Marico Limited Vs Zee Hygiene Products Pvt. Ltd.

Introduction:The present case revolves around a commercial intellectual property dispute involving alleged infringement of well-established trademarks and copyright-protected artistic works. The Plaintiff, Marico Limited, initiated an action against Zee Hygiene Products Pvt. Ltd. and its affiliates, alleging deliberate imitation of its proprietary trade marks, packaging, and get-up of various product lines under the iconic “PARACHUTE” brand family. The suit sought to restrain the Defendants from using deceptively similar marks and trade dress in connection with coconut and jasmine hair oil products. This judgment provides significant jurisprudential guidance on the scope of interim injunctions in trade mark and copyright infringement matters.

Factual Background:Marico Limited is the registered proprietor of the trade marks “PARACHUTE”, “PARACHUTE ADVANSED”, and “PARACHUTE JASMINE”, among others, which have been in use since 1948. The Plaintiff’s products, especially edible and cosmetic coconut oils, are sold in a distinctive packaging involving a blue bottle, green-bordered flag device, broken coconut imagery, and white-colored font in stylized form. Over the years, Marico introduced various artistic modifications, all while preserving the essential features of its trade dress and branding, which have been granted statutory protection under both trade mark and copyright law.

The Plaintiff asserted that it enjoys immense goodwill and reputation in the market, evidenced by high sales turnover and promotional expenditure. Marico alleged that the Defendants launched a competing product line under the brand “COCOPLUS” and “COCOPLUS JASMINE,” using trade dress, packaging, bottles, and labels strikingly similar to Marico's registered marks, including the use of a blue container, broken coconut imagery, and flag devices.

Procedural Background:Marico first issued a cease-and-desist notice to the Defendants in February 2021, followed by another in April 2021. However, no response or corrective action was taken. Due to difficulties arising during the COVID-19 pandemic, Marico was unable to assess the extent of infringement. Upon rediscovery of the infringing products in the market in 2024, Marico initiated a commercial IP suit before the Bombay High Court. The Plaintiff also filed an interim application seeking injunctive relief to prevent ongoing infringement pending the final disposal of the suit.

The Defendants filed a written reply, claiming to be prior users of the “COCOPLUS” mark since 2005 and argued that their trade mark was registered and the packaging bore no resemblance to Marico’s registered marks. The Defendant also raised defences of delay, common trade usage, and lack of deceptive similarity.

Legal Issue:The primary legal issue before the Court was whether the Defendants' use of the “COCOPLUS” and “COCOPLUS JASMINE” marks, along with the allegedly similar trade dress, bottle design, and packaging, infringed upon the Plaintiff’s registered trade marks and copyrights. A related question was whether the Defendants could rely on their own trade mark registration and the defence of delay to defeat Marico’s claim for interim relief.

Discussion on Judgments:The Plaintiff relied on multiple precedents to establish the standard of interim relief in cases of infringement. In Xotik Frujus Pvt Ltd v. Bubalus Beverages, IA (L) No. 24055 of 2021 in COMIP Suit No. 448 of 2021, the Bombay High Court granted injunction despite prior registration by Defendant, highlighting the importance of actual use and trade dress similarity.

In Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005, the Delhi High Court emphasized the relevance of trade dress, overall visual appearance, and likelihood of confusion among illiterate consumers, ruling in favor of the prior user.

The landmark decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, was cited to assert that delay alone cannot defeat a claim for interim injunction in cases of fraudulent adoption.

The Plaintiff also cited Pidilite Industries Ltd. v. S. M. Associates, 2003 SCC OnLine Bom 143, and Pidilite Industries Ltd. v. Pom a-Ex Products, 2017 SCC OnLine Bom 7237, to assert that the copying of essential features of a registered mark constitutes infringement regardless of minor differences.

The Defendant, on the other hand, relied on Charak Pharmaceuticals (India) Ltd. v. Glenmark Pharmaceuticals Ltd., 2007 SCC OnLine Bom 1192, to argue that delay and balance of convenience should defeat an injunction. The Court, however, found this inapplicable given the Plaintiff’s vigilance in asserting its rights.

The Supreme Court decision in Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727, was invoked to argue the discretionary nature of interim relief, but again found unpersuasive in the face of prima facie evidence of copying.

Reasoning and Analysis of the Judge:The Court found that the Defendants’ registered trade mark “COCOPLUS” was not in actual use in its registered form. Instead, the Defendants used packaging and trade dress nearly identical to the Plaintiff’s marks, including the use of blue-colored bottles, green-bordered flag devices, and the iconic broken coconut imagery.

The Court ruled that the defence under Section 30(2)(e) of the Trade Marks Act, 1999—regarding permissible use under a registered mark—was unavailable since the Defendant was not using its registered version. The Court noted that trade mark rights also encompass trade dress and that essential features had been slavishly copied. The Defendant’s assertion of delay was rejected, citing Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., AIR 1990 Delhi 19, where it was held that delay unaccompanied by acquiescence is not a valid defence.

The Court emphasized that the visual similarity and structural mimicry were likely to confuse the public, thus constituting trade mark infringement under Section 29 of the Trade Marks Act. The Judge also noted the copyright infringement of the artistic elements used on the Plaintiff’s packaging.

Final Decision:The Bombay High Court granted an interim injunction in favor of Marico Limited. The Court restrained the Defendants from using the infringing marks, packaging, bottles, containers, or any other materials bearing similarities to Marico’s registered marks. Relief was granted under prayer clauses (a) to (f) as sought in the application. The interim order was stayed for four weeks to allow the Defendants to seek appellate relief, if so advised.

