T.E. Thomson & Company Limited Vs. Swarnalata Chopra

T.E. Thomson & Company Limited Vs. Swarnalata Chopra Nee Kapur & Anr.:Date of Order: 18th June, 2025:Case Number: CS (COM) No. 4 of 2023:Court: High Court at Calcutta (Commercial Appellate Division), Original Side:Judges: Hon’ble Justice Soumen Sen and Hon’ble Justice Smita Das De

Very Brief Facts: The plaintiff filed a suit for eviction of the defendant from a commercial property after termination of the lease by a notice under Section 106 of the Transfer of Property Act, 1882. The dispute was whether the suit qualifies as a "commercial dispute" under Section 2(1)(c)(vii) of the Commercial Courts Act, 2015.

Dispute:Whether eviction suits filed after lease termination via Section 106 of the Transfer of Property Act can be treated as “commercial disputes.”

Conflict arose with a previous decision (Deepak Polymers Pvt. Ltd.), which had held that such suits are not commercial disputes as they arise solely from a statutory right.

Discussion by the Court:The judges considered legislative intent, the expansive interpretation of "arising out of" and "relating to" under the Commercial Courts Act, and the role of the lease agreement even after its termination.

The court analyzed conflicting decisions and jurisprudence, emphasizing the need to interpret Section 2(1)(c)(vii) with its explanation inclusively.

They concluded that a suit for eviction, even after lease termination, can involve examination of lease agreements, especially when the property was used exclusively for trade or commerce.

Questions Answered:

Issuance of Section 106 notice does not prevent a court from treating the dispute as a commercial one.

Such a suit can be treated as a commercial suit under Section 2(1)(c)(vii) read with its explanation if it concerns commercial immovable property.

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

Introduction: This case study analyzes the judgment delivered by the Delhi High Court in the matter of Impresario Entertainment & Hospitality Pvt. Ltd. vs. S & D Hospitality (CS(COMM) 111/2017). The dispute centers around alleged trademark infringement, passing off, and the territorial jurisdiction of the court in internet-related disputes involving the use of similar marks ‘SOCIAL’, ‘SOCIAL MONKEY’, and ‘STONE WATER’. The case is significant for its detailed examination of the legal principles governing online activity, jurisdiction, and trademark rights within the Indian legal framework, especially in the context of Trap Orders.

Factual Background: The plaintiff company, Impresario Entertainment & Hospitality Pvt. Ltd., is a prominent operator of cafes and restaurants known for their distinctive ‘SOCIAL’ brand, with several outlets across India, including in Delhi, Mumbai, Gurugram, and Bengaluru. The plaintiff claims to be the registered proprietor of the trademark ‘SOCIAL’ and its variants, dating back to May 2014, and has adopted the ‘STONE WATER GRILL’ mark since 2007, emphasizing its unique style of service. The defendant, S & D Hospitality, was operating restaurants in Hyderabad under the name ‘SOCIAL MONKEY’ and also marketing beverages like ‘HYDERABAD SLING’, which closely resemble the plaintiff’s ‘A GAME OF SLING’. The plaintiff alleged that the defendant’s use of similar marks and branding causes confusion in the marketplace, leading to a dilution of their brand value, and sought injunctive relief.  The dispute also involved the question of whether the plaintiff's claims could be pursued in Delhi court since the defendant’s operations were geographically situated in Hyderabad, and whether online activities through Trap Orders such as promotion and reservation systems contributed to establishing jurisdiction.

Procedural Background: Initially, the plaintiff filed a suit seeking an injunction against the defendant’s infringing activities and to restrain them from using the marks ‘SOCIAL’ and ‘STONE WATER’ or any deceptively similar marks. The defendant challenged the territorial jurisdiction of the Delhi High Court through an application under Order VII Rule 10 CPC, arguing that their registered office was in Mumbai, and they did not carry on any business within Delhi, nor did the cause of action arise there. During the proceedings, the court issued notice and considered whether the online promotional activities by the defendant, particularly on platforms like Zomato and Dineout, could establish a sufficient nexus to confer jurisdiction. The court conducted a hearing on the defendant’s application and examined the legal principles surrounding internet-based jurisdiction, referencing various judgments, and ultimately deferred a final decision on the jurisdictional objection until the merits of the infringement and passing off claims were analyzed.

