Pfizer Inc. Vs. Softgel Healthcare Private Limited

Introduction

In an era where global commerce and intellectual property disputes increasingly transcend national boundaries, the interplay between domestic laws and international judicial cooperation becomes a critical arena of legal exploration. The case of Pfizer Inc. & Ors. v. Softgel Healthcare Private Limited, adjudicated by the Madras High Court in 2025, stands as a compelling testament to this dynamic. This legal battle, rooted in a patent infringement dispute originating in the United States, showcases the intricate mechanisms of the Hague Evidence Convention and the principles of international comity. At its core, the case examines whether an Indian court can compel a third party to produce evidence for a foreign litigation, balancing confidentiality, sovereignty, and the pursuit of justice across jurisdictions. This case study delves into the factual and procedural intricacies, the contentious issues, the arguments of the parties, the judicial precedents invoked, and the reasoning that shaped the final decision, offering a comprehensive analysis of a landmark ruling.

 

Detailed Factual Background

The dispute traces its origins to a patent litigation pending before the United States District Court for the District of Delaware, where Pfizer Inc., along with its affiliates FoldRx Pharmaceuticals, LLC, PF PRISM IMB B.V., and Wyeth LLC (collectively, the petitioners), alleged infringement of their "441 Patent." This patent pertains to Tafamidis 61 mg capsules, marketed under the brand name VYNDAMAX, a drug used to treat Transthyretin Amyloid Cardiomyopathy. The petitioners claimed that two Indian pharmaceutical companies, Cipla and Zenara Pharma Pvt. Ltd. (now Hikma), infringed this patent by submitting Abbreviated New Drug Applications (ANDAs) to the U.S. Food and Drug Administration (FDA) to market generic versions of VYNDAMAX before the patent’s expiration. Specifically, Cipla’s ANDA No. 218409 and Zenara’s ANDA No. 218205 were cited as acts of infringement.

Softgel Healthcare Private Limited, the respondent, emerged as a pivotal entity in this saga despite not being a direct party to the U.S. litigation. The petitioners asserted that Softgel, an Indian company with contractual ties to Cipla and Zenara, possessed critical documents and information related to the ANDA products. These materials were deemed essential to proving the infringement claims in the Delaware court. The petitioners had unsuccessfully sought these documents from Cipla and Zenara in the U.S. proceedings, prompting them to request international judicial assistance via Letters Rogatory issued by the Delaware court on May 13, 2024, under the Hague Evidence Convention of 1970, to which both India and the United States are signatories.

The factual complexity deepened with the respondent’s assertion that the petitioners’ patent application for VYNDAMAX had been rejected by the Indian Patent Office under Section 3(d) of the Patents Act, 1970, as a new form of a known substance. This rejection fueled Softgel’s contention that the petitioners lacked enforceable patent rights in India, raising questions about the legitimacy of their evidence-seeking expedition in Indian jurisdiction.

Detailed Procedural Background

The procedural journey began in the U.S., where the petitioners, unable to secure the necessary evidence from Cipla and Zenara, sought and obtained Letters Rogatory from the Delaware court. These letters formally requested the Madras High Court to assist in obtaining documents and testimony from Softgel, as outlined in Schedules A and B of the request. The petitioners then filed two original petitions, O.P. (PT) Nos. 5 and 6 of 2024, before the Intellectual Property Division of the Madras High Court under Order XXVI Rules 19-22 and Sections 78 and 151 of the Code of Civil Procedure (CPC), 1908. These petitions sought the appointment of a Local Commissioner to collect evidence, the establishment of a Confidentiality Club to protect sensitive information, and the execution of the Letters Rogatory in a manner compliant with Indian law and international obligations.

The petitions were reserved for judgment on January 20, 2025, and pronounced on January 28, 2025, by Justice Abdul Quddhose. During the proceedings, confidentiality concerns arose, with Zenara requesting that the Letters Rogatory not be disclosed publicly unless safeguarded by a Confidentiality Club. Consequently, the petitioners filed a redacted version of the Letters Rogatory, seeking permission to submit the unredacted version once protective measures were in place. The respondent, Softgel, mounted a robust defense, challenging the maintainability of the petitions and the propriety of compelling a third party to disclose sensitive commercial data.

Issues Involved in the Case

The case presented a constellation of legal and procedural issues, each layered with international and domestic implications:

Jurisdiction and Maintainability: Could the Madras High Court entertain petitions to execute Letters Rogatory against a third party not involved in the U.S. litigation?

Scope of the Hague Convention: Did the Hague Evidence Convention permit the collection of both oral and documentary evidence from a non-party, and were the petitioners’ requests compliant with its provisions, particularly Articles 3, 9, 12, 23, and 39?

Conflict with Domestic Law: Did the rejection of the petitioners’ patent application in India under the Patents Act, 1970, preclude the court from assisting in evidence collection for a foreign patent dispute?

Confidentiality and Commercial Interests: Could the court balance the petitioners’ need for evidence with the respondent’s right to protect confidential research and development data?

Specificity and Proportionality: Were the documents sought in the Letters Rogatory sufficiently specific, or did they constitute an impermissible “fishing expedition” under Article 23 of the Hague Convention?

International Comity: How should the court weigh the principles of international judicial cooperation against India’s sovereignty and the respondent’s commercial interests?

Detailed Submission of Parties

The petitioners, represented by Senior Counsel Mr. Sathish Parasaran and Mr. Pravin Anand, argued that the Letters Rogatory were a legitimate tool under the Hague Convention to secure evidence critical to their U.S. litigation. They emphasized that Softgel, despite being a third party, held documents vital to proving infringement by Cipla and Zenara, as confirmed by Cipla’s suggestion in the U.S. proceedings that such materials could be obtained from Softgel. They contended that Order XXVI Rules 19-22 and Section 78 of the CPC empowered the court to issue a commission for evidence collection, and that the Hague Convention supported both oral and documentary evidence procurement. To address confidentiality concerns, they proposed a Confidentiality Club and in-camera proceedings, aligning with the protective order issued by the Delaware court. They further argued that the Indian Patent Office’s rejection was irrelevant, as their claim was limited to evidence collection, not enforcement of patent rights in India.

The respondent, represented by Senior Counsel Mr. V. Raghavachari and Dr. Mohan Devan, countered with a multi-pronged defense. They asserted that as a non-party to the U.S. litigation, Softgel could not be compelled to produce evidence, especially given the absence of an infringement claim against it. They invoked Article 11(1) of the Hague Convention, arguing that participation could be refused if it conflicted with domestic laws or sovereignty, and Article 39 of the TRIPS Agreement to protect confidential data integral to their pharmaceutical research. They highlighted the Indian Patent Office’s rejection of the petitioners’ application, contending that it negated their right to seek evidence in India for a patent unenforceable domestically. They labeled the petitioners’ requests as vague and disproportionate, constituting a “fishing expedition” barred by Article 23, and warned that disclosure would disproportionately harm their commercial interests and those of their collaborators.

Detailed Discussion on Judgments Cited by Parties and Their Context

Both parties relied on a rich tapestry of judicial precedents to bolster their arguments, each cited with specific relevance to the case’s issues:

Aventis Pharmaceuticals Inc. v. Dr. Reddy’s Laboratories Inc., MANU/AP/0650/2008 (Andhra Pradesh High Court): Cited by the petitioners, this case upheld the enforcement of Letters Rogatory to collect evidence from an Indian entity for a foreign patent dispute. The court ruled that Indian courts could assist under the CPC and the Hague Convention, provided no violation of domestic law occurred. The petitioners used this to argue that precedent favored their request.

Pfizer Inc. v. Unimark Remedies Limited, 2016 SCC Online Bom 8599 (Bombay High Court): Another petitioner-cited case, it affirmed the execution of Letters Rogatory for evidence collection in a patent matter, emphasizing the Hague Convention’s role in facilitating international cooperation. The court allowed evidence from a third party, supporting the petitioners’ stance that Softgel’s status as a non-party was immaterial.

Wooster Products Inc. v. Magna Tek Inc. and Others, MANU/DEL/0102/1988 (Delhi High Court): The petitioners referenced this ruling, where the court permitted evidence collection via Letters Rogatory, reinforcing that Indian courts have a duty to assist foreign proceedings absent legal prohibitions. It underscored the liberal interpretation of CPC provisions.

Norwich Pharmacal Co. v. Customs and Excise Commissioners, Roskill LJ A.C. 133 (House of Lords): The petitioners invoked this English precedent, which established that a third party innocently involved in a tortious act must assist the injured party by disclosing information. They argued that Softgel, linked contractually to Cipla and Zenara, had a similar duty.

Leighton International Limited v. Gavin John Hodge and Others, 2014 SCC Online Guj 15738 (Gujarat High Court): Cited by the respondent, this decision limited evidence collection to oral testimony, rejecting broad documentary requests as prejudicial to third parties. Softgel used this to argue against compelled disclosure of sensitive data.

Fenix Diamonds LLC v. Carnegie Institute of Washington, 2020 SCC Online Guj 1628 (Gujarat High Court): The respondent relied on this case, where the court restricted Letters Rogatory execution to parties in the foreign litigation, refusing broad discovery from non-parties. It supported their claim that the petitions were maintainable only against Cipla and Zenara.

Societe Nationale Industrielle Aerospatiale v. United States District Court for the Southern District of Iowa, 482 U.S. 522 (1987) (U.S. Supreme Court): Both parties cited this landmark ruling, which outlined five factors for assessing international comity in discovery requests: importance of the evidence, specificity, origin, alternative means, and impact on national interests. The petitioners argued these factors favored their request, while the respondent contended they highlighted the lack of specificity and harm to Indian interests.

