Atomberg Technologies Private Limited Vs. Luker Electric Technologies Private Limited

The Role of Prior Publication in Design Protection

Introduction: The case of Atomberg Technologies Private Limited v. Luker Electric Technologies Private Limited is a pivotal judicial examination of design infringement and passing off under the Indian Designs Act, 2000. Heard before the High Court of Bombay, this commercial appeal (COMMERCIAL APPEAL (L) NO. 16459 OF 2023) addresses the refusal of an interim injunction sought by Atomberg to restrain Luker Electric from manufacturing and selling ceiling fans allegedly infringing Atomberg’s registered design. The dispute centers on the aesthetic and functional elements of ceiling fan designs, raising critical questions about novelty, prior publication, and the scope of appellate interference in discretionary orders. 

Factual Background: Atomberg Technologies Private Limited, a company incorporated under the Companies Act, 1956, with its registered office in Navi Mumbai, Maharashtra, is a prominent player in the ceiling fan market. Since 2015, Atomberg has manufactured and sold ceiling fans, initially online from 2016 and later through retail channels across India from 2018. The company claims significant market success, with a sales turnover of Rs. 1,03,64,53,181.45 in the financial year 2021–2022, and has earned accolades for its innovative designs. Atomberg’s suit design, the Atomberg Renesa Ceiling Fan (formerly known as the Atomberg Gorilla Renesa Ceiling Fan), was created by its directors in September 2018 and registered under the Designs Act, 2000, on 8 September 2018, bearing registration number 306994 in class 23-04. The design’s unique features, as detailed in the plaint, include its aesthetic shape and configuration, which contribute to its distinctive appeal. A deed of assignment executed on 15 February 2021 transferred proprietary rights to Atomberg, reinforcing its legal claim over the design.

Luker Electric Technologies Private Limited, the defendant, is also a well-established company in the ceiling fan market, with a reported sales turnover of Rs. 299.42 crores in 2021–2022. Luker Electric secured design registrations for two ceiling fans, Size Zero Fan 1 and Size Zero Fan 2, on 21 March 2022. Atomberg alleges that these designs, particularly Size Zero Fan 1, which has been introduced to the market, infringe its registered design by slavishly copying its essential features. Atomberg conducted inquiries revealing Luker’s registrations and provided a comparison table highlighting similarities between the rival products. Luker Electric counters that its designs are the result of extensive research and development, denying infringement. It further contends that Atomberg’s design lacks novelty due to prior publication through social media posts, delivery challans, and invoices dated before 8 September 2018, specifically citing exhibits Q, R, and S. Luker also argues that Atomberg’s design is a mere trade variant, not significantly distinguishable from known designs, and that Atomberg suppressed material facts regarding prior publication.

Procedural Background: Atomberg initiated the suit before the High Court of Bombay, seeking a permanent injunction to restrain Luker Electric from infringing its registered design (no. 306994) and committing passing off by marketing fans deceptively similar to the Atomberg Renesa Ceiling Fan. Alongside the suit, Atomberg filed an interim application (INTERIM APPLICATION (L) NO. 16511 OF 2023) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, requesting a temporary injunction to prevent Luker Electric from manufacturing, selling, or distributing the allegedly infringing Size Zero Fan 1 and Size Zero Fan 2. Atomberg also sought the appointment of a court receiver to seize infringing products and related manufacturing materials, as well as an order for Luker to disclose details of sales and manufacturing processes. Luker Electric filed a detailed reply, supported by documents, opposing the interim application, arguing prior publication and lack of novelty in Atomberg’s design. The learned Single Judge dismissed the interim application, prompting Atomberg to file the present commercial appeal. The appeal was heard by a Division Bench.

Core Dispute: The central issue in this case is whether Luker Electric’s Size Zero Fan 1 and Size Zero Fan 2 infringe Atomberg’s registered design for the Atomberg Renesa Ceiling Fan and whether Luker’s actions constitute passing off. Atomberg asserts that Luker’s fans slavishly imitate the aesthetic and functional features of its registered design, as outlined in paragraph 10 of the plaint, which emphasize the fan’s unique shape and configuration. Atomberg argues that its design, registered on 8 September 2018, is novel and original, and that Luker’s registration on 21 March 2022 was obtained fraudulently. Luker Electric counters that Atomberg’s design was published prior to its registration through social media posts and commercial documents, rendering it non-novel under Section 4(b) of the Designs Act. Luker further contends that Atomberg’s design is a trade variant, lacking significant distinction from known designs, and that the features claimed by Atomberg are functional rather than aesthetic, thus ineligible for design protection under Section 4(c). On passing off, Luker argues that mere similarity in design is insufficient without evidence of false representation, and it highlights differences in packaging and product features to negate Atomberg’s claims. The appeal focuses on whether the Single Judge erred in dismissing the interim application by misinterpreting evidence of prior publication and novelty.

Discussion on Judgments :Several judgments were cited by the parties to support their arguments, each providing context to the legal principles at play. Atomberg relied on Frito-Lay North America Inc. v. Balaji Wafers Pvt. Ltd. (2023 SCC OnLine Bom 2375), arguing that the Single Judge failed to appreciate that even minor changes in design can be substantial in the context of aesthetic appeal, particularly for products like ceiling fans where visual distinction is significant. This judgment emphasizes that the novelty of a design must be assessed based on its overall aesthetic impact, supporting Atomberg’s claim that its design is unique. Atomberg also cited Videocon Industries Ltd. v. Whirlpool of India Ltd. (2012 SCC OnLine Bom 1171), which holds that a design intended to enhance a product’s aesthetic appeal to consumers constitutes an innovation, reinforcing Atomberg’s argument that the Renesa Ceiling Fan’s design is novel due to its pleasing shape and configuration.

Luker Electric referenced several cases to challenge the validity of Atomberg’s design registration. It cited Faber Castell Aktiengesellschaft v. M/s Pik Pen Pvt. Ltd. ((2003) 2 PTC 538), arguing that Atomberg’s design lacks novelty due to prior publication, as evidenced by social media posts and invoices predating the registration. This case underscores that a design disclosed to the public before registration cannot be considered original under the Designs Act. Luker also relied on Selvel Industries v. Om Plast (India) (1992 SCC OnLine Del 1923), which supports the principle that a design must be significantly distinguishable from known designs to be registrable, bolstering Luker’s contention that Atomberg’s design is a trade variant. Additionally, Luker cited Philips Lighting Holding B.V. v. Jai Prakash Agarwal (2018 SCC OnLine Del 1923), emphasizing that functional features cannot form the basis of a registrable design, aligning with its argument that Atomberg’s claimed features are functional rather than aesthetic. Luker further referenced an unreported order dated 6 March 2012 in Appeal No. 62 of 2012 from the Bombay High Court Division Bench, reinforcing the importance of prior publication in invalidating design registration.

Both parties cited Wander Ltd. v. Antox India Pvt. Ltd. (1990 Supp SCC 277), a seminal Supreme Court decision on the scope of appellate interference in discretionary orders. Atomberg argued that the Single Judge’s dismissal was perverse, ignoring evidence that the fans depicted in exhibits Q, R, and S were distinct from the suit design. Luker relied on the same case to argue that the Single Judge’s discretion was exercised judicially, and appellate interference is unwarranted unless the decision is arbitrary or capricious. The Supreme Court’s observations in Wander Ltd., particularly in paragraph 14, clarify that an appellate court should not substitute its own discretion unless the trial court’s decision is demonstrably perverse or ignores settled legal principles. Atomberg also cited Ramakant Ambala Choksi v. Harish Ambala Choksi (case details not fully provided but referenced in the context of appellate jurisdiction), which reiterates the principles in Wander Ltd., emphasizing that appellate courts must assess whether the trial court’s discretion was exercised reasonably.

Reasoning and Analysis of the Judge: The Division Bench,  meticulously analyzed the Single Judge’s dismissal of Atomberg’s interim application. The core of their reasoning centered on the principles governing appellate interference in discretionary orders, as laid down in Wander Ltd. v. Antox India Pvt. Ltd. The court emphasized that an appellate court should not interfere with a trial court’s discretion unless it is shown to be arbitrary, capricious, perverse, or contrary to settled legal principles. The Single Judge’s finding that Atomberg’s design was prior published was based on exhibits Q, R, and S (social media posts from August 2018) and commercial documents like delivery challans and invoices dated before 8 September 2018. These documents, coupled with Atomberg’s admission in paragraph 8 of the plaint that the Atomberg Renesa Ceiling Fan was formerly known as the Atomberg Gorilla Renesa Ceiling Fan, led the Single Judge to infer that the design was in the public domain before registration, thus undermining its novelty under Sections 4(b) and 19(b) of the Designs Act.

The Division Bench found no error in this reasoning, noting that Atomberg’s failure to disclose prior publications in its plaint was a critical factor. The court rejected Atomberg’s argument that the fans in exhibits Q, R, and S were distinct (e.g., Renesa+ or other models), finding that Atomberg’s rejoinder affidavit explanations about house-marks (Atomberg and Gorilla) were insufficient at the interim stage. The Single Judge’s observation that the designs in exhibits Q, R, and S were prima facie similar to the registered design was upheld, as was the conclusion that the suit design might be a trade variant, lacking significant distinction from known designs under Section 4(c). The court also addressed Atomberg’s reliance on Frito-Lay and Videocon, noting that while minor design changes can be substantial in some contexts, the evidence here suggested trivial differences, insufficient to establish novelty.