Law Settled in This Case:This case reinforces that mere registration of a trade mark does not immunize a party from liability for infringement if the actual use deviates and mimics another’s registered mark. It establishes that copying essential features of a registered trade mark and trade dress—even in the absence of literal word mark similarity—constitutes infringement. The decision affirms that delay without acquiescence is not a bar to injunctive relief and clarifies that the defence under Section 30(2)(e) is limited to actual use of the registered form. The Court further emphasized the necessity of protecting not only the proprietary rights of trade mark owners but also the interests of the consuming public.

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.:Case Number:Commercial IP Suit (L) No. 32952 of 2024:Neutral Citation:2025:BHC-OS:9444:Date of Order:25 June 2025:Court:High Court of Judicature at Bombay:Judge:Hon'ble Ms. Justice Sharmila U. Deshmukh

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

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.:Case Number:Commercial IP Suit (L) No. 32952 of 2024:Neutral Citation:2025:BHC-OS:9444:Date of Order:25 June 2025:Court:High Court of Judicature at Bombay:Judge:Hon'ble Ms. Justice Sharmila U. Deshmukh

Brief Facts:Marico Limited, owner of the well-known trademarks "PARACHUTE", "PARACHUTE ADVANSED", and "PARACHUTE JASMINE", alleged that Zee Hygiene Products Pvt. Ltd. copied its trade dress, packaging, and trademarks. Marico claimed infringement of its registered trademarks and copyrights, and also passing off.

Dispute:The Plaintiff alleged that the Defendant's products under the mark “COCOPLUS” (including COCOPLUS JASMINE) copied essential elements like the blue bottle, green-bordered flag device, broken coconut device, and overall trade dress deceptively similar to Marico’s products. The Defendant argued prior use, registration of its own mark, and denied copying.

Discussion by Judge:The Court found that the Defendant’s actual packaging was not the same as its registered mark and had copied essential features of the Plaintiff’s well-known packaging.The Defendant's mark “COCOPLUS” was not used in its registered form and its label slavishly imitated Marico’s products.Delay in filing suit was not fatal as there was no acquiescence.The defence under Section 30(2)(e) of the Trade Marks Act was rejected, and balance of convenience favored Marico.The Court held that mere registration of the Defendant's mark did not protect deceptive use.

Decision:The Court granted interim injunction restraining the Defendants from using the infringing marks, packaging, bottles, and artistic works similar to Marico’s "Parachute" products, until final disposal of the suit. Reliefs under prayer clauses (a) to (f) were granted.

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited

Introduction:This case pertains to a dispute over trademark rights in the plywood industry, involving the plaintiffs, Duroply Industries Limited and its sister concern, and the defendant, Ma Mansa Enterprises Private Limited. The matter centers on the alleged infringement and passing off of the plaintiffs’ long-established trademarks containing the prefix “DURO” by the defendant’s use of the mark “DURO TOUCH.” The case raises pertinent issues about the rights of prior users versus registered proprietors, the doctrine of passing off, and the extent to which a generic or descriptive word can be protected if it has acquired distinctiveness through use.

Factual Background: Duroply Industries Limited, formerly known as Sarda Plywood Industries Ltd., has been engaged in the business of manufacturing and selling plywood and related products since its incorporation in 1957. It adopted the word “DURO” as part of its primary brand identity as early as 1964 and subsequently registered various marks such as “DUROPLY,” “DUROBOARD,” “DUROMAC,” and others. The plaintiffs have continuously used the “DURO” brand in the market and claimed to have developed substantial goodwill and reputation associated with these trademarks.

In 2018, the plaintiffs discovered that Ma Mansa Enterprises was using and had obtained registration for the mark “DURO TOUCH” in respect of similar products, including plywood and teak ply. A cease and desist letter was issued by the plaintiffs, but the defendant responded asserting its own use of the mark since 2006 and claimed independent goodwill in certain northern Indian markets. This prompted the plaintiffs to initiate legal action.

Procedural Background:The plaintiffs filed a suit before the Calcutta High Court seeking a permanent injunction to restrain the defendant from using the mark “DURO TOUCH” or any other mark deceptively similar to the “DURO” family of marks. Alongside the suit, an interlocutory application for interim injunction was also filed under IA No. GA/1/2020 in IP-COM/3/2024. The defendant contested the application by filing an affidavit-in-opposition and raising multiple legal and factual contentions. The interim application was heard and disposed of by order dated 25th June, 2025.

Legal Issue:The primary legal issue was whether the plaintiffs, as prior users of the mark “DURO,” were entitled to an injunction against the defendant’s use of the registered mark “DURO TOUCH” on the grounds of trademark infringement and passing off, despite the defendant's registration and long use since 2006.

Discussion on Judgments:The plaintiffs relied heavily on the doctrine of prior use and common law rights of passing off. They referred to S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, where the Supreme Court held that rights of a prior user are superior to those of a registered proprietor, and that common law remedies for passing off remain unaffected by the registration of a trademark. The case also highlighted that statutory registration does not extinguish pre-existing rights acquired through use.

In Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, the Supreme Court clarified the first-user principle and the operation of Section 34 of the Trade Marks Act, 1999. The Court emphasized that registration does not confer exclusive rights over a mark if another party has been using it continuously prior to the registrant.

The plaintiffs also cited Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors., (2022) 5 SCC 1, where infringement was established based on the deceptive similarity of marks even when one was a word mark and the other a label mark. The decision underscored the importance of visual and phonetic similarity in evaluating infringement.

To reinforce the rights under passing off despite disclaimer clauses, the plaintiffs relied on Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257 and Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558, both of which held that disclaimers in registration do not bar common law passing off actions.