Detailed Reasoning and Analysis of Judge

Justice Abdul Quddhose’s reasoning was a meticulous blend of statutory interpretation, international law, and judicial precedent, culminating in a decision that prioritized international cooperation while safeguarding confidentiality. He began by affirming the court’s jurisdiction under Order XXVI Rules 19-22 and Section 78 of the CPC, which empower High Courts to issue commissions for evidence collection at the behest of foreign courts in civil proceedings. He interpreted “evidence” broadly, encompassing both oral and documentary forms, rejecting the Gujarat High Court’s narrower view in Leighton and Fenix Diamonds as inconsistent with the CPC and the Hague Convention’s intent.

The judge analyzed the Hague Convention’s provisions, noting that Article 3 required specificity in evidence requests, which the Letters Rogatory satisfied by listing documents in Schedules A and B. He dismissed the respondent’s vagueness objection as premature, delegating specificity disputes to the Local Commissioner. Article 12’s grounds for refusal—lack of judicial function or prejudice to sovereignty—were deemed inapplicable, as the request fell within the court’s powers and no national security threat was evidenced. Article 23’s limitation on pre-trial discovery was inapplicable, as the documents were specified, aligning with India’s declaration.

Addressing the respondent’s domestic law argument, Justice Quddhose held that the Indian Patent Office’s rejection was irrelevant, as the petitions sought evidence, not patent enforcement in India. He distinguished the Gujarat precedents, noting their post-commissioner contexts, and aligned with the Andhra Pradesh, Bombay, and Delhi rulings, which supported evidence collection absent legal violations. The Aerospatiale factors were applied: the documents’ importance to the U.S. litigation was clear, their specificity was ascertainable by the Commissioner, they originated in India, no alternative sources were proven, and no significant Indian interest was undermined.

Confidentiality concerns were meticulously addressed through the establishment of a Confidentiality Club, in-camera proceedings, and sealed records, ensuring compliance with the Delaware court’s protective order and Article 39 of the TRIPS Agreement. The judge rejected the “fishing expedition” claim, emphasizing the petitioners’ categorical assertion—unrebutted by evidence—that Softgel uniquely possessed the documents. International comity, reinforced by the Hague Convention, compelled the court to assist, balancing the petitioners’ justice-seeking needs with Softgel’s commercial interests through protective measures.

Final Decision

The Madras High Court allowed both petitions on January 28, 2025, issuing comprehensive directions. It appointed Mr. Adarsh Ramanujam as Local Commissioner (replacing Ms. Vindhya S.Mani due to a conflict) to collect evidence and testimony as per the Letters Rogatory, conferring special powers to summon, record, and transcribe. A Confidentiality Club was established with named members from both sides, proceedings were ordered in-camera, and documents were to be sealed, accessible only to club members. The evidence was to be forwarded to the Delaware court in a sealed cover, with the petitioners bearing costs and the Commissioner’s remuneration set at Rs. 2,00,000 initially.

Law Settled in This Case

This ruling clarified several legal principles: Indian courts can compel third parties to produce evidence for foreign litigation under the CPC and Hague Convention, provided no domestic law is violated; “evidence” includes both oral and documentary forms; specificity objections are resolved post-commissioner appointment; and confidentiality can be safeguarded through structured mechanisms like a Confidentiality Club. It reinforced the primacy of international comity in judicial assistance, subordinating domestic patent rejections to the limited scope of evidence collection.

Case Title: Pfizer Inc. & Ors. Vs. Softgel Healthcare Private Limited

Date of Order: January 28, 2025

Case No.: O.P. (PT) Nos. 5 and 6 of 2024

Neutral Citation: Yes

Name of Court: High Court of Judicature at Madras

Name of Judge: Justice Abdul Quddhose

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

Dolby International AB & Anr. v. Lava International Ltd.

Case Title: Dolby International AB & Anr. v. Lava International Ltd.

Date of Order: 10 July 2025

Case Number: CS(COMM) 350/2024

Neutral Citation: 2025:DHC:5426

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

The plaintiffs, Dolby International AB and Dolby Laboratories Inc., filed a suit seeking permanent injunction, damages, and other reliefs against Lava International Ltd., alleging infringement of a suite of Standard Essential Patents (SEPs) forming part of Dolby’s Advanced Audio Coding (AAC) technology. Dolby claimed Lava's mobile devices implemented AAC-compliant technologies without procuring appropriate licenses, despite repeated communications since 2018.

The core dispute revolves around Dolby’s assertion that Lava had used AAC-related patents, some expired and others still valid, without entering into a FRAND (Fair, Reasonable, and Non-Discriminatory) license, even after extensive negotiations. Dolby contended that Lava engaged in dilatory tactics, failed to submit a counter-offer for years, and refused to pay any royalties while continuing to market devices that allegedly used Dolby’s patented technology.

Procedurally, the suit was instituted in 2024, followed by an application for interim relief and a pro tem security deposit under Order XXXIX Rules 1 & 2 CPC. On 1 May 2024, the Court gave Lava an opportunity to negotiate and submit a counter-offer. After failed negotiations, the Court directed Lava on 22 May 2024 to deposit ₹5.13 per device as volunteered by them, pending a formal determination.

The Court, after examining the prolonged negotiations, Dolby’s multiple offers, claim charts, licensing history with other manufacturers, and the absence of a timely counter-offer from Lava, held that Lava had acted as an unwilling licensee and indulged in patent holdout. The Court found that Dolby had complied with its FRAND obligations, whereas Lava had not reciprocated in good faith.

Rejecting Lava’s belated challenges on patent validity and essentiality, the Court emphasized that such issues were not raised during the six-year negotiation window and appeared to be afterthoughts. It held that Dolby had established a prima facie case of validity, essentiality, and infringement through extensive licensing, prior judicial precedents, and technical documentation.

Recognizing the need to balance equities and prevent Lava from gaining an unfair market advantage, the Court allowed Dolby’s application for a pro tem security order. It directed Lava to continue depositing ₹5.13 per device sold, as an interim measure, until the final adjudication of the suit. The judgment reaffirmed the Delhi High Court’s authority to grant such pro tem measures in SEP litigation to maintain the balance between implementers and patent holders.

Kishore Chhabra v. The State of Madhya Pradesh

Case Title: Kishore Chhabra v. The State of Madhya Pradesh and Others

Date of Order: 08 July 2025

Case Number: Criminal Revision No. 408 of 2015

Neutral Citation: 2025:MPHC-IND:17175

Court: High Court of Madhya Pradesh, Bench at Indore

Judge: Hon'ble Shri Justice Gajendra Singh

This Criminal Revision was preferred by the petitioner under Sections 397/401 read with Section 482 CrPC challenging the legality of the order dated 18.03.2015 passed by the III Additional Sessions Judge, Ujjain, whereby the charges framed under Section 63 of the Copyright Act, 1957 and Section 420 IPC by the JMFC, Ujjain in Criminal Case No. 5042 of 2013 were set aside and the accused persons were discharged.

The petitioner, Kishore Chhabra, had obtained a patent for an invention titled "Oil Chamber Cleaning Machine" effective from 08.08.2006. He later obtained a copyright registration for the same as a literary work under the title "Rock Engine Oil Chamber Cleaning Machine" on 19.01.2009. An FIR was registered by the petitioner on 17.07.2013 under Crime No. 607/2013 against the respondents, who were allegedly manufacturing similar machines through their firms Speed Engine and Mahalaxmi Engineering. It was alleged that the respondents’ products infringed upon the petitioner’s patent and copyright and were intended to deceive customers, thereby attracting charges under Section 420 IPC and Section 63 of the Copyright Act.

After submission of the final police report, charges were framed by the JMFC. However, during trial, the respondents filed an application under Section 216 CrPC contending that no copyright or patent infringement had occurred, the machines were different, and the subject machine was an unprotectable assembled product. They claimed the copyright was wrongfully obtained and the issue was purely civil in nature. The application was rejected by the trial court.

Subsequently, the respondents filed a revision before the Sessions Court, which on 18.03.2015, allowed their plea, setting aside the trial court’s order and discharging them. The Sessions Judge held that once a design is capable of registration under the Designs Act and has been exploited more than fifty times industrially, copyright protection ceases as per Section 15(2) of the Copyright Act. It was also held that no literary work had been filed with the complaint and hence no case under Section 63 was made out.

The petitioner approached the High Court against the Sessions Court’s order, arguing that both patent and copyright registrations existed independently and that the prosecution version did disclose a prima facie case. He further argued that the Revisional Court had exceeded its jurisdiction by entertaining a discharge application indirectly through Section 216 CrPC, despite an earlier rejection under Section 227 CrPC.

The High Court accepted the petitioner’s contentions. It held that the copyright registration being subsequent to the grant of patent was legally sustainable and the factual questions regarding industrial reproduction and design eligibility could only be determined by evidence at trial. It also held that no literary work need be annexed at the stage of complaint to sustain a charge under Section 63. Citing Supreme Court precedent in K. Ravi v. State of Tamil Nadu, 2024 SCC OnLine SC 2283, the Court emphasized that Section 216 CrPC does not permit backdoor discharge and the Sessions Court’s interference at the charge stage was unwarranted.

Accordingly, the High Court allowed the revision, set aside the order dated 18.03.2015 passed by the Sessions Court, and directed restoration of Criminal Case No. 5042/2013 before the trial court, with further proceedings to continue from where they stood. The respondents were directed to appear before the trial court on 04.08.2025.

Sita Ram Iron Foundry and Engineering Works v. Hindustan Technocast (P) Ltd

Rectification of Trademark Register: The Threshold of Proof in Allegations of Fraud and Fabrication

Introduction:The case of Sita Ram Iron Foundry and Engineering Works v. Hindustan Technocast (P) Ltd. & Anr. raises significant questions of trademark ownership, assignment validity, and the burden of proof in rectification proceedings under the Trade Marks Act, 1999. The petitioner sought cancellation of the trademark “BADAL” registered in favour of Hindustan Technocast, alleging fraud and impropriety in the chain of title. Delhi High Court adjudicated the matter and delivered the judgment on 9 July 2025 in C.O. (COMM.IPD-TM) 150/2021.

