:The pivotal issue before the Delhi High Court was whether the Trial Court, after having passed a final judgment and decree, retained jurisdiction to continue post-decree proceedings by opening a new file (MISC DJ/3623/2024), issuing show cause notices, and calling for ATRs, despite no execution proceedings having been filed.The ancillary issue was whether a Court, once having become functus officio, could suo motu assume jurisdiction to monitor or pursue procedural compliance outside the statutory framework.

Submissions of Parties:The petitioners—the customs authorities—were represented by Mr. Aditya Singla, Standing Counsel for the CBIC. He submitted that once the suit had been decreed on 19.10.2024 and the file consigned to the record room, the Trial Court became functus officio and could not have opened a new file or passed subsequent orders. The reliefs sought in the original suit, particularly against customs authorities, had been adjudicated upon, and in the absence of an execution petition, the Trial Court lacked jurisdiction to initiate further proceedings.He emphasized that the initiation of proceedings in MISC DJ/3623/2024 amounted to judicial overreach and a violation of the principle that jurisdiction cannot be assumed by consent, waiver, or acquiescence.To support his contentions, he cited the following judgments:

1. Harshad Chiman Lal Modi v. DLF Universal Ltd., (2005) 7 SCC 791

The Supreme Court held that a Court lacking jurisdiction over the subject matter cannot assume it by consent or acquiescence. Any order passed by such a Court is a nullity and unenforceable.

2. Dr. Jagmittar Sain Bhagat v. Director, Health Services, (2013) 10 SCC 136

It was held that jurisdiction can only be conferred by statute and not assumed by a court suo motu. Even participation by a party does not validate proceedings held without jurisdiction.

Judgment and Authorities Cited – Contextual Discussion

In Harshad Chiman Lal Modi, the Apex Court emphasized the distinction between territorial/pecuniary jurisdiction and subject-matter jurisdiction. The case laid down that even if parties participated without objection, lack of subject-matter jurisdiction renders the judgment null. This principle was directly applicable in the present case, as the Trial Court, after passing the final decree, no longer retained jurisdiction over the matter.

Dr. Jagmittar Sain Bhagat further reinforced the principle that jurisdiction is a matter of legislative conferment, not procedural assumption. The judgment warned against the dangers of allowing judicial or administrative authorities to extend their reach beyond the scope of statutory empowerment.

Both judgments collectively clarified that the Trial Court, having decided the lis in CS(COMM) 128/2023 and having consigned the file to the record room, could not reopen proceedings under a miscellaneous head unless properly invoked through a fresh petition or execution proceeding.

Judicial Reasoning and Analysis: Delhi High Court, hearing the petition under Article 227, meticulously dissected the procedural irregularities. The Court observed that the Trial Court, having passed a decree and declared the suit closed, could not suo motu create and entertain MISC DJ/3623/2024. There existed no statutory provision enabling such an act absent a fresh proceeding.

The High Court reiterated the principle that jurisdiction must emanate from statute, not be fabricated by judicial initiative. Even though the customs authorities had participated in the proceedings before the Trial Court post-decree, that participation could not bestow legality upon inherently void proceedings.

Justice Banerjee strongly criticized the Trial Court’s conduct, labeling its actions as “patent perversity” and an “apparent error on the face of the record.” He further held that in such extraordinary circumstances, the High Court must exercise its supervisory jurisdiction under Article 227 to ensure adherence to law and prevent miscarriage of justice.

Final Decision:The Delhi High Court set aside the impugned order dated 17.01.2025 passed by the Trial Court in MISC DJ/3623/2024. Consequently, the entire proceedings initiated under that file, including all intermediate orders passed on 24.10.2024 and 11.11.2024, were also quashed. The High Court reaffirmed the principle that once a court becomes functus officio post-decree, it cannot continue to exercise jurisdiction unless statutorily enabled.

Law Settled in this Case:The judgment settles the law on two key points:First, once a civil court passes a final judgment and decree, it becomes functus officio and lacks the authority to entertain or continue any further proceedings in the same matter except through statutorily recognized post-decree mechanisms like execution petitions.Second, jurisdiction cannot be assumed or conferred by consent or participation. Any order passed by a court lacking jurisdiction over the subject matter, particularly after final adjudication, is null and void.This judgment reinforces judicial discipline and statutory fidelity, acting as a caution against judicial overreach and unwarranted continuation of proceedings outside the bounds of jurisdiction.

Case Title: Principal Commissioner of Customs & Anr. v. L’Oréal S.A.:Date of Order: May 15, 2025

Case No.: CM(M)-IPD 19/2025:Neutral Citation: 2025:DHC:3925: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

Khadi and Village Industries Vs. Girdhar Industries

Introduction: In the intricate tapestry of intellectual property law, few cases weave together tradition, commerce, and legal nuance as vividly as the dispute between the Khadi and Village Industries Commission (KVIC) and Girdhar Industries. This case, adjudicated by the High Court of Delhi, delves into the contentious realm of trademark rights, pitting a statutory body tasked with preserving the legacy of "Khadi" against a private entity wielding a registered composite mark. At its core, this legal battle questions the boundaries of trademark exclusivity, the validity of registrations, and the equitable principles governing interim relief.

Detailed Factual Background: The plaintiff, Khadi and Village Industries Commission (KVIC), is a statutory entity established under the Khadi and Village Industries Commission Act, 1956, with its inception tracing back to 1957. KVIC’s mandate is to promote and develop Khadi and village industries, particularly in rural India, as part of a broader socio-economic upliftment agenda. It adopted the trademark "KHADI" on September 25, 1956, integrating it into its corporate identity and using it across a wide range of goods and services. KVIC holds multiple trademark registrations for "KHADI" and associated device marks under the Trade Marks Act, 1999, spanning various classes of the NICE classification, with claimed usage dating back to 1956 for most categories. The plaintiff operates an extensive network of over 8,050 sales outlets, hosts websites like www.kviconline.gov.in, and manages a mobile application, "Khadi India," reinforcing its claim that "KHADI" is synonymous with its identity and products.