On the issue of passing off, the court agreed with the Single Judge that mere design similarity is insufficient without evidence of false representation. Luker’s table of comparison highlighted differences in the canopy, rod, and packaging, negating the likelihood of consumer confusion. The Division Bench found that the Single Judge’s discretion was exercised judicially, supported by a reasoned analysis of the evidence and applicable law, including Sections 2(d), 4, 19, and 22 of the Designs Act. The court concluded that the decision was neither arbitrary nor perverse, warranting no interference.

Final Decision:The Division Bench dismissed Atomberg’s commercial appeal (COMMERCIAL APPEAL (L) NO. 16459 OF 2023) and the associated interim application (INTERIM APPLICATION (L) NO. 16511 OF 2023) on 7 June 2025. No order was made as to costs. The court upheld the Single Judge’s refusal to grant an interim injunction, finding that Atomberg failed to establish a prima facie case of design infringement or passing off, given the evidence of prior publication and lack of novelty in its registered design.

Law Settled in This Case: This case reinforces several key principles of design law and appellate jurisdiction in India. First, it underscores the importance of novelty and originality under Sections 2(d) and 4 of the Designs Act, 2000, affirming that a design published in the public domain before registration is ineligible for protection. Second, it clarifies that a plaintiff’s failure to disclose prior publications in its pleadings can weaken its case for interim relief, as transparency is crucial in design infringement claims. Third, the case reiterates that functional features do not qualify for design protection, and a design must be significantly distinguishable from known designs to be registrable. Fourth, on passing off, the judgment emphasizes that mere design similarity is insufficient; plaintiffs must demonstrate false representation to succeed. Finally, the case reaffirms the principles in Wander Ltd. v. Antox India Pvt. Ltd., limiting appellate interference in discretionary orders to cases where the trial court’s decision is arbitrary, capricious, or perverse. These principles guide courts in balancing the protection of intellectual property rights with fair competition.

Case Title: Atomberg Technologies Private Limited Vs. Luker Electric Technologies Private Limited Date of Order: 7 June 2025 

Case Number: COMMERCIAL APPEAL (L) NO. 16459 OF 2023 

Neutral Citation: 2025-BHC-OS-1183 

Name of Court: High Court of Bombay 

Name of Judge: Hon’ble Chief Justice Alok Aradhe and Hon’ble Mr. Justice M.S. Karnik

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

Aquestia Limited Vs. Automat Industries Private Limited

Grant of a patent to a defendant does not provide a defense against infringement of a prior patent

Introduction: The case of Aquestia Limited v. Automat Industries Private Limited represents a significant judicial examination of patent infringement within the realm of fluid control valve technology. This legal dispute centers on allegations that the defendants' product, marketed under the "Hydromat" brand, infringes the plaintiff’s registered patent, IN 427050, titled "A Fluid Control Valve." The case raises critical questions about patent claim construction, the relevance of a defendant’s own patent as a defense to infringement, and the role of prior employment relationships in intellectual property disputes. 

Factual Background: Aquestia Limited, the plaintiff, is a company with a robust portfolio of approximately 145 patents, specializing in the development of advanced valve technologies, including mechanical and hydraulic valves. The suit patent, IN 427050, pertains to a fluid control valve characterized by an asymmetric sealing diaphragm, which enhances low-pressure operation and fluid flow control. This patent, originally granted to Dorot Management Control Valves Ltd., was assigned to Aquestia following a merger. The plaintiff has achieved significant commercial success, with global revenues exceeding USD 100 million in 2023 and sales of approximately 28,000 units of the patented valves, generating around USD 5 million. The plaintiff’s products are distributed in multiple countries, including India, through established trade channels.

The defendants, led by Automat Industries Private Limited, are engaged in the manufacture and sale of irrigation solutions, including valves branded as "Hydromat." Defendant no. 5, a former employee of Netafim (the plaintiff’s distributor), joined Automat Industries as Chief Technology Officer in March 2020. The plaintiff alleges that defendant no. 5, during his tenure at Netafim from 2013 to 2019, was privy to technical details of the suit patent, particularly the "Series 75 Valve" technology. In January 2023, the plaintiff became suspicious of the defendants’ activities upon learning of defendant no. 5’s role and the announcement of the Hydromat valves, which were promoted for their "Cured Bridge" innovation. Subsequent investigations, including purchases of Hydromat valves in October 2023 and February 2024, confirmed the plaintiff’s belief that these valves infringed the suit patent. The plaintiff conducted detailed examinations, comparing the defendants’ product to the suit patent’s claims, and initiated legal action in October 2024.

The defendants, in response, assert that their Hydromat valves are covered by their own patent, IN 536, which features a curved sealing bridge designed to reduce turbulence and energy loss. They argue that their product is distinct from the plaintiff’s invention and deny any infringement. Additionally, they claim that defendant no. 5 was only involved in commercial aspects during his time at Netafim and lacked access to the suit patent’s technical details. The defendants further allege that the plaintiff’s suit is motivated by mala fide intent to stifle competition and is barred by delay and laches.

Procedural Background: The plaintiff filed the suit, CS (COMM) 860/2024, seeking a permanent injunction to restrain the defendants from infringing the suit patent, IN 427050, along with other ancillary reliefs. Concurrently, the plaintiff filed an application, I.A. 4111/2024, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, for an interim injunction to prevent the defendants from manufacturing, selling, or exporting the Hydromat valves. The plaintiff also initiated a revocation petition, CO (COMM.IPD-PAT) 1/2025, challenging the validity of the defendants’ patent, IN 536. The defendants filed written statements denying infringement and asserting the protection of their own patent. 

Core Dispute:The central issue in this case is whether the defendants’ Hydromat valves infringe the plaintiff’s patent, IN 427050, specifically its independent Claim 1, which describes a fluid control valve with an asymmetric sealing diaphragm and differential diaphragm surface areas. The plaintiff contends that the defendants’ product incorporates these novel features, as evidenced by measurements showing unequal diaphragm areas (4900 mm² on the inlet side versus 4488 mm² on the outlet side). The defendants argue that their product, covered by patent IN 536, features a distinct curved sealing bridge and operates on different technical principles, thus not infringing the suit patent. They further assert that their patent was granted after the Indian Patent Office considered the suit patent as prior art, establishing its non-infringing nature. Additionally, the defendants raise defenses of delay, laches, and lack of commercial presence by the plaintiff in India. The involvement of defendant no. 5, a former employee with potential access to the plaintiff’s technical know-how, adds a layer of complexity, raising questions about the misuse of confidential information.

Discussion on Judgments: Several judgments were cited by the parties to support their respective positions, each providing context to the legal arguments advanced. The plaintiff relied on Hindustan Lever Limited v. Lalit Wadhwa (2007 SCC OnLine Del 1077), arguing that the mere grant of a patent to the defendants does not provide immunity against infringement of the plaintiff’s prior patent. This judgment clarifies that a patent confers an exclusionary right under Section 48 of the Patents Act, 1970, to prevent others from using the patented invention but does not grant the patentee the right to infringe another’s patent. The plaintiff emphasized that the defendants’ patent, IN 536, does not negate the possibility of infringing the suit patent, as the court must compare the defendants’ product with the claims of the suit patent.

The plaintiff also cited Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries ((1979) 2 SCC 511), where the Supreme Court underscored the importance of the complete specification in infringement proceedings. This judgment supports the plaintiff’s approach of focusing on the claims of the suit patent, particularly the novel features of the asymmetric sealing diaphragm and differential diaphragm areas, to establish infringement.

The defendants referenced Boehringer (2021 SCC OnLine Del 5383), arguing that public interest considerations, such as access to affordable products, should influence the grant of an injunction. However, the court distinguished this case, noting that Boehringer involved public health and access to affordable medicine, which is not applicable to the present case involving irrigation valves.

Both parties cited a 2024 judgment (2024 SCC OnLine Del 5510), though its repeated mention in the document suggests it was referenced multiple times by the defendants to support their non-infringement claims, possibly emphasizing technical distinctions or procedural aspects. Additionally, the plaintiff relied on a 2025 judgment (2025 SCC OnLine Del 4681) and another 2025 case (2025 SCC OnLine Del 4883), likely to reinforce the principles of claim construction and infringement analysis. The court also considered Guala Closures (specific citation not provided in the document but referenced), where a coordinate bench analyzed infringement by comparing the suit patent with the defendant’s product, irrespective of the defendant’s own patent.

Reasoning and Analysis of the Judge:  The judge adopted a claim-to-product comparison, as mandated by legal precedent, rather than the defendants’ product-to-product approach. The novel features of Claim 1 of the suit patent, namely the asymmetric sealing diaphragm and differential diaphragm surface areas, were found to be present in the defendants’ Hydromat valves. The plaintiff’s claim mapping, supported by measurements (4900 mm² versus 4488 mm²), established that the defendants’ diaphragm was asymmetric, with a larger area over the inlet path, aligning with the suit patent’s claims. The defendants’ failure to provide specific measurements or rebuttal evidence weakened their non-infringement argument.

The judge addressed the defendants’ reliance on their patent, IN 536, by citing Hindustan Lever, which clarifies that a patent does not confer a positive right to practice the invention if it infringes an earlier patent. The defendants’ patent specification itself admitted to unequal areas on the upstream and downstream sides, contradicting their claim of a symmetric diaphragm. Furthermore, the suit patent’s Claim 1 does not specify the shape of the sealing bridge, and dependent Claim 9 explicitly includes a curved sealing bridge, negating the defendants’ argument that their curved bridge design distinguishes their product.

Regarding defendant no. 5, the judge examined confidential email communications from 2015–2016, which demonstrated that defendant no. 5 was involved in technical discussions about the plaintiff’s valve technology during his tenure at Netafim. His technical qualifications and role as an inventor in the defendants’ patent further undermined his claim of being solely involved in commercial aspects. This raised a prima facie case of potential misuse of technical know-how.