Factual Background:The petitioner, M/s Sita Ram Iron Foundry, a partnership firm engaged in manufacturing and marketing of Toka machines, is the registered proprietor of the trademark “GHANGHOR BADAL”, applied for in 2013 and registered in 2017 under Class 07. The petitioner has claimed continuous use since 2002. The impugned mark “BADAL”, originally registered in 2000 by M/s Jodh Singh Sehmbey and Sons, was later claimed to have been assigned to Mr. Iqbal Singh Sehmbey in 2006, and subsequently to Hindustan Technocast in 2011. The petitioner alleged that these assignments were fraudulent and defective, and that the respondent had wrongly obtained the registration.

Procedural Background:The present rectification petition was originally filed before the Intellectual Property Appellate Board (IPAB) and was transferred to the Delhi High Court following the abolition of IPAB via the Tribunals Reforms Ordinance, 2021. The petition was filed under Sections 47, 57, and 125 of the Trade Marks Act. It arose as a consequence of proceedings in a suit for trademark infringement filed by the respondent in the District Court, Jind, Haryana, where the petitioner is defendant no. 2. The Jind Court had stayed proceedings under Section 124 of the Act to await the outcome of the rectification petition.

Core Dispute:The core issue was whether the respondent’s trademark “BADAL” had been fraudulently assigned and registered in its name, thereby warranting rectification of the Register? The petitioner challenged the authenticity of two assignment deeds – one dated 25 May 2006 (from the original firm to Mr. Iqbal Singh Sehmbey) and another dated 12 April 2011 (from Iqbal Singh to Hindustan Technocast). The petitioner alleged that the first assignment was self-dealing, and the second was riddled with irregularities, including multiple conflicting versions.

Discussion on Judgments:The petitioner relied on Anshul Vaish v. Hari Om, 2025 SCC OnLine Del 664, where fabricated user documents were found to undermine the respondent’s claim. The Court, in that case, held the user documents to be forged as they referred to a TIN number issued after the alleged use date.

The petitioner also cited Gandhi Scientific Co. v. Gulshan Kumar, 2009 SCC OnLine Del 820, and Khushi Ram Behari Lal v. Jaswant Singh Balwant Singh, 2019 SCC OnLine Del 6702, to argue that obvious manipulation in assignment records could render registrations void ab initio.

In contrast, the Court relied heavily on Safari International v. Subhash Gupta, 2008 SCC OnLine Del 1767, where the Division Bench held that fraud must be pleaded with specificity and proved with cogent evidence. Mere allegations or suspicion do not suffice to cancel a registered mark.

Further, the Court referred to the Supreme Court’s decision in A.C. Ananthaswamy v. Boraiah, (2004) 8 SCC 588, reiterating that allegations of fraud require high standards of proof—akin to criminal trials.

The Court also relied on Asma Lateef v. Shabbir Ahmad, (2024) 4 SCC 696, and Balraj Taneja v. Sunil Madan, (1999) 8 SCC 396, to emphasize that a plaintiff cannot succeed merely because the defendant did not file a written statement. The burden remains on the petitioner to prove its own case.

Reasoning and Analysis of the Judge:Court held that no conclusive evidence was brought on record by the petitioner to prove that the assignment deeds were fraudulent. The petitioner’s contention that Mr. Iqbal Singh Sehmbey executed an assignment deed in both capacities—as assignor and assignee—was found insufficient, as no partner or member of the HUF had contested this claim. The Registrar had also accepted Form TM-16 and TM-24 filed in support of this ownership transfer.

On the second assignment to Hindustan Technocast, the Court noted that although two versions of the same deed were placed on record, it required trial-level inquiry to determine which was genuine. Rectification under Section 57 could not be based on mere allegations without trial.

The Court clarified that even in cases where the respondent did not file a reply, the burden still lies with the petitioner to prove the pleaded case with substantive evidence. The Court underscored that the petitioner must succeed on the strength of its own case, not by highlighting deficiencies in the respondent’s position.

Further, the Court observed that the “BADAL” trademark was claimed to have been in use since 1945. Given such long-standing use, a high degree of scrutiny was necessary before cancelling it. The petitioner neither alleged non-use nor similarity, and the Registrar had already acknowledged the coexistence by granting registration to “GHANGHOR BADAL”.

Final Decision:The Delhi High Court dismissed the rectification petition, holding that the allegations of fraud were not substantiated by evidence strong enough to warrant cancellation of a trademark with a legacy dating back to 1945. The Court concluded that disputed facts around assignment could only be decided through trial, and such a rectification proceeding was not the appropriate forum for that purpose.

Law Settled in This Case:This case reaffirms the legal position that rectification of the Register under Section 57 of the Trade Marks Act requires a strong evidentiary foundation, particularly when allegations of fraud are made. Mere procedural anomalies or the absence of opposition from the respondent do not relieve the petitioner of the burden of proof. The judgment strengthens the principle that registration enjoys a presumption of validity and can only be rebutted through cogent, credible, and admissible evidence. Furthermore, it affirms that long-standing use of a mark (here since 1945) cannot be lightly interfered with, especially in the absence of proof of deceit or fabrication.

Case Title: Sita Ram Iron Foundry and Engineering Works v. Hindustan Technocast (P) Ltd. & Anr.:Date of Order: 09 July 2025:Case Number: C.O. (COMM.IPD-TM) 150/2021:Neutral Citation: 2025:DHC:5395: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

Novateur Electrical & Digital Systems Pvt. Ltd. Vs. V-Guard Industries Ltd

Self-Contradiction as Estoppel: When Design Registration Bars Invalidity Claims

Introduction:In the case of Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., the Delhi High Court addressed a critical legal issue concerning the enforceability of design rights and the scope of permissible challenges to registered designs. The matter pertained to allegations of design piracy under the Designs Act, 2000, and whether a defendant, who had itself obtained design registration for a substantially similar design, could subsequently challenge the plaintiff’s registered design on the ground of prior publication. 

Factual Background: Novateur Electrical & Digital Systems Pvt. Ltd. (“the plaintiff”) held three design registrations (Nos. 296178, 296179, and 296180) for its “LYNCUS” range of switch plates. The plaintiff alleged that V-Guard Industries Ltd. (“the defendant”) was infringing these registered designs through its “MATTEO” range of switch plates. The novelty of the plaintiff’s designs resided in their unique shape and configuration, including a convex central surface tapering towards thumb-pressed corners, and a distinctive concave-cum-convex periphery. These designs were registered in 2017 but deemed effective from 27 July 2017, the date of application.

Procedural Background:The plaintiff instituted the suit under Section 22 of the Designs Act, 2000, for piracy of its registered designs and sought an interim injunction under Order XXXIX Rules 1 and 2 CPC through IA No. 14683/2021. The defendant contested the interim relief by asserting that the plaintiff's designs were not novel and had been disclosed to the public before registration, thereby invoking Section 4(b) and Section 19(1)(b) read with Section 22(3) of the Designs Act to question the design’s validity.

Core Dispute:The principal legal issue was whether the defendant could claim the plaintiff’s registered design to be invalid for want of novelty and prior publication, especially when the defendant itself had secured registration for a similar design allegedly based on the same source, i.e., “Concept 6” shared by their OEM supplier, NIPA International Pvt. Ltd.

Discussion on Judgments:To support its contention that the plaintiff’s design lacked novelty, the defendant cited prior correspondence with NIPA, which had shared ten design concepts, including “Concept 6”, in December 2016 and February 2017. The defendant argued that this prior communication constituted “publication in tangible form” under Section 4(b) of the Act. They relied on principles from Rosedale Associated Manufacturers Ltd. v. Airfix Products Ltd. [1957 RPC 239 (CA)], as cited in Diageo Brands B.V. v. Alcobrew Distilleries India Pvt. Ltd., 2022 SCC OnLine Del 4499, to argue that publication does not require a physical product but merely visibility of the design to a person skilled in the art.

In response, the plaintiff relied on Pantel Kabushiki Kaisha v. Arora Stationers, (2019) 79 PTC 429 (Del)(DB), to assert that the defendant, having itself registered a design similar to the plaintiff’s, was estopped from challenging its validity. The plaintiff also contested that “Concept 6” was merely a preliminary concept never applied to an article, and hence not a “design” under Section 2(d) of the Designs Act.

Reasoning and Analysis of the Judge: The court rejected the defendant’s reliance on the email communications and design concepts on several grounds. Firstly, he clarified that for a publication to constitute prior art under Section 4(b), it must involve a tangible article to which a design has been applied, as per the statutory definition under Sections 2(a) and 2(d) of the Designs Act. The Court held that “Concept 6” remained a mere idea illustrated via computer-generated images, and there was no evidence of its actual application to an article prior to the plaintiff’s filing date.

Secondly, the Court found no material to show that “Concept 6” was finalized or that it bore the precise shape and configuration claimed in the plaintiff’s registrations. The presentation slide from the defendant’s internal meeting on 3 March 2017 indicated that Concept 6 was under review and required modifications before any adoption.

Thirdly, the Court emphasized the estoppel principle, noting that the defendant, having obtained registration for its own switch plate design, could not now impugn the validity of the plaintiff’s registration based on alleged prior disclosure of the same “Concept 6”.

Lastly, regarding other allegedly similar prior registered designs (e.g., Luminous Designs No. 277682 and 277683), the Court declined to consider them as grounds for invalidation, noting that only perspective views were presented and they were insufficient for a meaningful design comparison.

Final Decision:The Delhi High Court held that the plaintiff’s registered designs had not been shown to be invalid on account of prior publication under Section 4(b) of the Designs Act. The Court restrained the defendants, their directors, distributors, and agents from manufacturing, selling, or dealing in switch plates bearing the impugned designs or any obvious or fraudulent imitation thereof, pending final adjudication of the suit. IA 14683/2021 was allowed accordingly.

