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

Introduction: The present case before the High Court of Himachal Pradesh addressed whether a civil dispute over an alleged patent misuse could be converted into a criminal case: The judgment provides much-needed judicial clarity on the misuse of criminal proceedings for enforcing civil rights, particularly in patent-related matters, and on the legal principles guiding the quashing of an FIR under Section 482 of the Criminal Procedure Code (CrPC).

Factual Background:The complainant (Respondent No. 3) in this case claimed to be a techno-innovator entrepreneur who developed and patented a method of dyeing textile products using natural extracts from neem and holy basil. According to the complainant, the invention was recognized nationally and internationally, and patents had been secured in India, the United States, and Europe. Seeking commercialization opportunities, the complainant submitted the patented technology to Procter & Gamble (P&G) under its Connect + Develop Program, with a proposal to use the technology in sanitary napkins and diapers.

Initially, P&G acknowledged receipt of the submission but subsequently informed the complainant that it would not pursue the proposal. However, P&G later launched a product — "Whisper Ultra Clean (with herbal oil)" — which, according to the complainant, incorporated his patented process. He alleged that the use of neem oil in the product amounted to misappropriation of his innovation.

Procedural Background:On receiving no satisfactory explanation or resolution, the complainant filed an application under Section 156(3) of the CrPC before the Judicial Magistrate First Class, Kandaghat, seeking a direction to register an FIR against P&G and its executives under Sections 120B (criminal conspiracy), 405 (criminal breach of trust), 415 and 420 (cheating) of the Indian Penal Code. The Magistrate, by order dated 30 December 2023, directed the Station House Officer (SHO), Kandaghat, to register the FIR and initiate investigation.

Aggrieved by this order and the registration of FIR No. 02/2024 dated 01 January 2024, the petitioners (P&G) approached the High Court under Section 482 CrPC seeking quashing of the FIR and all related proceedings, arguing that the complaint was frivolous, lacked ingredients of a criminal offence, and was a clear abuse of process.

Legal Issue:The central issue for consideration before the High Court was whether the allegations made in the complaint, even if taken at face value, disclosed any prima facie case of criminal wrongdoing or whether the matter was purely civil in nature involving allegations of patent infringement, for which criminal law could not be invoked?

Discussion on Judgments:The petitioners cited multiple landmark judgments to support their contention that the FIR should be quashed:

In Hridaya Ranjan Prasad Verma v. State of Bihar, (2000) 4 SCC 168, the Supreme Court held that mere breach of contract or civil wrong cannot be converted into a criminal case unless dishonest intention existed at the inception of the transaction.

G.V. Rao v. L.H.V. Prasad, (2000) 3 SCC 693, reinforced the principle that the intention to deceive must exist at the time of inducement for an offence under Section 415 IPC to be made out.

State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335, laid down the classic categories under which criminal proceedings can be quashed, particularly where allegations even if taken at face value do not disclose the commission of any offence.

Madhavrao Jiwajirao Scindia v. Sambhajirao Chandrojirao Angre, (1988) 1 SCC 692, clarified that if chances of conviction are bleak and the prosecution appears to be initiated with mala fide intent, the Court is justified in quashing the proceedings.

In Neeharika Infrastructure (P) Ltd. v. State of Maharashtra, (2021) 19 SCC 401, the Court discussed the narrow scope of judicial intervention during the stage of investigation but permitted quashing in exceptional circumstances to prevent miscarriage of justice.

The respondents relied on Minu Kumari v. State of Bihar, (2006) 4 SCC 359, and S.W. Palanitkar v. State of Bihar, (2002) 1 SCC 241, to argue that once an FIR discloses a cognizable offence, investigation should be allowed to continue and courts should not interfere prematurely.

Reasoning and Analysis of the Judge:The Court  analyzed the statutory provisions and case law governing the inherent jurisdiction of the High Court under Section 482 CrPC. The Court noted that the allegations in the FIR related to the alleged misuse of a patented process involving herbal dyeing of textiles, which had been voluntarily submitted under a program where P&G had explicitly disclaimed any confidentiality or obligation.

