Novartis AG & Anr. Vs. Cipla Ltd.

Introduction: In the intricate tapestry of intellectual property law, few cases exemplify the tension between patent rights and public health as vividly as Novartis AG & Anr. v. Cipla Ltd., decided by the Delhi High Court on January 9, 2015. This legal skirmish revolved around the enforcement of a patent for INDACATEROL, a groundbreaking bronchodilator for chronic obstructive pulmonary disease (COPD), against the backdrop of India’s burgeoning public health crisis. The plaintiffs, Novartis AG and its Indian subsidiary, sought to protect their statutory monopoly, while the defendant, Cipla Ltd., challenged the exclusivity by invoking the dire needs of COPD patients.

Detailed Factual Background: The dispute centered on Indian Patent No. 222346, granted to Novartis AG, a Swiss pharmaceutical giant, on August 5, 2008, covering INDACATEROL and its maleate salt, INDACATEROL Maleate. Novartis AG, with a legacy spanning over 250 years, is renowned for its research and development in pharmaceuticals, boasting an investment of USD 7.2 billion in 2013 alone. Its Indian arm, Novartis Healthcare Pvt. Ltd., partnered with Lupin Ltd. under a 2012 agreement to market INDACATEROL Maleate in India as ONBREZ, an inhalation powder for COPD treatment. INDACATEROL, a novel ultra-long-acting β2-agonist, offered 24-hour bronchodilation, a significant advancement over existing 12-hour therapies, approved globally by the European Medicines Agency (EMA) in 2009 and the U.S. FDA in 2011.

Cipla Ltd., an Indian pharmaceutical powerhouse with expertise in respiratory drugs, emerged as the antagonist, launching its own INDACATEROL-based product in October 2014. Cipla’s move followed Novartis’s alleged failure to meet India’s COPD demand, estimated at 1.5 crore patients annually, with imports covering a mere 0.03% of the need (54,000 units against 18 crore units). Cipla argued that Novartis’s high-priced imports—contrasted with its own affordable alternative—exacerbated the plight of India’s COPD-afflicted population, a demographic burdened by smoking, biomass fuel exposure, and inadequate healthcare access.

Novartis countered that INDACATEROL was a meticulously developed New Chemical Entity (NCE), born from late-1990s research to provide sustained relief for COPD patients. Manufactured centrally in Switzerland to ensure quality and cost-efficiency, the drug’s global sales soared, reaching USD 192.2 million in 2013. In India, sales grew from INR 4.2 million in 2010 to INR 23.6 million by September 2014, though Cipla claimed this was a fraction of the need, citing studies projecting COPD’s rise to 2.2 crore cases in the coming years.

Detailed Procedural Background: The legal journey began when Novartis filed a suit (CS(OS) 3812/2014) in the Delhi High Court, seeking a permanent injunction against Cipla for infringing Patent No. 222346, alongside claims for damages and delivery-up. Concurrently, Novartis moved an interim injunction application (I.A. No. 24863/2014) under Order XXXIX Rules 1 and 2 of the CPC.

Cipla, yet to file its written statement, responded to the interim application with a reply dated December 11, 2014, and had earlier, on October 22, 2014, petitioned the Central Government under Sections 66 and 92(3) of the Patents Act, 1970, to revoke Novartis’s patent, citing non-availability and public interest. Novartis filed a rejoinder, reinforcing its patent’s validity and market efforts. The court also noted Cipla’s application to implead the government, on which notice was issued but unresolved by the judgment date. The hearing culminated in a detailed order balancing patent rights with public health considerations, disposing of the interim application while setting the suit for further proceedings.

Issues Involved in the Case: The case distilled into two core issues. First, whether Novartis established a prima facie case of patent infringement warranting an interim injunction, considering the patent’s validity and Cipla’s defenses? Second, whether public interest—specifically the alleged inadequacy of INDACATEROL’s supply and affordability—could override Novartis’s statutory rights under Section 48 of the Patents Act, and if so, how the court should balance these competing interests at the interim stage.

Detailed Submission of Parties: Novartis asserted that Patent No. 222346, unchallenged since its grant in 2008, conferred an exclusive right under Section 48 to prevent Cipla from manufacturing or selling INDACATEROL Maleate. They highlighted the drug’s inventive merit, evidenced by its global approvals and unchallenged patents worldwide, and argued that Cipla’s October 2014 launch constituted clear infringement. On public interest, Novartis denied Cipla’s claims of inadequate supply, citing sales data and readiness to meet any verified demand, and argued that Cipla’s cheaper alternative stemmed from bypassing R&D costs, not superior accessibility. They proposed licensing discussions, which Cipla rebuffed, and emphasized that compulsory licensing or revocation pleas belonged before the Controller, not the civil court.

Cipla mounted a multi-pronged defense. They challenged the patent’s validity under Section 64, alleging obviousness and lack of novelty, though without detailed substantiation at this stage. Their primary thrust was public interest, invoking Sections 83 and 84 to argue that Novartis’s import-based monopoly failed to meet India’s COPD crisis, with 99.97% of demand unmet. Cipla positioned itself as a savior, offering an affordable alternative at one-fifth Novartis’s price, and cited Articles 7 and 21 of the TRIPS Agreement and Constitution, respectively, to underscore the right to health. They suggested royalty deposits as an alternative to injunction, urging the court to prioritize patient access over patent exclusivity.

In rejoinder, Novartis dismissed Cipla’s revocation plea as an admission of patent validity, arguing that invoking Section 92(3) implied acceptance of infringement. They contested Cipla’s demand estimates as unverified, noting INDACATEROL’s suitability for mild-to-moderate COPD only, and denied any legal mandate for local manufacturing, citing their Swiss plant’s efficiency and quality control.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case:The parties and court leaned on a rich tapestry of precedents, each illuminating distinct facets of patent law and equity.

1. American Cyanamid Co. v. Ethicon Ltd., [1975] RPC 513 (House of Lords)
   Cited by the court, this seminal UK decision established the triad of prima facie case, balance of convenience, and irreparable loss as the bedrock for interim injunctions. The Court  applied it to assess Novartis’s infringement claim against Cipla’s public interest defense, emphasizing judicial discretion in equitable relief.
2. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (U.S. Supreme Court)
   Referenced by the court, this U.S. ruling rejected automatic injunctions in patent cases, mandating a four-factor test: irreparable injury, inadequacy of legal remedies, balance of hardships, and public interest. Justice Singh drew on its public interest prong to weigh Cipla’s plea against Novartis’s rights, noting its global influence on patent jurisprudence.
3. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 670 F.3d 1171 (Federal Circuit, 2012)
   Cited by the court, this U.S. case denied a permanent injunction for a vascular graft patent, prioritizing public access to life-saving devices. Justice Singh analogized it to INDACATEROL’s role in COPD treatment, exploring royalty as an alternative to injunction, though finding insufficient data to apply it here.
4. F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 148 (2008) DLT 598 (Delhi High Court)
   Invoked by the court, this Delhi High Court decision denied an interim injunction due to patent validity doubts and public interest in affordable cancer drugs. Justice Singh distinguished it, noting Novartis’s patent lacked credible validity challenges, yet endorsed its public interest ethos.
5. Bayer Corporation v. Union of India & Ors., Writ Petition No. 1323 of 2013 (Bombay High Court)
   Cipla cited this Bombay High Court ruling, which held that importation constitutes “working” a patent only with sufficient justification. Cipla argued Novartis’s imports failed this test, but the court relegated such pleas to the compulsory licensing forum under Section 84.

Detailed Reasoning and Analysis of Judge:The Court’s reasoning unfolded in a meticulous two-part analysis: statutory interpretation and equitable balancing. He first clarified the Patents Act’s framework, noting that Section 48 grants patentees exclusive rights, subject to Chapter XVI (Sections 83-92), which governs compulsory licensing and revocation for non-working. However, the court held that these public interest grounds—e.g., inadequate supply or unaffordability—belong to the Controller’s domain, not the civil court’s in infringement proceedings, as per Sections 104 and 107. Cipla’s reliance on Section 83 was thus misplaced in resisting the injunction.

