Mongia Steel Limited Vs. Saluja Steel and Power Private Limited

Conditional Leave to Withdraw the Suit and Its Legal Consequences

Introduction:The case of Mongia Steel Limited Vs. Saluja Steel and Power Private Limited, decided by the High Court of Jharkhand at Ranchi on 17 July 2025, revolves around a trademark and copyright dispute that highlights the importance of procedural compliance, conditional withdrawal of suits, and the boundaries of initiating fresh litigation. This case underscores the judiciary’s emphasis on enforcing procedural rigour to prevent the misuse of legal processes and also addresses the limitation on reinserting causes of action that were previously abandoned. The decision also explores the intersection of intellectual property law with civil procedure, particularly in the context of claims for trademark and copyright infringement.

Factual Background:Mongia Steel Limited (formerly Mongia Hi-Tech Pvt. Ltd., later Mongia Steel Pvt. Ltd., and ultimately Mongia Steel Ltd.) is a well-established company engaged in the business of manufacturing and marketing various metal products, including TMT Bars, Joist, Channels, and related materials. Since its incorporation in 1995, the company claimed to have adopted and continuously used a series of trademarks and artistic works prominently featuring the word “MONGIA” and a photo device of its director, Mr. Gunwant Singh Mongia, colloquially referred to as the “Device of Sardarji”. The marks were used extensively in advertisements and had gained significant goodwill in the market.

In contrast, Saluja Steel and Power Pvt. Ltd. was incorporated in 2004 by Amarjeet Singh Saluja (brother of Mr. Gunwant Singh Mongia) and his sons. While the company initially did not manufacture TMT Bars, it later entered the market and began using the mark “SALUJA GOLD with Device of Sardarji”, including a bust photograph of Mr. Amarjeet Singh Saluja, which Mongia Steel alleged was deceptively similar to their established mark and get-up. Mongia Steel claimed this imitation led to confusion among the public and amounted to trademark infringement, copyright violation, and passing off.

Procedural Background: The initial suit was filed in 2015 as Title Suit No. 6 of 2015, later renumbered as Commercial Case No. 06 of 2015, before the Commercial Court, Ranchi. Originally, it was a composite suit including claims for trademark infringement, copyright infringement, and passing off. However, the plaintiff later filed an application under Order VI Rule 17 CPC, which was allowed on 03.09.2015, permitting deletion of the copyright claims (Sections 51 and 62 of the Copyright Act, 1957) from the plaint.

Subsequently, Mongia Steel sought to withdraw the suit under Order XXIII Rule 1(3) CPC citing formal defects and inadequacies in prayer formulation. The Commercial Court granted leave to withdraw the suit via order dated 29.09.2020, imposing three explicit conditions: (i) no new or fresh cause of action should be introduced, (ii) no documents issued after the original suit date may be relied upon, and (iii) reliefs must be limited to those contemplated in Paragraph 5 of the withdrawal application.

Pursuant to this, Mongia Steel filed Commercial Case No. 63 of 2020 incorporating claims for trademark infringement, passing off, and notably, copyright infringement — the very claim it had earlier abandoned. The defendant, Saluja Steel, filed an application under Order VII Rule 11 CPC seeking rejection of the plaint on grounds of deviation from the permitted scope. The Commercial Court allowed this application and rejected the plaint on 15.03.2022, concluding that the inclusion of copyright claims constituted a new cause of action. The present appeal was filed against this rejection.

Core Dispute: The crux of the legal controversy was whether Mongia Steel, having voluntarily abandoned its copyright infringement claims in the earlier suit and having received conditional leave to file a fresh suit, could reintroduce those very claims in the new suit? The matter hinged on whether such reintroduction violated the court-imposed conditions and whether it constituted a new cause of action contrary to the bar under Order XXIII Rule 1(3) CPC?

Discussion on Judgments:The appellant relied on the premise that the inclusion of copyright claims was part of a continuous cause of action flowing from the same transactional relationship and, thus, was not “new” in the legal sense. It was argued that the intent to seek such relief was always present but was inadequately pleaded in the earlier suit due to the inefficiency of their earlier counsel.

The respondent cited the order passed by the Commercial Court on 03.09.2015 allowing deletion of copyright claims and the withdrawal order dated 29.09.2020, emphasizing that the leave was explicitly limited and could not be used as a carte blanche to reintroduce previously deleted claims. They also pointed to the potential violation of the limitation period under Article 57 of the Limitation Act, 1963, arguing that reintroduction of copyright claims in 2020 for acts from 2014 was time-barred.

The High Court examined the legal principles laid down by the Supreme Court in V. Rajendran & Anr. v. Annasamy Pandian (Dead) through LRs, (2017) 5 SCC 63, where it was held that withdrawal of a suit under Order XXIII Rule 1(3) CPC requires the court’s satisfaction that the suit suffers from a formal defect or that there are other sufficient grounds, and that the leave must be limited and conditional to avoid abuse. Similarly, Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil, AIR 1957 SC 363, was referred to affirm the principle that amendments or fresh suits cannot be used to introduce time-barred claims or bypass procedural mandates.

The doctrine of “relation back” was discussed, citing Siddalingamma v. Mamtha Shenoy, (2001) 8 SCC 561, but the Court clarified that this doctrine is not of universal application and can be denied where allowing such relation back would defeat substantive legal defenses, such as limitation.

Reasoning and Analysis of the Judge: The Bench held that the permission to file a fresh suit was granted on clearly stipulated terms, including a prohibition against introducing new causes of action. By deleting the copyright claims through a judicial amendment order in 2015, the plaintiff had effectively confined the original suit to trademark infringement. Consequently, the subsequent inclusion of copyright claims in the fresh suit constituted a clear deviation and amounted to a new cause of action.

The Court emphasized that even if paragraph 5 of the withdrawal application broadly referenced copyright claims, the effect of the prior amendment was that such claims were no longer part of the subject matter of the suit at the time of withdrawal. Allowing reintroduction would violate not only procedural safeguards but also defeat the statutory bar of limitation, since more than three years had passed since the alleged copyright violations.

The Court also rejected the appellant’s argument that the mistake of previous counsel justified the reintroduction. It held that procedural indulgence cannot be used to evade statutory consequences or judicial orders, particularly when the party had knowingly and voluntarily opted to delete certain claims.

Final Decision:The High Court dismissed the appeal and upheld the Commercial Court’s rejection of the plaint. It held that the inclusion of copyright infringement claims in the fresh suit violated the conditions imposed in the order dated 29.09.2020 and amounted to a fresh cause of action. Accordingly, the plaint was correctly rejected under Order VII Rule 11(d) CPC. The Court also observed that allowing such procedural circumvention would create a dangerous precedent and undermine the integrity of judicial orders and the limitation framework.

Law Settled in This Case: This case affirms that when a suit is withdrawn under Order XXIII Rule 1(3) CPC with conditions, those conditions are binding and enforceable. A party cannot, in a subsequent suit, expand the scope of reliefs or reintroduce claims previously deleted or abandoned. Courts will not permit procedural devices to circumvent limitation laws or judicial directions. The decision also reinforces that the inclusion of previously deleted claims after expiry of limitation, even under the guise of procedural correction, constitutes a barred and impermissible cause of action.

Case Title: Mongia Steel Limited vs. Saluja Steel and Power Private Limited

Date of Order: 17 July 2025

Case Number: Commercial Appeal No. 08 of 2023

Neutral Citation: 2024:JHHC:26916-DB

Name of Court: High Court of Jharkhand at Ranchi

Name of Judge: Hon’ble Mr. Justice Sujit Narayan Prasad and Hon’ble Mr. Justice Rajesh Kumar

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

Puja Agarwal Vs. Pravesh Narula

Introduction: The case of Puja Agarwal v. Pravesh Narula before the Delhi High Court involved a challenge under Article 227 of the Constitution of India to an order permitting amendment of a plaint in a commercial intellectual property suit. The dispute centers on whether the inclusion of a trademark infringement plea—post-registration of the trademark during the pendency of the suit—amounts to a change in the nature of the original suit, which had been filed solely for copyright infringement.

Factual Background: The respondent/plaintiff, Pravesh Narula, originally filed CS (COMM) No. 2732/2021 seeking relief in respect of copyright infringement involving a logo bearing the term “RD SPECIAL.” At the time the suit was instituted, the plaintiff had applied for registration of the said mark but the registration had not yet been granted. In paragraphs 3 and 4 of the plaint, the plaintiff detailed the adoption of the trademark/logo “RD SPECIAL” in 1994 and disclosed the pendency of his trademark application under No. 4242962 in Class 25 for goods including socks.