On the issue of delay, the judge found the plaintiff’s explanation—spanning investigations from November 2022 to product testing in August 2024—cogent and sufficient, dismissing the defendants’ claim of laches. The plaintiff’s evidence of sales in India since May 2021 also rebutted the defendants’ argument about lack of commercial presence. The judge concluded that the plaintiff established a prima facie case of infringement, with irreparable harm and a balance of convenience favoring the grant of an interim injunction.

Final Decision: The court granted the plaintiff’s application for an interim injunction, restraining the defendants, their partners, employees, agents, and related parties from making, using, selling, distributing, advertising, exporting, or importing any product that infringes the suit patent, IN 427050. The defendants were further directed to remove all listings and references to the infringing Hydromat valves from e-commerce and their own platforms. The court clarified that these observations were for the purpose of the interim application and would not influence the final outcome of the suit.

Law Settled in This Case: This case reinforces several key principles of patent law in India. First, it reaffirms that the grant of a patent to a defendant does not provide a defense against infringement of a prior patent, as a patent confers only an exclusionary right under Section 48 of the Patents Act, 1970. Second, it emphasizes the importance of claim-to-product analysis in infringement proceedings, focusing on the novel features outlined in the patent’s claims, as supported by Biswanath Prasad Radhey Shyam. Third, the case clarifies that the shape of a component (e.g., a curved versus straight sealing bridge) is immaterial if the patent’s claims cover both embodiments. Finally, it underscores the relevance of prior employment relationships in assessing potential misuse of technical know-how, particularly when supported by documentary evidence. These principles guide courts in evaluating patent infringement claims and balancing the rights of patentees with competitive market dynamics.

Case Title: Aquestia Limited Vs. Automat Industries Private Limited

Date of Order: 01.08.2025

Case Number: CS (COMM) 860/2024

Neutral Citation: 2025:DHC:6312

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

Verizon Trademark Services Vs Verizon Computers

Case Title: Verizon Trademark Services Vs Verizon Computers

Date of Order: July 25, 2025

Case Number: CS (COMM) 740/2025

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Tejas Karia

The plaintiffs, part of the globally recognized Verizon Group of Companies, filed a suit seeking permanent injunction and ancillary reliefs against the defendant, Verizon Computers, for infringement and passing off of the plaintiffs' well-known trademark "VERIZON." The plaintiffs adopted and began using the trademark "VERIZON" in the year 2000, deriving from the Latin word "Veritas" (truth) and "Horizon." With trademark registrations in over 200 countries including India, the plaintiffs have been serving major global businesses and government agencies, with an annual revenue of approximately USD 134 billion in 2024.

The plaintiffs hold multiple registrations for the “VERIZON” mark across a wide range of classes including 9, 16, 35, 36, 37, 38, 41, 42, and others, with the earliest Indian registration dating back to March 6, 2000. The mark has already been recognized as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999 by the Delhi High Court in a prior decision dated July 11, 2023 in Verizon Trademark Services LLC v. Vikash Kumar.

The plaintiffs discovered in June 2025 that the defendant, operating under the trade name “Verizon Computers,” was using the mark “VERIZON” in its business related to IT hardware and related services, having registered the name with the GST Department in 2020. The defendant had listings on platforms like Just Dial and IndiaMart, using a device mark that entirely subsumed the plaintiff’s mark “VERIZON.” The plaintiffs submitted that the marks were phonetically, visually, and structurally identical, and that the services and consumer base were also the same.

The court found this to be a classic case of "triple identity," where the trademark, goods and services, and trade channels were all identical. The court held that the plaintiff’s trademark was indistinguishably similar to that used by the defendant, and the adoption of the mark by the defendant appeared dishonest and likely to cause confusion and deception in the minds of the public.

Finding a prima facie case in favour of the plaintiffs, the court granted an ad-interim ex parte injunction restraining the defendant and all persons acting on its behalf from using the mark “VERIZON COMPUTERS” or any other mark deceptively similar to “VERIZON.” The defendant was also restrained from manufacturing, selling, distributing, importing, or exporting any products under the impugned mark. The matter was listed for further hearing on October 16, 2025.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Astha Jain Vs Ashok Kumar

Case Title: Astha Jain Vs Ashok Kumar 

Date of Order: July 18, 2025

Case Number: CS (COMM) 502/2025

Name of Court: High Court of Delhi 

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

The plaintiffs, engaged in the manufacture and sale of personal care and wellness products under trademarks such as ‘AYUVYA’, ‘BOOBEAUTIFUL’, ‘i-GAIN+’, and ‘IMFRESH’, filed a commercial suit seeking relief against trademark and copyright infringement, passing off, and related acts by multiple defendants. Plaintiff no.1, Managing Director of plaintiff no.2, originally designed the ‘AYUVYA’ logo in 2019, which was later assigned to her from a sister concern through a deed dated July 20, 2022. The plaintiffs also obtained trademark registrations for ‘i-GAIN+’ and ‘IMFRESH’ in July 2025 and have pending applications for ‘BOOBEAUTIFUL’. The plaintiffs claimed a turnover of approximately ₹26 crores for the financial year 2023–24 in connection with their products bearing the ‘AYUVYA’ mark.

The plaintiffs alleged that defendants no.2 to 21 were engaged in the sale of counterfeit products bearing their trademarks via e-commerce platforms operated by defendants no.22 to 29. They contended that the counterfeit products were deceptively similar to their own and intended to mislead consumers, thereby causing confusion and infringing upon their intellectual property rights.

On examining the pleadings and evidence presented, the Court found a prima facie case in favour of the plaintiffs. The Court held that the impugned products appeared to be counterfeit versions of the plaintiffs’ goods and that defendants were attempting to misrepresent association with the plaintiffs’ business. The Court concluded that continued sale of these infringing goods would cause irreparable harm to the plaintiffs' goodwill and mislead the public.

Certain defendants, including defendants no.2 to 7 and 20, voluntarily stated before the Court that they were not using the impugned marks and agreed to take down product listings from various e-commerce platforms such as Amazon, IndiaMart, Flipkart, Meesho, Facebook, and Instagram. Defendant no.20 further confirmed that a listing using the mark ‘BOOBEAUTIFUL’ had been removed and undertook not to sell infringing products going forward.

In view of these submissions and on consideration of balance of convenience and potential irreparable harm, the Court passed an interim order restraining defendants no.2 to 21 from using the marks ‘AYUVYA’, ‘BOOBEAUTIFUL’, ‘i-GAIN+’ and ‘IMFRESH’ till the next date of hearing. The defendants were also directed to ensure removal of infringing listings from all relevant platforms.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Adyar Gate Hotels Limited Vs. ITC Limited

Case Title: Adyar Gate Hotels Limited Vs. ITC Limited and Another

Date of Order: February 24, 2025

Case Number: FAO(OS)(COMM) 32/2025

Neutral Citation: 2025 SCC OnLine Del 1209 : (2025) 102 PTC 151

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

The appellant, Adyar Gate Hotels Limited, challenged the ex parte ad-interim injunction passed by the Single Judge of the Delhi High Court on 13.02.2025 in CS(COMM) 119/2025, restraining it from using the mark "DAKSHIN" for its restaurant business. The mark in question had been used since 1989 in a hotel previously managed by the respondents, ITC Limited, under the Welcomgroup Park Sheraton name. The appellant claimed that it conceived and initiated the use of the name "Dakshin" in 1989 and continued using it even after the management agreement with the respondents ended in 2015. The appellant subsequently partnered with InterContinental Hotels and continued to operate the Dakshin restaurant until the property was redeveloped in 2024, when it temporarily shifted the restaurant to another location on the same street.

The appellant argued that it was not properly served the suit, which was only sent by email and landed in the spam folder. They contended that no cease and desist notice had been issued by the respondents before instituting the suit, and further objected to the territorial jurisdiction of the Delhi High Court, as neither the trademark was registered in Delhi nor did any cause of action arise there.

The respondents countered that "Dakshin" was their registered trademark with usage dating back to 1989 and that the appellant, being a former licensee, could not use the mark independently, especially from new premises. They argued that ex parte injunction was justified given the dilution and potential damage to their goodwill.

The Division Bench observed that while ex parte injunctions are permissible, they must comply with the standards of Order XXXIX Rule 3 of the Civil Procedure Code, which generally requires notice unless delay would defeat the purpose of the injunction. The Court found that the appellant had been using the mark openly since 2015 without prior legal challenge by the respondents and had even registered the mark, which remained uncontested. Moreover, the respondents did not show urgency or risk of irreparable harm justifying a unilateral order.

Considering these peculiar facts, the Division Bench set aside the ex parte ad-interim injunction dated 13.02.2025 and directed the appellant to file its response to the interim application within one week. The matter was remanded to the Single Judge to decide the injunction application on merits, uninfluenced by the observations of the appellate court.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Ferrero SPA & Ors Vs. M.B. Enterprises

Ferrero SPA & Ors Vs. M.B. Enterprises: July 28, 2025:CS (COMM) 593/2021:2025:DHC:6128:Saurabh Banerjee

The plaintiffs, part of the globally renowned Ferrero Group, initiated a suit seeking a permanent injunction against the defendant, M.B. Enterprises, for trademark infringement, passing off, delivery up, and damages in relation to their registered trademark ‘NUTELLA’. Ferrero first adopted the ‘NUTELLA’ mark in 1964 and has continuously used it in India since at least 2009, if not earlier. The mark enjoys global recognition and is registered under multiple classes in India dating back to 1975.