Law Settled in This Case:This decision reinforces the principle that a party who has itself obtained design registration is estopped from challenging the validity of a similar registered design on grounds of prior publication. It also clarifies that mere conceptual illustrations or computer-generated images do not constitute “publication in tangible form” under Section 4(b) unless they have been applied to a physical article. For a design to be invalidated for lack of novelty, concrete evidence of its prior tangible use or disclosure must be presented.

Case Title: Novateur Electrical & Digital Systems Pvt. Ltd. Vs. V-Guard Industries Ltd.:Date of Order: 04 January 2023:Case Number: CS(COMM) 567/2021:Neutral Citation: 2023/DHC/000106:Court: High Court of Delhi at New Delhi:Judge: Hon’ble Mr. Justice C. Hari 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

Belvedere Resources DMCC Vs. OCL Iron and Steel Ltd

Belvedere Resources DMCC Vs. OCL Iron and Steel Ltd. & Ors. | Date of Order: 01 July 2025 | Case No.: O.M.P.(I)(COMM.) 397/2024 | Neutral Citation: 2025:DHC:5128 | Court: High Court of Delhi at New Delhi | Judge: Hon’ble Mr. Justice Jasmeet Singh

Belvedere Resources DMCC, a UAE-based coal trading company, filed a petition under Section 9 of the Arbitration and Conciliation Act, 1996 seeking interim relief against OCL Iron and Steel Ltd. (R1) and its group entities for securing a claim of USD 2,777,000 (approx. ₹23.34 crore). The petitioner alleged wrongful repudiation of a coal supply contract initially entered into with S.M. Niryat Pvt. Ltd. (SMN), which later amalgamated with R1 pursuant to an NCLT order dated 30 January 2024.

The factual matrix reveals that the agreement for supply of coal was concluded through electronic exchanges and WhatsApp communications in October 2022, incorporating terms based on the Standard Coal Trading Agreement (SCoTA), which included an arbitration clause with Singapore International Arbitration Centre (SIAC) as the seat. The petitioner nominated the vessel MV GLYFADA for delivery, but SMN purportedly cancelled the contract on 15 November 2022 without payment or performance. Arbitration proceedings were later initiated in June 2024 under SIAC.

Before the constitution of the arbitral tribunal, the petitioner approached the Delhi High Court in November 2024 seeking interim protection including attachment of assets, furnishing of security, and disclosure of bank accounts. The respondent contested the maintainability of the petition on grounds of lack of territorial jurisdiction, absence of a concluded arbitration agreement, and non-fulfilment of the legal standard for interim relief under Section 9 of the Act.

Justice Jasmeet Singh, after considering the communications and conduct of the parties, held that a valid arbitration agreement existed under Section 7(4)(b) of the Act through electronic correspondence. However, the Court ruled that it did not have territorial jurisdiction since no part of the cause of action arose in Delhi and the mere existence of a branch office of R1 in Delhi, which had no role in the transaction, was insufficient to confer jurisdiction.

On the merits, the Court declined to grant interim relief. It held that the claim was for unliquidated damages due to breach of contract and did not constitute a "debt due" warranting security under Section 9. The petitioner failed to satisfy the stringent preconditions of Order XXXVIII Rule 5 CPC, such as showing intent of the respondent to dispose of assets to defeat a potential award. The Court noted that commercial borrowing or the respondent’s previous insolvency proceedings were not grounds for presuming mala fide asset dissipation.

Accordingly, the Court dismissed the petition for interim relief, clarifying that its findings would not affect the arbitration proceedings.

Reliance Retail Limited Vs. Ashok Kumar

Case Title: Reliance Retail Limited Vs. Ashok Kumar :Date of Order: 07 July 2025:Case Number: CS(COMM) 647/2025:Court: High Court of Delhi:Judge: Hon'ble Mr. Justice Saurabh Banerjee

Reliance Retail Limited, part of Reliance Industries Ltd., approached the Delhi High Court seeking urgent ex parte relief to curb large-scale fraudulent activities being conducted using its registered trademark “Tira” and variants thereof. The company alleged that unknown entities (Defendant No. 1), by impersonating its representatives through mobile and WhatsApp communications, were deceiving consumers into making online payments via UPI and QR codes for fictitious products and services. The fraud was being perpetrated using the plaintiff’s name and marks to lend credibility to these transactions, often citing fabricated gift cards, false cancellations, and fake payment failures.

The plaintiff highlighted that it launched the “Tira” brand in April 2023 in the beauty and personal care sector and had since acquired significant goodwill. Trademark registrations existed for “Tira” and its variants across multiple classes under the Trade Marks Act, 1999. Complaints were pouring in nationwide, with over 8,900 cases reported in just two months—666 of them from Delhi alone—indicating organized and widespread consumer deception causing financial losses exceeding ₹41 lakhs.

The procedural history reflects that the Court exempted the plaintiff from pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015 and granted other procedural exemptions given the urgency and public interest involved. Reliance Retail also impleaded telecom companies (Defendants 2–4), WhatsApp (Defendant 5), NPCI (Defendant 6), and relevant Government Ministries (Defendants 7 and 8) for effective execution of any future injunctions and to identify the persons behind the fraudulent mobile numbers and UPI accounts.

Upon examining the pleadings, documents, and urgency of the matter, the Court found prima facie evidence of impersonation, misrepresentation, and misuse of the plaintiff’s trademarks. It observed that Defendant No. 1's activities were deliberate, calculated, and harmful to both the plaintiff and the general public.

The Court, therefore, granted an ex parte ad interim injunction restraining Defendant No. 1 and all related persons from using “Tira” or any deceptive variants. Further, it directed telecom operators to block and disclose details of the rogue numbers, WhatsApp to suspend related accounts and disclose user information, and NPCI to freeze and disclose information about UPI and QR code holders involved. It also directed all defendants to act similarly for any future rogue entities identified by the plaintiff.

Rainbow Children’s Medicare Limited Vs Rainbow Healthcare

Introduction: This case centers around a trademark dispute between Rainbow Children’s Medicare Limited (the appellant), a well-known chain of pediatric and women’s healthcare hospitals with registered trademarks under the name “Rainbow,” and Rainbow Healthcare (respondents), a proprietorship firm operating in Bengaluru under a similar tradename since 2013. The central contention relates to the alleged infringement and passing off of the appellant’s registered trademarks, and the legal scrutiny over whether the respondents’ use of a similar mark amounts to dishonest adoption or legitimate concurrent usage.

Detailed Factual Background:Rainbow Children’s Medicare Limited was incorporated in 1998 and commenced operations as a pediatric super-speciality hospital in Hyderabad. Over the years, it has expanded to 16 hospitals and 3 clinics across India, serving pediatric and gynecological needs. The appellant adopted the trademark “Rainbow” in 1998 and subsequently secured multiple registrations in Classes 42 and 44 of the Trademarks Act. It claimed to be the prior adopter and user of the term “Rainbow” in relation to healthcare services and asserted that its mark had gained substantial goodwill and reputation over two decades.

During routine checks, the appellant discovered that the respondents were using the name “Rainbow Healthcare” in Bengaluru, with listings on platforms such as Justdial and Practo, and through their website. The appellant issued a cease-and-desist notice on November 28, 2022, asserting its prior rights. However, the respondents responded by claiming prior use since 2013 and continued using the mark.

Detailed Procedural Background: The appellant filed Com.O.S. No. 538/2023 before the LXXXII Additional City Civil and Sessions Judge, Bengaluru (Commercial Court), seeking interim injunctions under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure. Initially, the trial court granted an ex parte interim injunction on April 20, 2023. However, after hearing both sides, the trial court vacated the interim injunction through orders dated June 18, 2024, dismissing IA Nos. II and III. The appellant challenged these orders in Commercial Appeals (COMAP Nos. 286 and 287 of 2024) before the High Court of Karnataka.

Issues Involved in the Case:Whether the appellant, being the prior user and registered proprietor of the mark “Rainbow” for healthcare services, is entitled to an interim injunction against the respondents using “Rainbow Healthcare.”?Whether the respondents' use of the mark “Rainbow Healthcare” amounts to trademark infringement and passing off?Whether delay or acquiescence disentitles the appellant from seeking interim injunctive relief?

Detailed Submissions of Parties: The appellant contended that it was the first adopter and continuous user of the mark “Rainbow” since 1998 and had registered several trademarks across different jurisdictions and languages. It argued that its brand had become synonymous with high-quality pediatric and gynecological care, and the respondents’ use of a deceptively similar name created confusion among the public and amounted to infringement and passing off under Sections 28 and 29 of the Trademarks Act, 1999.

The respondents argued that they had been operating under the name “Rainbow Healthcare” since 2013, before the appellant commenced operations in Bengaluru in 2015. They produced supporting documents such as trade licenses, pollution control authorizations, and income tax returns to substantiate their claim of continuous and bona fide use. The respondents also argued that the appellant suppressed the existence of an earlier cease-and-desist notice from 2021 and failed to approach the court with clean hands.

Detailed Discussion on Judgments Cited: The appellant relied on several precedents, including:Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia [(2004) 3 SCC 90], where the Supreme Court held that once infringement is established, injunction should follow even if there is some delay.Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], reinforcing the doctrine that passing off claims can succeed solely on the strength of reputation and likelihood of confusion.Max Healthcare Institute Ltd. v. Sahrudya Health Care Pvt. Ltd. [2019 SCC OnLine Del 9036], where Delhi High Court held that even absence of trademark registration cannot save a subsequent user if prior reputation and confusion are established.

In contrast, the respondents relied on:Intel Corporation v. Anil Hada [MANU/DE/9767/2003], where the Delhi High Court declined injunction due to long concurrent use by the defendant and absence of dishonest intent.Gujarat Bottling Co. Ltd. v. Coca Cola Co. [(1995) 5 SCC 545], where the Supreme Court discussed the principles governing grant of interim injunction and held that conduct and delay may influence the court’s discretion.McDonald's Corporation v. Sterling's Mac Fast Food [ILR 2007 Karnataka 3346], where the Karnataka High Court emphasized honest concurrent use and business scale of the junior user in determining trademark disputes.

