VIP Industries Ltd Vs. Carlton Shoes Ltd

Territorial Goodwill and the Limits of Passing Off

Introduction: The case of VIP Industries Ltd v. Carlton Shoes Ltd & Anr., decided by the Division Bench of the Delhi High Court, is a significant pronouncement in the domain of trademark law, particularly in determining the parameters of passing off where multiple registered proprietors of an identical mark co-exist. It presents a complex legal conflict involving cross-suits by two entities, each asserting goodwill and prior user rights over the trademark “CARLTON” in respect of goods under Class 18. The judgment settles the essential question of whether goodwill in a mark can be claimed generically or must be tied specifically to the goods/services concerned.

Factual Background: Carlton Shoes Ltd (CSL), a footwear brand, claimed adoption and use of the trademark “CARLTON” in India since 1994 through its registration for various goods under Class 18, including bags and luggage, although its use had been predominantly for footwear and accessories. VIP Industries Ltd (VIP), a reputed manufacturer of luggage products, acquired rights over the CARLTON mark from a UK-based entity (Carlton International PLC) via an Assignment Agreement in 2004. Since then, VIP asserted that it had been using the CARLTON mark exclusively for travel luggage, suitcases, and related goods, accruing considerable goodwill in the Indian market.

The dispute arose when CSL initiated plans to extend its use of the CARLTON mark to travel luggage. VIP objected, claiming exclusive goodwill in the luggage segment under that mark, which led to cross-suits asserting rights and seeking injunctive reliefs against each other’s use of “CARLTON”.

Procedural Background

CSL filed CS (Comm) 730/2019 seeking a permanent injunction against VIP from using “CARLTON” for goods in Class 18, relying on its prior registration and user in India. VIP responded with CS (Comm) 52/2020, requesting a similar injunction to prevent CSL from using “CARLTON” for bags and luggage. Both parties filed applications under Order XXXIX Rules 1 and 2 CPC seeking interim reliefs pending trial.

By the impugned order dated 17 July 2023, the learned Single Judge dismissed VIP’s interim injunction application and granted interim relief to CSL, restraining VIP from using the CARLTON mark for luggage and allied goods. VIP preferred two appeals: FAO(OS)(COMM) 151/2023 and FAO(OS)(COMM) 152/2023 before the Division Bench of the Delhi High Court.

Legal Issue: The central issue before the Court was whether goodwill for the purpose of a passing off action attaches to the mark generally or to the mark as used for particular goods? Additionally, the Court examined whether VIP, as a later user in India, could restrain CSL from using the mark for luggage, when CSL was the first user in India, albeit in a different product category.

Discussion on Judgments:  The parties referred to various precedents to buttress their respective positions on trans-border reputation, territoriality of trademark rights, and the essentials of a passing off claim.

VIP cited Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, and Neon Laboratories Ltd v. Medical Technologies Ltd, (2016) 2 SCC 672, to emphasize the principle of “first in the market” and to support its claim of prior user through its predecessor internationally, and domestically since 2004.

They also relied on Beiersdorf AG v. Ajay Sukhwani, 2008 SCC OnLine Del 1226, and Mittal Electronics v. Sujata Home Appliances Pvt. Ltd., 2020 SCC OnLine Del 2658, to argue that goodwill must be shown in the mark specifically for the goods concerned—in this case, travel luggage.

CSL placed heavy reliance on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, where the Supreme Court clarified that trans-border reputation alone is insufficient to claim passing off; the mark must have goodwill in India at the relevant time. CSL also cited S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, to assert the precedence of territorial use in passing off actions.

The Court further referred to the principles enunciated by Lord Diplock in Erven Warnink BV v. J. Townend & Sons (Hull) Ltd., [1979] 2 All ER 927, to define the foundational ingredients of a passing off claim: misrepresentation, damage to goodwill, and likely deception among average consumers.

Reasoning and Analysis of the Judge:  The Division Bench agreed with the learned Single Judge’s core findings. It held that since both parties were registered proprietors of the CARLTON mark under Class 18, neither could claim exclusive rights against the other under Section 28(3) of the Trade Marks Act, 1999. The controversy, therefore, was to be resolved purely on the principles of passing off.

On the issue of trans-border reputation, the Court reiterated the territoriality principle as settled in Toyota Jidosha. It concluded that VIP had not placed sufficient material to show spillover of reputation in India before 2004, i.e., before it began domestic use of the CARLTON mark. It found VIP’s evidence of foreign advertising and brand recognition to be weak in demonstrating substantial awareness among Indian consumers.

More crucially, the Court ruled that CSL had substantiated its claim of goodwill in India from as early as 2003, supported by sales invoices, marketing in Indian publications, and a presence on Indian e-commerce platforms. The Bench dismissed VIP’s argument that goodwill must be tied to the specific product (luggage) rather than the mark itself, noting that CSL had, at the very least, established goodwill in the CARLTON mark for accessories falling under Class 18, including handbags, thereby making the likelihood of confusion real and imminent.

The Court emphasized that passing off is a tort rooted in protecting goodwill from misrepresentation, and since CSL had shown prior commercial use of the mark in India, VIP’s use, even if innocent, would amount to misrepresentation likely to cause confusion.

It further rejected VIP’s allegation of CSL’s dishonest intent, noting that CSL had earlier rights and that VIP’s claim of launching “Carlton” luggage in 2004 was not convincingly supported by contemporaneous evidence. On the contrary, VIP’s own annual reports suggested a “soft launch” of Carlton luggage only in 2010-11.

The Bench also declined to grant relief to VIP on the grounds of delay or balance of convenience. It held that the iniquitous consequence VIP complained of—being injuncted despite longer usage for luggage—was a result of its own inability to establish goodwill prior to CSL’s user.

Final Decision:  The Division Bench upheld the decision of the learned Single Judge. It dismissed VIP’s appeals (FAO(OS)(COMM) 151/2023 and FAO(OS)(COMM) 152/2023), thereby maintaining the interim injunction against VIP. Consequently, VIP is restrained from marketing or selling bags and related goods under the CARLTON mark in Class 18, while CSL is permitted to continue its use.

Law Settled in This Case: This judgment reinforces the principle that in a passing off action between proprietors of the same registered mark under Section 28(3), priority of goodwill and actual territorial use in India determines the right to injunctive relief. The Court clarified that goodwill in a mark need not always attach to a specific sub-category of goods if confusion is likely to arise. The territoriality principle remains dominant, and trans-border reputation must be backed by evidence of actual recognition in India. The ruling also underscores that misrepresentation, even if innocent, may support a claim of passing off if confusion is probable and goodwill exists.

Case Title: VIP Industries Ltd Vs. Carlton Shoes Ltd & Anr.:  Date of Order: 1 July 2025:  Case Number: FAO (OS) (COMM) 151/2023 & FAO (OS) (COMM) 152/2023:Neutral Citation: 2025:DHC:5042:DB:Court: High Court of Delhi at New Delhi:Coram: Justice C. Hari Shankar and 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

Modi-Mundipharma Pvt. Limited Vs. Speciality Meditech Pvt. Ltd

Modi-Mundipharma Pvt. Limited Vs. Speciality Meditech Pvt. Ltd. : July 01, 2025:RFA(OS)(COMM) 8/2023:2025:DHC:5039-DB:High Court of Delhi:Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

The appellant, Modi-Mundipharma Pvt. Ltd., filed a suit alleging that the respondents’ use of the mark FEMICONTIN infringed its registered trademarks FECONTIN-F and CONTIN, part of its “CONTIN family of marks” used for pharmaceutical products, claiming long-standing use and market reputation. The respondents contended that CONTIN was descriptive, that the rival marks were visually and phonetically different, and that FEMICONTIN originated from “FE” denoting iron and “CONTIN” suggesting continuous release, a common industry term.