There were no specific pleadings or reliefs sought in the original plaint with regard to trademark infringement or passing off. The suit was limited to copyright infringement based on the alleged unauthorized use of the logo/artistic work by the defendant.

Subsequently, during the pendency of the suit, the trademark registration was granted in favour of the plaintiff. On the basis of this new development, the plaintiff moved an application under Order VI Rule 17 of the CPC to amend the plaint and include a plea of trademark infringement.

Procedural Background: The application seeking amendment of the plaint was allowed by the learned District Judge (Commercial Courts-08), Central District, Tis Hazari, Delhi on 7th April 2025. The amendment was allowed primarily on the ground that the trademark registration had been obtained during the pendency of the suit, and that it was therefore appropriate to allow the plaintiff to amend the plaint accordingly.

The petitioner/defendant, Puja Agarwal, challenged the said order before the Delhi High Court under Article 227. The primary contention was that the amendment effectively altered the nature and character of the original suit from one of copyright infringement to a combined suit including trademark infringement, which was not permissible.

Issues Involved in the Case :The key issue for determination before the Delhi High Court was whether the amendment of the plaint to include a plea of trademark infringement—based on a trademark registration granted after the institution of the suit—amounted to a change in the nature of the suit that ought not to have been allowed? A related issue was whether the Court below had erred by passing a cryptic order that failed to consider the objections of the defendant/petitioner regarding the impermissibility of the amendment under Order VI Rule 17 CPC?

Submissions of the Parties: The petitioner/defendant contended that the Trial Court’s order was cryptic and lacked proper reasoning. It was argued that the amendment fundamentally altered the character of the suit from a copyright action to a trademark infringement suit, which should not have been allowed at such a stage, particularly when it was not pleaded in the original suit.

On the other hand, counsel for the respondent/plaintiff submitted that the only change being introduced by way of amendment was with reference to the newly obtained trademark registration. It was contended that the plaint already contained factual averments regarding adoption and use of the “RD SPECIAL” logo and the pending application for registration. Therefore, the amendment did not introduce a new cause of action but merely expanded the legal grounds of relief flowing from the same set of facts.

Judgments Cited and Their Context: The respondent/plaintiff relied upon the judgment of the Supreme Court in Rajesh Kumar Aggarwal v. K.K. Modi, (2006) 4 SCC 385. In this judgment, the Supreme Court discussed the two limbs of Order VI Rule 17 of the CPC. The first part gives discretion to the court to allow amendments, and the second part mandates that amendments necessary for determining the real question in controversy should be allowed.

The Supreme Court observed that if a cause of action arises during the pendency of a suit, an amendment should be allowed so long as it does not change the fundamental structure of the suit. In that case, it was held that amendments introducing new reliefs based on subsequent events could be permitted if they arose from the same core controversy. The Court emphasized that multiplicity of proceedings should be avoided, and procedural law must serve the ends of justice.

Applying this precedent, the respondent argued that since trademark infringement is a continuing cause of action, and since the factual matrix remained the same, the amendment should be viewed as legally permissible.

Reasoning and Analysis of the Judge:Delhi High Court agreed that the order passed by the Trial Court was indeed cryptic and did not deal with the specific submission that the amendment altered the nature of the suit. However, he proceeded to evaluate the merits of the amendment independently.

Upon review of the original plaint, the court noted that the plaintiff had included factual details about the adoption and use of the mark “RD SPECIAL,” and also disclosed that a trademark registration application was pending. Nevertheless, no relief was originally claimed under trademark law—neither under the head of infringement nor passing off.

The Court acknowledged that the registration was granted only after the suit was filed and that the new amendment sought to introduce trademark infringement as a legal cause of action based on this registration. However, given that trademark infringement is a continuing cause of action, and the suit was still at a preliminary stage (issues yet to be framed), there was no legal bar to the plaintiff instituting a fresh suit on this new basis.

Instead of encouraging multiplicity of proceedings, the Court reasoned that it was preferable to allow the amendment. The guiding principle applied was whether the amendment was necessary to resolve the real dispute between the parties. The amendment, in the Court’s view, did not radically alter the structure of the original suit, but merely added a legal claim arising from subsequent registration of an already pleaded mark.

Court emphasized that allowing such amendments is consistent with the liberal approach favoured by courts, especially when the amendment is grounded in events occurring after the suit’s institution and does not prejudice the opposite party, who retains the right to raise all defences in response to the amended plaint.

Final Decision: The Delhi High Court upheld the order passed by the Trial Court allowing the amendment. The Court clarified that by permitting the amendment, it had not gone into the merits of the case. The petitioner/defendant was given full liberty to raise all relevant defences in the written statement to the amended plaint.The petition under Article 227 was accordingly dismissed and disposed of.

Law Settled in this Case: The judgment reinforces the principle that amendments under O 6 R 17 CPC to be liberally granted when based on subsequent events and necessary for adjudicating the real dispute. The case affirms that introduction of trademark infringement relief—based on post-suit registration—does not necessarily alter the nature of a suit if the foundational facts remain consistent and if the suit is still at an early stage. It also underscores the continuing nature of causes of action in intellectual property law, especially trademark infringement, and reiterates judicial aversion to multiplicity of proceedings where a more efficient procedural route is available.

Case Title: Puja Agarwal Vs. Pravesh Narula: Date of Order: 5th May, 2025: Case No.: CM(M)-IPD 14/2025: Neutral Citation: 2025:DHC:3800: Name of Court: High Court of Delhi: Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

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

Rakesh Kumar Mittal Vs. The Registrar of Trade Mark

Introduction: The case of Rakesh Kumar Mittal v. The Registrar of Trade Marks before the High Court of Delhi is a significant ruling in the domain of trademark law, particularly in relation to the mandatory procedural safeguards required before the removal of a registered trademark from the Register. It raises a critical question about the extent to which administrative agencies must comply with statutory mandates when exercising quasi-judicial powers. The case underlines the mandatory nature of notice issuance prior to cancellation of registration, ensuring procedural fairness and protecting the vested rights of proprietors under the Trade Marks Act, 1999.

Factual Background: The petitioner, Rakesh Kumar Mittal, is engaged in the business of manufacturing and trading in electronic goods, specifically amplifiers, microphones, loudspeakers, transformers, and related components. On May 6, 1994, he filed an application bearing number 627446 for registration of the trademark “MILTON” under Class 9 of the Trade Marks Act, 1999, claiming usage since September 24, 1982. The registration certificate was eventually issued on May 30, 2003, but the registration was valid only up to May 6, 2004. Due to non-filing of the renewal application within the prescribed time, the trademark was removed from the Register, as published in Trade Marks Journal No. 1442 dated October 16, 2010.

The petitioner contended that he never received the statutory Form O-3 notice under Section 25(3) of the Trade Marks Act, which is a precondition for lawful removal of a trademark. He learned about the removal only through an RTI response and thereafter initiated the present writ proceedings seeking restoration of the trademark registration and permission to file belated renewal applications.

Procedural Background:  After discovering the removal, the petitioner filed a Right to Information (RTI) application to determine whether the Registrar of Trade Marks had issued the mandatory Form O-3 notice. The response from the trademark office acknowledged that no such notice had been issued, asserting that if a trademark is registered after ten years from the date of application, Section 25(3) is inapplicable. The petitioner, through his counsel, approached the Delhi High Court by way of a writ petition under Article 226 of the Constitution of India seeking restoration and renewal of the trademark. The matter was heard and reserved on April 29, 2025, and the judgment was pronounced on May 27, 2025, by Hon’ble Mr. Justice Saurabh Banerjee.

Legal Issue: The primary legal issue in the case was whether the removal of a registered trademark from the Register of Trade Marks without issuing a mandatory notice under Section 25(3) of the Trade Marks Act, 1999, read with Rule 64(1) of the Trade Marks Rules, 2002, is valid and sustainable in law?

Discussion on Judgments: A pivotal precedent cited in this case was the judgment of the Division Bench of the Delhi High Court in Union of India v. Malhotra Book Depot, 2013 SCC OnLine Del 828, where it was held that the issuance of notice under Section 25(3) is a condition precedent before the removal of a trademark. The Court held that procedural steps outlined in the statute must be followed strictly and cannot be bypassed, even if the registration has lapsed by time.

In support of this legal stance, the petitioner also referred to the decision of the Bombay High Court in Cipla Ltd. v. Registrar of Trade Marks and Another, 2013 SCC OnLine Bom 1270, where it was reiterated that the statutory notice must be issued even if the renewal application has not been filed, and failure to do so renders the removal invalid.