Detailed Reasoning and Analysis of Judge: The High Court considered the trial court’s order in great detail. While it agreed with the trial court that the appellant had established a prima facie case and was a prior user of the mark “Rainbow” for healthcare services, it concurred that the balance of convenience and irreparable harm tilted in favor of the respondents.

The court noted that the respondents had continuously used the mark “Rainbow Healthcare” since 2013, as evidenced by various regulatory and tax documents. The appellant, despite operating in Bengaluru since 2015, only took legal action in 2023, which showed a delay that could not be explained away as mere oversight.

The court also accepted that the respondents’ adoption of the name “Rainbow Healthcare” was not prima facie dishonest, especially in view of the narrative that the name was independently coined based on its pediatric specialization and fascination with rainbows and reaffirmed the principle that once infringement is established, injunction should follow even if there is some delay.

Final Decision: The High Court dismissed the appeals and upheld the orders of the trial court vacating the interim injunction. It ruled that the appellant, though a prior user and registered proprietor of the trademark “Rainbow,” failed to establish the essential ingredients warranting interim relief in the form of an injunction against the respondents.

Law Settled in this Case: This case reinforces the principle that prior use and trademark registration, though significant, are not conclusive in granting interim injunctions. The courts must balance factors including long concurrent use, delay, acquiescence, and honest adoption. In trademark disputes involving similar marks in the same class of services, the nature of adoption, knowledge, and conduct of the parties assume critical importance. Mere registration does not guarantee injunctive relief where equitable considerations disfavor it.

Case Title: Rainbow Children’s Medicare Limited Vs. Rainbow Healthcare:Date of Order: April 23, 2025:Case No.: COMAP Nos. 286 & 287 of 2024:Neutral Citation: 2025/KAR/HC/0423:Name of Court: High Court of Karnataka, Bengaluru:Name of Judge: Hon’ble Mr. Justice V. Kameswar Rao and Hon’ble Mr. Justice T.M. Nadaf

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

Asociacion De Productores De Pisco A.G. Vs. Union of India

Geographical Indications, Identity, and International Obligations

Introduction:This case revolves around the conflict between Chile and Peru over the exclusive right to use the term "PISCO" as a Geographical Indication (GI) for alcoholic beverages. The petitioner, Asociacion de Productores de Pisco A.G., an association of Chilean producers, contested the registration of the GI "PISCO" granted in favor of Peru by the Intellectual Property Appellate Board (IPAB). The petitioner asserted that Chile also has a historical and cultural claim to the term and sought to establish "Chilean PISCO" as a homonymous GI.

Factual Background:The petitioner represents Chilean producers of PISCO, primarily based in the river valleys of Elqui, Limari, Huasco, Copiapo, and Choapa. Chile claims a history of producing PISCO since at least 1733. The term "PISCO" is associated with both Chile and Peru, each claiming unique regional and production methods.

The Peruvian Embassy in India filed GI Application No. 43 in 2005 for "PISCO" under Class 33. The petitioner opposed it in 2007. The Assistant Registrar initially registered the GI as "Peruvian PISCO" to avoid confusion, but IPAB overturned this decision in 2018, allowing registration of the term "PISCO" without any geographical qualifier exclusively in favor of Peru.

Procedural Background: Following the IPAB's order dated 29 November 2018, which overturned the Registrar's 2009 order, the petitioner filed W.P.(C)-IPD 17/2021 before the Delhi High Court. The petitioner also submitted a fresh GI application for “Chilean PISCO” (Application No. 689) on 3 June 2020. The High Court passed interim orders restraining final adjudication on this application pending disposal of the writ petition.

Core Dispute: The central issue was whether the term "PISCO" can be granted exclusively as a GI to Peru or whether Chile has coexisting rights over it?" The case posed a broader question about whether Chilean and Peruvian PISCOs are homonymous GIs and whether the IPAB's decision ignored the provisions of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act) and international principles under the TRIPS Agreement.

Discussion on Judgments: The petitioner cited:Article 22.3 and 22.4 of TRIPS Agreement: To argue that homonymous GIs from different countries can coexist if consumer confusion is avoided.Tea Board, India v. ITC Ltd., 2011 SCC OnLine Cal 1083: To highlight the difference between GI and trademark principles.Scotch Whisky Association v. J.K. Enterprises, 2023 SCC OnLine MP 5352: To emphasize India's obligation to recognize foreign GIs under the TRIPS framework.These judgments and legal standards were invoked to argue that the IPAB wrongly applied trademark law principles such as prior use and misappropriation, rather than examining whether both countries’ products qualify for GI protection under the GI Act.

The respondents, on the other hand, argued that:PISCO is exclusively associated with Peru.The Chilean claim lacks historical and geographical legitimacy.International treaties recognizing Chilean PISCO are commercial/political and do not amount to legal recognition.

Reasoning and Analysis of the Judge: The Court emphasized that the principles of GI law are fundamentally different from trademark law. GI registration is based on whether the goods originate from a particular region and have characteristics attributable to that region. The Court noted that both Chile and Peru have a long-standing, recognized history of producing PISCO. The evidence included:Chile’s use of the term since at least 1733.International Free Trade Agreements (FTAs) and GI recognitions acknowledging Chilean PISCO.Awards and recognitions for Chilean PISCO globally.Legislative actions in Chile recognizing PISCO as a national appellation.The Court held that the IPAB had erred by labeling Chile’s use as “dishonest” and by failing to recognize the existence of Chilean PISCO despite overwhelming evidence.It found that the GI Act permits the registration of homonymous GIs under Section 10, provided adequate safeguards against consumer confusion exist. The Court compared the case with the Indian example of “Banglar Rasogolla” and “Odisha Rasagola,” both of which coexist as GIs.The Judge also dismissed the respondent's argument that the application filed by the Embassy of Peru was invalid, holding that such procedural arguments could not override the substantive merits of GI claims when viewed through the lens of international obligations and Section 10 of the GI Act.

Final Decision:The Delhi High Court allowed the writ petition. It set aside the IPAB’s order dated 29 November 2018 and restored the Registrar's 2009 decision that had granted registration of the GI as "Peruvian PISCO" rather than the generic "PISCO".The Court directed that the Registrar reconsider the petitioner’s application for “Chilean PISCO” in accordance with Section 10 of the GI Act, which deals with homonymous GIs. It also clarified that the GI "PISCO" could not be granted exclusively to one country where another country’s use is long-standing, legally recognized, and distinctly characterized.

Law Settled in This Case:This judgment affirms that:GI protection is a community right and not an individual monopoly.The GI Act allows homonymous GIs under Section 10, subject to consumer protection mechanisms.Trademark law concepts like prior use, misappropriation, or goodwill have no role in GI adjudication.Courts must focus on the identification of goods with a specific geographical origin and characteristics, and not political or historical controversies.International recognition through treaties and FTAs can support a claim of homonymous GI, though not conclusively determine statutory rights in India.

Case Title: Asociacion De Productores De Pisco A.G. Vs. Union of India & Ors.:Date of Order: 07 July 2025:Case Number: W.P.(C)-IPD 17/2021:Neutral Citation:2025:DHC:5339:Court: High Court of Delhi at New Delhi: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

Rajasthan Aushdhalaya Private Limited Vs. Himalaya Global Holdings Ltd.

Dominant Component and Initial Interest Confusion in Indian Trademark Law

Introduction: The present case, Rajasthan Aushdhalaya Private Limited Vs. Himalaya Global Holdings Ltd. & Anr., decided by the Delhi High Court on 4th July 2025, presents a significant development in Indian trademark jurisprudence concerning the protection of well-known marks in the pharmaceutical sector. The Court adjudicated upon the alleged infringement of the well-known registered trademark ‘Liv.52’ by the appellant’s mark ‘Liv-333’. Through this decision, the Court not only reinforced the doctrine of initial interest confusion in trademark law but also stressed the sanctity of judicial orders, particularly in the context of medicinal products and consumer safety.

Factual Background:Himalaya Global Holdings Ltd., the respondent, is a globally recognized pharmaceutical entity, renowned for its ayurvedic liver formulation sold under the trademark ‘Liv.52’. The mark ‘Liv.52’ has been in continuous use since 1955 and was formally registered in India under Class 5 in 1957. The company holds several registrations for formative marks such as ‘Liv.52 PROTEC’, ‘Liv.52 HB’, and ‘Liv.52 HAEMOTEC’, all of which enjoy substantial goodwill and consumer recognition.

In January 2024, the respondents became aware that Rajasthan Aushdhalaya Pvt. Ltd., the appellant, was manufacturing and selling liver-related medicinal products under the mark ‘Liv-333’. Despite the issuance of a cease-and-desist notice dated 17 January 2024, the appellant continued the use of the impugned mark. A commercial invoice from 2015 indicated that the use of ‘Liv-333’ had persisted for some time. Subsequently, the respondents instituted CS (Comm) 433/2024 seeking a permanent injunction and other reliefs.

Procedural Background:The learned Single Judge of the Delhi High Court issued summons in the suit on 24 May 2024 and granted an ex parte ad interim injunction restraining the appellant from using the mark ‘Liv-333’. Despite this, the appellant continued its infringing activities, leading to the initiation of contempt proceedings. The appellant failed to file a written statement within the statutorily prescribed time. The Court, by its order dated 23 January 2025, closed the right of the appellant to file the written statement. The appellant did not challenge this order, thereby allowing it to attain finality.

Invoking Order VIII Rule 10 of the Code of Civil Procedure, 1908, the learned Single Judge decreed the suit in favor of the respondents, awarded ₹20 lakhs in damages (₹10 lakhs each from the two defendants), and ₹10,91,567 as litigation costs. The appellant then filed the present appeal under Section 13A of the Commercial Courts Act, 2015 read with Section 96 CPC, challenging the decree.