Legal Issue: The core legal issues addressed in this case involved: whether the Delhi High Court had territorial jurisdiction to entertain the suit given that the defendant’s physical operations were in Hyderabad and the plaintiff’s registered office was in Mumbai; whether online activities such as advertising, reservations, and promotion through platforms like Zomato and Dineout , more specially Trap Orders could create a 'cause of action' within Delhi; and what standards must be met to establish purposeful availment of jurisdiction in internet-related trademark disputes? An overarching concern was to delineate the boundaries of jurisdiction in cases where online activities intersect with physical territorial boundaries.

Discussion on Judgments: The court extensively examined prior judgments concerning internet jurisdiction. It referred to the judgment in ‘Casio India Co. Ltd. v. Ashita Sharma, (2018) 3 SCC 778,’ which held that merely hosting a passive website accessible within the jurisdiction does not confer jurisdiction unless the website targets or aims at residents of that jurisdiction. In contrast, the court also referred to ‘India TV Network Pvt. Ltd. v. Yash Raj Films Ltd., AIR 2015 Del 318’, which acknowledged that purposeful targeting through targeted advertising or online activities can establish jurisdiction.

Further, the court analyzed the decision in ‘Yahoo! Inc. v. Akash Arora, (2007) 34 PTC 370’, where it was held that even if the website is accessible everywhere, jurisdiction can be invoked if the defendant purposefully directs activities towards the forum state. The judgment in ‘Ultra Home Construction Pvt. Ltd. v. Sanjay Dalia, AIR 2010 Delhi 377’ was also cited, emphasizing that jurisdiction depends on whether the defendant has ‘purposefully availed’ itself of the jurisdiction. These cases collectively supported the court’s view that online promotion involving targeted advertising, reservation systems, or presentation of the defendant’s contact details in Delhi could establish sufficient grounds for jurisdiction in the present case.The court emphasized that the law must evolve with technological advances but remains rooted in the principle of ‘purposeful availment’ and ‘effect as a cause of action’ in the forum.

Reasoning and Analysis of the Judge:  The judge reasoned that the essence of establishing jurisdiction in internet disputes lies in whether the defendant purposefully directed its activities towards the jurisdiction. Mere hosting or accessibility of a website does not automatically confer jurisdiction. The critical factor is whether the online Trap Orders  indicates an intention to target consumers in the jurisdiction and whether such activities have a tangible effect within the jurisdiction.

Applying these principles, the court observed that the defendant’s online presence, through advertising on portals like Zomato and Dineout, which are known to operate for Delhi customers, along with publicly displayed contact details and reservation facilities, demonstrated purposeful availment of Delhi’s jurisdiction. The reviews from customers in Delhi and the promotional material explicitly targeting Delhi consumers and Trap Orders  were not seen as establishing a ‘cause of action’ within Delhi and Delhi High Court hold not to have the jurisdiction to entertain the suit.

Final Decision: The court ultimately accepted the defendant’s objection to jurisdiction, holding that the online Trap Orders did not met the legal standards for purposeful availment and establishing a cause of action within the jurisdiction. The court clarified that in cases involving internet activity, the test for jurisdiction is not solely based on the physical location of the defendant but also on whether the defendant has deliberately targeted the jurisdiction by online means. Therefore, the court rejected its jurisdiction to entertain the dispute, allowing the suit to be heard on its merits.

Law Settled in This Case: This case affirms that in Indian law, jurisdiction in internet-related disputes can not be established by mere trap orders. Mere accessibility of a website is insufficient; active measures such as targeted advertising, promotional activities, or presenting contact details can suffice to confer jurisdiction. 

