Maulana Arshad Madani Vs Union of India

Cinema, Censorship, and Communal Harmony

Introduction:The case of Maulana Arshad Madani vs Union of India & Ors, decided by the Delhi High Court on 10th July 2025, delves into the complex intersection between freedom of expression, public order, and the regulatory mechanisms governing film certification in India. This Public Interest Litigation (PIL) challenged the certification of the film “Udaipur Files” by the Central Board of Film Certification (CBFC) under the Cinematograph Act, 1952. The petitioner contended that the film promoted communal disharmony and vilification of a specific community, thereby violating statutory principles and constitutional values. The case raises important questions about the limits of creative freedom, the regulatory framework for film certification, and the remedies available to an aggrieved party post-certification.

Factual Background:The petitioner, Maulana Arshad Madani, approached the Delhi High Court asserting that the film “Udaipur Files” was granted certification for public exhibition by the CBFC on 20th June 2025. Following the certification, the producers of the film released its teaser/trailer on social media platforms on 26th June 2025. The teaser contained several portions that were allegedly not certified or were part of the scenes directed to be excised by the CBFC. This prompted the CBFC to issue a Show Cause Notice to the producer on 1st July 2025, citing violation of Rule 27 of the Cinematograph (Certification) Rules, 2024. The producer responded to the notice on 2nd July 2025, admitting that an uncensored teaser was uploaded due to contractual obligations and promotional commitments.

The petitioner argued that the film, even after the cuts ordered by the CBFC, continued to depict a particular religious community in a negative and violent light, suggesting their involvement in terrorist activities and communal violence. The petitioner alleged that this portrayal could incite hatred, disrupt public order, and compromise communal harmony. The grievance was not limited to the teaser but extended to the entire thematic presentation of the film, which, according to the petitioner, was designed to vilify an entire community.

Procedural Background:The writ petition, W.P.(C) 9362/2025, was filed before the Delhi High Court seeking a writ of certiorari to quash the film’s certification and to restrain its release. On 9th July 2025, the Court directed that a special screening of the film and its trailer be arranged for the counsels of all parties to enable them to make informed submissions. The screening was conducted, and both the petitioner and the respondents submitted notes to the Court summarizing their observations.

During the hearing, the respondents urged the Court to defer the matter, citing the pendency of a writ petition before the Hon’ble Supreme Court under Article 32 of the Constitution of India, where similar issues were allegedly raised. The respondents also referred to media reports suggesting that the Supreme Court had permitted the film’s release. However, the petitioner contested this by pointing out that the Supreme Court merely declined to grant an urgent hearing and no written order permitting release was passed. The Delhi High Court rejected the request to defer the proceedings, noting the absence of any binding order from the Supreme Court staying the proceedings or directing the release of the film.

Core Dispute:The central issue before the Court was whether the certification granted by the CBFC to the film “Udaipur Files” violated the principles enshrined in Section 5B of the Cinematograph Act, 1952, and the statutory guidelines notified by the Ministry of Information and Broadcasting on 6th December 1991. The petitioner contended that the film propagated communal hatred and could incite violence, making its release a threat to public order and contrary to the constitutional mandate of promoting fraternity and unity. The respondents, on the other hand, maintained that the CBFC, comprising experts in film making, had already directed 55 cuts to address concerns and that the film, in its certified form, did not warrant judicial interference.

Discussion on Judgments:The respondents relied on several precedents to argue against judicial interference in matters of film certification. The case of S. Rangarajan v. P. Jagjivan Ram, (1989) 2 SCC 574, was cited to emphasize the principle that freedom of expression cannot be suppressed unless the situation created by such expression is bound to lead to public disorder, and even then, the anticipated danger must not be remote or conjectural.

In Prakash Jha Productions & Anr. v. Union of India, (2011) 8 SCC 372, the Supreme Court held that once a film is certified by the CBFC, interference by courts should be limited and must consider the expertise of the Board in matters of art and expression.

The decision in Viacom 18 Media Pvt. Ltd. & Others v. Union of India & Ors., (2018) 1 SCC 761, reiterated the principle that public exhibition of certified films cannot be obstructed except under extraordinary circumstances or unless the certification is stayed or set aside by a competent authority.

The petitioner, however, relied on Amish Devgan v. Union of India, (2021) 1 SCC 1, where the Supreme Court distinguished between hate speech and free speech, holding that the constitutional protection under Article 19(1)(a) does not extend to expressions that incite violence or hatred against a community.

The respondents also referred to the Bombay High Court decision in Hiten Dhirajlal Mehta v. Bhansali Productions, 2022 SCC OnLine Bom 372, where it was held that once a film is certified, the appropriate remedy lies either in a challenge under Article 226 or by approaching the Central Government under Section 6 of the Cinematograph Act. The Court in that case discouraged any attempt by private individuals or groups to obstruct the release of certified films through extra-legal measures.

Reasoning and Analysis of the Judge:The Division Bench of the Delhi High Court analyzed the statutory scheme of the Cinematograph Act, 1952. The Court noted that Section 5A empowers the CBFC to grant certification, while Section 5B lays down prohibitions where certification is not permissible, including instances where a film may threaten public order, incite an offence, or defame a particular group.

The Court emphasized that the guidelines issued by the Government of India on 6th December 1991 are binding on the CBFC and must be scrupulously followed. These guidelines require the Board to ensure that films do not contain content that vilifies a community, promotes communal hatred, or offends human sensibilities.