Further, the Bombay High Court in Kleenage Products (India) Pvt. Ltd. v. Registrar of Trade Marks and Others, 2018 SCC OnLine Bom 46, emphasized that registered proprietors must be informed of impending expiry and given a fair chance to renew their trademarks. The petitioner also relied on Promoshirt SM (P) Ltd. v. Registrar of Trade Marks, 2024 SCC OnLine Del 7722; Malhotra Book Depot v. Union of India, 2011 SCC OnLine Del 5086; Gopal Ji Gupta v. Union of India, 2019 SCC OnLine Del 7670; and Ashok Bhutani v. The Registrar of Trade Marks & Anr., W.P.(C)-IPD 22/2024, all affirming that mere lapse of time does not justify cancellation unless the mandatory notice is duly served.

The decisions uniformly underscored that the removal of a trademark without issuing the prescribed notice under Section 25(3) and Rule 64(1) is a violation of statutory requirements and administrative fairness.

Reasoning and Analysis of the Judge:  The court conducted a thorough analysis of the statutory framework and the procedural mandate under the Trade Marks Act and Rules. He noted that Rule 64(1) of the Trade Marks Rules, 2002 clearly obliges the Registrar to send a written notice (Form O-3) to the registered proprietor at least one month and not more than three months before the expiry of the trademark. The Court observed that such procedural compliance is not merely directory but mandatory in nature, particularly where vested rights of individuals are at stake.

The Court further rejected the respondent’s argument that the issuance of the registration certificate after ten years from the date of application negated the applicability of Section 25(3). It held that the date of actual registration triggers the start of the renewal period and that administrative interpretations contrary to statutory provisions cannot stand in the face of judicial precedents and express legislative command.

The Court also invoked the principle laid down by the Supreme Court in E. Palanisamy v. Palanisamy, (2003) 1 SCC 123, reiterated in Sarla Goel v. Kishan Chand, (2009) 7 SCC 658, that procedural steps under a statute must be followed sequentially and cannot be bypassed. The decision reinforced that if the legislature has imposed a procedural safeguard, courts must give effect to it and not dilute it based on administrative convenience.

Final Decision:  The Delhi High Court allowed the writ petition. It directed the Registrar of Trade Marks to restore and reinstate the registration of the petitioner’s trademark “MILTON” bearing Application No. 627446 under Class 9. The Court further directed that upon the petitioner filing appropriate renewal applications and completing the prescribed formalities, the Registrar must grant renewal of the trademark for the periods 2004–2014, 2014–2024, and 2024–2034 and issue the corresponding certificates.

Law Settled in This Case:  The judgment reaffirmed the settled position that the issuance of a Form O-3 notice under Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of the Trade Marks Rules, 2002 is a mandatory precondition for the removal of a registered trademark from the Register. Any removal of a trademark in the absence of such notice is illegal, unsustainable, and without jurisdiction. The case underscores that administrative authorities cannot disregard statutory procedures and that procedural fairness is integral to the exercise of statutory powers under the Trade Marks Act.

Rakesh Kumar Mittal Vs. The Registrar of Trade Marks:May 27, 2025:W.P.(C)-IPD 40/2024:2025:DHC:4432:High Court of Delhi :Hon'ble Mr. Justice Saurabh Banerjee

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

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

E. R. Squibb and Sons, LLC & Ors. Vs. Zydus Lifesciences Limited

Quia Timet Action and Patent Protection in the Biologics Sector

Introduction:  The intersection of biopharmaceutical innovation and patent law stands at the heart of the recent judgment delivered by the Hon'ble High Court of Delhi in E. R. Squibb and Sons, LLC & Ors. v. Zydus Lifesciences Limited. This decision is significant for its detailed analysis of patent claim construction, the scope of patent infringement in biosimilar development, and the jurisprudence surrounding interim relief in quia timet actions. The matter concerns Indian Patent No. IN 340060 (hereinafter "suit patent") which claims the monoclonal antibody Nivolumab, an anti-PD-1 antibody used in cancer immunotherapy. With the defendants poised to launch a biosimilar product allegedly infringing the suit patent, the plaintiffs sought a pre-emptive injunction, prompting a thorough judicial evaluation of patent validity, claim construction, prior art, and the credibility of apprehended infringement.

Factual Background: The suit patent IN 340060 titled “Human Monoclonal Antibodies to Programmed Death 1 (PD-1) for use in treating Cancer” was filed as a national phase application from PCT/JP2006/309606, claiming priority from U.S. provisional applications dating back to 2005. Granted in India on 1 July 2020, the patent claims a 20-year term expiring on 2 May 2026. The invention relates to the monoclonal antibody known as Nivolumab (also referred to as 5C4), which binds to the PD-1 receptor on T-cells, thereby modulating immune responses against cancer cells.

Nivolumab is marketed globally under the brand name Opdivo® and is sold in India as Opdyta®. The patent was granted after rejection of four pre-grant oppositions, and a post-grant opposition filed by Zydus Healthcare Limited, a sister concern of the defendant, is currently pending. An Opposition Board Recommendation (OBR) dated 31 January 2023 opined that the suit patent lacked novelty and inventive step, which was subsequently set aside by the High Court of Madras. The matter was remanded to the Single Judge for fresh adjudication.

Plaintiffs became aware in April 2022 that the defendant had sought regulatory approval for clinical trials of a biosimilar to Nivolumab. Although the defendant responded by claiming protection under the Bolar exemption (Section 107A, Patents Act, 1970), further investigation revealed registration of clinical trials under the name ZRC-3276, with Opdivo® listed as the reference product.

Procedural Background: The plaintiffs issued a cease-and-desist letter in May 2022, to which the defendant responded by asserting that it was only conducting clinical trials and had not yet launched the product. Based on this assurance and the clinical trial stage of development, the plaintiffs did not pursue legal action at the time.

In April 2024, the plaintiffs received inquiries from medical professionals and distribution networks indicating that the defendant may be preparing for a commercial launch. Upon discovering that the defendant had applied for marketing authorisation for ZRC-3276, the plaintiffs initiated a quia timet suit for permanent injunction and filed I.A. 10533/2024 under Order XXXIX Rules 1 and 2 CPC seeking interim relief. On 8 May 2024, the Delhi High Court granted an ad interim injunction restraining the defendant from launching the biosimilar without court approval. The order remained in force till final adjudication of the interim application, which was decided vide judgment dated 18 July 2025.

Core Dispute: The central issue was whether the plaintiffs were entitled to an interim injunction against the defendant’s potential commercial launch of its biosimilar version of Nivolumab on grounds of patent infringement. The dispute also involved determining whether the plaintiffs had made out a prima facie case of infringement, whether the suit patent was prima facie valid despite the post-grant opposition and prior art cited, and whether the plaintiffs had approached the Court with delay, thereby disentitling them to interim relief.

Discussion on Judgments: The plaintiffs relied on Jay Switches India Pvt. Ltd. v. Sandhar Technologies Ltd., 2024 SCC OnLine Del 8434, to underscore the importance of claim construction in determining patent infringement. The Court in Jay Switches emphasised that interpreting the scope of the claims is the primary step in adjudicating infringement actions, particularly in complex technologies like antibodies.

The plaintiffs also cited Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, where the Supreme Court stressed that the claims in a patent must be read with the complete specification, and that claim construction must be rooted in the technical disclosures of the patent.

Further, reliance was placed on Novonordisk v. Union of India, 2022 SCC OnLine Del 1944, which held that the Opposition Board Recommendation under Section 25(3) of the Patents Act is not binding on the Controller and is merely recommendatory. This case was cited to negate the defendant's reliance on the OBR recommending revocation of the patent.

The defendants countered by citing prior art documents including WO 2001/014557, WO 2002/079499, and EP 1537878 B1 (WO 2004/004771), arguing that the suit patent lacked novelty and inventive step. They further contended that the plaintiffs had admitted in foreign patent filings that Nivolumab was developed under an earlier patent family, thereby invalidating the suit patent.

Reasoning and Analysis of the Judge: The Court, on the issue of delay,  accepted the plaintiffs’ explanation that they initially refrained from filing the suit in 2022 due to the defendant’s reliance on the Bolar exemption. The Court observed that a fresh cause of action arose only in 2024 when credible information regarding imminent commercial launch surfaced.

Regarding the question of infringement, the Court held that Nivolumab (also known as 5C4 antibody) was clearly claimed in Claims 1, 3, and 7 of the suit patent, which were defined by specific amino acid sequences in the CDR regions and variable chains. Since the defendant was developing a biosimilar using the plaintiffs’ product as a reference, it was prima facie covered by the scope of the claims.

