Ambika Industrial Corporation Vs. Registrar of Trade Marks

Procedural Integrity and Proprietary Authority in Trademark Administration

Introduction:This case concerns the legal complexities arising from a trademark ownership dispute between former partners of a business. The matter delves into issues surrounding the alteration of the registered address of a trademark, the validity of administrative orders passed by the Trade Marks Registry, and the procedural integrity of such modifications. The High Court of Delhi was approached through a writ petition by the registered proprietor of the trademark “AMBIKA,” seeking rectification of the address entry in the trademark register which had been unilaterally changed at the instance of a former partner.

Factual Background:Ambika Industrial Corporation, the petitioner firm, is a longstanding user and registered proprietor of the trademark “AMBIKA” in relation to cycles and their parts. The mark has been in use since 1981, with multiple registrations filed under various classes, particularly Classes 12, 28, and 35. The dispute arises from the involvement of Respondent No. 2, Rakesh Kumar, who was formerly a partner of the petitioner firm. He retired from the firm through a retirement deed dated 1st April 1987, relinquishing all his rights, title, and interest in the firm. Despite this retirement, Respondent No. 2 later attempted to interfere with the records of the Trade Marks Registry concerning the trademark “AMBIKA.”

The petitioner firm had obtained registration of the trademark under application number 381350. A TM-24 form was submitted on 30th April 1998, requesting entry of subsequent proprietors, which was allowed by the Registry on 30th November 2006. Subsequently, the petitioner firm also instituted a civil suit, CS(COMM) 63/2018, against Ambika Exports Pvt. Ltd., a company wherein Respondent No. 2 is a director. An ad-interim injunction was passed by the Delhi High Court restraining the use of “AMBIKA” or deceptively similar marks by the respondent’s entity.

Procedural Background:The controversy arose when Respondent No. 2 filed a Form TM-34 on 23rd September 2013, seeking change of address of the registered proprietor of the trademark to his own address at 110-R, Modern Town, Ludhiana. The Trade Marks Registry allowed this request through an order dated 13th July 2018. The petitioner firm, on discovering this development through an RTI application, filed a review petition against the said order. Although a hearing was initially scheduled, it was adjourned on the request of Respondent No. 2 and never rescheduled, despite multiple reminders from the petitioner. Consequently, the petitioner filed the present writ petition seeking restoration of the original address in the register of trademarks.

Legal Issue:The core legal issue before the Court was whether the Trade Marks Registry acted lawfully and within its jurisdiction in allowing the change of address of the registered proprietor of a trademark on the basis of an application by a person who was no longer associated with the proprietor firm?

Discussion on Judgments:No external judicial precedents or case laws were cited by either party or referred to by the Court in the present matter. The case was determined purely on the basis of the factual matrix, administrative conduct of the Trade Marks Registry, and the proprietary status as per the Register of Trade Marks.

Reasoning and Analysis of the Judge:The Court observed that the petitioner firm continues to be the registered proprietor of the trademark “AMBIKA.” It was not in dispute that Respondent No. 2 had retired from the firm in 1987. Despite the respondent's claim to co-ownership, that dispute was pending adjudication in a civil suit and did not justify a unilateral change in the registered address by the Trade Marks Registry. The Court noted that the order passed by the Registry did not provide any rationale or legal basis for the address change, especially when it was initiated by someone with no legal authority in the firm. The Court held that such a change without notice to the registered proprietor and without any inquiry into the validity of the request was both procedurally and substantively unjustified.

Final Decision:The Court quashed the impugned order dated 13th July 2018 passed by the Trade Marks Registry and directed restoration of the registered address of the trademark “AMBIKA” to its position prior to the said order. To maintain fairness and transparency, the Court also directed that all future communications regarding the trademark by the Registry be marked to both the petitioner firm and Respondent No. 2. The writ petition was accordingly disposed of with directions for compliance to be conveyed to the Trade Marks Registry.

