Cadila Healthcare Ltd. Vs. Diat Foods (India)

### Introduction

This case revolves around the contentious use of the phrase "SUGAR FREE" in the context of trademark law, specifically in an action for passing off. It highlights the delicate balance courts must strike between protecting a plaintiff's established brand identity and allowing competitors to use descriptive terms in a fair manner. The dispute pits a pharmaceutical giant known for its artificial sweeteners against a food manufacturer introducing sugar-free products, raising questions about distinctiveness, descriptiveness, and the potential for consumer confusion. The judgment underscores the evolving jurisprudence on generic expressions in trademarks, emphasizing interim relief under the Code of Civil Procedure to maintain equilibrium pending full trial. By examining prior precedents involving the same plaintiff, the court navigates the line between proprietary rights and honest commercial use, offering insights into how courts assess visual prominence in packaging to prevent deception.

### Factual Background

The appellant, Cadila Healthcare Ltd., introduced a low-calorie table-top sweetener under the mark "SUGAR FREE" in 1988, which contained Aspartame and had only 2% of the calories of natural sugar. The product achieved significant market success, with sales amounting to around Rs. 216.40 crores from 1988 onwards, and trademark registration applications were pending. The appellant claimed that "SUGAR FREE" had become synonymous with its products among consumers. The respondent, Diat Foods (India), launched "Sugar Free Cookies" sweetened with Splenda, a competing artificial sweetener. On the respondent's packaging, "SUGAR FREE" was displayed in large, bright red fonts, making it highly prominent, while "Cookies" appeared in smaller, pale brown fonts, and phrases like "SUGARLESS Bliss" and "Sweetened with Splenda" were less emphasized. The respondent had applied for registration of "SUGARLESS" and/or "SUGARLESS Bliss" as its trademark. The appellant alleged that this packaging misled consumers into associating the cookies with its "SUGAR FREE" brand, diluting its mark and constituting passing off.

### Procedural Background

The appellant filed a suit for permanent injunction, damages, rendition of accounts, and delivery up, alleging passing off of its "SUGAR FREE" mark. Along with the suit, an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, was filed seeking interim injunction. On February 5, 2008, the court granted an ex parte ad interim injunction restraining the respondent from using "SUGAR FREE" or any deceptively similar mark. The respondent contested the application, leading to the impugned order dated July 9, 2008, by a Single Judge, who dismissed the interim injunction with costs of Rs. 50,000, finding sufficient added matter in the respondent's packaging to distinguish it. Aggrieved, the appellant filed the present appeal (FAO (OS) No. 385 of 2008) before the Division Bench of the Delhi High Court. The appeal focused on modifying the interim arrangement, with the respondent proposing a revised packaging during hearings. The Division Bench heard arguments on the descriptive use of "SUGAR FREE" and pronounced judgment on September 29, 2010.

### Core Dispute

At the heart of the dispute was whether the respondent's prominent use of "SUGAR FREE" on its cookie packaging amounted to passing off the appellant's established mark, or if it was merely descriptive of the product's sugar-free nature. The appellant argued that "SUGAR FREE" had acquired secondary meaning and distinctiveness through extensive use and sales, entitling it to protection against dilution. It contended that the respondent's packaging, by emphasizing "SUGAR FREE" over its own marks like "SUGARLESS Bliss" and "Splenda," created confusion, suggesting a connection to the appellant's sweetener products. The respondent defended its use as descriptive and bona fide, pointing to its application for "SUGARLESS Bliss" and the use of a competitor's sweetener, Splenda. The court had to determine an interim balance: whether to restrain the use entirely, allow it without restrictions, or impose conditions on font size and prominence to prevent deception while permitting fair competition.

### Discussion on Judgments

The court extensively discussed prior judgments involving the appellant's "SUGAR FREE" mark to guide its decision. In Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.), a Single Judge examined the use of "SUGAR FREE" on Amul's "Pro Biotic Frozen Dessert" packaging, where it was alleged to be used as part of the trade mark rather than descriptively. The judge found prima facie distinctiveness in "SUGAR FREE" for the appellant's sweeteners but allowed descriptive use by the defendant, restraining only the overwhelming prominence that could confuse consumers into thinking the appellant's sweetener was an ingredient. This was referred to in the context of assessing whether absolute restraint on "SUGAR FREE" was warranted or if conditional use sufficed. The appeal against this, Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.), was analyzed in detail, where the Division Bench held that "SUGAR FREE" was not a coined word but a combination of common English terms, incapable of inherent distinctiveness across all food products. It affirmed the Single Judge's restriction on font size to ensure descriptive use without indicating a connection to the appellant, cited here to support interim restrictions on prominence rather than outright prohibition. In Cadila Health Care Ltd. v. Dabur India Ltd., 2008 (38) PTC 617 (Del.) (DB), the Division Bench addressed "SUGAR FREE" on Dabur's "Chyawanprash" packaging, finding no passing off as it was in smaller fonts compared to the main mark and prominently displayed the defendant's trade mark, referenced to illustrate that equal or lesser prominence avoids confusion. Similarly, Cadila Health Care Ltd. v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2008 (4) RAJ 611, involved "SUGAR FREE" on another "Chyawanprash" product, where the Bench concluded the use was descriptive and not perceived as the appellant's product due to matching font sizes with other descriptors, used in the present case to emphasize that prominence determines deceptive similarity. Finally, Goenka Institute of Education & Research v. Anjani Kumar Goenka, 2009 AIR (Del) 139, was drawn upon for its analysis of Section 12 of the Trade Marks Act, 1999, on honest concurrent use, where the court imposed conditions to prevent public confusion even in descriptive contexts, applied here to justify court-imposed limitations on font and prominence akin to registrar powers.

### Reasoning and Analysis of the Judge

The Division Bench, comprising Sanjay Kishan Kaul and Valmiki J. Mehta, JJ., reasoned that "SUGAR FREE" is a generic expression combining common words, not inherently distinctive across all products, but had acquired secondary meaning limited to the appellant's artificial sweeteners. Drawing from prior cases, the judges noted that absolute restraint was inappropriate for descriptive use, but unrestricted prominence could deceive consumers into associating the respondent's cookies with the appellant's brand, especially since Splenda, a competitor, was used. They analyzed the packaging visuals, finding the original and proposed modified cartons gave undue emphasis to "SUGAR FREE," overshadowing "SUGARLESS Bliss" and "Sweetened with Splenda," indicating dishonest intent rather than pure descriptiveness. Invoking the principle of balancing equities under Order 39 Rules 1 and 2, the court emphasized maintaining status quo pending trial, where public interest in avoiding confusion is paramount. Analogizing to honest concurrent use under Section 12 of the Trade Marks Act, they held that courts can impose conditions like equal prominence to ensure the expression conveys sans sugar without implying a brand connection. The judges rejected the respondent's unwillingness to equalize prominence, concluding that extra emphasis on "SUGAR FREE" conveyed a false association, warranting modification of the impugned order to prevent deception while allowing use.

### Final Decision

The appeal was allowed to a limited extent, modifying the impugned order. The court held there would be no restraint on the respondent using "SUGAR FREE," but it must not be used with greater prominence or larger font size than "SUGARLESS Bliss" and "Sweetened with Splenda." The grant of Rs. 50,000 costs in the impugned judgment was set aside. The respondent was granted 30 days to exhaust existing packaging stock. The court clarified that its observations were for interim purposes only and would not influence the final trial.

### Law Settled in This Case

This case reinforces that generic expressions like "SUGAR FREE" cannot be monopolized absolutely but may acquire limited secondary meaning, entitling protection against passing off if used deceptively. It settles that in interim proceedings under Order 39 Rules 1 and 2 of the Code of Civil Procedure, courts can impose conditions on font size and prominence in packaging to balance proprietary rights with fair descriptive use, preventing consumer confusion. Drawing from Section 12 of the Trade Marks Act, 1999, it establishes that even in passing off actions, analogous powers allow restrictions to ensure honest use without deception, particularly when prominence suggests a false brand connection.