Following a raid by the Food & Drug Administration in Maharashtra in October 2021, it was discovered that the defendant was engaged in the large-scale manufacture and sale of counterfeit ‘NUTELLA’ hazelnut cocoa spread under unhygienic conditions. Approximately 9,53,400 units of fake product and over 4,00,000 units of counterfeit packaging were seized. The plaintiffs were notified by the FDA and thereafter filed the present suit. Despite being duly served, the defendant did not appear or file a written statement and was proceeded ex parte.

The core dispute in the suit was whether the defendant's actions amounted to trademark infringement and passing off of the plaintiffs’ ‘NUTELLA’ mark, including trade dress and packaging elements that closely resembled the original. The plaintiffs also sought a declaration that ‘NUTELLA’ is a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.

The Court examined the evidence on record, including registration certificates, global and Indian sales figures, advertisement expenses, and documentation of the FDA raid. The Court found that the plaintiffs had a well-established statutory and proprietary right over the ‘NUTELLA’ trademark and associated trade dress. The defendant’s use of an identical name, packaging, and trade dress without authorization indicated a clear mala fide intent to deceive consumers and capitalize on the goodwill of the plaintiffs. Given the product’s edible nature and risk to public health, the Court invoked a heightened standard of scrutiny, relying on precedents such as Cadila Health Care Ltd. v. Cadila Pharmaceuticals (2001) and Dominos IP Holder LLC v. MS Domnick Pizza (2023).

The Court decreed the suit in favour of the plaintiffs. A permanent injunction was granted restraining the defendant and all persons acting on its behalf from using the ‘NUTELLA’ trademark or any deceptively similar marks, labels, or trade dress. The Court awarded ₹30,00,000 as damages and an additional ₹2,00,000 in costs payable to the Delhi High Court Bar Association Lawyers Social Security and Welfare Fund. Furthermore, the Court formally declared ‘NUTELLA’ as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999, based on long-standing use, promotional activity, sales figures, and global recognition.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

KRB Enterprises Vs KRBL Limited

Introduction:The case of KRB Enterprises & Ors. Vs KRBL Limited revolves around a trademark dispute adjudicated by the High Court of Delhi. This appeal, filed under Section 13(1A) of the Commercial Courts Act, 2015, challenges an ad-interim injunction order issued by the District Judge, restraining the appellants from using the trademark 'KRB', which was alleged to be deceptively similar to the respondent's registered trademark 'KRBL'. The dispute centers on allegations of trademark infringement and passing off, with the respondent claiming prior use and registration of its mark, while the appellants argued honest adoption and acquiescence by the respondent. 

Factual Background: The appellants, comprising KRB Enterprises (a partnership firm), KRB Rice Mills Private Limited, and Rajesh Kumar Jindal (proprietor of Jindal Traders), are engaged in manufacturing, trading, and marketing goods such as rice, coffee, and sugar, falling under Class 30 of the Trade Marks Act, 1999. The respondent, KRBL Limited, is a well-established company involved in the production, processing, and marketing of food products like rice, quinoa, and chia seeds. Incorporated in 1993 as Khushi Ram Bihari Lal Ltd., it adopted the name KRBL Ltd. in 2000 and has since used the trademark 'KRBL' along with a device of paddy forming a diamond shape, registered under Class 35 (advertising, distribution, marketing, wholesale, and retail services related to rice) and previously under Class 30 (goods like rice). The respondent also holds a copyright registration for the artistic work of its trademark.

The respondent alleged that the appellants’ use of the mark 'KRB' infringed its registered trademark 'KRBL' and constituted passing off by creating confusion among consumers. The respondent claimed continuous use of its mark since 2000, supported by substantial sales figures and advertising efforts, establishing significant goodwill. 

It discovered the appellants’ use of 'KRB' in 2016 through trademark applications and opposed them, but found no market use until May 2022, prompting the filing of a suit in July 2022. The appellants countered that they adopted 'KRB' in 2009, derived from the initials of family members, and had been using it openly without objection. They further claimed that the respondent acquiesced to their use, as evidenced by commercial transactions since 2014, and argued that the respondent’s withdrawal of its Class 30 registration indicated abandonment.

Procedural Background: The respondent initiated a suit, CS(COMM) No. 430/2022, before the District Judge (Commercial Courts), South District, Saket Courts, Delhi, seeking an injunction against the appellants for trademark infringement and passing off. On February 21, 2024, the District Judge granted an ad-interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, restraining the appellants from using the 'KRB' mark. Aggrieved, the appellants filed an appeal (FAO(COMM) 69/2024) before the High Court of Delhi, challenging the injunction on grounds including lack of jurisdiction, non-use of the respondent’s mark on goods, absence of deceptive similarity, acquiescence, and abandonment. 

Legal Issue: The primary legal issue in this case is whether the appellants’ use of the trademark 'KRB' infringes the respondent’s registered trademark 'KRBL' under Class 35 and constitutes passing off, warranting an ad-interim injunction?

Subsidiary issues include whether the respondent’s registration in Class 35 extends protection to goods in Class 30, whether the respondent acquiesced to the appellants’ use of the mark, whether the respondent abandoned its mark by withdrawing its Class 30 registration, and whether the District Judge had territorial jurisdiction to entertain the suit? 

Discussion on Judgments: The parties relied on several judicial precedents to support their arguments, each cited in specific contexts to address trademark law principles, acquiescence, abandonment, and jurisdiction.

The appellants cited Edward v. Dennis, (1885) 30 Ch D 454, to argue that trademark protection requires actual use on goods, asserting that the respondent’s non-use of 'KRBL' on its products (which were sold under brands like 'India Gate') precluded infringement claims. 

Similarly, In re Ducker’s Trade Mark, [1929] 1 Ch 113, was referenced to emphasize that trademark rights depend on use, reinforcing their claim of the respondent’s non-use. 

The appellants also relied on Thermax Trade Mark, (1985) RPC 403, and George Key Ld’s TM, (1953) 71 RPC, to support the requirement of actual use for trademark protection. 

Have a Break Trade Mark, 1993 RPC Volume 10, was cited to argue that the respondent’s mark, registered in Class 35 (services), does not extend to Class 30 (goods). 

Sumant Prasad Jain v. Sheojanam Prasad, (1973) 1 SCC 56, was invoked to underline the necessity of use for trademark rights. 

On jurisdiction, the appellants cited Dhodha House v. S.K Maingi, (2006) 9 SCC 41, Jay Engineering Works Ltd. v. Ramesh Aggarwal, 2006 SCC OnLine Del 1356, Indian Performing Rights Society Limited v. Sanjay Dalia, (2015) 10 SCC 161, and Shree Nath Heritage Liquor Pvt. Ltd. v. Octga Green Power & Sugar Co. Ltd., 2017 SCC OnLine Del 9137, arguing that the suit was filed in the wrong territorial jurisdiction. 

For acquiescence, they relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and M/s KRBL Limited v. Lal Mahal Ltd. & Anr., 2015 SCC OnLine Del 13793, asserting that the respondent’s delay and prior business dealings constituted acquiescence. 

On the anti-dissection principle, the appellants cited Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296, Parle Products v. J.P & Co., AIR 1972 SC 1359, and Griffith v. Vick Chemicals, AIR 1956 Cal 654, arguing that the marks must be compared as a whole, not dissected into parts.

The respondent countered with Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, Jaquar Company Pvt Ltd. v. Villeroy Boch Ag & Anr., 2023 SCC OnLine Del 2734, Montari Overseas Ltd. v. Montari Industries Ltd., 1996 16 PTC 142, and Montari Industries Ltd. v. Montari Overseas Ltd., (1995) 15 PTC 399, to argue that a trade name can function as a trademark if it serves as a source identifier, supporting their claim of continuous use of 'KRBL'. 

For deceptive similarity and dishonest adoption, they cited Midas Hygiene Industries (P) Ltd. & Anr. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90, Sterling Agro Industries Limited v. AST Trading Company & Ors., 2024 SCC OnLine Del 1145, T.V Venugopal v. Ushodaya Enterprises Limited & Anr., (2011) 4 SCC 85, M/s Ansul Industries v. M/s Shiva Tobacco Company, ILR (2007) I Delhi 409, and Rolex SA v. Alex Jewellery Pvt Ltd. & Ors., 2009 SCC OnLine Del 753, asserting that the appellants’ mark 'KRB' was likely to cause confusion. 

On abandonment, the respondent relied on McCarthy on Trademarks, Chapter 17, and Hardie Trading Ltd. & Anr. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92, arguing that abandonment requires an intent to permanently relinquish rights, which was absent given their immediate reapplication for Class 30 registration. 

For diligence in protecting their mark, they cited N.R Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 16 PTC 476. 

On acquiescence, they referenced Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited, (2019) 80 PTC 491, arguing that low-level business transactions did not imply management knowledge or consent. Finally, on the extension of Class 35 protection to Class 30, they cited FDC Limited v. Docsuggest Healthcare Services Pvt Ltd. & Ors., 2017 (69) PTC 218 (Del), emphasizing the allied nature of goods and services.

Reasoning and Analysis of the Judge:The Division Bench cited Wander Ltd. v. Antox India P. Ltd., 1990 Supp SCC 727, and Ramakant Ambalal Choksi v. Harish Ambalal Choksi & Ors., 2024 SCC OnLine SC 3538, which hold that an appellate court should not interfere with a trial court’s discretionary order unless it is arbitrary, capricious, or perverse. The court emphasized that perversity arises from a complete misreading of evidence or reliance on conjectures, not merely a different interpretation of facts.

