Vishal Gupta and Others Vs. Rahul Bansal

Introduction: The present case arises out of a dispute between Vishal Gupta and others on one side, and Rahul Bansal on the other, concerning alleged passing off and deceptive similarity in the use of trademarks related to edible oil products. The case, which reached the Delhi High Court by way of a First Appeal under Order XLIII CPC, centers around an interim injunction granted by the Commercial Court. The High Court was called upon to assess whether the injunction was legally sustainable, particularly when the respondent-plaintiff did not hold a registered trademark.

Detailed Factual Background: Rahul Bansal, the plaintiff before the learned Commercial Court, sought to restrain Vishal Gupta and others, who were the defendants in the original suit, from using the trademarks "OM AMAR SHAKTI" and "SARKAR OM AMAR SHAKTI" for selling mustard oil. The plaintiff claimed that the defendants' marks were deceptively similar to his mark "MATA AMAR SHAKTI", and that such use by the defendants would amount to passing off.

However, the plaintiff's mark "MATA AMAR SHAKTI" was not registered under the Trade Marks Act, 1999, although he possessed copyright registration for the label associated with the mark. The plaintiff contended that he had prior user rights over the mark and that the defendants were attempting to misappropriate the goodwill he had built around his label. Based on this assertion, he sought an injunction to prevent the defendants from using their respective marks.

Detailed Procedural Background: The Commercial Court at Tis Hazari, New Delhi, adjudicated on three applications together: the plaintiff's application under Order XXXIX Rules 1 and 2 CPC for interim injunction, and two applications filed by the defendants—one under Order VII Rule 11 CPC seeking rejection of the plaint, and another under Order VII Rule 10 CPC seeking return of the plaint for want of jurisdiction.

The Commercial Court vide order dated 5 March 2025 granted the injunction sought by the plaintiff and restrained the defendants from using the marks "OM AMAR SHAKTI" and "SARKAR OM AMAR SHAKTI". Aggrieved by this injunction order, the defendants preferred FAO (COMM) 103/2025 before the Delhi High Court, limiting their challenge only to the part of the order that pertained to the injunction under Order XXXIX Rules 1 and 2 CPC.

Issues Involved in the Case: The principal issue before the High Court was whether the Commercial Court erred in granting an injunction for passing off in favour of the plaintiff who did not possess a registered trademark, and whether the ingredients for sustaining a passing off action had been properly considered? A secondary issue was whether mere priority of user could justify a finding of passing off without proof of goodwill, misrepresentation, and damage?

Detailed Submission of Parties: The appellants submitted that the injunction granted by the Commercial Court was legally unsustainable because the respondent did not hold a registered trademark and had failed to establish the essential elements of a passing off action. It was contended that the injunction had been granted solely on the basis of alleged prior use, without any supporting evidence of acquired goodwill, misrepresentation by the defendants, or damage to the respondent.

The respondent candidly admitted that the trademark was not registered. However, he argued that the respondent was still entitled to protection under the common law tort of passing off. He placed reliance on the principle that a passing off action could be maintained by a prior user regardless of registration and invoked multiple Supreme Court judgments supporting the same.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: The respondent placed reliance on the judgment in Brihan Karan Sugar Syndicate (P) Ltd. v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577. The Supreme Court in this case reaffirmed that in a passing off action, the plaintiff must establish three elements: (i) goodwill, (ii) misrepresentation leading to deception, and (iii) actual or likely damage. The Court emphasized that priority of use alone was insufficient unless goodwill and confusion were also proven.

The principles were further elaborated by citing Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, which clarified that in a passing off claim, the plaintiff must demonstrate that the defendant's use of the mark is likely to deceive the public into believing that the defendant's goods are those of the plaintiff.

The Court also referred to Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, and S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, which collectively affirmed that registration of a trademark is irrelevant for a passing off claim based on prior user. Furthermore, the House of Lords’ decision in Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 WLR 491 (HL), was approved in these cases, where it was held that reputation, misrepresentation, and damage form the triad of requirements in a passing off suit.

Despite these precedents, the High Court found that the Commercial Court had failed to assess these essential elements and had granted the injunction solely based on prior user without examining whether the respondent had established goodwill, misrepresentation, or damage.

Detailed Reasoning and Analysis of Judge:  The Division Bench held that the impugned order of the Commercial Court was legally flawed. It was observed that the order did not discuss or evaluate the essential ingredients of a passing off action—particularly the presence of goodwill or reputation associated with the mark "MATA AMAR SHAKTI".

The Court pointed out that priority of use, by itself, does not justify an injunction. In order to grant interim relief in a passing off action, courts must be satisfied not only of the plaintiff’s prior use but also of misrepresentation by the defendant and likelihood of damage. None of these were adequately discussed or proven before the Commercial Court.

The Court further noted that even the respondent’s counsel accepted the fundamental omission and expressed willingness to have the matter remanded. Accordingly, the Court exercised its appellate jurisdiction to correct the procedural and legal error committed by the Commercial Court.

Final Decision: The Delhi High Court allowed the appeal to the extent of setting aside the portion of the Commercial Court's order that granted injunction under Order XXXIX Rules 1 and 2 CPC. The matter was remanded to the learned Commercial Court for a fresh decision after examining the case on merits, particularly the ingredients of a passing off claim. 

Law Settled in This Case: This judgment reinforces the well-established principle that for a successful passing off action, the plaintiff must establish three crucial elements: goodwill associated with the mark, misrepresentation by the defendant, and resultant damage or likelihood of it. Mere prior use of a mark is not enough to secure an injunction unless these ingredients are present. It also reiterates that in the absence of a registered trademark, a claim for infringement is not maintainable under Section 28 and 29 of the Trade Marks Act, 1999. The decision underscores the responsibility of courts to conduct a thorough analysis of these components before granting interim relief in trademark disputes.

Case Title: Vishal Gupta and Others Vs. Rahul Bansal: Date of Order: 08 May 2025: Case No.: FAO (COMM) 103/2025: Neutral Citation: 2025:DHC: 3685-DB: Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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

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

Wander Ltd. and Anr. Vs. Antox India Pvt. Ltd.

Limits of Appellate Interference in Trademark Injunction Orders

Introduction

The Supreme Court’s decision in Wander Ltd. and Anr. v. Antox India Pvt. Ltd., decided on 26 April 1990, has come to be recognized as a landmark ruling on the principles governing the grant of interlocutory injunctions in intellectual property disputes, particularly in cases involving trademarks and passing off. The judgment reaffirms the doctrine of judicial restraint in appellate interference with discretionary orders and sets out the standards to be applied when balancing the interests of rival claimants at the interim stage of litigation. The case arose from a dispute between the registered trademark owner and its erstwhile manufacturing licensee, both of whom claimed the right to use the trademark “Cal-De-Ce” for medicinal products.

Factual Background

Wander Ltd., the first appellant, was the registered proprietor of the trademark “Cal-De-Ce,” used in connection with vitaminsed calcium gluconate tablets. In 1986, it entered into a manufacturing agreement with Antox India Pvt. Ltd., the respondent, under which Antox would manufacture the tablets under the said trademark and supply the entire output to Wander. To obtain the necessary license under the Drugs and Cosmetics Act, 1940, Wander submitted an undertaking to the Drug Controller stating it would not manufacture “Cal-De-Ce” on its own or through any other licensee. On that basis, Antox received the manufacturing license.

Relations between the parties deteriorated, leading Wander to terminate the agreement in November 1988. It instructed Antox to cease using the trademark and entered into a fresh manufacturing arrangement with another company. Antox, in response, filed a civil suit seeking an injunction to restrain Wander from using the trademark “Cal-De-Ce,” claiming that the mark had been abandoned by Wander and that it (Antox) had acquired rights through continuous use.

Procedural Background

In the suit (Civil Suit No. 1220 of 1988) filed before the Madras High Court, Antox initially secured an interim injunction against Wander. However, on 2 March 1989, the learned Single Judge vacated the injunction, holding that Wander was the prior user and registered proprietor of the mark. Antox appealed, and on 19 January 1990, the Division Bench reversed the Single Judge’s order and granted an injunction in favour of Antox. Aggrieved, Wander approached the Supreme Court by way of Special Leave Petitions.