The Court held that the offences of cheating and criminal breach of trust require different mens rea and cannot coexist based on the same set of facts. Criminal breach of trust requires entrustment of property, while cheating requires fraudulent intention at inception. In the present case, the Court found no entrustment or inducement that would satisfy the legal requirements of either offence.

It was observed that the essence of the complainant’s grievance related to patent infringement — a matter governed by the Patents Act, 1970. The complainant had also issued a cease-and-desist notice but failed to pursue civil remedies. This, according to the Court, indicated an attempt to misuse the criminal justice system as a tool of coercion.

The Court further emphasized that neem, being a part of traditional Indian knowledge, cannot be monopolized through patent law, and the use of neem in a proprietary herbal oil formulation by P&G did not prima facie appear to infringe any specific patented process of the complainant.

Citing Lalit Chaturvedi v. State of U.P., 2024 SCC OnLine SC 171, and Delhi Race Club (1940) Ltd. v. State of U.P., (2024) 10 SCC 690, the Court reiterated that civil disputes should not be converted into criminal cases, especially when the ingredients of the alleged criminal offences are absent.

Final Decision:The High Court allowed the petition and quashed FIR No. 02/2024 registered at Police Station Kandaghat and all consequential proceedings. The Court concluded that no prima facie case was made out against the petitioners, and continuing the proceedings would amount to an abuse of the process of law. The order passed by the Judicial Magistrate directing the registration of the FIR was also held to be unsustainable in law.

Law Settled in This Case:This case reinforces the legal position that patent infringement and related commercial disputes fall within the domain of civil law, and criminal proceedings cannot be initiated unless the statutory ingredients of offences such as cheating or breach of trust are clearly satisfied. It affirms that FIRs should not be registered in the absence of prima facie cognizable offences, and courts must quash proceedings that misuse the criminal justice system for private vendettas or business coercion. The judgment draws a clear boundary between civil remedies under IP law and criminal liability under the Indian Penal Code, ensuring that criminal courts are not misused to settle commercial grievances. 

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

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

Lake Mount Educational Society & Anr. vs. Global Educational Trust

Introduction:The dispute in Lake Mount Educational Society & Anr. Vs. Global Educational Trust arose from an allegation of trademark infringement and passing off in the field of education services. The plaintiff, Global Educational Trust, claimed that the defendants’ use of the trade name “Lake Mount Global Public School” infringed its registered trademark “Global Public School” and was intended to mislead the public into believing an association with the plaintiff. The case involved interpretation and application of key provisions of the Trade Marks Act, 1999, especially relating to deceptive similarity, secondary meaning, and the rights of a registered trademark holder. 

Factual Background:The plaintiff, Global Educational Trust, had established and been operating a school named “Global Public School” in Thiruvaniyoor, Ernakulam since 2006. The name was registered under Trademark No. 1476968 in Class 41 as of 07.08.2006. The school was affiliated with the Central Board of Secondary Education and had built a reputed identity in the education sector. In 2018, the plaintiff discovered that the defendants were operating an institution under the name “Lake Mount Global Public School” in the same district, allegedly causing confusion among the public regarding the origin or affiliation of the school. The plaintiff claimed that this act amounted to trademark infringement and passing off.

Procedural Background:The plaintiff filed a suit for trademark infringement and obtained a temporary injunction from the Second Additional District Court, Ernakulam in I.A. No. 5581 of 2018 in O.S. No. 34 of 2018. The injunction restrained the defendants from using the name “Global Public School” as part of their institutional identity. The defendants, Lake Mount Educational Society and its affiliated school, challenged this order by filing an appeal under FAO No. 221 of 2018 before the High Court of Kerala. 

Legal Issue:The central legal issue was whether the use of the name “Lake Mount Global Public School” by the defendants amounted to infringement of the registered trademark “Global Public School” and whether such use was likely to deceive or cause confusion among the public, thereby justifying the grant of temporary injunction.

