S. Sudhakar Vs Leela Udhyog

Copyright infringement is available to the owner of the work, irrespective of registration

Introduction:The case of S. Sudhakar v. M/s. Leela Udhyog, adjudicated by the Madras High Court, represents a significant judicial examination of copyright infringement and passing off in the context of commercial disputes over trademark labels. Heard under C.S. (Commercial) No. 52 of 2024, this case involves a suit filed by the plaintiffs, S. Sudhakar, S. Dhinakar, and M/s. T.M. Karuppiah Nadar Sons, against the defendants, M/s. Leela Udhyog and its partners, for allegedly infringing the plaintiffs’ "TOWER" label used in the sale of dhall. The plaintiffs sought a summary judgment under Order XIII-A of the Code of Civil Procedure, 1908, to secure permanent injunctions against the defendants’ use of the "Eiffel TOWER" label and damages for harm caused by alleged infringement and passing off. 

Factual Background: The plaintiffs, S. Sudhakar, S. Dhinakar, and their partnership firm, M/s. T.M. Karuppiah Nadar Sons, based in Chennai, Tamil Nadu, have been using the "TOWER" trademark and its associated artistic label for the sale of dhall since at least 1996. The label, featuring a pictorial depiction of a tower with the word "TOWER" written below in red and a stylized yellow rectangular block with "dhall" in multiple languages, was commissioned in stages between 2011 and 2020, as evidenced by emails from design firms. The plaintiffs claimed significant commercial success, with a turnover of Rs. 183.45 crore in the financial year 2022-23, supported by a chartered accountant’s certificate detailing sales from 2014-15 onward. The defendants, M/s. Leela Udhyog, a partnership firm in Ahmedabad, Gujarat, along with its partners Rajendra Rameshchandra Jain, Rameshchandra Manoharlal Jain, and Vihal Hastimal Jain, were accused of using a deceptively similar "Eiffel TOWER" label for their dhall products. The defendants’ firm was constituted in September 2020, and their FSSAI license was issued in 2022, suggesting they began operations much later than the plaintiffs. The plaintiffs alleged that the defendants’ label copied essential features of their "TOWER" label, constituting copyright infringement and passing off, and sought injunctions and damages of Rs. 25 lakhs, claiming the defendants’ actions were mala fide, particularly after they continued using the label despite agreeing to desist.

Procedural Background:The suit, C.S. (Commercial) No. 52 of 2024, was filed by the plaintiffs before the Madras High Court under Section 55 of the Copyright Act, 1957, and common law principles of passing off, seeking remedies for alleged infringement of their "TOWER" label and passing off by the defendants’ use of the "Eiffel TOWER" label. The plaintiffs filed an application (A. No. 1920 of 2025) for summary judgment under Order XIII-A of the CPC, requesting permanent injunctions to restrain the defendants from using the infringing label and damages for harm to their reputation and business. The defendants, represented by Mr. Asharat Khan and Mr. G.M. Mohharaj, raised objections, including a challenge to the court’s jurisdiction, arguing they operated solely in Gujarat. On 11 March 2024, interim injunctions were granted, and by 5 November 2024, the defendants confirmed they had ceased using the "Eiffel TOWER" label, leading to the interim injunctions being made absolute. An application for joinder of causes of action (A. No. 1214 of 2024) was also allowed on 5 November 2024, with the defendants raising no serious objection. The court, presided over by Justice Senthilkumar Ramamoorthy, delivered its judgment on 8 July 2025, addressing the summary judgment application and the substantive claims.

Core Dispute:The central issue in this case is whether the defendants’ use of the "Eiffel TOWER" label constituted copyright infringement and passing off of the plaintiffs’ "TOWER" label, warranting a summary judgment in favor of the plaintiffs for permanent injunctions and damages. The plaintiffs argued that their label, created between 2011 and 2020, was an original artistic work under the Copyright Act, and that the defendants’ label was a substantial copy, infringing their copyright and misrepresenting their brand, thus satisfying the elements of passing off (misrepresentation, reputation, and injury). They supported their claim with evidence of prior creation, substantial turnover, and the defendants’ later entry into the market. The defendants countered that the court lacked jurisdiction, that their label was distinguishable, and that prior users, including Liberty Oil Mills and Ajmer Food Industries, had used the "TOWER" mark since 1972 and 1995, respectively, challenging the plaintiffs’ claim to originality. They also claimed copyright registration for their label in 2023. The dispute thus turned on the plaintiffs’ ownership of copyright, the similarity of the labels, the elements of passing off, and the appropriateness of summary judgment under Order XIII-A.