Procedurally, the appellant had previously filed suits in other forums, withdrawn them due to jurisdictional objections, and finally pursued the present suit, which was dismissed by the learned Single Judge on March 23, 2023. The appellant then filed this appeal under the Commercial Courts Act, 2015.

The dispute centered on whether the appellant could claim exclusive rights over the mark CONTIN either as a standalone mark or within a family of marks, and whether the respondents’ use of FEMICONTIN infringed FECONTIN-F or amounted to passing off.

In discussion, the Court noted the appellant had not used CONTIN as a standalone mark and that “FE” was a descriptive prefix relating to iron, while “CONTIN” referred to the drug’s continuous release feature. The Court emphasized that descriptive or generic parts of a mark cannot be monopolized, drawing from judgments like Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448. It found that FEMICONTIN and FECONTIN-F differed in composition, packaging, price, and appearance, reducing the likelihood of confusion.

The Court ultimately upheld the learned Single Judge’s dismissal of the suit, holding that the appellant failed to establish infringement or passing off. It noted the mark CONTIN was never used per se by the appellant and the descriptive elements could not be exclusively claimed.

Kabushiki Kaisha Toyota Jidoshokki Vs. LMW Limited

Kabushiki Kaisha Toyota Jidoshokki Vs. LMW Limited:July 01, 2025:CS(COMM) 881/2024:2025:DHC:5122:High Court of Delhi:Hon’ble Mr. Justice Saurabh Banerjee

The plaintiff, a Japanese company and owner of Indian Patent IN244759 titled “Fiber Bundle Concentrating Apparatus in Spinning Machine,” alleged that the defendant’s spinning machine product “Spinpact” infringed its patented technology by using bottom nip rollers with grooves of depth greater than 0.04mm, matching the patented claims. The plaintiff had filed a suit seeking a permanent injunction against the defendant’s manufacture and sale of the allegedly infringing product.

Procedurally, the plaintiff filed an interim application under Order XXXIX Rules 1 and 2 CPC for injunction during the pendency of the suit. The defendant contested the application, raised counterclaims challenging the validity of the patent for lack of novelty and inventive step, and argued that the patent had already expired on May 24, 2025, which made the injunction futile.

The dispute centered on whether the plaintiff could secure an interim injunction to restrain the defendant’s alleged infringement despite the patent’s expiry, and whether the claimed invention involved sufficient inventive step over prior art.

In discussion, the Court noted that under Section 53 of the Patents Act, once a patent expires, its subject matter enters the public domain and cannot be protected further. The Court relied on the Supreme Court’s decision in Novartis AG & Anr. v. Natco Pharma Limited, SLP(C) No.16237/2024, which held that post-expiry of a patent, it is unnecessary to adjudicate interim injunction applications on merits, as injunctions would become legally ineffective.

The Court dismissed the application for interim injunction, holding that after expiry of the patent, the plaintiff could not restrain others from using the patented technology, though the plaintiff remained entitled to prove past infringement during the patent’s subsistence and claim damages. The Court directed the defendant to file an affidavit disclosing details of products made before expiry, to assist in final adjudication.

Amazon Technologies Vs Lifestyle Equities

Amazon Technologies Vs Lifestyle Equities:July 01, 2025:RFA(OS)(COMM) 11/2025: 2025:DHC:5036-DB: High Court of Delhi: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

The appellant, Amazon Technologies Inc, challenged a judgment where the Single Judge awarded Lifestyle Equities CV and its group damages of ₹336 crores for alleged trademark infringement concerning the use of a polo player logo mark on apparel sold under Amazon’s private label ‘Symbol’ through Cloudtail on Amazon India’s platform. The claim in the original plaint had been for ₹2 crores, which was never formally amended.

Procedurally, Amazon Technologies was proceeded ex parte after allegedly being served, though the service itself and the manner of proceeding were contested. The trial, recording of evidence, and final submissions happened entirely in the absence of Amazon, with only the plaintiff present. The Single Judge ultimately passed a decree against Amazon Technologies for ₹336 crores plus costs, based solely on the plaintiff’s evidence and post-argument written submissions that significantly enhanced the damages claim, without any formal amendment to the pleadings.

The dispute centered on whether it was legally permissible to award damages vastly beyond what was pleaded, and whether Amazon Technologies, which claimed only to have licensed its ‘Symbol’ mark to Cloudtail, could be held liable for infringing products where Cloudtail had admitted unilateral responsibility.

In discussion, the Division Bench highlighted that the entire trial and award process violated principles of natural justice, as the decree was passed in the absence of the main defendant, based on new claims that were neither pleaded nor proven through contested evidence. The Court emphasized that the damages claim could not be expanded from ₹2 crores to ₹336 crores through written submissions alone, without amendment and without giving the absent defendant a chance to respond.

The Court stayed the operation of the decree, including the requirement to furnish security, finding this to be an exceptional case where enforcing the decree pending appeal would cause substantial injustice.

Dong Yang PC, Inc. Vs. Controller of Patents and Designs

When Simplicity Becomes Innovation: Examination of Section 2(1)(ja) of the Patents Act 1970

Introduction: This case concerns the appeal filed by Dong Yang PC, Inc. against the Controller of Patents and Designs under Section 117A of the Patents Act, 1970. The dispute revolves around the refusal of the appellant's patent application for a “Vertical Rotary Parking System” on grounds of lacking an inventive step under Section 2(1)(ja) of the Act. The key issue is whether the subject invention represents a true technical advancement or is merely a workshop modification of an earlier patent (D-5) by the same applicant.

Factual Background: Dong Yang PC, Inc. filed an Indian Patent Application (No. 2554/DEL/2013) on August 29, 2013, for a “Vertical Rotary Parking System” designed to optimize parking in narrow spaces. The application underwent examination and received its First Examination Report (FER) in August 2018, to which the appellant replied in January 2019.

Subsequently, a pre-grant opposition was filed by Parkerbot India Pvt. Ltd., citing prior art documents D-1 to D-4. A hearing was scheduled in November 2023. Just days before the hearing, the opponent introduced an additional document—D-5—which was not part of the original opposition.

Despite the opponent's absence at the hearing, the Controller relied heavily on D-5 to reject the patent application, claiming that the subject invention lacked inventive step, was obvious to a person skilled in the art, and did not qualify as an “invention” under Section 2(1)(ja) of the Act.

Procedural Background:  The patent application was rejected by the Controller of Patents and Designs on April 12, 2024, under Section 15 of the Patents Act. The grounds cited were lack of inventive step, mere reversal of male and female coupling components, and rejection of an amendment request filed under Form-13. Aggrieved, the appellant challenged the decision before the High Court of Delhi by filing C.A. (COMM.IPD-PAT) 60/2024 under Section 117A of the Patents Act. The matter came up for hearing before Hon’ble Ms. Justice Mini Pushkarna.

Legal Issue:The central legal issues for determination were: Whether the subject invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970?Whether the Controller erred in rejecting the amendment of specifications under Form-13?

Discussion on Judgments:

1. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511

Cited by the Respondent to assert that mere workshop modifications or mechanical alterations without technical advancement do not qualify for patent protection. The Supreme Court had held that if the invention is obvious and lacks novelty, it cannot be patented.

2. Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659

Relied upon by the Appellant and discussed by the Court, this case emphasized that even simple inventions, if novel and offering technical advancement, are patentable. The Court highlighted that a significant time gap between the prior art and the current invention may suggest non-obviousness.

3. AGFA NV v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 3493

This case discussed the requirements for establishing "common general knowledge". It held that the Controller must cite specific sources and prove that such knowledge existed prior to the filing date.

4. Opentv INC v. Controller of Patents and Designs, 2023 SCC OnLine Del 2771

The Court held that amendments to patent claims can be allowed at the appellate stage as long as they fall within the scope of the original claims and comply with Section 59 of the Act.

5. Knoll Pharmaceutical Company, Inc. v. Teva Pharmaceuticals U.S.A., Inc., 367 F.3d 1381 (Fed. Cir.)

Referenced for the principle that post-filing data may be submitted to support patent validity if consistent with the originally disclosed invention.

6. Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291 (Fed. Cir.)

Reinforced the rule that post-filing evidence of unexpected results is admissible when consistent with the disclosure in the patent application.

Reasoning and Analysis of the Judge: The court held that the Controller’s decision lacked adequate reasoning on why the modification of the coupling elements was obvious or devoid of technical advancement. The Court noted that simplicity does not negate patentability, and that the alleged interchange of male and female coupling parts resulted in significant improvements including lower noise, better safety, and reduced friction.The Judge also found fault with the Controller's rejection of the Form-13 amendment application. Since document D-5 was not cited in the FER and was introduced only later, the appellant had a right to amend the specification and explain the inventive step. Denial of this amendment was a violation of the principles of natural justice.Further, the Controller’s reliance on “common general knowledge” was not supported by any documentation or expert testimony, which undermined the validity of the refusal.The Court accepted the technical evidence affidavit dated 05.07.2024 submitted by the appellant, emphasizing that post-filing evidence is admissible if consistent with the original invention and helpful in establishing its technical merits.

Final Decision: The High Court of Delhi set aside the impugned order dated April 12, 2024. The matter was remanded to the Controller of Patents and Designs for de novo consideration. The patent application was restored and a fresh hearing was directed to be conducted by a different officer. The Controller was instructed to pass a reasoned order within four months, uninfluenced by the previous decision.

Law Settled in This Case: This case reinforces several important principles in Indian patent jurisprudence:  Simple inventions are not necessarily obvious and may still qualify for patents if they provide technical advancement or economic significance.The inventive step must be analyzed not only with reference to prior art but also with substantiated evidence of “common general knowledge”.Applicants have a right to amend specifications even at the appellate stage when new prior art is introduced later in the examination process.Post-filing technical data can be considered to support claims of inventive step if aligned with the original specification.Failure to consider amendment requests and deprive an applicant of a fair hearing constitutes a violation of natural justice.

Case Title: Dong Yang PC, Inc. v. Controller of Patents and Designs:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 60/2024:Neutral Citation: 2025:DHC:5124:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

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

Communication Components Antenna Inc. Vs. Ace Technologies Corp

Case Title: Communication Components Antenna Inc. Vs. Ace Technologies Corp. :July 01, 2025:Case Number: CS(COMM) 1222/2018:Neutral Citation: 2025:DHC:5107:High Court of Delhi at New Delhi:Mr. Justice Saurabh Banerjee

The plaintiff, a Canadian company holding Indian Patent No.240893 for antennas used in telecommunications, filed a suit for permanent injunction alleging infringement by the defendants, including a South Korean manufacturer and its subsidiaries. The plaintiff argued that the defendants’ continued sales of allegedly infringing antennas threatened the enforceability of any decree due to their limited assets in India and the absence of a reciprocal arrangement for enforcing Indian judgments in South Korea.

Procedurally, an earlier interim order in July 2019 directed the defendants to deposit bank guarantees and sums equal to 10% of their sales. This was upheld by the Division Bench and the Supreme Court. Later, based on concerns over the financial deterioration of the defendants and risk of frustration of any future decree, the plaintiff filed the present application under Section 151 CPC, seeking an additional deposit equal to 25% of the claimed damages.

The dispute focused on whether the plaintiff was entitled to further security during the pendency of the suit, especially when the defendants had already deposited significant amounts earlier. The plaintiff stressed the risk of non-enforceability abroad and cited falling share value of defendant no.1, whereas the defendants argued they were financially stable, had already complied with previous orders, and no technical infringement had yet been proved.

In discussion, the Court analyzed the power under Section 151 CPC to protect the plaintiff’s interests when no other remedy is adequate, emphasizing that the plaintiff had established a prima facie case and balance of convenience. Relying on precedents like Deoraj v. State of Maharashtra (2004) 4 SCC 697, Nokia Technologies v. Guangdong Oppo Mobile Telecommunications Corp. Ltd., and M. Ramachandra Rao v. Varaprasad Rao, the Court held it was just to require further security to prevent the suit from becoming infructuous.

The Court ultimately directed the defendant no.1 to deposit, within four weeks, an additional amount equivalent to 25% of the claimed damages of Rs.1160 crores, amounting to Rs.290 crores, by way of bank guarantee or fixed deposit in the name of the Registrar General of the Court, besides amounts already deposited earlier.

Avient Switzerland GmbH Vs. Treadfast Ventures

Burden of Proof in Trademark Opposition

Introduction: This case involves a trademark dispute between Avient Switzerland GMBH, a global chemical manufacturer, and Treadfast Ventures, concerning the registration of the mark ‘RENOL’ in Class 2. The primary issue was whether the appellant had established prior use and proprietorship over the mark ‘RENOL’ in India, in the face of opposition by the respondent who owns the registered trademark ‘REINOL’ in Classes 1 and 3. The High Court of Delhi was called upon to assess the legality and sustainability of the order passed by the Assistant Registrar of Trade Marks rejecting the appellant’s application for the mark ‘RENOL’.

Factual Background: The trademark ‘RENOL’ was originally adopted by Clariant AG, the predecessor-in-interest of the appellant, Avient Switzerland GMBH, as far back as 1905 in Germany. The appellant claimed international use of the mark and specifically asserted use in India since December 26, 2001. An application for registration in India under Application No. 1336157 in Class 2 was filed on February 3, 2005, with a priority claim from August 11, 2004. The specification was later narrowed to colorants for resins.

In contrast, the respondent Treadfast Ventures owned the trademark ‘REINOL’, with registrations in Classes 1 and 3, dating back to 1984 and 1991. These marks were claimed to be used in India since those respective years. The respondent filed an opposition to the appellant’s application based on similarity and likelihood of confusion.

Procedural Background: The Trade Marks Registry issued an Examination Report in 2005, which did not cite the respondent’s mark as a conflicting registration. The appellant filed responses and amended the user claim to reflect use since December 2001. The mark was advertised in the Trade Marks Journal in 2016.

The respondent filed a Notice of Opposition in 2017 but later chose not to submit any evidence under Rule 45 of the Trade Marks Rules, 2017. In contrast, the appellant submitted evidence of use, including invoices dated December 16, 2001. Hearings were conducted across 2019, 2022, and 2023. On February 12, 2024, the Assistant Registrar passed the impugned order allowing the opposition and rejecting the appellant’s application, leading to the present appeal under Section 91 of the Trade Marks Act, 1999 before the Delhi High Court.

Legal Issue: The primary issues before the High Court were whether the Assistant Registrar erred in allowing the opposition and rejecting the application without proper consideration of evidence; whether the respondent’s mere registration of a similar trademark, without evidence of use, could justify refusal of the appellant’s application; and whether the marks ‘RENOL’ and ‘REINOL’ were deceptively similar in law to warrant rejection of the appellant’s mark under Section 11 of the Trade Marks Act, 1999.