The defendants, Girdhar Industries (Defendant 1) and another entity (Defendant 2), operate under the registered trademark "GIRDHAR KHADI." This mark was registered in Class 3 (covering soaps and detergents) effective from March 4, 2005, with claimed use since April 1, 2001, and in Classes 29 and 30 since July 18, 2007, with claimed use from April 1, 2004. Girdhar Industries markets products like soaps and detergents under "GIRDHAR KHADI," achieving significant sales figures, including over ₹32 crore in 2020-2021. KVIC alleges that the defendants’ use of "KHADI" infringes its registered trademarks and constitutes passing off, arguing that the prominence of "KHADI" in the defendants’ branding misleads consumers into associating their products with KVIC’s heritage.

The dispute escalated when KVIC discovered the defendants’ Class 3 registration in December 2020 and filed a rectification petition to cancel it, followed by this suit in 2022. The defendants counter that their mark is a composite one, distinct from KVIC’s "KHADI," and that they have prior use and registration rights, bolstered by substantial market presence.

Detailed Procedural Background: The case, registered as CS(COMM) 130/2022, was filed by KVIC in the High Court of Delhi, seeking permanent injunctions against Girdhar Industries for trademark infringement and passing off. Alongside the suit, KVIC moved IA 3114/2022 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, requesting interim injunctive relief to restrain the defendants from using "GIRDHAR KHADI" and "BR KHADI" pending the suit’s disposal.

KVIC’s legal journey included prior oppositions to the defendants’ trademark applications in 2017, notably against "GIRDHAR KHADI" (Application No. 3409591) in Class 29 and "BR KHADI" in Class 3, with counter-statements filed by the defendants on December 26, 2017. These interactions informed the court’s scrutiny of KVIC’s delay and disclosure claims. Meanwhile, KVIC’s rectification petition against the defendants’ Class 3 registration, filed in December 2020, remains pending, adding a layer of complexity to the interim relief analysis.

Issues Involved in the Case

The case hinges on several pivotal issues: whether KVIC established a prima facie case of trademark infringement under Section 29 of the Trade Marks Act, 1999, against the defendants’ registered "GIRDHAR KHADI" mark; whether the defendants’ use of "KHADI" amounts to passing off by leveraging KVIC’s goodwill; whether the defendants’ registration is invalid due to bad faith or lack of user evidence, thus overcoming the statutory presumption of validity under Section 31(1); whether KVIC’s delay and alleged suppression of facts disentitle it to equitable relief; and whether the balance of convenience and irreparable loss favor granting an interim injunction.

Detailed Submission of Parties: KVIC argued that "KHADI" is a well-known mark indelibly linked to its identity, supported by extensive registrations and continuous use since 1956. She highlighted the defendants’ invoices and packaging, which emphasize "KHADI" over "GIRDHAR," suggesting an intent to capitalize on KVIC’s reputation. Majumder cited prior judicial recognition of "KHADI" as a well-known mark in Khadi & Village Industries Commission v. Raman Gupta (2022 SCC OnLine Del 2264) and invoked N.R. Dongre v. Whirlpool Corporation ((1996) 5 SCC 714) to assert that passing off can proceed against a registered mark. She contested the validity of the defendants’ registration, alleging bad faith under Section 11(10)(ii) and lack of user proof, referencing National Bell Co. v. Metal Goods Manufacturing Co. Pvt Ltd ((1970) 3 SCC 665) to rebut the presumption of validity.

The defendants, emphasized their prior adoption of "GIRDHAR KHADI" in 2001 and registration in 2005, predating KVIC’s active Class 3 registrations, which lapsed or were proposed-to-be-used. He argued that KVIC failed to prove prior use in soaps, pointing to the absence of pre-2001 evidence and the 2015 registration of KVIC’s domain name. Bansal underscored the defendants’ substantial market presence, with sales exceeding ₹40 crore, and invoked Section 34 to protect their vested rights. He accused KVIC of suppression, noting its awareness of the defendants’ registration since 2017, and cited Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia ((2004) 3 SCC 90) to argue that delay alone does not negate relief but must be weighed with equities.

Detailed Discussion on Judgments Cited by Parties: The parties relied on a rich array of precedents, each contextualized within their arguments:

• Khadi & Village Industries Commission v. Raman Gupta (2022 SCC OnLine Del 2264): KVIC cited this Delhi High Court ruling to assert "KHADI"’s status as a well-known mark, bolstering its infringement and passing off claims.
• N.R. Dongre v. Whirlpool Corporation ((1996) 5 SCC 714): Majumder relied on paragraphs 10 and 18 to argue that passing off is actionable against a registered mark, emphasizing goodwill over registration primacy.
• National Bell Co. v. Metal Goods Manufacturing Co. Pvt Ltd ((1970) 3 SCC 665): KVIC used this Supreme Court decision to challenge the presumption of validity under Section 31(1), arguing it is rebuttable with evidence of distinctiveness.
• Automatic Electric Ltd. v. R.K. Dhawan ((1999) 77 DLT 292): Paragraph 16 was cited to counter the defendants’ claim that "KHADI" is generic, given their own registration of "GIRDHAR KHADI."
• Ahmed Oomerbhoy v. Gautam Tank (146 (2008) DLT 774): Majumder referenced paragraph 26 to argue that "KHADI" is arbitrary for soaps, not generic, enhancing its protectability.
• Bloomberg Finance LP v. Prafull Saklecha (207 (2014) DLT 35): KVIC leaned on this to invoke Sections 29(4) and (5), alleging the defendants’ use harms its mark’s reputation.
• Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia ((2004) 3 SCC 90): Both parties cited this; KVIC to argue delay does not bar relief if infringement exists, and the defendants to weigh it against equities.
• Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd ((2018) 2 SCC 1): Bansal cited paragraphs 4 and 17 to highlight the high threshold for injuncting a registered mark.
• Raman Kwatra v. KEI Industries Ltd (judgment not fully cited): Paragraphs 28-30 were used by Bansal to argue KVIC’s lack of evidence on reputation under Section 29(4).
• Vijay Kumar Ahuja v. Lalita Ahuja (2001 SCC OnLine Del 1215): Bansal referenced paragraph 14 to assert that misstatement of cause of action undermines relief.
• Corn Products Refining Co. v. Shangrila Food Products Ltd ((1960) 1 SCR 968): Paragraphs 11 and 15 supported the defendants’ claim of distinctiveness in composite marks.

