Frimline Private Limited & Anr Vs K-Smatco Lifesciences Private Limited & Ors

## Introduction

This case study analyzes a patent infringement suit filed by Frimline Private Limited and another (Plaintiffs) against K-Smatco Lifesciences Private Limited and others (Defendants) before the High Court of Delhi. The suit concerns the infringement of Indian Patent No. 382949, titled "A Pharmaceutical Composition for Anaemia," along with a claim for copyright infringement related to the Plaintiff No. 2’s website. The Plaintiffs seek interim and permanent injunctions against the Defendants for manufacturing, marketing, and selling a product allegedly infringing their patent rights.

## Factual Background

Plaintiff No. 1, Frimline Private Limited, is engaged in manufacturing and marketing pharmaceutical compositions, including a patented formulation for the treatment of Iron Deficiency Anaemia (IDA) and Anaemia of Inflammation (AOI). The product covered by Indian Patent No. 382949 is a synergistic combination of Lactoferrin and Guanosine Nucleotide derivatives. The patent was filed in March 2018 and granted in November 2021, valid until March 2038. The Plaintiffs commercialized this patented formulation under various brand names such as FERRONOMIC and FERRONEMIA, accruing significant revenue.

The Defendants launched a competing product called ‘FERROTOK PLUS’, which the Plaintiffs allege contains the patented composition as per the claims of the Suit Patent. Furthermore, Plaintiffs contend that Defendants have copied significant content from their corporate website, amounting to copyright infringement. The alleged infringing product is marketed for use by pregnant anaemic women, raising concerns about consumer safety if the product is substandard.

## Procedural Background

The Plaintiffs filed the suit and an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking ad-interim injunction against the Defendants to restrain further manufacturing, marketing, and sale of the impugned product during the pendency of the suit. The Defendants appeared and contested the injunction, arguing initially on patent validity and novelty grounds, citing the First Examination Report from the Indian Patent Office rejecting initial claims. They also challenged the Plaintiffs' reliance on an incomplete specification and submitted that similar compositions are common in the market.

The Plaintiffs filed replies affirming their patent’s validity, clarifying the scope of claims including use of the term “comprising” which broadens claim coverage, and provided detailed claim construction along with an affidavit affirming that the Defendants’ product falls within the patent claim scope. The Plaintiffs further submitted a certificate of analysis confirming the infringing product’s composition.

## Core Dispute

The core issue before the court was whether the Defendants' product ‘FERROTOK PLUS’ infringes upon the claims of the Plaintiffs’ Indian Patent No. 382949. Supplemental to this was the Plaintiffs’ claim of copyright infringement by the Defendants through reproduction of the Plaintiffs’ website content. Additionally, the Plaintiffs sought a recognition of the validity of their patent claims and an immediate injunction against further infringing acts to prevent commercial injury and consumer harm.

The court extensively relied on precedents interpreting patent claim construction and infringement analysis. Particularly significant was the citation of the Division Bench judgment in *F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd.*, 2015 SCC OnLine Del 13619, which clarified that the use of the word “comprising” in a patent claim is enabling and inclusive rather than restrictive. The Court further referred to *Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries*, (1979) 2 SCC 511, underscoring that claims must be read in conjunction with the complete specification for a proper understanding of the scope of protection.

Additionally, the Court referenced *Re. Guala Closures SPA v. AGI Greenpac Limited*, 2024 SCC OnLine Del 3510, which highlighted the primacy of claim construction in determining patent infringement. The judgment in *Re. Mold Tek Packaging Ltd. v. Pronton Plast Pack (P) Ltd.*, 2025 SCC OnLine Del 4883 (DB) was cited to emphasize the role of claim mapping between the patent claims and the allegedly infringing product.

Collectively, these authorities were applied to interpret the claims broadly to include minor variations, thereby supporting the Plaintiffs’ argument that Disodium Guanosine 5-Monophosphate (DGMP) in the Defendants’ product falls within the phraseology of the patent claims, even though the claim specified Guanosine Monophosphate (GMP).

Justice Manmeet Pritam Singh Arora analyzed the claim construction applying established principles that the term “comprising” in patent claims covers variations unless expressly excluded. The Court examined the complete specification and found it explicitly discloses Disodium Guanosine Monophosphate as a preferred embodiment, reinforced by the detailed example provided in the specification.

Upon review of the Plaintiffs’ claim mapping and evidentiary materials, the Court was convinced the Plaintiffs had made a prima facie case of infringement. The Defendants’ failure to rebut the certificate of analysis, absence of filing a certified specification copy, and Defendant No. 2’s non-appearance were pressed against them. Despite the Defendants’ contention on prior art and common formulas, the Court gave weight to the granted patent and commercial evidence presented by the Plaintiffs. The balance of convenience clearly favored the Plaintiffs, given the potential market confusion and financial loss with unchecked infringement.

Regarding the copyright infringement claim, the Defendants’ undertaking to withdraw and update the infringing website content was taken on record and an interim injunction was granted in respect of the copyright claim as well.

Final Decision

The Court granted an interim injunction restraining Defendant Nos. 1, 3, and 4 and related parties from manufacturing, marketing, selling, distributing, or dealing in any product infringing the subject matter of Indian Patent No. 382949. The injunction was extended over the copyright claim as well until final adjudication. Defendant No. 2 was restrained for the time being until the next hearing. The Plaintiffs were ordered to provide certified patent specification copies to the Defendants. The Defendants were directed to file their written statement and relevant affidavits within stipulated timelines. Further procedural directions were issued for inspection, admissions, and cost consequences following unjustified denial of documents.

The judgment reiterates fundamental principles of patent claim construction, affirming that the use of the term “comprising” broadens the claim scope to include variants not explicitly enumerated but covered within adoption. Complete specifications must be considered alongside claims for infringement assessment. The case highlights the weight of commercial evidence, certificates of analysis, and the importance of timely procedural compliance in defending patent infringement suits. Furthermore, the judgment confirms that interim injunctions are appropriate when a strong prima facie case of patent infringement is demonstrated and the balance of convenience favours protection of patent rights. The Court also emphasized the remedies available for copyright infringement in the context of misleading use of website content.

Frimline Private Limited & Anr Vs K-Smatco Lifesciences Private Limited & Ors  : August 29, 2025 :CS(COMM) 808/2025  :2025:DHC:7535: Justice Manmeet Pritam Singh Arora  

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

Bhagirati Enterprises and Anr Vs Kirti Enterprises

## Introduction

This case study examines the appeal filed by M/s Bhagirati Enterprises and another (Appellants) challenging the judgment passed by the Commercial Court, Rohini, Delhi, in a civil suit filed by M/s Kirti Enterprises (Respondent). The judgment deals with procedural compliance under the Code of Civil Procedure (CPC), particularly the timely filing of the written statement by the defendants as mandated by the amended Order VIII Rule 1 read with the Commercial Courts Act, 2015. The appeal addresses the implications of delay in filing the written statement and the court’s discretion on condonation of delay.

## Factual Background

The respondent instituted a civil suit seeking recovery of a sum of Rs. 13,33,733/-, with subsequent entitlement to interest. The appellants were defendants in the suit and were duly served with summons on 6th December 2023. Despite service, the appellants did not file a written statement within the prescribed 30-day period, leading to the striking off of their defense by the trial court. The appellants contend that written statement was in fact filed on 30 January 2024, but this was overlooked by the court. They later filed an application on 1 August 2024 seeking condonation of delay in filing the written statement.

## Procedural Background

After summons were issued, the appellants failed to file a written statement within the 30-day timeframe mandated under the CPC as amended. The Commercial Court, on 30 January 2024, formally struck off the appellants’ right to file the written statement going forward, while allowing a window of 120 days from service for condonation of delay applications. Despite this, the appellants did not file their written statement until 1 August 2024, along with an application seeking condonation of delay, where they admitted on oath that no written statement was filed on 30 January 2024. The trial court proceeded to pass a decree against the appellants in favor of the respondent on 9 August 2024. This led to the appellants filing the present appeal challenging the decree and related orders.