Core Dispute

The central issue was whether Antox, the erstwhile licensee, could assert independent rights in the trademark “Cal-De-Ce” based on its post-agreement use of the mark, and whether it was entitled to a temporary injunction against Wander, the registered owner and prior user. Ancillary to this was the question of whether the appellate court was justified in reversing the trial court’s discretionary refusal to grant interim relief.

Discussion on Judgments

The Court reiterated the principles enunciated in Printers (Mysore) Pvt. Ltd. v. Pothan Joseph, AIR 1960 SC 1156, which held that appellate courts should be slow to interfere with discretionary orders unless the discretion has been exercised arbitrarily, capriciously, or perversely. The Court also referred to the House of Lords decision in Charles Osenton & Co. v. Johnston, 1942 AC 130, to stress that appeals from discretionary orders should focus on whether discretion was exercised judicially, not on whether the appellate court would have reached a different conclusion.

In discussing the contours of a passing off action, the Court referred to Lord Diplock’s exposition in Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd., [1979] AC 731, which described passing off as a form of actionable unfair trading involving misrepresentation likely to cause damage to the goodwill of a business. The Court underscored that the essence of a passing off action is not statutory ownership but independent and prior use of the mark, coupled with misrepresentation by the defendant.

Reasoning and Analysis of the Judge

The Supreme Court observed that the Division Bench of the High Court had erred both in law and in approach. Firstly, it disregarded the limited scope of an appellate court’s jurisdiction when dealing with an appeal from an interlocutory order. The Single Judge had applied settled principles, found that Wander was the prior user from 1983 to 1986, and that Antox’s use commenced only thereafter under the umbrella of the terminated agreement.

Secondly, the Supreme Court noted that the Division Bench had failed to appreciate the distinction between a statutory infringement action and a passing off action. In a passing off claim, the plaintiff must establish independent and prior user. The fact that Antox's user was subsequent and under a license meant it had no independent right to the mark. Further, the manufacturing license granted to Antox was based on Wander’s trademark rights, which negated any claim of adverse user by Antox.

Thirdly, the Supreme Court held that even assuming the agreement between the parties was void (as contended by Antox), it did not strengthen Antox’s case, as its user was still derivative of Wander’s ownership. Therefore, no prima facie case had been made out to warrant the grant of injunction against Wander.

Final Decision

The Supreme Court allowed the appeals and set aside the Division Bench’s order dated 19 January 1990, restoring the order of the learned Single Judge dated 2 March 1989, which had denied the interim injunction. The Court clarified that since the case was at an interlocutory stage, its observations would not affect the merits of the suit at trial. The High Court was requested to expedite the disposal of the pending suit within six months.

Law Settled in This Case

This decision settles the principle that appellate courts should not interfere with discretionary orders unless the lower court’s decision is shown to be arbitrary, capricious, or legally flawed. It also clarifies that in passing off actions, a plaintiff must independently establish prior use and goodwill in the mark, and cannot rely on use under a terminated licensing arrangement. Mere possession of a drug manufacturing license, derived from the trademark owner’s consent, does not translate into proprietary rights in the trademark. The ruling underscores that interim injunctions must be grounded in strong prima facie entitlement, real threat of irreparable injury, and a favourable balance of convenience.

Case Title: Wander Ltd. and Anr. Vs. Antox India Pvt. Ltd.

Date of Order: 26 April 1990

Case Number: Civil Appeals arising out of Special Leave Petitions

Neutral Citation: 1990 Supp (1) SCC 727

Name of Court: Supreme Court of India

Name of Judges: Hon’ble Mr. Justice M.N. Venkatachaliah, Hon’ble Mr. Justice N.D. Ojha, and Hon’ble Mr. Justice J.S. Verma

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

Nuvoco Vistas Corporation Ltd. Vs. JK Lakshmi Cement Ltd. & Anr

Phonetic and Visual Similarity Sufficient for Infringement

Introduction: The case of Nuvoco Vistas Corporation Ltd. v. JK Lakshmi Cement Ltd. & Anr. is a significant trademark infringement dispute adjudicated by the High Court of Delhi. The plaintiff, a leading cement manufacturer, alleged infringement of its registered trademark "CONCRETO" by the defendants who adopted the mark "CONCRETA" for similar products. The plaintiff sought permanent injunction, damages, and ancillary reliefs under the Trade Marks Act, 1999. The central issue was whether the defendants' use of a deceptively similar mark for cement constituted trademark infringement and passing off, and whether the plaintiff’s prior user status and proprietary rights warranted interlocutory protection.

Factual Background: Nuvoco Vistas Corporation Ltd. is a prominent manufacturer of cement and building materials, marketing its products under various trademarks, including “CONCRETO.” The trademark “CONCRETO” has been registered since 2005 and has been in use since at least 2002. The plaintiff asserted that it has invested substantially in promoting this brand, resulting in its recognition as a well-known mark. In 2016, due to an order of the Competition Commission of India (CCI) requiring divestment of certain brands previously held by LafargeHolcim, the plaintiff—then known as Lafarge India—was permitted to retain ownership and use of the trademark CONCRETO.

The dispute arose when JK Lakshmi Cement Ltd. introduced a product under the mark “CONCRETA,” which the plaintiff claimed was deceptively and confusingly similar to “CONCRETO.” Despite visual differences in get-up and labeling, the plaintiff contended that the phonetic and visual similarities were sufficient to constitute infringement under Section 29 of the Trade Marks Act, 1999.

Procedural Background:The plaintiff filed a suit for permanent injunction and damages before the Delhi High Court in 2017, registered as CS(COMM) 256/2017. An ex parte ad-interim injunction was granted on 11 April 2017. Subsequently, the defendants filed an application under Order 39 Rule 4 CPC seeking vacation of the injunction, alleging suppression of facts and misrepresentation regarding trademark ownership, particularly concerning marks associated with "LAFARGE." The plaintiff responded by filing an affidavit clarifying the transitional arrangements post-CCI divestment order and affirming its ownership of the "CONCRETO" marks. The matter was heard in detail, culminating in the judgment delivered on 15 April 2019.

Core Dispute:The primary issue was whether the defendants’ use of the mark “CONCRETA” infringed the plaintiff’s registered trademark “CONCRETO.” This included examining the phonetic and visual similarity of the marks, the scope of statutory rights under Section 28 of the Trade Marks Act, and whether the plaintiff was the rightful proprietor entitled to enforce those rights. Another dimension of the dispute related to the defendants’ allegation of suppression regarding ownership, given the historical association of the mark with “LAFARGE” and the divestment mandated by the CCI.

Discussion on Judgments:The plaintiff relied on Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65, where the Supreme Court held that even innocent infringement cannot be condoned and that courts must focus on similarities rather than differences in trademark cases.

The plaintiff also referred to Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, AIR 2006 SC 3304, emphasizing that the adoption of deceptively similar marks amounts to infringement regardless of the use of different corporate identifiers.

In Inter IKEA Systems BV v. Annanya Gautam & Anr., CS(COMM) 1089/2018 (Delhi HC, decided on 28 September 2018), the Court held that visual and phonetic similarities are independently sufficient to establish infringement.

The classic precedent of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, was invoked to argue that in infringement cases, what matters is whether the essential features of the mark have been copied, even if other distinguishing features are present.

The defendants relied on J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, to argue that generic and descriptive marks like “Concrete” cannot be monopolized.

To counter the ex parte injunction, the defendants cited Morgan Stanley Mutual Fund v. Kartick Das, (1994) 4 SCC 225, asserting that the plaintiff had a duty of utmost good faith and had failed to disclose the full impact of the CCI order.

To rebut the claim of estoppel due to third-party use, the plaintiff cited Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49 (Del) (DB), and Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., 1989 (7) PTC 14, which held that selective enforcement does not amount to waiver or acquiescence.

Reasoning and Analysis of the Judge:Justice Manmohan held that there was no falsehood or suppression by the plaintiff. The plaintiff was the registered proprietor of the relevant trademarks at the time of filing, and transitional arrangements permitted use of certain marks even during the CCI-mandated phase-out period. It was further noted that the mark “CONCRETO” was not part of the excluded brands in the CCI order.

The Court rejected the defendants’ argument that the plaintiff lacked ownership rights, emphasizing that the plaintiff had continuously used the CONCRETO mark prominently and independently of the LAFARGE name.