Discussion on Judgments: Century Traders v. Roshan Lal Duggar & Co., FAO (OS) 46/1976, was cited by the respondent to argue that registration confers presumptive validity. The appellant countered that this case emphasizes that to claim proprietorship, a party must prove actual use, which the respondent failed to do.

Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, was invoked by the appellant to assert that mere presence of a mark on the register does not equate to proof of use or goodwill. The Supreme Court emphasized that assertions of prior rights must be backed by evidence.

Gupta Enterprises v. Gupta Enterprises & Anr., AIR 1998 Delhi 232, was relied upon by the appellant and reaffirmed by the Court to support the proposition that the burden of proof in opposition proceedings rests first on the opponent to prove use, registration, and reputation of their mark.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017, was relied on by the respondent to argue that foreign registration and use do not establish goodwill or reputation in India. The Court recognized this principle but held it did not aid the respondent’s case, as they too failed to establish use in India.

Vishnudas Trading v. Vazir Sultan Tobacco Co., (1997) 4 SCC 201, was cited to emphasize that trademark rights are not absolute or perpetual and can be challenged based on non-use or lack of genuine use, even if registered.

Patel Field Marshal Agencies v. P.M. Diesels Ltd., MANU/SC/1509/2017, was relied on by the respondent for the principle that registered trademarks enjoy presumptive validity. However, the High Court noted this presumption is rebuttable and must be tested through evidence.

Reasoning and Analysis of the Judge: The Court carefully analyzed the materials on record and found that the Assistant Registrar had failed to appreciate key aspects. Specifically, the Assistant Registrar did not consider the invoice dated December 16, 2001, evidencing the appellant’s use of the mark ‘RENOL’ in India. The respondent, on the other hand, did not file any evidence under Rule 45 to support the opposition.

The Court emphasized that while registration is prima facie evidence of validity, the burden of proof in opposition proceedings lies first with the opponent. The respondent failed to discharge this burden by not submitting even a single document to support its claim of use. The Assistant Registrar’s reliance on bare assertions in the Notice of Opposition was found legally untenable.

Furthermore, the Court rejected the assumption that marks in allied and cognate classes automatically lead to confusion. It reiterated that evidence of actual market confusion or reputation must be led. It also found the Assistant Registrar’s order lacking in reasoning and factual analysis.

The Court held that ignoring the appellant’s evidence and uncritically accepting the respondent’s unsupported claims rendered the impugned order unsustainable. It clarified that even a valid registration must be supported by active use and proof of reputation to sustain an opposition under Section 11.

Final Decision:  The Delhi High Court allowed the appeal. The impugned order dated February 12, 2024, was set aside. The matter was remanded to the Registrar of Trade Marks for a fresh adjudication of the opposition proceeding in accordance with law and on merits. The Registrar was directed to conclude the matter within six months. The Court explicitly stated that it had not expressed any view on the merits, leaving the Registrar to decide afresh.

Law Settled in This Case:  This case reaffirms critical principles of trademark law. Mere registration does not confer an absolute right to oppose another mark unless substantiated by proof of use and reputation. The burden of proof in opposition proceedings lies first with the opponent, who must lead cogent evidence. The Registrar must evaluate all evidence holistically, and not rely solely on pleadings or assertions. Foreign use and international registration do not by themselves establish user rights in India. The presence of similar marks in allied and cognate classes does not automatically warrant refusal; the test is actual likelihood of confusion, based on evidence.

Case Title: Avient Switzerland GMBH Vs. Treadfast Ventures & Anr.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-TM) 44/2024:Neutral Citation: 2025:DHC:5104:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Kroll Information Assurance, LLC Vs. The Controller General of Patents

Computer Programme per se and the Patent Law Threshold

Introduction: This case addresses a crucial intersection in Indian patent law, focusing on whether an invention that involves software or algorithms qualifies as patentable subject matter under Section 3(k) of the Patents Act, 1970. The case of Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks engages deeply with the exclusion of “computer programme per se” and “algorithm” from the definition of inventions. The decision sheds light on the permissible scope of claim amendments under Section 59 and tests the limits of patentability of computer-implemented inventions (CIIs).

Factual Background:The appellant, Kroll Information Assurance, LLC, a U.S.-based entity, filed an Indian patent application numbered 8100/DELNP/2007, titled “A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network.” The application was a national phase entry of a PCT application filed on April 11, 2006, claiming priority from a U.S. application dated April 12, 2005.

The invention purported to offer a technological solution for locating users (or types of persons) inadvertently or maliciously sharing sensitive information over peer-to-peer networks. The claimed invention employed specific search terms known to be associated with such content and profiled users accordingly.

Procedural Background:The application was published on July 4, 2008, and underwent examination following a request dated November 1, 2007. The First Examination Report (FER) was issued on February 19, 2013, raising objections under Sections 2(1)(j), 2(1)(ja), 3(b), 3(k), and 10(4)(c) of the Act. The appellant responded on October 22, 2013, including proposed claim amendments.

A hearing notice dated April 10, 2019, reiterated objections under Sections 2(1)(j), 3(k), and Section 59 (concerning claim amendments). Following the hearing on May 13, 2019, the Assistant Controller of Patents passed an order on June 25, 2019, rejecting the application on the following grounds: the claim amendments violated Section 59; the claimed invention lacked inventive step under Section 2(1)(j); and the subject matter was non-patentable under Section 3(k).Kroll challenged this decision under Section 117A of the Patents Act by filing an appeal before the Delhi High Court.

Legal Issue: The key issues before the Hon’ble Delhi High Court were:Whether the proposed claim amendments were permissible under Section 59 of the Patents Act, 1970?Whether the claimed invention qualified as patentable subject matter or was excluded under Section 3(k) as an “algorithm” or “computer programme per se.”Whether the Controller’s assessment of the invention’s technical contribution and inventive step was valid in law.?

Discussion on Judgments: Nippon A & L Inc. v. Controller of Patents, 2022 SCC OnLine Del 1909:Relied upon to interpret Section 59 of the Act, the Court clarified that amendments must be by way of disclaimer, correction, or explanation, and must not broaden the scope of the originally filed claims. The decision was instrumental in evaluating whether Kroll’s proposed amendments exceeded the permissible scope.

Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497:Cited by the appellant to argue that software-related inventions may be patentable if they produce a technical effect or advance the functionality of hardware. This case emphasized that a mere inclusion of software elements does not automatically exclude an invention under Section 3(k).

Microsoft Technology Licensing v. Controller of Patents & Designs, 2024 SCC OnLine Del 3239:Applied by the Court to reiterate that software must result in a specific and credible technical enhancement to avoid exclusion under Section 3(k). A mere implementation of search algorithms, even on hardware, is insufficient.

Blackberry v. Controller of Patents & Designs, 2024 SCC OnLine Del 3791:Relied upon by the respondent and referred to by the Court, this case held that inventions based solely on software instructions without substantial hardware impact or technical advancement are barred under Section 3(k).

Guidelines for Examination of Computer Related Inventions (CRI Guidelines), 2017:These were used as interpretive tools to assess the subject invention’s technical contribution. The Guidelines mandate focusing on the “underlying substance” of the invention to determine patentability.