## Core Dispute

The primary dispute before the court concerned whether the appellants’ late filing of the written statement on 1 August 2024 could be condoned, especially given the statutory 120-day limit for filing the written statement from the date of service of summons. The appellants asserted that a written statement was filed on 30 January 2024, which if accepted, would justify consideration of their defense and subsequent condonation application. The respondent denied this submission and challenged the authenticity of the documents supporting this claim. The issue touches upon the strict timeframes applicable in commercial litigation and the consequences of failing to comply with procedural mandates in civil suits.

In this appeal, no new external judgments were primarily cited in the reported judgment. However, the court’s reasoning was based on a strict interpretation of Order VIII Rule 1 of the CPC, 1908, read with the proviso inserted by the Commercial Courts Act, 2015. This amended provision allows a maximum period of 120 days for filing the written statement from service of summons, beyond which the defendant forfeits the right to file such a statement. The court underscored the binding nature of this rule and upheld the procedural discipline it enforces in commercial litigation.

The principles reflected in this judgment align with well-established procedural law that delay in filing pleadings cannot be condoned past the statutory limit and that oral or belated assertions before appellate courts cannot contradict sworn statements made earlier at the trial stage.

The bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla observed that although the appellants contended a written statement was filed on the cutoff date of 30 January 2024, the trial court’s order recording non-filing was unchallenged and remained final. The appellants further admitted in their application filed on 1 August 2024, sworn before the trial court, that no written statement was actually filed on that date. This admission bound the appellants and negated the possibility of belatedly asserting otherwise in appeal. 

The bench further emphasized the inviolability of the 120-day maximum period for filing written statements as per the CPC amendments. Since the appellants failed to file within this period, the trial court rightly proceeded on the basis of non-filing and legally struck off the defense, resulting in a decree in favor of the respondent. The appeal court expressed disapproval of the appellants’ conduct but refrained from imposing costs, dismissing the appeal on procedural grounds.

The appeal was dismissed by the High Court of Delhi. The court confirmed the trial court’s judgment and decree, upholding the dismissal of the appellants’ defense due to failure to file the written statement within the statutory time frame. The appeal court declined to interfere with the learned Commercial Court's order or the final decree issued in favor of the respondent.

The ruling reinforces that under the Commercial Courts Act, 2015 and corresponding amendments to Order VIII Rule 1 CPC, a defendant’s right to file a written statement is strictly confined to a maximum period of 120 days from the date of summons service. Any delay beyond this period cannot be condoned, and failure to comply results in the striking off of defense and consequent decree on the plaintiff’s claim. Further, earlier on-record admissions bind litigants, preventing contradictory assertions on appeal. This case highlights the importance of procedural vigilance and timely compliance in commercial litigation frameworks.

Bhagirati Enterprises and Anr Vs  Kirti Enterprises :  August 20, 2025  :RFA(COMM) 7/2025  :2025:DHC:7145-DB:Hon'ble Justice C. Hari Shankar and 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.

Goodview Fashion Private Limited Vs The Registrar of Trade Marks

This case study delves into the trademark registration dispute between Goodview Fashion Private Limited (Appellant) and the Registrar of Trade Marks (Respondent). The core issue revolves around the distinctiveness and eligibility of a particular trademark design known as the ‘Pi logo’, and its registration under the Trade Marks Act, 1999.

Goodview Fashion Private Limited, a well-established fashion label operating designer stores in major Indian metros, owns the brand identity associated with Tarun Tahiliani, a distinguished fashion designer. The company adopted an artistic trademark called the ‘Tarun Tahiliani logo’ since 2018, which carries significant goodwill and reputation. Subsequently, the Appellant developed a variant of this logo known as the ‘Pi logo’ and sought registration under Class 42 on a 'proposed to be used' basis. The ‘Pi logo’ is an artistic stylization of the mathematical symbol π, associated with the Appellant’s brand identity.

The Appellant filed trademark Application No. 5292417 for the Pi logo, which was objected to by the Registrar under Section 9(1)(a) of the Trade Marks Act, stating the mark was devoid of any distinctive character and was a common personal/surname. Following this, the Appellant submitted responses to request a waiver of this objection. The Registrar conducted a hearing and ultimately passed an order dated 31.12.2024 refusing the application. This led the Appellant to file an appeal under Section 91 of the Trade Marks Act, 1999, challenging the decision.

The principal legal dispute hinges on the statutory distinctiveness of the Pi logo. The Appellant argued that the Pi logo is a distinctive mark, a creative variation of their already registered trademark, and not a common surname or personal name as alleged. The Registrar contended the mark lacked distinctiveness and thus fell under Section 9(1)(a) prohibiting registration of marks incapable of distinguishing goods or services in the trade.

The Court referred to multiple significant precedents to analyze the issue of distinctiveness:

1. **Abu Dhabi Global Market v. Registrar of Trademarks, 2023 SCC OnLine Del 2947**: The Court emphasized that a mark can only be found lacking in distinctiveness if it is incapable of distinguishing goods or services. The judgment clarified that marks exclusively used by one entity without similar marks being used by others are inherently distinctive. The case illustrated that familiar or simple symbols, when exclusively associated with one user, do not lose their distinctiveness.

2. **Muneer Ahmad v. Registrar of Trade Marks, 2023 SCC OnLine Del 7345**: This decision highlighted two categories under Section 9(1)(a)—either a mark inherently lacks distinctiveness or it is a commonly used mark in the trade. Importantly, the Registrar must point out specific similar marks used by others to deny registration on grounds of non-distinctiveness.

The Appellant invoked these precedents to argue that their Pi logo is unique, closely tied to their brand, and not replicated by others. The Registrar’s order lacked any reference to other similar marks in use, rendering their rejection unsubstantiated within this legal framework.

## Reasoning and Analysis of the Judge

Justice Tejas Karia carefully assessed the Registrar’s refusal. The judgment noted that the Impugned Order did not specify any other trademark identical or similar to the Pi logo that could negate its distinctiveness. The logo’s artistic representation of the mathematical symbol π with unique graphical lines, combined with its link to the Tarun Tahiliani brand, was sufficient to establish it as a distinct source identifier.

The Court held that a mark cannot be declared non-distinctive solely on the basis that it resembles a surname or personal name without evidence of others using a similar mark in the relevant class. The reasoning drew substantially from the abovementioned precedents, concluding that the opposition under Section 9(1)(a) was misplaced in the absence of demonstrated common use by third parties.

The Court set aside the Registrar’s order dated 31.12.2024 and directed that the Appellant’s trademark Application No. 5292417 be advertised and proceed as per the statutory procedure under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The appeal was allowed and the pending applications disposed of with the direction for further processing rather than outright refusal.

This case reaffirms that under Section 9(1)(a) of the Trade Marks Act, a mark cannot be refused registration for lack of distinctiveness if no other similar marks are used in the trade, even if the mark resembles a common surname or personal name. The burden is on the Registrar to demonstrate that a mark is either inherently non-distinctive or commonly used by others in the relevant field. Creativity and exclusive association with a brand lend sufficient distinctiveness even to marks consisting of common symbols or personal names when appropriately stylized.

Goodview Fashion Private Limited vs The Registrar of Trade Marks  :August 22, 2025  :C.A.(COMM.IPD-TM) 18/2025:2025:DHC:7166: 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.