Discussion on Judgments:The appellants relied heavily on the decision of the Hon’ble Supreme Court in Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani & Anr., (2010) 2 SCC 142, wherein the Court refused to grant injunction as the term “Skyline” was found to lack distinctiveness, being used widely across institutions. They argued that “Global”, “Public”, and “School” were generic terms and not capable of exclusive appropriation.

The respondents cited a series of decisions that emphasized the importance of prior use, secondary meaning, and the rights granted to the registered proprietor of a trademark. In Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, the Supreme Court held that even in cases of innocent adoption, where confusion or deception is likely, an injunction should be granted. The Court further held that confusion in business could justify a restraint order.

In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors., (2006) 8 SCC 726, the Supreme Court discussed the principles of trademark infringement and laid down that registration gives exclusive rights to the proprietor and that delay in bringing action is not fatal if infringement is established.

Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd., (2004) 5 SCC 257 was cited to highlight that a descriptive mark can acquire protection when it obtains secondary meaning associated with the proprietor.

The respondents also relied on Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90, which clarified that injunction should follow in cases of trademark infringement and mere delay in filing suit is not sufficient to defeat such relief.

Additionally, Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd., (2018) 18 SCC 346, and Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors., (2022) 5 SCC 1, were cited to reiterate that when a registered trademark is involved and confusion is likely, protection must be extended.

Among High Court precedents, the Court referred to National Garments v. National Apparels, 1989 (1) KLT 855, Jaleel Associates v. Hotel Sagar, 2005 (1) KLT 757, and Hotel Seagull v. Seagulls Catch Restaurant Pvt. Ltd., 2015 KHC 7059. The Delhi High Court’s decision in Under Armour Inc. v. Anish Agarwal & Ors., MANU/DE/3797/2025, was cited to support the argument that even partial use of a registered mark within a larger name can constitute infringement when it causes confusion.

Reasoning and Analysis of the Judge:The High Court held that while the terms “Global”, “Public”, and “School” might individually be generic, their use in combination had acquired distinctiveness through long-term use by the plaintiff. The plaintiff’s school had earned a strong reputation under the registered name “Global Public School”. The Court held that even where words are generic, their combination can develop a secondary meaning if consistently used and associated with a particular source. The evidence of public confusion and the geographic proximity of the institutions (within 10 km) strengthened the inference of likely deception.

The Court distinguished Skyline Education on facts, stating that it involved widespread use of a common term across multiple institutions, unlike the present case where a distinctive combination had been appropriated by the plaintiff. The Court also emphasized that actual intent to deceive is not necessary, and it is sufficient if the similarity causes likely confusion.

Addressing the argument of delay, the Court followed Ramdev Food Products and Midas Hygiene to hold that in trademark infringement cases, delay by itself does not bar relief if infringement is proved. The Court concluded that the defendants’ use of the impugned name infringed upon the plaintiff’s trademark and was intended to cause confusion in the minds of parents and students.

Final Decision:The High Court dismissed the appeal and confirmed the order of temporary injunction granted by the Trial Court. The defendants were restrained from using the trade name “Global Public School” or any deceptively similar variant as part of their institutional name. The Court upheld the plaintiff’s exclusive rights over the registered trademark and found a strong prima facie case in favour of the plaintiff.

Law Settled in This Case:This case reaffirms that even generic words, when used in combination and consistently associated with a specific entity, can acquire secondary meaning and distinctiveness deserving of trademark protection. It affirms the principle that a registered trademark holder is entitled to protection from any unauthorized usage that causes likely confusion, even if the infringing entity has been operating for some years. The judgment also underscores that delay in bringing a suit does not bar the grant of injunction in clear cases of trademark infringement and passing off.