### Case Details

Case Title: Cadila Healthcare Ltd. Vs. Diat Foods (India)  

Date of Order: September 29, 2010  

Case Number: FAO (OS) No. 385 of 2008  

Neutral Citation: 2010 SCC OnLine Del 3445  

Name of Court: High Court of Delhi  

Name of Judge: Sanjay Kishan Kaul and Valmiki J. Mehta, JJ.

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.

Right of equality in the eyes of law

Right of equality in the eyes of law

Introduction: Equality, in its absolute sense, is an impossible target to achieve. By birth, every one is unequal. What one can achieve in a society is relative equality, i.e., equal opportunity to grow. The state should also take care of free will and intention of individuals while enacting laws and punishment measures to achieve relative equality while regulating liberty and guaranteeing rights to every individual.

Inequality is a product of nature, inherent and unavoidable, while equality is a human construct, an ideal forged through societal efforts and institutions. From the moment of birth, individuals are differentiated by genetics, environment, family background, physical abilities, and intellectual capacities. These natural disparities mean that absolute equality—where all people possess identical outcomes, resources, and statuses—remains a utopian fantasy. Instead, societies must strive for relative equality, which focuses on providing equal opportunities for personal and collective growth. This approach acknowledges human diversity while empowering the state to intervene thoughtfully, regulating liberties and safeguarding rights in a way that respects individual free will, intentions, and capabilities.

In this framework, the state acts as a mediator, not an equalizer of outcomes, but a guarantor of fair starting points. By considering the unique motivations and potentials of individuals, the state can craft policies that mitigate natural inequalities without erasing them. This balance is essential because unchecked liberty can exacerbate disparities, while overregulation can stifle human agency. The result is a society where opportunities are accessible to all, fostering growth rather than uniformity.

Natural Inequalities: The Foundation of Human Diversity:At the core of this discussion is the recognition that inequality is woven into the fabric of existence. Nature does not distribute talents, health, or circumstances evenly. Consider the historical example of Dara Shikoh and Aurangzeb, brothers born to the Mughal emperor Shah Jahan in the 17th century. Despite sharing the same royal lineage, upbringing, and privileges, they embodied starkly different qualities. Dara Shikoh was a scholar and philosopher, known for his liberal views, tolerance toward other religions, and efforts to translate Hindu texts like the Upanishads into Persian, promoting syncretism and intellectual harmony. In contrast, Aurangzeb was austere, devoutly orthodox in his Islamic faith, and pragmatic in his pursuit of power, often employing strict governance and military strategies. Their differences in temperament, ideology, and capabilities led to a brutal war of succession, where Aurangzeb emerged victorious and executed Dara. This fraternal rivalry illustrates how even siblings, raised in identical environments, can diverge profoundly due to innate dispositions and free will. Such natural variations underscore that absolute equality is unattainable; attempting to force it would require suppressing individuality, which is antithetical to human flourishing.

In modern society, these innate differences manifest in myriad ways: one person may excel in mathematics due to genetic predispositions, while another thrives in artistic endeavors. Socioeconomic factors compound these, with children born into poverty facing barriers that their affluent peers do not. Free will further complicates the equation—individuals choose paths based on personal intentions, values, and motivations, leading to diverse outcomes. The state cannot homogenize these traits without resorting to authoritarian control, which history shows leads to oppression rather than equity.

Counterarguments to Absolute Equality: Expanding the Critique:While the ideal of absolute equality appeals to notions of justice and fairness, it faces robust counterarguments that highlight its impracticality and potential harms. Proponents of absolute equality often argue that societal structures alone create disparities, and thus, through radical redistribution and uniform policies, equality can be engineered. However, this view overlooks several critical flaws:

Biological and Genetic Realities as Inescapable Barriers:Counter to the nurture-over-nature argument, scientific evidence demonstrates that genetics play a significant role in traits like intelligence, physical prowess, and even personality. For instance, twin studies show that identical twins raised apart often exhibit similar abilities and preferences, suggesting heritability. Imposing absolute equality would require interventions like genetic engineering or forced resource allocation, which raise ethical dilemmas about consent and human rights. Such measures could lead to a dystopian society where individual uniqueness is sacrificed, stifling innovation and personal fulfillment. The Dara-Aurangzeb example reinforces this: their differing qualities were not merely products of environment but intrinsic, and no state policy could have made them identical without destroying their essences.

The Fallacy of Equal Outcomes Undermining Merit and Motivation:Advocates for absolute equality might claim that equal outcomes motivate collective progress, but this ignores human psychology. Free will drives individuals to pursue goals based on personal intentions, and removing incentives for excellence—such as rewards for innovation or hard work—can lead to stagnation. Historical experiments, like communist regimes attempting classless societies, often resulted in reduced productivity and widespread discontent because they disregarded individual capabilities and motivations. Instead of fostering equality, these systems created new hierarchies based on political loyalty, proving that absolute equality erodes liberty and breeds inefficiency.

Cultural and Social Diversity as Assets, Not Obstacles:A common pro-equality argument posits that uniformity promotes harmony, but counterarguments emphasize that diversity enriches societies. Cultural, ethnic, and ideological differences, like those between Dara's pluralism and Aurangzeb's orthodoxy, spark creativity and debate. Forcing absolute equality could homogenize cultures, leading to cultural erosion and loss of heritage. Moreover, in pluralistic societies, equal outcomes often require suppressing minority voices or traditions, which contradicts the very inclusivity equality seeks.

Economic Impracticality and Unintended Consequences:Economically, absolute equality demands infinite resources for redistribution, which is impossible in finite systems. Counterarguments highlight how such pursuits lead to inflation, black markets, or economic collapse, as seen in Venezuela's attempts at wealth equalization. By ignoring individual intentions—such as entrepreneurial drive—these policies discourage investment and growth, ultimately harming the vulnerable they aim to help.

These counterarguments collectively dismantle the feasibility of absolute equality, advocating instead for relative equality as a pragmatic alternative.

The State's Role in Achieving Relative Equality: Regulating Liberty with Nuance:Given the impossibility of absolute equality, the state must focus on relative equality by guaranteeing equal opportunities. This involves regulating liberties—ensuring they do not infringe on others' rights—while accounting for free will, intentions, and capabilities. Liberty, as the freedom to act according to one's will, is inherently controlled by state-enacted laws. These laws, in turn, manage rights to create an environment where everyone has an equal opportunity to grow. However, the current mechanisms for regulating rights often remain oblivious to individual backgrounds, capabilities, free will, intentions, and traits. The state typically defines a set of crimes and prescribes uniform punishments, overlooking the nuanced human elements that make each case unique. This one-size-fits-all approach can inadvertently perpetuate inequalities rather than mitigate them, as it fails to tailor interventions to the individual's context.

Laws Tailored to Individual Contexts:Enacting laws that consider intent prevents blanket punishments that ignore nuances. For example, in criminal justice, distinguishing between manslaughter (unintentional) and murder (malicious) respects free will and promotes fairness. This approach equalizes opportunities by rehabilitating rather than alienating offenders, particularly those from disadvantaged backgrounds. Yet, even here, the system often falls short by not delving deeper into personal histories. Laws should evolve to incorporate comprehensive assessments of an individual's background, such as socioeconomic factors, psychological profiles, and life experiences, ensuring that the regulation of liberty aligns with the goal of fostering growth for all.

Punishment Measures Sensitive to Capabilities and Individual Traits:Proportional punishments, adjusted for socioeconomic factors, avoid perpetuating inequality. Harsh sentences for minor offenses in impoverished communities deepen cycles of poverty, while leniency for the elite erodes trust. By incorporating restorative justice, the state can address root causes, enhancing opportunities for all. However, the prevailing crime-oriented punishment model—where the state provides one standardized penalty for a defined crime—neglects individual free will and traits. This is akin to a doctor treating two patients suffering from the same disease with identical medicine, disregarding their unique capabilities, allergies, or overall health profiles. In reality, effective medical treatment is personalized: one patient might require a milder dosage due to age or comorbidities, while another needs a stronger regimen based on their resilience and history.