G B Pachaiyappan & Thondai Mandala Saandror Dharma Paribalana Sabai Vs. Tamilaga Vettri Kazhagam & Vijay

 Introduction

This case study analyzes the recent decision of the Madras High Court in *G B Pachaiyappan & Anr. vs. Tamilaga Vettri Kazhagam & Anr.*, rendered by Hon’ble Mr. Justice Senthilkumar Ramamoorthy on August 18, 2025. The suit involved a multi-pronged intellectual property dispute, including claims of trademark infringement, copyright infringement, and passing off, centering around the use of distinctive flags by a public charitable trust and a political party. At the interlocutory stage, the decision provides important judicial clarity on the application of trademark and copyright laws in the context of non-profit organizations and political entities.

## Factual Background

The factual context of this litigation is centered on two parties: the plaintiffs, comprising G. B. Pachaiyappan (founder trustee) and Thondai Mandala Saandror Dharma Paribalana Sabai (a trust registered on 7 August 2023), and the defendants, Tamilaga Vettri Kazhagam (a political party) and its President, Mr. Vijay. The plaintiffs claimed original creation and consistent use of a particular flag, which had allegedly earned them goodwill as a mark identifying their charitable and social welfare activities. The trust secured registration of its flag as a trademark under Class 45 relating to social and personal services, effective from 28 November 2023. The flag, embodying specific colour combinations and artistic elements, was also asserted as qualifying for copyright protection under Section 2(c) of the Copyright Act, 1957.

According to the plaintiffs, this flag, and the associated artistic and colour elements, were copied by the defendants when they adopted an allegedly similar flag for the political party. The plaintiffs emphasized that even before the trust’s formal constitution, the flag was in use, as shown by social media posts. Subsequent continuous usage reinforced their claim to prior user rights.

## Procedural Background

The plaintiffs filed three interim applications (O.A.Nos.713, 714, and 715 of 2025) in the main suit (C.S.(Comm.Div)No.178 of 2025), seeking interim injunctions to restrain the defendants from infringing their registered trademark, from passing off, and from infringing their copyright by using a flag and related devices alleged to be deceptively similar or substantially copied from the plaintiffs’ flag.

The core relief sought included restraining the defendants, their officers, staff, and representatives from (i) infringing the plaintiffs’ trademark by using identical or deceptively similar words/devices/flags, (ii) passing off goods or services as those of the plaintiffs through use of the impugned flag or connected artistic work, and (iii) infringing plaintiffs’ copyright in the flag, its colour scheme, and trade dress.

## Core Dispute

The essential dispute centered on the plaintiffs’ allegation that the defendants had substantially copied their flag, including its colour composition and design elements, and unlawfully used it in a manner constituting (1) copyright infringement, (2) trademark infringement under the Trade Marks Act, 1999, and (3) passing off. The plaintiffs argued that the impugned flag of the political party was not only visually and conceptually similar but also potentially misleading to the public, thereby diluting rights accrued to the trust through registration and prior use.

The defendants, on the other hand, contended that neither party was engaged in “trade” within the meaning of the Trade Marks Act, thus disqualifying the plaintiffs from asserting trademark rights. They further argued substantial differences between the flags and denied the existence of goodwill or reputation on the part of the plaintiffs sufficient to ground a passing off action.

## Discussion on Judgments – Complete Citations and Context

Multiple judicial precedents were cited by both parties to buttress their respective positions. The plaintiffs referenced several authorities:

1. *Kirithavar Vazhvurimai Iyakkam v. Indhiya Jananayaka Katchi*, 2020 SCC OnLine Mad 600 [(Kirithavar Iyakkam)] — cited for interpretation of trademark rights in the context of similar disputes involving flags, paragraphs 17-19 and 24 highlighted the criteria for assessing deceptive similarity and the scope of relief.

2. *Burge v. Haycock*, (2002) R.P.C. 28 — cited (pages 91, 94 and 95) for judicial reasoning on the requisite standard for substantial copying in copyright cases.

3. *Parle Products (P) Ltd. v. J.P. & Co., Mysore*, (1972) 1 SCC 618 — the Supreme Court’s observations in paragraph 9 were invoked to argue that courts should focus on the essential features of marks, even in composite cases.

4. *Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia & Ors.*, (2004) 3 SCC 90 — specifically paragraph 5, cited on the principle that interim injunctions should follow in clear cases of infringement or passing off.

5. *Colgate Palmolive Company & Anr. v. Anchor Health and Beauty Care Pvt. Ltd.*, 2003 SCC OnLine Del 1005 — paragraphs 59 and 60 referenced, relating to evaluation of essential features and likelihood of confusion.

6. *Societe des Produits Nestle S.A. v. Cadbury UK Limited*, (2022) EWHC 1671 (Chancery) — pages 108 and 110 relied upon for comparative analysis of artistic works and trademarks.

The defense, meanwhile, invoked:

1. The Division Bench stay of the judgment in *Kirithavar Iyakkam* to challenge its persuasive value.

2. [Supreme Court] *Pernod Ricard India Private Limited & Anr. v. Karanveer Singh Chhabra*, Civil Appeal No.10683 of 2025, judgment dated 14 August 2025, especially paragraph 31, advanced to argue the limitation of trademark rights where the connection to trade was absent.

3. *Dhariwal Industries Ltd. & Anr. v. M.S.S. Food Products*, (2005) 3 SCC 63 — cited with regard to assessing the quantum of goodwill and reputation required in cases of passing off, clarifying that scale of operation is not determinative but the evidence of reputation is decisive.

## Reasoning and Analysis of the Judge

Justice Senthilkumar Ramamoorthy meticulously approached each relief by examining the material and legal contentions.

With respect to copyright infringement, the Court accepted, for the purpose of interim relief, that the plaintiffs’ flag qualified as original artistic work under Section 2(c) of the Copyright Act. However, upon visual and conceptual comparison, including central motifs and arrangement, the judge concluded that the defendants’ flag was not a substantial copy. While both shared a similar colour palette (maroon/red-yellow-maroon/configuration), the defendants’ flag incorporated “two dancing elephants,” an “oval device,” and a “Vaagai flower encircled by stars,” as opposed to “fish, leaping tiger, bow and arrow, and specified Tamil words” on the plaintiffs’ flag. The judge held that, even allowing for minor variations, there was no substantial copying of artistic elements justifying an interim injunction.

On trademark infringement, the Court observed, with reference to Section 2(1)(z)(b) of the Trade Marks Act, that the phrase “a connection in the course of trade” was critical and that the scope of ‘trade’ was not conclusively defined. At the interim stage, while refraining from a final finding on the plaintiffs’ entitlement to proprietary rights over the flag as a trademark, the judge provisionally accepted registration for the purposes of inquiry. Employing the test from *Parle Products*, the Court focused on the essential features of the composite mark and whether the similarity was sufficient to mislead an average consumer. Here again, the judge found that the plaintiffs did not possess a separate registration for the combination of colours and protected only the composite mark. The differences in design and the context in which the services were provided (charity versus political activity) further diluted the likelihood of consumer confusion or deception, leading the Court to deny interlocutory relief.

On passing off, the Court invoked the “classical trinity” test of goodwill, misrepresentation, and damage. Citing *Dhariwal Industries*, the judge acknowledged that scale of operations per se does not bar relief; however, available evidence revealed that the trust’s annual donations were minimal and the plaintiffs had failed to show reputation or goodwill attached to the flag. Further, the statement of financials and lack of specifics about beneficiaries undermined the claim of established goodwill. In the absence of concrete evidence on confusion or misrepresentation, no inferential basis existed to support passing off.

## Final Decision

The Hon’ble Court rejected all three interlocutory applications seeking injunctive relief against the defendants. It was held that no case of substantial copying constituting copyright infringement was made out. There was also an insufficient basis for finding trademark infringement or passing off, particularly given the lack of evidence demonstrating either consumer confusion or goodwill in the plaintiffs' flag. The Court clarified that all observations were prima facie and strictly confined to the determination of interim relief at the present stage.