Discussion on Judgments:The plaintiffs and defendants relied on judicial precedents to support their positions, focusing on copyright infringement, passing off, and summary judgment principles. The plaintiffs cited ITC Limited v. Ganesh Flour Mills (unreported, but referenced in the context of the Madras High Court), emphasizing that copying the essential features of a proprietor’s trademark or trade dress constitutes infringement and passing off, supporting their claim that the defendants’ label replicated key elements of their "TOWER" label. They also relied on Mohan Goldwater Breweries Private Limited v. Khoday Distilleries Private Limited (MANU/TN/0555/1976), specifically paragraph 25, to underscore the importance of protecting distinctive trade dress to prevent consumer confusion and harm to goodwill. The defendants did not cite specific judgments but referenced notices of opposition by Liberty Oil Mills Ltd. and Ajmer Food Industries Private Limited, which claimed use of the "TOWER" mark since 1995 and 1972, respectively, to challenge the plaintiffs’ claim to prior use and originality. The court itself relied on Godaddy.com LLC v. Puravankara Projects Limited (2022 (91) PTC 440 (Mad)), where Justice Senthilkumar Ramamoorthy formulated principles for summary judgment under Order XIII-A, emphasizing that the applicant must show the counterparty has no real prospect of success and that no compelling reason exists for a trial. This precedent guided the court’s analysis of whether the defendants’ defenses were illusory and whether the plaintiffs’ claims could be resolved summarily.

Reasoning and Analysis of the Judge:Justice Senthilkumar Ramamoorthy delivered a meticulous judgment, addressing jurisdiction, copyright infringement, passing off, and the summary judgment application. On jurisdiction, the court noted that Section 62(2) of the Copyright Act allows suits to be filed where the plaintiff carries on business, confirming jurisdiction since the plaintiffs operated in Chennai. The defendants’ jurisdictional objection was further weakened by their lack of serious opposition to the joinder application and their consent to interim injunctions, indicating acquiescence. On copyright infringement, the court examined the plaintiffs’ evidence, including emails from 2011 and 2020 documenting the creation of their "TOWER" label, establishing their ownership under the Copyright Act. The defendants’ copyright registration of 2023, claiming creation in 2020, was deemed prima facie evidence under Section 48 but was rebutted by the plaintiffs’ earlier documentation and the defendants’ formation in 2020 and FSSAI licensing in 2022, suggesting they could not have used the label before the plaintiffs. The court found the defendants’ label to be a substantial copy, replicating the tower depiction, red "TOWER" text, and yellow rectangular block, differing only in minor elements like the word "Eiffel" and the absence of "dhall" in Malayalam.

For passing off, the court applied the classical trinity test (misrepresentation, reputation, and injury), finding that the plaintiffs’ extensive sales (Rs. 183.45 crore in 2022-23) and invoices from 1996 established reputation and goodwill, while the defendants’ label was likely to mislead consumers, causing injury. The defendants’ evidence, including a 2011 invoice from an unrelated entity and a 2023 communication, was insufficient to establish prior use or a credible defense. Applying the Godaddy.com principles, the court concluded that the defendants had no real prospect of defending the claims for injunctions, as their defenses were illusory, and no compelling reason warranted a trial for these reliefs. However, the claim for special damages of Rs. 25 lakhs required oral evidence to assess mala fide intent and quantum, leading the court to defer this issue under Rule 6 of Order XIII-A, which allows partial summary judgment.

Final Decision:On 8 July 2025, the Madras High Court allowed the plaintiffs’ application for summary judgment (A. No. 1920 of 2025) in part, summarily decreeing C.S. (Commercial) No. 52 of 2024 with respect to the prayers for permanent injunctions against copyright infringement and passing off (clauses (a) to (d) of paragraph 36 of the plaint). The court deferred the claim for special damages, finding that it required oral evidence to determine entitlement and quantum. The plaintiffs were entitled to costs, to be finalized upon resolution of the damages claim.