The Bench also discussed the scope of Section 6 of the Cinematograph Act, 1952, particularly after its amendment in 2023. The amended provision empowers the Central Government to suspend or revoke a film’s certification, declare it uncertified, or alter its certification category. The Court observed that although the phrase “of its own motion” was omitted in the amended Section 6, the Central Government could still exercise revisional jurisdiction both suo motu and upon receiving complaints from aggrieved persons.

Taking note of the statutory remedies available under Section 6, the Court held that the petitioner ought to have first approached the Central Government before invoking the writ jurisdiction of the High Court. However, considering the seriousness of the allegations regarding potential communal disharmony, the Court permitted the petitioner to approach the Central Government under Section 6 within a stipulated timeline.

The Court acknowledged the petitioner’s argument that the overall thematic expression of the film, despite the cuts, was likely to incite hatred and violate the guidelines issued under the Act. However, since the statutory framework provided an alternative remedy with adequate powers vested in the Central Government, the Court decided not to adjudicate the merits directly at this stage.

Final Decision:The Delhi High Court disposed of the writ petition with the direction that the petitioner may approach the Central Government by filing a revision under Section 6 of the Cinematograph Act, 1952, by 14th July 2025. The Court further directed that if the petitioner makes an application for interim relief, including the suspension of the film’s exhibition, the Central Government shall decide the same within one week after giving an opportunity of hearing to the producer of the film.

As an interim measure, the Court stayed the release of the film “Udaipur Files” until the Central Government decides on the application for interim relief. The Court also noted the pending action by the CBFC against the producer for violating Rule 27 of the Cinematograph (Certification) Rules, 2024, by releasing an uncertified teaser and directed that appropriate legal action in that regard be taken as per law.

Law Settled in This Case:This case reinforces the principle that judicial review of CBFC certification is available under Article 226 of the Constitution, but where statutory remedies exist, such as revision under Section 6 of the Cinematograph Act, they must ordinarily be exhausted first. The judgment clarifies that the Central Government retains revisional powers even after the 2023 amendment of Section 6, which can be invoked by an aggrieved party post-certification.

The case also reiterates the binding nature of the 1991 guidelines on film certification and underscores the obligation of the CBFC to evaluate the film in its entirety, considering its overall impact on public order, morality, and communal harmony. Additionally, it highlights the delicate balance between freedom of expression and protection against hate speech in the context of artistic works like films

Case Title: Maulana Arshad Madani Vs Union of India & Ors.

Date of Order: 10.07.2025

Case Number: W.P.(C) 9362/2025

Neutral Citation:2025:DHC:5466-DB

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon'ble the Chief Justice Devendra Kumar Upadhyaya and Hon'ble Mr. Justice Anish Dayal

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

LT Foods Limited Vs Murli Flour Mills Pvt. Ltd.

LT Foods Limited Vs Murli Flour Mills Pvt. Ltd.:CS(COMM) 574/2025:09.07.2025:High Court of Delhi : Hon'ble Mr. Justice Amit Bansal

In this case, the plaintiff, LT Foods Limited, approached the Delhi High Court seeking protection of its registered trademarks ‘DAAWAT’ and ‘DAWAT’, alleging infringement and passing off by the defendant, Murli Flour Mills Pvt. Ltd. The plaintiff is a leading global rice and rice-based food products manufacturer with more than 70 years of presence in the market. The marks in question were originally adopted by the plaintiff's predecessor, Lal Chand Tirath Ram Rice Mills, in 1985. LT Foods Limited took over this business in 1999 and claims continuous use of the marks since then. The plaintiff holds multiple trademark registrations for ‘DAAWAT’ and ‘DAWAT’, including Indian registrations dating back to 1987 and international registrations.

The core dispute arose when LT Foods discovered in May 2025 that Murli Flour Mills was selling ‘Jeera’ (cumin seeds) under the mark ‘DAWAT’. A cease and desist notice was sent to the defendant on 10th May 2025, to which the defendant responded on 15th May 2025, refusing to stop the use of the mark and asserting that their goods were different from those of the plaintiff. LT Foods alleged that the defendant’s adoption of an identical mark in a similar curvaceous style was intended to create confusion among consumers and wrongfully benefit from the goodwill associated with the plaintiff’s brand.

The Court observed that the plaintiff’s trademarks had already been recognized as well-known by a coordinate bench in 2022 and declared well-known by the Registrar of Trademarks in 2024. A prima facie case of trademark infringement and passing off was made out against the defendant. Since the defendant failed to appear despite service, the Court proceeded to consider the interim relief.

The Court held that there was clear evidence of the defendant copying the plaintiff’s mark in both text and stylization, leading to a likelihood of consumer confusion. The balance of convenience favoured the plaintiff, and irreparable injury would result if the defendant were allowed to continue using the impugned mark. Public interest was also implicated, as consumers might be misled into believing there was a connection between the defendant’s goods and the plaintiff’s products.

Consequently, the Court issued an interim injunction restraining Murli Flour Mills Pvt. Ltd., along with its directors, officers, agents, vendors, and dealers, from producing, selling, advertising, promoting, or exporting any product bearing the mark ‘DAWAT’ or any deceptively similar variant. 

Inder Raj Sahni Vs Neha Herbal

Introduction: This case study examines a trademark dispute adjudicated by the High Court of Delhi, centered on the use of the trademark "NEHA" by two entities operating in the personal care sector. The plaintiffs, Vikas Gupta and Neha Herbals Pvt. Ltd., claimed prior adoption and registration of the "NEHA" mark for henna and allied herbal products, alleging that the defendant, Inder Raj Sahni of M/s Sahni Cosmetics, infringed their trademark and engaged in passing off by using the same mark for face creams. The defendant countered with claims of prior use since 1990 and sought cancellation of the plaintiffs’ trademark registrations.