## Law Settled in This Case

This decision clarifies several important aspects of Indian intellectual property law in relation to charitable and political entities. Firstly, the Court underscores that copyright protection in artistic works demands proof of substantial copying and not mere similarity in colour or broad themes. Secondly, it draws attention to the requirement of a “connection in the course of trade” for trademark rights, with ambiguity on whether not-for-profit entities or non-commercial organizations qualify as ‘traders’ for statutory protection. Lastly, the judgment reiterates the classical requirements for passing off actions: reputation/goodwill, misrepresentation, and damage — stressing the need for factual evidence, not merely registration or prior use.

## Case Details

Case Title: G B Pachaiyappan & Thondai Mandala Saandror Dharma Paribalana Sabai Vs. Tamilaga Vettri Kazhagam & Vijay  

Date of Order: 18 August 2025  

Case Number: O.A.Nos.713 to 715 of 2025 in C.S.(Comm.Div)No.178 of 2025  

Neutral Citation: 2025:MHC:2005  

Name of Court: High Court of Judicature at Madras  

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

***

### Suggested Titles for Law Journal Publication

1. Judicial Scrutiny of IP Rights in Flags: The G B Pachaiyappan v. Tamilaga Vettri Kazhagam Decision

2. Trademark and Copyright Disputes in Non-Commercial Contexts: Lessons from the Madras High Court

3. Flags, IP and Goodwill: Analyzing the 2025 Madras High Court Ruling

4. The Limits of IP Protection for Charitable Trusts and Political Parties: A Case Study

5. Evaluating Passing Off and Infringement Claims in Social Sector Entities: Legal Perspectives from the Madras High Court

ITC Limited Vs The Controller of Patents, Designs & Trademarks

Introduction:  The case of ITC Limited Vs. The Controller of Patents, Designs & Trademarks involves a critical examination of the boundaries of patentability under Indian law, particularly the interpretation of Section 3(b) of the Patents Act, 1970. The core issue centered on whether a device intended for generating and delivering nicotine aerosol, based purely on chemical reactions without the use of electronics or combustion, could be denied a patent on public health grounds.

Factual Background: The appellant, ITC Limited, filed Indian Patent Application No. 685/KOL/2015 dated 10th June 2015 for an invention titled “A Device and method for generating and delivery of a Nicotine Aerosol to a user.” The claimed device featured a chemical reaction-based mechanism for delivering nicotine, comprising a tube with components containing an aerosol-generating substance (like nicotine) and an aerosol-promoting substance (like pyruvic acid). Notably, the device did not involve electrical or electronic components and thus, according to ITC, did not qualify as an Electronic Nicotine Delivery System (ENDS) or e-cigarette.

Procedural Background:  The Patent Office initially issued a First Examination Report (FER) that did not include any objection under Section 3(b) of the Patents Act. However, in the hearing notice dated 1st May 2023, an objection under Section 3(b) was introduced for the first time. The Controller subsequently passed an order on 26th June 2023 rejecting the patent application on the grounds that the invention was contrary to public order and morality and posed serious prejudice to health. ITC appealed under Section 117A of the Patents Act to the High Court of Calcutta.

Legal Issue: The central legal issue was whether the Controller's rejection of the patent application under Section 3(b) of the Patents Act, 1970—based on documents and statutory materials not disclosed in advance to the appellant—violated the principles of natural justice and whether the application indeed fell within the scope of prohibited subject matter under Section 3(b)? 

Discussion on Judgments: The appellant relied on several judicial precedents to challenge the procedural fairness and legal reasoning in the Controller’s order. Most notably:  Ssangyong Engineering and Construction Co. Ltd. v. National Highways Authority of India, 2019 SCC OnLine SC 677: Relied upon to argue that reliance on documents not supplied to the party prior to decision-making violates principles of natural justice and the right to present one’s case. Balsinor Nagrik Co-op. Bank Ltd. v. Babubhai S. Pandya, AIR 1987 SC 849: Cited to stress that statutory provisions must be read harmoniously, with reference to the words “primary or intended use” in Section 3(b). Manganese Ore (India) Ltd. v. Regional Asstt. CST, (1976) 4 SCC 124: Relied upon to demonstrate that arbitrary or inconsistent administrative actions offend the principle of equality.

The respondent cited: Basawaraj & Anr. v. Special Land Acquisition Officer, (2013) 14 SCC 81, and Fuljit Kaur v. State of Punjab, (2010) 11 SCC 455: To argue that mere precedents of erroneous approvals cannot justify a wrongful grant of relief to others.

Reasoning and Analysis of the Judge: The Court held that the reliance by the Controller on documents such as the ICMR White Paper, various statutes including the Environment (Protection) Act, 1986, and the Prohibition of Electronic Cigarettes Act, 2019—without furnishing them to the appellant or specifically listing them in the hearing notice—violated the principles of natural justice. The Court found that the appellant was not given a fair chance to respond to or refute the material that formed the basis for the denial of the patent.

The Court emphasized that the Patents Act distinguishes between patentability and commercial exploitability. Citing Article 27.2 of the TRIPS Agreement and Article 4quater of the Paris Convention, the Court reiterated that the existence of regulatory restrictions on sale or commercial use cannot be a standalone ground for denying a patent.

The Court also noted that the Controller’s reliance on Section 3(b) misapplied the standard from “intent principle” to “effect principle,” conflating the harmful effects of nicotine with the intent of the invention. Additionally, examples provided by a former Deputy Controller of Patents did not include nicotine-related devices within the ambit of Section 3(b), undermining the validity of the objection raised.

Final Decision: The High Court allowed the appeal, set aside the impugned order dated 26th June 2023, and remanded the matter back to the Patent Office. The Court directed that the matter be reheard afresh by a different competent officer, with all relevant materials disclosed to the appellant, and a decision to be rendered within six months from the date of the order.

Law Settled in This Case: This judgment affirms that a patent application cannot be rejected based on materials or statutory instruments that are not disclosed to the applicant before decision-making. It also settles that regulatory prohibitions or public health policies do not, by themselves, disqualify inventions from patent protection under Indian law unless the “primary or intended use” is inherently contrary to public order or morality. Further, the distinction between patent grant and commercialization is legally significant and must be upheld.

Case Title: ITC Limited Vs The Controller of Patents, Designs & Trademarks: Date of Order: 30th April 2025: Case Number: IPDPTA No. 121 of 2023:Name of Court: High Court at Calcutta:Name of Judge: Hon’ble Justice Krishna Rao

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

Iconic IP Interests LLC Vs Shiv Textiles

Introduction: This case revolves around the trademark dispute between Iconic IP Interests LLC, a U.S.-based licensor and proprietor of the "JOLLY RANCHER" brand, and Shiv Textiles, an Indian entity using the mark "JOLLY RANGER LEGWEAR." The legal contention centers around alleged infringement, prior use, jurisdiction, and the cause of action. The petitioner challenged the maintainability of the suit filed by the respondent before the Bhavnagar District Court, seeking rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure, 1908. The Gujarat High Court adjudicated the writ petition filed under Article 227 of the Constitution of India.

Detailed Factual Background: Iconic IP Interests LLC is a limited liability corporation incorporated in Delaware, USA. It operates as a licensing entity for intellectual property rights and is a subsidiary of Highlander Partners L.P., a U.S.-based private investment firm. The petitioner owns the trademark “JOLLY RANCHER” and its variations, which are widely recognized in connection with confectionery and related goods.

Initially, the rights to the “JOLLY RANCHER” mark were held by Huhtamaki Finance B.V., which licensed them to Hershey Chocolate & Confectionery Corporation. Subsequently, Huhtamaki transferred all rights to the petitioner, who continued the licensing agreement with Hershey.