Yet the court did not dismiss public interest outright. Drawing from American Cyanamid and eBay, he recognized it as a facet of balance of convenience, particularly in life-saving drug cases. The court cited U.S. precedents like Bard and Indian rulings like Hoffmann-La Roche to affirm that public health could temper patent enforcement, potentially through royalty instead of injunction. However, The court found Cipla’s evidence—articles and estimates—lacking specificity on INDACATEROL’s demand shortfall, while Novartis’s affidavit of surplus stock and willingness to increase supply undercut Cipla’s narrative.

Exploring alternatives, The court rejected Cipla’s royalty deposit proposal as inequitable, noting it left Novartis unrewarded during trial despite a prima facie valid patent and infringement. The court also declined to fix royalty , citing inadequate financial data and the Act’s compulsory licensing mechanism as the proper avenue. Balancing Novartis’s statutory rights with Cipla’s public interest plea, he opted for a conditional injunction, restraining Cipla pending a time-bound compulsory licensing decision, if pursued, to ensure neither party’s interests were wholly sacrificed.

Final Decision: On January 9, 2015, The court granted an interim injunction, restraining Cipla from manufacturing or selling INDACATEROL Maleate until either a compulsory licensing application, if filed within two weeks, was decided within six months, or the suit concluded. Cipla could seek modification if successful before the Controller or if a licensing consensus emerged. The order was tentative, leaving final merits and licensing pleas untainted.

Law Settled in This Case: The judgment clarified that public interest grounds under Section 83 of Patent Act (e.g., non-working or unaffordability) are not defenses in patent infringement suits but must be pursued via compulsory licensing under Section 84 before the Controller. However, courts retain equitable discretion to consider public interest as part of balance of convenience, potentially molding relief (e.g., royalty) in life-saving drug cases, though such alternatives require robust evidence and cannot usurp statutory mechanisms.

Case Title: Novartis AG & Anr. Vs. Cipla Ltd.:Date of Order: January 9, 2015:Case No.: CS(OS) 3812/2014: Name of Court: High Court of Delhi at New Delhi: Name of Judge: Hon'ble Justice Shree Manmohan Singh

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

Swarovski India Pvt. Ltd. Vs SPA Agencies:

Swarovski India Pvt. Ltd. Vs SPA Agencies: Date of Order:3rd July, 2009:Case No.:: CS (OS) No. 1342/2004: 2009:DHC:2531: High Court of Delhi: Hon'ble Ms. Justice Aruna Suresh

 

Facts:

The plaintiff, Swarovski India Pvt. Ltd., filed a summary suit under Order 37 of the Civil Procedure Code (CPC) seeking recovery of ₹27,47,587/- from the defendants (SPA Agencies and another). The claim included ₹20,52,995/- as principal for unpaid goods supplied under 15 invoices between October and December 2001, and ₹6,94,592/- as interest at 12% per annum until 30.09.2004. Despite a legal notice dated 24.05.2004, the defendants failed to pay.

Procedural Details:

The defendants entered appearance but failed to file the application for leave to defend within the mandatory 10-day period after service of summons for judgment.

Defendants later filed two applications:

One under Section 5 of the Limitation Act for condonation of delay.

Another under Order 37 Rule 3(5) CPC seeking leave to defend.

The court examined the cause of delay and found that defendants falsely claimed service through publication and failed to prove they were unaware of the proceedings.

The application was filed after almost 60 days, with no sufficient cause shown for delay.

Issue:

Whether the defendants were entitled to condonation of delay and leave to defend the summary suit under Order 37 CPC.

Decision:

The court dismissed both applications, finding no bona fide reason or “sufficient cause” for the delay. It held that the defendants acted with negligence and had deliberately delayed the proceedings.

The statement about publication of summons was found to be false.

Condonation under Section 5 of the Limitation Act was held inapplicable due to the self-contained nature of Order 37 CPC.

Consequently, the court rejected the leave to defend.

Final Order:

Decree passed in favor of the plaintiff for ₹20,52,995/- (principal amount only), with proportionate costs.

Interest awarded at 12% per annum (pendente lite and future) from the date of institution of the suit until realization.

No pre-suit interest was granted as there was no contractual stipulation.

ITC Limited Vs. Pravin Kumar

Case Title: ITC Limited Vs. Pravin Kumar & Ors.:Date of Order: 20 June 2025:Case Number: IP-COM/12/2025:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Brief Facts:

ITC Limited, a well-known manufacturer of cigarettes under the trademark “GOLD FLAKE,” alleged that the defendants were selling counterfeit cigarettes under the brand “GOLD STAG” with deceptively similar packaging, layout, color scheme, and trade dress. ITC asserted long-standing use and copyright/trademark registrations over “GOLD FLAKE” and its associated packaging.

Nature of Dispute:

The dispute centers on trademark infringement, passing off, copyright infringement, and counterfeiting. ITC accused the defendants of coordinated action through interconnected entities to launch infringing products with the word “GOLD” and similar packaging. The defendants argued that “GOLD” is a common, laudatory term and no monopoly can be claimed over it.

Discussion by Judge:

Justice Ravi Krishan Kapur acknowledged that “GOLD” is a laudatory word but noted that the deceptive similarity between the packaging of “GOLD FLAKE” and “GOLD STAG” was prima facie evident. The judge held that ITC's trade dress had acquired distinctiveness through long and uninterrupted use. The court rejected the defendants’ plea to revoke dispensation under Section 12A of the Commercial Courts Act, finding that ITC had acted promptly and no suppression of facts was established. He also dismissed technical objections regarding service under Order 39 Rule 3 CPC and accepted that deferred service was justified due to the nature of the injunction and search orders.

Decision:

The Court allowed ITC’s application for interim injunction and upheld the ad interim orders restraining the defendants from using the impugned mark “GOLD STAG” or deceptively similar packaging. Applications filed by the defendants to vacate the interim order and revoke Section 12A dispensation were dismissed.

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

Jay Baba Bakreswar Rice Mill Pvt. Ltd. Vs. Lunia Marketing Pvt. Ltd

Case Title: Jay Baba Bakreswar Rice Mill Pvt. Ltd. Vs. Lunia Marketing Pvt. Ltd. & Ors.:Date of Order: 16 June 2025:Case Number: FAO No. 8/2025:Neutral Citation: GAHC010025102025:Name of Court: Gauhati High Court (Principal Seat at Guwahati):Name of Judge: Hon’ble Mr. Justice Robin Phukan

Brief Facts:

Lunia Marketing Pvt. Ltd. ("respondent") markets rice under the brand “ARHAM,” for which it holds a registered copyright (No. A-89471/2010) and a trade mark. It developed a distinctive trade dress and packaging widely recognized in the North-Eastern region. In 2024, the respondent received complaints regarding low-quality rice sold using deceptively similar packaging under the brand “JAY BABA,” linked to Jay Baba Bakreswar Rice Mill Pvt. Ltd. ("appellant").

Nature of Dispute:

The respondent alleged that the appellant infringed its copyrighted artistic work and trade dress by using near-identical elements in packaging, including the Swastik symbol, color scheme, and phrases like “100% Pure,” thus deceiving consumers and damaging the respondent’s goodwill. The Trial Court granted an ex parte temporary injunction restraining the appellant from using the impugned packaging, leading the appellant to file this appeal.

Discussion by Judge:

Justice Robin Phukan reviewed the trial court's discretionary grant of injunction and found no perversity or arbitrary exercise. The trial court had applied established legal principles, including prima facie case, balance of convenience, and irreparable harm. The Gauhati High Court affirmed that the respondent had shown sufficient urgency and justification for bypassing pre-institution mediation under Section 12A of the Commercial Courts Act, citing the decision in Yamini Manohar v. T.K.D. Keerthi. The judge rejected the appellant's arguments about forum-shopping and absence of urgency, and noted that both copyright and trade dress infringement had been properly pleaded.

Decision:

The appeal was dismissed. The injunction granted by the trial court on 10 January 2025 was upheld. The matter was remanded to the trial court for final adjudication of the interim injunction application.

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

Saga Lifesciences Limited Vs. Indian Herbo Pharma

Case Title: Saga Lifesciences Limited Vs. Indian Herbo Pharma:Date of Order: 08 April 2025:Case Number: CS(COMM) 319/2025:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

Brief Facts:

The plaintiff, Saga Lifesciences Limited, is a pharmaceutical company established in 1981, certified as a Star Export House and the registered proprietor of the trademark “VITARICH” (Registration No. 5421195, Class 5, with user claim from 25 July 2003). The company has built substantial goodwill and market reputation through continuous use of the mark, marketing, and listing on leading platforms.