Reasoning and Analysis of the Judge: The Court first addressed the objection under Section 59. Upon a comparative reading of the originally filed claims and the amended ones, the Court found that the additional features (particularly sub-clauses iii and iv of Claim 1) narrowed the claim scope and served an explanatory purpose. These additions were found to be consistent with the complete specification and did not introduce any new matter. Consequently, the rejection under Section 59 was held to be erroneous.

However, the primary hurdle lay in the non-patentability under Section 3(k). The Court analyzed the claimed invention’s technical contribution and concluded that the invention was primarily a sequence of instructions executed by generic hardware. The search functionality and profiling based on keyword matches were seen as typical outputs of conventional computing systems.

The Court further observed that the invention did not offer any advancement or transformation of hardware capabilities. While the use of peer-to-peer networks and specific search terms was noted, these were not sufficient to demonstrate technical advancement or effect.

Drawing from the Microsoft, Lava, and Blackberry precedents, the Court held that a mere implementation of software logic or algorithms—even if practically useful—does not cross the threshold for patentability in the absence of hardware-level enhancement.

The appellant’s reliance on foreign grants (including from the USA, China, and Japan) was not found persuasive, as Indian patent law has specific statutory exclusions under Section 3(k) that are distinct from other jurisdictions.

Final Decision: The Court allowed the proposed claim amendments and overruled the Controller’s findings under Section 59. However, it upheld the Controller’s decision refusing the patent application under Section 3(k) on the ground that the claimed invention was a computer programme per se and an algorithm, with no demonstrable technical effect or hardware advancement. The appeal was accordingly dismissed.

Law Settled in This Case:This case reinforces that: Claim amendments are permissible under Section 59 if they narrow the scope and are supported by the original disclosure. For inventions involving computer programmes to be patentable in India, they must demonstrate a tangible technical effect or hardware-level transformation. Search mechanisms and profiling based on keyword logic, even when implemented via sophisticated systems, do not inherently constitute patentable subject matter under Section 3(k). The mere presence of computer implementation or general-purpose hardware does not suffice to escape the bar under Section 3(k).

Case Title: Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks and Ors.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 439/2022:Neutral Citation: 2025:DHC:5096: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

Jagat Agro Commodities P Ltd Vs. Union of India

Case Title: Jagat Agro Commodities P Ltd Vs. Union of India & Ors.: Date of Order: July 01, 2025: Case Number: W.P.(C)-IPD 15/2024: Name of Court: High Court of Delhi at New Delhi: Name of Judge: Hon’ble Mr. Justice Amit Bansal

The petitioner sought directions to renew its registered trademark ‘JAGAT(DEVICE)’ bearing no.01253200 in class 30, arguing that the Registrar of Trademarks failed to issue the mandatory Form O-3 notice required under the Trade Marks Rules, 2002, to inform them of the approaching expiry of the registration. The respondents contended that the notice had indeed been issued and served on 14 October 2023 but could not produce any proof of service.

The dispute centered on whether the non-receipt of Form O-3 notice, which is mandatory under law, justified restoration and renewal of the trademark despite the petitioner’s failure to renew it on time.

In discussing the matter, the Court referred to Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors., 2017 (72) PTC 480 (Del), which held that the proprietor should not be penalized for the lapse of the Registry when it fails to follow statutory procedure.

The Court also cited CIPLA Limited v. Registrar of Trade Marks & Ors., 2013 (56) PTC 217 (Bom) (DB); Union of India and Ors. v. Malhotra Book Depot, 2013 (54) PTC 165 (Del) (DB); and Gopal Ji Gupta v. Union of India, 2019 SCC OnLine Del 7670, reaffirming that issuing Form O-3 is mandatory before any adverse action is taken. Additionally, the Court noted its own similar order in M/S Zine Davidoff S.A v Union Of India And Anr, W.P.(C)-IPD 57/2021, decided on 22 April 2025.

The Court concluded that since no proof of service of the statutory notice was produced and applying the principles of natural justice, the petitioner could not be faulted. The writ petition was accordingly allowed with directions to issue the certificate of renewal for the trademark, restore it on the register, and update the records, subject to payment of requisite fees and compliance with formalities.

Products and Ideas (India) Pvt. Ltd. Vs. Nilkamal Limited

Prior User Rights and Parallel Imports

Introduction: The case of M/s Products and Ideas (India) Pvt. Ltd. v. Nilkamal Limited and Ors. before the High Court of Delhi engages with the fundamental principle that the sale of genuine goods by an authorized reseller or importer does not amount to trademark infringement. This principle is anchored in the doctrine of international exhaustion, which permits parallel imports and resale of genuine products sourced from the trademark owner. At the heart of this dispute lies the tension between the rights of a registered proprietor claiming exclusivity over a mark and the legitimate right of others to trade in genuine goods sourced from the same original manufacturer.

Factual Background:  The plaintiff, M/s Products and Ideas (India) Pvt. Ltd., is engaged in selling commercial induction cooktops in India under the mark ‘STELLADEXIN.’ The mark was originally adopted by Stella Industrial Co. Ltd., a Chinese company (defendant no. 5), which has been manufacturing electromagnetic household appliances since 1983. The plaintiff claimed to have obtained registrations for the ‘STELLADEXIN’ mark in classes 7, 9 and 11 in India with the consent of defendant no. 5. Initially, the plaintiff and defendant no. 5 entered into an Exclusive Agency Agreement in 2017, subsequently renewed, under which the plaintiff became the exclusive agent for distributing induction cookers under the brand ‘STELLA’ in India. The plaintiff asserted that it has built substantial goodwill in the mark ‘STELLADEXIN’ in India, with an annual turnover exceeding Rs. 16.27 crores for the year 2022-2023.

In June 2024, the plaintiff discovered that the defendants, including Nilkamal Limited (defendant no. 1) and Cambro-Nilkamal Pvt. Ltd. (defendant no. 2), were selling induction cooktops under the mark ‘STELLA,’ which it alleged was deceptively similar to its registered mark and amounted to infringement. Defendant no. 5, however, asserted it had prior rights in the marks ‘STELLA,’ ‘DEXIN,’ and ‘STELLADEXIN,’ and had been selling goods in India since at least 2013 through various distributors, including M/s Mittal International. The plaintiff, according to defendant no. 5, was merely one of the resellers.

Procedural Background:  The suit was filed by the plaintiff seeking a permanent injunction against the defendants to restrain them from selling products under the mark ‘STELLA’ or any mark deceptively similar to ‘STELLADEXIN.’ On 27 August 2024, the Court granted an ex parte ad interim injunction restraining defendants from using the impugned marks and appointed a Local Commissioner to seize goods bearing these marks. Defendant no. 5 later moved an application and was impleaded as a party to the proceedings. Defendant no. 2 also sought vacation of the injunction. After detailed hearings concluding on 13 May 2025, the judgment was reserved and ultimately pronounced on 1 July 2025.

Legal Issue:  The central issue before the Court was whether the sale of original products bearing the mark ‘STELLA’ by defendants, who sourced them directly from defendant no. 5, the prior adopter and manufacturer, amounted to trademark infringement against the plaintiff’s registered mark ‘STELLADEXIN.’?

Discussion on Judgments: The Court examined the scope of Section 30(3) of the Trade Marks Act, 1999, which recognizes the principle of international exhaustion, allowing the import and sale of genuine trademarked goods without infringing the trademark. Reliance was placed on the Division Bench decision in Kapil Wadhwa v. Samsung Electronics Co. Ltd., 2012:DHC:6136:DB, where it was held that the import and sale of genuine goods sourced from the trademark owner abroad does not amount to infringement under Indian law. The Court also referred to Seagate Technology LLC v. Daichi International, 2024:DHC:4193, which applied the same principle, confirming that sale of genuine products by an authorized importer or reseller falls outside the ambit of infringement.