In March 2023, during a routine search of the Indian Trade Marks Registry, the petitioner discovered that M/s Shiv Textiles had registered the trademark “JOLLY RANGER LEGWEAR” for jeans and pants in Class 25, claiming use since January 1, 2019. The petitioner, asserting global and Indian rights over “JOLLY RANCHER,” issued a legal notice dated April 28, 2023, demanding cessation of use.

The respondent replied on May 8, 2023, claiming that “JOLLY” is a generic term and that their adoption was honest and prior. A further notice was issued on June 9, 2023, followed by a non-responsive conciliatory attempt by the petitioner on August 17, 2023.

Detailed Procedural Background: 

In response to the petitioner’s notices, Shiv Textiles filed a commercial trademark suit—Commercial Trademark Suit No. 1 of 2023—before the 2nd Additional District Judge, Bhavnagar. Meanwhile, the petitioner filed CS (COMM) 870/2023 before the Delhi High Court, seeking injunction, damages, and trademark rectification under Section 57 of the Trade Marks Act, 1999. It also filed application No. 5970539 on January 3, 2024, to register the “JOLLY RANCHER” mark in Class 25.

Contesting the maintainability of the Bhavnagar suit, the petitioner filed an application under Order VII Rule 11 CPC seeking rejection of the plaint, which was dismissed by the trial court on November 22, 2024. Challenging this order, the petitioner approached the Gujarat High Court through Special Civil Application No. 1543 of 2025.

Issues Involved in the Case: Whether the suit filed by the respondent disclosed a cause of action within the territorial jurisdiction of the Bhavnagar court? Whether the application under Order VII Rule 11 CPC was maintainable?

Detailed Submission of Parties:  The petitioner argued that the respondent suppressed the prior existence and use of the “JOLLY RANCHER” trademark, despite knowledge derived from the petitioner’s notices. The plaint failed to disclose any act by the petitioner within the jurisdiction of Bhavnagar that could constitute a cause of action.

The petitioner submitted that mere application for trademark registration in India and a few listings on Amazon (USA) did not establish commercial activity or targeted marketing in India. The respondent’s suit was therefore frivolous and designed to harass. Reliance was placed on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr., 2022 SCC OnLine Bom 7183, emphasizing the rejection of suits founded on illusory causes of action and suppression of material facts.

The respondent argued that multiple legal notices from the petitioner and its continuous assertions over the “JOLLY RANCHER” mark created a recurring cause of action. The petitioner’s actions of applying for registration and sending cease and desist notices constituted acts giving rise to a dispute.

The respondent contended that under settled law, the court must only examine the plaint and accompanying documents when deciding an Order VII Rule 11 application, not the defense or other extrinsic materials.

Detailed Discussion on Judgments Cited:  The petitioner relied on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr. (2022 SCC OnLine Bom 7183), where the Bombay High Court held that a plaint is liable to be rejected when it camouflages facts to create an illusionary cause of action. Suppression of known adverse facts can render the plaint unworthy of adjudication.

The High Court also referred to the landmark judgment Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780, where the Delhi High Court clarified that for jurisdiction to be assumed in internet-based trademark disputes, a real commercial transaction targeted at consumers within the jurisdiction must be demonstrated.

In the present case, the Gujarat High Court distinguished Banyan Tree by noting that the alleged acts did not constitute commercial targeting of Indian consumers, as the sales were through U.S.-registered websites using U.S.-registered marks.

Detailed Reasoning and Analysis of Judge:  The Gujarat High Court held that the essential requirement for maintaining a suit is the existence of a cause of action within the territorial jurisdiction of the court. The petitioner’s use of the mark was limited to foreign jurisdictions. The mere availability of the goods on Amazon.com, a U.S.-based website, did not suffice to confer jurisdiction in India.

The Court found that there was no credible evidence that the petitioner had engaged in commercial activity within India. The burden was on the respondent to show targeted transactions or harm within the jurisdiction, which it failed to do.

The Court also observed that the respondent suppressed facts regarding the petitioner’s trademark registrations and legal notices, amounting to material suppression. Further, Hershey was a necessary party, and its non-joinder affected the maintainability of the suit.Therefore, the Court concluded that the plaint did not disclose any cause of action under Order VII Rule 11(a) CPC and was liable to be rejected.

Final Decision: The Gujarat High Court allowed the writ petition and set aside the impugned order dated November 22, 2024, passed by the 2nd Additional District Judge, Bhavnagar. It rejected the plaint in Commercial Trademark Suit No. 1 of 2023 under Order VII Rule 11(a) of the Code of Civil Procedure.

Law Settled in This Case: A foreign trademark proprietor does not confer jurisdiction on Indian courts merely by sending notices or having online listings on international websites unless there is evidence of targeted commercial activity in India. Suppression of material facts and absence of necessary parties are valid grounds for rejection of plaints under Order VII Rule 11. The decision affirms the principle that suits must disclose a clear and real cause of action within the forum's jurisdiction to survive legal scrutiny.

Case Title: Iconic IP Interests LLC Vs Shiv Textiles: Date of Order: 09 May 2025: Case No.: R/Special Civil Application No. 1543 of 2025: Name of Court: High Court of Gujarat at Ahmedabad: Name of Judge: Hon'ble The Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Pranav Trivedi

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

Amgen Inc. Vs Assistant Controller of Patents

## Introduction

The legal battle between Amgen Inc. and the Assistant Controller of Patents, with Intas Pharmaceuticals Limited as the opposing party, is rooted in the complexities of patent law relating to biologics. The case revolves around the patentability of a lyophilized therapeutic peptibody formulation, its constituent excipients, and methods of manufacture. The adjudication by the High Court of Madras delves deep into scientific, technical, and legal nuances of patent claims under the Patents Act, 1970, particularly in context of Sections 2(1)(ja), 3(d), 3(e), and 10(4), and addresses the broader question of inventive step and sufficiency of disclosure.

## Factual Background

The core invention in question involves a lyophilized formulation of a therapeutic peptibody intended for the treatment of thrombocytopenic conditions. The peptibody mimics the function of thrombopoietin (TPO), stimulating platelet production, and is engineered by fusing a peptide on the Fc region of an antibody. The formulation specifically cites the use of excipients: 10 mM histidine buffer at pH 5.0, 4% w/v mannitol as bulking agent, 2% w/v sucrose as stabilizer, and 0.004% w/v polysorbate-20 as surfactant. Amgen had previously obtained patent rights and regulatory approvals in other jurisdictions for related APIs (namely romiplostim), marketed as Nplate.

## Procedural Background

Amgen filed Indian Patent Application No. 5857/CHENP/2008, seeking a grant for the lyophilized therapeutic peptibody formulation. After a series of examinations and objections by the Patent Office, objections were raised under Sections 3(d), 3(e), 2(1)(ja), and 10(4), asserting the invention as not patentable. Responding to the First Examination Report and engaging in hearings, Amgen made amendments and filed supplementary data. In parallel, Intas Pharmaceuticals filed a pre-grant opposition on grounds of obviousness, lack of inventive step, insufficiency of disclosure, and lack of synergy. The Assistant Controller of Patents eventually rejected the application on 31.03.2023, prompting Amgen to appeal under Section 117A of the Patents Act before the High Court of Madras.

## Core Dispute

The principal dispute centered on the patentability of the claimed lyophilized peptibody formulation. This involved questions about whether the invention constituted a mere aggregation of known components or exhibited patentable synergy, whether the process was a mere use of a known method, and whether the disclosures sufficed to enable a person skilled in the art to reproduce the invention across the breadth of the claims. The court had to determine if the claimed invention passed the tests of novelty, inventive step, and sufficiency, and whether exclusions under Sections 3(d) and 3(e) were validly invoked.