On the substantive issues, the court rejected the appellants’ claim that the respondent’s mark 'KRBL', registered in Class 35, did not extend to Class 30 goods. Citing Section 2(2)(c) of the Trade Marks Act, 1999, and Google Llc v. DRS Logistics (P) Limited & Ors., 2023 SCC OnLine Del 4809, the court held that the use of a mark encompasses not only physical application but also any relation to goods or services, such as advertising or marketing. The respondent’s extensive documentation, including invoices and sales figures from 2000 to 2021, demonstrated continuous use of 'KRBL' as a source identifier, satisfying the definition of a trademark under Section 2(1)(zb). The court found that the appellants’ mark 'KRB' was deceptively similar to 'KRBL', as the dominant parts of the marks were nearly identical, likely causing consumer confusion, especially given the identical goods (rice) involved.

Addressing acquiescence, the court relied on Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, and Make My Trip (India) Pvt. Ltd., (2019) 80 PTC 491, holding that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions. 

The respondent’s lack of knowledge about the appellants’ use until 2022, despite earlier trademark oppositions in 2016, negated acquiescence. The court also dismissed the abandonment argument, noting that the respondent’s withdrawal of its Class 30 registration in 2017, followed by an immediate reapplication, was due to erroneous legal advice and did not indicate an intent to abandon, as required by McCarthy on Trademarks and Hardie Trading Ltd., (2003) 11 SCC 92.

On jurisdiction, the court found that the respondent’s pleadings regarding the availability of infringing products online supported the South District’s jurisdiction under Section 134 of the Trade Marks Act, deeming the issue a matter for trial. The court concluded that the respondent established a prima facie case of infringement and passing off, with the balance of convenience and risk of irreparable injury favoring the injunction.

Final Decision:The High Court dismissed the appeal, upholding the District Judge’s ad-interim injunction against the appellants. 

Law Settled in This Case: This case reinforces several key principles of trademark law in India. First, it clarifies that a trade name can function as a trademark if it serves as a source identifier, even if not physically affixed to goods, as per Sections 2(1)(m), 2(1)(zb), and 2(2)(c) of the Trade Marks Act, 1999. 

Second, it establishes that trademark protection under Class 35 (services) can extend to Class 30 (goods) if the goods and services are allied, focusing on the likelihood of confusion rather than strict class boundaries. Third, it reiterates that acquiescence requires positive acts of encouragement, not mere silence or low-level transactions, and that abandonment necessitates a clear intent to relinquish rights. Finally, the case underscores the limited scope of appellate interference in discretionary injunction orders, requiring a demonstration of perversity or arbitrariness.

KRB Enterprises Vs KRBL Limited :May 26, 2025 : FAO(COMM) 69/2024 :2025:DHC:4364-DB :High Court of Delhi:Hon'ble Judge: Justice Navin Chawla and Justice Shalinder Kaur  

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

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents

Introduction: The case of Zeria Pharmaceutical Co. Ltd. v. The Controller of Patents is a pivotal judgment from the Delhi High Court that reinforces the interpretative approach toward patentability criteria under the Indian Patents Act, 1970, particularly concerning the tests laid out under Section 2(1)(ja) and Section 3(d). The Court’s analysis offers essential guidance on what constitutes an “inventive step” and how the “therapeutic efficacy” of pharmaceutical compounds must be substantiated to satisfy the stringent demands of patent law in India.

Factual Background: Zeria Pharmaceutical Co. Ltd., a Japanese pharmaceutical company, filed Indian Patent Application No. 3630/DELNP/2011 on May 13, 2011. This application was a divisional application from an earlier application numbered 1090/DELNP/2007 and claimed a novel intermediate compound described as 2-[(2-hydroxy-4,5-dimethoxybenzoyl) amino]-1,3-thiazole-4-carboxylic acid methyl ester. The company claimed the invention involved a methyl ester functional group on a thiazole ring system and was an essential intermediate for the synthesis of an active pharmaceutical ingredient. The compound was distinguished from the prior art primarily by the substitution of a methoxycarbonyl group instead of an ethoxycarbonyl group.

Procedural Background: The Indian Patent Office issued the First Examination Report (FER) on February 24, 2015, raising objections under Section 2(1)(ja) on lack of inventive step and Section 3(d) for being a mere derivative of a known compound without enhanced efficacy. Following a written response by the applicant and a hearing on June 12, 2016, the Assistant Controller of Patents refused the application via an order dated October 20, 2016. Aggrieved, Zeria Pharmaceutical appealed under Section 117A of the Patents Act before the Delhi High Court. The appeal was heard and reserved on April 23, 2025, and the judgment was pronounced on May 27, 2025.

Legal Issue: The central legal issue before the Court was whether the subject invention satisfied the dual statutory requirements of inventive step under Section 2(1)(ja) and non-attractiveness of Section 3(d) of the Patents Act, 1970? Specifically, the Court was called upon to decide whether the claimed compound, being a structural variation of a compound disclosed in prior art, constituted a patentable invention or fell within the exclusion of Section 3(d) for lacking therapeutic efficacy?

Discussion on Judgments: The appellant relied on the judgment of the Delhi High Court in F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 13619, to argue that an invention must be assessed on whether a person skilled in the art (PSITA) would be motivated to modify the teachings of prior art to arrive at the claimed invention. The appellant also cited Agriboard International LLC v. Deputy Controller of Patents and Designs, 2022 SCC OnLine Del 940, to contend that the Controller must provide cogent reasoning on how the invention would be obvious to a PSITA, rather than relying on broad conclusions.

In response, the Controller relied on the landmark decision of the Supreme Court in Novartis AG v. Union of India, (2013) 6 SCC 1, where it was categorically held that the test of efficacy under Section 3(d) in the context of pharmaceutical products means “therapeutic efficacy.” The Court held that mere improvements in physical properties like solubility or stability, unless linked to therapeutic benefit, are not relevant under Section 3(d). The Controller also cited Novozymes v. Assistant Controller of Patents & Designs, T. CMA (PT) No. 33 of 2023 (Madras High Court), which clarified that Section 3(d) operates as a statutory exclusion and may independently bar patentability even if Section 2(1)(j) or (ja) is satisfied. Additionally, the decision in Astrazeneca AB and Another v. Torrent Pharmaceuticals Ltd., 2020 SCC OnLine Del 1446, was invoked to rebut the appellant’s “teaches away” argument, emphasizing that mere absence of direction toward an invention does not imply discouragement or negation by prior art.

Reasoning and Analysis of the Judge:  The Court observed that while the invention might satisfy the criteria for novelty, it failed to pass the filter of Section 3(d) due to lack of evidence demonstrating therapeutic efficacy. The claimed compound and the compound in the prior art differed only in the substitution of a methoxy group for an ethoxy group, which, in the Court’s view, was a minor and obvious variation for any person skilled in the art.

The Court critically examined the experimental data submitted by the appellant and noted that it failed to demonstrate any enhancement in therapeutic efficacy. Even the appellant had conceded in submissions that therapeutic efficacy could not be measured as the compound was merely an intermediate. The Court emphasized that the burden lay on the applicant to establish significant difference in efficacy, and this burden had not been discharged.

On the issue of inventive step under Section 2(1)(ja), the Court held that the invention was obvious in light of the teachings of prior art documents D1 (EP 0994108 A1) and D2 (US 5981557 A). Both prior arts disclosed compounds structurally similar to the claimed compound and described alkoxy substitutions including methoxy and ethoxy. The Court found the claimed invention to be a predictable variant within the realm of routine experimentation, not amounting to a technical advancement or economic significance.

Further, the Court rejected the appellant’s argument that prior art D1 “taught away” from the claimed invention. It held that the absence of specific guidance toward the invention does not imply discouragement, and thus does not negate obviousness if the path to invention is reasonably discernible to a skilled artisan.

Final Decision: The Delhi High Court upheld the decision of the Controller of Patents, dismissing the appeal filed by Zeria Pharmaceutical Co. Ltd. The Court concluded that the subject application failed both the inventive step requirement under Section 2(1)(ja) and the efficacy bar under Section 3(d) of the Patents Act. It found no merit in the applicant’s claim that the compound was patentable and accordingly affirmed the rejection of the patent application.

Law Settled in This Case: Firstly, Section 3(d) is an independent and absolute bar to patentability and may exclude a claim even if novelty or inventive step is satisfied under Section 2(1)(j) or (ja). Secondly, therapeutic efficacy under Section 3(d) must be demonstrated through specific data and cannot be presumed from structural variations or physico-chemical improvements. Thirdly, routine substitutions or modifications known to a skilled artisan cannot constitute inventive step unless they result in unexpected advantages or substantial technical advancements. Lastly, the Zeria Pharmaceutical, which was absent in the present case.

Zeria Pharmaceutical Co. Ltd. Vs. The Controller of Patents: May 27, 2025:C.A. (COMM.IPD-PAT) 452/2022: 2025:DHC:4431High 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

GSP Crop Science Pvt. Ltd. Vs. BR Agrotech Limited

Admission under Order 12 Rule 6 CPC as a Tool for Swift Decision in Patent Litigation

Introduction: The case of GSP Crop Science Pvt. Ltd. v. BR Agrotech Limited and Anr represents a significant judicial pronouncement in the realm of Indian patent law, particularly concerning the enforcement of patent rights against secondary actors in the supply chain, such as marketers or sellers. The plaintiff, GSP Crop Science Pvt. Ltd., a prominent agrochemical company, initiated legal action against BR Agrotech Limited (Defendant No.1) and another entity (Defendant No.2) for infringing its Indian Patent No. 394568, which pertains to a synergistic suspo-emulsion formulation comprising Pyriproxyfen and Diafenthiuron. The case, adjudicated by the High Court of Delhi, culminated in a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908, highlighting the court's approach to patent infringement claims based on clear admissions by the defendant. 