On validity, the Court found that the prior art documents relied on by the defendant did not disclose the specific amino acid sequences claimed in the suit patent. D3 (EP '878) was held to pertain only to the use of anti-PD-1 antibodies in general, not to the precise structure of Nivolumab. Further, D1 and D2 were dismissed for failing to disclose any antibody sequences. The Court relied on the Guidelines for Examination of Biotechnology Applications for Patent, 2013, which state that unless the prior art matches the claimed sequence exactly, it cannot be deemed anticipatory.

The Court also dismissed the defendant’s reliance on the Opposition Board’s adverse recommendation, noting its recommendatory nature and the pending adjudication in the Madras High Court.

Final Decision:  The High Court of Delhi granted interim relief in favour of the plaintiffs, continuing the injunction against the defendant from launching or commercially exploiting its biosimilar product ZRC-3276 without court approval until the expiry of the patent or final adjudication of the suit. The Court held that the plaintiffs had made out a strong prima facie case of infringement, that the balance of convenience lay in their favour, and that irreparable harm would be caused if the injunction was denied.

Law Settled in This Case:  This judgment reinforces the jurisprudence on quia timet actions in patent infringement suits, particularly in the biopharmaceutical context. It clarifies that the apprehension of infringement, if supported by credible evidence, can sustain an injunction even before actual launch. The case also reaffirms that prior art must disclose specific elements of the claimed invention—such as amino acid sequences in the case of biologics—for a credible challenge to novelty or inventive step. Furthermore, the judgment affirms that the recommendation of an Opposition Board is not binding and cannot by itself undermine a patent’s validity. Lastly, it underlines that reference to a patented product in biosimilar development may constitute prima facie infringement if claim mapping is established.

Case Title: E. R. Squibb and Sons, LLC & Ors. Vs. Zydus Lifesciences Limited

Date of Order: 18 July 2025

Case Number: CS(COMM) 376/2024 

Neutral Citation: 2025:DHC:5802

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

Société des Produits Nestlé S.A. Vs. Controller of Patents and Designs

Amendment of Patent Claims and Specification at Appellate Stage

Introduction:  The judgment delivered by the Hon’ble High Court of Delhi in Société des Produits Nestlé S.A. v. Controller of Patents and Designs & Anr., decided on 3rd February 2023, marks a significant clarification in the Indian patent law regime concerning the scope of Section 3(i), the permissibility of claim amendments under Section 59, and the evidentiary thresholds for inventive step and synergistic effects under Sections 2(1)(ja) and 3(e) of the Patents Act, 1970. This case revolved around a patent application relating to a nutritional composition designed for use in the prophylaxis of allergic disease, which was rejected by the Patent Office on multiple statutory grounds. The appellant, a global food and nutrition company, challenged the refusal on legal and technical grounds, seeking judicial intervention to reinstate the patent application.

Factual Background:  The appellant, Société des Produits Nestlé S.A., filed an Indian patent application numbered 201817040811 on 26th October 2018 titled “Composition for Use in the Prophylaxis of Allergic Disease”. The application claimed priority from an earlier European application and was based on a PCT application (PCT/EP2016/060007) filed on 4th May 2016. The invention related to a composition comprising DGLA (Dihomo-γ-linolenic acid) and one or more omega-3 polyunsaturated fatty acids such as DHA and EPA. The objective of the invention was to reduce the incidence of allergic diseases in the progeny when the composition is administered to a mammalian subject during pre-pregnancy, pregnancy, or lactation.

According to the applicant, the claimed composition exhibited a synergistic effect that reduced allergic manifestations in the offspring. The composition was formulated for inclusion in dietary or nutritional supplements or in infant formulas, and the claims were framed as “composition for use” or “nutritional composition for use”, intending to steer clear of prohibited subject matter under Section 3(i) of the Patents Act.

Procedural Background:  The application was published on 8th February 2019 and was examined pursuant to a First Examination Report (FER) issued on 4th January 2021. The FER raised objections under Sections 3(i), 3(e), and 2(1)(ja) of the Act. In response, the applicant amended the claims and submitted supporting data. However, the Controller, vide order dated 29th December 2021, refused the application. The grounds for refusal were that the claims related to a method of treatment and hence were non-patentable under Section 3(i); that the amended claims went beyond the scope of original claims, thereby violating Section 59; and that the evidence did not establish the required synergistic effect, which attracted Sections 3(e) and 2(1)(ja). Aggrieved by this refusal, the applicant filed an appeal under Section 117A of the Patents Act before the High Court of Delhi.

Core Dispute:  The principal legal questions arising in this appeal were whether the claimed subject matter fell within the prohibition under Section 3(i) as being a method of treatment; whether the amended claims violated Section 59 by broadening the scope beyond the originally filed claims; and whether the invention lacked an inventive step or was hit by Section 3(e) for being an admixture without demonstrable synergistic effect. At stake was the nuanced distinction between treatment method claims, purpose-limited product claims, and the adequacy of technical data to satisfy inventive step and non-obviousness requirements.

Discussion on Judgments: In support of its position that the claims were not barred under Section 3(i), the appellant relied upon the judgment in University of Miami v. Controller of Patents, (OA/28/2016/PT/DEL), wherein the Intellectual Property Appellate Board (IPAB) held that claims directed to "product for use" are patentable and not considered as methods of treatment. The IPAB distinguished between product claims and method claims, permitting claims to compositions that are characterized by their intended medical use.

The appellant also cited the decision of the Delhi High Court in Novartis AG v. Union of India, 2019 SCC OnLine Del 9285, which reaffirmed that therapeutic efficacy and technical advancement must be evaluated in context and not be dismissed summarily without adequate reasoning. In the present case, the data relating to synergistic effects were said to demonstrate a marked reduction in allergic symptoms in animal models, with comparative experiments supporting the technical effect claimed.

On the issue of claim amendment under Section 59, the appellant invoked the jurisprudence from the IPAB decision in Esco Corporation v. Controller of Patents, OA/66/2010/PT/KOL, where it was held that claim amendments that are supported by the original specification and merely clarify or limit the scope of claims are permissible, even if introduced during prosecution or appellate proceedings.

Finally, the reliance was also placed on European Patent Office (EPO) practices, particularly since the same invention had been granted a European patent after rigorous examination. The High Court considered such foreign prosecution outcomes to be persuasive, though not binding, in assessing inventive step and synergy.

Reasoning and Analysis of the Judge:  Court held that the claims were clearly directed to compositions and not to any treatment process or method. He observed that Section 3(i) prohibits only method of treatment claims and not products per se. The Court accepted that the “composition for use” language was well-established internationally, and as long as the claims remained directed to compositions with specified purpose or use, they did not attract Section 3(i). The amended claims, being purpose-limited product claims, did not claim any treatment step and were therefore outside the mischief of Section 3(i).

On the question of claim amendments under Section 59, the Court concluded that the amendment was neither broadening the claims nor introducing any matter not originally disclosed. Rather, it clarified and narrowed the scope in response to objections. Therefore, the amended claims were held to be maintainable, even at appellate stage as there is no any bar to allow amendment at appellate stage.

Regarding the inventive step and synergistic effect, the Court found that the appellant had filed experimental data comparing allergic responses in progeny across different dietary compositions. The results indicated that only the claimed composition comprising both DGLA and omega-3 PUFAs showed the desired prophylactic effect. The comparative data established a technical advancement and unexpected results over prior art. The prior art relied on by the Controller was found to be more than twenty years old and lacked the specific combinations and concentrations used in the claimed invention. Therefore, the Court held that the invention satisfied the requirements of inventive step under Section 2(1)(ja) and was not hit by Section 3(e).

Final Decision:  The High Court allowed the appeal, set aside the order of refusal dated 29th December 2021, and directed that the patent application proceed for grant on the basis of the amended claim set submitted by the appellant. The Court further directed the matter to be listed before the Controller for completion of necessary formalities.

Law Settled in This Case:  This judgment settled the legal position that purpose-limited product claims, such as “composition for use in prophylaxis,” do not fall within the prohibition of Section 3(i) and are distinguishable from method of treatment claims. It reaffirmed that claim amendments under Section 59 are permissible even at appellate stage, if they are based on the original disclosure and do not broaden the claim scope. Furthermore, it laid down that properly supported experimental data showing unexpected technical effect is sufficient to establish inventive step and synergy for overcoming objections under Sections 3(e) and 2(1)(ja). The decision also recognized the persuasive value of patent grants in other jurisdictions like the EPO when examining similar claims.