Law Settled in This Case:This case reinforces the application of Section 55 of the Copyright Act, 1957, clarifying that remedies for copyright infringement are available to the owner of the work, irrespective of registration, provided ownership is established through evidence of creation. It underscores that prima facie evidence of copyright registration under Section 48 can be rebutted by prior creation documents, emphasizing the importance of documentary evidence in establishing authorship. The judgment also affirms the classical trinity test for passing off, requiring misrepresentation, reputation, and injury, and highlights the significance of trade dress in establishing consumer confusion. Additionally, it strengthens the use of Order XIII-A of the CPC for summary judgment in commercial disputes, allowing courts to dispose of claims summarily when the defendant’s defense lacks real prospect of success and no trial is warranted, while permitting partial adjudication when certain issues, like damages, require further evidence. 

Case Title: S. Sudhakar Vs Leela Udhyog

Date of Order: 8 July 2025

Case Number: C.S. (Commercial) No. 52 of 2024

Neutral Citation: 2025:MHC:1634

Name of Court: Madras High Court

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

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

Naga Limited Vs. Cherukuri Gopi Chand

Groundless Threats and Trademark Opposition

Introduction: The case of Naga Limited Vs. Cherukuri Gopi Chand, adjudicated by the Madras High Court, represents a significant exploration of the scope of Section 142 of the Trade Marks Act, 1999, concerning groundless threats of legal proceedings. Heard under C.S. (Comm. Div.) No. 92 of 2025, this case involves an application by the defendant, Naga Limited, for summary judgment to dismiss the plaintiff’s suit, which sought declarations and injunctions against alleged threats made through notices of opposition filed against the plaintiff’s trademark applications. The dispute centers on whether such notices constitute actionable threats under Section 142, raising critical questions about the interpretation of statutory provisions and the appropriateness of summary disposal in trademark disputes. 

Factual Background: Cherukuri Gopi Chand, trading as Anaganaga, operates a business in Gachibowli, Telangana, and sought to register the trademark "ANAGANAGA" and its variants for services, likely related to the restaurant business, as indicated by the trademark applications in Class 43. Naga Limited, a company based in Chennai, Tamil Nadu, holds registered trademarks for "NAGA" across multiple classes, including Class 43, which pertains to restaurant services. The dispute arose when Naga Limited filed notices of opposition against three of Gopi Chand’s trademark applications, alleging that "ANAGANAGA" was deceptively similar to "NAGA" and constituted an infringement of its registered rights. Gopi Chand responded by filing a suit, claiming that these notices contained groundless threats of legal proceedings, actionable under Section 142 of the Trade Marks Act. 

Procedural Background:  The suit, C.S. (Comm. Div.) No. 92 of 2025, was initiated by Cherukuri Gopi Chand before the Madras High Court under Sections 134 and 142 of the Trade Marks Act, 1999, read with Order VII Rule 1 of the Code of Civil Procedure and Order IV Rule 1 of the Original Side Rules. Gopi Chand sought multiple reliefs, including declarations that his trademark "ANAGANAGA" was distinct from Naga Limited’s "NAGA," that his use did not infringe Naga’s rights, and that the threats issued via notices of opposition were groundless. He also requested a permanent injunction against further threats and damages for business losses. Naga Limited responded by filing an application (A. No. 2833 of 2025) for summary judgment under Order XIII-A of the CPC, seeking dismissal of the suit on the grounds that it had no real prospect of success. 

Core Dispute: The central issue in this case is whether the notices of opposition filed by Naga Limited against Gopi Chand’s trademark applications constitute groundless threats of legal proceedings under Section 142(1) of the Trade Marks Act, 1999, thereby justifying the reliefs sought by Gopi Chand. Naga Limited argued that opposition proceedings before the Registrar of Trade Marks are statutory actions, not mere threats, and thus fall outside the scope of Section 142. It further contended that Gopi Chand failed to provide evidence of commercial use of "ANAGANAGA," undermining his claim, and that its opposition was legitimate given its registered rights in "NAGA." Gopi Chand, conversely, asserted that statements in the notices alleging infringement and threatening proceedings under Sections 102 and 103 of the Trade Marks Act qualified as actionable threats. He argued that the term "or otherwise" in Section 142(1) should be interpreted broadly to include such statements, and that Naga’s opposition was an abuse of process, as it did not operate in the same business segment. The dispute thus hinges on the interpretation of "threats" under Section 142 and the applicability of summary judgment under Order XIII-A of the CPC.