Detailed Factual Background

The dispute revolves around the trademark "NEHA," a common Indian forename, used by both parties in the personal care industry. Vikas Gupta, Plaintiff No. 1, claimed to have adopted the mark in 1992, inspired by his sister’s name, for henna (mehandi) powder and ubtan (face packs) under his proprietorship, M/s Neha Enterprises. In 2007, he incorporated Neha Herbals Pvt. Ltd. (Plaintiff No. 2), which took over the business in 2012 via an assignment deed dated May 1, 2012. The plaintiffs expanded their product line to include mehandi cones, hair dyes, and other herbal products, securing trademark registrations for "NEHA" (Registration No. 1198061, dated May 12, 2003) and "NEHA HERBALS" (Registration No. 3752588, dated February 13, 2018) in Class 3, covering henna and related goods. They also applied for a device mark "Neha" (Application No. 4182573, dated May 21, 2019) for creams and other cosmetics on a proposed-to-be-used basis, which remained pending.

The defendant, Inder Raj Sahni, sole proprietor of M/s Sahni Cosmetics, claimed to have adopted the "NEHA" mark in 1990 for creams, asserting honest and concurrent use. He supported his claim with a 1990 manufacturing license and invoices demonstrating continuous use. The defendant’s attempts to register the "NEHA" mark (Applications No. 1462077 and 2153566) were refused or abandoned due to objections under Sections 9 and 11 of the Trade Marks Act, 1999, and non-compliance with examination reports. The plaintiffs initiated legal action in May 2019 after discovering cold creams bearing the "NEHA" mark sold by a retailer in Sadar Bazar, Delhi, alleging trademark infringement and passing off. The defendant countered that the plaintiffs were aware of his use since 2003 through a common wholesaler and accused them of delay and acquiescence, arguing that their suit was an opportunistic attempt to enter the creams market.

Detailed Procedural Background: The dispute unfolded through multiple legal proceedings, which were eventually consolidated. The plaintiffs filed a suit, CS(COMM) 1833/2019 (later renumbered as CS(COMM) 207/2023), before the District Court, seeking a permanent injunction against the defendant’s use of the "NEHA" mark, along with reliefs for passing off, delivery up, and rendition of accounts. On August 23, 2019, an Additional District Judge granted an ex-parte ad interim injunction, which was vacated on November 1, 2019, after the defendant’s application. The plaintiffs’ appeal (FAO (COMM) 144/2021) and review petition (No. 176/2021) were dismissed by the Delhi High Court on October 4, 2021, and December 16, 2021, respectively. The plaintiffs then approached the Supreme Court via SLP(C) No. 2493-2494/2022, which, on February 28, 2022 (amended April 4, 2022), directed the Trial Court to expedite the suit within 12 months, uninfluenced by prior interim orders.

Parallelly, the defendant filed two cancellation petitions, C.O. (COMM.IPD-TM) 355/2021 and C.O. (COMM.IPD-TM) 455/2022, before the Intellectual Property Appellate Board (IPAB), seeking removal of the plaintiffs’ "NEHA" and "NEHA HERBALS" registrations. Following the IPAB’s abolition in April 2021, these petitions were transferred to the Delhi High Court. On March 22, 2023, the High Court, with the parties’ consent, transferred the suit to itself and tagged it with the cancellation petitions, agreeing that evidence in the suit would apply to the cancellation proceedings. On April 17, 2023, the Supreme Court noted the transfer and directed the High Court to dispose of all proceedings within six months. On January 3, 2024, the parties agreed to hear the suit and cancellation petitions together, leading to a consolidated hearing and a common judgment delivered on May 19, 2025.

Issues Involved in the Case: The court framed the following issues on September 21, 2020, to resolve the dispute: Whether Plaintiff No. 1 is the proprietor of the trademark "NEHA" for the goods mentioned in the plaint? Whether the plaintiff has been in continuous use of the mark since 1992 or any other date thereafter? Whether the defendant is a prior user and adopter of the trademark "NEHA," and if so, its effect? Whether the plaintiff is guilty of concealment and suppression as alleged by the defendant? Whether the suit is barred by delay, laches, and acquiescence? Whether the plaintiff’s registration of the trademark "NEHA" is invalid and deserves cancellation? Whether the defendant’s use of the "NEHA" mark is likely to cause confusion or deception, leading to passing off? Whether the defendant’s use of the "NEHA" mark infringes the plaintiff’s registered trademark?

Plaintiffs’ Submissions: The plaintiffs argued that Vikas Gupta adopted the "NEHA" mark in 1992 and used it continuously for henna and allied products, establishing proprietary rights. They relied on trademark registrations (Nos. 1198061 and 3752588) and an assignment deed dated May 21, 2019, transferring rights from Neha Herbals Pvt. Ltd. to Vikas Gupta, followed by a license back to the company. The plaintiffs contended that their prior use and registration conferred exclusive rights under Section 28 of the Trade Marks Act, 1999, and that the defendant’s use of "NEHA" for creams infringed their mark under Sections 29(2)(a) and 29(4). They argued that the similarity of goods (both in Class 3), overlapping trade channels, and consumer base created a likelihood of confusion, supporting their passing off claim. The plaintiffs dismissed the defendant’s prior use claim, noting his failed registration attempts and lack of registration, and argued that their delay in filing the suit was due to discovering the defendant’s use only in May 2019. They opposed the cancellation petitions, asserting the validity of their registrations and continuous use since 1992.