Other authorities cited include Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, both elaborating on distinctions between infringement and passing off, and stressing that phonetic and visual similarities could lead to consumer confusion.

In opposition, the defendant cited Ultratech Cement Ltd. v. Dalmia Cement, (2016) SCC OnLine Bom 3574, and Soothe Healthcare v. Dabur India Ltd., (2022) SCC OnLine Del 645, to argue that “DURO” was descriptive and common to the trade. The defendant also relied on Pidilite Industries Ltd. v. Vilas Nemichand Jain, (2015) SCC OnLine Bom 4801, arguing that the plaintiffs failed to prove that the descriptive mark had acquired distinctiveness.

Reasoning and Analysis of the Judge:Court conducted an extensive analysis of the statutory framework under Sections 27, 28, and 34 of the Trade Marks Act, 1999, read alongside common law principles of passing off. The Court noted that the plaintiffs were established prior users of the “DURO” mark and had used it continuously since 1964, which created undeniable goodwill and reputation.

While acknowledging that the defendant was a registered proprietor of “DURO TOUCH” and had used it since 2006, the Court held that the prior use by the plaintiffs gave them superior rights. The Judge emphasized that registration is not an absolute defense, and that long-standing use that builds goodwill entitles a trader to protection under passing off.

The Court accepted that the use of “DURO” by the plaintiffs had acquired a secondary meaning and that the general public could associate the defendant’s mark “DURO TOUCH” with the plaintiffs’ goods, especially given the similarity in the products and the phonetic structure of the marks.

The defendant’s arguments on delay, estoppel, and acquiescence were rejected. The Court reiterated that every act of passing off is a continuing tort and that delay alone cannot defeat the right to relief. The argument about the descriptive nature of the word “DURO” was countered by showing that distinctiveness can evolve over time through usage.

The Court concluded that there was a prima facie case of passing off and potential trademark infringement, and that the balance of convenience lay in favour of the plaintiffs. Allowing the defendant to continue would likely result in irreparable harm to the plaintiffs’ goodwill.

Final Decision:The Court allowed the interim application and passed an injunction restraining the defendants, their agents, and associates from using the marks “DURO TOUCH,” “DURO,” or any other deceptively similar mark to the plaintiffs’ registered “DURO” family of trademarks, in relation to plywood and similar goods, until further orders. The Court clarified that these observations were tentative and would not affect the final adjudication of the suit on evidence.

Law Settled in This Case:This case reinforces the principle that prior user rights in trademarks are superior to registration under the Trade Marks Act, 1999. It affirms that common law rights of passing off exist independently of statutory rights and can override registration where deceptive similarity and misrepresentation are shown. The case also reaffirms that descriptive or generic marks, through continuous and extensive use, may acquire distinctiveness and be protected against infringement and passing off. Delay in initiating proceedings does not negate the right to injunctive relief if misrepresentation and likelihood of confusion are established. The ruling underscores that trademark law prioritizes the protection of goodwill and consumer association built through sustained commercial use.

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited:Date of Order: 25th June, 2025:Case Number: IP-COM/3/2024:High Court at Calcutta:Name of Judge: Hon’ble Justice Sugato Majumdar

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

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited:Date of Order: 25th June, 2025:Case Number: IP-COM/3/2024:High Court at Calcutta:Name of Judge: Hon’ble Justice Sugato Majumdar

Very Brief Facts:Duroply Industries (formerly Sarda Plywood) has used the trademark "DURO" since 1964 for plywood products. They discovered Ma Mansa Enterprises using the mark "DURO TOUCH" for similar goods and filed a suit alleging trademark infringement and passing off.

Dispute: The core dispute is whether the defendant’s mark "DURO TOUCH" infringes on Duroply’s rights over the “DURO” family of marks and whether the use constitutes passing off, despite the defendant having registered "DURO TOUCH" and using it since 2006.

Discussion by Judge:  The Court acknowledged that both parties had registered marks and long-standing use. However, it emphasized that Duroply had been using “DURO” since 1964, giving it superior common law rights. The Judge cited multiple Supreme Court rulings on the superiority of prior user rights over registered rights and upheld that passing off remedies are not defeated by disclaimers or registration alone. The term “DURO,” while arguably descriptive, had acquired a secondary meaning due to long use by the plaintiff. The Court found that the defendant’s mark could cause confusion and was deceptively similar.

Decision: The Court granted an interim injunction restraining the defendant from using "DURO TOUCH" or any deceptively similar mark for plywood-related goods. The matter is to proceed to trial for final adjudicatio

Dr. Ena Sharma Vs. State of Himachal Pradesh

Introduction:The present case revolves around allegations of copyright infringement in an academic publication, where the petitioner, Dr. Ena Sharma, sought quashing of an FIR registered under Section 63 of the Copyright Act, 1957. The core dispute concerns the alleged unauthorized use of research material and images previously published in an article co-authored by the complainant. The matter raises significant questions on intellectual property rights, locus standi in criminal jurisprudence, and the scope of judicial interference at the FIR stage.

Factual Background:The complainant, a Senior Resident at Dr. Yashwant Singh Parmar Medical College, Nahan, co-authored a research article titled “Wrist Arthrodesis in Rheumatoid Arthritis using Reconstruction Plate,” which was published in March 2017 in the International Journal of Advanced Research (IJAR). Her husband, Dr. Amit Lakhani, was the principal author. The article, based on a study of five patients, included images and research observations.

Subsequently, another article on a similar subject was published in February 2021 in the Journal of Pharmaceutical Research International (JPRI), wherein Dr. Ena Sharma was named as a co-author. The complainant alleged that the second article reproduced X-ray images, intraoperative photographs, and other research material from the 2017 article without her consent or knowledge, constituting a clear case of copyright infringement.