## Discussion on Judgments

In support of their respective positions, parties cited numerous judicial precedents and decisions from Indian and foreign jurisdictions.

Amgen's counsel referred to:

Nippon Steel Corporation v. Controller General of Patents, Designs and Trade Marks & Anr., CA (Comm. IPD-PAT) 323 of 2022, order dated 29.08.2024, for the proposition that the “known process” in Section 3(d) must be specifically identified.

Dhama Innovations Private Limited v. Assistant Controller of Patents and Designs, CMA(PT) No.12 of 2024, dated 19.07.2024, arguing against dissecting a combination into constituent elements for obviousness.

Net MoneyIN, Inc v. Verisign Inc., US Court of Appeals for the Federal Circuit 2007-1565, especially pages 15 and 19, clarifying combination inventions standards.

In Re: Stepan Company, Court of Appeals for the Federal Circuit, MANU/USFD/0346/2017, regarding sufficiency of disclosure.

Steel Strips Wheels Limited v. Wheels India Limited & Anr., 2025:MHC:922, discussing inventive step in process patents.

Caleb Suresh Motupalli v. Controller of Patents, 2025:MHC:293, about sufficiency of disclosure.

Yunnan Tobacco International Co. Ltd. v. Philip Morris Products S.A., Enlarged Board of Appeal, G 0001/24, decision dated 18.06.2025, on inventive step mosaic.

Teva Pharmaceutical Industries Ltd v. United States of America, rep. By Secretary, Department of Health and Human Services, T 2395/22-3.3.02, EPO Technical Board of Appeal, decision dated 31.01.2024, for teachings on excipient selection for stability.

Ajantha Pharma Limited v. Allergan Inc., ORA/21/2011/PT/KOL, regarding combination patents.

General Electric Company's Applications  81 RPC 413, on description and enablement.

Intas Pharmaceuticals and the Patent Office cited:

British Celanese Ltd. v. Courtaulds Ltd.  52 RPC 171, rejecting patentability absent synergy in known ingredient combinations.

Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, for distinguishing workshop improvements from inventive step.

Rhodia Operations v. The Assistant Controller of Patents and Designs, 2024:MHC:449, specifically paras 45 and 49, on obviousness analysis.

Fresenius Kabi Oncology Limited v. Glaxo Group Limited and Another, 2013 SCC OnLine IPAB 121, paras 58 and 60, about optimization versus invention.

Indian Institute of Technology v. The Controller of Patents and Designs and Others, 2024:MHC:2264, paras 29 and 35, inventive step standards.

Novozymes v. Asst. Controller of Patents & Designs 2023 MHC 4261.

Sankalp Rehabilitation Trust v. F. Hoffman-LA Roche AG 2012 SCC OnLine IPAB 167.

Mahesh Gupta v. Asst. Controller of Patents and Designs 2024 SCC OnLine Del 4000.

Exxonmobil Oil Corporation v. Treofan Germany GmbH & Co. KG, T 0532/00 – 3.3.9, EPO, mosaic approach.

In re Aller et al., 220 F.2d 454, on obviousness in formulation claims.

Foreign decisions such as the EPO order in Teva Pharmaceutical Industries (T 2395/22-3.3.02) and the Enlarged Board's Yunnan Tobacco International (G 0001/24), provided persuasive guidance on inventive step and the challenge in mosaicing disclosures from unrelated prior arts.

## Reasoning and Analysis of the Judge

Justice Senthilkumar Ramamoorthy adopted a comprehensive analytical approach, dissecting the scientific basis of biologics and the technical requirements for patent protections under Indian law. Recognizing the novelty of peptibodies and the challenge of lyophilization for biologics, the judgment identified core issues as being whether the claimed invention represented an inventive step or was an obvious aggregation of known elements, and whether the disclosure sufficed for enablement.

On Section 3(d), the judge observed that existing prior arts disclosed the individual peptibody structure and lyophilization as a process but failed to teach the specific combination of excipient concentrations for the claimed peptibody. The court held that the mere presence of lyophilization in prior art did not render the process claimed as a mere use of a known process, especially given the tailored excipient concentrations for the unique therapeutic peptibody.

On Section 3(e), the judge determined that Amgen’s experimental data, specifically Tables 39 to 41 of the specification, evidenced synergy, particularly between tween-20 and other excipients, resulting in beneficial stability and anti-aggregation effects. The decision clarified that contrary to respondents' contentions, synergy and technical advancement did not necessitate comparison of pre- and post-lyophilization formulations, but rather a demonstration that the composition was more than the sum of its parts.

Turning to inventive step under Section 2(1)(ja), the judge reasoned that PSITA (person skilled in the art) would not be naturally led to combine excipients and their specific concentrations from D5 (which concerned IL-12 proteins) with the peptibody of D4, given the pharmacological differences between the proteins. The judgment extensively relied on scientific literature regarding the selection and prevalence of excipients in biologics, concluding that formulation choices are not obvious and depend on empirical, case-specific optimization.

For sufficiency of disclosure, the judgment reconciled the breadth of claims with the extent of exemplification. While the specification enabled the sequence SEQ ID 1017 and its family, the court found enablement lacking for all 52 mimetic peptides in Table 6 and consequently narrowed the monopoly claim accordingly. The court interpreted Section 10(4) to require full enablement only of the exemplified sequence(s), not all possible embodiments claimed.

## Final Decision

The High Court set aside the rejection order, allowed Amgen’s appeal, and directed that the patent application should proceed to grant, subject to the amendment of independent claims restricting their scope to peptide sequences exemplified and enabled in the specification. The court thus granted patent protection limited to the specific therapeutic peptibody composition and method related to SEQ ID NO.459, accepting the existence of inventive step and synergy, and finding the disclosure sufficient for the exemplified sequences.

This judgment clarifies several principles in Indian patent law. First, it distinguishes between the mere use of a known process and the inventive adaptation of such a process for a specific biologic, holding the latter to be patentable when accompanied by tailored technical solutions. Second, it refines the test for synergy under Section 3(e), emphasizing empirical demonstration over rigid data comparisons. Third, the judgment sets a pragmatic standard for sufficiency of disclosure: exemplary enablement suffices for closely related sequences within a family, but wide genus claims require broader enablement. Finally, it confirms the Indian stance against hindsight mosaicing of prior arts for obviousness unless clear teaching or motivation exists linking disclosures.

Amgen Inc. Vs Assistant Controller of Patents:August 22, 2025: CMA (PT) No.28 of 2023  :2025:MHC:2096  :High Court of Judicature at Madras  :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

Filex Systems Pvt. Ltd. Vs. Deepika File Products

Below is an analytical legal case study following your requested structure, based exclusively on your attached document and legal research standards.

Introduction

The case of Filex Systems Pvt. Ltd. v. Deepika File Products, decided by the Delhi High Court, represents a vital judicial foray into the law of passing off and trade name protection in India. At its heart, the case explores whether the plaintiff, holder of the trade name ‘Filex Systems Pvt. Ltd.’ but primarily using the mark ‘SOLO’ for its goods, could restrain the defendant from using ‘FILEX’ as a trademark for competing stationery products. The judgment delves into the principles of prior adoption, trade name as a mark, and the evidentiary value of actual goodwill, providing clarity on the rights of senior users of invented or distinctive trade names.

Factual Background

Filex Systems Pvt. Ltd., incorporated in 1996, claimed the adoption and exclusive use of the trade mark ‘FILEX’ in relation to their extensive range of office stationery and files since inception. Despite also using and registering ‘SOLO’ as a trade mark, the plaintiff asserted that ‘FILEX’ formed a prominent and essential part of its trade name and trading style, and that their products, advertising, and promotional materials frequently displayed ‘FILEX’, leading to recognition and goodwill among dealers and in the market. The company’s sales under the brand grew extensively over two decades. The dispute arose in November 2015 when the plaintiff discovered that Deepika File Products, the defendant, had begun marketing similar stationery products under the mark ‘FILEX’. Despite a cease and desist notice, the defendant continued using ‘FILEX’, prompting the present suit for passing off, injunction, and destruction of infringing goods.