Factual Background: GSP Crop Science Pvt. Ltd., a company registered under the Companies Act, 1956, with its office in Ahmedabad, Gujarat, is engaged in the manufacture and sale of agrochemicals. The company has invested significantly in research and development to create affordable products for Indian farmers, resulting in over 70 patents and patent applications, including Indian Patent No. 394568 (hereinafter referred to as IN'568). This patent, granted in 2022, covers a synergistic suspo-emulsion formulation comprising Pyriproxyfen (in the range of 1 to 15%) and Diafenthiuron (25 to 55%), along with specific excipients. The patent's application, filed in 2014, survived seven pre-grant oppositions under Section 25(1) of the Patents Act, 1970, and was upheld by the Indian Patent Office. 

The plaintiff commercialized this invention as an insecticide named SLR 525, containing 5% Pyriproxyfen and 25% Diafenthiuron, which received approval under Section 9(3) of the Insecticides Act, 1968, in August 2018. In 2022-23, the plaintiff discovered that Defendant No.2 was selling a product named Roxyfin, a suspo-emulsion with the identical composition of 5% Pyriproxyfen and 25% Diafenthiuron, manufactured by Defendant No.1 under a Central Insecticides Board and Registration Committee (CIBRC) license (CIR-172356-2020) obtained under Section 9(4) of the Insecticides Act, 1968. The plaintiff alleged that Roxyfin infringed IN'568, as its composition fell squarely within the patent's claims, causing irreparable harm by undermining the plaintiff's exclusive rights.

Procedural Background: The plaintiff instituted the suit, CS(COMM) 82/2023, seeking a permanent injunction to restrain both defendants from infringing IN'568, along with ancillary reliefs. On February 16, 2023, the High Court of Delhi granted an ad interim injunction in favor of the plaintiff against both defendants. Subsequently, on March 3, 2023, the suit was decreed against Defendant No.1 based on a settlement, wherein Defendant No.1 acknowledged the plaintiff's exclusive rights and admitted to manufacturing and supplying Roxyfin to various entities, including Defendant No.2. The interim injunction against Defendant No.2 was made absolute on July 4, 2024. The plaintiff then filed an application under Order XII Rule 6 of the Code of Civil Procedure, 1908, seeking a judgment on admission against Defendant No.2, relying on affidavits and statements where Defendant No.2 admitted to selling Roxyfin. Defendant No.2 contested the application, arguing it was merely a marketer acting under Defendant No.1’s license, lacked intent to infringe, and that the settlement with Defendant No.1 extinguished any claims against it. The court reserved its judgment on July 11, 2025, and pronounced it on July 25, 2025.

Core Dispute: The central issue in this case was whether Defendant No.2’s act of selling Roxyfin, a product with the same chemical composition as the plaintiff’s patented SLR 525, constituted infringement of IN'568 under Section 48 of the Patents Act, 1970, and whether the admissions made by Defendant No.2 in its affidavits warranted a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908. The plaintiff argued that Defendant No.2’s sale of Roxyfin, which matched the patented formulation, violated its exclusive rights, and the admissions in Defendant No.2’s affidavits were clear, unequivocal, and sufficient to decree the suit without a trial. Defendant No.2 countered that it was only a marketer, not the manufacturer, and relied on Defendant No.1’s CIBRC license, claiming no intent to infringe and asserting that the settlement with Defendant No.1 absolved it of liability. The dispute thus hinged on the interpretation of Section 48, the scope of patent infringement liability for sellers, and the applicability of Order XII Rule 6 based on Defendant No.2’s admissions.

Discussion on Judgments: The court and the parties relied on several judicial precedents to support their positions. The plaintiff cited Uttam Singh Duggal & Co. Ltd. v. United Bank of India, reported as (2000) 7 SCC 120, to argue that Order XII Rule 6 enables courts to pass judgments on clear admissions when a party’s defense is untenable, and no plausible explanation is provided to counter the admissions. This precedent was invoked to emphasize that Defendant No.2’s admissions regarding the sale of Roxyfin justified a decree without trial. The plaintiff also relied on Delhi Jal Board v. Surendranath, reported as (2000) 7 SCC 120, to reinforce that courts can expedite justice under Order XII Rule 6 when admissions render further trial unnecessary. Additionally, the plaintiff referred to National Textile Corporation Ltd. v. Ashval Vadera, reported as 91 (2001) DLT 386, to argue that admissions, even if not explicit, can be inferred from vague denials or documents, and courts must prevent misuse of judicial processes by decreeing suits based on such admissions. The court found these precedents persuasive, noting that Defendant No.2’s affidavits dated May 2, 2023, and April 13, 2023, unequivocally admitted sales of Roxyfin, aligning with the principles in these cases. The court also cited Merck Sharp & Dohme Corp. v. Sanjeev Gupta, reported as unreported by the Delhi High Court, to interpret Section 48 of the Patents Act, 1970. In Merck, a coordinate bench rejected the argument that infringement under Section 48 requires all activities (making, using, selling, importing) to occur in India, emphasizing the disjunctive “or” in the provision, which holds any single act, such as selling, as sufficient for infringement liability. This was critical in dismissing Defendant No.2’s defense that it was merely a marketer, as the court held that selling alone triggered liability under Section 48.

Reasoning and Analysis of the Judge: The judge first addressed the scope of IN'568, noting that the patent’s claims covered a suspo-emulsion with 1-15% Pyriproxyfen and 25-55% Diafenthiuron, and Roxyfin’s composition (5% Pyriproxyfen and 25% Diafenthiuron) fell squarely within this scope, as confirmed by the infringement analysis in the plaint. The court emphasized that Section 48 of the Patents Act, 1970, grants the patentee exclusive rights to prevent third parties from making, using, offering for sale, selling, or importing the patented product without consent. The use of the disjunctive “or” in the provision meant that Defendant No.2’s act of selling Roxyfin was sufficient to constitute infringement, irrespective of its role as a marketer rather than a manufacturer. The court rejected Defendant No.2’s defense that it relied on Defendant No.1’s CIBRC license under Section 9(4) of the Insecticides Act, 1968, holding that such a license does not override patent rights under the Patents Act, 1970, and allowing such a defense would undermine the patentee’s monopoly. 

The judge further analyzed Defendant No.2’s affidavits, particularly those dated May 2, 2023, and April 13, 2023, where it admitted to purchasing and selling significant quantities of Roxyfin, generating substantial revenue. These admissions were deemed clear, unequivocal, and unambiguous, satisfying the requirements for a judgment on admission under Order XII Rule 6 of the Code of Civil Procedure, 1908. The court dismissed Defendant No.2’s argument that the settlement with Defendant No.1 extinguished its liability, noting that the settlement did not cover Defendant No.2’s independent acts of infringement. Drawing on the principles from Uttam Singh Duggal and National Textile Corporation, the court underscored its duty to prevent prolonged litigation and misuse of judicial processes, particularly when admissions rendered the defense untenable. The judge also addressed Defendant No.2’s claim of bona fide marketing, finding it irrelevant under Section 48, which imposes strict liability for infringement without exceptions for intent or reliance on a third party’s license.

Final Decision :The High Court of Delhi allowed the plaintiff’s application under Order XII Rule 6 and decreed the suit in favor of GSP Crop Science Pvt. Ltd. against Defendant No.2 on July 25, 2025. The court issued a permanent injunction restraining Defendant No.2 from making, using, selling, offering for sale, or importing any product infringing IN'568. Defendant No.2 was directed to pay damages of Rs. 50,00,000 to the plaintiff within six weeks, with an interest rate of 6% per annum on the sum if unpaid within the stipulated period. Additionally, the court imposed costs and special costs of Rs. 2,00,000, payable to the Delhi High Court Bar Association Lawyers Social Security and Welfare Fund within six weeks. All pending applications were disposed of, and a decree sheet was ordered to be drawn up accordingly.

Law Settled in This Case :This case reinforces several key principles in Indian patent law and civil procedure. It clarifies that under Section 48 of the Patents Act, 1970, any act of selling a patented product without the patentee’s consent constitutes infringement, regardless of the actor’s role in the supply chain (e.g., marketer or seller) or their reliance on a third party’s regulatory license, such as one under the Insecticides Act, 1968. The use of the disjunctive “or” in Section 48 establishes that each enumerated act (making, using, selling, offering for sale, importing) independently triggers liability, without requiring territorial nexus for all activities. The case also underscores the potency of Order XII Rule 6 of the Code of Civil Procedure, 1908, as an enabling provision to expedite justice when clear, unequivocal admissions are made, eliminating the need for a trial. Furthermore, it emphasizes the court’s duty to prevent misuse of judicial processes by decreeing suits based on admissions, particularly to protect patentees from prolonged litigation that undermines their exclusive rights. The decision highlights that defenses based on bona fide intent or third-party licenses are untenable against patent infringement claims, reinforcing the strict liability nature of Section 48.

Case Title: GSP Crop Science Pvt. Ltd. v. BR Agrotech Limited and Anr
Date of Order: July 25, 2025
Case Number: CS(COMM) 82/2023
Neutral Citation: 2025:DHC:6055:
Name of Court:High Court of Delhi
Name of Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

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

Exide Industries Limited Vs. Amara Raja Energy

Trade Dress Infringement in the Indian Battery Industry

Introduction: The case of Exide Industries Limited versus Amara Raja Energy and Mobility Limited represents a significant adjudication in the realm of intellectual property law, specifically concerning trademark infringement and passing off. Heard in the Intellectual Property Rights Division of the High Court at Calcutta, this dispute encapsulates the tension between established brand identity and alleged imitation by a trade rival. Exide, a long-standing leader in the lead-acid battery industry, accused Amara Raja, a key competitor, of adopting a deceptively similar trade dress and trademark elements, threatening its century-long goodwill. This case study delves into the factual matrix, procedural journey, core issues, judicial reasoning, and the legal principles solidified through the judgment, offering insights into the evolving jurisprudence of passing off in India.