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

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

Novex Communication Pvt. Ltd. Vs. Lemon Tree Hotels Ltd.

Introduction : In the realm of intellectual property law, the case of Novex Communication Pvt. Ltd. v. Lemon Tree Hotels Ltd. & Anr., decided by the High Court of Delhi on January 11, 2019, stands as a significant exploration of copyright ownership and enforcement rights under the Copyright Act, 1957. This legal battle pits Novex Communication Pvt. Ltd., a company claiming ownership of sound recording copyrights through assignments, against Lemon Tree Hotels Ltd., accused of unauthorized use of these works. At its heart, the case grapples with the interplay between individual ownership rights and the statutory framework governing copyright societies, challenging the boundaries of who can sue for infringement and claim damages in the absence of a registered copyright society.

Detailed Factual Background : Novex Communication Pvt. Ltd., the appellant and plaintiff, is a private entity that asserts ownership over copyrights in sound recordings through a series of assignment deeds executed by prominent media companies. Specifically, Novex claims rights stemming from agreements with Zee Entertainment Enterprises Ltd. (Zee) dated August 11, 2015, Eros International Media Limited (Eros) dated January 9, 2017, and Shemaroo Entertainment Limited (Shemaroo) dated March 9, 2017. Additionally, Novex acts as an agent for Yash Raj Films Private Limited (Yash Raj), the second defendant turned prospective co-plaintiff, with respect to certain sound recordings. These works form a portfolio of audio content that Novex alleges is widely recognized and commercially valuable.

The first respondent, Lemon Tree Hotels Ltd., operates a chain of hotels and is accused by Novex of infringing these copyrights by playing the sound recordings in its premises without obtaining licenses. Novex contends that this unauthorized use began prior to the suit’s filing in 2018, prompting demands for injunctive relief and damages amounting to ₹5,00,000. The plaintiff’s case rests on its status as an assignee and owner of the copyrights, asserting that Lemon Tree’s actions violate its exclusive rights under the Copyright Act, 1957.

The second respondent, Yash Raj Films Pvt. Ltd., initially a defendant, becomes a pivotal figure as Novex concedes during the appeal that Yash Raj should be transposed as a co-plaintiff, reflecting an agency relationship rather than an adversarial one. This shift underscores Novex’s dual role as both an assignee of some works and an agent for others, complicating the legal dynamics of ownership and enforcement.

Detailed Procedural Background: The dispute originated in the trial court under suit number CS(COMM) 18/2019, where Novex sought a permanent injunction against Lemon Tree for copyright infringement and passing off, alongside damages. The trial court, in its judgment dated August 7, 2018, addressed a preliminary issue concerning the suit’s maintainability under Section 33 of the Copyright Act, 1957. It ruled partially in Novex’s favor, allowing the suit to proceed only with respect to Yash Raj’s works, where Novex acted as an agent, but dismissed claims related to Zee, Eros, and Shemaroo’s assignments. The trial court reasoned that Section 33(1) restricts the business of issuing licenses to registered copyright societies, and since Novex was not such a society, it lacked standing to sue for infringement based on its assignee status.

Aggrieved by this partial rejection, Novex filed a Regular First Appeal (RFA No. 18/2019) under Section 96 of the Code of Civil Procedure, 1908, before the High Court of Delhi, accompanied by applications (CM Nos. 786-789/2019) for interim relief and procedural adjustments. The High Court, presided over by Justice Valmiki J. Mehta, heard the appeal as a pure legal question, distinct from a full trial, focusing on whether Section 33 barred Novex’s suit. Arguments concluded, and the judgment was delivered orally on January 11, 2019, setting aside the trial court’s restrictive ruling and reinstating Novex’s broader claims.

Issues Involved in the Case: The case revolves around several critical legal questions: whether Novex, as an assignee of sound recording copyrights, can sue for infringement and damages despite not being a registered copyright society under Section 33(1); whether the absence of a copyright society nullifies an assignee’s enforcement rights; whether the statutory framework, particularly Sections 33 to 35, exclusively vests licensing and enforcement powers in copyright societies, overriding individual ownership rights; and whether the trial court erred in partially dismissing Novex’s suit based on its interpretation of the Act’s licensing provisions.