Detailed Reasoning and Analysis of Judge: Court’s analysis is a meticulous balancing act, rooted in statutory interpretation and equitable principles. Court first examined infringement under Section 28, noting that a registered mark cannot typically be restrained unless its registration is invalid, per Section 31(1)’s presumption of validity. KVIC’s challenge to "GIRDHAR KHADI"’s validity rested on bad faith (Section 11(10)(ii)) and lack of user proof. The judge found KVIC’s assertions insufficiently compelling: the assumption of Defendant 1’s awareness of KVIC’s mark in 2005 lacked evidence of dishonesty, and the defendants’ affidavit of use from 2004 satisfied registration requirements prima facie. The pending rectification petition precluded a definitive invalidity finding, leaving Section 28’s protection intact.

On passing off, the judge assessed KVIC’s goodwill claims but found scant pre-2001 evidence for soaps, contrasting with the defendants’ established use since 2001 and registration since 2005. The composite nature of "GIRDHAR KHADI" and its market reputation further weakened KVIC’s case. Suppression of facts emerged as a critical blow: KVIC’s claim of discovering the registration in 2020 was belied by its 2017 opposition and the defendants’ counter-statement, undisclosed in the plaint. This concealment, unaddressed in replication, disentitled KVIC to equitable relief, reinforcing the denial of injunction.

Balance of convenience tilted toward the defendants, given their 17-year use and ₹32 crore sales in 2020-2021, against KVIC’s delayed action from 2017 to 2022. Irreparable loss favored maintaining the status quo, with a directive for the defendants to file periodic accounts ensuring transparency.

Final Decision: The court declined KVIC’s prayer for an interim injunction against the use of "GIRDHAR KHADI" and "BR KHADI," dismissing IA 3114/2022.

Law Settled in This Case: This judgment reaffirms that a registered trademark enjoys robust protection under Section 28, rebuttable only by a high threshold of invalidity evidence. It clarifies that bad faith under Section 11(10)(ii) requires more than mere awareness of a prior mark—dishonesty must be demonstrable. Suppression of material facts in equitable proceedings can fatally undermine interim relief, and delay, while not solely dispositive, weighs heavily in convenience and loss assessments when coupled with a defendant’s established market presence.

Case Title: Khadi and Village Industries Commission Vs. Girdhar Industries and Anr.:Date of Order: December 28, 2023 :Case No.: CS(COMM) 130/2022:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

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

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

Rieter AG Vs. Kavassery Narayanaswamy

Introduction: The present case involves a complex intellectual property dispute revolving around the infringement of industrial designs, trademarks, and patents in the textile machinery sector. Rieter AG and its group company filed a commercial civil suit before the Delhi High Court against the defendant, a Coimbatore-based supplier, alleging that the defendant infringed their proprietary rights by selling deceptively similar spare parts. The legal issue before the Court primarily focused on the question of territorial jurisdiction and whether the Delhi High Court could entertain the suit when the defendant was operating from Tamil Nadu and the alleged infringing activity was centered outside Delhi.

Factual Background: Rieter AG and Rieter India Private Limited, subsidiaries of Rieter Holding AG, instituted the suit on the basis of their intellectual property rights, including registered Indian design numbers 264773, 264774, 264775, 294194, 271521 and a registered patent bearing no. 339930. The trademark ‘SUESSEN’ was also claimed to be owned by plaintiff no. 2. The plaintiffs alleged that the defendant had displayed infringing products at India ITME (India International Textile Machinery Exhibition) held at Greater Noida in December 2022. Thereafter, the plaintiffs engaged an investigator who, acting through a company named Ukandin International Private Limited, initiated a purchase transaction with the defendant in April and May 2023. The products were ultimately delivered in Delhi on the basis of an invoice dated 17th May 2023, which the plaintiffs claimed established part of the cause of action within the jurisdiction of the Delhi High Court.

Procedural Background: The defendant filed an application under Order VII Rule 10 of the Code of Civil Procedure, 1908, seeking return of the plaint for lack of territorial jurisdiction. The primary argument was that the defendant’s business was based entirely in Coimbatore, Tamil Nadu, and he did not carry out any business or have any place of business in Delhi. The defendant asserted that the transaction in question was a “trap” purchase fabricated by the plaintiffs’ investigator solely to confer jurisdiction upon the Delhi High Court. The plaintiffs opposed the application, relying upon the factual matrix and judicial precedent to assert that part of the cause of action arose in Delhi due to delivery of infringing goods, and that the suit was maintainable under Section 20(c) of the CPC.

Issues Involved in the Case: The principal issue before the Court was whether the Delhi High Court had territorial jurisdiction to entertain the suit under Section 20(c) of the CPC, considering that the defendant was located in Tamil Nadu and that the transaction culminating in delivery of goods in Delhi was allegedly a one-time trap purchase?Another pertinent issue was whether a trap transaction could constitute a valid part of the cause of action sufficient to confer jurisdiction upon the Delhi High Court in an intellectual property infringement suit?