Similarly, in the justice system, two persons guilty of the same crime should not be subjected to the same punishment. Consider a respectful, first-time offender in society—perhaps a community leader who commits theft out of desperation during a personal crisis—versus a habitual offender with a long record of similar acts driven by entrenched patterns of behavior. For the former, a rehabilitative approach like community service or counseling might suffice, respecting their free will and intention to reform, while promoting their growth and reintegration. For the latter, stricter measures, such as incarceration combined with intensive therapy, could be necessary to protect society and address deeper traits. Punishment should thus shift from being purely crime-oriented to individual-oriented, evaluating factors like background, capabilities, free will, and intentions. This nuanced regulation ensures that the state's control over liberty and rights truly provides equal opportunities for personal development, preventing the system from blindly amplifying natural inequalities.

Policies Promoting Equal Opportunity:Affirmative actions, like scholarships for underprivileged students, regulate economic liberties (e.g., taxing the wealthy) to fund programs that bridge capability gaps. These must respect free will by offering choices, not mandates, ensuring individuals can pursue paths aligned with their intentions. Extending this, policies should include individualized support systems, such as personalized education plans or vocational training that account for diverse traits and motivations, further emphasizing the state's role in controlled liberty for equitable growth.

However, the state must guard against overreach. Excessive regulation could suppress free will, leading to resentment or underground resistance, as seen in prohibition-era policies.

Addressing Potential Conflicts: Balancing Liberty, Rights, and Equality:Conflicts arise when regulating liberty for equality. For instance, wealth taxes limit economic freedom but fund social programs, creating equal opportunities. To mitigate trade-offs, the state should:

- Prioritize transparency in lawmaking to build trust.

- Incorporate feedback mechanisms respecting diverse intentions.

- Use data on capabilities to tailor interventions without stereotyping.

- Reform punishment paradigms to emphasize individual-oriented justice, ensuring that regulations on rights do not ignore personal contexts, as highlighted in the doctor-patient analogy.

By addressing these conflicts with a focus on nuance, the state can avoid the pitfalls of uniform mechanisms that overlook human diversity.

Embracing Relative Equality for a Just Society:In a world of natural inequalities, absolute equality is a mirage that distracts from achievable goals. By focusing on relative equality—equal opportunities regulated with respect for free will, intentions, and capabilities—the state can foster a balanced society. Drawing from examples like Dara and Aurangzeb, we see that diversity is strength, not weakness. Through nuanced laws and punishments that control liberty while tailoring rights to individual traits—moving beyond crime-oriented to individual-oriented approaches—the state regulates liberty, guarantees rights, and enables all to grow, transforming inherent differences into collective progress. This human construct of equality, though imperfect, honors nature's variety while advancing justice.

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

Court on Its Own Motion Vs Obsession Naaz

### Introduction

This case revolves around a criminal contempt proceeding initiated by the High Court of Delhi on its own motion following a violent attack on court-appointed Advocate Commissioners in Kolkata. The incident stemmed from a trademark infringement suit filed by Samsung Electronics Company Limited against vendors selling counterfeit products bearing its marks. The court's intervention highlighted the critical need to protect the administration of justice from interference, particularly when judicial officers or commissioners are obstructed in executing court orders. The judgment underscores the judiciary's role in upholding its authority against premeditated disruptions, balancing the principles of wilful disobedience with the requirement for proof beyond reasonable doubt.

### Factual Background

Samsung Electronics Company Limited, a global leader in electronics with operations in over 67 countries including India, discovered in November 2014 that several vendors in the Khidderpore area of Kolkata were selling counterfeit mobile phones, tablets, and accessories under its trademark "Samsung" and oval slanted logo. The company identified five main markets and 15 vendors involved in this activity. On December 23, 2014, the Delhi High Court, in the suit CS(OS) No. 4024/2014, restrained these vendors from dealing in counterfeit goods and appointed 11 Advocate Commissioners to inspect specific shops, prepare inventories of infringing products, seize them, seal them, and release them on superdari for production in court as needed. The commissioners were authorized to seek assistance from Samsung representatives and local police.

The commissioners coordinated with Samsung's counsel and informed the Deputy Commissioner of Police (Enforcement), Kolkata, in advance. On January 13, 2015, they arrived at the markets with 21 police personnel. Upon reaching the sites, they encountered resistance: shops were shut, lights turned off, and mobs gathered, armed with rods, hockey sticks, and lathis. Several commissioners were assaulted; for instance, Mr. Shravan Sahary suffered blows to his face, losing two teeth, while Mr. Ankur Mittal received multiple injuries. The mobs manhandled police personnel and forced the teams to flee without completing the inspections. Injured commissioners and police were treated at hospitals, and a FIR was registered by Kolkata Police under various IPC sections. The attack appeared premeditated, as news of the raid had spread, leading to the removal of counterfeit goods beforehand.

### Procedural Background

The underlying suit, CS(OS) No. 4024/2014, was filed by Samsung against 15 defendants for trademark infringement. The court issued an ex-parte injunction and appointed commissioners on December 23, 2014. Following the January 13, 2015 incident, Mr. Shravan Sahary mentioned the matter before the Delhi High Court on January 22, 2015, leading to suo motu criminal contempt proceedings. Notices were issued to the original 16 defendants and the DCP, Kolkata, for explanations. The matter was transferred to a Division Bench. Based on police investigations, additional respondents (Nos. 17-30) were impleaded between March 2015 and April 2024. Affidavits were filed by respondents denying involvement, claiming alibis, or tendering apologies. Kolkata Police submitted charge-sheets and additional affidavits identifying attackers. The court appointed an Amicus Curiae and heard arguments, culminating in the judgment on August 22, 2025.

### Core Dispute

The central issue was whether the respondents committed criminal contempt by wilfully interfering with the administration of justice through their actions in obstructing and assaulting the court-appointed Advocate Commissioners. The court examined if the respondents' conduct demonstrated knowledge of the court order and intent to disrupt its execution, constituting contempt under the Contempt of Courts Act, 1971. Respondents argued lack of awareness, alibis, or mere bystander status, while the Amicus Curiae contended it was a concerted effort to thwart judicial process. The dispute hinged on proving "wilful" interference beyond reasonable doubt, balancing apologies with the gravity of the assault on court officers.

### Discussion on Judgments

The court relied on several Supreme Court judgments to define the scope of criminal contempt, emphasizing wilful disobedience and interference in justice. In Jhareswar Prasad Paul v. Tarak Nath Ganguly, (2002) 5 SCC 352, cited in the context of upholding judicial majesty, the Apex Court observed that contempt jurisdiction protects the dignity of courts as a guarantee for citizens' rights, underscoring that undermining respect for the judiciary erodes democratic fabric—this was referred to establish the purpose of contempt proceedings in the present case. Ram Kishan v. Tarun Bajaj, (2014) 16 SCC 204, was extensively quoted to explain that contempt requires "wilful" disobedience, excluding accidental or negligent acts, and demands proof beyond reasonable doubt; it was used to delineate that proceedings are quasi-criminal and must be exercised cautiously, applying this to assess if respondents' actions were intentional. U.N. Bora v. Assam Roller Flour Mills Association, (2022) 1 SCC 101, was invoked to reiterate principles from prior cases, noting that two interpretations of an action favor non-contumacious views if possible, and was referenced to affirm the need for mental intent in interference. Hukum Chand Deswal v. Satish Raj Deswal, (2021) 13 SCC 166, was cited alongside Ram Kishan to emphasize the "wilful" element as knowingly intentional, excluding bona fide inability, and was applied to evaluate respondents' claims of unawareness. S. Sundaram Pillai v. V.R. Pattabiraman, (1985) 1 SCC 591, was mentioned in the context of excluding compelling circumstances from contempt, used to reject alibis lacking proof. Rakapalli Raja Ram Gopala Rao v. Naragani Govinda Sehararao, (1989) 4 SCC 255, Niaz Mohammad v. State of Haryana, (1994) 6 SCC 332, Chordia Automobiles v. S. Moosa, (2000) 3 SCC 282, Anil Ratan Sarkar v. Hirak Ghosh, (2002) 4 SCC 21, Bank of Baroda v. Sadruddin Hasan Daya, (2004) 1 SCC 360, State of Orissa v. Mohd. Illiyas, (2006) 1 SCC 275, Sahdeo v. State of U.P., (2010) 3 SCC 705, National Fertilizers Ltd. v. Tuncay Alankus, (2013) 9 SCC 600, Sushila Raje Holkar v. Anil Kak, (2008) 14 SCC 392, and Three Cheers Entertainment (P) Ltd. v. CESC Ltd., (2008) 16 SCC 592, were collectively referenced as precedents on standards of proof, wilfulness, and caution in contempt, invoked to support the finding that only deliberate interference qualifies as contempt in this mob attack scenario. R.N. Dey v. Bhagyabati Pramanik, (2000) 4 SCC 400, was quoted approvingly in U.N. Bora to reinforce contempt's contours, applied here to limit proceedings to proven wilful acts.