On the question of similarity, the Court found that “CONCRETA” and “CONCRETO” were visually and phonetically similar. The substitution of a single letter—‘A’ for ‘O’—was insufficient to distinguish the marks. Since both parties operated in the cement industry and sold overlapping product categories, consumer confusion was likely.

It was also held that even if the defendants used their corporate logo, it would not neutralize the deceptive similarity arising from the impugned mark. Further, the Court dismissed the geographic and product-type differentiation argument, observing that the plaintiff’s trademark registration for “cement” was not territorially or varietally restricted.

Finally, the Court found that the defendants had acted in bad faith by choosing a mark closely resembling that of a competitor in the same industry. Arguments of equity and clean hands could not be invoked by a party that was itself infringing a registered mark.

Final Decision:The High Court confirmed the ex parte ad-interim injunction dated 11 April 2017, thereby restraining the defendants from using the mark “CONCRETA” or any other deceptively similar mark to “CONCRETO.” The defendants’ application under Order 39 Rule 4 CPC to vacate the injunction was dismissed. The Court directed that the findings were prima facie and would not prejudice the parties at trial.

Law Settled in This Case:This case reinforces that phonetic and visual similarities—especially in the same trade and product category—are sufficient to establish trademark infringement. Even minor alterations in spelling do not absolve infringers when the overall commercial impression remains similar. The decision also clarifies that descriptive terms, when registered and continuously used, may acquire distinctiveness warranting statutory protection. Moreover, prior use and registration confer exclusive rights under Section 28 of the Trade Marks Act, and equitable defences are not available to deliberate infringers. Importantly, the ruling upholds that transitional corporate arrangements and regulatory divestments do not automatically defeat trademark rights when proprietary control is preserved or transferred validly.

Case Title: Nuvoco Vistas Corporation Ltd. Vs. JK Lakshmi Cement Ltd. & Anr.

Date of Order: 15 April 2019

Case Number: CS(COMM) 256/2017

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Manmohan

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

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Raman Kwatra Vs KEI Industries Limited

Introduction

The clash between intellectual property rights and business interests often leads to riveting legal battles, and the case of Raman Kwatra & Anr. versus M/s KEI Industries Limited stands as a testament to this dynamic. Decided by the High Court of Delhi on January 6, 2023, this case delves into the intricate world of trademark law, pitting a seasoned manufacturer of electrical appliances against a well-established cable and wire company over the use of the mark "KEI." At its core, this dispute raises fundamental questions about trademark infringement, the scope of registered marks, and the equitable principles governing such conflicts. The judgment not only resolves a specific commercial rivalry but also offers valuable insights into the interpretation of India's Trade Marks Act, 1999, making it a significant study for legal practitioners and businesses alike.

Detailed Factual Background

The appellants, Raman Kwatra and his proprietorship firm (collectively "the appellant"), are engaged in manufacturing electrical appliances such as fans, room coolers, geysers, and other household items. The appellant traces its use of the "Kwality Label," which incorporates the initials "KEI," back to 1966, when it was adopted by Raman Kwatra’s father, Late Shri Om Prakash Kwatra. This mark was registered under Classes 9 and 11 in 1997, albeit with a disclaimer on the words "KWALITY" and "INDIA," and is now owned by Raman Kwatra’s brother, Rakesh Kwatra. In 2008, the appellant conceived a new mark (referred to as the "impugned trademark") featuring "KEI" in the same font and style as the Kwality Label, which it began using for its products. The appellant applied for registration of this mark in 2016 under Classes 7, 11, and 35, but faced opposition, leaving it unregistered at the time of the dispute.

The respondent, KEI Industries Limited, is a prominent player in the wire and cable industry, claiming use of the "KEI" mark since 1968, when it began as a partnership firm named Krishna Electrical Industries. Incorporated as a public limited company in 1992, the respondent has since expanded into manufacturing various types of cables, including power cables, control cables, and house wires, serving sectors like power, oil refineries, and railways. The respondent secured registration for its word mark "KEI" and a device mark featuring "KEI" in Classes 6, 9, 16, 35, 37, and 42, with the device mark conceptualized in 2007. In September 2017, the respondent discovered the appellant’s trademark application during a routine check and issued a cease-and-desist notice on October 31, 2017, alleging infringement. The appellant refuted these claims in a reply dated November 27, 2017, setting the stage for a legal showdown.

Detailed Procedural Background

The respondent initiated legal action by filing a suit [CS(COMM) 9/2021] before the Delhi High Court, seeking a permanent injunction against the appellant’s use of the impugned trademark, alleging infringement and passing off. Alongside the suit, the respondent applied for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. On May 17, 2022, the learned Single Judge granted the interim injunction, restraining the appellant from using the impugned trademark or any deceptively similar marks in relation to electrical goods pending the suit’s disposal. The Single Judge found prima facie infringement of the respondent’s registered marks, prompting the appellant to file an intra-court appeal [FAO(OS) (COMM) 172/2022] challenging this order. The appeal, accompanied by an application (CM APPL. 30278/2022), was adjudicated by a Division Bench comprising Justices Vibhu Bakhru and Amit Mahajan, culminating in the judgment delivered on January 6, 2023.

Issues Involved in the Case

The case revolves around several critical legal issues. First, whether the appellant’s use of the impugned trademark infringes the respondent’s registered trademarks under Section 29 of the Trade Marks Act, 1999, particularly Sections 29(2) and 29(4). Second, whether the goods covered by the appellant’s impugned trademark (e.g., fans, geysers) are similar to those under the respondent’s registered marks (e.g., wires, cables), thereby justifying an infringement claim. Third, whether the respondent is estopped from alleging similarity between the marks due to prior representations made to the Trade Marks Registry. Fourth, whether the appellant’s registered "Pedestal Fan Label" and historical use of the "Kwality Label" bolster its defense. Finally, whether the defense of honest and concurrent use applies to resist the respondent’s injunction plea.

Detailed Submission of Parties

The appellant, represented by Senior Advocate Jayant Mehta, mounted a multi-pronged challenge to the Single Judge’s order. He argued that the impugned order overlooked the appellant’s registered "Pedestal Fan Label" (Registration No. 4639094) in Class 11, which incorporates the impugned trademark, and sought to amend the written statement to reflect this fact. He contended that the Single Judge erred in deeming the appellant’s goods similar to the respondent’s, as the latter deals in cables and wires, not household appliances. Mehta emphasized the appellant’s long-standing use of the "Kwality Label" since 1966, inherited through family business succession, asserting that the impugned trademark’s "KEI" was a bona fide continuation of this legacy. He further argued that the respondent’s prior assertion of dissimilarity before the Trade Marks Registry estopped it from claiming infringement, and that the defense of honest and concurrent use should shield the appellant.

The respondent, represented by Senior Advocate C.M. Lall, countered that its "KEI" mark, registered across multiple classes, enjoys a robust reputation, and the appellant’s use of an identical mark in the electrical goods sector risks confusion and dilution. Lall argued that while the respondent currently focuses on cables, its registrations, particularly the device mark’s coverage of "other kinds of electrical and electronic instruments," encompass allied goods like fans and geysers. He dismissed the estoppel argument, citing the lack of statutory estoppel and reserving the respondent’s right to legal remedies. Lall also relied on precedents to assert that honest and concurrent use is not a valid defense against infringement of a registered trademark, urging the court to uphold the injunction.

Detailed Discussion on Judgments Cited by Parties and Their Context

The respondent leaned heavily on judicial precedents to bolster its stance. In Power Control Appliances v. Sumeet Machines (P) Ltd. [(1994) 2 SCC 448], the Supreme Court held that honest and concurrent use, while a basis for concurrent registration under the Trade Marks Act, 1958, does not defend copyright infringement—a principle the respondent extended to trademarks. Laxmikant Patel v. Chetanbhai Shah [(2002) 3 SCC 65] reinforced that goodwill and reputation are protectable against deceptive similarity. Bombay High Court decisions like Cadila Pharmaceuticals Ltd. v. Sami Khatib [2011 SCC OnLine Bom 484] and Kalpataru Properties Pvt. Ltd. v. Kalpataru Buildtech Corp. Ltd. [2015 SCC OnLine Bom 5817] underscored the irrelevance of honest use in registered trademark disputes. Delhi High Court rulings, such as Inder Industries v. GEMCO Electrical Industries [2012 SCC OnLine Del 2416] and Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. [1989 SCC OnLine Del 34], emphasized protecting registered marks against confusion, regardless of intent.