Law Settled in This Case:The case affirms that any administrative change in the Trade Marks Register, particularly relating to address or ownership of a registered trademark, must be based on proper authority, transparency, and rationale. Unauthorized and unilateral actions by third parties without proper notice or standing cannot form the basis of valid alterations in the official records maintained by the Trade Marks Registry. Furthermore, mere pending civil disputes regarding ownership do not empower a former partner to act as a proprietor for administrative purposes unless judicially recognized.

Case Title: Ambika Industrial Corporation Vs. Registrar of Trade Marks:Date of Order: 26th May, 2025:Case Number: W.P.(C)-IPD 35/2022:Neutral Citation:2025:DHC:4865:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

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

Ambika Industrial Corporation Vs. Registrar of Trade Marks

Case Title: Ambika Industrial Corporation Vs. Registrar of Trade Marks:Date of Order: 26th May, 2025:Case Number: W.P.(C)-IPD 35/2022:Neutral Citation: 2025:DHC:4865:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

The petitioner firm, Ambika Industrial Corporation, is the registered proprietor of the trademark "AMBIKA". Respondent No. 2, a former partner of the petitioner firm who had retired in 1987, filed a Form TM-34 seeking change of address of the registered proprietor to his own address. The Registrar of Trade Marks allowed this request by an order dated 13th July 2018. The petitioner challenged this order, asserting that the respondent had no right to request such a change after retirement, and that the Registry acted without justification.

The dispute centered on whether the Registry was justified in altering the registered address of the trademark on the basis of a request from a person who was no longer associated with the registered proprietor.

The Judge observed that the petitioner firm remains the registered proprietor of the mark and that the impugned order lacked any reasoning or legal basis for the address change. Without entering into the merits of the parties’ partnership dispute, which is already pending in civil court, the Court held that the change of address could not be sustained.

The Court quashed the Registrar’s order dated 13th July 2018 and directed restoration of the trademark's registered address as it stood prior to the said order. It further directed that all communications from the Registry should be marked to both the petitioner firm and respondent No. 2.

Aktiebolaget Volvo Vs. Mantis Technologies Pvt. Ltd

Case Title: Aktiebolaget Volvo Vs. Mantis Technologies Pvt. Ltd. Case Number: CS(COMM) 199/2020 Date of Order: May 13, 2025 Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal Neutral Citation: 2025:DHC:3938

Fact:

Aktiebolaget Volvo (and its associated entities) filed a suit against Mantis Technologies Pvt. Ltd. and other defendants, alleging infringement of its well-known "VOLVO" trademark, which is extensively recognized and registered in India. The plaintiffs operate in the automotive and transportation sectors, providing commercial vehicles and related services globally and in India, and have invested heavily in promoting their "VOLVO" brand. The defendants, engaged in the travel and bus services industry, used the "VOLVO" mark without authorization, creating confusion and infringing on the plaintiffs' rights.

Procedural Details:

• The original suit was filed seeking an injunction to restrain infringement and passing off.
• The court initially granted ex-parte ad interim injunctions restraining certain defendants from using the "VOLVO" mark.
• Multiple defendants were served, and some were deleted or made ex parte during the proceedings.
• The court referred parties for mediation, and some defendants settled.
• Several defendants, including defendant no.7, did not appear, and the court proceeded ex parte against them.
• The court ultimately decided the case on merits, addressing damages, infringement, and the defendants' conduct.

Issue:

Whether the defendants' use of the "VOLVO" trademark amounts to infringement and passing off, considering the well-known and registered status of the "VOLVO" mark, and whether the defendants' conduct was deliberate and mala fide, warranting damages and injunctions.

Decision:

• The court found that the defendants had infringed the plaintiffs' "VOLVO" trademark and had deliberately evaded court proceedings.
• Defendants no.5, 6, 7, and 8 were noted for continued profit-making despite service and orders.
• Damages and injunctions were granted against infringing defendants.
• The court disposed of pending applications and directed the decree sheet to be drawn up, closing all remaining claims and proceedings.