Discussion on Judgments: The parties cited several judgments to support their arguments, each addressing key aspects of trademark law and summary judgment principles. Naga Limited relied on Chartered Institute of Taxation v. Institute of Chartered Tax Advisers of India Limited (2019 SCC OnLine Del 11952), particularly paragraphs 3 to 6, 15, and 16, to argue that notices of opposition constitute initiated legal proceedings, not threats of future proceedings, under Section 142. The Delhi High Court in this case clarified that statutory opposition proceedings are distinct from threats, as they are formal actions before a competent authority, supporting Naga’s contention that its notices did not fall within Section 142’s ambit. Gopi Chand cited Sidharth Wheels Private Limited v. Bedrock Limited and Another (1987 SCC OnLine Del 365), emphasizing that the phrase "or otherwise" in Section 142(1) should not be construed ejusdem generis with "circulars, advertisements," but broadly to encompass all forms of communication, including notices of opposition. The court in Sidharth Wheels held that "or otherwise" extends to private communications, not just public ones, bolstering Gopi Chand’s argument that the notices qualified as threats. Gopi Chand also referenced D. Val Divora v. Union of India and Others (2021 (4) Mh. L.J. 282), particularly paragraphs 35 to 45, to argue that Naga’s opposition was an abuse of process, as it lacked relevant registrations in the same class or business, though the judgment’s specific relevance was not fully detailed in the record. Both parties implicitly relied on Godaddy.com LLC and Others v. Puravankara Projects Limited (2022 (91) PTC 440 (Mad)), where Justice Senthilkumar Ramamoorthy himself formulated principles for summary judgment under Order XIII-A, emphasizing that a plaintiff must have a real, not illusory, prospect of success and that no compelling reason should exist to proceed to trial. This precedent guided the court’s assessment of Naga’s application for summary dismissal.

Reasoning and Analysis of the Judge: Justice Senthilkumar Ramamoorthy delivered a comprehensive judgment, focusing on the legal interpretation of Section 142 and the principles of summary judgment under Order XIII-A of the CPC. The court began by examining whether the notices of opposition constituted threats under Section 142(1), which allows an aggrieved person to seek relief against threats of infringement proceedings via circulars, advertisements, or otherwise, unless the defendant proves the trademark’s registration and actual infringement. Naga’s counsel argued that opposition proceedings are statutory actions, not threats, as they are initiated before the Registrar of Trade Marks, relying on the Chartered Institute case. The court agreed, noting that Section 142 aims to protect against unjustified threats of future proceedings, not ongoing statutory actions. The court further analyzed Gopi Chand’s reliance on Sidharth Wheels, acknowledging that "or otherwise" includes private communications but concluding that notices of opposition, being part of formal proceedings, do not qualify as threats under Section 142. The court observed that Gopi Chand could challenge the opposition’s merits before the Registrar, and if successful, pursue a separate claim for malicious prosecution, but such a claim was premature while opposition proceedings were pending.

On the summary judgment application, the court applied the principles from Godaddy.com LLC, requiring Naga to demonstrate that Gopi Chand had no real prospect of success and that no compelling reason existed for a trial. The court found that Gopi Chand’s primary relief—a declaration that "ANAGANAGA" was dissimilar to "NAGA"—would interfere with the Registrar’s statutory jurisdiction to determine deceptive similarity in the opposition proceedings, rendering it unsustainable. Similarly, the injunction against further threats (prayer (c)) lacked merit, as the notices were the sole basis for the suit and did not constitute threats under Section 142. The claim for damages (prayer (d)) was contingent on the other reliefs, and thus also lacked a real prospect of success. The court concluded that the issues were primarily legal, requiring no oral evidence, and that Gopi Chand’s suit had no real prospect of success, justifying summary dismissal.

Final Decision: The Madras High Court allowed Naga Limited’s application for summary judgment (A. No. 2833 of 2025) on 16 July 2025, dismissing C.S. (Comm. Div.) No. 92 of 2025. The court found that the plaintiff, Cherukuri Gopi Chand, had no real prospect of succeeding on any of the claimed reliefs, as the notices of opposition did not constitute actionable threats under Section 142 of the Trade Marks Act. The suit was disposed of summarily under Order XIII-A of the CPC, with no compelling reason to proceed to trial.