Detailed Submission of Parties: Novex argued that it is the lawful owner of the sound recording copyrights by virtue of assignment deeds from Zee, Eros, and Shemaroo, and an authorized agent for Yash Raj. Counsel emphasized that Section 18(2) of the Act recognizes assignees as owners, conferring upon them the right to sue for infringement under Section 55. Novex contended that the first proviso to Section 33(1) preserves an owner’s individual right to grant licenses, unaffected by the copyright society framework unless exclusively delegated. He highlighted the absence of a registered copyright society for sound recordings post-2012, arguing that barring Novex’s suit would create a legal vacuum, allowing infringers like Lemon Tree to exploit works unchecked. Regarding Yash Raj, Novex conceded its agency role and sought to transpose it as a co-plaintiff, reinforcing its standing.

Lemon Tree countered that Section 33(1), as amended in 1994 and 2012, mandates that only registered copyright societies can issue licenses and collect royalties for sound recordings. They argued that Novex, lacking such registration, cannot enforce licensing rights or sue for infringement, as these actions are predicated on the ability to grant licenses— a power reserved for societies. Counsel cited the 2012 amendments’ intent to protect licensees from exploitation, asserting that allowing Novex to proceed undermines this regulatory scheme. They referenced a prior Delhi High Court ruling in Event and Entertainment Management Association v. Union of India (W.P.(C) 12076/2016, dated October 12, 2017), claiming it barred Novex from collecting royalties, thus invalidating its suit.

Detailed Discussion on Judgments Cited by Parties and Their Context: The parties relied on judicial precedents, though the judgment itself does not extensively cite case law beyond one key reference:

• Event and Entertainment Management Association (EEMA) v. Union of India and Ors., W.P.(C) 12076/2016, decided on October 12, 2017, by a Single Judge of the Delhi High Court: Lemon Tree invoked this ruling to argue that Novex, not being a copyright society, was previously held disentitled to collect license fees or royalties. The case arose from a writ petition challenging Novex’s and others’ royalty collection practices, with the court ruling that only registered societies under Section 33 could undertake such activities. Justice Mehta distinguished this precedent, noting it addressed royalty collection, not infringement suits by owners, and did not engage with the first proviso to Section 33(1) or Section 34’s “exclusive authorisation” concept, rendering it inapplicable to Novex’s ownership-based claims.

While other judgments were not explicitly cited, the court’s reasoning implicitly engages with established principles from cases like Indian Performing Right Society Ltd. v. Eastern India Motion Pictures Association ((1977) 2 SCC 820), which differentiates ownership from licensing rights, and Super Cassettes Industries Ltd. v. Music Broadcast Ltd. ((2012) 5 SCC 488), which interprets the 2012 amendments’ protective intent. These undercurrents shaped the court’s statutory analysis.

Detailed Reasoning and Analysis of Judge: Court’s reasoning is a meticulous dissection of the Copyright Act’s provisions, harmonizing individual ownership with the collective licensing regime. He began by outlining the Act’s structure: Section 17 establishes the author as the first owner, Section 18 allows assignment, and Section 55 vests infringement remedies exclusively in owners, not societies. Section 33(1), with its non-obstante clause, restricts the “business of issuing or granting licenses” to registered copyright societies post-1994, but the first proviso preserves an owner’s right to license their own works unless exclusively delegated.

The judge interpreted the second proviso to Section 33(1), which mandates societies for licensing literary, dramatic, musical, or artistic works within cinematograph films or sound recordings, as applying only to those embedded works, not the sound recordings themselves. This distinction—between musical works (notes) and sound recordings (recorded sound)—is pivotal, as Novex claimed ownership of the latter, not the former. The court rejected Lemon Tree’s expansive reading that sound recordings cannot be licensed except by societies, noting it would nullify the first proviso and Section 34’s non-exclusive authorization language.