Submissions of the Parties:The defendant submitted that the entire transaction was orchestrated by the plaintiffs with the sole motive of conferring jurisdiction on the Delhi High Court. He contended that the goods were supplied only after the plaintiffs’ investigator physically visited the defendant’s premises in Coimbatore and that the sale was conducted in Coimbatore. The subsequent delivery in Delhi was requested by the investigator and should be treated as a non-commercial, contrived transaction. He relied on the decisions in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, and Indovax Pvt. Ltd. v. Merck Animal Health, 2017 SCC OnLine Del 9393, to assert that trap purchases without commercial intent cannot create jurisdiction.

The plaintiffs argued that the defendant, by participating in the India ITME exhibition in Greater Noida and later delivering goods to Delhi under an invoice, had invoked the jurisdiction of the Delhi High Court under Section 20(c). She pointed out that Ukandin International Private Limited, acting as the buyer, was registered in Delhi at the time of the transaction, and the delivery address and invoice were both located in Delhi. She further relied on Machinefabrik Rieter AG v. Tex Tech Industries (P) Ltd., 2021 SCC OnLine Del 1825, a case involving the same plaintiff and similar factual background, where the Court had upheld jurisdiction on the basis of delivery of goods in Delhi.

Judgments Cited and Their Context: In Machinefabrik Rieter AG v. Tex Tech Industries (P) Ltd., 2021 SCC OnLine Del 1825, the Delhi High Court rejected a jurisdictional objection where the defendant, also based in Coimbatore, had delivered allegedly infringing goods to Delhi. The Court in that case held that the delivery of goods to Delhi constituted a valid part of the cause of action and distinguished Banyan Tree, which involved an online transaction.

In Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, the Division Bench of the Delhi High Court dealt with the question of jurisdiction in the context of online presence. The Court held that mere accessibility of a website is not sufficient; there must be an intentional targeting of customers in the forum state.

In Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393, the Court held that trap transactions, especially where purchases are made solely to create jurisdiction, cannot form the basis of territorial jurisdiction unless commercial activity is established.

The Court in the present case relied on Machinefabrik Rieter and distinguished Banyan Tree and Indovax on the ground that the current case involved an offline transaction resulting in a delivery of 91 commercial units of the allegedly infringing product to Delhi. The quantity and invoicing supported the inference of commercial intent.

Reasoning and Analysis of the Judge: Court observed that in determining an application under Order VII Rule 10 CPC, the Court must accept the plaint and accompanying documents as true at the preliminary stage. The plaintiffs’ case, based on delivery of goods to Delhi under an invoice, was sufficient to confer jurisdiction under Section 20(c) of CPC.

He noted that the defendant’s participation in a major trade exhibition in Greater Noida, bordering Delhi, further weakened the claim that his business was confined to Tamil Nadu. The assertion of being the “world’s largest manufacturer of Lattice Apron for Compact Systems” suggested an intent to market and supply goods nationwide, including in Delhi.

The judge emphasized that delivery of goods to Delhi, supported by documentary evidence, distinguished the case from Banyan Tree, which was confined to digital interaction and from Indovax, where the transaction lacked commercial scale. Here, the supply of 91 units and provision of product samples indicated commercial intent and possible anticipation of future transactions.

He held that minor factual distinctions in agency structure or the buyer’s nature could not override the fact that goods were physically delivered to Delhi under a commercial invoice, which sufficed to establish part of the cause of action in Delhi.

Final Decision: The Court dismissed the application under Order VII Rule 10 CPC filed by the defendant, holding that the Delhi High Court did have territorial jurisdiction under Section 20(c) of the Code of Civil Procedure. It found that the transaction leading to the delivery of goods in Delhi was not merely a trap but constituted a commercial transaction. The Court further clarified that questions of jurisdiction could be revisited during trial after evidence is led.The defendant’s related application under Order VII Rule 11 CPC was withdrawn, and the suit was scheduled for consideration of interim injunction on a subsequent date.

Law Settled in this Case: This case reinforces the legal position that delivery of infringing goods under a commercial invoice to a location within the territorial jurisdiction of a court constitutes sufficient cause of action under Section 20(c) of the CPC. It clarifies that “trap transactions” will not defeat jurisdiction when the transaction is commercial in nature and supported by documentation. The judgment also affirms that participation in national trade exhibitions may reflect a defendant’s business outreach to broader territories, thereby undermining territorial objections based on place of business alone.Furthermore, the case distinguishes online and offline transactions in the context of jurisdiction, aligning with the reasoning in Machinefabrik Rieter, and limiting the applicability of Banyan Tree to digital commerce.

Case Title: Rieter AG and Anr. Vs. Kavassery Narayanaswamy Venkatasubramanian:Date of Order: 13th May, 2025:Case No.: CS(COMM) 729/2024:Neutral Citation: 2025:DHC:3937:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

Newgen Software Technologies Limited Vs. Newgen IT Technologies Limited

Case Title: Newgen Software Technologies Limited Vs. Newgen IT Technologies Limited Case Number: FAO (COMM) 73/2025 Date of Order: 12.06.2025: Court: Delhi High Court Judge: 2025:DHC:4964-DB: Navin Chawla and Harish Viadyanathan

Brief Facts

The respondent, Newgen Software Technologies Limited, filed a suit alleging that the appellant, Newgen IT Technologies Limited, infringed its trademark “Newgen” by adopting a confusingly similar mark and name after their prior business relationship. The respondent sought interim and permanent injunctions to restrain the appellant from using similar marks.