Defendant’s Submissions: The defendant claimed prior adoption of the "NEHA" mark in 1990 for creams, supported by a manufacturing license and invoices. He invoked honest concurrent use and prior use under trademark law, arguing that his long-standing use predated the plaintiffs’ adoption. The defendant challenged the plaintiffs’ continuous use, alleging non-compliance with the Drugs and Cosmetics Act, 1940, for lacking a manufacturing license from 1992 to 2010. He accused the plaintiffs of acquiescence, claiming they were aware of his use since 2003 through a common wholesaler but initiated litigation only in 2019 to opportunistically enter the creams market. The defendant questioned the plaintiffs’ proprietorship, citing the timing and nominal consideration (INR 1,000) of the 2019 assignment deed, and sought cancellation of the plaintiffs’ registrations under Sections 47 and 57, arguing non-use, false claims, and lack of distinctiveness of the mark "NEHA" as a common name.

Detailed Discussion on Judgments Cited by Parties and Their Context: The court relied on several precedents to adjudicate the issues, each cited in specific contexts to elucidate trademark principles:

1. Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd., (2018) 9 SCC 183: Cited in the context of Issue No. 8 (infringement), this Supreme Court decision addressed the use of the common name "NANDHINI"/"NANDINI" for different goods within the same class. The court held that registration in one class does not confer exclusive rights over all goods in that class, especially for non-distinctive marks. In this case, it supported the finding that the plaintiffs’ registration for henna did not extend to creams, given the functional dissimilarity and lack of evidence of brand spillover.
2. Osram Gesellschaft Mit Beschrankter Haftung v. Shyam Sunder, 2002 SCC Online Del 423:  Delhi High Court decision clarified that a registered trademark holder cannot claim monopoly over all goods in a class based on a single product. The court applied this to hold that the plaintiffs’ goodwill in henna did not extend to creams, as the goods were distinct in function and trade channels.
3. Renessaince Hotel Holdings Incorporated v. B. Vijaya Sai, 2001 SCC Online Del 1051: For Section 29(4) infringement, this case outlined the three cumulative requirements for infringement involving dissimilar goods: identical/similar mark, reputation in India, and unfair advantage or detriment. The court found that the plaintiffs failed to prove reputation in creams, rendering Section 29(4) inapplicable.
4. Reckitt & Colman Products Ltd. v. Borden Inc., 1990 (1) All ER 873 (HL): Referenced in Issue No. 7 (passing off), this House of Lords decision established the classic trinity test for passing off: goodwill, misrepresentation, and damage. The court applied this test to assess whether the defendant’s use of "NEHA" for creams misrepresented an association with the plaintiffs’ henna products, concluding it did not.
5. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73: Supreme Court case provided factors for determining deceptive similarity in passing off, emphasizing the nature, character, and trade channels of goods. The court used this to evaluate the likelihood of confusion, finding that the distinct packaging and product functions negated confusion.
6. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 (1) SCR 737: Supreme Court decision distinguished trademark infringement (statutory) from passing off (common law), emphasizing that passing off protects goodwill from misrepresentation. The court applied this to assess the plaintiffs’ passing off claim, focusing on misrepresentation.
7. Marico Ltd. v. Agro Tech Foods Ltd., 2010 SCC Online Del 3806:  Delhi High Court decision held that overlapping trade channels and consumer bases alone do not establish confusion if packaging is distinct. The court used this to conclude that the plaintiffs’ green packaging for henna versus the defendant’s distinct cream packaging reduced confusion.
8. Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC Online Del 1005: Delhi High Court case emphasized that passing off depends on overall presentation, not exact similarity. The court applied this to find that the distinct trade dress of the parties’ products negated misrepresentation.
9. People Interactive (India) Pvt. Ltd. v. Vivek Pahwa, 2016 SCC Online Bom 7351: Bombay High Court decision held that common names or dictionary words have a narrower scope of protection. The court used this to reason that "NEHA," a common forename, required strong secondary meaning for broad protection, which the plaintiffs failed to prove.

Detailed Reasoning and Analysis of Judge: On Issue No. 1 (proprietorship), the court confirmed Vikas Gupta’s proprietorship of the "NEHA" and "NEHA HERBALS" marks based on registrations (Nos. 1198061 and 3752588) and assignment deeds, supported by certified records (Ex. PW-3/1 and PW-3/2). The defendant’s challenge to the 2019 assignment’s timing and nominal consideration (INR 1,000) was dismissed, as the court found the transaction valid despite Vikas Gupta’s inability to recall board resolution details, deeming such questions relevant but not fatal.

For Issue No. 2 (continuous use), the court found that the plaintiffs established use since 1992 through invoices, advertisements, and witness testimonies, rejecting the defendant’s claim of non-compliance with the Drugs and Cosmetics Act due to insufficient evidence. On Issue No. 3 (defendant’s prior use), the court held that the defendant failed to prove use since 1990, as his invoices and license lacked specificity, and his registration attempts were unsuccessful. Issue No. 4 (concealment) was decided against the defendant, as no material misstatement by the plaintiffs was proven. Issue No. 5 (delay and acquiescence) was also rejected, as the court found no evidence that the plaintiffs were aware of the defendant’s use before 2019, negating acquiescence.

On Issue No. 6 (validity of registration), the court upheld the plaintiffs’ registrations, finding no grounds under Sections 47 (non-use) or 57 (rectification) for cancellation, as the plaintiffs demonstrated continuous use and no false claims. Issue No. 8 (infringement) was decided against the plaintiffs. The court analyzed Section 29(2)(a), which requires similarity of goods and likelihood of confusion, and found that henna and creams were functionally dissimilar despite being in Class 3. Citing Nandhini Deluxe and Osram, the court held that registration does not confer class-wide monopoly, and the plaintiffs’ goodwill was limited to henna. For Section 29(4) (dissimilar goods), the court, referencing Renessaince Hotel, found no evidence of the plaintiffs’ reputation in creams or detriment to their mark, rendering the claim untenable.