Penguin Books Ltd. Vs India Book Distributors

Protecting Foreign Literary Works in India

Introduction: This case involves a dispute between the publisher of a copyrighted book, Penguin Books Ltd., and a distributor and printers in India regarding allegations of copyright infringement. The core issue is whether the defendants illegally reproduced and distributed a book titled "Spycatcher" without proper authorization.

Detailed Factual Background:The plaintiff in the case, Penguin Books Ltd., is a reputed UK-based publishing house and the owner of the copyright for the book "Spycatcher", authored by Peter Wright. The book is an autobiographical account of Wright's time as an MI5 agent and details covert operations of the British intelligence services. Due to its sensitive and controversial content, the UK government attempted to block its publication and distribution domestically.

Despite legal efforts in the UK to restrain publication, Penguin Books Ltd. discovered that copies of the book had begun to surface in India. The plaintiff alleged that the defendants, namely India Book Distributors and associated entities, had printed and circulated the book in India without obtaining any authorization from the rightful copyright owner. Penguin Books claimed exclusive rights to the book and asserted that no Indian distributor had been granted any rights to publish or sell the work. Therefore, the plaintiff initiated legal proceedings alleging copyright infringement under Indian law.

Detailed Procedural Background: The matter was brought before the High Court of Bombay. Penguin Books Ltd. sought an interim injunction against the defendants to restrain them from printing, publishing, or distributing the infringing copies. The defendants responded by denying any wrongdoing, asserting that they had either lawfully obtained copies or were merely distributing what they believed to be legitimate publications sourced from abroad.The learned single judge, where the suit was instituted, refused the injunction. From his order of refusal Penguins appeal to this court.

Issues Involved in the Case: The primary legal issues raised in this case were:Whether the plaintiff, Penguin Books Ltd., held a valid copyright over the book Spycatcher in India?Whether the defendants violated the Copyright Act, 1957 by distributing or reproducing the book without the plaintiff’s authorization.

Detailed Submissions of Parties: The plaintiff submitted that it held exclusive rights to the book Spycatcher, and offered evidence of unauthorized sale and distribution by the defendants. They emphasized the ongoing litigation in the UK and the importance of preserving their rights internationally, including in India. They argued that allowing distribution in India would amount to a violation of international copyright norms and significantly undermine their commercial and intellectual property interests.

To support their position, the plaintiff cited several landmark cases, including R.G. Anand v. Delux Films, (1978) 4 SCC 118, which laid down the principles for establishing copyright infringement, and Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, which discussed the standard of originality required for copyright protection under Indian law.

The defendants, on the other hand, denied that they had printed the book. They claimed to have lawfully procured copies from foreign sources and asserted that they were not liable for infringement. They argued that resale of lawfully purchased books, even if imported, did not constitute an infringement under Indian law. Furthermore, they contended that an Indian court should not be influenced by an ongoing UK case and that the content of the book, regardless of its sensitivity, was a matter of public interest.

Detailed Discussion on Judgments and Citations:The court closely analyzed the case of R.G. Anand v. Delux Films, (1978) 4 SCC 118, which held that copyright infringement occurs when there is substantial copying of the expression of an idea and not merely the idea itself. This case was invoked by the plaintiff to argue that unauthorized publication and sale of even part of the book without permission amounted to clear infringement.

The case of Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, was cited to reinforce that Indian law grants copyright protection to all original literary works, irrespective of whether they were published in India. The court found this reasoning applicable in the present case, supporting the plaintiff’s claim of ownership and protection under the Indian Copyright Act, 1957.

The court also took judicial notice of the proceedings in the UK where the British Government had tried to stop the publication of Spycatcher. Although this was not directly binding, the court acknowledged that the plaintiff’s rights had been recognized by courts in other jurisdictions and should not be lightly disregarded in India.