The appellant countered with Telecare Networks India Pvt. Ltd. v. Asus Technology Pvt. Ltd. [(2019) 262 DLT 101], where the Delhi High Court dismissed estoppel against statute but was challenged here for misapplication, as the appellant argued equitable estoppel based on the respondent’s registry statements. The appellant also invoked statutory interpretation principles from Amar Chandra Chakraborty v. Collector of Excise [(1972) 2 SCC 442] and Rohit Pulp and Paper Mills Ltd. v. CCE [(1990) 3 SCC 447], advocating a restrictive reading of "other kinds of electrical and electronic instruments" under the ejusdem generis and noscitur a sociis rules, limiting the respondent’s mark to cables and related devices.

Detailed Reasoning and Analysis of Judges

The Division Bench, led by Justice Vibhu Bakhru, meticulously dissected the Single Judge’s findings. The court first addressed the similarity of goods, rejecting the Single Judge’s expansive interpretation of "other kinds of electrical and electronic instruments" in the respondent’s device mark registration. Applying ejusdem generis, the Bench held that this phrase, following specific items like cables, switchgears, and transformers, should be confined to instruments for controlling or manipulating electricity, not household appliances like fans or geysers. The court found the word mark "KEI" limited to "Wires and Cables (Electric and telecommunication)" in Class 9, further undermining the similarity claim under Section 29(2).

The Bench then tackled the estoppel issue, disagreeing with the Single Judge’s reliance on Telecare Networks. It held that the respondent’s assertion of dissimilarity between its mark and the appellant’s before the Trade Marks Registry—made to secure registration of "KEI" in Class 11—barred it from claiming similarity now, invoking the equitable principle against approbation and reprobation. The court also noted the appellant’s registered "Pedestal Fan Label," overlooked by the Single Judge, as a factor weakening the infringement case.

On honest and concurrent use, the Bench acknowledged Section 12 of the Trade Marks Act, which allows concurrent registration in special circumstances, but deemed it unnecessary to resolve this defense given the lack of goods similarity. However, it critiqued the Single Judge’s blanket rejection of this defense, suggesting its potential relevance in appropriate cases. Finally, while the respondent urged consideration under Section 29(4) (infringement for dissimilar goods with reputation), the Bench remanded this aspect to the Single Judge, noting its absence from earlier arguments but relevance in the plaint.

Final Decision

The Division Bench set aside the impugned order of May 17, 2022, lifting the interim injunction against the appellant. It remanded the matter to the Single Judge to examine the respondent’s claim under Section 29(4) of the Trade Marks Act, ensuring a fresh prima facie assessment of infringement based on reputation and unfair advantage. The appeal was disposed of without costs.

Law Settled in This Case

This judgment clarifies several aspects of trademark law in India. It reaffirms that the scope of a registered trademark’s goods must be interpreted restrictively using ejusdem generis when general terms follow specific ones, preventing overreach into unrelated product categories. It establishes that a party’s representations to the Trade Marks Registry can estop it from taking contradictory positions in litigation, grounding this in equitable principles rather than statutory estoppel. The decision also hints at the potential viability of honest and concurrent use as a defense against infringement, though it leaves this open for future adjudication. Finally, it underscores the distinct application of Section 29(4) for dissimilar goods, emphasizing reputation and detriment as key factors.

Case Title: Raman Kwatra Vs KEI Industries Limited

Date of Order: January 6, 2023

Case No.: FAO(OS) (COMM) 172/2022

Neutral Citation: 2023/DHC/000083

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Amit Mahajan

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

Raj Kumar Prasad Vs. Abbott Healthcare Pvt. Ltd.

Introduction

In the realm of intellectual property law, where trademarks serve as the bedrock of brand identity, a recurring conundrum surfaces: Can one registered trademark proprietor sue another for infringement when their marks are deceptively similar? This question, steeped in statutory interpretation and judicial precedent, took center stage in the Delhi High Court case of Raj Kumar Prasad & Anr. vs. Abbott Healthcare Pvt. Ltd., decided on September 10, 2014. The case pitted a pharmaceutical giant against a smaller player, unraveling the interplay between exclusive rights under the Trademarks Act, 1999, and the judiciary’s power to grant interim relief. This landmark ruling not only resolved a trademark tussle but also clarified the legal framework governing such disputes, offering a beacon for future litigants.

Detailed Factual Background

The dispute originated with Abbott Healthcare Pvt. Ltd., a subsidiary of Abbott Laboratories Chicago, a global leader in pharmaceuticals. Abbott claimed ownership of the trademark "ANAFORTAN," used for Camylofin Dihydrochloride formulations, tracing its lineage back to 1988 through Khandelwal Laboratories Pvt. Ltd., which registered the mark under serial No. 501608 in Class 5. Through a series of assignments—first to Nicholas Piramal India Ltd. (later Piramal Healthcare Ltd. and then Piramal Enterprises Ltd.) on April 15, 2008, and subsequently to Abbott on September 8, 2010—Abbott asserted continuous use and substantial goodwill, evidenced by sales of Rs. 7.84 crores in late 2010 and Rs. 23.047 crores in 2011. The conflict arose when Raj Kumar Prasad, operating as Birani Pharmaceuticals, began selling a similar formulation under the trademark "AMAFORTEN," registered under No. 1830060 in Class 5, with manufacturing support from Alicon Pharmaceuticals Pvt. Ltd. Abbott alleged deceptive similarity—both phonetic and visual—between "ANAFORTAN" and "AMAFORTEN," compounded by a mimicking golden trade dress for their tablet strips. Abbott sought to rectify the defendants’ registration and secure an injunction, claiming prior use and reputation since 1988 against the defendants’ entry around 2012.

Detailed Procedural Background

Abbott filed a suit (CS(OS) No. not specified in the document) in the Delhi High Court, accompanied by an application for interim injunction (IA No. 23086/2012). The learned Single Judge, on April 25, 2014, granted the injunction, restraining the defendants from using "AMAFORTEN" or any deceptively similar mark. Aggrieved, Raj Kumar Prasad and Alicon Pharmaceuticals appealed (FAO(OS) 281/2014) before a Division Bench comprising Justice Pradeep Nandrajog and Justice Mukta Gupta. The appeal, argued on September 5, 2014, and decided on September 10, 2014, saw Abbott represented by Senior Advocate Sanjeev Sindhwani and Mr. Manav Kumar, while the appellants were represented by Mr. Mohan Vidhani, Mr. Rahul Vidhani, and Mr. S.B. Prasad. The Bench tackled territorial jurisdiction, stamp duty on assignments, and the core issue of trademark rights between registered proprietors, affirming the Single Judge’s order with detailed reasoning.

Issues Involved in the Case

The central issue was whether a registered trademark proprietor could sue another registered proprietor for infringement based on deceptive similarity, despite both holding valid registrations. Ancillary issues included the Delhi High Court’s territorial jurisdiction, the validity of assignment agreements due to alleged stamp duty deficiencies, and the interplay between Sections 28 and 124 of the Trademarks Act, 1999, particularly regarding interim relief and rectification proceedings. The case also raised questions about balancing prior use, goodwill, and statutory rights in trademark disputes.

Detailed Submission of Parties

Abbott argued that "AMAFORTEN" was deceptively similar to "ANAFORTAN," risking consumer confusion, especially in pharmaceuticals where precision is critical. They emphasized their long-standing use since 1988, inherited goodwill, and substantial sales, asserting a prima facie case for infringement. Abbott relied on Section 124, contending that a suit against another registered proprietor was maintainable, with rectification proceedings as a parallel remedy, and sought interim protection pending such action. They also justified Delhi’s jurisdiction via their branch office and sales presence.