Issue No. 7 (passing off) was central to the plaintiffs’ case. Applying the trinity test from Reckitt & Colman, the court assessed goodwill, misrepresentation, and damage. The plaintiffs established goodwill in henna but not in creams, as their application for creams was proposed-to-be-used, and no evidence showed brand extension. On misrepresentation, the court, citing Cadila, Marico, and Colgate, found no likelihood of confusion due to distinct packaging (green for plaintiffs’ henna, different colors for defendant’s creams) and functional differences. The court noted the defendant’s admission of overlapping trade channels but held it insufficient without evidence of confusion, such as market surveys. Referencing People Interactive, the court emphasized that "NEHA," a common name, required secondary meaning for broad protection, which was absent. Thus, no misrepresentation or damage was proven, defeating the passing off claim.

Final Decision: The court dismissed the plaintiffs’ suit (CS(COMM) 207/2023), finding no trademark infringement or passing off by the defendant’s use of "NEHA" for creams. The defendant’s cancellation petitions (C.O. (COMM.IPD-TM) 355/2021 and 455/2022) were also dismissed, upholding the plaintiffs’ registrations. No costs were awarded, and a decree was directed accordingly.

Law Settled in the Case: This case reinforces several trademark law principles:

1. Scope of Registered Marks: Registration in a class does not confer exclusive rights over all goods in that class, especially for common names (Nandhini Deluxe, Osram).
2. Functional Dissimilarity: Goods within the same class may be dissimilar in function, negating infringement under Section 29(2)(a) unless confusion is proven.
3. Section 29(4) Infringement: Claims for dissimilar goods require proof of reputation, unfair advantage, or detriment, with a high evidentiary threshold (Renessaince Hotel).
4. Passing Off Requirements: A passing off claim requires goodwill, misrepresentation, and damage. Common names need strong secondary meaning for broad protection (Reckitt & Colman, People Interactive).
5. Distinct Packaging: Distinct trade dress and packaging can negate confusion despite overlapping trade channels (Marico, Colgate).
6. Cancellation of Registration: Cancellation under Sections 47 or 57 requires clear evidence of non-use or invalidity, which the defendant failed to provide.
7. Prior Use and Acquiescence: Claims of prior use must be substantiated with cogent evidence, and acquiescence requires proof of knowledge and inaction.

Case Title: Inder Raj Sahni Vs. Neha Herbals Pvt. Ltd. :Date of Order: May 19, 2025:Case No.: C.O. (COMM.IPD-TM) 355/2021, C.O. (COMM.IPD-TM) 455/2022, CS(COMM) 207/2023: Neutral Citation: 2025:5HC:4037:High Court of Delhi: Hon’ble Mr. Justice Sanjeev Narula

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

Mold Tek Packaging Limited vs Pronton Plast Pack Pvt. Ltd.

Product-to-Patent Mapping and Patent Validity

Introduction: In the domain of container packaging, the protection of tamper-evident and tamper-proof technologies has become crucial, particularly for food-grade plastic containers. The case of Mold Tek Packaging Limited vs Pronton Plast Pack Pvt. Ltd. examines the nuanced issues of patent infringement, validity, prior art relevance, and the threshold for granting interim relief in intellectual property disputes. This case also sheds light on the standards governing the exercise of equitable jurisdiction in patent disputes.

Factual Background: Mold Tek Packaging Limited is engaged in the manufacture and sale of plastic packaging containers and holds two Indian patents: IN 401417 and IN 298724. Patent IN 401417 relates to a "Tamper-Evident Leak Proof Pail Closure System," which consists of a lid that incorporates lugs along its periphery. These lugs allow the lid to be affixed to a container in a manner that prevents its removal without breaking a tear band, thereby making any tampering evident. Patent IN 298724 relates to "A Tamper-Proof Lid Having Spout for Containers and Process for Its Manufacture." The innovation in IN 298724 includes a spout that allows partial discharge of contents without removing the lid entirely. Both patents are intended for containers used in the storage and transport of food items.

Mold Tek alleged that Pronton Plast Pack Pvt. Ltd. was manufacturing and selling products that were functionally and structurally similar to Mold Tek's patented lids, thus infringing both patents. Photographic comparisons were made, and physical samples were presented in court to demonstrate the similarity between the products.

Procedural Background: Mold Tek instituted CS (Comm) 668/2023 before the learned District Judge (Commercial), Patiala House Courts, seeking an injunction against Pronton Plast for infringing its patents. Along with the suit, Mold Tek filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking ad interim relief. On 20th December 2023, the Commercial Court granted an ex parte ad interim injunction, restraining Pronton Plast from manufacturing, marketing, selling, or dealing with any products that allegedly infringed Mold Tek's patents IN 401417 and IN 298724.

Pronton Plast responded by filing an application under Order XXXIX Rule 4 CPC to vacate the injunction, contending that their product was significantly different and did not infringe the suit patents. They also argued that Mold Tek's patents lacked novelty due to prior art disclosures, and there was suppression of material facts regarding earlier patents, particularly IN 276, which had lapsed.

By order dated 2nd May 2024, the learned Commercial Court vacated the interim injunction, accepting Pronton Plast's arguments about prior art and serious triable issues concerning the validity of the patents. Mold Tek then filed an appeal under Section 13A of the Commercial Courts Act read with Order XLIII of the CPC, challenging the order dated 2nd May 2024 before the Division Bench of the Delhi High Court.