Detailed Reasoning and Analysis by the Judge: Justice Lentin observed that there was sufficient prima facie evidence demonstrating that Penguin Books Ltd. was the copyright holder of Spycatcher. The defendants had failed to offer credible documentation or proof to establish that they had lawfully acquired the right to distribute or publish the book in India. The court emphasized that even if the books were obtained through overseas purchases, the unauthorized distribution in India still constituted infringement under Indian copyright laws.

The court noted that the plaintiff was likely to suffer irreparable harm if the defendants were allowed to continue distribution, especially considering the limited commercial window available due to the book's controversial nature. It was also found that the balance of convenience tilted in favor of the plaintiff. The judge further reasoned that public interest could not override private legal rights, especially when those rights were protected by statute.

Final Decision:The High Court of Bombay granted an interim injunction in favor of Penguin Books Ltd. The court restrained the defendants from printing, publishing, selling, distributing, or in any other manner disposing of any copies of Spycatcher pending the final disposal of the suit.

Law Settled in This Case: This case reaffirmed that Indian copyright law protects the rights of foreign copyright holders, even if the work has not been published in India. Unauthorized distribution of copyrighted work, including imported copies, without permission amounts to infringement. Indian courts can enforce such rights and grant relief, including injunctions, irrespective of ongoing international disputes or foreign court orders. This ruling underscores the territorial integrity and application of the Copyright Act, 1957 within India.

Case Title: Penguin Books Ltd. Vs India Book Distributors & Ors.:Date of Order: 1 August 1984:Citation: AIR1985DELHI29, 26(1984)DLT316:Court: High Court of Delhi:Presiding Judge: Hon'ble Justice Shri Avadh Bihari Rohtagi

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

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

SML Limited Vs. Mohan & Company & Anr.

Interim Relief and Presumption of Validity in Patent Law

Introduction:This case involves a significant dispute in the field of intellectual property law, particularly relating to patent infringement in the agricultural sector. The litigation centers on Indian Patent No. 282092, concerning a novel agricultural composition. The plaintiff, SML Limited, a research-driven agrochemical company, approached the High Court of Himachal Pradesh alleging patent infringement by the defendants, Mohan & Company and Safex Chemicals India Ltd., over a competing fertilizer product branded as "Aladdin." The plaintiff sought interim injunctive relief pending final adjudication. The case illustrates critical questions of patent validity, inventive step, public interest under regulatory frameworks, and the balance of convenience in granting interim relief in infringement suits.

Factual Background:SML Limited is the assignee and lawful proprietor of Indian Patent No. 282092, granted on March 30, 2017, for a fertilizer composition comprising sulfur, zinc oxide, and an agrochemically acceptable excipient in specific micronized granular form. The plaintiff launched its product under the brand name “Techno Z” in August 2018. The patent was subjected to pre-grant and post-grant oppositions, both of which were dismissed after full consideration by the Indian Patent Office.

In 2023, the plaintiff discovered that the defendants were marketing a similar product under the name “Aladdin,” which allegedly fell within the scope of Claims 11 and 12 of the suit patent. The composition, structure, and particle size of the product were alleged to be substantially identical to those protected under the patent.

Procedural Background:The plaintiff filed a suit for permanent injunction along with an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, seeking interim injunction to restrain the defendants from continuing the manufacture, sale, and distribution of the infringing product. An ex parte interim injunction was granted on July 24, 2023. The defendants challenged the injunction through a commercial appeal, which was dismissed on the grounds of delay. Subsequently, the High Court heard detailed arguments from both sides and reserved judgment on the interim application on April 25, 2025.

Legal Issue:The primary legal issue was whether the plaintiff was entitled to an interim injunction against the defendants for the alleged infringement of Indian Patent No. 282092. The question further involved whether the defendants had raised a credible challenge to the validity of the patent under Sections 3(d), 2(1)(ja), and 64 of the Patents Act, 1970, and whether public interest considerations under the Fertilizer Control Order (FCO) could override proprietary patent rights.

Discussion on Judgments:The plaintiff placed heavy reliance on Novartis AG & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 6430, where the Delhi High Court held that a patentee enjoys exclusive monopoly over the patented invention and is entitled to seek protection under Section 48 of the Patents Act. The Court emphasized that even at the interim stage, the statutory rights of a patent holder must be protected in the absence of a strong challenge to the validity of the patent.