The petitioner, Dr. Ena Sharma, contested this allegation, arguing that the data and images used were based on a separate study conducted by Dr. Amit Lakhani on 15 patients. She asserted that she merely performed statistical analysis and was falsely implicated due to matrimonial disputes between the complainant and her husband.

Procedural Background:Following the complaint, FIR No. 131 of 2022 was registered at Police Station Nahan, District Sirmaur under Section 63 of the Copyright Act, 1957. The petitioner filed the present petition under Section 482 of the Code of Criminal Procedure seeking quashing of the FIR. The State and the complainant opposed the petition, contending that there was prima facie evidence of copyright infringement and the investigation was at an initial stage.

Legal Issue:The central legal issue in the case was whether the FIR alleging copyright infringement, based on the republication of certain images and content from a previously published article, warranted judicial interference and quashing under Section 482 CrPC at the threshold stage.

Discussion on Judgments:The petitioner relied heavily on the principles laid down in Madhavrao Jiwaji Rao Scindia v. Sambhajirao Chandrojirao Angre, (1988) 1 SCC 692, where the Supreme Court held that proceedings may be quashed if the uncontroverted allegations do not establish a cognizable offence. She also cited B.N. John v. State of U.P., AIR 2025 SC 759, reiterating that FIRs not disclosing a cognizable offence should be quashed. Further reliance was placed on Ajay Malik v. State of Uttarakhand, 2025 SCC OnLine SC 185, to argue that criminal proceedings should not be used as instruments of personal vengeance.

The complainant invoked R.G. Anand v. Deluxe Films, AIR 1978 SC 1613, which laid down that substantial similarity in expression or content, not necessarily exact copying, could amount to copyright infringement. She also referred to Knit Pro International v. State of NCT of Delhi, 2022 LiveLaw (SC) 505, to assert that copyright offences can attract criminal prosecution. The judgments in A.R. Antulay v. Ramdas Sriniwas Nayak, (1984) 2 SCC 500, and Vishwa Mitter v. O.P. Poddar, (1983) 4 SCC 701, were cited to rebut the plea of lack of locus standi, affirming that any individual can initiate criminal proceedings unless explicitly prohibited by statute.

The State and complainant further relied on Neeharika Infrastructure Pvt. Ltd. v. State of Maharashtra, (2021) 19 SCC 401, to argue that courts must exercise extreme restraint in quashing FIRs at the investigation stage. State of Karnataka v. L. Muniswamy, (1977) 2 SCC 699, was cited to delineate the limited circumstances under which judicial interference is permissible.

Reasoning and Analysis of the Judge:The Court, after analyzing the contents of both research articles, observed that some of the images used in the second article published in JPRI were indeed identical to those in the earlier IJAR publication. This prima facie indicated infringement of copyright. The claim that both articles were based on separate studies was not accepted without further investigation, especially as both articles had the same co-author (Dr. Amit Lakhani), who had already assigned the copyright of the first article to IJAR.

The Court rejected the argument that the complainant lacked locus standi, holding that criminal law can be set into motion by anyone unless expressly barred. Relying on A.R. Antulay and Ratan Lal v. Prahlad Jat, (2017) 9 SCC 340, the judge reiterated that copyright infringement, being a cognizable offence under the Copyright Act, can be reported by any aggrieved party.

The judge emphasized that quashing of FIR at the threshold is an exception, not the rule. Citing Neeharika Infrastructure and State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335, the Court held that where the allegations in the FIR, taken at face value, disclose the commission of an offence, the investigation must be allowed to proceed. The FIR did not appear to be malicious or frivolous on its face, nor was the case one of absurdity or manifest illegality warranting judicial intervention.

Final Decision:The High Court dismissed the petition for quashing the FIR, holding that the allegations made in the complaint, supported by preliminary materials, warranted further investigation. The Court found that the continuation of the investigation did not amount to an abuse of process and that the matter was not fit for interference under Section 482 CrPC.

Law Settled in This Case:The judgment reinforces that where an FIR discloses prima facie elements of a cognizable offence, particularly in matters of copyright infringement involving publication of academic articles, the High Court will be slow to quash the proceedings at the threshold. The ruling also affirms the settled legal position that anyone can initiate criminal proceedings unless explicitly prohibited, and that the assignment of copyright to a journal extinguishes any claim of reuse without consent. Substantial similarity of content or reproduction of key elements, even if not verbatim, may amount to copyright infringement and warrants investigation.

Case Title: Dr. Ena Sharma Vs. State of Himachal Pradesh & Others:Date of Order: 26th June, 2025:Case Number: Cr. MMO No. 242 of 2023:Neutral Citation: 2025:HHC:19863: 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

Dr. Ena Sharma Vs. State of Himachal Pradesh

Dr. Ena Sharma Vs. State of Himachal Pradesh:Court: High Court of Himachal Pradesh, Shimla:Case Number: Cr. MMO No. 242 of 2023:Neutral Citation: 2025:HHC:19863:Date of Order: 26th June, 2025:Judge: Hon'ble Mr. Justice Rakesh Kainthla

Brief Facts:The complainant, a doctor and co-author of a 2017 research article in IJAR, alleged that her article’s images and research content were misused without consent in another article published in 2021 by Dr. Ena Sharma in JPRI.The FIR was filed under Section 63 of the Copyright Act, 1957, alleging copyright infringement.

Dispute:Petitioner’s Contention: The material used in the second article was based on a distinct study conducted by Dr. Amit Lakhani (husband of the complainant). The complainant had no independent copyright. The articles were different, and the petitioner merely did statistical analysis.Respondent’s Contention: The complainant asserted copyright infringement of images and research data from the earlier article, to which she was a co-author. The use in the second article was without her or the journal’s consent.