Discussion by the Judge

The court examined the similarity of the trademarks and the prior relationship between the parties. It noted that the dominant element “Newgen” was common to both marks, and the likelihood of confusion among the public was high. The court observed that the appellant's adoption of the “Newgen” mark appeared not to be entirely bona fide and was connected with their prior relationship and use of the mark. The court also considered the likelihood of public confusion, the balance of convenience, and irreparable harm to the respondent’s reputation.

Decision

The court granted an ex-parte ad-interim injunction in favor of the respondent on 27th February 2025, which was later made absolute on 5th March 2025, confirming the restraining order against the appellant from using the “Newgen” mark. The appellant’s application to modify or vacate the injunction was dismissed, and the appeals challenging these orders were also rejected.

National Fire Protection Association Vs Swets Information Services

National Fire Protection Association Vs Swets Information Services Pvt. Ltd.: Delhi High Court: Hon'ble Mr. Justice Saurabh Banerjee:CS(COMM) 987/2018:May 15, 2025:2025:DHC:3771

Fact:

The dispute involves a suit for permanent injunction filed by the plaintiff, National Fire Protection Association, Inc., against the defendant Swets Information Services Pvt. Ltd. and others. The defendant, Swets Information, filed their written statement on August 8, 2018, but the statement was missing an affidavit of admission/denial of the plaintiff’s documents, which is a requirement under the applicable rules.

Procedural Details:

The defendant’s written statement was filed within the statutory period but lacked the mandatory affidavit.The Court issued an "Urgent Notice" in August 2022, drawing attention to documents lying under objection at the filing counter.The defendant relied on the case history available online, believing that the written statement was free of objections.Despite the initial filing, the absence of the affidavit of admission/denial led the Court’s Joint Registrar to order that the written statement be taken off the record, effective September 2, 2023, after a long delay in curing the defect.The defendant appealed against this order, challenging the removal of their written statement.

Issue:

Whether the omission of the affidavit of admission/denial at the time of filing the written statement invalidates the filing and whether the Court’s order to remove the written statement was justified, considering the defendant’s belief that no objection was indicated on the official record.

Decision:

The Court upheld the order of removal, finding that the defendant did not cure the defect within the prescribed time, and the omission was a procedural lapse attributable to the defendant. The Court dismissed the appeal as frivolous, ruling that the procedural non-compliance warranted the removal of the written statement. The costs of Rs. 25,000 were ordered to be paid to the Army Central Welfare Fund, and the case was listed for further proceeding in July 2025.

TikTok Limited Vs. Registrar of Trade Marks

Case Title: TikTok Limited Vs. Registrar of Trade Marks Date of Order: June 10, 2025 Case Number: Commercial Miscellaneous Petition No. 10 of 2024 Neutral Citation: 2025:BHC-OS:8466 Name of Court: Bombay High Court, Commercial Division Name of Judge: Manish Pitale, J.

Very Brief Facts:

TikTok Limited, a company operating a popular social media app, sought to have its trademark "TikTok" recognized as a well-known mark under Indian law. The Registrar of Trade Marks refused this request, citing reasons related to the ban imposed by the Indian government on TikTok and concerns over sovereignty, integrity, and public order.

Discussion by the Judge:

The court examined whether the Registrar properly considered the statutory provisions and relevant factors under Section 11(6) of the Trade Marks Act. The court observed that the Registrar’s refusal was primarily based on the ban on TikTok, which is a relevant fact under law, and that the factors for recognizing a well-known mark are not exhaustive. The court also noted that the ban was a transient situation and should not be the sole basis for refusal. The court found that the Registrar had taken into account relevant facts and that there was no error in the order.

Decision:

The court dismissed the petition, affirming that the Registrar's decision was justified given the relevant considerations, including the government ban and public order concerns.

Sadhguru Jagdish Vasudev Vs. Igor Isakov

Case Title: Sadhguru Jagdish Vasudev Vs. Igor Isakov & Ors. Date of Order: 30th May 2025 Case Number: CS(COMM) 578/2025 Name of Court: Delhi High Court Name of Judge: Hon'ble Mr. Justice Saurabh Banerjee

Facts: The plaintiffs, including Sadhguru, are prominent spiritual personalities known internationally. They allege that defendants are infringing on their personality rights through the use of deep fake technology and unauthorized online content. They seek temporary and permanent injunctions to prevent further infringement and request action against the infringing online content.

Discussion by the Judge: The Court considered the plaintiffs’ evidence of personality rights infringement, including the employment of modern technology to modify images, voices, and videos for commercial gains. The Court acknowledged the need for urgent relief and directed the defendants to disable infringing accounts, disclose their identities, and facilitate blocking or takedown of infringing content.

Decision: The Court granted interim relief, including directions to suspend certain YouTube accounts and social media pages. It also allowed the plaintiffs to approach platforms for takedown within a specified timeframe and permitted filing additional documents and evidence. 

The Role of Obiter Dictum in Indian Judicial Hierarchy

Introduction: The Indian legal system, like other common law jurisdictions, operates on the doctrine of precedent to ensure consistency and predictability in judicial decisions. At the core of this doctrine lies the distinction between ratio decidendi, the legal principle that forms the basis of a decision, and obiter dictum, statements made by judges that are incidental to the main issue and not essential to the outcome of the case. While the former holds the force of binding precedent, the latter carries no binding authority but may be persuasive in nature.

In practice, however, determining whether a particular statement made by a higher bench is ratio or obiter can be contentious. This dilemma becomes especially significant when Single Judges are tasked with interpreting statements made by Division Benches. The Delhi High Court’s recent decision in Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma, CM(M)-IPD 5/2025, decided on March 27, 2025, by Hon’ble Single Judge, Delhi High Court, shed light on the question of whether a Single Judge is bound by an obiter dictum of a Division Bench of the same High Court. The case revolved around the application of Section 124 of the Trade Marks Act, 1999 in trademark infringement and passing off proceedings.