Core Dispute: The central issue in this case is twofold: first, whether Pronton Plast's products infringe Mold Tek's patents IN 401417 and IN 298724; and second, whether the respondent has raised a credible challenge to the validity of Mold Tek’s patents sufficient to warrant vacation of the interim injunction? The dispute also involves procedural questions concerning the standard of review applicable in interim patent litigation, the requirement for product-to-patent mapping versus product-to-product comparison, and the burden of proof in cases where prior art is cited as a defence.

Discussion on Judgments: Several judicial precedents were cited by the parties to support their respective claims.

The respondent relied heavily on F. Hoffmann-La Roche Ltd. v. Cipla Ltd., ILR 2009 Supp (2) Del 551, where the Delhi High Court held that in patent infringement suits, the tenability of the defendant's challenge to patent validity is relevant at the interlocutory stage. If a credible challenge to the validity is raised, interim injunctions may be refused.

The case of Glaverbel S.A. v. Dave Rose & Ors., 2010 SCC OnLine Del 308, was cited to emphasize that where there is a disputed question of fact relating to infringement, interim relief should not be granted, and such questions should be adjudicated at trial.

In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, the Supreme Court held that to be patentable, an invention must involve an inventive step beyond mere workshop improvement or a simple combination of known elements. This judgment was cited to support the argument that Mold Tek's patents were mere improvements and lacked the required novelty.

The issue of clean hands and suppression of material facts was highlighted through S.P. Chengalvaraya Naidu v. Jagannath, AIR 1994 SC 853, where the Supreme Court held that a person approaching the court must do so with full disclosure of all material facts.

In Aura Synergy India Ltd. v. New Age False Ceiling Co. Pvt. Ltd., (2016) 65 PTC 483, and its subsequent approval by the Division Bench in (2017) 72 PTC 95 (DB), the Delhi High Court emphasized that suppression of material facts can disqualify a plaintiff from seeking interim relief in intellectual property disputes.

The respondent also referred to Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545, where the Supreme Court held that equitable relief like injunction is discretionary, and the conduct of the party seeking such relief is material.

For assessing infringement, the appellant relied on Sotefin S.A. v. Indraprastha Cancer Society, 2014 SCC OnLine Del 6649, which clarified that patent infringement analysis requires comparing the defendant's product with the claims of the patent, not merely the products in question.

The general principles regarding the credible challenge standard were discussed in Strix Ltd. v. Maharaja Appliances Ltd., 2009 SCC OnLine Del 2825, where the Delhi High Court held that a defendant must produce some acceptable scientific material supported by expert evidence to make out a credible challenge to a patent's validity.

Additionally, the appellant cited Kudos Pharmaceuticals Ltd. v. Natco Pharma Ltd., 2024 SCC OnLine Del 1439, to argue that a credible challenge must be more than a mere possibility of invalidity; it must present a prima facie case that would merit favourable consideration at trial.

Reasoning and Analysis of the Judge: The Division Bench of the Delhi High Court found that the Commercial Court's order dated 2nd May 2024 suffered from significant legal infirmities. The Court held that the Commercial Court failed to properly analyze the issue of infringement. The correct method of analysis requires a product-to-patent mapping, wherein the features of the allegedly infringing product are compared with the claims in the suit patents, not merely with the plaintiff’s product. The Commercial Court’s approach of comparing products without reference to patent claims was held to be erroneous.

The Court further held that in patent litigation, if the defendant raises a defence under Section 107 of the Patents Act, the burden lies on the defendant to establish a credible challenge to the patent's validity. This onus does not shift to the plaintiff merely because the plaintiff describes its invention as an improvement over prior art. The Commercial Court’s reasoning that Mold Tek bore the burden to establish novelty before the trial was fundamentally flawed.

Regarding prior art, the Court noted that the Commercial Court did not conduct a proper analysis of whether the cited prior arts anticipated or rendered the suit patents obvious. Specifically, while Pronton Plast cited IN 276 and IN 288127 as prior arts, the Commercial Court did not perform a claim-by-claim analysis to determine whether the suit patents were actually anticipated or obvious.

The Division Bench also rejected the respondent’s submission that the initial ex parte injunction should be revisited in this appeal, holding that since the respondent had chosen to proceed under Order XXXIX Rule 4 CPC rather than file an appeal against the ex parte injunction, the High Court could not review the 20th December 2023 order in this appeal.

Final Decision: The High Court allowed the appeal and set aside the order dated 2nd May 2024 passed by the learned Commercial Court. The matter was remanded back for de novo consideration of the application under Order XXXIX Rule 4 CPC. The Commercial Court was directed to reconsider the issues of infringement and validity challenge afresh, applying correct legal principles, particularly the product-to-patent comparison method and the proper allocation of burden of proof.

Law Settled in This Case: This case reaffirms that in patent infringement suits, the test for infringement requires a product-to-patent mapping, not product-to-product comparison. The burden of proof in establishing a credible challenge to a patent’s validity under Section 107 of the Patents Act lies entirely on the defendant. The mere existence of prior art is not sufficient to defeat interim relief unless it is demonstrated that the patented invention lacks novelty or is obvious in light of the prior art. Additionally, procedural fairness and equitable considerations must be balanced with substantive patent law principles when courts consider interim injunctions in intellectual property disputes.

Case Title: Mold Tek Packaging Limited vs Pronton Plast Pack Pvt. Ltd.