Discussion by the Judge:The Court reviewed that the copyright had been assigned to the first journal (IJAR), and therefore neither the complainant nor her husband could reuse the material.A comparison of the articles showed prima facie similarity in some images, indicating possible infringement.The Court cited principles from landmark cases including B.N. John v. State of U.P., Ajay Malik v. State of Uttarakhand, and Neeharika Infrastructure v. State of Maharashtra, emphasizing the need for restraint in quashing FIRs at the investigation stage.

The Court also dismissed the argument regarding lack of locus standi, holding that anyone can set the criminal law in motion, and the complainant was not barred from filing the complaint. 

Trodat GMBH Vs Addprint India Enterprises

Introduction:This case  presents a significant examination of the principles governing design infringement, particularly emphasizing the perspective from which a design is to be evaluated. It underscores the importance of understanding whether a new design infringes upon a registered design by considering the “informed eye,” a concept distinct from the usual perception of an average consumer. This case also clarifies procedural aspects concerning the scope of appellate intervention in design disputes, and the approach courts should adopt when dealing with design comparisons, especially in relation to registered shape and configuration protections.

Factual Background: TRODAT GmbH, the appellant, holds registered designs for its self-inking stamps, specifically Design Registration Nos. 272348 and 272349, under the names “Flashy 6330” and “Flashy 6903.” The respondent, Addprint India Enterprises Pvt Ltd, sought permission from the Delhi High Court to manufacture and market a self-inking stamp with a proposed design allegedly distinct from the registered designs. The respondent argued that its new design did not infringe upon the appellant’s registered designs, which primarily protect the shape and configuration of the stamp. The appellant contended that the respondent’s proposed design was a blatant infringement, and thus, injunctive relief was warranted to prevent the respondent’s use of the design.

Procedural Background:The respondent filed an interlocutory application seeking permission to proceed with manufacturing and sales of their proposed product, claiming that their design was sufficiently different from the registered designs and did not constitute infringement. The learned Single Judge of the Delhi High Court examined the application, focusing on whether the proposed design infringed the registered designs and whether the respondent’s rights to manufacture and market the new design should be granted. The lower court ultimately permitted the respondent to proceed, holding that the design was not infringing. Aggrieved, the appellant challenged this order before the Division Bench of the High Court through the present appeal.

Legal Issue:The core legal issue revolved around whether the respondent’s proposed design infringed upon the appellant’s registered designs, considering the principles of design infringement law under the Designs Act, 2000? Specifically, the case questioned whether the comparison of the designs should be conducted on the entire article as a whole or by analyzing individual features such as shape and configuration, and what standard of perception (the “informed eye” versus an average consumer) should be employed in determining infringement.

Discussion on Judgments:The court referred to multiple judgments fundamental to understanding design infringement. One notable authority cited is the Supreme Court’s judgment in Wander Ltd v Antox India P Ltd. (1990 Supp SCC 727), which clarified that appellate courts should exercise restraint and avoid interfering with the discretion exercised by a single judge unless there is a demonstrated perversity or arbitrariness. This presages the deference owed to the trial court in matters where factual and technical judgments are involved.

The court also considered the principles laid down in Castrol India Ltd v Tide Water Oil Co. (I) Ltd (1994 SCC OnLine Cal 303), where the comparison of designs should focus on distinguishing features, and it emphasized that every design must be evaluated for its ‘overall impression’ while considering the 'distinguishing features.' Additionally, references were made to the concept that in design law, the “configuration”—the manner in which individual elements are arranged—is critical, and that the shape and configuration protections granted by registration are significant in infringement analysis. As mentioned in the judgment, “the registration in respect of the design is granted of its shape and configuration,” thereby guiding the evaluation of infringement primarily in terms of such features.

Further, the court took note of the judgment from Diageo Brands B.V. and Another v Alcobrew Distilleries India Pvt. Ltd., which discusses standards for infringement, emphasizing the perspective of an 'informed user' or 'instructed eye.' The court highlighted that the test for infringement in design law is not from the view of an average consumer but from that of a knowledgeable and experienced person familiar with similar articles.

Reasoning and Analysis of the Judge:The court analyzed whether the respondent’s proposed design could be said to infringe upon the appellant’s registered designs by applying the “informed eye” perspective. It examined whether the overall impression created by the respondent’s design was substantially similar to that of the appellant’s registered designs. The judgment discussed the importance of assessing the features of the shape and configuration as registered, in contrast with the entire article as a whole.

The court emphasized that the learned Single Judge adopted a detailed and nuanced comparison, focusing on the differences in features and perception from the perspective of an instructed or informed person. As such, the court held that the detailed analysis provided a valid basis for the order, and that no perverse or arbitrary exercise of discretion had occurred. It further underscored that appellate interference in such matters should be limited, considering the established principles articulated by the Supreme Court regarding the scope of second-tier appellate review.

Final Decision: The High Court dismissed the appeal, upholding the order of the learned Single Judge that the respondent’s proposed design did not infringe upon the appellant’s registered designs. The court reaffirmed the approach that infringement should be determined from the perspective of an informed person and that a comparison should focus on the features of shape and configuration as registered. The court also reiterated the principle that appellate courts should exercise judicial restraint and uphold the discretionary decisions of the trial court unless manifest error or perversity is clear.