Factual Background and Procedural History:

The dispute between Balar Marketing Pvt. Ltd. (the petitioner) and Lakha Ram Sharma, the proprietor of Kundan Cable India (the respondent), centered on the use of the trademark "KUNDAN" and its variants, including "KUNDAN CAB" and "KUNDAN CABLE." Both parties operated in the electrical goods industry, and each claimed the exclusive right to the trademark based on prior adoption.

The petitioner asserted that its predecessor had adopted the mark in 1975 and had continuously used it. The respondent, on the other hand, claimed to have adopted and used the mark earlier, leading to a series of protracted legal disputes. Multiple suits were filed between 1994 and 2006, including passing off and infringement actions. These suits were consolidated, and the case went through various procedural developments.

In January 2025, the respondent sought a stay on all the suits under Section 124 of the Trade Marks Act, citing the pendency of rectification proceedings before the Madras High Court. The Trial Court granted a stay on all suits (except TM No. 931/2016) on January 18, 2025, relying on the Division Bench decision in Amrish Aggarwal Trading as Mahalaxmi Product v. Venus Home Appliances, 2024 SCC OnLine Del 3652.

Aggrieved by this order, the petitioner filed a writ petition under Article 227 of the Constitution of India, seeking judicial review. The decision of the Delhi High Court in Balar Marketing is significant for its clarity in defining the limits of obiter dictum and its binding effect.

Core Legal Issue

The principal legal issue in this case was whether the Trial Court was justified in staying the passing off suits under Section 124 of the Trade Marks Act based on the observations made in Amrish Aggarwal? The subsidiary question was whether the remarks made by the Division Bench regarding the stay of passing off suits were obiter dictum or binding precedent?

Submissions by the Parties

The petitioner contended that the reference to passing off suits in paragraph 44 of Amrish Aggarwal was a mere obiter dictum. The Division Bench in that case was primarily addressing procedural issues concerning the stay of infringement suits during the pendency of rectification proceedings, not passing off actions. The petitioner relied heavily on the judgment in Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del.) (DB), where the Division Bench had explicitly ruled that passing off suits are not subject to stay under Section 124. This principle, according to the petitioner, should not be disturbed by an incidental remark in Amrish Aggarwal.

The respondent, on the other hand, argued that even obiter dicta from a Division Bench of the High Court must be followed by a Single Judge to ensure judicial consistency. To support this view, the respondent cited cases such as Naseemunisa Begum v. Shaikh Abdul Rehman, 2002 (2) Mah L.J. 115 and Crocs Inc. USA v. Aqualite India Ltd., 2019 SCC OnLine Del 11957, in which it was held that even remarks made in passing by a Division Bench could be binding, especially when they did not contradict established law.

Contextual Interpretation of Amrish Aggarwal Case:

The Hon’ble Single first examined the context of the Amrish Aggarwal case. The Division Bench in that case was primarily concerned with procedural issues arising out of the abolition of the Intellectual Property Appellate Board (IPAB) and whether rectification proceedings triggered a stay under Section 124 of the Trade Marks Act. The primary issue in Amrish Aggarwal was not related to passing off suits, but rather the procedural question of whether infringement actions could be stayed during the pendency of rectification proceedings. The Division Bench’s reference to passing off suits was made incidentally in paragraph 44, without any extensive legal reasoning or argumentation. Therefore, Justice Bansal concluded that the remark was not part of the ratio decidendi and should be treated as obiter dictum.

No Express Overruling of Binding Precedent (Puma Stationer):

The Hon’ble Single Judge, Delhi High Court noted that the Division Bench in Amrish Aggarwal had relied on Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del.) (DB), which had clearly held that passing off actions are not subject to stay under Section 124. The Division Bench in Amrish Aggarwal did not overrule or even address this binding precedent, further supporting the conclusion that the reference to passing off suits was incidental and lacked any binding authority.

Application of Supreme Court Precedents on Obiter Dictum:

Justice Bansal drew upon established Supreme Court principles that clarify the nature and scope of obiter dictum. In Mohinder Singh Gill v. Chief Election Commissioner, (1978) 1 SCC 405, the Supreme Court held that only the ratio decidendi of a judgment is binding, and obiter dictum, or incidental remarks, are not enforceable in subsequent cases. Similarly, in State of Orissa v. Sudhansu Sekhar Misra, AIR 1968 SC 647, the Supreme Court emphasized that casual observations or statements made without a thorough examination of the issue do not form part of the binding law.

The Hon’ble Single Judge also referred to the case of Gudri v. Ram Kishun, AIR 1984 All 100, where it was held that even stray or inadvertent remarks made by a Full Bench, if inconsistent with settled law, do not bind lower courts. This case further reinforced the position that obiter dictum, even when expressed by larger benches, cannot override established legal principles.

Lack of Detailed Legal Reasoning in Amrish Aggarwal on Passing Off

The Division Bench in Amrish Aggarwal made no reference to key statutory provisions such as Section 27(2) of the Trade Marks Act, which expressly preserves common law rights in passing off actions, independent of the statutory registration status. Moreover, the Division Bench did not cite or discuss previous case law that dealt directly with the application of Section 124 to passing off claims. The lack of legal reasoning and analysis led Justice Bansal to conclude that the reference to passing off suits was inadvertent and non-binding.

Distinction from Other Cases Cited by the Respondent

Court distinguished the cases relied upon by the respondent, such as Naseemunisa Begum v. Shaikh Abdul Rehman and Crocs Inc. USA v. Aqualite India Ltd., where the observations made by the higher benches were integral to the judicial reasoning and central to the legal issues at hand. In contrast, the reference to passing off in Amrish Aggarwal was not framed as an issue for determination and did not involve a detailed examination of the law.