The appellants countered that Section 28(3) of the Trademarks Act granted mutually exclusive rights to registered proprietors of similar marks, barring one from suing the other. They challenged jurisdiction, claiming no sales in Delhi, and attacked the assignment deeds for inadequate stamp duty, though without specifics. They defended "AMAFORTEN" as a legitimate registered mark since July 12, 2011 (applied for on June 17, 2009), arguing that Abbott’s suit was untenable without first invalidating their registration.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The appellants did not cite specific case law in the judgment text, relying instead on a literal reading of Section 28(3) to argue mutual exclusivity. Abbott, while not directly citing precedents in the provided document, implicitly drew on principles from Wander Ltd. & Anr. vs. Antox India P. Ltd., 1990 (Supp.) SCC 727, as noted by the court. This Supreme Court decision established the framework for interim injunctions—prima facie case, balance of convenience, and irreparable injury—guiding the court’s assessment of Abbott’s prior use and goodwill against the appellants’ later entry. The Single Judge and Division Bench leaned on statutory interpretation rather than extensive precedent, though Wander provided the legal lens for injunctive relief. The appellants’ jurisdictional and stamp duty pleas were dismissed for lack of evidence, aligning with procedural norms rather than specific citations.

Detailed Reasoning and Analysis of Judge

Justice Pradeep Nandrajog, authoring the judgment, began with the jurisdictional issue, affirming a prima facie finding of Delhi’s competence due to Abbott’s sales office, pending trial evidence. On stamp duty, he found the appellants’ vague objections insufficient, upholding the assignments’ validity for interim purposes. The crux lay in reconciling Sections 28 and 124 of the Trademarks Act. Section 28(1) granted exclusive rights to a registered proprietor, while Section 28(3) suggested that identical or similar marks’ proprietors could not sue each other, only third parties. However, Section 124 permitted infringement suits where a defendant’s registration was challenged as invalid, allowing stays for rectification while empowering interim orders under Section 124(5).

The court harmonized these provisions, rejecting a rigid interpretation of Section 28(3) that would bar all suits between registered proprietors. It held that Section 124’s mechanism—staying suits for rectification while preserving interlocutory relief—indicated legislative intent to protect prior users like Abbott pending validity disputes. The phonetic and visual similarity between "ANAFORTAN" and "AMAFORTEN" was deemed ex-facie deceptive, especially for identical pharmaceutical goods, trade channels, and consumers. Abbott’s 1988 precedence and goodwill trumped the appellants’ 2011 registration, with the latter’s non-disclosure of market entry reinforcing Abbott’s case. Applying Wander principles, the court found a strong prima facie case, tipping the balance of convenience and irreparable harm in Abbott’s favor, particularly given ongoing rectification proceedings initiated by Abbott.

Final Decision

The Division Bench dismissed the appeal, upholding the Single Judge’s order of April 25, 2014, granting an interim injunction against the appellants’ use of "AMAFORTEN" or any deceptively similar mark. Costs were imposed on the appellants, payable to Abbott, affirming the restraint pending suit resolution.

Law Settled in This Case

The ruling clarified that a registered trademark proprietor can sue another registered proprietor for infringement if the marks are deceptively similar, despite Section 28(3)’s apparent exclusivity. Section 124 enables such suits, allowing interim relief while rectification proceedings address registration validity, ensuring protection of prior use and goodwill. This harmonized interpretation balances statutory rights with equitable remedies, reinforcing trademark law’s flexibility in safeguarding established brands.

Case Title: Raj Kumar Prasad & Anr. Vs. Abbott Healthcare Pvt. Ltd.

Date of Order: September 10, 2014

Case No.: FAO(OS) 281/2014

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice Pradeep Nandrajog and Hon’ble Ms. Justice Mukta Gupta

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

Aktiebolaget Volvo Vs. R. Venkatachalam

Introduction

In the ever-evolving landscape of civil litigation, where procedural intricacies often dictate the course of justice, a pivotal question emerged in the High Court of Delhi: Can a party rely solely on photocopies of documents in a lawsuit, producing originals only for inspection, or does the law mandate the filing of originals on the court record? This issue, central to the case of Aktiebolaget Volvo & Ors vs. R. Venkatachalam & Anr., decided on May 18, 2009, challenged traditional interpretations of evidence and procedural laws in India. The ruling not only addressed a practical dilemma faced by litigants with documents critical to multiple global litigations but also set a precedent that harmonized legal requirements with modern technological advancements and judicial expediency.

Detailed Factual Background

The dispute arose in a trademark infringement lawsuit filed by Aktiebolaget Volvo and others (the plaintiffs), a globally recognized entity, against R. Venkatachalam and another (the defendants). The plaintiffs sought a permanent injunction to restrain the defendants from infringing their trademark, passing off their goods, and other ancillary reliefs such as damages and delivery of infringing materials. As part of their evidence, the plaintiffs filed photocopies of various documents—trademark certificates, invoices, and magazine advertisements—claiming these supported their case. However, they refrained from submitting the originals, citing their necessity in ongoing and potential litigations across multiple jurisdictions worldwide. To address this, the plaintiffs filed an application (IA No. 5683/2008) under Section 151 of the Code of Civil Procedure (CPC), seeking permission to rely on photocopies while producing the originals only for inspection during the admission/denial stage and when tendering evidence. The defendants opposed this, arguing that the law mandated the filing of original documents and that relying on photocopies prejudiced their ability to verify authenticity.

Detailed Procedural Background

The case, registered as CS(OS) 516/2007, reached a critical juncture when the plaintiffs’ application came before Justice Rajiv Sahai Endlaw in the Delhi High Court. The application was contested, leading to a detailed hearing on May 18, 2009. The plaintiffs were represented by Mr. Praveen Anand, assisted by Ms. Diva Arora and Ms. Tanya Varma, while the defendants were represented by Mr. Amarjeet Singh and Ms. Navneet Momi. The court framed a specific legal question: whether it was permissible under Indian law to allow a party to file photocopies, exempt them from placing originals on the court file, and produce originals only for inspection at designated stages, with exhibit marks placed on the photocopies. This procedural issue required an in-depth analysis of the CPC, the Indian Evidence Act, and judicial precedents, culminating in a reasoned judgment that balanced statutory mandates with practical considerations.

Issues Involved in the Case

The primary issue was whether the law permitted a party to rely on photocopies in a civil suit, producing originals only for inspection, rather than filing them on the court record. This raised several sub-issues: the interpretation of “production” under the CPC, the requirement of primary evidence under the Evidence Act, the feasibility of marking exhibits on photocopies, and the court’s discretion to adapt procedural rules to modern realities. The case also tested the balance between ensuring fairness to the opposing party (in verifying documents) and accommodating the practical difficulties faced by litigants with documents needed in multiple forums.

Detailed Submission of Parties

The plaintiffs argued that filing originals was impractical due to their involvement in global litigations, where the same documents were required. They contended that modern photocopying technology ensured copies were as reliable as originals, and producing originals for inspection at key stages—admission/denial and evidence—sufficiently safeguarded the defendants’ rights. They relied on legal commentaries and precedents to assert that “production” did not equate to “filing” and that courts had discretion to accept photocopies under certain conditions.

The defendants, in opposition, asserted that the CPC (Order 7 Rule 14 and Order 13 Rule 1) and the Evidence Act mandated the filing of originals as primary evidence. They argued that photocopies constituted secondary evidence, insufficient without proof of loss or destruction of originals under Section 65 of the Evidence Act. They further contended that the plaintiffs’ claim of needing originals elsewhere was unsubstantiated, suggesting certified copies as an alternative, and emphasized that relying on photocopies hindered their ability to verify authenticity, especially in a trademark dispute heavily reliant on documentary proof.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The plaintiffs cited several authorities to bolster their case. Firstly, they referred to Mulla’s CPC, 17th Edition, Volume-II, Page 694, where the commentary on Order 13 Rule 1 suggested that “produce” meant having documents available in court, not necessarily filing them, relying on Talewar Singh vs. Bhagwan Dass, (1908) 12 Cal WN 312. This Calcutta decision supported the view that courts could accept documents at later stages, implying flexibility in procedural requirements. Secondly, they cited The Law Lexicon by P. Ramanatha Aiyar, 1987 Edition, which defined “produce” as showing a document without parting with possession, reinforcing their argument that inspection sufficed. Thirdly, Prem Kumari vs. Sushil Kumari, AIR 2000 Rajasthan 415, was invoked, where photocopies were exhibited after originals were produced for evidence and retained for cross-examination, though the judgment lacked detailed legal discussion. Lastly, Sehgal Puri Pvt. Ltd. vs. The National Newsprint and Paper Mills Ltd., AIR 2001 Delhi 449 (DB), permitted originals at the evidence stage when photocopies were filed with the plaint, aligning with their request for flexibility.