Date of Order: 11th July 2025

Case Number: FAO (COMM) 114/2024

Neutral Citation: 2025:DHC:5549:DB

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice C. Hari Shankar & 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

Mr. Piruz Khambatta & Anr. Vs. Franchise India Brands Limited

Case Title: Mr. Piruz Khambatta & Anr. Vs. Franchise India Brands Limited & Anr.:Date of Order: 9th May 2025:Case Number: CS(COMM) 454/2025:High Court of Delhi: Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

The plaintiffs, Mr. Piruz Khambatta and the associated company, are the owners of the registered trade mark "RASNA" and related artistic works. They alleged that the defendants, Franchise India Brands Limited and its subsidiary M/s. Ichakdana Food Services LLP, engaged in infringing upon their registered trademarks by operating "Rasna Buzz" outlets and promoting infringing content on social media, despite being asked to cease such activities. The defendants had previously entered into licensing agreements and had undertaken to open numerous outlets but continued infringing activities.

Procedural Details:

• The plaintiffs filed a suit claiming infringement of trademarks and seeking permanent injunction.
• They moved an application for ex-parte interim injunction and exemption from pre-litigation mediation.
• The court considered various pending procedural applications regarding court fees, filing additional documents, and extending timelines.
• The court granted exemption from pre-litigation mediation given relevant legal precedents.
• The court directed the defendants to respond via notices, with future dates scheduled for submissions and hearings.

Issues:

• Whether the defendants have infringed upon the plaintiffs' registered trademarks.
• Whether an interim injunction should be granted to prevent further infringement.
• Whether the plaintiffs are exempted from pre-litigation mediation as per statutory and judicial precedents.

Decision:

The Court, after hearing the parties and considering the legal provisions and precedents,:

• Granted the plaintiff ex parte injunction in favour of the plaintiff.

Registrar of Trade Marks Vs. Hamdard National Foundation

From Dictionary to Distinctiveness

Introduction: In the annals of Indian trademark law, few cases illustrate the delicate balance between descriptive words and distinctive marks as vividly as Registrar of Trade Marks v. Hamdard National Foundation (India). Decided on March 4, 1980, by the Delhi High Court, this dispute pits the Registrar of Trade Marks against a renowned manufacturer of medicinal preparations over the registrability of the word "SAFI." At its heart, the case explores whether a term with potential descriptive undertones can transcend its dictionary meaning to become a badge of origin, capable of distinguishing one trader’s goods from another. The judgment not only resolves a specific contention but also enriches the jurisprudence surrounding the Trade and Merchandise Marks Act, 1958, offering a nuanced perspective on the interplay between inherent distinctiveness and acquired secondary meaning.

Detailed Factual Background:Hamdard National Foundation (India), the respondent, is a well-established entity known for producing medicinal preparations, including "SAFI," a concoction marketed for blood purification. The origins of "SAFI" as a trademark trace back over two decades prior to the litigation, with continuous use cementing its association with Hamdard’s products. The word "SAFI," derived from Urdu and Persian, carries multiple meanings in dictionaries—ranging from "pure," "fine," and "clear" to a "cloth used for straining beverages and medicines" or even a "duster." Hamdard sought to register "SAFI" as a trademark under Class 5 of the Fourth Schedule of the Trade and Merchandise Marks Rules, 1959, which encompasses pharmaceutical and medicinal preparations. Initially applying for registration in Part A of the Register, Hamdard later amended its request to Part B, reflecting a strategic shift in its legal approach.

The Registrar of Trade Marks, tasked with maintaining the integrity of the trademark register, opposed this application. The Registrar argued that "SAFI" was a descriptive term, directly referencing the character or quality of Hamdard’s blood-purifying preparation, and thus lacked the inherent capability to distinguish the respondent’s goods from those of other traders. This stance was grounded in the belief that a word meaning "pure" or "clear" inherently described the medicinal product’s purported effect, rendering it ineligible for registration under the Act.

Detailed Procedural Background

Hamdard’s journey to secure trademark registration began with an application to the Registrar of Trade Marks under the Trade and Merchandise Marks Act, 1958. The Registrar rejected the application, citing Section 9, which governs the requisites for registration in Parts A and B of the Register. Aggrieved, Hamdard appealed to the Delhi High Court, where a learned Single Judge overturned the Registrar’s decision. The Single Judge held that "SAFI" was not descriptive in common parlance and granted registration in Part B. Dissatisfied with this outcome, the Registrar escalated the matter to a Division Bench of the Delhi High Court, comprising Justice Rajindar Sachar and a companion judge. On March 4, 1980, after hearing arguments, the Division Bench dismissed the appeal, affirming the Single Judge’s order, albeit on different reasoning, and announced its decision with detailed reasons to follow.

Issues Involved in the Case: The case hinges on several pivotal issues. First, whether the word "SAFI" is descriptive of the character or quality of Hamdard’s medicinal preparation, thereby falling under the prohibition of Section 9(1)(d) for Part A registration. Second, whether "SAFI" meets the criteria for registration in Part B under Section 9(4), which requires a mark to be distinctive or capable of distinguishing the applicant’s goods. Third, whether prolonged use of "SAFI" by Hamdard has imbued it with a secondary meaning, enabling it to distinguish Hamdard’s products from those of other traders despite any descriptive connotations. These questions test the boundaries of trademark law, balancing linguistic meaning against commercial reality.

Detailed Submission of Parties: The Registrar of Trade Marks, as appellant, contended that "SAFI" was inherently descriptive, directly alluding to the purity or clarity associated with Hamdard’s blood-purifying preparation. Relying on dictionary definitions—such as "pure," "fine," and "clear"—the Registrar argued that the term fell squarely within Section 9(1)(d)’s prohibition against marks with direct reference to goods’ character or quality. For Part B registration, the Registrar asserted that "SAFI" was not inherently capable of distinguishing Hamdard’s goods, interpreting Section 9(4) and (5) to require a mark free of descriptive baggage. The absence of evidence showing confusion or competing use did not sway the Registrar, who viewed descriptiveness as a fatal flaw.