Procedural Background

The suit commenced with the plaintiff seeking a permanent injunction and ancillary reliefs. The summons was issued, but no ex-parte injunction was granted. The defendant amended its written statement and then moved for summary judgment under Order XIII-A CPC, arguing lack of goodwill and non-use by the plaintiff, while pleadings were completed and extensive documentary evidence submitted. The plaintiff filed pictorial proofs of its products and advertisements, while the defendant produced business cards, invoices, product photos, and directories to support its contentions. The matter proceeded with the defendant contesting and the plaintiff replicating the facts, ultimately leading to detailed hearings and judicial consideration of whether the dispute merited summary adjudication.

Core Dispute

The central controversy in the case was whether the plaintiff, whose registered trademark was ‘SOLO’ but whose corporate and trading name was ‘Filex Systems Pvt. Ltd.’, could prevent the defendant from using the mark ‘FILEX’ for similar goods on grounds of passing off. The defendant contended the plaintiff had never used ‘FILEX’ as a trademark, relied instead on ‘SOLO’, and that prior use by the defendant gave independent rights. The plaintiff maintained that long-term use and goodwill attached to ‘FILEX’ as part of its business name warranted protection, and that public confusion and diversion of goodwill would result from the defendant’s use. The parties disputed both the factual basis and the legal relevance of business name, trademark registration, prior use, and actual association of goods with the contested mark.

Discussion on Judgments

The defendant relied on Godfrey Phillips India Limited v. P.T.I. Private Limited 2017 SCC OnLine Del 12509, emphasizing the necessity of established reputation to sustain passing off, and Intex Technologies (India) Ltd. v. AZ Tech (India) 2017 SCC OnLine Del 7392 (DB), underscoring goodwill and unexplained delay as critical adjudicatory factors. Paramount Surgimed Limited v. Paramount Bed India Private Limited 2017 SCC OnLine Del 8728 was also cited, warning that dishonest litigants are undeserving of discretionary relief. Conversely, the plaintiff drew support from Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65, affirming that trade names inherently possess protectable goodwill and can found passing off actions, as well as B.K. Engineering Co. v. U.B.H.I. Enterprises (Regd.) 27 (1985) DLT 120 (DB), which upheld injunction against adoption of a house mark forming a business's distinctive identity even if the trademark used for goods was separate. Sirmour Remedies Pvt. Ltd. v. Kepler Healthcare Pvt. Ltd. 2014 SCC OnLine Cal 2703 was referenced to argue the permissibility of multiple marks in concurrent use. Manohar Singh Chadda v. Sheetal Sweets 2000 SCC OnLine Del 362, Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002) 2 SCC 147, Virgin Enterprises Ltd. v. Virgin Paradise Airlines Training Pvt. Ltd. 2014 SCC OnLine Del 6568, Asim Gadighar v. Abdul Aziz MANU/MH/0291/1986, Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd. AIR 1996 Bom 149, Skipper Limited v. Akash Bansal MANU/WB/0566/2017, H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd. 2018 SCC OnLine Del 9369, and several others solidified the principle that a trade or business name, especially when invented or distinctive, is entitled to judicial protection against misappropriation or confusion.

Reasoning and Analysis of the Judge

Justice Rajiv Sahai Endlaw refused to grant summary judgment for the defendant, holding that issues of fabrication, delay, and prior use warranted trial but were not fatal to the grant of interim relief. However, the court saw no bar to the simultaneous use of multiple marks (‘SOLO’ and ‘FILEX’), noting that 'FILEX' was an invented word integral to the plaintiff’s identity and business in the field of files and stationery. The judge reasoned, with reference to B.K. Engineering Co., that public association and likelihood of confusion arise not only from trademarks used on goods but from prominent portions of business names, especially when those portions are not dictionary words but coined terms. The court extensively quoted judicial precedents to underscore that trade name protection advances private and public interest and prevents diversion of trade by confusion. Justice Endlaw dismissed the defendant's arguments that absence of trademark registration for ‘FILEX’ or exclusive use disentitled the plaintiff, remarking that actual association, prior adoption, and likelihood of public confusion sufficed for relief. The court found defendant’s adoption of ‘FILEX’ prima facie calculated to benefit from the plaintiff’s reputation and ordered that the matter need not be put to trial on this aspect. However, plaintiff’s claim for mesne profits, damages, and costs was declined due to delay, ambiguity in advertisements, prior application for ‘FILEX’ by the defendant, and mutual conduct.

Final Decision

A decree of permanent injunction was granted in favor of Filex Systems Pvt. Ltd. and against Deepika File Products, restraining the defendant from using the mark ‘FILEX’ and ordering destruction of infringing goods. Reliefs in terms of paragraphs 26(a), 26(b), and 26(c) of the plaint were allowed, but costs of the suit and mesne profits/damages were declined. Justice Endlaw ordered that the decree be drawn accordingly, cementing trade name rights and reinforcing the public interest in curbing confusion in the relevant trade.

Law Settled in This Case

This case stands for the proposition that a distinctive, invented word forming an essential part of a company’s trade name is entitled to protection from passing off, even absent registration of that word as a trademark, where prior and extensive use in the relevant industry generates public association and goodwill. The law is clarified that judicial protection may attach to business names and coined marks, and that simultaneous use of multiple trademarks does not automatically defeat rights in a trade name. Furthermore, courts are empowered to intervene summarily in cases where confusion or deception may arise from the adoption of a similar or identical part of a senior user’s business name by a competitor.

Case Details

Case Title: Filex Systems Pvt. Ltd. Vs. Deepika File Products

Date of Order: 12th March, 2019

Case Number: CS(COMM) 696/2016

Neutral Citation: Not specifically available in the judgment text; refer to case number and date

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Rajiv Sahai Endlaw

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

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

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Suitable Titles for Law Journal Publication

The Power of Trade Names: Passing Off and Commercial Identity in Filex Systems v. Deepika File Products

Invented Marks and Passing Off: Lessons from the ‘FILEX’ Litigation

Trade Name Protection Beyond Trademark Registration: Delhi High Court’s Perspective

Permanent Injunction for Trade Name Misuse: Filex Systems Pvt. Ltd. v. Deepika File Products

Coined Words and Commercial Reputation: Jurisprudential Insights from the Filex Dispute

Business Name Identity and Deceptive Similarity: Strengthening Goodwill Protection in Indian Trademark Law

Ricky Rubber Industries Vs. Registrar of Trade Marks

Introduction

The case of Ricky Rubber Industries v. Registrar of Trade Marks, Delhi is a significant decision of the Delhi High Court that elucidates the approach to minor typographical errors in trademark registration applications. The judgment discusses the interplay between procedural rigor and substantive rights in trademark law, particularly under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. This case study thoroughly analyzes the legal reasoning, judicial precedents, and procedural history that shaped the court’s determination and its implications for the law on rectification of trademark records.

Factual Background

Ricky Rubber Industries, a partnership firm, filed an application for registration of the trademark 'JOCKEY' in FORM TM-1 on 6th August 2015. After examination, the application was accepted and advertised in the Trade Marks Journal on 7th March 2016, and registration was granted on 10th December 2016. In 2017, the composition of the petitioner firm changed with the induction of two new partners. Consequently, the petitioner filed FORM TM-P dated 2nd February 2023, along with the prescribed fee, seeking recordal of this change. However, a minor typographical error occurred: the registration number was mistakenly typed as 3029529 instead of the correct 3029259. The error was promptly detected by the petitioner the next day, and communication was sent to the Registrar. Additionally, to further remedy the error, the petitioner filed FORM TM-M dated 14th February 2023, seeking amendment of the erroneous registration number in FORM TM-P, and followed up with multiple communications.