Law Settled in This Case:This case firmly establishes that in design infringement disputes, the standard of comparison should be from the “informed eye,” which perceives the design based on the features registered, particularly the shape and configuration. It clarifies that the comparison is not simply an article-to-article comparison but requires analyzing the features that define the novelty and uniqueness of the registered design. The judgment also confirms the limited scope of appellate intervention in discretionary orders made by the trial court, endorsing judicial restraint unless arbitrary or irrational decisions are demonstrated.

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

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

Khoday Distilleries Limited Vs. The Scotch Whisky Association

Introduction: In the annals of trademark law, few cases weave a narrative as intricate and compelling as Khoday Distilleries Limited vs. The Scotch Whisky Association. This legal battle, culminating in a Supreme Court judgment on May 27, 2008, pits an Indian whisky manufacturer against a formidable guardian of Scotch heritage. At its heart, the case grapples with the delicate balance between trademark protection, consumer perception, and the equitable doctrines of delay and acquiescence. It’s a story of a brand name—Peter Scot—that stirred a transcontinental dispute, raising profound questions about deception, goodwill, and the passage of time in the realm of intellectual property.

Detailed Factual Background: Khoday Distilleries Limited, now known as Khoday India Limited, embarked on its whisky-making journey in May 1968, introducing a malt whisky under the brand "Peter Scot." The company, incorporated under the Companies Act, 1956, sought to register this trademark in 1971. The application sailed through initial scrutiny, with the Registrar of Trade Marks accepting it for advertisement, subject to association with an existing registration (T.M. No. 249226-B). Despite an opposition from Mohan Meakins, the mark was successfully registered, marking the beginning of Peter Scot’s market presence in India.

The Scotch Whisky Association (SWA), a trade body dedicated to protecting the integrity of Scotch whisky, along with another respondent, entered the fray years later. They became aware of Peter Scot as early as September 20, 1974, through a routine report in the Trade Mark Journal. However, no immediate action followed. It wasn’t until April 21, 1986—nearly 12 years later—that the SWA and its co-respondent filed an application for rectification of the Peter Scot trademark, alleging it deceived consumers into believing it was Scotch whisky. Concurrently, a passing-off suit filed by the SWA in the Bombay High Court in 1987 (C.S. No. 1729 of 1987) remained pending, adding another layer to the dispute.

Khoday defended its mark, explaining its origin through an affidavit by Peter Warren, a former employee. Warren claimed "Peter Scot" was coined from his father’s forename, "Peter," and his nationality, "Scot," inspired also by the famed British explorer Captain Scott and his son Peter Scott, a noted naturalist. The phonetic similarity between "Scott" and "Scot" was acknowledged, but Khoday emphasized its Indian identity, labeling Peter Scot as the "Pride of India," distilled and blended in Bangalore.

The SWA countered with affidavits from 20 individuals, including Ian Barclay, their in-house solicitor, asserting that Peter Scot’s branding—featuring a "Rampant Lion" emblem and slogans like "Distilled from the Finest Malt and Blended with the Choicest Whiskies by Scotch Experts under Government Supervision"—misled consumers into associating it with Scotch whisky, a product exclusively from Scotland.

Detailed Procedural Background: The procedural journey began with Khoday’s trademark registration application, accepted and advertised in the early 1970s. Following its registration, the SWA’s 1986 rectification application landed before the Deputy Registrar of Trade Marks (Respondent No. 3). The Registrar framed five issues: the applicants’ status as "persons aggrieved" under Section 56 of the Trade and Merchandise Marks Act, 1958; the maintainability of the application due to misjoinder; the mark’s distinctiveness; its compliance with Section 11 (prohibiting deceptive marks); and the rectification remedy.

The Registrar ruled that the SWA lacked locus standi, but the second respondent had standing. On distinctiveness, Khoday prevailed, but the Registrar found the mark contravened Section 11, citing unrebutted evidence of consumer confusion and dismissing Khoday’s delay and acquiescence pleas. The rectification was granted on May 12, 1979.

Khoday appealed to the Madras High Court under Section 109 of the Act (T.M.A. No. 3 of 1989). On September 25, 1998, a Single Judge upheld the Registrar’s decision, noting Khoday’s failure to rebut evidence or cross-examine witnesses and rejecting acquiescence due to insufficient evidence of deliberate inaction by the SWA. An intra-court appeal (TMSA No. 2 of 1998) followed, but the Division Bench, on October 12, 2007, affirmed the Single Judge’s ruling, emphasizing the deceptive intent behind Peter Scot’s branding.Undeterred, Khoday sought special leave from the Supreme Court, which was granted, leading to the final adjudication in Appeal (Civil) 4179 of 2008.

Issues Involved in the Case: The Supreme Court distilled two principal issues: (1) Whether the SWA’s delay in filing the rectification application amounted to acquiescence or waiver, barring their claim? and (2) Whether the Registrar and High Court applied the correct legal tests in assessing deception and confusion under Section 11 of the Act?

Detailed Submission of Parties: Khoday mounted a robust defense. They argued that the SWA, aware of Peter Scot since 1974, waited 12 years until 1986 to act, a delay that prejudiced Khoday as its sales soared. This inaction, they contended, constituted acquiescence or waiver, rendering rectification inequitable. They asserted that "Peter Scot" was not deceptively similar to Scotch whisky trademarks, as discerning buyers—typically educated and affluent—would not confuse an Indian product labeled "Pride of India" with Scotch whisky. It criticized the High Court for ignoring the label’s entirety and invoked Section 26 of the Geographical Indications of Goods Act, 1999, to protect their good-faith use.