Hamdard  countered that "SAFI" was not a common or descriptive term in everyday use. Citing diverse dictionary meanings—ranging from a straining cloth to a duster—Hamdard argued that "SAFI" lacked a singular, direct reference to the medicinal preparation’s quality or character. Unlike "SAFAI" or "SAF" (meaning "cleanliness" or "pure"), which Anand conceded would be descriptive, "SAFI" was portrayed as unusual and distinct. Hamdard emphasized its uninterrupted use of "SAFI" for over 20 years, asserting that this longevity established a secondary meaning, linking the mark exclusively to its products in trade circles. This, they argued, satisfied Section 9(4)’s requirement of being "capable of distinguishing," irrespective of inherent distinctiveness.

Detailed Discussion on Judgments Cited by Parties and Their Context:The Division Bench referenced In the Matter of an Application by J & P Coats Ltd. for Registration of Trade Mark [53 R.P.C. 355], a seminal English case from 1936, to anchor its analysis. In J & P Coats, the court held that a descriptive word could lose its primary meaning and acquire a secondary meaning through use, becoming registrable if it distinctly identifies a trader’s goods. At page 385, the court emphasized that registrability hinges on factual evidence of acquired distinctiveness, not merely the word’s descriptive nature. At page 384, it further clarified that words with direct reference to goods’ character could still qualify as trademarks if they signify a specific manufacturer to the trade or public. Hamdard leveraged this precedent to argue that "SAFI," despite possible descriptive roots, had evolved into a distinctive mark through decades of exclusive use.

The Registrar’s position implicitly challenged this view, suggesting that descriptiveness inherently precludes distinctiveness under Section 9. However, no specific counter-citations were noted in the judgment, indicating the Registrar relied on statutory interpretation rather than precedent. The Single Judge’s ruling, while not citing cases, aligned with J & P Coats by focusing on "SAFI"’s lack of common descriptive usage, though it framed the issue under Part A’s stricter standards.

Detailed Reasoning and Analysis of Judges: The Court , authoring the Division Bench’s opinion, adopted a pragmatic yet principled approach. The court sidestepped a definitive ruling on whether "SAFI" was descriptive under Section 9(1)(d), noting that the application concerned Part B registration, not Part A. For Part A, the negative mandate against descriptive marks was clear, but Part B’s criteria under Section 9(4) were more flexible—requiring only that a mark be distinctive or capable of distinguishing the applicant’s goods from others.

The Bench scrutinized "SAFI"’s linguistic profile, acknowledging its dictionary meanings of "pure," "fine," and "clear," which prima facie suggested descriptiveness, as the Single Judge had observed. However, alternative meanings (e.g., straining cloth, duster) diluted this inference, rendering "SAFI" less obviously tied to the medicinal preparation’s quality. The court expressed skepticism about Hamdard’s claim that "SAFI" was wholly unusual or unrelated to "SAFAI" or "SAF," but deemed this debate secondary to Part B’s requirements.

Turning to Section 9(5), the court evaluated "SAFI"’s inherent and acquired distinctiveness. Inherently, the Registrar deemed it incapable of distinguishing due to its descriptive leanings, but offered no reasoning beyond this assertion—a flaw the Bench criticized as legally unsupported. Drawing on J & P Coats, the court held that descriptiveness does not automatically bar registration; the key is whether evidence shows the mark has acquired a secondary meaning. Here, the Registrar’s own findings confirmed Hamdard’s continuous use of "SAFI" for over 20 years (by 1974, when the decision was made), with no evidence of competing use or dishonest intent. This uncontroverted fact established that "SAFI" had become synonymous with Hamdard’s medicinal preparation in trade circles, satisfying Section 9(5)(b)’s test of factual capability to distinguish.

The Bench distinguished its reasoning from the Single Judge, who focused on "SAFI"’s non-descriptive status under Part A standards. Instead, it rooted its conclusion in Part B’s broader scope, where acquired distinctiveness through use could override inherent descriptiveness. This approach underscored a fact-driven inquiry over rigid linguistic categorization, aligning with the Act’s intent to protect marks that function as source identifiers in commerce.

Final Decision:The Division Bench dismissed the Registrar’s appeal, upholding the Single Judge’s order to register "SAFI" in Part B of the Register. However, it reached this outcome through distinct reasoning, emphasizing acquired distinctiveness over the Single Judge’s focus on non-descriptiveness. No costs were awarded, reflecting a balanced resolution to the dispute.

Law Settled in This Case: The judgment clarifies that under the Trade and Merchandise Marks Act, 1958, a mark need not be inherently distinctive for Part B registration; it suffices if it is capable of distinguishing the applicant’s goods, as per Section 9(4) and (5). It establishes that descriptive words can acquire secondary meaning through prolonged, exclusive use, rendering them registrable if they factually distinguish one trader’s goods from others. The decision rejects the notion that descriptiveness inherently precludes distinctiveness, emphasizing evidence of trade association over dictionary definitions. This ruling reinforces a flexible, pragmatic approach to trademark registration, prioritizing commercial reality and consumer perception in Part B assessments.

Case Title: Registrar of Trade Marks Vs. Hamdard National Foundation (India):Date of Order: March 4, 1980:Citation: 1980 RLR 514, AIR 1980 Delhi 180, 17 (1980) DLT 521:Name of Court: High Court of Delhi:Name of Judge: Hon'ble Justice Shri Rajindar Sachar

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

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