Case Title: Société des Produits Nestlé S.A. Vs. Controller of Patents and Designs & Anr.

Date of Order: 3rd February 2023

Case Number: C.A. (COMM.IPD-PAT) 22/2022

Neutral Citation: 2023/DHC/000774

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

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

Uto Nederland B.V. Vs Tilaknagar Industries Ltd

Trademark Ownership, Goodwill and the Doctrine of Reversion

Introduction:  The dispute arises between Uto Nederland B.V., a Dutch entity, and Tilaknagar Industries Ltd., an Indian spirits manufacturer, over the trademarks 'MANSION HOUSE' and 'SAVOY CLUB'. At the heart of the conflict lies the question of whether a conditional ceding of these marks in 1987 resulted in a permanent transfer of ownership to Tilaknagar or whether the trademarks automatically reverted to UTO upon breach of conditions as stipulated in the ceding arrangement. The High Court of Bombay’s Commercial Appellate Division, in a detailed judgment delivered on 16 July 2025, adjudicated upon this multifaceted controversy, examining the doctrines of passing off, transborder reputation, and the impact of Section 31 of the Transfer of Property Act, 1882 on trademark ownership.

Factual Background:  UTO Nederland B.V. and its group companies are Dutch entities engaged in the global manufacture and distribution of alcoholic beverages. UTO originally registered the trademark 'MANSION HOUSE' in the Netherlands in 1922 and 'SAVOY CLUB' in 1967, and subsequently obtained registration in multiple jurisdictions, including India. On 7 July 1983, UTO entered into a License and Manufacturing Agreement with Tilaknagar Industries Ltd. (Tilaknagar) for the manufacture and sale of liquor under the said trademarks in India, on the condition that Tilaknagar would procure specified quantities of concentrates from UTO. In February 1987, following litigation between UTO and the Scotch Whisky Association in the Netherlands regarding misleading use of the term "Scotch", UTO conditionally ceded the trademarks to Tilaknagar via two interlinked letters dated 23 February 1987. The cession was subject to Tilaknagar’s continued compliance with procurement obligations, failing which the trademarks would revert to UTO. Although Tilaknagar continued to use the trademarks, it stopped procuring concentrates from UTO by 1994, and began using self-developed substitutes.

Procedural Background: UTO initiated Commercial Suit No. 2 of 2009 (originally Suit No. 632 of 2009) before the High Court of Bombay, seeking a permanent injunction against Tilaknagar for passing off and infringement of copyright in the artistic works associated with the trademarks 'MANSION HOUSE' and 'SAVOY CLUB'. The suit also sought mandatory relief for cancellation of registrations obtained by Tilaknagar and damages. UTO filed Notice of Motion No. 993 of 2009 for interim relief, which was dismissed by a Single Judge on 22 December 2011. UTO preferred Commercial Appeal No. 66 of 2012 challenging this order. In response, Tilaknagar filed Cross Objection No. 3 of 2012 disputing the finding that UTO enjoyed transborder reputation. 

In parallel, Tilaknagar filed Counterclaim No. 6 of 2010 with Notice of Motion No. 1287 of 2010 seeking to restrain UTO from using the marks. In 2014, UTO transferred part of its rights to Allied Blenders and Distillers (ABD), who moved Interim Application No. 16999 of 2023 seeking permission to introduce products in West Bengal under the trademark 'MANSION HOUSE'. By order dated 7 February 2025, a Single Judge rejected Tilaknagar’s motion and allowed ABD’s application. Tilaknagar then filed Commercial Appeal (L) Nos. 6617 and 6622 of 2025. All three appeals were adjudicated together in a common judgment dated 16 July 2025.

Core Dispute:The central controversy revolved around the legal status of the 1987 ceding arrangement and whether the trademarks 'MANSION HOUSE' and 'SAVOY CLUB' reverted to UTO upon breach by Tilaknagar. UTO contended that the ceding was conditional and that Tilaknagar’s failure to procure concentrates as agreed caused automatic reversion of ownership under Section 31 of the Transfer of Property Act. Conversely, Tilaknagar argued that the transfer was absolute, that any breach merely gave rise to damages, and that UTO had waived any such condition through prolonged inaction and acquiescence.

Discussion on Judgments: UTO relied heavily on judicial precedents recognizing the enforceability of superadded conditions under Section 31 of the Transfer of Property Act. These included Nagindas Ramdas v. Dalpatram Ichharam, (1974) 1 SCC 242, for the proposition that judicial admissions in pleadings are conclusive unless withdrawn or explained. It also referred to Indu Kakkar v. Haryana State Industrial Development Corp., (1999) 2 SCC 37, and Harichand & Co. v. Gosho Kabushiki Kaisha, (1925) ILR 49 Bom 25, to assert the principle of automatic extinguishment of title upon breach of a superadded condition.

To support its passing off claim, UTO invoked N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, affirming the doctrine of transborder reputation and the ability to maintain passing off claims even in the absence of local sales.

On the contrary, Tilaknagar placed reliance on Madanlal Fakirchand Dudhediya v. Shree Changdeo Sugar Mills Ltd., 1962 (3) SCR 973, and Devendra Prasad Sukul v. Surendra Prasad Sukul, 1935 SCC OnLine PC 54, to argue that no automatic reversion can take place without a suit for declaration and that Section 31 does not displace this requirement. For the defence of delay, waiver and acquiescence, Tilaknagar cited Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13, and Ramdev Food Products v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726, asserting that UTO had sat on its rights for over a decade after the breach and thus lost entitlement to injunctive relief.

Reasoning and Analysis of the Judge:  The Division Bench of the High Court examined the 1987 ceding letters closely and concluded that the two letters formed a composite transaction. The second letter explicitly stipulated that the trademarks would revert to UTO if Tilaknagar failed to comply with the procurement obligations. The Court rejected Tilaknagar’s contention that the two letters constituted independent contracts, holding that the absence of consideration in the first letter necessitated its reading alongside the second. The judges emphasized that Section 31 of the Transfer of Property Act permits insertion of superadded conditions in transactions and enables automatic reversion on occurrence of the stipulated event.

The Bench was particularly critical of the long delay in judicial relief, but held that repeated correspondence from Tilaknagar seeking to resume procurement, along with UTO’s consistent assertions of ownership, negated the elements of waiver or abandonment. The Court reaffirmed that an owner of a mark with established transborder reputation is entitled to protect the mark against misappropriation in India, irrespective of local sales. The findings of the Single Judge in 2011 and 2025 were carefully scrutinized, with the Court concluding that the former failed to adjudicate the reversion issue adequately, while the latter rightly found in favour of UTO and ABD.

Final Decision:  The Court allowed UTO’s Commercial Appeal No. 66 of 2012, set aside the order dated 22 December 2011, and granted interim injunction restraining Tilaknagar from using the trademarks ‘MANSION HOUSE’ and ‘SAVOY CLUB’ pending the suit. It also upheld the order dated 7 February 2025 granting leave to ABD to introduce products in West Bengal. Tilaknagar’s Commercial Appeals (L) No. 6617 and 6622 of 2025 were dismissed.

Law Settled in This Case: This judgment settles several important propositions in Indian trademark law. First, a conditional transfer of trademark rights, if coupled with a superadded condition clearly embedded in the same transactional framework, can result in automatic reversion of ownership upon breach, without the need for a separate declaratory suit. Second, a claim for passing off can be sustained even by a foreign proprietor with no physical presence in India, provided transborder reputation is established. Third, long delays in asserting rights may not amount to waiver if there is continuing assertion of ownership and absence of detrimental reliance. Fourth, the scope of Section 31 of the Transfer of Property Act extends to intellectual property transactions, and if properly invoked, operates as a defeasance clause.

Case Title: Uto Nederland B.V. & Anr. v. Tilaknagar Industries Ltd. & Ors.

Date of Order: 16 July 2025

Case Number: Commercial Appeal No. 66 of 2012

Neutral Citation: 2025:BHC-OS:10958-DB

Name of Court: High Court of Bombay 

Name of Judge: Hon’ble Chief Justice Alok Aradhe and Hon’ble Mr. Justice Sandeep V. Marne

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

N.C. Mahamood Vs. Registrar of Trademarks

N.C. Mahamood Vs. Registrar of Trademarks & Ors., W.P.(C) No. 9286 of 2025, Neutral Citation: 2025:KER:46863, decided on 25th June 2025 by the High Court of Kerala at Ernakulam, before Hon’ble Mr. Justice N. Nagaresh

The petitioner, N.C. Mahamood, proprietor of M/s. Evergreen Industries, filed a writ petition seeking expeditious disposal of his trademark application (No. 4107556), which had been pending before the Registrar of Trademarks, Chennai, since 5th March 2019. The application was opposed by Greenply Industries Ltd. through Opposition No. 1026808 dated 23rd January 2020. Despite lapse of over six years, no final decision had been taken, and no notice of hearing had been issued. The petitioner argued that such inaction violated his statutory rights and would lead to business hardship.