Nature of Dispute:

The plaintiff discovered that the defendant, Indian Herbo Pharma, was selling pharmaceutical products under the mark “VITA RICH GOLD,” which is deceptively similar to the plaintiff’s registered mark “VITARICH.” The defendant's products were being sold through similar channels including e-commerce and their own website. The plaintiff claimed this amounted to trademark infringement and passing off.

Discussion by the Judge:

The Court found that the plaintiff had established both statutory and common law rights over the mark “VITARICH.” It held that the defendant’s mark “VITA RICH GOLD” was deceptively similar, differing only by the addition of the laudatory term “GOLD.” The use was in relation to identical products, making it likely to cause confusion and deception. The Court observed that the balance of convenience favoured the plaintiff, and continued use of the impugned mark would cause irreparable harm.

Decision:

An ex parte ad-interim injunction was granted restraining the defendant, its agents, and others from using the impugned mark “VITA RICH GOLD” or any other deceptively similar mark to “VITARICH” in connection with pharmaceuticals and related products, until the next date of hearing.

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

Narender Kumar Sharma Vs. Maharana Pratap Educational Center

Introduction:The case of Narender Kumar Sharma v. Maharana Pratap Educational Center exemplifies this tension, spotlighting the judiciary's approach to delays in refiling legal documents. Decided by the High Court of Delhi on December 13, 2018, this appeal wrestled with the question of whether a delay in refiling a written statement—after its initial timely submission—warranted the drastic consequence of closing the defendant's right to defend.

Detailed Factual Background: The dispute originated in a commercial suit, CS(COMM) 22/2018, filed by Dr. Narender Kumar Sharma and others (the plaintiffs) against Maharana Pratap Educational Center and another (the defendants). The plaintiffs initiated the suit before the High Court of Delhi, and the defendants were served with the summons on January 8, 2018. Under the Code of Civil Procedure (CPC), the defendants had 120 days—until May 8, 2018—to file their written statement, a critical document outlining their defense. The defendants did file their written statement on May 7, 2018, within this statutory period. However, the court registry returned the document due to certain procedural objections, requiring the defendants to refile it after rectification. This refiling process, however, was not completed promptly, leading to a significant delay.

On October 1, 2018, the Joint Registrar, citing the expiration of the 120-day period and the defendants' failure to refile in time, passed an order closing their right to file the written statement. Aggrieved, the defendants appealed this order, arguing that the initial filing was timely and that the delay in refiling should not extinguish their right to defend the suit.

Detailed Procedural Background: The procedural journey of this case unfolded in multiple stages. After the defendants filed their written statement on May 7, 2018, the registry flagged it with objections, a common occurrence in Indian courts where filings must meet stringent formatting and procedural standards. On July 23, 2018, the Joint Registrar noted that the written statement had been filed but returned under objection, implying that the defendants needed to address these issues and refile. However, the defendants did not act swiftly, and the refiling remained pending beyond the initial 120-day window.

On October 1, 2018, the Joint Registrar issued the impugned order, closing the defendants' right to file the written statement, relying on the CPC’s strict timeline for commercial suits. This prompted the defendants to file an appeal (OA No. 154/2018) alongside an application (IA No. 17120/2018) seeking condonation of the delay in filing the appeal itself, citing personal difficulties faced by their counsel. The High Court, presided over by Justice Jayant Nath, heard both matters on December 13, 2018, addressing the condonation application first before delving into the substantive appeal.

Issues Involved in the Case: The case presented two primary issues for adjudication. First, whether the delay in filing the appeal against the Joint Registrar’s order of October 1, 2018, could be condoned given the counsel’s personal circumstances. Second, and more critically, whether the delay in refiling the written statement—after its initial timely filing within 120 days—justified closing the defendants’ right to defend, or if such delay warranted a more lenient judicial approach distinct from delays in initial filing.

Detailed Submission of Parties: The defendants, represented by their counsel, argued that the written statement was filed on May 7, 2018, well within the 120-day period from the service of summons on January 8, 2018. They conceded a delay in refiling after the registry’s objections but emphasized that this was a procedural lapse, not a failure to meet the substantive deadline. Citing the Joint Registrar’s order of July 23, 2018, which acknowledged the initial filing, they contended that the delay in refiling should be treated differently from an initial filing delay. They leaned on judicial precedents to argue that courts have historically adopted a liberal stance toward refiling delays to ensure cases are decided on merits rather than technicalities.

The plaintiffs, represented by their counsel, opposed the appeal vehemently. They argued that refiling after rectifying objections amounted to a fresh filing, and any delay beyond the 120-day limit was fatal under the CPC’s strict timeline for commercial disputes. They relied on the Division Bench ruling in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd., 2015 (X) AD Delhi 378, asserting that refiling constituted a new institution of the document, and thus, the defendants’ failure to refile promptly justified the Joint Registrar’s order. They urged the court to uphold procedural discipline to prevent undue delays in litigation.

Detailed Discussion on Judgments Cited by Parties and Their Context: Several judicial precedents shaped the arguments and the court’s reasoning in this case:

1. S.R. Kulkarni v. Birla VXL Ltd., 1998 (3) RCR (Civil) 436
   Cited by the defendants, this Division Bench judgment of the Delhi High Court distinguished between delays in initial filing and refiling. The court held that refiling delays should be viewed leniently, as they involve procedural corrections rather than substantive defaults. In Kulkarni, the court condoned a refiling delay despite the counsel’s casual approach, noting the absence of mala fide intent and suggesting that costs could compensate the opposing party for any prejudice. The defendants used this to argue that their refiling delay, though negligent, did not warrant forfeiture of their defense.
2. Indian Statistical Institute v. Associated Builders, (1978) 1 SCC 483 : AIR 1978 SC 335
   Another cornerstone for the defendants, this Supreme Court ruling clarified that delays in representing a petition after rectifying defects do not attract the stringent tests of Section 5 of the Limitation Act, which governs initial filing delays. The court emphasized that once a document is filed within the prescribed period, subsequent delays in curing defects should be judged on a less rigorous standard. The defendants invoked this to underscore that their written statement, filed on May 7, 2018, met the initial deadline, rendering the refiling delay a secondary issue.
3. Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd., 2015 (X) AD Delhi 378
   The plaintiffs’ primary authority, this Division Bench decision of the Delhi High Court held that refiling beyond a stipulated period amounted to a fresh filing, subject to limitation constraints. However, the defendants countered that this ruling was overturned by the Supreme Court in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd., (2017) 11 SCC 234. The Supreme Court clarified that Section 34(3) of the Arbitration and Conciliation Act (analogous to CPC timelines) applied only to initial filings, not refilings, and that procedural rules like the Delhi High Court Rules should not mechanically bar refiling extensions. This reversal undermined the plaintiffs’ reliance on the 2015 judgment.

Detailed Reasoning and Analysis of Judge

Justice Jayant Nath began by addressing the condonation application (IA No. 17120/2018). Finding the counsel’s personal difficulties a sufficient cause, he condoned the delay in filing the appeal, disposing of the application swiftly.

Turning to the substantive appeal (OA No. 154/2018), the judge framed the core issue: whether the delay in refiling the written statement, after its timely initial submission, justified closing the defendants’ defense. He noted the undisputed fact that the written statement was filed on May 7, 2018, within 120 days of service on January 8, 2018. The delay occurred in the refiling process, which the plaintiffs argued was equivalent to a fresh filing.

The Court rejected the plaintiffs’ stance, aligning with the defendants’ reliance on S.R. Kulkarni and Indian Statistical Institute. He emphasized that Indian courts have consistently treated refiling delays on a “different footing” from initial filing delays. Quoting Kulkarni, he highlighted that while negligence in refiling is not excusable per se, the absence of mala fide intent and the potential for costs to offset prejudice tilt the scales toward condonation. Similarly, Indian Statistical Institute reinforced that procedural delays post-initial filing do not trigger the Limitation Act’s strictures.

The judge then dismantled the plaintiffs’ reliance on the 2015 Northern Railway judgment by citing its reversal in 2017 by the Supreme Court. The apex court’s ruling clarified that refiling extensions, even beyond procedural norms, do not equate to fresh filings unless mala fide delay is evident. Applying this to the facts, Justice Nath found no evidence of intentional delay by the defendants, attributing the lapse to procedural oversight rather than bad faith.