Decision and Legal Principle Clarified:

In light of the above analysis, the Court held that the Trial Court had misapplied the judgment in Amrish Aggarwal by staying the passing off suits. Paragraph 44 of the judgment was not part of the ratio decidendi, and as such, the Single Judge was not bound to follow it. Justice Bansal emphasized that a Single Judge is not bound by an obiter dictum of a Division Bench of the same High Court, particularly when it contradicts established precedent and lacks legal reasoning.Accordingly, the Court set aside the stay order dated January 18, 2025, and directed that all the pending suits—TM Nos. 968/2016, 971/2016, 1030/2016, and 932/2016—proceed to trial along with TM No. 931/2016.

Author’s Comment:A Call for Doctrinal Coherence and Resolution by Larger Bench

The decision in Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma reaffirms a crucial tenet of the doctrine of precedent: that only the ratio decidendi of a judgment possesses binding force, whereas obiter dicta, even if emanating from a Division Bench, lack precedential authority if they are unreasoned or conflict with established legal principles. Justice Amit Bansal's judgment emphasizes the necessity of maintaining doctrinal clarity to prevent the misapplication of incidental judicial remarks as binding law. This ruling serves to uphold the autonomy of common law rights—particularly the right of passing off—while also delimiting the scope of Section 124 of the Trade Marks Act, 1999, which concerns the stay of infringement suits pending rectification proceedings.

However, a critical unresolved issue lingers at the intersection of judicial interpretation and precedential conflict. In the earlier Division Bench decision of Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., the Court stayed the trademark infringement suit under Section 124 but permitted the passing off action to continue. Contrastingly, in the subsequent Amrish Aggarwal v. Venus Home Appliances Pvt. Ltd. (DB), the Division Bench—after noting the petitioner’s reliance on Puma (see para 34)—expressly rejected that reasoning (see para 53) and held (at paras 2 and 44) that both infringement and passing off claims must await the outcome of rectification proceedings.

This divergence reveals an apparent conflict between two Division Bench decisions. In such cases, as established in Christian Louboutin v. Abu Baker, 2019 (78) PTC 262 (Del) (DB), paras 32 and 35, when two coordinate Bench decisions conflict, the matter should be referred to a larger Bench for authoritative resolution. The Balar Marketing judgment, however, sidesteps this necessity by characterizing the relevant observations in Amrish Aggarwal as obiter, thereby preserving the Puma precedent.

This interpretive strategy is complicated further by the earlier Single Judge decision in Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Anr. [2018:DHC:53] @Para 23,24, where the Court concluded that Puma’s observations regarding the continuation of passing off actions did not constitute binding precedent. The judgment reasoned that since the Division Bench in Puma did not fully adjudicate the issue with reasoned analysis, its observations were not authoritative.

This leads to a paradox: in Abbott, the Single Judge declined to treat Puma as binding, while in Balar, a subsequent Single Judge relied on Puma while dismissing Amrish Aggarwal as mere obiter. In both instances, the judges attempted to reconcile conflicting DB judgments through the lens of ratio vs obiter, yet arrived at opposing conclusions regarding which precedent to follow.

The resulting jurisprudential inconsistency underscores the urgent need for clarity. When two Division Bench judgments express diametrically opposed views on the procedural bifurcation of infringement and passing off under Section 124, reliance on interpretive discretion at the Single Judge level only perpetuates confusion. A definitive pronouncement by a Larger Bench is essential to restore uniformity and doctrinal stability.Until such clarity is provided, judicial uncertainty will persist, potentially undermining the predictability and coherence that the doctrine of precedent is designed to secure.

Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma, CM(M)-IPD 5/2025, decided on March 27, 2025/Delhi High Court, Hon'ble Justice Shri Amit Bansal

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

Oswaal Books and Learnings Private Limited Vs Registrar of Trade Marks

Introduction: This case pertains to the registrability of the phrase “ONE FOR ALL” as a trademark in respect of educational books under Class 16. The appellant, Oswaal Books and Learnings Pvt. Ltd., challenged the refusal of its application by the Registrar of Trade Marks on the ground that the mark lacked distinctive character as per Section 9(1)(a) of the Trade Marks Act, 1999. The High Court of Delhi, in appeal, considered whether the slogan had acquired distinctiveness or secondary meaning sufficient for registration.

Factual Background:Oswaal Books and Learnings Private Limited is engaged in publishing help books for a variety of academic boards like CBSE, ICSE, ISC, Karnataka Board, and national-level examinations including NEET, JEE, CAT, CLAT, and RRB-NTPC. On October 20, 2020, the appellant applied to register the mark “ONE FOR ALL” under Class 16, claiming usage from August 20, 2020. The phrase was used as a tagline accompanying the “OSWAAL BOOKS” brand to indicate its books’ comprehensive utility for all educational boards and exams. Despite extensive marketing, including online sales through Amazon and Flipkart, and a promotional spend of over ₹96 lakhs, the application was rejected by the Registrar.

Procedural Background: The Registrar issued an examination report objecting to the mark under Section 9(1)(a) for lacking distinctiveness and requested supporting documents, including a user affidavit. The appellant responded with evidence, written submissions, and appeared in a hearing. However, on December 14, 2023, the Senior Examiner refused the application, holding that “ONE FOR ALL” was composed of common words and lacked inherent or acquired distinctiveness. The appellant filed the present appeal under Section 91 of the Trade Marks Act.

Legal Issue:The core legal issue was whether the mark “ONE FOR ALL” possessed inherent distinctiveness or had acquired a secondary meaning through usage, thereby qualifying for registration under the proviso to Section 9(1) of the Trade Marks Act.