The judges reasoned that criminal contempt under the Contempt of Courts Act, 1971, requires wilful interference in justice administration, proven beyond reasonable doubt, as established in precedents like Ram Kishan v. Tarun Bajaj. They analyzed affidavits and police reports, finding the attack premeditated: shops were preemptively cleared, shutters downed, and mobs mobilized upon commissioners' arrival. This demonstrated intent to obstruct court orders, as respondents knew of the raid's purpose from interactions. Alibis by shop owners (e.g., Respondents 1, 4, 13) were rejected, as their absence did not negate orchestration or knowledge, evidenced by on-site resistance. Mere bystanders (e.g., cycle repairers, bus conductors) lacked intent or knowledge, discharging them. However, identified attackers and shop affiliates showed wilfulness by inciting violence to prevent seizures, undermining judicial authority. Apologies were insufficient given injuries to commissioners and police, emphasizing deterrence to uphold rule of law. The analysis balanced evidence with contempt's quasi-criminal nature, confining punishment to those with proven interference.

The court held Respondents Nos. 1, 2, 4, 10, 11, 13, 17, 18, 21, 22, 24, and 27 guilty of criminal contempt for wilfully interfering in justice administration. Each was fined Rs. 2,000 and sentenced to one day of simple imprisonment, with medical examination in Tihar Jail. Notices against other respondents were discharged. The petition was disposed of, with observations limited to contempt proceedings, not affecting parallel criminal cases.

 

This case reaffirms that criminal contempt requires wilful interference in justice administration, proven beyond reasonable doubt, excluding accidental or unaware acts. Obstructing court-appointed commissioners constitutes contempt if intentional, as it undermines judicial majesty and citizens' rights protection. Unconditional apologies do not absolve grave interferences like violent assaults on court officers. Courts must exercise contempt powers sparingly but firmly to deter premeditated disruptions, ensuring rule of law prevails without affecting parallel criminal trials.

Court on Its Own Motion Vs Obsession Naaz & Ors.: August 22, 2025:CONT.CAS.(CRL) 3/2015:2025:DHC:7206-DB:Hon'ble Mr. Justice Subramonium Prasad and Hon'ble Mr. Justice Harish Vaidyanathan Shankar

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.

Yatra Online Limited Vs Mach Conferences and Events Limited

Introduction

The dispute between Yatra Online Limited (Plaintiff) and Mach Conferences and Events Limited (Defendant) arose in connection with alleged infringement, passing off, misrepresentation, dilution, and unfair competition pertaining to the trademark ‘YATRA’, including device marks and formative domain names. This case study delves into the complexities surrounding claims for exclusivity over generic and descriptive marks in the travel services industry, the nuances of prima facie rights, and the scope of injunctive relief in trademark cases before the Hon’ble High Court of Delhi.

Factual Background

Yatra Online Limited asserted its status as the registered proprietor of multiple trade marks such as 'YATRA.COM', 'YATRA WITH DEVICE', 'YATRA FREIGHT', and related device marks. The plaintiff highlighted the adoption of ‘YATRA’ as its trade name in 2005 and its business operations commencing in 2006 through the website www.yatra.com and associated platforms. The brand ‘YATRA’ was presented as a dominant market player in online travel bookings and related services, boasting a large customer base and multi-channel presence. In fiscal year 2024-2025, the plaintiff acquired Globe All India Services Limited, further solidifying its corporate clientele to over 1,200 clients.

Upon discovering the defendant’s intent to launch www.bookmyyatra.com, the plaintiff observed Mach Conferences and Events Limited attempting to register and use confusingly similar marks for identical travel-related services. This included trade mark applications for ‘BookMyYatra’ and ‘BookMyYatra.com’, domain registration, and evidence from an Analyst/Investor meeting transcript. The plaintiff considered the defendant’s actions a deliberate attempt to capitalize on the reputation and goodwill established by Yatra’s longstanding use.

Conversely, the defendant argued that ‘YATRA’ is a generic, descriptive word meaning ‘journey’ in Hindi, and is widely used in the travel industry by various businesses. The defendant claimed no exclusive rights accrue to the plaintiff, especially in Class 39, as the Registrar had issued device mark registrations with a disclaimer expressly denying exclusivity over the word ‘YATRA’.

Procedural Background

The plaintiff filed a suit seeking injunction against the defendant from using the marks ‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’, and requested delivery of the defendant’s domain name. The plaintiff further sought withdrawal of the defendant’s trade mark applications and damages. By an ex-parte interim order dated 09.12.2024, the defendant was restrained from using the impugned marks pending further hearing. The defendant filed a detailed reply opposing interim relief, followed by a rejoinder from the plaintiff. The application was finally heard and reserved for order on 27.07.2025.

During arguments, the plaintiff emphasized its statutory and common law rights, asserting ‘YATRA’ as having acquired a secondary meaning due to long and exclusive market use. The defendant countered, highlighting multiple instances of third-party use, registration refusals, disclaimers, and the generic nature of 'YATRA' and '.com', arguing that no confusion or exclusive rights could be claimed.

Core Dispute

The crux of the dispute rested on whether the plaintiff could claim exclusive statutory and common law rights over the mark ‘YATRA’, considering its registration status, disclaimers, evidence of goodwill, and the prevailing use of the word within the industry. The court was to decide the validity and enforceability of trade marks containing generic elements, the implications of disclaimers on exclusivity, and whether the defendant’s marks ‘BookMyYatra’ and ‘BookMyYatra.com’ constituted infringement, passing off, or justified remedial injunction.

Discussion on Judgments – Complete Citations and Context

Both parties heavily relied on precedent to support their positions. The plaintiff’s counsel cited the following authorities:

Registrar of Trade Marks v. Ashok Chandra Rakhit Limited, 1955 SCC OnLine SC 12 (regarding the effect of disclaimers).

Pidilite Industries Limited v. Riya Chemy, 2022 SCC OnLine Bom 5077 (impact of disclaimers and common law rights).

Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel & Others, (2006) 8 SCC 726 (common law rights and secondary meaning).

Amritdhara Pharmacy v. Satyadeo Gupta, 1962 SCC OnLine SC 13; Corn Products Refining Co. v. Shangrila Food Products Limited, 1959 SCC OnLine SC 11 (similarity and confusion).

Sky Enterprise Private Ltd. v. Abaad Masala & Co., 2020 SCC OnLine Bom 750; British School Society v. Sanjay Gandhi Educational Society and Another, 2022 SCC OnLine Del 1165; British School Society v. British International School, 2021 SCC OnLine Del 5210.

Frank Reddaway & Co. Ltd. v. Banham & Co. Ltd., AC 1999; Godfrey Philips India Ltd. v. Girnar Food & Bevarages (P) Ltd., (2004) 5 SCC 257 (secondary meaning and household reputation).

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., (1969) 2 SCC 131; Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618; Mex Switchgears Pvt. Ltd. v. Omex Cables Industries, 2018 SCC OnLine Del 10412; Pidilite Industries Ltd. v. S.M. Associates, 2003 SCC OnLine Bom 143 (deceptive similarity).

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 (honest business practices).

Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd., 2001 SCC OnLine Bom 1176; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 (bad faith/adoption).

M/s Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 2002 SCC OnLine Del 239; Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145; Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727; Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73; Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50 (domain name and passing off).

M/s. Jawahar Engineering Co. v. M/s. Jawahar Engineers Pvt. Ltd., 1983 SCC OnLine Del 41; Intel Corporation v. Harpreet Singh, 2018 SCC OnLine Del 7264; Mars Inc. v. Kumar Krishna Mukerjee, 2002 SCC OnLine Del 1218 (quia timet injunctions).

National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd., (1970) 3 SCC 665; Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744; Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt. Ltd., 2023 SCC OnLine Del 2065; Rajesh Chugh v. Chhavi Poplai, 2019 SCC OnLine Del 6717; Goenka Institute v. Anjani Kumar, 2009 SCC OnLine Del 1691; Dr. Reddy's Labs Ltd. v. Reddy Pharmaceuticals Ltd., 2004 SCC OnLine Del 668; Lupin Limited v. Eris Lifesciences Pvt. Ltd., 2015 SCC OnLine Bom 6807; Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distiller Pvt. Ltd., 2015 SCC OnLine Del 10164 (third-party use).

The defendant’s counsel referenced:

Parakh Vanijya Pvt. Ltd. v. Baroma Agro Product, 2018 SCC OnLine SC 686 (effect of disclaimers).

Nilkamal Crates & Containers v. Ms. Reena Rajpal, 2023:DHC:8087 (whole mark policy under Section 17 of Trade Marks Act).

BigTree Entertainment Pvt. Ltd. v. Brain Seek Sportainment Pvt. Ltd., 2017:DHC:7767; People Interactive (India) Pvt. Ltd. v. Vivek Pahwa, 2016 SCC Online Bom 7351; Juice Generation Inc. v. GS Enters LLC, 2015 U.S App. LEXIS 12456; Office Cleaning Services LD. V. Westminster Window and General Cleaners LD., (1946) 63 RPC 39; Radio Taxicabs (London) Ltd. v. Owner Driver Radio Taxi Services Ltd., RPC 351.

Kamdhenu Ltd. v. Registrar of Trade Marks, 2023 SCC Online Del 3913; J.R Kapoor v. Micronix India, 1994 Supp (3) SCC 215; Pernod Ricard India Pvt. Ltd. v. A.B Sugars Limited, 2023 SCC OnLine Del 6966; PhonePe Pvt. Ltd. v. EZY Services, 2021 SCC OnLine Del 2635; Ayushakti Ayurved Pvt. Ltd. v. Hindustan Lever Limited, 2003 SCC OnLine Bom 404; Vijay Kumar Ahuja v. Lalita Ahuja, 2001 SCC OnLine Del 1215.

The context for these precedents included the market effect of disclaimers, what constitutes generic and descriptive marks, standards for secondary meaning, the principle of anti-dissection and dominant marks, and the prerequisites for injunctive relief.

Reasoning and Analysis of the Judge

Justice Tejas Karia provided a detailed rationale examining whether the plaintiff’s marks had acquired distinctiveness or secondary meaning. The court recognized the plaintiff's longstanding market use and device mark registrations but underscored that the Registrar of Trade Marks expressly issued a disclaimer, denying exclusive rights over ‘YATRA’.

It was reasoned that ‘YATRA’, being a synonym for ‘travel’ in Hindi, is a generic and descriptive term commonly employed in the travel industry. The market was replete with various businesses and registered marks containing ‘YATRA’, undermining the plaintiff’s claim for exclusivity or secondary meaning. The court scrutinized evidence of market adoption, business operations, reputational claims, and differences in marks, emphasizing that generic and descriptive marks, even with significant market reputation, cannot be monopolized absent distinctiveness.

Further, the court adopted the whole mark policy, stating that the defendant’s marks 'BookMyYatra' and 'BookMyYatra.com', viewed in their entirety and with their prefixes, were distinguishable from the plaintiff’s device marks and did not create likelihood of confusion. The use of ‘BookMy’ was deemed to be a common prefix in online businesses (e.g., BookMyShow, BookMyTrip), and '.com' was held to be generic and incapable of conferring distinctiveness.

The court found no prima facie case of infringement, deception, or passing off, nor did the plaintiff satisfy requirements for declaring ‘YATRA’ a well-known mark under Section 2(zg) of the Trade Marks Act or Rule 124 of the Trade Mark Rules.

Based on the above reasoning, the court dismissed the application for interim injunction. No permanent relief was granted. The ex-parte restraint against the defendant using 'BookMyYatra' and 'BookMyYatra.com' or the domain name www.bookmyyatra.com was vacated, finding no prima facie case for infringement or passing off. The court held that generic and descriptive marks such as 'YATRA' and '.com', absent secondary meaning, do not qualify for legal protection from third-party use in the context of the travel services industry.

The judgment clarified that generic or descriptive words—especially those commonly used in the relevant industry—cannot be monopolized or protected as trade marks in the absence of distinctiveness or secondary meaning. Disclaimers attached to device mark registrations restrict the proprietor from claiming exclusivity over the disclaimed element. Moreover, the presence of widespread industry use and registration of similar marks by different proprietors precludes the grant of exclusivity or injunctive relief. When marks are to be compared, courts must examine them as wholes, not merely by their constituent parts, and generic website suffixes like '.com' have no distinctiveness.

Yatra Online Limited Vs Mach Conferences and Events Limited: August 22, 2025: CS(COMM) 1099/2024: 2025:DHC:7167:Hon'ble Mr. Justice Tejas Karia

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.

Sushil Kumar Vs The Polo/Lauren Company

Introduction

The dispute between Sushil Kumar T/A Da Polo & Anr. and The Polo/Lauren Company L.P. pivots on crucial questions of territorial and pecuniary jurisdiction in the realm of trademark and copyright enforcement, especially in the digital era. The matter came before the High Court of Delhi, challenging the decision of the Commercial Court (South District, Saket Court, New Delhi) to entertain a suit for permanent injunction based on alleged infringement, passing off, and copyright violation due to the use of trade marks similar to those of the respondent. The petitioners sought judicial intervention under Article 227 of the Constitution of India, raising fundamental issues about the interplay between internet-based commerce and forum conveniens in intellectual property litigation.

Factual Background

The Respondent, The Polo/Lauren Company L.P., holds registrations for multiple formative variants of the mark "POLO," including "POLO RALPH LAUREN," and other associated device marks, with registered protection over goods and services in their class. The Petitioners, Sushil Kumar T/A Da Polo and another, were accused of adopting and using the impugned trade mark "DA POLO" on identical goods, marketing these through their own website (www.dapolo.in) and e-commerce platforms such as www.indiamart.com. The Respondent contended that such acts constituted infringement, passing off, and copyright violation, seeking permanent injunction restraining those acts. The core factual assertion by the Respondent was that these infringing products were networked and made accessible to customers within the territorial jurisdiction of the South Delhi Commercial Court.

Procedural Background

The suit was filed by the Respondent before the Commercial Court seeking permanent injunction, damages, and other reliefs. The Petitioners, acting as Defendants in that suit, moved an application under Order VII Rules 10 and 11 of the Code of Civil Procedure, 1908, together with Sections 35, 35A, and 151, to dismiss or return the plaint for lack of jurisdiction and inadequate valuation. The Commercial Court rejected the application, considering the objections 'by way of demurrer', leading the Petitioners to file the present petition under Article 227 of the Constitution of India before the High Court of Delhi.

Core Dispute

At the heart of this litigation were three intertwined issues. First, whether the Commercial Court in South Delhi had territorial and pecuniary jurisdiction in light of the Petitioners’ principal places of business being in Sonipat (Haryana) and Rohini (New Delhi), and the absence of specific evidence of commercial transactions within its jurisdiction. Second, whether mere accessibility or interactivity of the Petitioners’ website constituted purposeful availment of the jurisdiction of the Commercial Court, especially for internet-based disputes in trademark infringement and passing off actions. Third, whether the provisions of Section 134(2) of the Trade Marks Act, 1999 enabled forum shopping, or should be harmonized with Section 20 of CPC in accordance with Supreme Court interpretations to prevent abuse of process.