Another case cited was Bristol-Myers Squibb Co. & Ors. v. J.D. Joshi, 2015 SCC OnLine Del 10109, where the Court held that old and unopposed patents enjoy a presumption of validity and interim relief should ordinarily be granted unless a strong prima facie challenge is made.

To support its claim of credibility in patent enforcement, the plaintiff referred to Strix Ltd. v. Maharaja Appliances Ltd., MIPR 2010 (1) 0181, where it was held that a defendant must present acceptable scientific material supported by expert evidence to raise a credible challenge to validity.

The defendants relied on Dhanpat Seth & Ors. v. Nil Kamal Plastic Crates Ltd., 2007 SCC OnLine HP 33, where the Himachal Pradesh High Court held that mere grant of a patent does not automatically entitle the patentee to an injunction. Section 107 of the Patents Act allows a defendant to challenge the validity of a patent even in an infringement suit.

They also cited F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2008 SCC OnLine Del 382, where the Delhi High Court held that the six-year rule for old patents is only a cautionary principle, and the patentee must still demonstrate prima facie strength in its case.

The defendants further relied on Novartis AG v. Natco Pharma Ltd., 2021 SCC OnLine Del 5340, to argue that claims lacking inventive step or falling within prior art should not be protected under an interim injunction. They asserted that their product followed government-mandated FCO standards, and that the plaintiff's patent simply mimicked these existing public standards.

Reasoning and Analysis of the Judge: The Court analyzed the pleadings, scientific material, expert affidavits, and comparative composition data presented. The Court observed that the plaintiff had not only secured a statutory patent but had also successfully defended it in both pre- and post-grant opposition proceedings. The patent had remained unchallenged for over 14 years.

The Court noted that Claims 11 and 12 of the suit patent clearly described a fertilizer composition with specific ranges for sulfur, zinc oxide, and particle size, and the expert report from Dr. Phool Kumar Patanjali demonstrated that the defendants’ product “Aladdin” fell within these technical specifications. The Court found that the defendants had not submitted any rebuttal expert testimony or substantial material to credibly challenge the novelty or inventive step of the patent.

While the defendants argued that the product complied with FCO standards and involved bentonite as an excipient, the Court held that FCO compliance could not justify infringement of a patent. The regulatory framework under the Essential Commodities Act, 1955, does not supersede proprietary rights granted under the Patents Act. The Court was also unconvinced by the defendants’ jurisdictional objections, finding that sales within the State had been established.

Importantly, the Court held that public interest would not be served by allowing unlicensed use of patented technology, especially when the patentee had invested in significant R&D efforts and the patent had survived statutory scrutiny.

Final Decision:The High Court granted the interim injunction, restraining the defendants from manufacturing, using, selling, offering for sale, importing, or exporting the infringing product “Aladdin” or any product covered under Indian Patent No. 282092 until further orders. The Court upheld the statutory exclusivity conferred by the patent and found that the balance of convenience, irreparable harm, and prima facie case all lay in favor of the plaintiff.

Law Settled in This Case:The judgment reaffirmed that the grant of an Indian patent, especially one that has stood the test of opposition and been in force for a significant duration, enjoys a presumption of validity. A defendant challenging such a patent in interim proceedings must raise a credible and scientifically supported challenge. The case establishes that statutory compliance with FCO regulations does not immunize an infringing product from patent enforcement. Furthermore, the Court clarified that interim injunctions in patent cases must balance statutory rights, prima facie infringement, and the public interest without deferring entirely to regulatory standards under different legislation.

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

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.

Protecting Packaging, Get-Up, and Trade Dress under Indian IP Law

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

An Examination of Prior Use, Acquired Distinctiveness, and the Limits of Trademark Registration

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

Copyright Infringement in Medical Publications

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.

Copyright Infringement in Medical Publications

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