Case Title: Lake Mount Educational Society & Anr. Vs. Global Educational Trust:Date of Order: 24th June, 2025:Case Number: FAO No. 221 of 2018:Neutral Citation: 2025:KER:45059:Name of Court: High Court of Kerala at Ernakulam:Name of Judge: Hon’ble Mr. Justice M.A. Abdul Hakhim

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

Lake Mount Educational Society Vs. Global Educational Trust

Lake Mount Educational Society & Anr. vs. Global Educational Trust:Date of Order: 24th June, 2025:Case Number: FAO No. 221 of 2018:Neutral Citation: 2025:KER:45059:Name of Court: High Court of Kerala at Ernakulam:Name of Judge: Hon’ble Mr. Justice M.A. Abdul Hakhim

Brief Facts:The plaintiff, Global Educational Trust, has been operating “Global Public School” since 2006 and holds a registered trademark for the same. In 2018, it discovered that the defendants, operating under the name "Lake Mount Global Public School" since 2010, were using a similar name, allegedly causing confusion among the public and infringing upon its registered trademark.

Nature of Dispute:The plaintiff sought a temporary injunction under the Trade Marks Act, 1999 to restrain the defendants from using the trade name “Global Public School” as part of their institution’s name. The key issue was whether such use constituted trademark infringement and passing off.

Discussion by the Judge:The Court analyzed the legal principles on deceptive similarity, trademark infringement, and passing off. It emphasized that while “Global”, “Public”, and “School” may be generic terms, their combination had acquired distinctiveness and secondary meaning associated with the plaintiff's institution. The Court found that the defendants' use of the name within close geographical proximity was likely to cause confusion. It rejected the defendants' argument that visual differences in the names or delayed legal action by the plaintiff justified dismissal.

Decision:The High Court upheld the trial court’s grant of temporary injunction, restraining the defendants from using “Global Public School” as part of their institution’s name, citing prima facie infringement and likelihood of confusion.

T.E. Thomson & Company Limited vs. Swarnalata Chopra Nee Kapur

Introduction:The case of T.E. Thomson & Company Limited Vs. Swarnalata Chopra Nee Kapur & Anr. revolves around a significant question of law concerning the jurisdiction of commercial courts to entertain suits for eviction based on lease agreements once the lease has expired and possession is sought under Section 106 of the Transfer of Property Act, 1882. The core issue addressed by the Division Bench of the Calcutta High Court was whether such eviction suits can be treated as "commercial disputes" under Section 2(1)(c)(vii) of the Commercial Courts Act, 2015, when the immovable property in question is used exclusively for trade or commerce.

Factual Background:T.E. Thomson & Company Limited, the plaintiff, had entered into registered lease agreements with the defendant, Swarnalata Chopra, with the leases expiring in 1990. Post expiry, the lease was treated as a monthly lease. A notice of termination under Section 106 of the Transfer of Property Act, 1882 was issued on 30th March 2023. As the defendants failed to vacate the property, the plaintiff initiated a suit for eviction and mesne profits before the commercial division of the High Court, claiming that the dispute qualifies as a commercial dispute under the 2015 Act, considering the commercial nature of the leased premises.

Procedural Background:The suit was registered as CS (COM) No. 4 of 2023 before the Commercial Division of the Calcutta High Court. The defendants filed an application seeking rejection of the plaint, arguing that the dispute did not fall within the ambit of a "commercial dispute" as defined under the Commercial Courts Act, 2015. The learned Single Judge observed a divergence of views between existing decisions and made a reference to a larger bench under the commercial appellate division. Accordingly, the matter came up for consideration before a Division Bench comprising Justices Soumen Sen and Smita Das De.

Legal Issue:The primary legal questions referred for determination were whether after issuance of notice under Section 106 of the Transfer of Property Act, 1882, parties can still rely on the lease agreement? whether a suit based solely on Section 106 of the TPA precludes examination of the lease agreement, and thus cannot be termed a commercial suit under Section 2(1)(c)(vii) of the Commercial Courts Act, 2015; and whether, considering the explanation to Section 2(1)(c) of the Commercial Courts Act along with Section 106 TPA, such suits can be treated as commercial suits.