Discussion on Judgments

The parties cited and relied upon an array of precedents, which the judge meticulously discussed:

St. Ives Laboratories Inc. v. Arif Perfumers & Anr. (2009) 40 PTC 104 (Delhi) was referenced by the Petitioners to suggest that mere assertions of clandestine sales do not confer jurisdiction and that such suits could be a device for harassment.

Dahiben v. Arvindbhai Kalyanji Bhanushali (Gajra) Dead through Legal Representatives & Ors. (2020) 7 SCC 366 (Supreme Court of India) as cited by the Petitioners, underscored that a plaint which is manifestly vexatious and does not disclose a clear right to sue must be nipped at the threshold.

Coromandel Indag Products India Ltd. v. Sumitomo Chemical Company Ltd. & Anr. 2025 SCC OnLine Del 4647 (Delhi High Court) reaffirmed the principle that courts must look for meaningful pleadings rather than clever drafting creating an illusion of cause of action.

Banyan Tree Holding Limited v. M. Murali Krishna Reddy & Anr. 2009 SCC OnLine Del 3780 (Delhi High Court, Division Bench) established crucial tests for asserting jurisdiction in internet-based disputes. The judgment held that jurisdiction is not attracted by mere interactivity or accessibility of a website; the plaintiff must demonstrate that the defendant purposefully availed itself of the forum court and specifically targeted customers within the jurisdiction, resulting in injury or harm. This authority was heavily relied on by the Petitioners, with its multi-factor test reaffirmed in subsequent cases.

Impresario Entertainment & Hospitality Pvt. Ltd. v. S&D Hospitality 2018 SCC OnLine Del 6392 (Delhi High Court) interpreted Banyan Tree’s tests and held that plaintiffs must prima facie show commercial transactions targeting the forum state, supported by material evidence. Trap transactions, if relied upon, must be fair and transparently pleaded.

Karans Gurukul Classes & Ors. v. Gurukul Classes IIT Division & Ors. 2019 SCC OnLine Del 8444 (Delhi High Court) echoed the earlier judgments, holding that mere website interactivity does not suffice for jurisdiction unless targeted commercial activity is established.

Indian Performing Rights Society Ltd. v. Sanjay Dalia & Anr. (2015) 10 SCC 161 (Supreme Court) was referenced to clarify that Section 134(2) of the Trade Marks Act provides an additional forum but does not allow forum shopping; suits should be filed at a place where plaintiff carries on business and where the cause of action arises.

Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors. 2016 SCC OnLine Del 376 and 2023:DHC:9093 (Delhi High Court) analyzed forum conveniens and the meaning of "carries on business", harmonizing Section 134 of the Trade Marks Act with Section 20 of CPC, favoring the plaintiff’s convenience, yet restricting forum shopping.

World Wrestling Entertainment, Inc. v. Reshma Collection & Ors. (2014) 60 PTC 452 (Del) applied similar reasoning to internet-based business models, holding that transactions executed over interactive websites where orders, payments, and deliveries occur within a forum state are akin to having a shop in that state, thus satisfying the "carrying on business" criterion.

Further supporting authorities included Corona Remedies Pvt. Ltd. v. UMAC Pharmaceuticals & Ors.:2023:DHC:5718; Diamond Modular Pvt. Ltd. v. Vikash Kumar & Anr.: 2025:DHC:3619-DB; Shree Girirajji & Co. v. Gagan Pagrani Proprietor of Plastica Industries: 2024:DHC:2230-DB; Marrico Ltd.v. Mr. Mukesh Kumar & Ors. (2018) 253 DLT 8; M/s Allied Blenders & Distillers Pvt. Ltd. v. R.K. Distillers Pvt. Ltd. (2017) 69 PTC 493 all of which contributed to contours of jurisdiction in commercial disputes, especially where business is transacted via interactive websites accessible within the forum state.

On maintainability, Black Diamond Trackparts Pvt. Ltd. & Ors. v. Black Diamond Motors Pvt. Ltd. (2021) 87 PTC 480 (DB), Ashok Kumar Puri & Anr. v. S. Suncon Realtors Pvt. Ltd. & Anr. (2021) 4 HCC (Del) 201, and Deep Industries Limited v. Oil and Natural Gas Corporation Limited (2020) 15 SCC 706 were cited to clarify the limited, cautious exercise of Article 227 jurisdiction over Commercial Court orders.

Reasoning and Analysis of the Judge

Justice Tejas Karia conducted a thorough analysis of the pleadings, rival submissions, and the array of precedents. At the outset, he clarified that petitions under Article 227, while maintainable, should only be entertained in exceptional circumstances involving patent lack of inherent jurisdiction. The threshold for interference with Commercial Court orders was set high, favoring expeditious resolution over piecemeal challenges.

The judge recognized that the Respondent had sufficiently pleaded facts demonstrating the causes of action within the territorial jurisdiction of the Commercial Court. Screenshots showed the petitioners marketing allegedly infringing products online, with accessibility to customers within South Delhi. The plaint included credible apprehensions that the petitioners' activities were likely to expand further into that market, thus justifying jurisdiction for preventive relief.

On the pivotal issue of internet-based jurisdiction, Justice Karia harmonized the reasoning from Banyan Tree Holding and World Wrestling Entertainment. He acknowledged the nuanced requirement for purposeful availment — more than mere accessibility or interactivity — insisting that the defendant must target customers within the forum state. However, upon reviewing the documents and pleadings, he concluded that the petitioners’ website, coupled with the presence on multiple e-commerce platforms, established purposeful availment, as customers in the territorial jurisdiction could place orders and receive deliveries of the impugned goods.

Additionally, referencing Indian Performing Rights Society Ltd. and Ultra Home Construction Pvt. Ltd., Justice Karia asserted that Section 134(2) of the Trade Marks Act provides an additional forum only if the plaintiff carries on business in a jurisdiction where a cause of action arises, but does not endorse forum shopping solely on the basis of branch offices or online presence at distant locations. The Respondent’s assertion of active business and sales within South Delhi, recognized by their own averments and online transactions, satisfied this requirement.

Notably, the judge held that objections as to valuation and pecuniary jurisdiction had been abandoned before the Commercial Court and required no further adjudication.

Final Decision

Justice Tejas Karia dismissed the petition under Article 227, upholding the order of the Commercial Court that refused to return or reject the plaint. He determined that the Respondent had properly invoked the jurisdiction by evidencing business activity and potential expansion of the allegedly infringing mark within South Delhi through interactive online platforms. The Commercial Court’s finding was neither perverse nor lacking inherent jurisdiction, and thus did not merit interference through supervisory jurisdiction.

Law Settled in This Case

This case settles several significant legal principles in the context of intellectual property disputes over online commerce. First, it reaffirms that territorial jurisdiction in trademark and copyright suits arising from internet commerce is not triggered merely by the accessibility of a defendant’s website in the forum state; rather, the plaintiff must show that the defendant purposefully availed itself of the forum by targeting customers and conducting actual commercial transactions, resulting in injury within the jurisdiction. Second, it confirms the cautious approach courts must take under Section 134(2) of the Trade Marks Act to balance the plaintiff’s convenience with prevention of forum shopping, requiring a real nexus between business activities and the forum. Third, it underscores the limited scope of supervisory jurisdiction under Article 227 in commercial suits, emphasizing prompt resolution and restricting review to cases of patent lack of inherent jurisdiction.

Sushil Kumar Vs The Polo/Lauren Company L.P.: 22 August 2025:CM(M)-IPD 31/2025 :2025:DHC:7159: Hon’ble Mr. Justice Tejas Karia

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.