Law Settled in This Case: This case clarifies the scope of Section 142 of the Trade Marks Act, 1999, establishing that notices of opposition filed in trademark registration proceedings do not constitute groundless threats of legal proceedings, as they are formal statutory actions, not mere threats of future litigation. The judgment reinforces that Section 142 is intended to address unjustified threats, such as those made through circulars or advertisements, and does not extend to ongoing proceedings before the Registrar of Trade Marks. It also underscores the applicability of summary judgment under Order XIII-A of the CPC in commercial disputes, affirming that suits lacking a real prospect of success can be dismissed without trial when the issues are predominantly legal and no compelling reason exists for oral evidence. The ruling highlights the judiciary’s role in preventing premature or unfounded litigation that could impede statutory processes, while preserving the plaintiff’s right to pursue alternative remedies, such as malicious prosecution, after resolving opposition proceedings.

Case Title: Cherukuri Gopi Chand Trading as Anaganaga Vs. Naga Limited

Date of Order: 16 July 2025

Case Number: C.S. (Comm. Div.) No. 92 of 2025

Neutral Citation: 2025:MHC:1728

Name of Court: Madras High Court

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

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

Lalita Goyal Vs. Sumit Garg

The Role of Section 22(4) in Design Litigation

Introduction: The case of Lalita Goyal v. Sumit Garg, adjudicated by the High Court of Delhi, represents a significant judicial intervention in the realm of design law under the Designs Act, 2000. This appeal, lodged under FAO (COMM) 125/2025, challenges the decision of the District Judge (Commercial Court), North District, Delhi, which granted an interim injunction in favor of the respondent, Sumit Garg, restraining the appellant, Lalita Goyal, from using a design registered in Garg’s favor. The core issue revolves around the procedural mandate of Section 22(4) of the Designs Act, which requires the transfer of a suit to the High Court when the validity of a design registration is challenged. The High Court’s ruling clarifies the mandatory nature of this provision, highlighting its non-discretionary application and underscoring the importance of jurisdictional propriety in intellectual property disputes. This case study provides a detailed analysis of the factual and procedural context, the legal issues at stake, the judicial reasoning, and the principles established, offering insights into the enforcement of design rights in India.

Factual Background:Lalita Goyal holds a registered design under the Designs Act, 2000, which forms the basis of his claim against Goyal. Garg initiated a suit (CS (Comm) 6742/2024) before the Commercial Court, alleging that Goyal was infringing his registered design by using it without authorization. To protect his rights pending the suit’s resolution, Garg filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction to restrain Goyal from using the design. In her defense, Goyal challenged the validity of Garg’s design registration, asserting that it was liable to be cancelled, likely on grounds such as lack of novelty or prior publication, though specific grounds were not elaborated in the record. Goyal further argued that her challenge to the design’s validity necessitated the transfer of the suit to the High Court, as mandated by Section 22(4) of the Designs Act.

Procedural Background:The dispute originated in the Commercial Court, North District, Delhi, where Sumit Garg filed CS (Comm) 6742/2024 against Lalita Goyal, seeking a permanent injunction for alleged design infringement and passing off. Alongside the suit, Garg moved an interim application under Order XXXIX Rules 1 and 2 of the CPC to restrain Goyal from using the registered design during the pendency of the suit. Goyal, in her written statement, raised a defense challenging the validity of Garg’s design registration, invoking grounds that could lead to its cancellation under Section 19 of the Designs Act. She also contended that this challenge triggered the mandatory transfer of the suit to the High Court under Section 22(4). The Commercial Court, presided over by the learned District Judge, acknowledged Goyal’s argument but dismissed it as vague, proceeding to grant Garg’s interim injunction application on 16 April 2025. Dissatisfied with this decision, Goyal filed the present appeal (FAO (COMM) 125/2025) before the High Court of Delhi, along with an application (CM APPL. 29277/2025). The appeal was heard by a Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, who delivered an oral judgment on 24 July 2025.

Core Dispute:The primary issue in this appeal is whether the Commercial Court erred in refusing to transfer the suit to the High Court despite Goyal’s challenge to the validity of Garg’s design registration, as mandated by Section 22(4) of the Designs Act. Goyal argued that the Commercial Court’s dismissal of her defense as vague was improper, given the absolute nature of Section 22(4), which requires transfer to the High Court when any ground for cancellation under Section 19 is raised as a defense in a design infringement suit. Garg, represented by counsel, did not contest the appeal or the need for transfer, effectively conceding that the suit should be moved to the High Court’s Intellectual Property Division for a fresh adjudication of the interim injunction application. The dispute thus centers on the interpretation and application of Section 22(4), specifically whether the Commercial Court could exercise discretion to assess the validity of the defense before transferring the suit, and the implications of this procedural lapse on the interim injunction granted.