Core Dispute:The core dispute was whether the appellant’s use of the trademark ‘Liv-333’ constituted infringement of the respondents’ registered mark ‘Liv.52’, and if so, whether the learned Single Judge rightly exercised his discretion under Order VIII Rule 10 CPC to decree the suit without trial? An ancillary issue was whether damages and costs awarded by the Single Judge were legally justified.

Discussion on Judgments:In support of their respective positions, both parties relied on precedent. The appellant’s counsel cited S.B.L. Ltd. v. The Himalaya Drug Co., (1997) 67 DLT 803 (DB), to argue that the term “Liv” was generic and commonly used in trademarks for liver-related pharmaceutical preparations. However, the Division Bench clarified that the said judgment arose from an appeal against an interim order under Order XXXIX Rules 1 and 2 CPC and held only a prima facie view.

The Court instead relied heavily on the binding precedent in Himalaya Drug Co. v. S.B.L. Ltd., 2012 SCC OnLine Del 5701, where it was held that “Liv” constituted the essential and dominant feature of the mark ‘Liv.52’, and that even the use of “LIV” in isolation by another party could result in confusion and amount to infringement.

The Court also referred to Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, which emphasized that in the context of medicinal products, courts must exercise heightened caution to prevent consumer confusion, as such confusion could adversely impact public health.

Additionally, the Court applied the “initial interest confusion” doctrine, drawing from Under Armour Inc. v. Anish Agrawal, 2025 SCC OnLine Del 3784, and Under Armour Inc. v. Aditya Birla Fashion & Retail Ltd., (2023) 300 DLT 573, to conclude that even initial confusion at the point of consumer attention, regardless of clarity at purchase, is sufficient to prove infringement under Section 29(2)(b) of the Trade Marks Act, 1999.

Reasoning and Analysis of the Judge:The Court noted that the appellant had no legitimate justification for adopting the mark ‘Liv-333’, particularly when the respondents' mark ‘Liv.52’ had a long-standing and well-documented reputation. The judgment highlighted that the addition of numerical suffixes like “333” did not mitigate the likelihood of confusion arising from the identical prefix “Liv”, which was the dominant and distinctive element of the respondents’ trademark.

The Division Bench categorically rejected the appellant’s claim that ‘Liv’ was generic or publici juris. Relying on the reasoning from South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., (2015) 61 PTC 231 (Del) (DB), the Court held that even under the anti-dissection rule enshrined in Section 17 of the Trade Marks Act, the dominant feature of a composite mark can be protected. The court emphasized that the mark must be considered as a whole, but consumer perception is guided by the most memorable part — in this case, “Liv”.

The Court also dismissed the appellant’s contention that differences in packaging, price, and form (capsule vs tablet) ruled out any confusion. Citing Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, the Bench reiterated that infringement analysis is concerned with mark-to-mark comparison, not the manner of trade dress or marketing.

With respect to procedural compliance, the Court found no fault in the invocation of Order VIII Rule 10 CPC by the Single Judge, particularly in light of the appellant’s failure to file a written statement despite several opportunities.

Final Decision:The Delhi High Court upheld the learned Single Judge’s decision granting a permanent injunction restraining the appellant from using the infringing mark ‘Liv-333’. However, considering that the decree also involved a money component, the Division Bench issued notice only on the aspect of costs and damages. The operation of that part of the order was stayed, subject to the appellant depositing the awarded amount with the Registry within eight weeks. The injunction against the use of ‘Liv-333’ remained intact and was not interfered with.

Law Settled in This Case:This case reinforces the principle that in pharmaceutical trademarks, even a partial imitation involving a dominant component of a registered mark can amount to infringement under Section 29 of the Trade Marks Act. The Court affirmed the relevance of the initial interest confusion doctrine in Indian trademark law. It also clarified that the procedural discretion granted under Order VIII Rule 10 CPC can be validly exercised in the absence of a written statement, particularly when the party in default has flagrantly disregarded judicial orders. Additionally, it reiterated that even coined or semi-descriptive terms, once associated with a brand and registered, enjoy trademark protection against deceptively similar imitations, especially when consumer health and safety are at stake.

Case Title: Rajasthan Aushdhalaya Private Limited Vs. Himalaya Global Holdings Ltd. & Anr.:  Date of Order: 04 July 2025: Case Number: RFA(OS) (COMM) 18/2025: Neutral Citation: 2025:DHC:5307:Court: High Court of Delhi at New Delhi:Judges: 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

Albemarle Corporation Vs Controller of Patents

Case Title: Albemarle Corporation Vs Controller of Patents:Date of Order: July 07, 2025:Case Number: C.A. (COMM.IPD-PAT) 19/2022:Neutral Citation: 2025:DHC:5338:Court: High Court of Delhi at New Delhi:Judge: Hon’ble Ms. Justice Mini Pushkarna

In this patent appeal under Section 117A of the Patents Act, 1970, Albemarle Corporation, a U.S.-based chemical company, challenged the order dated May 12, 2021, by the Controller of Patents, which refused its Indian Patent Application No. 2897/DELNP/2012 titled “Solvent Systems Having No Flash Point and Methods Using Such Solvent Systems for Dissolving Rigid Polyurethane Foams.” The refusal was primarily based on lack of novelty, lack of inventive step, and non-fulfilment of enablement requirements under Sections 15 and 10(4) of the Patents Act, referencing prior art documents D1–D4.

Procedurally, Albemarle had filed the application in April 2012 and responded to the First Examination Report issued in October 2017. Several hearings and written submissions followed through 2020 and early 2021. After the refusal, the company appealed before the Delhi High Court and, during the pendency of the appeal, filed I.A. 35045/2024, seeking to introduce an auxiliary claim set limited solely to the process aspect of cleaning polyurethane foam.

The core dispute focused on whether such amended claims could be introduced at the appellate stage. The respondent-Controller opposed the application, arguing that amendments at this stage were impermissible. However, the Court observed that neither the Patents Act nor its procedural framework expressly bars such amendments during appeals. Referring to precedents including Societe Des Produits Nestle SA v. Controller of Patents, the Court held that amendments narrowing claim scope are permissible provided they fall within the original disclosure and satisfy Section 59 conditions.

After examining both the original and amended claims, the Court concluded that Albemarle had merely narrowed its claims without introducing new subject matter, thereby remaining consistent with the original specification. The Court also emphasized that amendments aimed at overcoming objections and facilitating grant of patent are permissible, especially when they do not expand the scope beyond what was initially disclosed.

Accordingly, the Court allowed I.A. 35045/2024, directed the auxiliary claim set to be taken on record, and revived the original patent application for fresh examination limited to the amended claims. The matter was remanded to the Patent Office with instructions to conclude the re-examination within six months. The appeal was disposed of in these terms, with no interference in the merits of the original refusal order since the challenge to it had not been pressed.

Bhalla Sports Pvt. Ltd. Vs. Ashutosh Bhalla M/s Vinex Enterprises Pvt. Ltd

Case Title: Bhalla Sports Pvt. Ltd. Vs. Ashutosh Bhalla Vinex Enterprises Pvt. Ltd. & Anr.:Date of Order: July 3, 2025:Case Number: C.O. (COMM.IPD-TM) 327/2022:Neutral Citation: 2025:DHC:5309

Court: High Court of Delhi at New Delhi:Judge: Hon’ble Mr. Justice Saurabh Banerjee

In a rectification petition filed by Bhalla Sports Pvt. Ltd., the Delhi High Court ordered the cancellation of a registered trademark held by Ashutosh Bhalla of Vinex Enterprises Pvt. Ltd. The dispute revolved around the mark “SOFT TOUCH” used for sports goods under Class 28 of the Trade Marks Act, 1999. The petitioner, a manufacturer and seller of sports equipment since 1988, claimed prior use of the “SOFT TOUCH” trademark since August 7, 2001, and registered it on April 17, 2009. Meanwhile, the respondent secured a conflicting trademark registration on March 17, 2009, alleging usage since January 9, 2003.

The matter originally filed before the Intellectual Property Appellate Board was transferred to the High Court following the IPAB’s dissolution. The respondents failed to enter appearance or respond despite due service, leading to an ex parte hearing. The petitioner presented ample evidence, including invoices, brochures, and price lists dating back to 2001, establishing continuous and bona fide use of the mark well before the respondent’s claimed date.

The core dispute involved the respondent’s impugned trademark, which the Court found to be visually, phonetically, and deceptively similar to the petitioner’s mark. The Court observed that as a “prior user,” the petitioner had superior rights over a subsequent registrant under settled principles of trademark law, as affirmed in Neon Laboratories Ltd. v. Medical Technologies Ltd. (2016) 2 SCC 672. Additionally, the respondent’s conduct was deemed to reflect bad faith and an unfair commercial practice.

Discussing the legal position, the Court reiterated that the rights of a prior user override those of a registered proprietor if the latter's claim is subsequent and deceptive. Since the impugned registration contravened Sections 9, 11, 47, and 57 of the Trade Marks Act, the Court found it liable to be removed.

Accordingly, the Court allowed the petition and directed the Registrar of Trade Marks to cancel trademark application no. 1796255 registered in favour of the respondent under Class 28. The judgment reinforces the doctrine of “first in the market” and upholds the sanctity of prior user rights in Indian trademark law.

Pawan Kumar Mittal Vs Vinay Gupta

Case Title: Pawan Kumar Mittal Proprietor, Salasar Dev Basmati House V. Vijay Gupta & Ors.:Date of Order: 07 July 2025:Case Number: FAO (COMM) 170/2025:Neutral Citation:2025:DHC:5313:DB: Court: High Court of Delhi at New Delhi:Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

This appeal arose from an order dated 7 May 2025 passed by the learned District Judge (Commercial Court), Patiala House, in a suit for trademark infringement filed by the appellant, Pawan Kumar Mittal, proprietor of Salasar Dev Basmati House, against Vijay Gupta and others. The suit sought an ex parte ad interim injunction, appointment of a Local Commissioner, and waiver of advance service, citing urgent relief against alleged passing off and trademark misuse.