The defendants countered with their own citations. They referenced R.V.E. Venkatachala Gounder vs. Arulmigu Viswesaraswami, AIR 2003 SC 4548, though its relevance to the specific issue was limited, focusing more on evidence admissibility. Sivasubramania Thevar vs. T.N.S. Theerthapathi, AIR 1933 Madras 451, and Om Prakash Berlia vs. Unit Trust of India, AIR 1983 Bombay 1, were also cited but deemed inapplicable by the court, as they did not directly address the question of photocopies versus originals in this context. The defendants leaned heavily on statutory provisions rather than case law, emphasizing the mandatory language of the CPC and Evidence Act.

Detailed Reasoning and Analysis of Judge

Justice Rajiv Sahai Endlaw embarked on a comprehensive analysis, beginning with practical considerations. He noted the overburdened state of Indian courts, where infrastructure lagged behind the rising tide of litigation, making preservation of originals on court files risky due to physical handling and space constraints. He highlighted the advent of e-courts and paperless filing systems globally, suggesting that insisting on originals contradicted this evolution. Advancements in photocopying technology, rendering copies nearly indistinguishable from originals, further supported a shift from rigid norms established in an era of manual copies.

Turning to the law, the judge scrutinized the CPC provisions. Order 7 Rule 14 and Order 8 Rule 1A required documents to be “produced” with the plaint or written statement, but did not specify originals. Order 13 Rule 1, however, explicitly mandated originals before settlement of issues where copies were filed earlier. Contrasting “produce” with “filed” in the same rule, he concluded that “produce” meant making originals available for inspection, not filing them, supported by dictionary definitions and Public Prosecutor vs. T. Amrath Rao, AIR 1960 AP 176. The Evidence Act’s Section 62 defined primary evidence as the document itself “produced for the inspection of the court,” reinforcing that filing was not required even at the proof stage.

Addressing Order 13 Rule 4’s requirement of endorsing exhibits on admitted documents, Justice Endlaw held that this procedural step could apply to photocopies once originals were inspected, as substantive law prioritized inspection over filing. He cautioned that this flexibility was not absolute—courts could demand originals in cases of doubt or where documents (e.g., wills) required physical retention—but found no such necessity here. The plaintiffs’ documents (magazines, invoices) were not doubtful, and their global litigation needs were credible, outweighing the defendants’ inconvenience, which mirrored the effort required even if originals were filed.

Final Decision

The court allowed the plaintiffs’ application (IA No. 5683/2008), permitting them to rely on photocopies while producing originals for inspection at the admission/denial and evidence stages. Exhibit marks would be placed on the photocopies of admitted documents. The matter was listed before the Joint Registrar on July 23, 2009, for compliance.

Law Settled in This Case

The judgment settled that, under Indian law, courts have discretion to allow parties to file photocopies instead of originals, provided originals are produced for inspection when required. “Production” under the CPC and Evidence Act means making documents available for court scrutiny, not necessarily filing them, aligning procedural law with technological progress and judicial efficiency. This flexibility, however, is subject to judicial oversight, ensuring fairness and authenticity in appropriate cases.

Case Title: Aktiebolaget Volvo & Ors vs. R. Venkatachalam & Anr.

Date of Order: May 18, 2009

Case No.: IA No. 5683/2008 in CS(OS) 516/2007

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Rajiv Sahai Endlaw

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

R.G. Anand Vs Delux Films & Ors.

Inspiration, Imitation, Copying and copyright Infringement

Introduction: In the annals of Indian copyright law, few cases have shaped the understanding of intellectual property protection as profoundly as R.G. Anand Vs Delux Films & Ors., decided by the Supreme Court of India on August 18, 1978. This landmark case revolved around the alleged infringement of a copyrighted play, Hum Hindustani, by a cinematic production, New Delhi. It stands as a seminal exploration of the boundaries between inspiration and imitation, addressing the intricate question of whether a film can infringe upon a play’s copyright when both share a common theme but diverge in execution. The judgment not only clarified the principles governing copyright infringement but also established enduring tests that continue to guide courts in India and beyond.

Detailed Factual Background: The plaintiff, R.G. Anand, was an architect by profession and a seasoned playwright, dramatist, and producer. He had authored and staged several plays prior to Hum Hindustani, including Des Hamara, Azadi, and Election. However, it was Hum Hindustani, written in 1953 and first performed in 1954 at the Wavell Theatre in New Delhi under the aegis of the Indian National Theatre, that became the focal point of this dispute. The play, centered on the theme of provincialism, depicted the tensions between a Punjabi family and a Madrasi family over a proposed marriage between their children, Amni and Chander. Its popularity soared, earning critical acclaim and prompting multiple performances in Delhi and Calcutta between 1954 and 1956.

In November 1954, Anand received a letter from Mohan Sehgal, the second defendant and a film director associated with Delux Films (the first defendant), expressing interest in adapting Hum Hindustani into a film. Sehgal requested a copy of the script, but Anand suggested he attend a performance in Delhi scheduled for December 11, 1954, at the National Drama Festival. In January 1955, Sehgal and another defendant visited Anand in Delhi, where Anand narrated the entire play to them. No firm commitment was made, and communication lapsed thereafter. In May 1955, Sehgal announced the production of a film titled New Delhi, which was released in September 1956. Anand, upon viewing the film and reading reviews suggesting similarities with his play, concluded that it was a pirated adaptation of Hum Hindustani. He alleged that Sehgal had dishonestly imitated his work after hearing it narrated, thereby violating his copyright.

The play Hum Hindustani portrayed the love story of Amni (a Madrasi) and Chander (a Punjabi), thwarted by their families’ provincial prejudices. The narrative climaxed with a suicide pact, followed by a reconciliation after the couple’s marriage, facilitated by a marriage broker, Dhanwantri. In contrast, New Delhi followed Anand, a Punjabi youth, who, disguised as a South Indian, navigates housing discrimination in Delhi due to provincialism, falls in love with Janaki (a Madrasi), and faces familial opposition. The film introduced additional themes, such as the evils of caste and dowry, culminating in a resolution involving multiple families and a broader social critique.

Detailed Procedural Background

Aggrieved by the perceived infringement, Anand filed a suit in the District Court of Delhi seeking damages, an account of profits, and a permanent injunction to restrain the defendants from exhibiting New Delhi. The defendants, including Delux Films and Sehgal, contested the suit, denying any infringement and asserting that while they had heard the play, it was inadequate for a commercial film. They argued that provincialism, as a common theme, could not be copyrighted and that New Delhi differed significantly in content, spirit, and climax.

The trial court framed five issues: (1) whether Anand owned the copyright in Hum Hindustani; (2) whether New Delhi infringed that copyright; (3) whether the defendants had infringed by producing, distributing, or exhibiting the film; (4) whether the suit suffered from misjoinder of parties or causes of action; and (5) the relief to which Anand was entitled. The court ruled in Anand’s favor on the first issue, confirming his copyright ownership, and dismissed the fourth issue as unpressed. However, on the pivotal second and third issues, it found no infringement, dismissing the suit. Anand appealed to the Delhi High Court, where a Division Bench upheld the trial court’s decision on May 23, 1968. Undeterred, Anand sought and obtained special leave to appeal to the Supreme Court, leading to the case being heard by a three-judge bench comprising Justices Syed Murtaza Fazalali, Jaswant Singh, and R.S. Pathak.

Issues Involved in the Case:  The Supreme Court grappled with two primary issues: (1) What constitutes infringement of a copyright in a play when adapted into a film, and what tests should be applied to determine such infringement? (2) Whether the film New Delhi infringed the copyright of the play Hum Hindustani based on the facts and evidence presented. These issues necessitated an examination of the legal principles governing copyright, the scope of protection for dramatic works, and the distinction between unprotected ideas and protected expressions.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context:  The Supreme Court extensively reviewed precedents from England, America, and India to frame its analysis, as no Indian statute specifically governed copyright at the time (the Copyright Act of 1957 was not yet in force for this dispute). Instead, the court relied on the British Copyright Act of 1911, which defined copyright under Section 1(2)(d) as the sole right to reproduce a dramatic work, including in cinematographic form, and under Section 2 as infringed by unauthorized use of that right.