Discussion on Judgments:The appellant relied on Evergreen Sweet House v. Ever Green and Others, 2008 SCC OnLine Del 1665, to argue that arbitrary combinations of common words can be registrable without proof of secondary meaning if they are unrelated to the product's nature. It also cited Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739, for the proposition that even suggestive marks are inherently distinctive.

However, the Court found those judgments inapplicable. It referred to Ilua Sole Proprietorship v. Asian Hobby Crafts LLP, 2024 SCC OnLine Del 8299, which reiterated that generic or descriptive words cannot be monopolized unless they acquire a secondary meaning. The Court also cited Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd., 2023 SCC OnLine Del 7841, to reinforce that common English expressions like “ONE FOR ALL” fall within the bar of Section 9(1)(a) unless distinctiveness is proved.

The Court further drew from McCarthy on Trademarks and Unfair Competition (5th Ed.), which explains that slogans that merely convey an informational or promotional message rather than indicating the source of goods are not registrable as trademarks. Examples included “Drive Safely” and “Proudly Made in USA”, which were not considered capable of distinguishing goods.

Reasoning and Analysis of the Hon'ble Judge:The Court examined the evidence provided by the appellant to substantiate the acquired distinctiveness of the phrase “ONE FOR ALL”. The CA certificates and invoices submitted by the appellant were found inadequate, as they either related generally to “OSWAAL BOOKS” or made only scant reference to the slogan. The promotional materials did not show consistent and prominent standalone use of “ONE FOR ALL” as a source identifier.

The Court found that the phrase had been used primarily alongside the main mark “OSWAAL BOOKS” and had not developed an independent commercial identity. It also noted that the earliest evidence of public usage, such as YouTube reviews, dated only to mid-2022, not supporting the claimed usage from 2020.

Further, the phrase “ONE FOR ALL” was held to be descriptive in context. Given that the books were intended for a wide range of exams and boards, the phrase merely conveyed that the books catered to everyone. Thus, it functioned as a marketing slogan rather than a distinctive identifier of trade origin.

The Court acknowledged the cultural familiarity of the phrase through its association with Alexandre Dumas’ The Three Musketeers, reinforcing its commonality and generic appeal.

Final Decision: The High Court dismissed the appeal and upheld the Registrar's decision refusing registration of the mark “ONE FOR ALL”. It held that the phrase lacked inherent distinctiveness, and the appellant had failed to demonstrate secondary meaning or acquired distinctiveness through evidence. Mere promotional expenditure and limited use were insufficient to override the statutory bar under Section 9(1)(a).

Law Settled in This Case: This case reinforces the principle that common phrases or slogans are inherently non-distinctive and must meet a high threshold to qualify for trademark registration. Mere usage in advertising or in conjunction with a primary trademark does not establish secondary meaning. A slogan like “ONE FOR ALL” that directly describes the utility of a product cannot be monopolized unless it is shown to have acquired distinctiveness through sustained, exclusive, and recognizable use. The burden of proving secondary meaning lies firmly on the applicant, and generic or laudatory phrases, even if cleverly marketed, are not inherently registrable.

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

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

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

Calvin Klein Trademark Trust & Anr.Vs Guru Nanak International

Case Title:Calvin Klein Trademark Trust & Anr.Vs  Guru Nanak International & Ors.:Date of Order:December 8, 2023  :Case No.: CS(COMM) 75/2020  :Neutral Citation:2019:DHC:2185  :Name of Court:Delhi High Court  :Name of Judge: Hon'ble Justice Prathiba M. Singh  

Facts::The plaintiffs, Calvin Klein Trademark Trust and Tommy Hilfiger Europe B.V., filed a suit against the defendants, including M/s Sazia Garments, for the unauthorized sale of counterfeit products using their registered trademarks 'Calvin Klein,' 'CK,' and 'TOMMY HILFIGER.' The defendants were found to be engaged in manufacturing and selling counterfeit clothing items, as evidenced by a local commissioner's report which documented the presence of counterfeit goods and manufacturing equipment at the defendant's premises.

Legal Issue:The primary legal issue revolved around the infringement of registered trademarks and the appropriate remedies, including the award of damages and injunctions against the defendants for their activities.

Reasoning:The court reasoned that the extensive evidence provided by the plaintiffs, including the local commissioner’s findings of counterfeit products and absence of the defendant's response during proceedings, justified the conclusion that the defendants intentionally infringed on the plaintiffs' trademarks. Emphasis was placed on the settled legal position that a local commissioner's report can be admitted as evidence in the absence of any objection. The court cited previous judgments that reiterate the principles for awarding damages in trademark infringement cases, particularly when the infringement involved deliberate and calculated actions.

To calculate the quantum of damages, the court considered several factors, including:

Extent of Infringement: The court assessed the quantity of counterfeit goods seized from the defendant's premises, which demonstrated the scale of infringement.

Defendant's Conduct:The court noted that the defendant's actions were deliberate, with an intent to exploit the plaintiffs' brand reputation, leading to significant economic impact on the plaintiffs.

Precedent Cases: The court referenced prior cases to establish a benchmark for damages in similar circumstances. Existing standards for compensatory damages and the severity of the infringement guided the amount awarded.

Potential Losses to Plaintiffs: The court evaluated the loss of goodwill and potential sales experienced by the plaintiffs due to the unauthorized sale of counterfeit goods, which contributed to the assessment of monetary compensation.

Decision:The court decreed a permanent injunction restraining the defendants from using the plaintiffs' trademarks. It awarded damages amounting to Rs. 10 lakhs along with costs of Rs. 1 lakh to the plaintiffs. The plaintiffs were permitted to seize and destroy the counterfeit goods found at the defendants' premises, or alternatively, donate the goods after removing the counterfeit labels.