Vasundhra Jewellers Pvt. Ltd. Vs Vasundhara Fashion Jewellery

Introduction

This case study examines the detailed legal controversy between Vasundhra Jewellers Pvt. Ltd. and M/S Vasundhara Fashion Jewellery LLP & Anr., adjudicated by the Division Bench of the High Court of Delhi on August 18, 2025. The dispute pivots around the alleged infringement and passing off of the trademarks "VASUNDHRA" and "VASUNDHARA" in connection with jewellery, precious stones, gems, and other allied goods. The matter delves deep into the nuanced application of trademark law in India, particularly the interpretation and scope of Section 35 of the Trade Marks Act, 1999 concerning the bona fide use of one’s own name, and principles impacting both infringement and passing off actions.

Factual Background

Vasundhra Jewellers Pvt. Ltd., the appellant, was established on October 28, 1999, claiming to be the prior user and registered proprietor of the marks "VASUNDHRA" and "VASUNDHRA JEWELLERS" for jewellery and related goods in Class 14. The appellant asserts continuous user and substantial promotional activities, presenting figures of turnover and advertisement expenses from its inception. Contrastingly, the respondents—M/S Vasundhara Fashion Jewellery LLP and its predecessor entities—trace their use of the mark "VASUNDHARA" to 2001, originally as the trading name of Ms. Vasundhara Mantri. The respondents support their bona fide adoption of the mark, claiming registration of trademark and copyright over the stylized "VASUNDHARA" and a history of business activities and publicity.

The appellant accused the respondents of using marks identical or deceptively similar to its own, particularly upon discovering the use of “VASUNDHARA” in 2019 and associated domain names and social media handles. Importantly, the respondents emphasize that "VASUNDHARA" is the first name of the proprietor and highlight their own trademark registrations, asserting honest and concurrent use.

Procedural Background

The dispute began with the appellant filing a suit (CS (COMM) 161/2022) seeking a permanent injunction against the respondents’ use of the allegedly infringing marks. The suit was accompanied by an interlocutory application (IA 4154/2022) for interim injunction under Order XXXIX Rules 1 and 2 CPC. The Single Judge in the High Court dismissed the interim application, primarily on the grounds that both parties held registrations, the use was bona fide, and that there was no sufficient similarity or risk of confusion. Aggrieved by this, the appellant instituted the present appeal (FAO(OS) (COMM) 232/2023) before the Division Bench, contesting the findings and seeking interlocutory relief.

Core Dispute

The central dispute revolves around whether the respondents’ use of the mark "VASUNDHARA" constitutes passing off or infringement of the appellant’s trademarks "VASUNDHRA" and "VASUNDHRA JEWELLERS." This extends into the sub-issues of (a) prior use and accrual of goodwill by the appellant, (b) bona fide use of personal name by the respondents, (c) similarity and likelihood of confusion between the respective marks, and (d) whether Section 35 of the Trade Marks Act, which protects bona fide use of one’s own name, applies to cases of passing off as well as infringement, specifically when the mark used is only a part of the full name and by a corporate entity as an assignee of an individual.

Discussion on Judgments

A diverse set of judgments and authorities shaped the arguments and reasoning in this case. The following cases were cited, along with the context of their reference:

Precious Jewels v Varun Gems, (2015) 1 SCC 160: Cited to underscore the Supreme Court’s interpretation of Section 35, holding that bona fide use of one’s surname by a business entity, where connected to ownership, cannot be restrained through an injunction—even where confusion may arise.

Goenka Institute of Education and Research v Anjani Kumar Goenka, 2009 SCC Online Del 1691: The Division Bench had previously commented that Section 35 applies to full names and only to natural persons, not legal entities. However, this was interpreted as obiter and not followed strictly in the present matter.

Vasundhra Jewellers (P) Ltd v Kirat Vinodbhai Jadvani, 2022 SCC Online Del 3370: Used by the respondents to posit that "Vasundhara" is a generic and common name, and exclusivity cannot be claimed. The appellant attempted to distinguish this judgment, noting that it addressed infringement and not passing off.

S. Syed Mohideen v P. Sulochana Bai, (2016) 2 SCC 683: Referenced for the legal position that where two marks are both registered, actions for infringement may not sustain between them, shifting focus to passing off.

Wander Ltd v Antox India Pvt Ltd, 1990 Supp SCC 727: Cited for the appellate standard in reviewing interlocutory orders—namely, that appeals are “on principle” and should not substitute judicial discretion without error of law or perversity.

Printers (Mysore) Private Ltd. v Pothan Joseph, AIR 1960 SC 1156: Enunciated standards on intervention in appeals against discretionary orders, cited for reinforcing the narrow scope of appellate interference.

Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd, (2018) 2 SCC 1: Set out the principles of passing off, requiring proof of prior and substantial goodwill.

Satyam Infoway Ltd v Siffynet Solutions (P) Ltd, (2004) 6 SCC 145 and Cadila Healthcare Ltd v Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73: Both cited in context of sustaining actions for passing off based on primacy of goodwill.

Brihan Karan Sugar Syndicate (P) Ltd v Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, (2024) 2 SCC 577: The Supreme Court clarified the need for actual proof of sales, promotion and advertising for establishing goodwill.

Raman Kwatra v KEI Industries Ltd., (2023) 93 PTC 485: Cited for the principle of estoppel—where a party has previously asserted dissimilarity between marks before the Trade Marks Registry, they cannot take the contrary stand for interim relief.

Midas Hygiene Industries (P) Ltd v Sudhir Bhatia, (2004) 3 SCC 90 and Laxmikant V. Patel v Chetanbhai Shah (2002) 3 SCC 65: Cited for the inappropriateness of denying interlocutory relief solely on the basis of longevity of the defendant’s use when a prima facie case is made out.

Reasoning and Analysis of the Judge

The Division Bench proceeded to dissect the arguments methodically. The Court unequivocally rejected the appellant’s submission that Section 35 applied only to infringement and not passing off cases. By examining the statute, particularly Section 135 of the Trade Marks Act, the Bench held that both infringement and passing off suits are covered, and Section 35’s protection extends to all reliefs including injunctions in passing off actions.

On the question of applicability to corporate entities and use of part versus full name, the Court found that as Respondent 1 had succeeded to the rights of an individual—Ms. Vasundhara Mantri—through assignment, the benefit of Section 35 extended to the LLP as assignee-in-interest. The Bench refused to read any limitation into the statute confining the protection to the use of a full name, thereby recognizing that “VASUNDHARA” as a first name qualifies for protection under Section 35 if used bona fide.

The judges also evaluated whether the appellant had established sufficient goodwill in the mark “VASUNDHRA” prior to the respondents’ use beginning in June 2001. The evidence of turnover and promotional expenses was found insufficient for establishing perceptible goodwill within the short prior period, mainly 1999-2001. Further, the respondents had used the mark openly for at least 17 years before litigation was initiated, militating against the appellant’s claim of irreparable harm or exclusive rights.

The Court additionally addressed the principle of estoppel, holding that because the appellant had previously claimed before the Trade Marks Registry that the marks in contention were not similar, it was precluded from asserting otherwise in subsequent judicial proceedings. The Division Bench agreed with the reasoning of the Single Judge, noting no error of law or arbitrary exercise of discretion.

Finally, regarding balance of convenience and irreparable harm, the Bench was satisfied that no interim injunction could be justified where the respondents’ user substantially preceded the challenge and the appellant failed to demonstrate risk of irreparable loss.

Final Decision

The Division Bench of the High Court of Delhi dismissed the appeal. It affirmed the Single Judge’s order, upholding the respondents’ right to use the mark “VASUNDHARA” based on the protections of Section 35 of the Trade Marks Act and upon finding no sufficient basis for interlocutory injunction, either on the ground of infringement or passing off. The Court held that the appellant did not establish sufficient goodwill in the mark prior to the respondents’ adoption and rejected all grounds of challenge.

Law Settled in This Case

This judgment makes several critical contributions to the law:

It clarifies that Section 35 of the Trade Marks Act operates as a bar to injunctions not only in infringement actions but also for passing off, provided bona fide use of a personal name, whether in full or part, is established.

The protection under Section 35 is not strictly limited to use by natural persons but extends to corporate entities who inherit the rights by assignment from individuals.

For passing off actions, the plaintiff must establish substantial prior goodwill before the defendant’s adoption of the mark.