Factual Background: Exide Industries Limited, originally incorporated as Associated Battery Makers (Eastern) Coal Ltd., has been a pioneer in manufacturing and marketing lead-acid batteries since 1920 under the trademark "EXIDE." Over time, Exide has grown into one of South-East Asia’s largest power storage solutions companies, operating manufacturing units across India and maintaining an extensive network of dealers and distributors. The company’s flagship brand, "EXIDE," is closely associated with a distinctive red and white trade dress, prominently featuring the color red across its products, packaging, advertisements, and promotional materials. Exide also holds registered trademarks for "EL" (adopted in 1987) and a "shattered O device," used extensively in its product line, including automotive and industrial batteries. The consistent and prolonged use of these elements has established a strong connection between the red color scheme and Exide’s brand identity in the public mind.

Amara Raja Energy and Mobility Limited, a major competitor, markets its batteries under the "AMARON" brand, traditionally associated with a green trade dress. For three decades, Amara Raja has built its reputation around this green color, evident in its products, advertising campaigns, and publicity materials. However, the dispute arose when Amara Raja launched a new product, "ELITO," initially in a blue trade dress for international markets in 2020. Subsequently, in India, Amara Raja shifted to a red trade dress for "ELITO," incorporating a red and white color combination and a shattered "O" device, which Exide alleged mirrored its own branding. Exide claimed that this shift was a deliberate attempt to capitalize on its goodwill, citing the visual and structural similarities between the products, including the use of the letters "EL" and the shattered "O" device.

Procedural Background:The matter was brought before the High Court at Calcutta, Intellectual Property Rights Division, Original Side, as a suit for infringement and passing off, registered as IP-COM/18/2025, with an interlocutory application (IA NO. GA-COM/1/2025) seeking an injunction to restrain Amara Raja from using the disputed trade dress and mark. Exide sought to protect its trademark and trade dress rights, arguing that Amara Raja’s actions constituted passing off by creating confusion among consumers. Amara Raja countered that the color red was not distinctive to Exide, was commonly used in the industry, and that no confusion arose from their product.

Core Dispute:The central issue in this case was whether Amara Raja’s adoption of a red trade dress for its "ELITO" product, along with the use of the letters "EL" and a shattered "O" device, constituted passing off by misrepresenting its goods as those of Exide. Exide argued that its long-standing use of the red and white trade dress, combined with its registered trademarks "EL" and the shattered "O" device, had created a strong association with its brand, making Amara Raja’s similar trade dress deceptively similar and likely to confuse consumers. Amara Raja contended that the color red lacked distinctiveness in the battery industry, citing its use by other brands, and argued that no monopoly could be claimed over a single color. Additionally, they claimed that their product’s branding was sufficiently distinct and that consumer purchasing decisions were not solely based on color, negating any likelihood of confusion.

Discussion on Judgments:Both parties relied on a range of judicial precedents to support their arguments, reflecting the complex interplay of trademark and passing off principles. Exide cited several cases to establish the protectability of its trade dress and goodwill. In Jones vs Hallworth, Reports of Patent, Design and Trademark, Vol XIV, No.8, Exide highlighted the recognition of cumulative deceptive elements leading to passing off. Cadbury-Schweppes Pty. Ltd. vs The Pub Squash Co Ltd, [1981] RPC 429, was referenced to underscore the importance of reputation and misrepresentation, though the court distinguished it due to the absence of significant deception in that case. Cadilla Health Care Ltd. vs Cadilla Pharmaceuticals Ltd., [2001] 5 SCC 73, was cited to emphasize the relevance of Indian consumer perspectives, including those of less literate buyers, in assessing confusion. Colgate Palmolive Company & Another vs Anchor Health and Beauty Care Pvt Ltd, 2003 SCC Online Del 1005, supported Exide’s claim that a distinctive color combination could acquire secondary meaning. Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd, [2004] 6 SCC 145, was used to argue that reputation and misrepresentation do not require long usage if significant goodwill is established. Euro Solo Energy Systems Limited vs Everready Industries Limited, 2009 SCC Online Cal 1991, reinforced the applicability of passing off principles in Indian contexts. Squet International Private Limited vs Sanwal Chand Babulal and Another, 2016 SCC Online Bom 7712, was cited to highlight deceptive similarity in trade dress. Societe des Produits Nestle SA vs Cadbury UK Ltd, [2017] EWCA Civ 358, and Sanjay Soya Private Limited vs Narayani Trading Company, 2021 SCC Online Bom 407, supported the protectability of distinctive trade dress elements. Qualitex Co vs Jacobson Prods Co, 514 U.S. 159, was referenced to argue that colors could acquire secondary meaning under certain conditions. Finally, Emami Limited vs Hindustan Unilever Limited, 2024 SCC Online Cal 3579, was cited to underscore the impermissibility of adopting a competitor’s prominent trade dress elements.

Amara Raja, in defense, cited Kellogg Company vs Pravin Kumar, ILR (1996) II Delhi 11, to argue that Exide’s trade dress lacked distinctiveness due to common industry usage. Dr. Martens Australia Pty Ltd. vs Figgins Holdings Pty Ltd., [1999] FCA 461, supported their contention that a single color could not be monopolized. Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd., [2001] 5 SCC 73, was referenced to emphasize the need for clear evidence of confusion. Colgate Palmolive Company Limited & Anr. vs Patel & Anr., [2005] SCC Online Del 1439, was cited to argue that Exide’s claim over red was untenable without secondary meaning. Wal-Mart Stores vs Samara Bros, 529 U.S. 205, supported the argument that trade dress must be inherently distinctive or have acquired secondary meaning. Cipla Ltd. vs MK Pharmaceuticals, [2007] SCC Online Del 2012, was used to challenge the protectability of colors in trade dress. Star Bazaar Pvt. Ltd. vs Trent Ltd., [2010] SCC Online Del 4764, highlighted honest concurrent use as a defense. Specsavers International Healthcare Ltd. & Ors. vs Asda Stores Ltd., [2012] EWCA Civ 24, was cited to argue that Exide’s trade dress was not exclusively associated with its brand. Britannia Industries Ltd. vs ITC Ltd., [2017] SCC Online Del 7919, supported the argument that short-term use of a color does not establish goodwill. Godfrey Phillips India Ltd. vs P.T.I Pvt Ltd., [2017] SCC Online 12509, and Khadi and Village Industries Commission vs Girdhar Industries and Another, [2023] SCC Online Del 8446, were referenced to emphasize the need for distinctiveness and evidence of confusion. Brihan Karan Sugar Syndicate Pvt. Ltd. vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, [2024] 2 SCC 577, was cited to argue that passing off requires clear misrepresentation. Additional cases, such as Reckitt & Colman Products Ltd. vs Borden, [1990] 1 WLR 491, and R. Johnston & Co. vs Archibald Orr Ewing & Co., [1882] 7 App. Cas. 219, were referenced by the court to elucidate the principles of passing off, focusing on reputation, misrepresentation, and damage.

Reasoning and Analysis of the Judge: The court recognized Exide’s century-long use of the red and white trade dress, which had become a prominent and integral feature of its brand identity in the automotive battery industry. The judge noted that Exide’s goodwill was not merely tied to the color red but to the overall trade dress, including the registered "EL" mark and the shattered "O" device, which collectively acted as source identifiers. The court found Amara Raja’s shift from a blue to a red trade dress for "ELITO" in India, without a credible explanation, to be a deliberate attempt to approximate Exide’s branding. The respondent’s affidavit, claiming feedback from an overseas distributor about the blue color’s lack of vibrancy, was deemed self-serving and contradictory, especially given Amara Raja’s continued use of blue batteries internationally. The court emphasized that Amara Raja’s choice of red, identical to Exide’s shade, alongside the use of "EL" and a similar shattered "O" device, indicated bad faith and intent to deceive.

The judge rejected Amara Raja’s argument that the color red was common in the industry, distinguishing cases like Britannia Industries Ltd. vs ITC Ltd., where the plaintiff’s use of the color was brief and lacked distinctiveness. The court highlighted that Exide’s consistent and prolonged use had created a strong association with its brand, distinguishable from smaller competitors’ use of red. The judge also considered the Indian market’s diverse consumer base, including less literate buyers, who might be confused by the visual similarities. Citing Satyam Infoway Ltd. vs Siffynet Solutions Pvt Ltd., the court inferred that Amara Raja’s actions were calculated to capitalize on Exide’s reputation, supported by actions such as removing incriminating online evidence during the hearing. The court clarified that while no monopoly over a single color was claimed, the cumulative effect of the trade dress similarities warranted protection to prevent consumer confusion and dilution of Exide’s brand equity.

Final Decision: The court granted an injunction in favor of Exide Industries Limited, restraining Amara Raja Energy and Mobility Limited from using the red trade dress, the "EL" mark, and the shattered "O" device for its "ELITO" product. The decision was based on the prima facie findings of deceptive similarity, bad faith, and likelihood of confusion. Amara Raja was initially given one month to comply with the order, but upon request, the court extended this period to two months. The interlocutory application was disposed of, with directions for an early hearing of the main suit to resolve the matter comprehensively.

Law Settled in This Case: This case reinforces the principles of passing off under Indian trademark law, particularly the application of the classic trinity test of reputation, misrepresentation, and damage. It clarifies that while a single color cannot be monopolized, a distinctive trade dress comprising a color scheme, specific marks, and design elements can acquire secondary meaning through long and consistent use, meriting protection. The judgment underscores the importance of intent in passing off cases, where a competitor’s deliberate adoption of a rival’s branding elements can tilt the scales in favor of finding deception. The decision aligns with Section 27 of the Trade Marks Act, 1999, affirming the common law remedy of passing off for unregistered marks and trade dress, emphasizing fairness in competition and the prevention of parasitic practices.