Balancing justice and discipline, he allowed the appeal, permitting the written statement to be taken on record if refiled within one week, subject to a cost of Rs. 15,000 to compensate the plaintiffs for the delay. This pragmatic approach underscored his commitment to ensuring a trial on merits while penalizing procedural laxity.

Final Decision: The High Court allowed the appeal (OA No. 154/2018) on December 13, 2018. The defendants’ written statement was ordered to be taken on record, provided it was refiled within one week, with a cost of Rs. 15,000 imposed on the defendants.

Law Settled in This Case: This judgment reaffirmed that delays in refiling legal documents, after their timely initial submission, are not subject to the same stringent standards as initial filing delays under the CPC or Limitation Act. Courts may condone such delays absent mala fide intent, often with costs to mitigate prejudice, ensuring that procedural lapses do not unjustly deprive parties of their substantive rights. The ruling harmonized earlier precedents like S.R. Kulkarni and Indian Statistical Institute with the Supreme Court’s clarification in Northern Railway (2017), solidifying a flexible yet disciplined approach to refiling timelines.

Case Title: Narender Kumar Sharma Vs. Maharana Pratap Educational Center:Date of Order: December 13, 2018:Case No.: CS(COMM) 22/2018: Citation: 2018 SCC OnLine Del 13146:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Justice Jayant Nath

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

Dunlop International Limited Vs. Glorious Investment Limited

Survival of a Trademark , post Liquidation process

Introduction:This case explores the critical intersection of trademark law, procedural fairness, and corporate liquidation under Indian jurisprudence. The matter involved the contentious registration of the trademark “DUNLOP” by Glorious Investment Limited, a successor to Dunlop India Ltd., which was undergoing liquidation. The core contention revolved around the legitimacy of assignments executed during liquidation and whether the Registrar of Trademarks complied with the principles of natural justice. The decision of the Calcutta High Court provides crucial judicial interpretation concerning the rights of opponents in trademark opposition proceedings and the procedural conduct expected from administrative authorities.

Factual Background:Dunlop International Limited initiated opposition proceedings against the applications filed by Glorious Investment Limited for the registration of the trademark “DUNLOP” across eight different classes. The applications were filed on a “proposed to be used” basis. Glorious Investment claimed ownership through a series of name changes and alleged assignment deeds originating from Dunlop India Limited, a company that was already ordered to be wound up in related proceedings. The opponents challenged the authenticity and legality of these assignments, asserting that they were executed fraudulently during the liquidation process and that the Registrar erred in recognizing them without adequate scrutiny.

Procedural Background:The trademark applications in question were filed as early as 2008. Oppositions were filed by Dunlop International Limited, and the opposition proceedings remained pending for over a decade. Eventually, in 2024, the Registrar issued orders dismissing the oppositions and allowing registration of the mark “DUNLOP” in favor of Glorious Investment Ltd. The Registrar’s orders claimed to have heard both sides and provided a summary reasoning favoring the applicant. However, the opponents contended that the matter was disposed of arbitrarily, their prayer for adjournment was unfairly denied, and the Registrar failed to engage with serious legal and factual objections, especially those concerning the questionable assignments and the pending liquidation status of Dunlop India Ltd.

Legal Issue:The central legal issues before the Court were whether the Registrar of Trademarks violated principles of natural justice in rejecting adjournments and proceeding with the hearing, whether the orders lacked adequate reasoning to justify the registration of the mark, and whether the alleged assignments executed during the pendency of liquidation were valid and capable of conferring trademark rights to Glorious Investment Limited?

Discussion on Judgments:The appellant relied on Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496, to argue that a quasi-judicial authority is bound to record proper reasons in its order, and a lack thereof constitutes a violation of natural justice. The Supreme Court had emphasized the necessity for reasoned orders as a fundamental tenet of administrative fairness.

In UCO Bank v. Spanco Ltd., 2014 SCC OnLine Bom 1232, the Bombay High Court observed that procedural justice and fairness are essential, especially when public interest and third-party rights are involved. This was relied upon to assert that the Registrar had failed to consider the wider public implications of improperly granting trademark rights to a possibly unauthorized party.

IDBI Bank v. Official Liquidator, (2020) 15 SCC 517, and Dunlop India Ltd. v. E.V. Mathai & Sons, 2013 SCC OnLine Cal 1591, were cited to highlight the ongoing liquidation proceedings involving Dunlop India Ltd. and the legal consequences of assigning assets during such proceedings without the sanction of the Company Court.

In Kia Wang v. Registrar of Trademarks, 2023 SCC OnLine Del 5844, the Delhi High Court had held that fraudulent registration or misuse of procedure in trademark assignments would invalidate the resultant rights. This decision was particularly pertinent given the argument that the assignments were executed by parties with shared interests and lacked genuine arm’s length conduct.

The respondent relied on Armasuisse v. Trade Mark Registry, 2023 SCC OnLine Del 4, to suggest that assignments recorded by the Registrar should not be questioned unless a civil court has declared them invalid. They also cited Cinni Foundation v. Raj Kumar Sah & Sons, ILR (2010) I Delhi 754, to argue that mere procedural defects in forms cannot invalidate a registration.

In addition, Tata Sons Ltd. v. Manoj Dodia, 2011 (40) PTC 244 (Del), and Daimler Benz Aktiengesellschaft v. Hybo Hindustan, AIR 1994 Del 239, were referred to in the context of distinctiveness and well-known trademarks. However, the Court noted that “DUNLOP” was not registered as a well-known mark under Rule 124 and the finding of distinctiveness lacked statutory analysis under Sections 11(6)–(9) of the Trademarks Act, 1999.

Reasoning and Analysis of the Judge:The scrutinized the entire procedural history and highlighted the unusual delay in disposal, stretching over more than a decade. The Court found that the Registrar's denial of adjournment was not in conformity with the rules in place at the time of initiation of proceedings (Trademark Rules, 2002), which did not cap the number of adjournments. The Registrar failed to exercise discretion judiciously, especially when one adjournment was sought due to illness of counsel.

The Judge further found that the orders passed were devoid of proper reasoning. Merely stating that the evidence and documents were considered did not fulfill the obligation to provide a reasoned conclusion. The order lacked any analysis of the evidence submitted or rationale for finding in favor of the applicant.

The Court placed strong emphasis on the questionable nature of the assignments executed while Dunlop India Ltd. was in liquidation. These transactions, executed by the same advocates for both assignor and assignee, cast serious doubt on the genuineness and validity of the documents. The absence of notice to the Official Liquidator or affected parties further invalidated the process under Section 45 of the Trademarks Act, 1999.

The Judge also underscored that administrative discretion must not result in procedural unfairness and that failure to deal with allegations of fraud, even if raised late, vitiates the entire proceedings. The Deputy Registrar’s attempt to create a facade of procedural compliance, despite effectively denying the opponent a meaningful hearing, was severely criticized.

Final Decision:The Calcutta High Court set aside all the impugned orders passed by the Registrar in IPDTMA No. 14 of 2024 to IPDTMA No. 21 of 2024. The matters were remanded for fresh consideration, with directions to provide a fair opportunity of hearing to all parties. The Registrar was instructed to conclude the rehearing process within three months from the date of communication of the order. The Court clarified that its observations were tentative and did not prejudice the merits of the case, which were left open for adjudication in accordance with law.

Law Settled in This Case:The judgment affirms that trademark opposition proceedings must strictly comply with the principles of natural justice, including granting reasonable adjournments and issuing well-reasoned orders. It reiterates that procedural fairness cannot be sacrificed for the sake of formal compliance. Where allegations of fraud, improper assignment, or procedural abuse are raised, even at a late stage, administrative authorities must give such concerns due consideration. The case also highlights the limited jurisdiction of the Registrar under Section 45 of the Trademarks Act, especially where the validity of assignments executed during liquidation is challenged.