Addressing the absence of a copyright society for sound recordings (post-Phonographic Performers Limited’s dissolution), Mehta argued that the law does not intend a vacuum where owners cannot enforce rights. If only societies could sue, and none exist, infringers would operate with impunity—a result he deemed absurd. Section 55, conferring remedies on owners, and the first proviso’s retention of licensing rights, supported Novex’s standing as an assignee to sue Lemon Tree.

The judge dismissed Lemon Tree’s reliance on the EEMA judgment, clarifying it addressed royalty collection by non-societies, not infringement actions by owners. He also noted the 2012 amendments’ protective measures (e.g., Section 19(9) and (10)) for original authors, which do not extend to sound recording assignees, thus not undermining Novex’s position. The trial court’s partial dismissal was overturned as it misapplied Section 33 to bar an owner’s enforcement rights, ignoring the Act’s broader intent.

Final Decision: The High Court allowed Novex’s appeal on January 11, 2019, setting aside the trial court’s judgment dated August 7, 2018. It held the suit maintainable against Lemon Tree for infringement and damages, affirming Novex’s right as an assignee to seek relief. Yash Raj was to be transposed as a co-plaintiff, with necessary authorizations to be formalized.

Law Settled in This Case: The judgment clarifies that an assignee of sound recording copyrights retains the right to sue for infringement and damages under Section 55, irrespective of not being a registered copyright society under Section 33. The first proviso to Section 33(1) preserves an owner’s individual licensing authority unless exclusively delegated, and the second proviso applies only to embedded works, not sound recordings as a whole. In the absence of a copyright society, owners are not stripped of enforcement rights, ensuring no legal vacuum permits unchecked infringement.

Case Title: Novex Communication Pvt. Ltd. v. Lemon Tree Hotels Ltd. & Anr.:Date of Order: January 11, 2019:Case No.: RFA No. 18/2019:Citation: AIRONLINE 2019 DEL 96:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice Valmiki J. Mehta

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

Kamdhenu Ispat Vs Kamdhenu Industries

Introduction: The case of Kamdhenu Ispat Ltd. v. Kamdhenu Industries Ltd. and related suits represents a complex trademark dispute involving multiple parties, all centered around the use of the "Kamdhenu" trademark and associated intellectual property. The litigation revolves around allegations of trademark infringement, passing off, and the validity of family settlements that purportedly govern the rights to use the trademark for different goods. The plaintiff, Kamdhenu Ispat Ltd., sought to protect its registered trademarks and restrain the defendants from using similar marks and corporate names that could cause confusion in the market. The defendants, including Kamdhenu Industries Ltd. and Kamdhenu Cement Ltd., countered by asserting their rights based on family arrangements and denying infringement. The case raises critical issues of trademark law, corporate identity, and the enforceability of family settlements in a commercial context. 

Factual Background: Kamdhenu Ispat Ltd., the plaintiff, was incorporated in 1994 and engaged in manufacturing steel bars and other allied products under trademarks such as Kamdhenu, Kamdhenu Gold, Kamdhenu Saria, and Kamdhenu TMT Gal. These marks were registered since 1996 across various classes, and the plaintiff claimed significant goodwill due to 14 years of uninterrupted use, supported by substantial advertising and sales figures. 

The defendant, Kamdhenu Industries Ltd., was led by Pradeep Kumar Agarwal, who was a former director and promoter of the plaintiff company and the brother of its current directors, Satish Kumar Agarwal and Sunil Kumar Agarwal. A license agreement dated October 8, 2005, allowed the defendant to use the plaintiff’s trademarks for stainless steel pipes and fittings under Class 6 for two years. 