The procedural background shows that the trial court, without providing any reasons, declined to grant any ex parte relief or act on the plaintiff’s application for appointment of a Local Commissioner. It merely issued summons for settlement of issues and directed the plaintiff to complete service on the defendants via multiple permissible modes, including electronic channels.

The core dispute centered on the plaintiff’s allegations of trademark infringement and passing off, claiming urgent and immediate protection was warranted under established jurisprudence, especially as laid down in Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65. The appellant had emphasized that in such cases, courts are required to act promptly on the first day by issuing notice and appointing a commissioner without advance intimation to prevent destruction of infringing materials.

The Division Bench of the High Court found the trial court’s approach legally unsustainable, observing that even if a court is disinclined to grant interim relief, it must provide reasons for its decision. The impugned order lacked any reasoning and failed to address the appellant’s applications meaningfully.

Accordingly, the High Court quashed the trial court’s order and remitted the applications for ex parte injunction, waiver of advance service, and appointment of Local Commissioner back to the Commercial Court for de novo consideration. The Commercial Court was directed to hear the matter afresh on 10 July 2025 at 11:00 a.m. The appellate court expressly refrained from commenting on the merits of the applications, leaving the decision entirely to the trial court’s fresh assessment. The appeal was disposed of in these terms.

Verizon Trademark Services Vs Verizon Venture Advisors

Case Title: Verizon Trademark Services LLC & Ors. Vs. Verizon Venture Advisors LLP & Anr.:Date of Order: 07 July 2025Case Number: CS(COMM) 659/2025:Court: High Court of Delhi at New Delhi:Judge: Hon’ble Mr. Justice Amit Bansal

The plaintiffs, members of the globally renowned Verizon Group, approached the Delhi High Court seeking permanent injunction and ancillary reliefs against the defendants for trademark infringement and passing off. The plaintiffs, who adopted and registered the trademark ‘VERIZON’ in the year 2000, alleged that Defendant No.1, Verizone Venture Advisors LLP, had registered a deceptively similar name incorporating their well-known mark without any legitimate business activity since its incorporation in 2014.

The procedural background involved multiple interim applications. The Court granted exemptions under Section 12A of the Commercial Courts Act, 2015 (regarding pre-institution mediation) and Section 80 of the CPC (notice to government body), and allowed submission of documents in electronic form and in non-originals, citing urgency and compliance with Commercial Courts framework. Summons were issued to the defendants, and directions were given regarding pleadings, evidence, and inspection timelines. The matter was scheduled for further proceedings on 9th September 2025 before the Joint Registrar and on 12th November 2025 before the Court.

The core dispute centered on the unauthorized use of the mark "Verizone" by the defendant LLP, which was deceptively similar to the plaintiffs’ trademark "VERIZON", declared well-known by the Court in an earlier 2023 judgment. Despite being inactive for years, the defendant continued to retain the corporate name, leading to confusion and dilution of the plaintiffs' brand. Investigations revealed the entity’s non-compliance with statutory requirements and acknowledgment by one of the partners that they were not actively using the name for business. Repeated cease and desist communications from the plaintiffs received no response.

Upon discussion, the Court observed a prima facie case of trademark infringement and passing off. Given the strength of the plaintiffs’ rights, continued use of the mark by the defendant was held likely to cause irreparable harm and confusion. The balance of convenience favored the plaintiffs.

Accordingly, the Court restrained the defendant and its associates from using the marks “Verizone”, “Verizone Ventures”, or any other name similar to “VERIZON”. The defendants were also directed to take down all infringing materials from both online and offline platforms. Compliance with Order XXXIX Rule 3 CPC was ordered within three days.

Srinivas Jegannathan Vs. The Controller of Patents

Case Title: Srinivas Jegannathan Vs. The Controller of Patents

Date of Order: 1st July 2025

Case Number: (T)CMA(PT)/38/2023 (OA/61/2014/PT/CH)

Name of Court: High Court of Judicature at Madras

Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

This case arose from the rejection of Patent Application No.122/CHE/2006 filed by the appellant, Srinivas Jegannathan, who sought protection for an invention titled “Formulation of Ceftazidime, Tazobactum and Linezolid for Enhancement of Antibacterial Activity.” After issuance of the First Examination Report (FER), the appellant amended his claims and participated in a hearing before the Controller of Patents. The Controller ultimately rejected the application on 26 March 2014, leading to this appeal under Section 117-A of the Patents Act, 1970.

The dispute centered on whether the claimed combination of a cephalosporin (Ceftazidime), a beta-lactamase inhibitor (Tazobactum), and an oxazolidinone (Linezolid) was obvious in light of prior arts D1 to D3, and whether amendments made by the appellant were beyond the permissible scope of Section 59 of the Patents Act. The appellant argued that none of the cited prior arts disclosed or suggested the claimed three-drug combination and contended that the amendments arose from the hearing process, offering to revert to the original claims if necessary. The respondent maintained that the amended claims were rightly assessed and rejected based on detailed analysis of prior arts, asserting that the combination lacked inventive merit.

The Court examined the impugned order and noted it lacked sufficient reasoning to demonstrate why a person skilled in the art would find the claimed combination obvious based on the cited prior arts, none of which individually disclosed all three ingredients together. It further observed that since the appellant proposed to revert to the original claims, objections under Section 59 and reliance on additional prior arts D4 to D6 lost relevance.

Ultimately, the High Court set aside the rejection order dated 26 March 2014 and remanded the matter for fresh consideration confined to the original claims. It directed reconsideration by a different officer, required a speaking order to be passed within three months, and clarified that the respondent could cite additional prior art after giving notice. The Court made no finding on the merits of the patent application and disposed of the appeal without costs.

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

Global IEEE Institute for Engineers Vs. IEEE Mumbai Section Welfare Association

Interplay of Trademark Licensing and Public Trust Law

Introduction: This case arises from a contractual and trademark dispute between a corporate entity, Global IEEE Institute for Engineers, and a public charitable trust-cum-society, IEEE Mumbai Section Welfare Association. The dispute centered on the termination of two service agreements and the subsequent unauthorized use of the IEEE trademark by the defendant trust. The case presented a complex interplay between intellectual property rights, private contractual obligations, and statutory requirements under the Maharashtra Public Trusts Act, 1950 (MPT Act). The High Court of Karnataka’s decision in this case provides significant legal clarity on the applicability of MPT Act provisions to civil suits arising from private commercial arrangements.

Factual Background:The appellant, Global IEEE Institute for Engineers, is a private limited company registered in India and a second-tier subsidiary of IEEE Asia Pacific Limited and IEEE Worldwide Limited, both of which are not-for-profit entities wholly owned by the Institute of Electrical and Electronics Engineers Inc. (IEEE Inc.), a U.S.-based professional body incorporated in 1896. IEEE is known globally for its work in advancing technology and science through publications, standards, and conferences.

The respondent, IEEE Mumbai Section Welfare Association, was initially a geographical unit of IEEE Inc., formed in 1976 to promote IEEE activities in western and central India. In 2012, it was registered as a society under the Societies Registration Act, 1860, and later in 2013 as a public trust under the MPT Act.

In 2012 and 2013, the parties entered into two Service Assistance Agreements, under which the plaintiff (appellant) was to provide administrative and governance support services to the defendant (respondent), including coordination with IEEE Inc. and facilitating compliance with IEEE’s brand standards. The defendant was authorized to use the IEEE name, mark, and branding under these agreements. Following allegations of non-cooperation and failure to comply with financial reporting obligations by the defendant, the plaintiff issued a termination notice on 2 May 2024. Despite termination, the defendant allegedly continued to use the IEEE trademark and branding, prompting the plaintiff to initiate a commercial suit seeking declaratory relief, permanent injunction, and damages.

Procedural Background:Upon institution of the commercial suit by the plaintiff before the LXXXIV Additional City Civil and Sessions Judge, Bengaluru (Commercial Court), the defendant filed an application under Order VII Rule 11(a) and (d) of the Code of Civil Procedure, 1908, contending that the suit lacked cause of action and was barred by law, specifically under Sections 50 and 51 of the MPT Act.

The Commercial Court partly allowed the application. It held that the suit was barred under Order VII Rule 11(d) for want of prior consent from the Charity Commissioner as required under the MPT Act, but declined to reject it under Rule 11(a), observing that the existence of cause of action was a mixed question of law and fact. Aggrieved by the rejection under Rule 11(d), the plaintiff preferred Commercial Appeal No. 181/2025. The defendant cross-appealed under Commercial Appeal CR No. 3/2025 against the rejection of the plea under Rule 11(a).

Core Dispute: The primary legal issues in this case were whether the plaintiff, being a licensee of the IEEE trademark and not the registered proprietor, had the locus to seek injunctive and declaratory relief, and whether the suit was barred for want of prior consent of the Charity Commissioner under Sections 50 and 51 of the Maharashtra Public Trusts Act, 1950. The core of the dispute revolved around whether a private contractual claim involving a public trust mandates compliance with procedural bars under the MPT Act, and whether the continued use of a trademark post-termination gives rise to a private actionable claim by a licensee.

Discussion on Judgments: Multiple judgments were cited by both parties to support their claims regarding the bar under the MPT Act and locus standi in trademark law.

The appellant relied heavily on Sopan Sukhdeo Sable v. Assistant Charity Commissioner, (2004) 3 SCC 137, to emphasize that a suit which does not relate to trust administration, but instead concerns private disputes like tenancy or contractual breach, falls outside the scope of Sections 50 and 51 of the MPT Act.

The appellant also cited Vinayaka Dev Idagunji v. Shivaram, (2005) 6 SCC 641, where the Supreme Court held that a hereditary archak’s suit regarding private rights was outside the ambit of Section 50, which applies only to suits in representative capacity involving public interest.