Case Details: Dunlop International Limited Vs. Glorious Investment Limited & Anr.:Date of Order: 11 June 2025:Case Number: IPDTMA/14/2024 (with connected appeals: IPDTMA/15/2024 to IPDTMA/21/2024):Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division):Name of Judge: Hon’ble Justice Ravi Krishan Kapur

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

Intercon Recyclopolis Pvt. Ltd. Vs. Bank of Baroda

Case Title:Intercon Recyclopolis Pvt. Ltd. & Anr. Vs. Bank of Baroda & Ors.: Date of Order::14th December, 2023: Case No.:W.P.(C) 4971/2015:2023:DHC:9121-DB: Hon'ble Mr. Justice Vibhu Bakhru

Hon'ble Mr. Justice Amit Mahajan

Facts:

The petitioners challenged the ex-parte final order dated 24.01.2013 passed by the Debts Recovery Tribunal-II (DRT), Delhi in O.A. No. 59/2012, by which a recovery certificate of ₹12,18,67,058/- was issued against them. They filed an application (M.A. No. 81/2013) before the DRT for recall of the ex-parte order, claiming they were not served with summons. This application was dismissed. Their subsequent appeal to the Debts Recovery Appellate Tribunal (DRAT) was also dismissed.

Procedural History:

20.09.2012 – Petitioners proceeded ex-parte in O.A. No. 59/2012 before DRT.

24.01.2013 – Ex-parte final order passed by DRT; recovery certificate issued.

14.10.2013 – DRT dismisses recall application (M.A. No. 81/2013).

27.03.2015 – DRAT dismisses appeal against the DRT’s dismissal.

14.12.2023 – Delhi High Court dismisses W.P.(C) 4971/2015.

Issues:

Whether the petitioners were properly served with notice in the original recovery proceedings, and if the ex-parte order and subsequent denial of recall by DRT and DRAT were justified.

Decision:

The High Court upheld the decisions of the DRT and DRAT. It held:

Petitioners were served via personal service (refused by them), publication in The Statesman, and through their counsel via service of reply in related proceedings.

The procedural requirement under Section 21 of the Recovery of Debts and Bankruptcy Act, 1993 to deposit 50% of the debt for appeal was not complied with.

The petition appeared to be an attempt to delay recovery proceedings.

Petition was dismissed as unmerited.

National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd.

Introduction:  Decided by the Supreme Court of India on May 7, 1953, this landmark judgment not only resolved a dispute over the registration of a trade mark but also clarified the scope of appellate jurisdiction under the Letters Patent of the Bombay High Court. At its heart, the case pitted an Indian company’s “Vulture Brand” against an English rival’s iconic “Eagle Mark,” raising questions of deception, confusion, and the finality of judicial decisions in trade mark disputes.

Detailed Factual Background: The appellant, National Sewing Thread Co. Ltd., was an Indian entity incorporated under the Indian Companies Act, 1913, with its registered office in Chidambaram, South Arcot District, Madras. The respondent, James Chadwick & Bros. Ltd. (later assigned to J. & P. Coats Ltd.), was a British company based in Bolton, England. Since 1896, the respondents had marketed their sewing thread in India under the “Eagle Mark,” a trade mark featuring an eagle with outspread wings, widely recognized as “Eagley” or “Eagle” goods.

Around 1940, the appellants entered the market with their own sewing thread, adopting a trade mark depicting a bird with fully spread wings perched on a cotton cylinder, accompanied by the words “Eagle Brand.” The respondents objected, prompting the appellants to amend their mark by replacing “Eagle Brand” with “Vulture Brand” in 1942, though the bird’s design remained largely unchanged. The respondents, seeking to protect their market reputation, initiated a passing-off action against the appellants in the District Court of South Arcot. This action failed due to insufficient evidence that the appellants’ goods were likely to be mistaken for the respondents’, leaving the respondents’ grievances unaddressed. Undeterred, the appellants applied to the Registrar of Trade Marks, Bombay, in 1942 to register their “Vulture Brand” mark under Class 23 of the Trade Marks Act, 1940, claiming use since 1939. The respondents opposed this application, setting the stage for a protracted legal battle.

Detailed Procedural Background: The procedural odyssey began when the Registrar of Trade Marks, on September 2, 1949, upheld the respondents’ opposition and rejected the appellants’ application, finding that the “Vulture Brand” mark closely resembled the “Eagle Mark” and was likely to deceive or confuse the public. The appellants appealed this decision to the Bombay High Court under Section 76 of the Trade Marks Act, 1940. On August 28, 1950, exercising original jurisdiction, reversed the Registrar’s order, directing the registration of the appellants’ mark.

The respondents appealed this ruling to a Division Bench of the Bombay High Court under Clause 15 of the Letters Patent, which permits appeals from a single judge’s judgment. On March 19, 1951, the Division Bench overturned Bombay High Court Single Judge’s decision, restoring the Registrar’s refusal. The appellants then sought and obtained a certificate under Section 109(c) of the Civil Procedure Code, enabling an appeal to the Supreme Court of India.

Issues Involved in the Case: The case presented two pivotal issues. First, whether Single Judge’s judgment, rendered in an appeal under Section 76 of the Trade Marks Act, was appealable to a Division Bench under Clause 15 of the Bombay Letters Patent? Second, whether the Registrar’s discretion to refuse registration of the appellants’ trade mark—on grounds of likelihood of deception or confusion—was correctly exercised?

Detailed Submission of Parties: The appellants contended that Single Judge’s judgment was not appealable under Clause 15, as the Trade Marks Act, 1940, created a distinct appellate jurisdiction not governed by the Letters Patent or Section 108 of the Government of India Act, 1915. They relied on Indian Electric Works v. Registrar of Trade Marks (A.I.R. 1947 Cal. 49), where the Calcutta High Court held that appeals under the Trade Marks Act were outside the Letters Patent’s ambit. On merits, they asserted that their “Vulture Brand” mark, distinct in name and get-up from the respondents’ “Eagle Mark,” posed no risk of confusion. They further argued that the Madras High Court’s dismissal of the passing-off action conclusively established no likelihood of deception, binding the Registrar and subsequent courts.

The respondents maintained that Section 76 conferred appellate jurisdiction on the High Court, to be exercised per its established rules, including Clause 15 appeals, citing National Telephone Co. v. Postmaster General ([1913] A.C. 546) and Privy Council precedents like R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar (74 I.A. 264). On merits, they argued that the appellants’ mark, despite the “Vulture” label, visually mimicked an eagle, risking confusion with their well-known “Eagle Mark.” They emphasized that passing-off and registration proceedings involve distinct considerations, rendering the Madras ruling irrelevant.

Detailed Discussion on Judgments Cited by Parties and Their Context: The parties invoked several precedents, each shaping the court’s analysis:

1. National Telephone Co. v. Postmaster General, [1913] A.C. 546
   Cited by the respondents, this House of Lords decision held that when a statute directs an appeal to an established court without specifying procedure, the court’s ordinary rules—including appeal rights—apply. The respondents used this to argue that Section 76 appeals to the High Court carried Clause 15 appeal rights.
2. R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar, (1947) 74 I.A. 264
   A Privy Council ruling, also relied upon by the respondents, it affirmed that appeals to ordinary courts under special statutes follow the court’s procedural norms unless excluded. This bolstered their claim that Justice Shah’s judgment was appealable.
3. Secretary of State v. Chellikani Rama Rao, (1916) I.L.R. 39 Mad. 617
   Another Privy Council decision cited by the respondents, it held that appeals to district courts under the Madras Forest Act followed civil procedure rules, supporting the applicability of Clause 15 to Trade Marks Act appeals.
4. Indian Electric Works v. Registrar of Trade Marks, A.I.R. 1947 Cal. 49
   The appellants’ key authority, this Calcutta High Court ruling deemed Trade Marks Act appeals outside the Letters Patent’s scope, arguing that Section 108 of the Government of India Act, 1915, applied only to pre-existing jurisdiction. The respondents urged its overruling.
5. Secretary of State v. Mask & Co., (1940) 67 I.A. 222
   Cited by the appellants to distinguish their case, this Privy Council decision held that statutory remedies under the Sea Customs Act excluded civil court jurisdiction. The respondents clarified its irrelevance, as the Trade Marks Act designated the High Court as the appellate forum without finality clauses.
6. The Gurdwara Case, (1936) 63 I.A. 180
   Referenced by the appellants to contrast jurisdictions, this Privy Council ruling applied National Telephone principles to Gurdwara Tribunal appeals. The respondents leveraged it to align Trade Marks Act appeals with general appellate jurisdiction.