After the agreement expired, the defendant allegedly continued using the Kamdhenu mark and logo, including on its website, and adopted the mark "Prime Gold" for steel bars, which the plaintiff argued was deceptively similar to its "Kamdhenu Gold" mark and punchline "Sampurna Suraksha Ki Guarantee." The defendant also used the plaintiff’s slogan "Desh Ki Shaan" and claimed affiliation with the Kamdhenu Group, leading to allegations of misrepresentation. Family settlements dated February 11, 2007, February 23, 2007, and May 26, 2007, were cited by the defendant, claiming these agreements permitted the use of the Kamdhenu mark for cement and allied products, while the plaintiff denied their binding nature, asserting they were preliminary discussions.

Procedural Background: The litigation comprises four suits filed before the Delhi High Court: CS(OS) No. 302/2008, CS(OS) No. 425/2008, CS(OS) No. 1882/2008, and CS(OS) No. 2616/2008. In CS(OS) No. 302/2008, filed on February 14, 2008, Kamdhenu Ispat Ltd. sought a permanent injunction, passing off, rendition of accounts, and delivery up against Kamdhenu Industries Ltd., alleging unauthorized use of its trademarks and corporate name. Interim applications (I.A. Nos. 3845/2008, 6564/2008, and 8055/2008) were filed for injunctive relief and to vacate an ex-parte injunction granted on February 18, 2008, and modified on February 25, 2008. 

Similar applications were filed in the other suits, involving Kamdhenu Cement Ltd. as plaintiff and defendant. On February 18, 2008, the court issued an ex-parte interim injunction restraining the defendant from using the plaintiff’s trademarks and appointed a Local Commissioner, whose report on April 7, 2008, found no infringing Kamdhenu-branded goods at the defendant’s premises, only "Prime Gold" and "Diamond" brands. The defendant filed a written statement claiming rights under family settlements and denying infringement, while the plaintiff denied the settlements’ validity in its replication. 

Legal Issue:The primary legal issue was whether the defendant’s use of the "Kamdhenu" mark and corporate name constituted trademark infringement or passing off, particularly in light of the expired license agreement and alleged family settlements.? Sub-issues included whether the defendant’s use of "Prime Gold" and the punchline "Hum Dete Hain Sampurn Suraksha Ki Guarantee" infringed the plaintiff’s trademarks, whether the use of "Kamdhenu" in the defendant’s corporate name violated Section 29(5) of the Trade Marks Act, 1999, and whether the family settlements were binding to permit the defendant’s use of the Kamdhenu mark for cement and allied products. The court also considered whether the plaintiff’s non-disclosure of the family settlements warranted vacating the interim injunction and whether delay or acquiescence barred the plaintiff’s claims.

Discussion on Judgments: The parties cited several judgments to support their arguments, which the court considered in its analysis. The plaintiff relied on Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd., 146 (2008) DLT 274, to argue that using "Kamdhenu" in the defendant’s corporate name could cause market confusion, even if the products were sold under "Prime Gold." In this case, the court restrained the defendant from using "Atlas" in its corporate name for bicycles, despite the products being branded differently, due to potential deception. Similarly, Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., AIR 2002 SC 117, was cited to support restraining the use of a similar corporate name to prevent confusion, where the Supreme Court upheld an injunction against the defendant’s use of "Mahindra" in its name. The plaintiff also referenced Gujarat Bottling Company Ltd. v. Coca Cola Company, (1995) 5 SCC 545, to emphasize the principles for granting interim injunctions, focusing on the need to protect the plaintiff’s rights against irreparable harm. Midas Hygienic Industries Pvt. Ltd. v. Sudhir Bhatia, 93 (2001) DLT 667, was cited to argue that even with some delay, an injunction should issue in cases of trademark infringement, especially if the adoption is dishonest. Other cases included K.G. Khosla Compressors Ltd. v. M/s. Khosla Extraktions Ltd., AIR 1986 Del 181, and British Bata Shoe Company Ltd. v. Czechoslovak Bata Company Ltd., 64 Reports of Patent, Design & Trademark Cases No. 4, to reinforce the principle that corporate names causing confusion should be restrained. Montari Overseas Ltd. v. Montari Industries Ltd., ILR 1997 Del 64, and Ram Dev Food Products (P) Ltd. v. Arvind Bhai Ram Bhai Patel, (2006) 8 SCC 726, were cited to support the plaintiff’s claim that the defendant’s use of "Kamdhenu" was deceptive. Rob Mathys India Pvt. Ltd. v. Synthes AG Chur, (1998) 1 RAJ 396 (Del.), and M/s. Power Control Appliances v. Sumit Machines Pvt. Ltd., (1994) 2 SCC 448, were referenced to underscore the protection of registered trademarks and the prevention of passing off. The plaintiff also cited Arunima Baruah v. Union of India, (2007) 6 SCC 120, Ganpat Bhai Mahijibahi Solanki v. State of Gujarat, (2008) 12 SCC 353, and S.J.S. Business Enterprises (P) Ltd. v. State of Bihar, (2004) 4 SCC 176, to argue that non-disclosure of the family settlements was irrelevant as the suit focused on statutory trademark rights. 