Discussion on Judgments:The judgment does not explicitly reference specific case law cited by the parties, as the document focuses primarily on the statutory provision of Section 22(4) of the Designs Act, 2000. However, the context suggests that the parties’ arguments were grounded in the statutory framework and established principles of design law. Goyal’s counsel, Mr. Nishant Mahta, Mr. Junaid Alam, and Mr. S. Nithin, likely relied on precedents interpreting Section 22(4) to emphasize its mandatory nature. A relevant case, though not cited in the provided document, could be Tobu Enterprises Pvt. Ltd. v. Megha Enterprises (2016 SCC OnLine Del 3510), where the Delhi High Court clarified that once a defendant raises a ground for cancellation of a design under Section 19, the suit must be transferred to the High Court, irrespective of the strength of the defense. This precedent supports Goyal’s position that the Commercial Court lacked discretion to dismiss her challenge as vague. Garg’s counsel, Mr. Shivam Jangra, did not oppose the transfer, suggesting no conflicting judgments were pressed. The absence of cited case law in the document indicates that the Division Bench relied primarily on the plain language of Section 22(4), which is absolute in requiring transfer when a cancellation ground is raised, as seen in the statutory excerpt quoted in the judgment.

Reasoning and Analysis of the Judge:The Division Bench, led by Justice C. Hari Shankar and joined by Justice Om Prakash Shukla, delivered a concise yet incisive oral judgment focusing on the procedural mandate of Section 22(4) of the Designs Act. The court observed that Goyal, in her written statement, had challenged the validity of Garg’s design registration, asserting grounds that could lead to its cancellation under Section 19. The Commercial Court’s decision to dismiss this challenge as vague and proceed to grant the interim injunction was deemed erroneous. The Bench emphasized that Section 22(4) is unequivocal, stating that when any ground for cancellation under Section 19 is raised as a defense in a suit for design infringement, the suit “shall be transferred” to the High Court. This language leaves no room for the Commercial Court to evaluate the merits or specificity of the defense before effecting the transfer. The court found that the Commercial Court’s refusal to transfer the suit contravened this statutory mandate, rendering the impugned order of 16 April 2025 unsustainable. The Bench noted that Garg’s counsel raised no objection to setting aside the order and transferring the suit, further reinforcing the procedural clarity of the issue. The court’s reasoning underscores the importance of adhering to statutory prescriptions in intellectual property disputes, ensuring that jurisdictional requirements are not undermined by discretionary assessments at the trial court level.

Final Decision:The High Court disposed of the appeal (FAO (COMM) 125/2025) and the associated application (CM APPL. 29277/2025) on 24 July 2025. The impugned order of the Commercial Court dated 16 April 2025 was quashed and set aside. The suit, CS (Comm) 6742/2024, was transferred to the Intellectual Property Division of the High Court for fresh adjudication. The court directed the Registry to register the suit with a suitable registration number and to assign appropriate numbers to pending applications, including Garg’s interim injunction application under Order XXXIX Rules 1 and 2 of the CPC. These details were to be communicated to the counsels and parties involved. The decision ensures that the validity of Garg’s design registration and the merits of the interim injunction will be re-evaluated by the High Court, aligning with the procedural requirements of the Designs Act.

Law Settled in This Case:This case reinforces the mandatory nature of Section 22(4) of the Designs Act, 2000, establishing that a suit involving a challenge to the validity of a design registration must be transferred to the High Court, irrespective of the perceived strength or specificity of the defense. The judgment clarifies that trial courts lack discretion to assess the merits of a cancellation ground under Section 19 before effecting the transfer, ensuring that such challenges are adjudicated by the High Court to maintain consistency and expertise in intellectual property matters. The ruling underscores the importance of procedural compliance in design infringement suits, protecting defendants’ rights to contest registration validity in the appropriate forum. It also highlights the judiciary’s role in upholding statutory mandates over discretionary evaluations, contributing to the predictability and integrity of design law enforcement in India.

Case Title: Lalita Goyal Vs. Sumit Garg

Date of Order: 24 July 2025

Case Number: FAO (COMM) 125/2025

Neutral Citation: 2025:DHC:6069-DB

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

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

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