The respondents, including the Registrar of Trademarks, the Controller General of Patents, Designs and Trademarks, and the Union of India, defended the delay on the ground of systemic backlog. They invoked the principle of “priority to first arrivals” and emphasized that the petitioner could have opted for an expedited process under Rule 34 of the Trade Marks Rules, 2017 by paying the prescribed fee. They contended that absent such request, applications were being processed in order of their seniority.

The dispute turned on whether a statutory authority could indefinitely delay the processing of a trademark application merely on the basis of general pendency and in the absence of any statutory mandate for payment of expedited fees after long delays.

The Court noted that although the Trade Marks Rules, 2017 provide for expedited processing under Rule 34, such provision cannot be interpreted as a license for indefinite delay in regular processing. The petitioner had filed the application in 2019 and an opposition was filed in 2020; yet, no hearing had been scheduled even after five years. The Court held that the respondents could not insist on payment of an additional fee for expedition after such extraordinary and unexplained delay in statutory processing.

Allowing the petition in part, the Court directed the Registrar of Trademarks to conduct a hearing in the petitioner’s trademark application expeditiously and to take a final decision within three months from the date of receipt of the judgment.

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

Saint Gobain TM K K Vs Assistant Controller of Patents and Designs

Saint Gobain TM K K Vs Assistant Controller of Patents and Designs:C.A. (COMM.IPD-PAT) 16/2021

High Court of Delhi:10th July 2025:Hon’ble Mr. Justice Saurabh Banerjee

Saint Gobain TM K K filed an appeal before the Delhi High Court challenging the order dated 30.07.2021 passed by the Assistant Controller of Patents and Designs, rejecting its Indian Patent Application No. 201717018424. The appellant argued that the impugned order lacked independent reasoning and was essentially a verbatim reproduction of an order dated 04.05.2021 issued by the European Patent Office (EPO) in a separate proceeding concerning Application No. 15881134.9-1108, where the appellant was also the applicant.

The procedural background reveals that the appellant’s patent application before the Indian Patent Office was rejected primarily on the basis of prior art references D1: US 2009/0176642 A and D2: JPH092870 A. The appellant contended that these prior arts were entirely different from those considered by the EPO, which were WO 2015/025901 A1 and WO 2016/056146 A1. Further, it was highlighted that despite the objections raised, the same appellant was ultimately granted the patent by the EPO for the corresponding invention, demonstrating that the claims were indeed patentable after due consideration abroad.

The core dispute was whether the Controller’s rejection of the Indian patent application was lawful and appropriately reasoned, especially when the grounds cited closely mirrored those in the EPO's order without adequately addressing the specific prior arts involved in India. The appellant alleged that the rejection was mechanical, failed to consider the distinct prior art references, and did not analyze the unique technical features of the invention.

Upon examining both the EPO’s decision and the Controller’s order, the High Court noted significant textual similarities between them. The Court further observed that the prior arts examined by the EPO differed materially from those considered by the Indian Controller, yet the reasoning in both orders appeared substantially identical.

In its decision, the Delhi High Court held that the Controller's order suffered from non-application of mind and did not reflect due consideration of the Indian prior art documents. The Court set aside the impugned order dated 30.07.2021 and restored the appellant’s Patent Application No. 201717018424 to its original status. The matter was remanded back to the Assistant Controller of Patents and Designs for a de novo hearing. The Controller was directed to list the matter for hearing within two weeks and dispose of the application on or before 30.08.2025 by passing a reasoned order after considering all arguments and without granting unnecessary adjournments.

N.R. Dongre and Ors. Vs. Whirlpool Corporation

Introduction: In the realm of intellectual property law, few cases have shaped the landscape of passing-off actions in India as decisively as the Supreme Court’s ruling in N.R. Dongre and Ors. v. Whirlpool Corporation and Anr. on August 30, 1996. This dispute, pitting a global giant against local traders over the coveted "WHIRLPOOL" trademark, transcends a mere commercial tussle to illuminate the power of trans-border reputation and prior use in safeguarding goodwill. At its core, the case addresses the tension between statutory trademark registration and common law rights, culminating in a temporary injunction that reverberated through legal corridors.

Detailed Factual Background: The saga revolves around Whirlpool Corporation, a U.S.-based multinational (plaintiff No. 1), and its Indian licensee, TVS Whirlpool Ltd. (plaintiff No. 2), a majority-owned subsidiary incorporated in India. Whirlpool Corporation boasted a storied history with the "WHIRLPOOL" trademark, claiming use since 1937, achieving prominence in the U.S. and Canada by 1957, and securing registrations in over 65 jurisdictions by 1986 for washing machines and appliances. In India, it held registrations from 1956-57 for various goods, renewed periodically until lapsing in 1977 due to import restrictions and communication lapses with its trademark attorney. In 1987, it partnered with TVS Whirlpool Ltd., and by July 15, 1988, applied anew for registration in India, marketing washing machines under the TVS brand with the tagline "in collaboration with Whirlpool Corporation." The plaintiffs asserted prior use and a trans-border reputation, evidenced by sales to the U.S. Embassy and USAID in India, and advertisements in international magazines circulating in India’s affluent strata.

The defendants: N.R. Dongre and others, trustees of Chinar Trust and Mansarovar Trust, trading as USHA-SHRIRAM (India), alongside Usha International Ltd. On August 6, 1986, they applied to register "WHIRLPOOL," claiming proposed use, a move advertised in the trademark journal on October 16, 1988. Whirlpool Corporation opposed this on January 16, 1989, but the Registrar dismissed the opposition on August 12, 1992, granting registration to the defendants retroactive to August 6, 1987. In July 1994, the plaintiffs discovered the defendants advertising "WHIRLPOOL" washing machines, prompting a passing-off suit to halt this use, alleging deception and damage to their reputation.

Detailed Procedural Background:The dispute began on August 4, 1994, when Whirlpool Corporation and TVS Whirlpool Ltd. filed an original suit in the Delhi High Court, seeking to restrain the defendants from using "WHIRLPOOL" in manufacturing, selling, or advertising washing machines. Alongside, they sought a temporary injunction, granted by the learned Single Judge on October 31, 1994, barring the defendants from such use pending trial, with a caveat for the plaintiffs to indemnify potential losses. The defendants appealed to the Division Bench, which, on April 21, 1995, upheld the injunction, finding no basis to disturb the Single Judge’s discretion. Aggrieved, the defendants escalated the matter to the Supreme Court via special leave petition, culminating in Civil Appeal No. 10703 of 1996. Concurrently, Whirlpool Corporation pursued an appeal against the Registrar’s 1992 order and a rectification petition under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, filed on August 4, 1993, both pending in the Delhi High Court. The Supreme Court’s judgment on August 30, 1996, addressed solely the propriety of the temporary injunction, leaving the suit’s final adjudication and ancillary proceedings unresolved.

Issues Involved in the Case: The central issue was whether the Delhi High Court’s grant of a temporary injunction against the defendants, despite their registered trademark, was legally sound? This distilled into assessing whether Whirlpool Corporation established a prima facie case of passing off based on prior use and trans-border reputation, whether the balance of convenience favored the injunction, and whether irreparable injury justified restraining the defendants pending trial, overriding their statutory registration?

Detailed Submission of Parties:The defendants conceded that a passing-off action could lie against a registered trademark owner but argued that their 1992 registration (effective from 1987) weighed heavily in their favor at the interlocutory stage. Sibal highlighted the plaintiffs’ opposition failure before the Registrar, their pending rectification petition, the lapse of their Indian registration in 1977, and their delayed suit filing in 1994 after a 1988 reapplication, suggesting acquiescence or abandonment. The Defendant posited that their cheaper washing machines (one-third the plaintiffs’ price) and clear labeling negated confusion, and the plaintiffs’ limited Indian sales undermined their claim.