Case Title: Exide Industries Limited vs Amara Raja Energy and Mobility Limited

Date of Order: 24 July 2025

Case Number: IP-COM/18/2025

Name of Court: High Court at Calcutta

Name of Judge: Hon'ble Justice Ravi Krishan Kapur

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

Vijay Vs. Havells India Limited

Vijay Vs. Havells India Limited:July 14, 2025:CM(M)-IPD 29/2025 :2025:DHC:5771:Hon'ble Justice Shri Amit Bansal

Havells India Limited, the respondent/plaintiff, filed a commercial suit (CS(COMM) 294/2024) against Vijay, the petitioner/defendant, alleging trademark infringement through the unauthorized use of the "HAVVELS" trademark/trade name. On May 27, 2024, the Commercial Court issued an ex parte ad interim injunction restraining Vijay from using the trademark and appointed Local Commissioners, Mr. Chitra Gupt Dugar and Mr. Kunal Kumar, to inspect and seize infringing goods from Vijay’s premises at House No. 4/1888, Rama Block, Gali No. 3, Shahdara, Delhi-110032. The court authorized the Commissioners to visit additional premises if infringing goods were found, seize materials like packaging boxes and printing plates, and videograph the proceedings. Raids were conducted on June 1, 2024, and June 17, 2024, including at another property, House No. 4/1877, Rama Block, Gali No. 3, Shahdara, Delhi-110032, where infringing items were seized. The Commissioners filed their reports, and Vijay raised objections, alleging the raids were illegal and exceeded the court’s mandate.

Procedurally, Vijay filed an application under Order XVI Rule 1 and 6 of the CPC to summon Mr. Kunal Kumar, which was dismissed on May 31, 2025. A subsequent application under Order XXVI Rule 10 to examine both Commissioners was dismissed on June 5, 2025, prompting Vijay to file the present petition challenging the dismissal. The Commercial Court had framed an issue on March 7, 2025, questioning the legality of the raids conducted on June 1 and June 17, 2024.

The core dispute centered on Vijay’s claim that the Local Commissioners exceeded their authority by raiding unauthorized premises and that Mr. Kunal Kumar’s participation in the June 17 raid was improper, rendering it illegal. Vijay argued that examining the Commissioners was necessary to prove these violations, while Havells contended the raids were within the court’s mandate and Vijay’s applications were delay tactics.

The High Court reviewed the objections and found them meritless. The May 27, 2024, order explicitly allowed the Commissioners to inspect additional premises where infringing goods were suspected, justifying the raid on House No. 4/1877. The court clarified that Mr. Kunal Kumar accompanied Mr. Dugar at the latter’s request, negating claims of illegality. The court noted that procedural compliance, such as videography, was the plaintiff’s responsibility, not the Commissioners’. Citing Order XXVI Rule 10 of the CPC, the court emphasized that summoning Commissioners is discretionary and requires justification, which Vijay failed to provide, as his objections were already addressed by the Commercial Court on May 31, 2025.

The High Court dismissed Vijay’s petition, finding no grounds to justify examining the Commissioners, and disposed of the pending application.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Veerji Restaurant Pvt. Ltd. Vs. Yash Rai

Veerji Restaurant Pvt. Ltd. Vs. Yash Rai:July 8, 2025:CS(COMM) 662/2023:2025:DHC:5834: Hon'ble Mr. Justice Amit Bansal

The plaintiff, Veerji Restaurant Pvt. Ltd., a company incorporated on November 9, 2020, operates a leading restaurant chain under the trademark VEERJI MALAI CHAAP WALE, adopted in 2016 by its predecessor proprietorship. The mark, incorporating the Punjabi word "VEERJI" meaning brother, is used for food and restaurant services. 

The plaintiff runs approximately 70 branches across India, achieving significant sales, including Rs. 3,61,39,58,690/- in 2022-23, and promotes its business through its website, food delivery platforms like Zomato and Swiggy, and social media such as YouTube, Instagram, and Facebook. The plaintiff has invested heavily in advertising, spending Rs. 4,00,99,86,340/- in 2022-23, and engaged actor Vindu Dara Singh as its brand ambassador. The plaintiff holds multiple trademark registrations for VEERJI-formative marks and a copyright in the label's artistic work. 

In September 2023, the plaintiff discovered that defendants Yash Rai and others were using identical or deceptively similar marks, such as VEER JI MALAI CHAAP WALE and THE VEER JI MALAI CHAAP WALE, for their restaurant and food delivery businesses in locations including Bhopal, Delhi, Raipur, Haridwar, and Moradabad. Defendant no.1 also maintained an Instagram profile under VEERJI_LALGHATI, and defendants no.2 to 6 were listed on food delivery platforms.

Procedurally, the suit was filed seeking a permanent injunction against trademark and copyright infringement and passing off, along with damages and costs. On April 25, 2024, the plaintiff and defendants no.1 and 4 were referred for mediation, resulting in a settlement with defendant no.1 on July 22, 2024. Defendants no.2, 3, and 6 did not appear, and defendant no.4 ceased appearing after the mediation referral. None of these defendants filed a written statement or contested the plaintiff's allegations, despite an interim injunction against them. The plaintiff sought a summary judgment under Order XIIIA of the Code of Civil Procedure due to the defendants' non-participation.

The core dispute involved the defendants' unauthorized use of marks identical or deceptively similar to the plaintiff's VEERJI MALAI CHAAP WALE trademark in identical restaurant and food delivery services. The plaintiff argued that this use infringed its registered trademarks and copyright and constituted passing off by exploiting its goodwill and reputation, deceiving consumers.

The court found that the plaintiff established continuous use of its mark since 2016, supported by significant sales, extensive promotion, and trademark and copyright registrations, creating substantial goodwill. A comparison of the plaintiff's and defendants' marks showed the defendants' marks were identical or similar, used for identical services, and likely to deceive consumers. The defendants' failure to contest the suit or provide a defense indicated mala fide intent and no real prospect of successfully defending the claims. Citing Su-Kam Power Systems Ltd. v. Kunwer Sachdev, the court noted that summary judgment is appropriate in commercial disputes where defendants lack a realistic defense, and no compelling reason exists for a trial. The court also referenced M/s Inter Ikea Systems BV v. Imtiaz Ahamed to justify imposing damages and costs when defendants evade proceedings.

The court decreed the suit in favor of the plaintiff against defendants no.2 to 6, granting the injunctions sought in prayer clauses 73(a) to 73(i) of the plaint. Each of these defendants was ordered to pay Rs. 1,00,000/- in damages and costs, totaling Rs. 5,00,000/-. The plaintiff did not press for additional reliefs, and the court directed the preparation of a decree sheet, disposing of all pending applications.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

PUMA SE Vs. Himanshu Sharma

PUMA SE Vs. Himanshu Sharma:July 9, 2025:CS(COMM) 383/2021:2025:DHC:5585:Hon'ble Mr. Justice Saurabh Banerjee

The plaintiff, PUMA SE, a globally reputed company engaged in manufacturing and selling sports apparel and accessories, sought a permanent injunction, damages, and other reliefs against the defendant, Himanshu Sharma, for trademark infringement and passing off. PUMA SE has used its trademarks, including the word "PUMA" and its logo, since 1948, with registrations in India since 1983 under Classes 18 and 25 of the Trade Marks Act, 1999. 

The plaintiff's trademarks were declared well-known by the Trade Mark Registry in India on February 19, 2024. The defendant was involved in selling counterfeit shoes bearing PUMA's trademarks through the website "www.thesheskart.com." In July 2021, PUMA received customer complaints about substandard shoes purchased from the defendant's website, and investigations confirmed the products were counterfeit, infringing PUMA's intellectual property rights.

The court issued an interim order on August 18, 2021, restraining the defendant from using PUMA's trademarks and directing the suspension of the defendant's domain name and associated URLs. The defendant failed to appear or file a written statement despite being served summons by publication on January 7, 2024, leading to the closure of their right to file a written statement on February 6, 2025. PUMA moved an application under Order XIIIA read with Order VIII Rule 10 of the Code of Civil Procedure for a summary judgment due to the defendant's non-participation.

The core dispute centered on the defendant's unauthorized use of PUMA's registered and well-known trademarks on counterfeit products, sold through the same trade channels and targeting the same customers as PUMA. The plaintiff provided evidence, including an Analysis Report dated August 12, 2021, from its Brand Protection Manager, confirming the counterfeit nature of the defendant's products. The defendant's products were found to be blatant copies of PUMA's, replicating essential trademark elements without variation.

The court found that the defendant's failure to appear or contest PUMA's claims resulted in the plaintiff's averments and documents being deemed admitted. The court noted the defendant's mala fide intent to exploit PUMA's goodwill, as evidenced by their adoption of identical trademarks and operation in the same market. Citing precedents like Koninklijke Philips N.V. v. Amazestore and Jawed Ansari v. Louis Vuitton Malleiter, the court emphasized that counterfeiting is a serious commercial malpractice that deceives consumers and undermines established brands. The defendant's willful evasion of proceedings further supported a stringent approach to damages.

The court decreed the suit in favor of PUMA SE, granting the reliefs sought in prayer paragraphs (a), (b), (c), (d), and (g) of the plaint. The defendant was directed to pay actual costs of Rs. 5,90,000 and damages of Rs. 2,10,000, totaling Rs. 8,00,000, within ninety days, with an interest of 6% per annum if unpaid within that period. The suit was disposed of, and a decree sheet was ordered to be drawn up.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.