Discussion on Judgments:Numerous precedents were cited by both parties and the amicus curiae to argue their respective positions. The case of Deepak Polymers Pvt. Ltd. vs. Anchor Investments Pvt. Ltd., 2021 SCC OnLine Cal 4323, held that a suit purely based on a statutory notice under Section 106 TPA lacks direct nexus with the lease agreement and therefore cannot be treated as a commercial dispute. On the other hand, Jagmohan Behl vs. State Bank of Indore, 2017 SCC OnLine Del 10706, held that disputes arising out of agreements relating to commercial use of immovable property are covered under the Commercial Courts Act, even if the relief sought includes eviction. In Church of Christ Charitable Trust vs. Ponniamman Educational Trust, (2012) 8 SCC 706, the Supreme Court clarified the concept of cause of action as a bundle of facts that must be proved to get relief.

In Manish Kumar vs. Union of India, (2021) 5 SCC 1, and Sundaram Pillai vs. V.R. Pattabiraman, (1985) 1 SCC 591, the Court explained the purpose and effect of explanation clauses in statutory interpretation, affirming that such explanations can expand the scope of the provision if legislatively intended. The decision in Ambalal Sarabhai Enterprises Ltd. vs. KS Infraspace LLP, (2020) 15 SCC 585, interpreted the Commercial Courts Act narrowly, emphasizing that commercial usage must exist at the time of the dispute. In Park Street Properties Pvt. Ltd. vs. Dipak Kumar Singh, (2016) 9 SCC 268, it was emphasized that under TPA, a right to possession arises after expiry of valid notice, making it independent of the lease deed.

In Gulam Mohmad Khan vs. Gulam Nabi Channu Miya, 2009 (6) Mh.L.J. 954, the Court held that a valid notice under Section 106 TPA alone suffices for a decree of eviction under the TPA. Similarly, in MEC India Pvt. Ltd. vs. Lt. Col. Inder Maira, 1999 SCC OnLine Del 422, the Court explained that each lapse of time post-termination of tenancy gives rise to a fresh cause of action. Finally, in A.B.C. Laminart Pvt. Ltd. vs. A.P. Agencies, (1989) 2 SCC 163, the Court clarified that cause of action includes all relevant material facts and not just the immediate statutory right.

Reasoning and Analysis of the Judge:The Division Bench held that a rigid dichotomy between statutory and contractual rights is misleading in the context of eviction suits under the Transfer of Property Act. The Court emphasized that Section 106 of the TPA is merely a rule of construction to determine the tenure and method of termination of lease, and not an independent source of cause of action to the exclusion of the underlying lease agreement.

The Court observed that the phrase “relating to” in Section 2(1)(c)(vii) of the Commercial Courts Act is of wide import and includes all matters connected with commercial use of immovable property, including eviction proceedings following lease expiry. The explanation to Section 2(1)(c) reinforces this by expressly clarifying that the nature of relief (e.g., recovery of possession) does not detract from the commercial character of the dispute if the agreement pertained to commercial use.

The Court distinguished Deepak Polymers, holding that it failed to consider the explanation to Section 2(1)(c) and adopted an unduly narrow construction. Relying on the judgments in Manish Kumar, Sundaram Pillai, and Jagmohan Behl, the Court held that eviction suits concerning commercial premises should be adjudicated as commercial disputes.

Final Decision:The Division Bench answered the reference in favour of the plaintiff. It held that parties can rely on the lease agreement even after issuance of notice under Section 106 of the TPA. A suit initiated under Section 106 TPA does not preclude examination of the lease agreement, and such a suit may qualify as a commercial dispute. Considering the explanation to Section 2(1)(c) of the Commercial Courts Act along with Section 106 TPA, the suit can indeed be treated as a commercial suit.The Court thus affirmed that such eviction disputes are within the jurisdiction of commercial courts where the property in question is used exclusively for trade or commerce.

Law Settled in This Case:This case settles that suits for recovery of possession of commercial premises, even when founded on notice under Section 106 of the Transfer of Property Act, 1882, fall within the ambit of “commercial disputes” as defined under Section 2(1)(c)(vii) of the Commercial Courts Act, 2015. The lease agreement and the nature of use of the property remain relevant to determine the jural relationship and the commercial nature of the dispute, notwithstanding the procedural reliance on Section 106.

Case Title: 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:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Soumen Sen and Hon’ble Justice Smita Das De

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

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 (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.