The SWA countered that delay was irrelevant in rectification proceedings aimed at maintaining register purity and public interest. They argued that Peter Scot’s branding deliberately mimicked Scotch whisky, exploiting its goodwill, as evidenced by unrebutted affidavits showing consumer confusion. Desai cited global precedents protecting "Scot," "Glen," and "Highland," urging a stern stance against fraudulent adoption. He dismissed the 1999 Act’s applicability and emphasized that statutory findings of likelihood of confusion warranted upholding the rectification.

Detailed Discussion on Judgments Cited by Parties and Their Context: Both parties drew on a rich tapestry of precedents, each contextualized to bolster their stance:

• Mohan Meakin Breweries Ltd. vs. The Scotch Whisky Association, PTC (Suppl) (1) 352 (Del) (DB): Cited by the SWA, this Delhi High Court decision protected "Scotch" against Indian misuse, emphasizing consumer protection over trader competition.
• Scotch Whisky Association & Ors. vs. Golden Bottling Ltd., 2006 (32) PTC 656 (Del.): Another SWA citation, it upheld rectification of "Red Scot," reinforcing the deceptive similarity test for whisky branding.
• Srilab Breweries Pvt. Ltd. vs. Scotch Whisky Association, 2006 (33) PTC 527 (Reg.): The SWA relied on this to show consistent success in barring Scottish-evoking marks on Indian whisky.
• William Grant & Sons Ltd. vs. McDowell & Co. Ltd., 1997 (17) PTC: Highlighted by the SWA, it protected "Glenfiddich," underscoring judicial intolerance for Scotch mimicry.
• Ciba Ltd. Basle Switzerland vs. M. Ramalingam, AIR 1958 Bom 56: Khoday cited this Bombay High Court ruling to argue that delay could bar rectification if it prejudiced the registrant, balancing public interest with equity.
• State of Madhya Pradesh vs. Bhailal Bhai, 1964 (6) SCR 261: Khoday referenced this Supreme Court case to suggest a three-year limitation analogously applied to equitable relief, though the court distinguished it as a money claim.
• Sakur vs. Tanaji, AIR 1985 SC 1279: Khoday used this to argue the Limitation Act’s inapplicability to the Registrar, a non-court entity.
• Power Control Appliances vs. Sumeet Research and Holdings, (1994) 2 SCC 448: Khoday leaned on this Supreme Court ruling to define acquiescence as active consent, not mere delay.
• Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel, (2006) 8 SCC 726: Khoday cited this to reinforce acquiescence as a defense where delay prejudiced the defendant.
• Bollinger vs. Costa Brava Wine Coy. Ld., 1960 (1) RPC 16: The SWA invoked this UK case on "Spanish Champagne" to argue that geographic misrepresentations deceive uneducated buyers, though Khoday distinguished it by buyer class.
• Warnick (Erven) Besloten Vennootschap vs. J. Townend & Sons (Hull) Ltd., 1980 RPC 31: The SWA used this to extend Bollinger’s deception test to whisky.
• Scotch Whisky Association vs. Marton De Witt, (2008) FCA 73 (Australia): Khoday cited this Federal Court of Australia decision to argue discerning buyers wouldn’t confuse "Glenn Oaks" with Scotch, contrasting Indian findings.
• Cooper Engineering Co. Pty. Ltd. vs. Sigmund Pumps Ltd., (1952) HCA 15 (Australia): Khoday referenced this to show dissimilar suffixes ("Master" vs. "King") negated confusion, akin to "Peter" vs. "Scot."
• Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357 (US): Khoday drew on this US case’s multi-factor confusion test, emphasizing buyer sophistication and lack of actual confusion.
• Scotch Whisky Association vs. Majestic Distilling Company, 958 F.2d 594 (US): Khoday cited this to argue "Black Watch" wasn’t deceptive absent Scottish origin claims.

Detailed Reasoning and Analysis of Judge: On the delay issue, the court rejected the SWA’s claim that rectification proceedings were immune to equitable defenses. Noting their awareness of Peter Scot since 1974, The court found their 1986 action—12 years later—unjustifiable, especially given their proactive stance against other marks like "Hogmanay" and "Old Angus." Barclay’s explanation of awaiting a Supreme Court ruling was dismissed as hollow, as the SWA pursued other cases concurrently. Drawing on Ciba Ltd., Power Control Appliances, and Ramdev Food Products, Sinha held that the SWA’s inaction constituted acquiescence, causing Khoday substantial prejudice as Peter Scot gained popularity.

On deception, the court critiqued the Registrar and High Court for applying an overly stringent test, ignoring buyer sophistication and label context. The court contrasted the Bollinger test—apt for uneducated champagne buyers—with whisky consumers, whom he deemed discerning, educated, and brand-conscious. Referencing Australian (Marton De Witt) and US (DuPont) precedents, the court emphasized that "Scot" alone didn’t inherently deceive, especially with "Pride of India" and Bangalore origins clearly stated. The SWA’s unrebutted affidavits were insufficient without evidence of actual confusion, shifting the burden unmet due to Khoday’s non-participation—a tactical error, but not fatal given the delay defense. Court rejected the 1999 Act’s relevance, as Peter Scot’s use predated its enactment, and found the Registrar’s discretion misapplied by ignoring equitable principles. The judgment underscored that public interest and register purity, while vital, couldn’t override unconscionable delay.

Final Decision: The Supreme Court allowed Khoday’s appeal, set aside the High Court’s judgment, and restored the Peter Scot trademark, ruling no costs.

Law Settled in This Case: The case clarified that: (1) Delay, acquiescence, and waiver can bar Trademark rectification proceedings under the Trade and Merchandise Marks Act, 1958, when they prejudice the registrant and public interest doesn’t outweigh equity; (2) Deception under Section 11 requires a nuanced test, considering buyer class, label entirety, and actual confusion evidence, not mere phonetic similarity; (3) The Registrar’s discretionary power must balance statutory goals with equitable principles.