The defendant relied on Sahu Madho Das v. Pandit Mukand Ram and Maturi Pullaiah v. Maturi Narasimham to argue that family settlements are favored by courts to promote harmony and should be upheld, even without formal legal claims. The defendant also cited Jaininder Jain v. Arihant Jain, 136 (2007) DLT 418, though the court noted that this decision was overruled by a Division Bench in 2009 (41) PTC 492 (Del.), which supported the enforceability of family settlements.

Reasoning and Analysis of the Judge: The court acknowledged the plaintiff’s long-standing use of the Kamdhenu mark since 1996 and its registration across multiple classes, establishing significant goodwill. The expired license agreement of October 8, 2005, explicitly prohibited the defendant from using the Kamdhenu mark for steel products after its termination, supporting the plaintiff’s claim of infringement for stainless steel pipes and related goods. However, the court found the defendant’s use of "Prime Gold" for steel bars to be prima facie distinct from "Kamdhenu Gold," as it was not deceptively similar, and allowed its continued use. 

The punchline "Hum Dete Hain Sampurn Suraksha Ki Guarantee" was deemed too similar to the plaintiff’s "Sampurna Suraksha Ki Guarantee," justifying an injunction against its use. The use of "Kamdhenu" in the defendant’s corporate name and website was analyzed under Section 29(5) of the Trade Marks Act, 1999, which deems such use as infringement if it pertains to goods for which the mark is registered. The court found a likelihood of confusion, supported by precedents like Atlas Cycles and Mahendra & Mahendra, but noted the defendant’s argument of delay, as Kamdhenu Industries Ltd. was incorporated in 1998 without prior objection. The court held that delay alone does not bar injunctive relief under Section 29(5), as no limitation period is prescribed, unlike Section 22 of the Companies Act, 1956, which imposes a five-year limit for rectification. 

Regarding the family settlements, the court found prima facie evidence of their existence, supported by signed documents and partial performance, such as the transfer of Rs. 20 lakhs and resignations from related companies. The court rejected the plaintiff’s claim that these were mere discussions, noting their formal documentation and partial execution, including a resolution dated May 14, 2007, for the assignment of the Kamdhenu mark for cement for Rs. 1.4 crores. The court expressed skepticism about the plaintiff’s alleged cancellation letter of November 6, 2007, due to its absence in initial pleadings and lack of prior communication, suggesting possible fabrication. Applying the principles for interim injunctions from Gujarat Bottling, the court found that the defendant had a stronger prima facie case for using the Kamdhenu mark for cement, given its established use since May 2007 and the plaintiff’s lack of commercial activity in that sector. The balance of convenience favored the defendant to avoid irreparable harm, subject to depositing the remaining Rs. 1.2 crores.

Final Decision: The court disposed of all interim applications with a balanced order. The defendant was restrained from using the Kamdhenu trademark, logo, and punchline "Sampurna Suraksha Ki Guarantee" for steel bars, stainless steel pipes, and allied goods in Class 6, as these were registered by the plaintiff. 