The defendants argued that defendant no. 5 had prior user rights in the marks ‘STELLA,’ ‘DEXIN,’ and ‘STELLADEXIN,’ with documented sales in India since 2013, well before the plaintiff’s first claimed use or trademark registration. They contended that both the plaintiff and defendant no. 2 were merely resellers importing goods from the original manufacturer, defendant no. 5. Defendant no. 5 further argued that its sales were supported by invoices and documents, demonstrating continuous and prior use.

The plaintiff, on the other hand, argued that it had secured trademark registrations in India with defendant no. 5’s consent and that the defendants’ use of ‘STELLA’ was deceptively similar to its registered mark, thereby constituting infringement.

Reasoning and Analysis of the Judge: Court examined the documentary evidence and concluded that defendant no. 5 was indeed the prior adopter and user of the marks since at least 2013, predating the plaintiff’s use and trademark registrations. The Court noted that the plaintiff’s own first agreement with defendant no. 5 was in 2017 and the earliest invoice produced by the plaintiff was also from 2017. Thus, the prior user defence under Section 34 of the Trade Marks Act, 1999, was available to defendant no. 5.

The Court observed that the plaintiff was only one of several resellers authorized to sell defendant no. 5’s products in India. Similarly, defendant no. 2 had documented authorization from defendant no. 5 to import and sell these products. Since the goods being sold by defendant no. 2 and others were genuine and originated from the trademark owner itself, this sale did not constitute infringement.

The Court underscored the settled law that the import and sale of genuine goods by an authorized reseller or importer falls under the principle of international exhaustion recognized in Section 30(3). Consequently, the use of the marks ‘STELLA,’ ‘STELLADEXIN,’ and related marks by defendants did not amount to unauthorized use. The balance of convenience favored the defendants, as an injunction would effectively grant the plaintiff an unjustified monopoly over marks to which it had no exclusive right against the original manufacturer.

Final Decision:  The Court vacated the ex parte interim injunction granted earlier, holding that the plaintiff had failed to establish a prima facie case for restraint. The defendants were permitted to sell goods under the marks ‘STELLA,’ ‘STELLADEXIN,’ and related marks in India, being genuine products originating from defendant no. 5, the prior user and manufacturer.

Law Settled in This Case: The judgment reaffirmed that the sale of original goods in India by an authorized reseller or importer, when the goods are sourced from the genuine trademark owner or prior adopter, does not amount to infringement. The principle of international exhaustion under Section 30(3) protects such import and resale, and mere trademark registration in India by a reseller cannot override the rights of the original manufacturer and other authorized distributors.

Case Title: M/s Products and Ideas (India) Pvt. Ltd. v. Nilkamal Limited and Ors.:Date of Order: 1 July 2025:Case Number: CS(COMM) 715/2024:Neutral Citation: 2025:DHC:5052:Name of Court: High Court of Delhi at New 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

Major League Baseball Properties Inc Vs. Manish Vijay

Bad Faith and Prior User Rights in Trademark Rectification

Introduction:The dispute centers around the international reputation of the petitioner’s mark “BLUE JAYS,” its spillover into India, and the respondent’s adoption of a deceptively similar mark “BLUE-JAY.” The judgment critically examines the interplay between prior user rights, international goodwill, and dishonest adoption, reaffirming established principles that protect well-known marks against misappropriation through bad faith registration.

Factual Background: The petitioner, Major League Baseball Properties Inc., is an intellectual property holding company incorporated in New York, USA, managing trademarks of Major League Baseball (MLB) and its clubs. Since 1976, the petitioner has used the trademark “BLUE JAYS” for the Toronto-based MLB franchise. This mark is registered in various jurisdictions worldwide and used extensively on merchandise, team uniforms, and promotional material. In India, the petitioner filed applications for the “BLUE JAYS” marks in several classes starting as early as 1983, with continued presence through its official websites and broadcast of MLB games accessible in India since the late 1990s.

The respondents, trading as M/s PMS Creations, adopted the mark “BLUE-JAY” in 1998 for readymade garments in Class 25. Their initial explanation for choosing the mark was its association with the North American bird. Later, during rectification proceedings, the respondents advanced a new narrative that the mark was inspired by a resort in Panipat, Haryana, frequently visited by a family member.

Procedural Background:Upon learning of the respondents’ trademark application published in 2003, the petitioner filed a notice of opposition in 2004. However, due to a delay in filing evidence, the Deputy Registrar of Trade Marks deemed the opposition abandoned by an order dated October 8, 2015. The petitioner appealed to the Intellectual Property Appellate Board (IPAB). Following the abolition of the IPAB, the matter was transferred to the High Court of Delhi and numbered as C.A.(COMM.IPD-TM) 152/2022. Subsequently, by order dated September 25, 2023, the High Court permitted the petitioner to pursue rectification of the impugned mark by filing a cancellation petition under Section 57 of the Trade Marks Act, 1999. This led to the present petition challenging the registration of “BLUE-JAY.”

Legal Issue: The principal legal issue before the Court was whether the respondents’ adoption of the mark “BLUE-JAY” was bona fide or tainted by bad faith, and whether such bad faith adoption justified rectification and removal of the mark from the Register under Section 57 of the Trade Marks Act, 1999?

Discussion on Judgments: The petitioner cited Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, to establish that international reputation and prior worldwide use of a trademark can override local registration if there is sufficient spillover into India. It relied on B.K. Engineering v. Ubhi Enterprises, AIR 1985 Delhi 210, and Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, to demonstrate that deceptive similarity can cause confusion among consumers.

To highlight the element of bad faith, the petitioner referred to BPI Sports LLC v. Saurabh Gulati & Anr., 2023:DHC:2920, Kia Wang v. The Registrar of Trade Marks & Anr., 2023:DHC:6684, and Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah v. Regal Footwear, 2023 SCC OnLine Bom 10. These cases collectively underscore that adoption of a mark without honest intention or to ride on the reputation of another constitutes bad faith.

The respondents, in contrast, cited Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd., (2018) 2 SCC 1, arguing the petitioner lacked spillover reputation in India and had no valid registration in Class 25. They also cited Trustees of Princeton University v. Vagdevi Educational Society, 2023:DHC:6420, and Pioneer Nuts & Bolts v. Goodwill Enterprises, ILR (2010) 1 Delhi 738, to assert the importance of proving actual reputation and usage in the Indian market.

The petitioner in rejoinder emphasized the Supreme Court’s ruling in Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, reaffirming that the right of a prior user, including a worldwide prior user, is superior to that of a registered proprietor who is a subsequent user.

Reasoning and Analysis of the Judge: Court observed that the respondents initially stated in their counter statement before the Trade Marks Registry that the mark “BLUE-JAY” was inspired by the North American bird. However, during rectification proceedings, they introduced an entirely new explanation linking the mark to a local resort, which the Court found inconsistent and an afterthought. The Court held that adoption tainted by dishonesty cannot be legitimized by subsequent use or volume of sales.

The Judge recognized the petitioner as the undisputed prior worldwide user of the “BLUE JAYS” mark, with presence in India through online platforms and media coverage since the mid-1990s. The respondents’ adoption came 22 years later, with no cogent evidence explaining the choice of a nearly identical mark.