From English law, Hanfstaengl v. W.H. Smith & Sons ([1905] 1 Ch D 519) was cited, where Bayley J. defined a copy as something so near the original as to suggest it to viewers, emphasizing the impression created. Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. ([1964] 1 All ER 465) clarified that infringement requires substantial copying of the original work as a whole, not fragmented parts. Corelli v. Gray (29 TLR 578) and Hawkes & Son (London) Ltd. v. Paramount Film Service Ltd. ([1934] 1 Ch D 593) reinforced that copyright extends to dramatic incidents, not just verbatim text, but excludes mere ideas or scenes.

American cases included Bobbs-Merrill Co. v. Isidor Straus (210 US 339), affirming infringement as a statutory trespass, and Sheldon v. Metro-Goldwyn Pictures Corp. (81 F 2d 49), where copying with colorable variations was deemed actionable if substantial. Shipman v. R.K.O. Radio Pictures (100 F 2d 533) and Twentieth Century Fox Film Corp. v. Stonesifer (140 F 2d 579) emphasized that infringement hinges on substantial appropriation, judged by the average observer’s impression, not hypercritical analysis. Warner Bros. Pictures v. Columbia Broadcasting System (216 F 2d 945) and Otto Eisenschiml v. Fawcett Publications (246 F 2d 598) underscored that quality, not quantity, determines infringement, even if paraphrased.

Indian precedents like Macmillan & Co. Ltd. v. K. & J. Cooper (51 IA 109) established that piracy requires substantial copying or evasive imitation. Florence A. Deeks v. H.G. Wells (60 IA 26) demanded cogent evidence for copying claims against credible denials. N.T. Raghunathan v. All India Reporter Ltd. (AIR 1971 Bom 48) and K.R. Venugopala Sarma v. Sangu Ganesan (1972 Cr LJ 1098) clarified that copyright protects expression, not ideas, and substantial resemblance must be evident to the eye or mind. The Daily Calendar Supplying Bureau v. The United Concern (AIR 1967 Mad 381) and C. Cunniah & Co. v. Balraj & Co. (AIR 1961 Mad 111) applied visual impression tests to determine copying.

These citations collectively shaped the court’s framework, distinguishing between unprotected ideas (e.g., provincialism) and protected expressions (e.g., specific plot structures), and requiring substantial imitation for infringement.

Detailed Reasoning and Analysis of Judge: The court while delivering the leading judgment, synthesized these authorities into seven propositions: 

"(1) Copyright does not extend to ideas, themes, or facts, but to their form, manner, and expression; 

(2) Similarities from a common idea are inevitable, but infringement occurs only if fundamental aspects of expression are copied; 

(3) The surest test is whether an average viewer perceives the subsequent work as a copy; 

(4) A differently treated theme creates a new work, avoiding infringement; 

(5) Material dissimilarities negate copying intent; 

(6) Piracy requires clear, cogent proof; and 

(7) Proving infringement from a play to a film is harder due to the latter’s broader scope, yet a totality of impression can establish violation."

Applying these tests, the court. analyzed Hum Hindustani and New Delhi. The play focused solely on provincialism in marriage, with a tight narrative involving two families, a suicide pact, and a happy resolution. The film, however, expanded to housing discrimination, caste issues, and dowry, involving three families and a complex climax. While acknowledging 18 similarities (e.g., shared locale, character names, and a suicide note), the court found them trivial and attributable to the common theme of provincialism. Dissimilarities—such as the film’s additional themes, different character dynamics, and absence of a mutual suicide pact—outweighed these parallels, showing a distinct treatment.

Court noted Sehgal’s awareness of the play but found no evidence of intent to copy, emphasizing that inspiration from a known work does not equate to infringement absent substantial imitation. The court’s screening of the film and reading of the play reinforced this view, concluding that no prudent person would see New Delhi as a copy of Hum Hindustani. Concurrent findings of the lower courts further bolstered this stance, with the Supreme Court reluctant to disturb them absent legal error.

Final Decision: The Supreme Court dismissed Anand’s appeal by special leave, affirming the Delhi High Court’s decree dismissing the suit. No costs were awarded in the Supreme Court, reflecting the case’s complexity and novelty.

Law Settled in This Case:This judgment crystallized several principles in Indian copyright law: (1) Copyright protects the expression of ideas, not the ideas themselves; (2) Infringement requires substantial and material copying of the original’s form and expression, not mere thematic overlap; (3) The “average observer” test—whether a viewer perceives the subsequent work as a copy—is a key determinant; (4) Different treatments of a shared theme preclude infringement; and (5) Film adaptations of plays face a higher evidentiary burden due to their expansive medium, but a totality of impression can prove piracy. These principles remain foundational in Indian copyright jurisprudence.

Case Title: R.G. Anand Vs Delux Films & Ors.

Date of Order: August 18, 1978

Case No.: Civil Appeal No. 2030 of 1968

Neutral Citation: 1978 AIR 1613, 1979 SCR (1) 218, 1978 SCC (4) 118

Name of Court: Supreme Court of India

Name of Judge: Syed Murtaza Fazalali, Jaswant Singh, R.S. Pathak

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

Pidilite Industries Limited Vs. Riya Chemy

Trade Mark Infringement, Passing Off, and Trade Dress Protection

Introduction: In the fiercely competitive realm of intellectual property, where brands are built on trust and distinctiveness, the clash between Pidilite Industries Limited and Riya Chemy over the marks "M-SEAL" and "R-SEAL" offers a gripping narrative of legal ingenuity and commercial rivalry. Heard before the Bombay High Court in 2022, this case encapsulates the tension between established trade mark rights and alleged imitators, weaving together issues of trade mark infringement, copyright violation, and passing off. At stake was not just the sanctity of a renowned brand but also the broader principles governing how courts protect intellectual assets in a crowded marketplace. This case study dives into the intricate details of the dispute, exploring the factual underpinnings, procedural maneuvers, legal arguments, judicial precedents, and the court’s ultimate reasoning, culminating in a decision that reaffirms the robustness of trade mark law in India.

Detailed Factual Background:Pidilite Industries Limited, a titan in the sealants and adhesives industry since 1969, traces its legacy to the mark "M-SEAL," conceived in 1968 by its predecessors, Mahindra Van Wijk and Visser Ltd. (later Mahindra Electrochemical Products Ltd.). Acquired by Pidilite in 2000 with its goodwill intact, "M-SEAL" has since become a household name, synonymous with quality sealants. The mark, registered as early as August 16, 1972 (No. 282168), boasts a user claim from December 1, 1968, and spans multiple classes with variations like "M-SEAL Phataphat" and "M-SEAL Superfast." Its distinctive packaging—featuring a white, blue, and red color scheme, stylized red "M-SEAL" lettering with an underlining flourish, the tagline "SEALS JOINS FIXES BUILDS," and the sub-mark "PHATAPHAT"—is protected by both trade mark and copyright registrations. Pidilite’s extensive sales, exceeding crores of rupees, and substantial promotional investments underscore the mark’s market dominance and public recognition.

Enter Riya Chemy, the defendant, whose sealant product under the mark "R-SEAL" emerged in December 2020, catching Pidilite’s attention. The "R-SEAL" mark mirrors "M-SEAL" in style, with a disjuncted "R" underlined similarly, and its packaging echoes Pidilite’s color scheme, layout, and tagline (albeit reversed as "BUILDS FIXES JOINS SEALS"), alongside the sub-mark "JHAT-PAT." Riya Chemy secured trade mark registrations for "R-SEAL" (Nos. 860804 and 860805) in Class 1, claiming use since 1999, though its earliest invoices date to 2005. Pidilite alleges blatant copying, pointing to structural, phonetic, and visual similarities, and accuses Riya Chemy of exploiting its goodwill. Riya Chemy counters that "SEAL" is generic, its mark distinct, and its long use precludes confusion, setting the stage for a legal showdown.

Detailed Procedural Background

The dispute crystallized with Pidilite filing Commercial IP Suit No. 147 of 2022 in the Bombay High Court, accompanied by Interim Application (L) No. 15502 of 2021, seeking ad-interim relief against Riya Chemy’s use of "R-SEAL." Prior to the suit, Pidilite issued a cease-and-desist notice on December 15, 2020, met with Riya Chemy’s refusal on December 19, 2020. On April 9, 2021, Pidilite filed rectification applications before the Trade Marks Registry to cancel Riya Chemy’s registrations, alleging fraud—a matter still pending. 