However, the defendant was permitted to use "Prime Gold" for steel products and "Desh Ki Shaan," as these were not deceptively similar. The defendant was also barred from using "Kamdhenu" in its web pages, domain names, or advertisements combining steel and cement businesses to prevent deception. Conversely, the defendant was allowed to use the Kamdhenu mark for cement, PoP, wall putty, and waterproofing compounds, subject to depositing Rs. 1.4 crores with the court, with the plaintiff granted liberty to withdraw this amount without prejudice. 

The plaintiff was restrained from using the Kamdhenu mark for these cement-related goods. The court scheduled the suits for framing issues on July 6, 2010, leaving the validity of the family settlements and related disputes for trial.

Law Settled in This Case:The case clarified several principles under Indian trademark law. It reaffirmed that using a registered trademark as part of a corporate name for related goods constitutes infringement under Section 29(5) of the Trade Marks Act, 1999, irrespective of delay, as no limitation period applies, distinguishing it from the five-year limit under Section 22 of the Companies Act, 1956. The court emphasized that family settlements, if prima facie valid and properly executed, can govern trademark usage rights, even for corporate entities, provided they are documented and acted upon. The decision also highlighted the importance of full disclosure in interim injunction applications, noting that non-disclosure of material facts, such as family settlements, could impact the grant of relief, though not fatally in this case. Finally, the court underscored the principles for granting interim injunctions, requiring a prima facie case, balance of convenience, and irreparable harm, as established in Gujarat Bottling, while allowing distinct marks like "Prime Gold" to coexist if not deceptively similar.

Case Title: Kamdhenu Ispat Ltd. v. Kamdhenu Industries Ltd.: Date of Order: May 19, 2010:Case Number: CS(OS) No. 302/2008 :Neutral Citation: 2010 SCC OnLine Del 2021 : (2010) 43 PTC 533 (Del):Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice 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

Principal Commissioner of Customs Vs. Loreal SA

Case Title: Principal Commissioner of Customs Vs. Loreal SA:High Court of Delhi:Hon'ble Mr. Justice Saurabh Banerjee:May 15, 2025: CM(M)-IPD 19/2025:2025:DHC:3938

 

Fact of the Case:

The Principal Commissioner of Customs challenged orders passed by the District Judge (Commercial Court) concerning proceedings related to a trademark infringement case filed by Loreal. The dispute primarily involves the seizure and impoundment of counterfeit goods bearing Loreal’s trademark, and subsequent orders issued by the Commercial Court concerning enforcement and related procedural matters. The Customs department objects to some proceedings initiated after the court's final judgment in a suit for confiscation, contending that the subsequent proceedings are not maintainable.

Procedural Detail:

Loreal filed a suit for confiscation and non-release of counterfeit goods on May 8, 2017.The Trial Court decreed the suit in favor of Loreal on October 19, 2024.A separate order, also dated October 19, 2024, initiated proceedings numbered MISC DJ/3623/2024.The Customs department challenged various orders of the Trial Court, including an order dated January 17, 2025.The present petition under Article 227 of the Constitution of India was filed by the Customs seeking to set aside these orders.The case involves procedural questions about whether subsequent proceedings after a final judgment are maintainable and whether the Trial Court became functus officio.

Issue:

Whether the proceedings initiated by the Trial Court post the final judgment in the suit for confiscation were maintainable and whether the Trial Court had jurisdiction to issue certain orders after passing the decree and considering itself functus officio?

Decision:

The High Court, after hearing the arguments, observed that the Trial Court had erroneously initiated proceedings (MISC DJ/3623/2024) subsequent to its final decree, which was not permissible as the Court had become functus officio after passing the decree. The Court noted that the Trial Court could not have issued orders or initiated proceedings related to enforcement after closing the suit by decree. The petition was allowed, and the orders passed in MISC DJ/3623/2024, including the order dated January 17, 2025, were set aside. The Court directed that the order be sent for compliance, emphasizing the need for judicial propriety.

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.