Plaintiffs emphasized Whirlpool Corporation’s prior use since 1937 and trans-border reputation, evidenced by global sales and Indian advertising, against the defendants’ unexplained adoption of "WHIRLPOOL" in 1986 from established USHA brands. Plaintiff argued that actual Indian sales were unnecessary for passing off, only reputation sufficed, and the defendants’ registration rested on proposed, not actual, use. Plaintiff stressed the plaintiffs’ prompt opposition and legal actions, negating delay or acquiescence, and urged that the trial court’s discretion, affirmed on appeal, warranted deference.

Detailed Discussion on Judgments Cited by Parties and Their Context: The Supreme Court leaned heavily on Wander Ltd. & Anr. v. Antox India P. Ltd., [1990] Supp. SCC 727, cited implicitly by both parties via the High Court’s reasoning. This case delineated the scope of appellate interference in interlocutory injunctions, holding that discretion must be exercised judicially, not arbitrarily, and appellate courts should not substitute their view unless the trial court’s decision is perverse or ignores settled law (pages 733-734). It clarified passing off as deceit-based, protecting reputation against misrepresentation, a principle central to this case. The Division Bench referenced Faulder & Co. Ltd. v. O & G Rushton, (1903) 20 RPC 477, asserting that trademark association need not be universal but sufficient in known areas, supporting the plaintiffs’ limited but impactful Indian presence. The court also drew from Printers (Mysore) Private Ltd. v. Pothan Joseph, [1960] 3 SCR 713 at 721, cited in Wander, reinforcing that appellate reversal hinges on misapplication of principles, not mere disagreement. Charles Osenton & Co. v. Jhanaton, referenced therein, underscored this settled law’s application to individual facts. These precedents framed the court’s restraint in reassessing evidence, focusing instead on the trial court’s reasonableness.

Detailed Reasoning and Analysis of Judge: The confined analysis to undisputed facts, affirming Whirlpool Corporation’s prior use since 1937 and trans-border reputation extending to India via advertisements and limited sales, against the defendants’ 1986 claim based on proposed use. The lapsed 1977 registration did not signify abandonment, given ongoing global use and policy-related explanations, while the defendants’ registration, under challenge, held no decisive weight in a passing-off action—a point Sibal conceded. Verma found the High Court’s findings—prior use, reputation, and likelihood of confusion—reasonable, noting the defendants’ lack of evidence of significant prior sales and their unexplained adoption of "WHIRLPOOL." Applying Wander Ltd., he assessed the trinity test: a prima facie case existed due to Whirlpool’s established mark and the defendants’ deceptive use; the balance of convenience favored the plaintiffs, as the defendants could revert to USHA brands with minimal disruption, while the plaintiffs faced reputational harm; and irreparable injury loomed for Whirlpool, given quality disparities, outweighing the defendants’ manageable loss. The absence of delay or acquiescence, evidenced by the plaintiffs’ persistent legal challenges, bolstered their equity. Court declined to reassess additional material, preserving the trial court’s latitude under Order 39 Rule 4 CPC, and upheld the injunction as equitable and legally sound, reinforced by the Division Bench’s affirmance.

Final Decision: The Supreme Court dismissed the defendants’ appeal, upholding the Delhi High Court’s temporary injunction restraining N.R. Dongre and others from using "WHIRLPOOL" in manufacturing, selling, or advertising washing machines.

Law Settled in This Case: The ruling entrenched that a passing-off action can succeed against a registered trademark owner based on prior use and trans-border reputation, independent of statutory rights. It established that goodwill, even without extensive local sales, suffices if supported by advertising and recognition, and courts may grant interlocutory injunctions to protect such reputation against deception, prioritizing equity over registration status.

N.R. Dongre and Ors. Vs. Whirlpool Corporation and Anr.:August 30, 1996:Civil Appeal No. 10703 of 1996:1996 SCR (5) Supp 369:Supreme Court of India: Hon’ble Mr. Justice J.S. Verma & Hon’ble Mr. Justice K. Venkataswami

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

Subhash Chandra Agrawal Vs. Central Public Information Officer

Disclosure and its Limits under RTI Act

Introduction:In the landmark decision pronounced on 10 July 2025 in Subhash Chandra Agrawal v. Central Public Information Officer, the High Court of Judicature at Bombay considered the delicate balance between transparency mandated by the Right to Information Act, 2005 and the competing rights of privacy, fiduciary obligations, and third-party interests. The case involved a series of writ petitions challenging and defending the Central Information Commission’s order dated 27 December 2022, which partly allowed disclosure of regulatory information held by the Securities and Exchange Board of India. The judgment revisited important questions on the procedural safeguards under Section 11 of the RTI Act and the scope of qualified exemptions under Section 8, while examining leading precedents from the Supreme Court.

Factual Background:The matter arose from an RTI application filed on 18 June 2021 by Mr. Subhash Chandra Agrawal, a noted transparency activist. Mr. Agrawal sought extensive information from the Securities and Exchange Board of India (SEBI) on nine specific queries. These included details of SEBI’s role and policy in appointing Public Interest Directors (PIDs) to the boards of major stock exchanges such as the Bombay Stock Exchange (BSE), National Stock Exchange (NSE), and Multi Commodity Exchange (MCX), as well as annual inspection reports of these exchanges and related documents. The underlying public interest, as claimed by Mr. Agrawal, was to ensure transparency in the functioning of financial regulators and the stock market, affecting large numbers of investors.

Procedural Background:Following SEBI’s partial denial of the requested information, the matter proceeded before the Central Information Commission. In its order dated 27 December 2022, the CIC partly allowed the application by directing SEBI to provide certain information like lists of selected and rejected candidates for PID appointments and concluding comments from annual inspection reports, but upheld SEBI’s denial of full inspection reports and internal correspondence, citing exemptions under Section 8(1) of the RTI Act.

Aggrieved by the CIC’s directions, SEBI filed Writ Petition Nos. 10909 and 10910 of 2023, arguing that disclosure of the information would compromise its fiduciary obligations and harm sensitive economic interests. On the other hand, Mr. Agrawal filed Writ Petition Nos. 10887 and 10888 of 2023, challenging the CIC’s refusal to order broader disclosure. Recognizing the intertwined nature of these petitions, the High Court heard them together, reserving judgment on 25 June 2025 and delivering its decision on 10 July 2025.

Core Dispute:The central question before the High Court was whether the disclosure of SEBI’s internal documents, file notings, correspondence, and detailed inspection reports regarding stock exchanges should be permitted under the RTI Act, despite claims of fiduciary confidentiality, potential harm to competitive positions, and the need to protect third-party privacy. The Court had to examine whether the CIC correctly applied exemptions under Section 8(1)(d), (e), and (j) and whether it failed to comply with the mandatory third-party consultation procedure under Section 11 of the RTI Act before ordering disclosure.

Discussion on Judgments:The petitioners and respondents extensively cited landmark judgments to support their respective positions. Mr. Agrawal’s counsel relied heavily on Reserve Bank of India v. Jayantilal N. Mistry (2016) 3 SCC 525, where the Supreme Court directed the RBI to disclose similar inspection reports and rejected claims of fiduciary capacity, holding that transparency outweighed confidentiality in regulatory matters affecting public interest. The judgment was further affirmed by a larger Bench in Central Public Information Officer, Supreme Court of India v. Subhash Chandra Agarwal (2020) 5 SCC 481, which recognized the RTI Act as an instrument to promote accountability and transparency of public authorities.

SEBI, supported by stock exchanges, distinguished these precedents by referring to the Supreme Court’s order in HDFC Bank Ltd. v. Union of India 2022 SCC OnLine SC 1337, where the Court expressed prima facie reservations about the sweeping disclosure mandated in Jayantilal N. Mistry, emphasizing the need to balance transparency with privacy rights and economic security. SEBI argued that disclosure of inspection reports and internal documents would risk misuse of sensitive financial data and destabilize market regulation.

Additionally, SEBI and the stock exchanges cited the Constitution Bench’s observations in Central Public Information Officer, Supreme Court of India v. Subhash Chandra Agarwal (2020) 5 SCC 481, which clarified that while the RTI Act promotes transparency, it also includes qualified exemptions to protect sensitive information, and mandates procedural safeguards such as third-party consultation under Section 11 before disclosing information relating to third parties.

Reasoning and Analysis of the Judge:The High Court conducted a detailed analysis of the RTI Act’s scheme, focusing on the balance between transparency and protection of privacy and fiduciary interests. The Court accepted that the information sought under Queries Nos. 2, 3, 4, and 5 involved data provided by third parties such as stock exchanges and individuals applying as PIDs, which was held by SEBI in a fiduciary capacity or constituted personal information.