Detailed Reasoning and Analysis of Judge: The Supreme rejected the appellants’ contention that Single Judge’s decision was unappealable, affirming that Section 76 of the Trade Marks Act, by conferring appellate jurisdiction on the High Court without procedural specifics, imported the court’s ordinary rules, including Clause 15 of the Letters Patent. Drawing on National Telephone, Adaikappa Chettiar, and Chellikani Rama Rao, the Supreme Court held that Appellate courts exercise statutory appellate jurisdiction per their charters unless expressly excluded. The Supreme Court dismissed the appellants’ reliance on Indian Electric Works, overruling it as a “narrow and restricted” interpretation of Section 108, which the court deemed an enabling provision applicable to both existing and future jurisdictions, reinforced by Article 225 of the Constitution of India, 1950.

On merits the court upheld the Registrar’s discretion under Section 8 of the Trade Marks Act, which prohibits registration of marks likely to deceive or cause confusion. The Supreme Court emphasized that the appellants bore the burden of proving their mark’s distinctiveness, a test not met by mere comparison with the respondents’ mark but by assessing its impact on an average purchaser. He found the appellants’ bird—despite being labeled a “vulture”—visually akin to an eagle, risking confusion with the respondents’ “Eagle Mark,” a conclusion supported by the appellants’ prior “Eagle Brand” usage. He distinguished the Madras passing-off ruling, noting that passing-off focuses on actual deception in trade, whereas registration assesses potential confusion, rendering the earlier decision non-binding.

Final Decision: The Supreme Court dismissed the appeal on May 7, 1953, affirming the Division Bench’s restoration of the Registrar’s refusal to register the appellants’ “Vulture Brand” mark, with costs awarded to the respondents.

Law Settled in This Case: The judgment settled two key principles. First, appeals under Section 76 of the Trade Marks Act, 1940, to a High Court are governed by the court’s ordinary procedural rules, including Letters Patent appeals from a single judge to a Division Bench, unless the statute explicitly provides otherwise. Second, the likelihood of deception or confusion under Section 8 is an independent inquiry for trade mark registration, distinct from passing-off considerations, placing the onus on the applicant to prove distinctiveness based on public perception, not just comparison with existing marks.

Case Title: National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd.: Date of Order: May 7, 1953: Case No.: Civil Appeal No. 135 of 1952:  Citation: 1953 AIR 357, 1953 SCR 1028: Name of Court: Supreme Court of India: Name of Judge: Hon'ble Justice Mehr Chand Mahajan , Justices Vivian Bose and B. Jagannadhadas

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

Crompton Greaves Consumer Electricals Limited Vs. Bali Ram

Crompton Greaves Consumer Electricals Limited Vs. Bali Ram Trading : May 28, 2025: C.O.(COMM.IPD-TM) 243/2021 : 2025:DHC:4527: High Court of Delhi:Hon'ble Mr. Justice Saurabh Bannjee

Brief Facts: Crompton Greaves has been using the ‘CROMPTON GREAVES’ trademark since 1943, which is well-known. The respondent registered the mark ‘CROMPTON’ in 1986 in Class 21 while the petitioner’s mark was already registered. The petitioner alleged that the respondent's mark is identical, similar, and likely to cause confusion, encroaching upon the petitioner’s goodwill.

Decision: The court held that the petitioner is the prior adopter and registered proprietor of the ‘CROMPTON GREAVES’ mark and that the respondent's registration of ‘CROMPTON’ was contrary to the law. The court ordered the removal of the respondent’s ‘CROMPTON’ mark from the Trademark Register.

Law Settled: The court relied on Sections 11(1) and 11(2) of the Trade Marks Act, 1999, and concluded that the registration was improperly granted, supporting the petitioner’s case under Sections 57(2) and 47(1) of the Act, based on prior user, registration, and reputation of the mark.

ITC Limited Vs. The Controller of Patents

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

Fact of the Case:

ITC Limited filed an application for a patent titled “A Heater Assembly to Generate Aerosol,” designed for handheld aerosol-generating devices. The Patent Office (Controller) rejected ITC’s patent application under Section 3(b) of the Patents Act, 1970, on grounds that the invention allegedly caused serious prejudice to human life, health, public order, and morality. ITC challenged this rejection before the Calcutta High Court, asserting that the Controller's decision was legally flawed, lacked proper reasoning, and was based on extraneous and unshared documents.

Legal Issue

The core legal issues were:Whether the Controller's rejection of the patent application under Section 3(b) was justified, especially regarding the grounds of public health and morality? Whether the Controller adhered to principles of natural justice by providing proper reasons and opportunity to respond to new evidence.Whether the interpretation of Section 3(b), as well as reliance on constitutional provisions and ethical considerations, was appropriate under Indian patent law.

Reasoning

The Court observed that:

• The Controller’s order lacked detailed reasoning and appeared to rely heavily on subjective notions about public morality and health without citing scientific or technical evidence.
• The Controller relied on documents surfaced for the first time in the order; no prior opportunity was given to ITC to address these.
• The order interpreted Section 3(b) too broadly, conflating moral and ethical concerns with patentability criteria.
• The Court emphasized that the law does not permit the Controller to base rejection solely on perceived societal harm without scientific backing or specific legislative guidance.
• The Court also noted that invoking constitutional Articles (such as Article 47) and framing the matter as a moral issue was misplaced, as patent law is a statutory regime that should be interpreted within legal bounds, not on moral judgments.
• The Court remanded the matter for re-evaluation, emphasizing the need for proper explanation, adherence to natural justice, and law-based reasoning.  

Decision

The Court quashed the Controller's order, set aside the rejection, and remanded the case for a fresh hearing, as the original order lacked transparent reasoning and procedural fairness. The Court clarified that the interpretation of Section 3(b) should not be used arbitrarily to deny patents based on subjective moral or health concerns without scientific rationale.

Under Armour, Inc. Vs. Anish Agarwal

Introduction: The case of Under Armour, Inc. Vs. Anish Agarwal & Anr. represents a significant adjudication in the realm of trademark law in India, focusing on the principles of trademark infringement and passing off under the Trade Marks Act, 1999. This case involves a dispute between Under Armour, Inc., a globally recognized American sportswear company, and the respondents, Anish Agarwal and his company, who were using the mark "AERO ARMOUR" for apparel. The core contention was whether the respondents’ mark was deceptively similar to Under Armour’s registered trademark "UNDER ARMOUR," leading to potential consumer confusion. The appeal before the High Court of Delhi arose from a Single Judge’s order denying a complete interim injunction, prompting the appellate court to examine the doctrines of initial interest confusion, dishonest adoption, and the scope of trademark protection for well-known marks. 

Factual Background: Under Armour, Inc., a company incorporated in the United States in 1996, is a prominent manufacturer and distributor of sports apparel, casual apparel, footwear, and related products. The company, founded by Kevin Plank, entered the Indian market in 2017 through Amazon Fashion and opened its first retail store in New Delhi in 2019. Under Armour holds multiple trademark registrations in India and globally, including the word mark "UNDER ARMOUR" and various formative marks such as "GAMEDAY ARMOUR," "ARMOURVENT," and "UA." These marks are registered under various classes, including Class 9, 18, 25, 28, 35, 41, and 42, covering apparel, footwear, and related services. Notably, the standalone word "ARMOUR" is not registered in India but is registered in jurisdictions like the United States, European Union, and Canada. Under Armour’s trademarks are globally recognized, associated with significant goodwill due to extensive advertising, sponsorships, and their use in blockbuster movies.

The respondents, Anish Agarwal (a director and promoter) and his company, operate in India, manufacturing and selling clothing and footwear under the trademark "AERO ARMOUR." They also use a logo combining a shield, airplane, and stripes, reflecting military and aviation themes. Their products, primarily casual apparel, feature designs inspired by the Indian armed forces, with taglines like "WEAR YOUR VALOUR" and "WEAR YOUR PRIDE." The respondents applied for registration of "AERO ARMOUR" under Class 25 in India, which Under Armour opposed, alleging deceptive similarity with its trademarks. The respondents’ products are sold at a significantly lower price point (e.g., ₹799 for T-shirts) compared to Under Armour’s products (e.g., ₹2,000 for similar items), raising concerns about trademark dilution.

Procedural Background:Under Armour initiated a suit, CS(COMM) 843/2023, against the respondents in the High Court of Delhi, alleging trademark infringement, passing off, and copyright infringement. The company sought an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to restrain the respondents from using "AERO ARMOUR" and "AERO ARMR" or any deceptively similar marks. The Single Judge, in an order dated May 29, 2024, disposed of the application by imposing limited restrictions on the respondents’ use of their marks but declined to grant a full injunction. The Single Judge reasoned that there was no likelihood of confusion due to differences in the products’ themes (sports apparel for Under Armour versus military-themed casual apparel for the respondents), distinct market channels, and the sophistication of modern consumers. The respondents undertook not to use "ARMR" or place "AERO ARMOUR" on sleeves in a manner similar to Under Armour’s branding.