Further reliance was placed on Trust of Shri Laxmi Narayan Dev Temple v. Ajendraprasadji Narendraprasadji Pande, 2013 SCC OnLine Guj 8716, and Shri Nijanand Jogani Abhiyan Trust v. Parshottam Narsinhbhai Patel, 2024 SCC OnLine Guj 3043, to demonstrate that not all suits involving public trusts require Charity Commissioner’s consent, especially those grounded in private contractual claims.

To address the trademark issue, the appellant referred to Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545, which held that agreements relating to brand usage form the basis of private enforcement and are distinct from statutory rights.

The respondent, in contrast, invoked Church of North India v. Lavajibhai Ratanjibhai, (2005) 10 SCC 760, to argue that if a trust’s name, identity, or structure is challenged, the matter falls squarely within the trust administration, attracting the bar under Section 50 of the MPT Act.

To contest the plaintiff’s locus standi under trademark law, the respondent cited P.K. Sen v. Exxon Mobile Corporation, 2017 SCC OnLine Del 6393, and Ultratech Cement Ltd. v. Dalmia Cement (Bharat) Ltd., 2015 (2) ABR 496, arguing that only the registered proprietor or registered user under the Trade Marks Act, 1999, can sue for infringement.

Reasoning and Analysis of the Judge:The Court emphasized that only the plaint and accompanying documents are to be considered for Order VII Rule 11 applications, and not the defense or counter-documents. It held that the contractual dispute in question was between a corporate body and a trust regarding obligations under a terminated agreement, and did not relate to the internal affairs or public administration of the trust.

In interpreting Section 2(10) of the MPT Act, the Court noted that the plaintiff was not a trustee, member, or beneficiary of the defendant trust, and thus not a “person having interest.” Moreover, the agreements predated the trust registration and governed only certain aspects of administrative support and branding. The scope of services depended on the defendant’s request, further underscoring the limited nature of the contractual relationship.

The Court rejected the argument that the plaintiff’s action was effectively one for infringement. It observed that the reliefs sought arose from breach of contractual terms concerning trademark use, and thus were private in nature, even if touching upon IP issues. It emphasized that a licensee enforcing a contractual restraint clause is not seeking to enforce statutory rights under the Trade Marks Act, and hence is not barred under Section 53 of that Act.

The trial court’s approach was criticized for drawing an artificial distinction between “individual” and “institutional” private rights and for failing to analyze whether the reliefs sought related to trust administration.

Final Decision:The High Court set aside the Commercial Court’s rejection of the plaint under Order VII Rule 11(d) of the CPC and restored the suit for trial on merits. The Court held that the plaintiff was not required to obtain prior consent under Sections 50 and 51 of the MPT Act, as the suit pertained to private contractual rights. The defendant’s cross-appeal regarding absence of cause of action was also dismissed.

Law Settled in This Case:  This case reaffirms that private contractual disputes involving a public trust do not attract the procedural bar under Sections 50 and 51 of the Maharashtra Public Trusts Act unless the suit relates to trust administration or involves a “person having interest” as defined under Section 2(10). Further, it clarifies that a licensee under a trademark agreement may sue for relief against unauthorized use post-termination, provided the action is rooted in contract and not based solely on statutory infringement rights. The decision underscores that Order VII Rule 11 applications must be confined to the plaint and its annexures without reference to the defendant's stand.

Case Title: Global IEEE Institute for Engineers v. IEEE Mumbai Section Welfare Association:Date of Order: 2nd July, 2025:Case Number: COMAP No. 181/2025:Name of Court: High Court of Karnataka at Bengaluru:Name of Judges: Hon’ble Mr. V. Kameswar Rao (Acting Chief Justice) and Hon’ble Mr. Justice C.M. Joshi

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

Conqueror Innovations Pvt. Ltd. Vs Xiaomi Technology India Pvt. Ltd

Testing the Boundaries of Claim Mapping and Patent Enforcement in India

Introduction:This case concerns a patent infringement dispute involving a technological startup and a global electronics giant. Conqueror Innovations Pvt. Ltd., a recognized MSME and startup in India, filed a suit against Xiaomi Technology India Pvt. Ltd. for allegedly infringing Patent No. 244963 titled “A Communication Device Finder System.” The core of the dispute centered on Xiaomi’s pre-installed “Find Device” feature in its smartphones and whether it infringed the claimed patented invention. The case provides judicial clarity on standards of patent infringement, particularly concerning essential features, claim mapping, and working of patents in India.

Factual Background: The plaintiff No. 2, an Indian citizen and inventor, began developing the invention in 2004, addressing shortcomings in anti-theft technologies that failed once a thief removed the SIM or disabled the device. The patent application was filed on 17 October 2006 and granted on 28 December 2010 without opposition. The invention aimed to facilitate the tracking and recovery of lost or stolen mobile devices through embedded non-erasable security elements.

The suit patent, later assigned to plaintiff No. 1, a company recognized under the Indian startup and MSME frameworks, claims features including a flash memory capable of auto-reinstalling data, and a silent auto-answer mode. The plaintiffs claim that between 2015 and 2019, subscriptions to the patented system were sold both online and offline. In January 2023, the plaintiffs discovered that Xiaomi’s devices were using a “Find Device” feature that they believed infringed their patent.

Procedural Background: The plaintiffs filed the suit in May 2023 seeking permanent injunction, damages, and interim relief. Initial summons were issued on 29 May 2023. Mediation was attempted but failed. Subsequently, an application under Order XXXIX Rules 1 and 2 CPC was filed seeking interim injunction and directions for royalty deposit. Xiaomi filed its written statement and a counterclaim for revocation of the suit patent on 14 August 2023, asserting lack of novelty and inventive step.

Legal Issue:The primary legal issues were whether Xiaomi’s “Find Device” feature infringed the suit patent, whether all essential features of the independent claim were present in Xiaomi’s devices, and whether the plaintiffs were entitled to interim injunction despite alleged non-working of the patent and delay in approaching the court.

Discussion on Judgments: In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, the Supreme Court underscored that in patent infringement suits, the complete specification must be closely analyzed to construe the claims.

The plaintiffs cited Sotefin SA v. Indraprastha Cancer Society & Research Center, 2022 SCC OnLine Del 516, to argue for a holistic interpretation of claims based on the invention’s pith and marrow, not a literal claim-by-claim comparison. However, the court held this case distinguishable since essential features of the claim were absent in Xiaomi’s devices.

In Crystal Crop Protection Ltd. v. Safex Chemicals India Ltd., 2025 SCC OnLine Del 2981, the Delhi High Court reaffirmed that essential features of a patent are those that address problems identified in prior art. This principle was relied upon to assess whether Xiaomi’s devices had the essential features of the suit patent.

The court also referred to Guala Closures v. AGI Greenpac Ltd., 2024 SCC OnLine Del 3510, to identify that the portion of a claim introduced with “characterized in that” typically includes the novelty.

Regarding dependent claims, the court applied Teledyne McCormick Selph v. United States, MANU/USFD/0071/1977, which held that if independent claims are not infringed, dependent claims cannot be infringed either. This was reinforced by Wahpeton Canvas Co. v. Frontier, Inc., MANU/USFD/0128/1989, and other international judgments.

To assess the effect of non-working of patents on interim relief, the court relied on Franz Xaver Huemer v. New Yash Engineers, 1996 SCC OnLine Del 243, where a Division Bench held that patentees who have not worked their invention in India are not entitled to equitable interim relief.

Reasoning and Analysis of the Judge: The Court methodically analyzed the patent claims and Xiaomi’s “Find Device” feature. The Court began by reviewing the suit patent’s specification and identified that its essential features included a flash memory with data reinstallation, a ROM with non-erasable message center number, and a silent auto-answer mode triggered remotely.

Xiaomi’s “Find Device” could remotely lock, erase data, or play sound, but lacked the ability to silently auto-answer incoming calls or reinstall deleted data. It was also vulnerable to factory resets, whereas the patented invention specifically guarded against such resets through reinstallation from non-erasable memory.

The court found the plaintiffs’ claim mapping deficient as it failed to demonstrate that Xiaomi’s feature included these essential components. Since independent claim 1 was not infringed, dependent claims could not be relied upon either.

The judge also noted that Forms 27 filed by the plaintiffs with the Patent Office indicated minimal use of the patent in India, and only for a limited time in FY 2019–20. The court held that non-working of the patent and absence of evidence of substantial commercial exploitation weighed against the grant of an injunction.

Additionally, the court found the plaintiffs’ explanation of discovering the infringement in 2023 unconvincing, noting that Xiaomi had been selling its phones with the “Find Device” feature since 2014. This unexplained delay further weakened their claim for equitable relief.

Final Decision:  The court held that the plaintiffs failed to establish a prima facie case of patent infringement. Since the essential features of the patent were not found in Xiaomi’s devices, interim injunction could not be granted. The balance of convenience and irreparable injury also favored the defendant. The court dismissed the applications for interim injunction but directed Xiaomi to maintain accounts of the impugned devices and file half-yearly statements. Observations made were expressly limited to the interim stage and not to prejudice final adjudication.

Law Settled in This Case: This case reinforces the principle that in patent infringement analysis, the essential features of the independent claim must be shown to be present in the impugned product. A patentee cannot succeed merely by showing partial overlap with dependent claims. Non-working of the patent in India and inordinate delay in asserting patent rights can justify denial of equitable interim relief. Claim mapping must be comprehensive and must demonstrate the presence of all inventive elements, especially those that overcome limitations in prior art. The court also reiterated that a “characterized in that” clause in a claim often defines the novelty and must be carefully considered.

Case Title: Conqueror Innovations Pvt. Ltd. Vs Xiaomi Technology India Pvt. Ltd.:Date of Order: 04 July 2025:Case Number: CS (COMM) 361/2023:Neutral Citation: 2025:DHC:5233: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