For Query No. 2, the Court upheld the CIC’s finding that file notings and correspondence related to the framing of policy on PIDs was exempt under Section 8(1)(e) because it was information held in fiduciary capacity. Regarding Query No. 3, which sought lists of selected and rejected PID candidates and related documents, the Court emphasized that even though the names of selected candidates are in the public domain, rejected candidates are entitled to privacy. Thus, under Section 8(1)(j) read with Section 11, SEBI was required to consult these third parties before deciding on disclosure.

The judges further observed that inspection reports requested under Queries Nos. 4 and 5 contained sensitive economic data about stock exchanges, and therefore, disclosure should only occur after following Section 11 to allow the exchanges to object if necessary. The Court also noted that broad, vague queries like those under Queries Nos. 6, 7, 8, and 9 were not sufficiently specific, making compliance impractical.

By remanding certain queries for fresh consideration, the Court reconciled the public’s right to information with the statutory duty to protect third-party interests, as mandated by the Constitution Bench in Subhash Chandra Agarwal.

Final Decision:The Bombay High Court partly upheld the CIC’s order and partly set it aside. It dismissed Mr. Agrawal’s petitions seeking broader disclosure and allowed SEBI’s petitions in part. The Court directed that information sought under Queries Nos. 3, 4, and 5 be reconsidered by the Central Public Information Officer after strictly following the procedure under Section 11 of the RTI Act. The CIC’s order on Queries Nos. 1, 2, 6, 7, 8, and 9 was left undisturbed. No order as to costs was made.

Law Settled in This Case:This decision reinforces that under the RTI Act, the right to information is balanced by qualified exemptions protecting privacy, commercial confidence, and fiduciary obligations. Importantly, when disclosure involves third-party information, compliance with Section 11 is mandatory, and authorities must invite objections from affected parties before deciding. The judgment also clarifies that even in matters involving regulatory bodies, courts must carefully assess the competing claims of transparency and confidentiality rather than apply precedents mechanically.

Case Title: Subhash Chandra Agrawal v. Central Public Information Officer

Date of Order: 10 July 2025

Case Number: Writ Petition No. 10887 of 2023

Neutral Citation: 2025:BHC-AS:28136-DB

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Mr. Justice M.S. Sonak and Hon’ble Mr. Justice Jitendra Jain

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

Kamal Raheja Vs Hahnemann Pure Drug Co

Trademark Infringement Action Sustained Despite Suspension of Drug Licence

Introduction:The case of Kamal Raheja v. Hahnemann Pure Drug Co. decided by the Division Bench of the High Court of Delhi on 8 July 2025, presented a significant question in trademark law: whether the suspension of a plaintiff’s drug licence precludes them from seeking an injunction to protect a registered trademark under the Trade Marks Act, 1999? The appeal arose from an order of the Commercial Court that had made an ex parte ad interim injunction absolute, restraining the appellant from using the mark ‘MARKS GO’, which was identical to the respondent’s registered trademark. The judgment explored the scope and interpretation of Sections 28, 29, 31 and 47 of the Trade Marks Act, reaffirming core principles regarding statutory rights of registered proprietors and the irrelevance of current commercial exploitation at the stage of an infringement action.

Factual Background:The respondent, Hahnemann Pure Drug Co., is the registered proprietor of the trademark ‘MARKS GO’, registered under Class 5 of the NICE Classification with effect from 14 September 2010. The registration covered skincare cream and related products, and was valid and subsisting on the date of the dispute. Alleging that the appellant, Kamal Raheja, was manufacturing and selling similar products under the identical trademark ‘MARKS GO’, the respondent approached the Commercial Court seeking protection of its statutory rights. Importantly, during the pendency of the dispute, the respondent’s licence to manufacture products under the Drugs and Cosmetics Act, 1940 was suspended following a show cause notice issued on 13 May 2024. The appellant relied heavily on this suspension to argue that the respondent could not lawfully exploit the mark and was therefore disentitled to seek an injunction.

Procedural Background:The respondent filed CS (Comm) 346/2023 before the District Judge (Commercial Court-02), Rohini, seeking a decree of permanent injunction restraining the appellant from using the infringing mark ‘MARKS GO’. Alongside, an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 was filed to obtain an interim injunction pending the suit. On 8 June 2023, the Commercial Court passed an ex parte ad interim injunction restraining the appellant and others from manufacturing, selling, or dealing in skincare creams under the mark ‘MARKS GO’ or any deceptively similar mark. The appellant, in response, filed an application under Order XXXIX Rule 4 CPC seeking vacation of this interim order. On 7 March 2025, the Commercial Court dismissed the appellant’s application and made the interim injunction absolute. Aggrieved, the appellant preferred FAO (COMM) 105/2025 before the High Court of Delhi.

Core Dispute:The principal question before the High Court was whether the respondent’s inability to commercially exploit the registered mark ‘MARKS GO’—due to suspension of its drug licence—deprived it of the right to seek relief against trademark infringement under Sections 28 and 135 of the Trade Marks Act, 1999? The appellant contended that without the ability to manufacture and sell, the respondent suffered no irreparable injury, making the grant of injunction unjustified. The respondent argued that registration alone was sufficient to entitle a proprietor to seek protection under the Act, and actual commercial use was neither required nor relevant to an infringement action.

Discussion on Judgments:During arguments, the appellant heavily relied on the regulatory action under the Drugs and Cosmetics Act, 1940 and contended that without an active licence, the respondent could neither use nor defend the mark. However, the Court noted that such reliance was misplaced, as the Trade Marks Act operates independently of the licensing regime under the Drugs and Cosmetics Act.

The Court discussed Section 28(1) of the Trade Marks Act, 1999, which explicitly provides that the registration of a trademark gives the registered proprietor the exclusive right to its use and to seek relief in respect of infringement. The judges also referred to Section 31(1) of the Trade Marks Act, which treats registration as prima facie evidence of validity in all legal proceedings relating to the registered trademark.

Additionally, the Court elaborated on Section 47(1) of the Act, explaining that non-use of a registered trademark may be a ground for removal from the register, but only through a separate application filed by an aggrieved person. The judges made clear that there was no evidence of any such application having been filed by the appellant. Therefore, the respondent's rights under the Trade Marks Act remained intact.

The discussion was firmly anchored in these statutory provisions: Section 28 (Rights conferred by registration), Section 29 (Infringement of registered trademarks), Section 31 (Registration to be prima facie evidence of validity), and Section 47 (Removal from register on ground of non-use).

Reasoning and Analysis of the Judge:The Court reasoned that the statutory right to seek relief for infringement is not contingent on the proprietor’s actual commercial use of the mark at the time of litigation. Registration itself confers the right to sue for infringement, irrespective of present capacity to manufacture or sell. The judges observed that the Trade Marks Act provides only two circumstances where a defendant may avoid the consequences of infringement: when the mark has been removed from the register on grounds of non-use under Section 47(1), or where statutory defences under Sections 30, 33, 34 or 35 apply. None of these circumstances were pleaded or proved by the appellant.

The Court clarified that the suspension of the respondent’s drug licence was under the Drugs and Cosmetics Act and could not diminish the respondent’s statutory rights under the Trade Marks Act. Moreover, mere non-use does not automatically extinguish the right; it must be followed by a formal cancellation process, which had not been initiated.

The Court also addressed the argument that the respondent had started using a new mark ‘MARKS OUT’, stating that this fact did not affect the respondent’s right to restrain infringement of the existing registered mark ‘MARKS GO’.

Final Decision: The High Court dismissed the appeal, upheld the Commercial Court’s order dated 7 March 2025 making the interim injunction absolute, and reaffirmed that the respondent was entitled to an injunction against the appellant’s infringing use of the mark ‘MARKS GO’. The Court held that the statutory rights of a registered proprietor under Section 28(1) could not be defeated solely because the mark was not in present commercial use, absent an order for removal under Section 47(1).

Law Settled in This Case: This case reiterates that the statutory right to seek relief for infringement under Section 28(1) of the Trade Marks Act, 1999 arises purely from the subsistence of registration and is not contingent on active commercial exploitation of the mark. Suspension of a manufacturing licence under the Drugs and Cosmetics Act or adoption of a new mark does not divest the proprietor of the registered mark from the right to seek an injunction. To challenge such rights, an aggrieved party must move for cancellation of the mark on grounds of non-use under Section 47(1); mere allegations of non-use are insufficient. 

Case Title: Kamal Raheja Vs. Hahnemann Pure Drug Co.

Date of Order: 08.07.2025

Case Number: FAO (COMM) 105/2025

Neutral Citation: 2025:DHC:5613-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