Aggrieved by the partial relief, Under Armour filed an intra-court appeal under Section 13 of the Commercial Courts Act, 2015, read with Order XLIII Rule 1 of the Code of Civil Procedure, 1908, challenging the Single Judge’s order.  The appellant argued that the Single Judge misapplied the test of initial interest confusion and failed to recognize the deceptive similarity between "AERO ARMOUR" and "UNDER ARMOUR," particularly given the respondents’ alleged dishonest adoption of the mark.

Legal Issue: The primary legal issue in this case was whether the respondents’ use of the mark "AERO ARMOUR" constituted trademark infringement or passing off under the Trade Marks Act, 1999, particularly Section 29, by being deceptively similar to Under Armour’s registered trademark "UNDER ARMOUR." A related issue was whether the respondents’ adoption of the mark was dishonest, warranting an interim injunction. The court was tasked with determining whether the Single Judge erred in denying a full injunction, especially in light of the doctrine of initial interest confusion and the protection afforded to well-known trademarks.

Discussion on Judgments: The court referenced several judgments to analyze the issues of trademark infringement, initial interest confusion, and dishonest adoption. The appellant relied on Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd. (2023:DHC:2711), where a Single Judge of the Delhi High Court granted an injunction against the mark "STREET ARMOUR" for being deceptively similar to "UNDER ARMOUR." The court in that case emphasized initial interest confusion, holding that a customer of average intelligence and imperfect recollection could be confused by the defendant’s mark, even if the confusion was resolved before purchase. The Division Bench found this precedent relevant, noting the phonetic and structural similarity between "AERO ARMOUR" and "UNDER ARMOUR," particularly in the use of "ARMR" and sleeve placement.

The respondents’ defense was addressed through Institute Europeen D. Administration Des Affaires, Insead v. Fullstack Education Pvt. Ltd.* (2023 SCC OnLine Del 3016), where the Delhi High Court held that phonetic similarity between "INSEAD" and "INSAID" could cause initial interest confusion, even among sophisticated consumers like students. The court clarified that consumer sophistication does not preclude confusion, as modern business trends like licensing and mergers may lead consumers to assume an association between similar marks. This case supported the appellant’s argument that even brief confusion satisfies the infringement test under Section 29.

The court also cited Midas Hygiene Industries (P.) Ltd. v. Sudhir Bhatia & Ors. ((2004) 3 SCC 90), where the Supreme Court held that dishonest adoption of a mark warrants an injunction, even if there is a delay in bringing the action. This precedent was pivotal in the court’s finding that the respondents’ adoption of "AERO ARMOUR," given its similarity to "UNDER ARMOUR" and Under Armour’s global reputation, was prima facie dishonest.

Additional cases referenced included Baker Hughes ((1998) 74 DLT 745), which discussed the irrelevance of consumer sophistication in preventing initial confusion, and Mobil Oil Corp. Vs. Pegasus Petroleum Corp., where the U.S. court recognized that initial confusion could harm the trademark owner by attracting customers to a competitor’s product. Similarly, Lois Sportswear, USA Inc. v. Levi Strauss & Co. and Wincharger Corporation v. Rinco, Inc. (297 F.2d 261 (1962)) were cited to underscore that sophisticated consumers are not immune to confusion, especially when marks are highly similar. The court distinguished John Hayter Motor Undertaking Agencies Ltd. v. RBHS Agencies Limited ([1977] 2 Lloyd’s Rep. 105), rejecting its view that sophisticated consumers are unlikely to be confused, as it conflicted with the principle of initial interest confusion.

Reasoning and Analysis of the Judge:The Division Bench conducted a thorough analysis of the Single Judge’s order and the principles of trademark law. The court found that the Single Judge erred in concluding that there was no likelihood of confusion, particularly by misapplying the doctrine of initial interest confusion. The Bench emphasized that Section 29 of the Trade Marks Act does not require prolonged confusion; even transient confusion or "wonderment" at the initial stage is sufficient to establish infringement. The Single Judge had acknowledged that customers might experience transient wonderment upon encountering "AERO ARMOUR" but assumed that informed consumers would resolve this confusion through further inquiry. The Division Bench rejected this reasoning, holding that the mere occurrence of initial confusion, even if brief, satisfies the infringement criteria under Section 29(2).

The court further analyzed the similarity between the marks, noting that "AERO ARMOUR" and "UNDER ARMOUR" share phonetic and visual similarities, particularly due to the dominant word "ARMOUR" and the respondents’ use of "ARMR," which mirrored Under Armour’s branding. The placement of "AERO ARMOUR" on the sleeves of T-shirts, similar to Under Armour’s practice, reinforced the likelihood of confusion. The Bench disagreed with the Single Judge’s reliance on the anti-dissection rule, which prohibits analyzing parts of a trademark in isolation, as the overall commercial impression of the marks was deceptively similar.

On the issue of dishonest adoption, the court found prima facie evidence that the respondents knowingly adopted a mark similar to "UNDER ARMOUR," given the appellant’s global reputation and the respondents’ operation in the apparel industry. The respondents’ claim that "AERO ARMOUR" was inspired by aeronautics and military themes was deemed insufficient to negate the inference of dishonest intent, especially since they used the mark in a manner mimicking Under Armour’s branding. The court relied on Midas Hygiene to assert that dishonest adoption warrants an injunction.

The Bench also addressed the Single Judge’s distinction between sports apparel (Under Armour) and casual apparel (respondents), finding it unpersuasive. Both parties operated in the apparel market, used similar trade channels, and targeted overlapping consumer bases, increasing the likelihood of confusion. The significant price difference (₹2,000 vs. ₹799 for T-shirts) was seen as potentially diluting Under Armour’s brand, further supporting the need for an injunction.

Final Decision: The Division Bench allowed the appeal, setting aside the Single Judge’s order dated May 29, 2024. The court granted an interim injunction, restraining the respondents from using the marks "AERO ARMOUR," "AERO ARMR," or any other mark deceptively similar to "UNDER ARMOUR" until the disposal of the suit. All pending applications were disposed of, and the court directed that the issues would be finally adjudicated at trial.

Law Settled in This Case: The case clarified several key principles of trademark law in India. First, it established that initial interest confusion, even if transient, constitutes trademark infringement under Section 29 of the Trade Marks Act, 1999. The duration of confusion is irrelevant; the mere likelihood of a customer associating the impugned mark with the registered mark, even briefly, satisfies the infringement test. Second, the court affirmed that dishonest adoption of a mark, particularly one that mimics a well-known trademark’s phonetic, visual, or structural elements, warrants an interim injunction, as per Midas Hygiene Industries (P.) Ltd. v. Sudhir Bhatia & Ors. Third, the strength of a trademark determines the degree of protection, requiring new entrants to maintain a greater distance from well-known marks to avoid infringement. Fourth, consumer sophistication does not preclude infringement, as even informed consumers may experience initial confusion due to modern business practices like licensing or mergers. Finally, the court emphasized that the global appreciation test, when applied correctly, considers the overall commercial impression of marks, including their use in similar trade channels, to assess the likelihood of confusion.

Case Detail: Under Armour, Inc. Vs . Anish Agarwal: May 23, 2025:FAO(OS) (COMM) 174/2024: 2025:DHC:4243:High Court of Delhi: Hon'ble Mr. Justice Vibhu Bakhru and Hon'ble Mr. Justice Sachin Datta

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

SML Limited Vs. Mohan & Company & Anr.

Case Title: SML Limited Vs. Mohan & Company & Anr.:Date of Order: 6 June 2025:Case Number: OMP No. 320 of 2023 in COMS No. 6 of 2023:Neutral Citation: 2025:HHC:18160:Name of Court: High Court of Himachal Pradesh, Shimla:Name of Judge: Hon’ble Mr. Justice Sandeep Sharma

Very Brief Facts:SML Limited, the plaintiff, is the assignee and holder of Indian Patent No. 282092 titled “Agricultural Composition.” It launched a patented fertilizer product under the brand name “Techno Z.” The defendants allegedly infringed this patent by manufacturing and marketing a similar product under the brand name “Aladdin,” which SML claimed fell within the scope of its patent claims, particularly Claims 11 and 12.