Citing Neon Laboratories Ltd., Milmet Oftho Industries, and Whirlpool, the Court reaffirmed that the rights of a prior user override those of a subsequent user, even if the latter has obtained registration. The Judge highlighted that bad faith, as explained in BPI Sports LLC, consists of unfair practices lacking honest intention, and when the purpose of adopting a mark is found dubious, registration must be canceled.

Final Decision: The Court concluded that the respondents’ adoption of “BLUE-JAY” was not bona fide but rather aimed to exploit the petitioner’s reputation. The Court directed the Registrar of Trade Marks to cancel and remove the registration of “BLUE-JAY” (application no.815236 in Class 25) from the Register of Trade Marks. The petition was accordingly allowed without costs.

Law Settled in This Case:  This case settles that even absent a valid registration in the same class, a prior adopter and worldwide prior user with spillover reputation in India can succeed in rectification proceedings if the subsequent adopter’s mark is deceptively similar and tainted by bad faith. The judgment reinforces that bad faith, evident from inconsistent explanations or dishonest intentions, is fatal to maintaining a trademark registration.

Case Title: Major League Baseball Properties Inc Vs. Manish Vijay & Ors.:Date of Order: July 01, 2025: Case Number: C.O. (COMM.IPD-TM) 279/2023: Neutral Citation: 2025:DHC:5103: Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

Crocs Inc. USA Vs Bata India Ltd.-C Hari Shankar

Doctrine of Passing Off in relation to registered Design

Introduction: This case revolves around the pivotal question of whether a passing off action can be sustained in relation to a design that had earlier been protected under the Designs Act, 2000 but whose registration has since expired. Crocs Inc. USA initiated suits against multiple footwear companies alleging passing off of its distinctive footwear shape, asserting that its design had acquired independent goodwill and recognition in the minds of consumers. The learned Single Judge dismissed the suits on the ground that the shape in question was previously a registered design, and therefore, to claim trade dress rights in it, the plaintiff had to establish “something extra” beyond the registered design. The Division Bench of the Delhi High Court examined the legal tenability of this reasoning and reversed the Single Judge's decision, settling critical principles of intellectual property law.

Factual Background: Crocs Inc. USA was the registered proprietor of Design No. 197685 dated 28 May 2004 under the Designs Act, 2000. The design related to a specific configuration of footwear, which Crocs claimed had become globally recognized as a source identifier. Upon expiry of the design’s statutory protection, Crocs filed multiple suits against companies such as Bata India, Liberty Shoes, Relaxo Footwear, Aqualite, Bioworld, and Action Shoes. The grievance of Crocs was that these defendants had copied the unique configuration of its footwear, thereby misrepresenting their goods as those of Crocs, amounting to common law passing off. Crocs asserted that even though the statutory protection under the Designs Act had expired, the shape had, through extensive use and market presence, attained independent goodwill protectable under trademark law as trade dress.

Procedural Background: Crocs instituted a series of suits for passing off before the Delhi High Court. The suits were: CS (Comm) 569/2017, 1415/2016, 903/2018, 906/2016, 571/2017, and 905/2016. The learned Single Judge, by a common judgment dated 18 February 2019, dismissed all suits as not maintainable. The Judge held that Crocs had failed to show any features beyond the registered design to support its claim of trade dress. Consequently, Crocs preferred Regular First Appeals (OS) (Comm) 22 to 27 of 2019 challenging the dismissal. Additionally, a related matter involving Dart Industries Inc. was also clubbed, namely FAO (OS) (Comm) 358/2019. 

Legal Issue: The central legal issue was whether a passing off action based on trade dress could be maintained after the expiry of statutory design protection, and specifically, whether the claimant was required to demonstrate elements “in addition” to the registered design to sustain such a claim.

Discussion on Judgments:The learned Single Judge relied on the Five-Judge Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 256 (2019) DLT 1 (FB), and interpreted it to mean that once a shape or configuration was registered as a design, it could not later be protected as a trademark unless there was “something extra” beyond the registered design. The Single Judge also considered the Full Bench ruling in Mohan Lal v. Sona Paint & Hardware, 200 (2013) DLT 322 (FB), to support the view that passing off and design infringement are conceptually distinct and should be based on different grounds.

The Division Bench, however, undertook an in-depth examination of both Mohan Lal and Carlsberg. It observed that the majority in Mohan Lal had permitted a passing off action even in respect of a product whose design was previously registered under the Designs Act, so long as goodwill, misrepresentation, and likelihood of confusion were established. The Bench clarified that Carlsberg did not override Mohan Lal, and the proposition requiring “something extra” beyond the registered design was not an accurate representation of law. The Court emphasized that once design protection lapses, common law remedies are not extinguished, and trade dress rights can be enforced based on consumer association and market goodwill.

Reasoning and Analysis of the Judge: The Division Bench found that the Single Judge had misapplied the principle laid down in Mohan Lal and had read too much into certain paragraphs of Carlsberg which were merely explanatory. The Bench held that passing off is an independent tort that safeguards goodwill and prevents consumer deception, irrespective of prior design registration. The fact that the design was once protected under the Designs Act does not bar the claimant from asserting trade dress rights after its expiry.

The Court clarified that the requirement of proving “something extra” beyond the registered design was not a valid precondition to sustain a passing off action. What matters is whether the shape or configuration, regardless of its history under design law, has come to denote the source of the product in the minds of the public. If the public associates the shape exclusively with Crocs, that is sufficient to establish trade dress. The Court also underscored the principle that intellectual property regimes under the Designs Act and Trademark Law can operate sequentially, and not necessarily exclusively, especially once design rights lapse.

Final Decision:  The Division Bench allowed all the appeals filed by Crocs. It set aside the judgment of the learned Single Judge dated 18 February 2019 and held that the passing off suits were maintainable. The Court remanded the matters back for adjudication on merits in accordance with law.

Law Settled in This Case:  The law settled in this case is that a trade dress claim can be validly founded on a design previously registered under the Designs Act, once the statutory design protection has lapsed. The requirement of demonstrating “something extra” beyond the registered design is not a legal necessity. A shape that has acquired goodwill and functions as a source identifier may be protected under the common law of passing off, even if it had earlier been registered as a design.

Case Title: Crocs Inc. USA Vs. Bata India Ltd.: Date of Order: 1 July 2025:Case Numbers: RFA (OS) (Comm) 22/2019, 23/2019, 24/2019, 25/2019, 26/2019, 27/2019; FAO (OS) (Comm) 358/2019: Neutral Citation: 2025:DHC:5037-DB: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

Media Monks Multimedia Holding Vs. Pachala Murali Krishna

Evaluating Trans-Border Reputation and Bad Faith Adoption in Indian Trademark Law

Introduction:This case pertains to a dispute over trademark rights between an internationally reputed digital advertising company and an Indian entity claiming local registration. It addresses critical issues of prior use, trans-border reputation, deceptive similarity, and bad faith adoption in the context of rectification petitions filed under the Trade Marks Act, 1999. The adjudication undertaken by the Hon’ble High Court of Madras serves as a significant pronouncement in trademark law jurisprudence, especially in evaluating conflicting claims of domestic registration and international goodwill.

Factual Background:The petitioner, Media Monks Multimedia Holding B.V., a digital media and advertising company founded in 2001 and based in the Netherlands, has been using the trademark “MEDIAMONKS” globally as a domain name, trade name, and service identifier. The company claimed to have a presence in India since 2015 and presented evidence of global registrations, including those under the Madrid Protocol. The petitioner alleged that its mark was inherently distinctive and had acquired a trans-border reputation owing to extensive use and international recognition.