Issues Involved in the Case: The case raised a constellation of legal questions pivotal to intellectual property law: Was "R-SEAL" deceptively similar to "M-SEAL," infringing Pidilite’s registered trade marks under Section 29 of the Trade Marks Act, 1999? Did Riya Chemy’s packaging reproduce Pidilite’s copyrighted "M-SEAL" label, violating Section 51 of the Copyright Act, 1957? Did Riya Chemy’s actions constitute passing off by misrepresenting its goods as Pidilite’s, damaging its goodwill? Could Riya Chemy’s registrations be challenged as fraudulent at the interim stage? Did disclaimers on "SEAL" in Pidilite’s registrations weaken its exclusivity claims? Was "SEAL" or the color scheme common to the trade, diluting Pidilite’s rights? Finally, did the balance of convenience favor interim relief, considering prior use, honesty of adoption, and potential harm?

Detailed Submission of Parties

Pidilite argued that "R-SEAL" infringed its "M-SEAL" registrations under Sections 29(2)(b) and 29(4), citing structural, phonetic, and visual similarities—particularly the stylized underlining—and its use on identical goods. Kamod asserted that Riya Chemy’s label replicated "M-SEAL’s" essential features, infringing its copyright, and that minor variations were irrelevant under settled law. He accused Riya Chemy of passing off, leveraging "M-SEAL’s" reputation through identical trade dress, taglines, and the confusingly similar "JHAT-PAT." Pidilite’s prior use since 1968, bolstered by its 1972 registration and 2000 assignment with goodwill, was emphasized, dismissing Riya Chemy’s 1999 user claim for lack of evidence pre-2005. Kamod argued that disclaimers on "SEAL" did not diminish protection, citing judicial precedent, and that Riya Chemy’s failure to search the registry or prove "SEAL’s" generic status underscored its mala fides. He sought an injunction, asserting a prima facie case, irreparable harm, and balance of convenience.

Riya Chemy  countered that Pidilite’s assignment details were unproven, questioning its pre-2000 use claims and alleging fraudulent backdated user claims for "Phataphat" and "Superfast." Ramakrishnan claimed "R-SEAL" use since 1999, supported by 2005 invoices and affidavits, with earlier records lost due to a shift to Tally ERP. He argued "SEAL" was generic, disclaimed in Pidilite’s registration, and that "R-SEAL’s" distinct presentation—featuring a star and "Riya"—avoided confusion. On copyright, he denied substantial similarity, noting differences in layout and asserting prior use since 1999. Ramakrishnan defended its registrations as legally obtained, unchallenged by "M-SEAL" in examination reports, and argued against interim relief, citing potential business ruin (80-85% of sales from "R-SEAL") versus Pidilite’s broader portfolio.

Detailed Discussion on Judgments Cited by Parties and Their Context:Pidilite relied on Pidilite Industries Limited v. S.M. Associates & Ors., 2004 (28) PTC 193 (Bom) to affirm "M-SEAL’s" protection despite disclaimers, where the court upheld injunctive relief against "S M-Seal," emphasizing whole-mark comparison. Cadilla Healthcare Limited v. Cadilla Pharmaceuticals Limited, 2001 (2) PTC 541 (SC) supported focusing on common features over minor differences, originally applied to medicinal marks but extended here. Jagdish Gopal Kamath & Ors. v. Lime & Chilli Hospitality Services, 2015 (62) PTC 23 (Bom) reinforced that trivial distinctions do not avert confusion and that generic claims require extensive third-party use evidence, which Riya Chemy lacked. Lupin v. Johnson & Johnson, AIR 2015 Bom 50 and Pidilite Industries Limited v. Poma-Ex Products, 2017 (72) PTC 1 (Bom) empowered courts to override fraudulent registrations at the interim stage, relevant to Riya Chemy’s contested marks. ITC Limited v. NTC Industries Ltd., MANU/MH/2559/2015 and Aglowmed Limited v. Aglow Pharmaceuticals Private Limited, MANU/MH/2075/2019 underscored that acquiescence must be pleaded, absent here. Cadilla Pharmaceuticals Limited v. Sami Khatib, MANU/MH/0497/2011 negated honesty as a defense to infringement, while Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd., 2002 (24) PTC 226 (Bom) (DB) faulted Riya Chemy’s lack of due diligence. Serum Institute of India Limited v. Green Signal Bio Pharma Pvt. Ltd., 2011 (6) Bom CR 82 and Pidilite Industries Limited v. Jubilant Agri & Consumer Products Limited bolstered whole-mark protection and estoppel arguments.

Riya Chemy cited Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Ltd., CS COMM 551/2020, 9th January 2022 (Del), where peaceful coexistence negated confusion, though its relevance was limited by dissimilar facts. Ramakrishnan distinguished Pidilite’s cases: Lupin involved stayed proceedings post-interim relief, unlike here; Poma-Ex hinged on identical colors absent in "R-SEAL"; Jubilant featured withdrawn applications; Sami Khatib and Aglowmed were inapposite due to medicinal or acquiescence contexts; and S.M. Associates involved closer mimicry than "R-SEAL."

Detailed Reasoning and Analysis of Judge: The court  prima facie affirmed Pidilite as the prior user, tracing "M-SEAL" to 1968 via its 1972 registration (No. 282168), with the 2000 assignment under Sections 38 and 42 of the Trade Marks Act, 1999, preserving goodwill and historical use. Riya Chemy’s 1999 claim faltered for lack of pre-2005 evidence, with 2005 invoices and vague affidavits insufficient against Pidilite’s documented legacy, judicially noticed in S.M. Associates.

Comparing the marks, court found "R-SEAL" deceptively similar to "M-SEAL" in structure, phonetics, and stylization, with identical underlining, color schemes, and taglines signaling intent to confuse. He dismissed Riya Chemy’s "natural colors" and "generic SEAL" defenses, noting its failure to prove extensive third-party use per Jagdish Gopal Kamath and S.M. Associates. The defendant’s own registration of "SEAL" as a key feature estopped it from claiming genericness, aligning with Jubilant and Jagdish Gopal Kamath. Disclaimers on "SEAL" were irrelevant, as S.M. Associates and Serum Institute mandated whole-mark comparison, reflecting consumer perception.

Chagla deemed Riya Chemy’s registrations (Nos. 860804, 860805) prima facie fraudulent under Lupin and Poma-Ex, citing concealment of "M-SEAL’s" prior rights, violating Section 11 of the 1999 Act. Riya Chemy’s lack of registry search, per Bal Pharma, underscored its mala fides, negating honest adoption or concurrent use defenses (ITC and Aglowmed). On copyright, the substantial reproduction of "M-SEAL’s" label features met the S.M. Associates threshold, despite minor tweaks. Passing off was evident from the trade dress mimicry, risking Pidilite’s goodwill.

Balancing convenience, Chagla favored Pidilite, given its prima facie case, irreparable harm from dilution, and Riya Chemy’s broader product range mitigating its loss. He rejected Hamdard as factually distinct, upholding settled law over Riya Chemy’s distinctions.

Final Decision: On November 11, 2022, The court granted Interim Application (L) No. 15502 of 2021, issuing injunctions restraining Riya Chemy from using "R-SEAL," its labels, taglines, and trade dress, pending suit disposal. The relief barred infringement of Pidilite’s trade marks (Nos. 282168, etc.), copyright in "M-SEAL" labels, and passing off, with no costs ordered.

Law Settled in This Case:The ruling reinforced that prior use with goodwill transcends assignment dates, disclaimers do not negate whole-mark protection, and fraudulent registrations can be challenged interimly. It affirmed that generic claims require extensive third-party evidence, estoppel applies to contradictory stances, and trade dress copying constitutes passing off, prioritizing consumer perception and statutory rights over minor differences.

Case Title: Pidilite Industries Limited Vs. Riya Chemy:Date of Order: November 11, 2022:Case No.: Interim Application (L) No. 15502 of 2021 in Commercial IP Suit No. 147 of 2022:Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction:Name of Judge: Justice R.I. Chagla

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