Khoday Distilleries Limited Vs. The Scotch Whisky Association: May 27, 2008: Appeal (Civil) 4179 of 2008:AIR 2008 Supreme Court 2737: Supreme Court of India: Hon'ble Judge Shri S.B. Sinha and Shri  Lokeshwar Singh Panta

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

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

Newgen IT Technologies Ltd. Vs. Newgen Software Technologies Ltd.

Bad Faith Adoption and Trademark Protection

Introduction: The dispute in Newgen IT Technologies Ltd. v. Newgen Software Technologies Ltd. epitomizes the complexities involved in trademark conflicts, particularly when commercial partnerships deteriorate into litigation. The matter revolves around the alleged infringement and passing off involving the mark "NEWGEN," a name prominently used in the technology domain. This case throws light on the intricate interplay between prior use, statutory rights, contractual acknowledgments, and equitable doctrines such as acquiescence in trademark law.

Factual Background: Newgen Software Technologies Ltd. (the Respondent) is a well-established software development company, incorporated in 1992 and holding trademark registrations for "NEWGEN" since 1999, with a user claim dating back to 1992. It has operated in classes 09, 16, 35, and 42, and heavily invested in brand promotion.

The Appellant, Newgen IT Technologies Ltd., initially operated under the name VCare Infotech Solutions and Services Pvt. Ltd. In July 2023, both parties entered into a Partnership Agreement to collaborate on software-related services. Notably, Article 14 of this agreement acknowledged the Respondent's exclusive rights over the "NEWGEN" trademarks.

However, in July 2024, the Appellant changed its name to Newgen IT Technologies Ltd. and initiated trademark applications for "NEWGEN IT" across multiple classes, while also launching steps to go public via an IPO. The Respondent terminated the partnership in September 2024 and filed a suit for trademark infringement and passing off in February 2025.

Procedural Background: The learned District Judge (Commercial) at Saket Courts, New Delhi, initially passed an ex-parte ad-interim injunction on 27.02.2025, restraining the Appellant from using the mark "NEWGEN IT." The Appellant’s application under Order XXXIX Rule 4 CPC to vacate the injunction was dismissed on 05.03.2025. Consequently, the Appellant preferred FAO (COMM) 73/2025 and FAO (COMM) 75/2025 before the Delhi High Court.

Legal Issue: Whether the Appellant's adoption and use of the mark "NEWGEN IT" constituted trademark infringement, passing off, and contractual breach in light of the Respondent's prior rights and the Partnership Agreement?

Discussion on Judgments:  The Appellant relied on Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727 to argue against appellate interference with discretionary interim orders unless the decision was perverse. The Appellant also cited Natco Pharma Ltd. v. Bayer Healthcare LLC, 2019 SCC OnLine Del 9124 to claim that the trial court failed to properly assess the balance of convenience.

Other authorities cited by the Appellant include: Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, (2010) 2 SCC 142, arguing "Skyline" was publici juris.  Parakh Vanijya (P) Ltd. v. Baroma Agro Products, (2018) 16 SCC 632: coexistence of similar marks.  PhonePe (P) Ltd. v. Resilient Innovations (P) Ltd., 2023 SCC OnLine Bom 764, on descriptive marks.

The Respondent relied on: Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, stressing prior user rights. Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448 on acquiescence. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., 1955 SCC OnLine SC 12: disclaimers do not affect passing off rights. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 on deceptive similarity.

Reasoning and Analysis of the Judge:  The High Court reaffirmed the settled principle from Wander Ltd. and Ramakant Ambalal Choksi v. Harish Ambalal Choksi, 2024 SCC OnLine SC 3538, that appellate interference in discretionary orders must be limited to cases of perversity or arbitrariness.

The Court noted the Respondent’s prior and continuous use since 1992, while the Appellant began operations under a different name in 2017 and only rebranded to "Newgen IT" during the subsistence of the partnership. The Appellant’s act of adopting a confusingly similar mark while in a contractual relationship acknowledging Respondent's exclusive rights indicated mala fides.

Further, Article 14 of the Partnership Agreement clearly vested the rights of the "NEWGEN" mark with the Respondent. The Court also found the marks visually and phonetically similar, and held that minor distinctions like "IT" and "Software" were insufficient to avert confusion.

On acquiescence, the Court referred to Power Control Appliances and ruled that mere tolerance during the partnership did not amount to legal acquiescence, especially when the Appellant changed its name post-agreement.

Final Decision:  The Delhi High Court dismissed both appeals. It held that the trial court had applied its discretion judiciously and the Appellant had failed to demonstrate any perversity or material suppression of facts by the Respondent. The interim injunction in favour of the Respondent was upheld.

Law Settled in This Case: The case clarifies that: Prior use and registration of a trademark, coupled with contractual acknowledgment, override claims of concurrent user. An interim injunction can be granted even against a party who was formerly in partnership if the subsequent conduct indicates bad faith. Acquiescence cannot be claimed where the tolerance was conditional and contractual. Appellate courts will not interfere with discretionary interim orders unless the exercise is perverse, arbitrary, or ignores settled legal principles.

Case Title: Newgen IT Technologies Ltd. Vs. Newgen Software Technologies Ltd.: Date of Order: 12 June 2025:Case Number: FAO (COMM) 73/2025 and FAO (COMM) 75/2025:Neutral Citation: 2025:DHC:4964: Court: High Court of Delhi at New Delhi:Judge(s): Hon'ble Mr. Justice Navin Chawla and Hon'ble Mr. Justice Harish Vaidyanathan Shankar

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

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

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