The first respondent, Pachala Murali Krishna, registered the marks “MEDIA MONK” and “MEDIA MONK LABEL” in India in 2009 under Classes 09, 16, and 35. The respondent asserted that the term “Media Monk” was derived from his personal moniker and was honestly adopted for his advertising business. The petitioner contended that these registrations were deceptive, confusingly similar, and made in bad faith, warranting rectification under Sections 47, 57, and 125 of the Trade Marks Act, 1999.

Procedural Background:The petitioner initiated six rectification petitions under various trademark classes, seeking cancellation of the respondent’s registrations. The matter proceeded before the High Court of Madras after issues were framed by the Court on 08 December 2023. The parties led evidence through affidavits, cross-examinations, and documentary records, with both oral and documentary evidence forming a substantial part of the trial. After hearing counsels and evaluating pleadings, the Court reserved judgment on 21 April 2025 and pronounced its decision on 26 June 2025.

Legal Issue:The primary legal issues involved were whether the petitioner was the prior adopter and user of the mark “MEDIAMONKS” globally and in India, whether the marks registered by the respondent were deceptively similar, whether they were adopted in bad faith, and whether the petitioner had acquiesced in the respondent’s use of the marks, thereby barring rectification?.

Discussion on Judgments:The petitioner relied heavily on Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court held that the first user of a trademark in the world market may be entitled to protection even if not first used in India. This supported the petitioner’s case that global goodwill deserves legal recognition in India.

In Hardie Trading Ltd. and Another v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, the Supreme Court held that proposed-to-be-used applications could establish intention to use and that locus under Section 57 should be liberally interpreted to preserve the purity of the register.

The petitioner also cited Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, where the Court acknowledged that even domain names could acquire the status of trademarks if associated with business goodwill.

To substantiate the relevance of trans-border reputation, the petitioner placed reliance on multiple judgments including Laxmikant V. Patel v. Chetanbhat Shah, (2002) 24 PTC 1 (SC), Austin Nichols & Co. v. Arvind Behl, 2005 SCC OnLine Del 1276, and Rolex SA v. Alex Jewellary Pvt. Ltd., 2014 SCC OnLine Del 1619.

Conversely, the respondent cited Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, to argue that the territoriality principle limits the application of trans-border reputation unless there is concrete evidence of prior reputation in India.

Reasoning and Analysis of the Judge:The Court evaluated the petitioner’s international presence and recognition as evidenced by registrations, domain use since 2001, and participation in global projects. It noted that the mark “MEDIAMONKS” was coined and distinctive, comprising an unusual combination of generic English terms.

Upon comparing the marks, the Court found “MEDIA MONK” and “MEDIA MONK LABEL” deceptively similar to “MEDIAMONKS”, both phonetically and conceptually. The judge adopted the test of an average consumer with imperfect recollection and held that the essential features of the rival marks overlapped.

The Court also found that the first respondent had knowledge of the petitioner’s business and domain presence. Evidence from the respondent’s cross-examination showed familiarity with digital media platforms and awareness of global market players. The explanation given by the respondent—that he was called “Media Monk” by his peers—was deemed unconvincing and a post-rationalisation. The judge held that the adoption of the mark by the respondent was not bona fide but tainted with bad faith.

In addressing the argument of acquiescence under Section 33, the Court ruled that mere constructive notice through the trademark journal was insufficient to establish the petitioner’s knowledge. It also noted that the bad faith adoption excluded the application of Section 33 altogether. Delay alone, without acquiescence, could not defeat the rectification claim as per settled law.

Final Decision:The High Court allowed all six rectification petitions and directed the Registrar of Trademarks to cancel the entries relating to Trade Mark Nos. 1846455, 1846456, 1846457, 1846458, 1846459, and 1846460. The Court granted 60 days from the date of the order for compliance. No order as to costs was passed.

Law Settled in This Case:This judgment reaffirms the principle that prior global use of a trademark, accompanied by trans-border reputation and distinctive character, can justify rectification of later Indian registrations made in bad faith. It confirms that a composite test of similarity, business overlap, and consumer perception governs deceptive similarity. Further, the Court clarified that bad faith adoption nullifies defenses under Section 33 of the Trade Marks Act, and delay alone cannot bar rectification when public interest in maintaining register purity is at stake.

Case Title: M/s Media Monks Multimedia Holding B.V. v. M/s Pachala Murali Krishna and Another:Date of Order: 26 June 2025:Case Number: (T)OP(TM) Nos. 368 to 370, 460, 461 & 464 of 2023:Neutral Citation: 2025:MHC:1473:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

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

Selle Royal Group Vs. Ace Footmark (P) Ltd.

Case Title: Selle Royal Group Vs. Ace Footmark (P) Ltd.:Date of Order: 28 May 2025:Case Number: C.O. (COMM.IPD-TM) 196/2022:Neutral Citation: 2025:DHC:4526:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Selle Royal Group, an Italian bicycle accessories manufacturer, filed a petition seeking cancellation of the trademark "FIZIFREAK" registered by Ace Footmark, alleging it was deceptively similar to their well-known mark "fi’zi:k", used since 1995 globally and in India since 2004, and also similar to their European trademark "FREE:K".

The petition originated before the Intellectual Property Appellate Board and was transferred to the High Court after the Board’s abolition. The respondent's mark "FIZIFREAK" was registered in 2017 for footwear but expired in 2024 and was not renewed. The respondent did not appear before the Court despite service of notice, and was proceeded against ex parte.

The central dispute was whether "FIZIFREAK" was deceptively similar to the petitioner’s coined and reputed marks "fi’zi:k" and "FREE:K", amounting to passing off, and whether it should be removed from the Register of Trademarks.

The Court noted the petitioner’s prior and global use of the mark, its reputation in India since 2004, and the phonetic and structural similarity between the marks. It found the respondent’s conduct to be mala fide and noted their history of attempting to register similar marks to well-known brands.

The Court directed the cancellation of the trademark "FIZIFREAK" from the Register of Trademarks and held that its adoption was dishonest and intended to exploit the goodwill of the petitioner’s marks.

Anugraha Castings Vs Anugraha Valve Castings Limited

Case Title: Anugraha Castings Vs Anugraha Valve Castings Limited:Date of Order: 28 January 2025:Case Number: C.M.P. No. 1969 of 2025 :Name of Court: High Court of Judicature at Madras:Name of Judge: Hon’ble Chief Justice K.R. Shriram and Hon’ble Mr. Justice Senthilkumar Ramamoorthy

The respondent, Anugraha Valve Castings Limited, filed a suit against Anugraha Castings and another for permanent injunction and other reliefs, alleging unauthorized use of a deceptively similar trademark and trade name in the same line of business. The Commercial Court at Coimbatore passed an ex parte ad-interim injunction on 20 January 2025, restraining the appellants from using the word "Anugraha" in their business. The appellants challenged the order before the High Court.

The dispute involved the legality and necessity of the ex parte order, particularly in light of the respondent's prior knowledge of the appellants' use of the name since 2018 and the absence of any pressing urgency.

The High Court discussed that the trial court had exceeded the relief sought and that no emergent situation was demonstrated to justify an ex parte injunction. It referred to the Supreme Court’s judgment in Maria Margarida Sequeira Fernandes v. Erasmo Jack De Sequeira, (2012) 5 SCC 370, reiterating that ex parte orders must be passed only in cases of real urgency with specific justification, and after due consideration of pleadings and documents.

The Court stayed the impugned ex parte injunction, holding that it was harsh, procedurally unjustified, and passed without sufficient cause or urgency, causing undue hardship to the appellants.