Dispute:The primary dispute was whether the defendants’ product “Aladdin” infringed the plaintiff’s patent and whether the plaintiff was entitled to interim relief by way of injunction under Order XXXIX Rules 1 and 2 of CPC. The defendants challenged the validity of the patent, raised jurisdictional objections, and argued that their product complied with government-mandated fertilizer standards under the Fertilizer Control Order (FCO), not covered by the patent.

Discussion by Judge:The Court carefully examined whether the defendants’ product prima facie fell within the patented claims, relying on expert analysis, claim construction, and comparisons of composition and particle sizes. The judge considered the presumption of patent validity for long-standing patents, the credibility of the defendant’s challenge under Sections 3(d), 2(1)(ja), and 64 of the Patents Act, and public interest arguments under the Essential Commodities Act.

The Court found that the plaintiff demonstrated a prima facie case of infringement and that the defendants failed to raise a sufficiently credible challenge to the patent’s validity at the interim stage. It held that regulatory compliance under FCO could not override proprietary rights under the Patents Act and that balance of convenience favored the patentee.

Decision:The Court granted an interim injunction restraining the defendants from manufacturing, selling, offering for sale, importing, or exporting the allegedly infringing product “Aladdin” or any other product covered under Patent No. 282092. The injunction was to continue until further orders.

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

Case Title: Procter & Gamble Hygiene and Health Care Ltd. & Anr. Vs. State of Himachal Pradesh & Ors.: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

Very Brief Facts:The informant claimed to have developed and patented a method of dyeing textiles using herbal extracts like neem and holy basil. He submitted his technology to Procter & Gamble (P&G) through their Connect + Develop program. Later, P&G launched a sanitary napkin product allegedly using the submitted herbal formulation. The informant filed a criminal complaint alleging misuse of his patented technology.

Dispute:The central issue was whether the FIR, registered pursuant to a Magistrate's direction under Section 156(3) CrPC, should be quashed. P&G argued that the allegations were purely civil in nature (related to patent infringement), no criminal intent was present, and that no confidentiality or contractual relationship existed between the parties. The complaint, they contended, was an abuse of the criminal justice process.

Discussion by Judge:The Court considered whether the ingredients of cheating and criminal breach of trust under Sections 415, 420, and 405 IPC were made out. It concluded that both offences could not co-exist as they require distinct intent, and neither was satisfied here. The Judge emphasized that patent infringement is a civil issue, and the FIR lacked sufficient basis to constitute a criminal offence. The criminal complaint was seen as an attempt to harass and pressurize the petitioners in a civil dispute.

Decision:The High Court quashed the FIR and all consequential proceedings, holding that the allegations did not disclose any cognizable offence. It ruled the proceedings amounted to an abuse of process and interfered under Section 482 CrPC.

ITC Limited Vs. The Controller of Patents Designs and Trademark

Case Title: ITC Limited Vs. The Controller of Patents Designs and Trademark:Date of Order: 20 May 2025:Case Number: IPDPTA/13/2024

Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division):Name of Judge: Hon’ble Justice Ravi Krishan Kapur

Very Brief Facts:ITC Limited filed an appeal against the order of the Patent Controller dated 21 August 2024, which rejected their patent application for “A Heater Assembly to Generate Aerosol.” The invention was designed to provide uniform heat distribution for aerosol-generating devices and was not necessarily limited to tobacco-based substrates.

Dispute:The Controller rejected the patent under Section 3(b) of the Patents Act, 1970, claiming the invention was contrary to public order and morality and caused serious prejudice to human health. ITC argued that the Controller misconstrued the invention, wrongly presumed it was limited to tobacco use, and relied on documents not disclosed during proceedings, thereby violating principles of natural justice.

Discussion by Judge:The Court found the Controller's approach flawed, emphasizing that the invention was not necessarily tobacco-based and its use could vary. The impugned order lacked proper reasoning, misapplied Section 3(b), and inappropriately invoked Article 47 of the Constitution and other moral grounds without scientific evidence. The Judge clarified that patent rights are exclusionary—not a license to commercialize. Citing both national and international precedents, the Court underscored that denial of a patent must be based on objective, legal, and technical grounds, not moral or speculative assumptions. Additionally, the Controller erred in using external documents without providing the applicant a chance to respond.

Decision:The High Court set aside the impugned order and remanded the matter to the Controller for fresh consideration within three months. All issues were kept open for decision afresh in accordance with law, with no expression on the merits by the Court.

Inbrew Beverages Pvt. Ltd. Vs. Mount Distilleries Ltd

Case Title: Inbrew Beverages Pvt. Ltd. Vs. Mount Distilleries Ltd.:Date of Order: 3rd June 2025:Case Number: WP(C) No. 31 of 2024: Neutral Citation: 2025 SCC OnLine Sikk 48:Name of Court: High Court of Sikkim, Gangtok (Civil Extraordinary Jurisdiction): Name of Judge: Hon’ble Mrs. Justice Meenakshi Madan Rai

Very Brief Facts:Inbrew Beverages Pvt. Ltd., having taken over United Spirits Ltd. (USL), filed a suit for trademark infringement and related reliefs concerning their brand “Honey Bee.” During the final stages of trial, they sought permission to place on record certified copies of certain trademark registrations, a design registration, a usership agreement, and a CA certificate—documents previously submitted only as photocopies.

Dispute:The dispute arose over whether the petitioner could be permitted to file certified copies of documents at a very late stage—after conclusion of evidence and commencement of final arguments—under Order XI Rule 1(5) of the Civil Procedure Code, 1908 as applicable in commercial suits. The Commercial Court had rejected the petitioner’s application, prompting the writ petition under Article 227 of the Constitution.

Discussion by Judge:Court examined the statutory bar under Section 8 of the Commercial Courts Act, 2015 against petitions challenging interlocutory orders but clarified that Article 227 jurisdiction remains unaffected. The Court agreed that the documents in question were not "additional documents" as they had been initially filed as photocopies and were clearly within the petitioner's possession from the outset. The Court held that Order XI Rule 1(5) CPC does not apply when documents were already known and not subsequently discovered. Allowing their certified versions now would unfairly prejudice the respondent by permitting rectification of evidentiary gaps after conclusion of trial.

Decision:

The writ petition was dismissed. The High Court declined to interfere with the Commercial Court’s refusal to accept the documents, stating that no procedural irregularity or grave injustice had occurred warranting intervention under Article 227.

Dunlop International Limited Vs. Glorious Investment Limited

Dunlop International Limited Vs. Glorious Investment Limited: 11 June 2025: IPDTMA/14/2024 (heard along with IPDTMA/15–21/2024):High Court at Calcutta,

Hon'ble Justice Ravi Krishan Kapur

Very Brief Facts:

Dunlop International Ltd. opposed the registration of the mark “DUNLOP” by Glorious Investment Ltd. in eight different trademark classes. The Registrar of Trademarks rejected Dunlop's oppositions and allowed Glorious Investment’s applications. Dunlop challenged these orders, alleging fraudulent assignment of trademarks, procedural irregularities, and that the orders were passed without a fair hearing, particularly while the predecessor company (Dunlop India Ltd.) was under liquidation.

Issues:

Whether the Registrar violated principles of natural justice by refusing adjournment and proceeding without a proper hearing.

Whether the assignments to Glorious Investment Ltd. were valid in light of Dunlop India Ltd.'s liquidation. Whether the Registrar's orders were legally sustainable, given their lack of reasoning and failure to consider material facts and applicable law.

Discussion by Judge:

The Court held that the Registrar violated the principles of natural justice by refusing a fair hearing and proceeding arbitrarily. The orders lacked proper reasoning and failed to address serious allegations regarding fraudulent assignments, misuse of procedural forms, and the legal effect of liquidation. The Court criticized the superficial findings on distinctiveness and the well-known status of the mark "DUNLOP." The Judge emphasized that procedural rules are meant to aid justice, not frustrate it.

Decision:All the impugned orders were set aside. The matters were remanded to the Registrar for fresh consideration, after giving a proper opportunity of hearing to all parties. The Registrar was directed to conclude the proceedings within three months from the communication of the Court's order. All legal and factual issues were kept open for decision afresh in accordance with law.