Statements made before authorities like the Trade Marks Registry regarding similarity of marks can estop parties from contradicting those assertions in subsequent judicial proceedings, even if the application did not lead to registration.

Priority of use is insufficient without proven goodwill, and longevity of defendant’s use can be an important factor in denying interlocutory relief.

Vasundhra Jewellers Pvt. Ltd. Vs Vasundhara Fashion Jewellery :August 18, 2025: FAO(OS) (COMM) 232/2023 : 2025:DHC:7193-DB: High Court of Delhi:Mr. Justice C. Hari Shankar and Mr. Justice Om Prakash Shukla

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.

Mensa Brand Technologies Private Limited Vs. Registrar of Trade Marks

Distinctiveness in Composite Trade Marks

Introduction: This legal case study examines the Delhi High Court’s decision in Mensa Brand Technologies Private Limited v. Registrar of Trade Marks, delivered on August 22, 2025, concerning the registrability of the trademark “PRO.FITNESS” in Class 30. The dispute centered on whether the mark lacked distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999, and touched upon broader principles relating to coined marks, the anti-dissection rule, consistency in trademark examination, and the burden of proof in the application process.

Factual Background:Mensa Brand Technologies Private Limited is a company engaged in selling rice-based snack foods, rice cakes, crackers, cookies, filled cookies, chocolate products, frosting mixes, oats, and processed cereals for human consumption. On November 8, 2024, the company’s predecessor-in-interest filed application number 6701235 for registration of the trademark “PRO.FITNESS” in Class 30 on a ‘proposed to be used’ basis. An expedited request was filed shortly after to streamline the registration process.

The Applicant highlighted that “PRO.FITNESS” was not a commonly used phrase, nor listed in the dictionary, and claimed that its stylized presentation, especially the dot between “PRO” and “FITNESS”, rendered the mark visually and phonetically distinctive.

Procedural Background:The Trade Mark Registry issued a First Examination Report (FER) on November 12, 2024, objecting under Section 9(1)(a) of the Act, which requires that a trademark be capable of distinguishing the goods or services of one person from those of others. The FER asserted “PRO.FITNESS” lacked distinctiveness and could not act as a source identifier. The Applicant filed a detailed reply with supporting case law on December 12, 2024.

A hearing notice was issued for January 16, 2025, and the Applicant’s counsel appeared to argue in support of registration. Nonetheless, the application was rejected the next day, January 17, 2025, through an impugned order on the same ground of lacking distinctiveness. Mensa Brand Technologies appealed the rejection, contending that the impugned order was legally flawed and contrary to the settled principles of trademark examination.

Core Dispute:The core dispute was whether “PRO.FITNESS,” as stylized and used by the Applicant, meets the standard of distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999. The Applicant argued that the mark is unique and non-descriptive, and that the Registry had applied an incorrect legal standard by dissecting the mark into its components. Additionally, the Applicant highlighted the inconsistency exhibited by the Registry, which had accepted 15 other applications for similar or identical “PRO.FITNESS” and “PROFITNESS” marks for related goods. The Respondent maintained that the phrase consisted solely of generic elements incapable of functioning as a trademark.

Discussion on Judgments:The Applicant relied on a range of judgments to assert the mark’s distinctiveness and registrability:

Ticona Polymers Inc. v. Registrar of Trade Marks, 2023 SCC OnLine Del 1234: The Delhi High Court in this case affirmed that a composite trademark must be assessed in its entirety, rather than by separating its constituent elements—a principle often referred to as the anti-dissection rule, also statutorily recognized under Section 17(1) of the Act.

Muneer Ahmad v. Registrar of Trade Marks, 2023 SCC OnLine Del 7345: The Court reiterated that the Registrar cannot mechanistically dissect composite marks into generic parts when the whole exhibits distinctiveness.

Grey Matters Educational Trust v. Examiner of Trade Marks, 2024 SCC OnLine Del 7390: This case reaffirmed the anti-dissection principle and held that the Registrar must recognize distinctiveness when the combined mark as a whole is novel or arbitrary.

Under Armour Inc. v. Anish Agarawal & Another, 2025 SCC OnLine Del 3784: The Court underscored that the similarity between competing marks should not be decided by dissecting and comparing their parts, but by looking at the totality of the mark.

Sky Enterprise Pvt. Ltd. v. Abaad Masala & Co., 2020 SCC OnLine Bom 750: The Bombay High Court held that phonetic and visual distinctiveness may render a mark registrable even if its components are otherwise descriptive.

Hindustan Unilever Ltd. v. Registrar of Trade Marks, 2020 SCC OnLine IPAB 69: The Intellectual Property Appellate Board emphasized the importance of consistency and non-arbitrariness in trademark examination by the Registry.

Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1951 Cal 386 and A.R. Khaleel and Sons v. Registrar of Trade Marks, AIR 1960 Mad 251: These cases recognized that coined marks or invented combinations, even of common elements, can function as distinctive badges of origin.

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716: The Supreme Court affirmed the principle that invented marks can acquire distinctiveness and be registered, even if comprised of familiar words.

Disruptive Health Solutions Pvt. Ltd. v. Registrar of Trade Marks, 2022 SCC OnLine Del 2002 and Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947: The Delhi High Court affirmed that arbitrary or structurally novel marks can function as source identifiers and qualify for registration.

The judgments were cited in support of the proposition that PRO.FITNESS is an invented and distinctive mark, not a generic or descriptive term.

Reasoning and Analysis of the Judge:Justice Tejas Karia carefully analyzed whether the impugned order was based on a proper application of Section 9(1)(a) and the established jurisprudence. The Court held that the Registry erred by dissecting “PRO.FITNESS” into “PRO” and “FITNESS” and treating each as generic, rather than evaluating the full mark in line with the anti-dissection rule found in both legislation and precedent, as reiterated in Under Armour Inc. v. Anish Agarawal & Another and Ticona Polymers Inc. v. Registrar of Trade Marks.

The Court also emphasized the novel configuration and stylization of the mark, particularly the use of the dot, which added visual and phonetic distinctiveness and differentiated the mark from both dictionary terms and trade expressions. Importantly, the Registry failed to demonstrate that “PRO.FITNESS” is a commonly used phrase in the relevant trade or lacks sourcing identity.

Justice Karia noted the inconsistency of the Registry’s actions in refusing the subject mark while granting acceptance and advertisement to 15 similar or identical applications from the same Applicant for the same types of goods. The Judge clarified that there is no statutory duty on the Applicant to alert the Registry about related pending applications; instead, the responsibility for fair and thorough examination rests squarely with the Registry itself.

The Court found the impugned order to be devoid of sound reasoning, failing to address substantive contentions and neglecting a meaningful analysis of distinctiveness. The Registrar’s power under Section 9(1)(a) cannot be exercised mechanically, especially when the mark, taken as a whole, is arbitrary or coined and capable of functioning as a source identifier.

Final Decision:In conclusion, the High Court set aside the impugned order of January 17, 2025, and directed the Registrar of Trade Marks to advertise “PRO.FITNESS” under Application No. 6701235 in the Trade Marks Journal within two months, allowing the registration process to continue in accordance with law. The appeal was allowed and the pending application ordered to be disposed of.

Law Settled in This Case:The Judgment solidifies several important legal principles in Indian trademark law:

Composite marks must be assessed in their entirety (anti-dissection rule), not by mechanically separating elements and evaluating genericity or descriptiveness. Invented and arbitrary combinations, even of familiar words, can acquire distinctiveness and be registrable. Stylization, configuration, and punctuation in a mark can contribute to its distinctiveness. There is no statutory duty on an applicant to inform the Registry of related applications; the onus of fair examination is solely on the Registry. Reasoned decision-making and consistency are mandated in trademark administration, and arbitrary refusals contravene the settled judicial position.

Case Title: Mensa Brand Technologies Private Limited Vs. Registrar of Trade Marks

Date of Order: August 22, 2025

Case Number: C.A.(COMM.IPD-TM) 17/2025 

Neutral Citation: 2025:DHC:7143

Name of Court: High Court of Delhi

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

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