The Registrar of Trade Marks rejected the FORM TM-M filed by Ricky Rubber Industries for rectification of the registration number on the ground that under Rule 37 of the Trade Marks Rules, 2017, such forms could only be filed before acceptance of the trademark application, and the impugned mark had already been registered. The rejection order cited procedural rigidity to refuse the correction post-registration, prompting Ricky Rubber Industries to file the present writ petition challenging the said order.

The dispute in this case centered around the interpretation of Rule 37 and Rule 112 of the Trade Marks Rules, 2017. The petitioner contended that the error was a minor typographical one, and the legislative scheme, particularly Rule 112, empowered the Registrar to rectify such mistakes, even post-registration. The respondent argued that FORM TM-M could not be filed post-acceptance and registration, relying on a strict reading of Rule 37. The core legal issue concerned whether procedural requirements should override substantive rights in cases involving minor errors, and whether rectification is permissible after registration.

During the course of the proceedings, the parties referred to several judgments to bolster their respective positions. While the attached file does not list specific citations used in argument, the discussion revolved around the judicial inclination to avoid procedural technicalities inhibiting substantive justice. The court itself relied on the principle enumerated in multiple precedents, such as Sardar Amarjeet Singh Kalra v. Pramod Gupta (2003) 3 SCC 272, wherein the Supreme Court reiterated that procedural law is meant to advance, not stifle, justice. The court also referred to the underlying philosophy of the Trade Marks Act and Rules, which prioritize the efficacy of substantive rights over technical compliance. The context in this case involved interpreting Rules 37 and 112 to facilitate a correction that was promptly identified and did not affect the nature or existence of the trademark.

Reasoning and Analysis of the Judge

Justice Amit Bansal, presiding over the matter, adopted a pragmatic and rights-oriented approach. The court observed that Rule 112 of the Trade Marks Rules, 2017 vests sufficient discretion in the Registrar to permit rectification of minor errors, such as typographical mistakes in registration numbers. The judge held that procedural law should not be interpreted rigidly to dilute substantive rights, especially where the error is trivial and does not affect any third-party interests or the statutory requirements of the trademark system. The court noted that the petitioner acted in good faith and expeditiously addressed the mistake. The reasoning emphasized fairness, proportionality, and the obligation of authorities to facilitate rather than hinder the exercise of rights conferred by law. The respondents were directed to process FORM TM-M and amend FORM TM-P accordingly.

The Delhi High Court allowed the writ petition, quashing the impugned rejection order dated 7th December 2023. The respondents were ordered to accept the petitioner’s FORM TM-M dated 14th February 2023 and make the necessary amendment in FORM TM-P, thereby correcting the registration number. The court disposed of the petition along with all pending applications, reaffirming the paramount importance of substantive justice over stiff procedural formalism in administrative actions under trademark law.

This judgment reaffirms that minor typographical errors in trademark registration documents are amenable to rectification under Rule 112 of the Trade Marks Rules, 2017, even after registration. The court has settled that procedural provisions are to be interpreted flexibly, in favor of upholding substantive rights, and that administrative authorities are expected to facilitate corrections that do not affect third-party rights or statutory compliance. The law as clarified in this case promotes a balanced approach between procedural discipline and substantive justice in trade mark administration.

Ricky Rubber Industries Vs. Registrar of Trade Marks: 11 July 2025: W.P.(C)-IPD 25 of 2024:Mr. Amit Bansal, J.

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.

Mahesh Gupta Vs. The Registrar of Trademarks

Introduction

The case of Mahesh Gupta v. The Registrar of Trademarks before the Delhi High Court deals with the cancellation of a registered trademark by the Registrar of Trademarks and the subsequent appeal filed under Section 91 of the Trade Marks Act, 1999. The appellant, Mahesh Gupta, challenged the cancellation of his trademark “SMART CHEF APPLIANCES” under Class 21 on the ground that the cancellation was arbitrary, contrary to the principles of natural justice, and inconsistent with the registration of an identical mark under Class 11. The Court was called upon to examine whether the Registrar’s action was legally sustainable and whether interim protection in favour of the appellant was warranted.

Factual Background

The appellant had filed two trademark applications on 29 October 2021 for registration of the mark “SMART CHEF APPLIANCES,” one under Class 11 and another under Class 21. On 25 November 2021, the Examiner raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999, relating to distinctiveness and descriptiveness. The appellant filed replies to the objections and also appeared for a hearing before the Examiner. Subsequently, both applications were accepted and published in the Trade Marks Journal No. 2141-0 dated 29 January 2024.

The marks remained unopposed during the statutory period of four months, leading to their registration, and certificates of registration were issued on 17 June 2024. However, the Registrar issued notices dated 10 October 2024 under Section 57(4) of the Act, proposing rectification of the Register. The objections in these notices mirrored those initially raised in the examination reports. Following the appellant’s reply and a virtual hearing, the Registrar cancelled the registration of the mark under Class 21 by an order dated 3 June 2025, while the identical mark under Class 11 remained registered.

Procedural Background

Aggrieved by the Registrar’s cancellation order, the appellant filed an appeal under Section 91 of the Trade Marks Act, 1999, before the Delhi High Court. Alongside the appeal, the appellant moved an application for stay of the operation of the impugned order. The Court first considered whether to grant interim relief by staying the operation of the cancellation order pending the final adjudication of the appeal.

Core Dispute

The core dispute in this case concerned the validity of the Registrar’s cancellation of the appellant’s trademark under Class 21, despite the identical mark under Class 11 continuing to subsist on the Register. The appellant argued that the cancellation was arbitrary, violated the rule against dissecting composite marks, and disregarded principles of uniform application of law and natural justice. The question before the Court was whether the Registrar acted arbitrarily in treating identical applications differently and whether interim protection was justified to prevent potential prejudice to the appellant.

Discussion on Judgments

In the present proceedings, no extensive case law was cited by the parties in the recorded order. However, the appellant relied on the established principles under the Trade Marks Act, particularly the doctrine of anti-dissection, which has been affirmed in several precedents including Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, where the Supreme Court emphasized that trademarks must be considered as a whole and not dissected into components. Similarly, South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 (57) PTC 414 (Del) reiterated that a composite mark must be judged in its entirety for distinctiveness and similarity assessments.

The appellant’s plea of violation of natural justice resonates with the principles laid down in Maneka Gandhi v. Union of India, (1978) 1 SCC 248, where the Supreme Court underscored that fairness in administrative action is a constitutional requirement. The grievance was that the Registrar failed to provide cogent reasoning for adopting different approaches towards identical marks filed by the same applicant for allied and cognate goods.

Reasoning and Analysis of the Judge

The Court observed that the appellant had obtained registrations for identical marks in Classes 11 and 21 after overcoming initial objections, and both were duly advertised and remained unopposed during the statutory period. Despite this, the Registrar suo motu initiated rectification proceedings under Section 57(4). The impugned order cancelled the mark under Class 21 but left intact the mark under Class 11, without providing a cogent justification for such non-uniform treatment.

The Court noted that the appellant had raised a prima facie case by highlighting the inconsistency and arbitrariness in the Registrar’s approach. It emphasized that immediate removal of the mark under Class 21 could expose the appellant to potential third-party adoption and misuse, while no prejudice would be caused to the Registrar if interim relief were granted. The Court recognized that until the appeal is finally adjudicated, equity demanded preservation of the appellant’s rights.

Final Decision

The Delhi High Court stayed the operation of the Registrar’s cancellation order dated 3 June 2025, thereby allowing the appellant to retain protection over the trademark “SMART CHEF APPLIANCES” under Class 21 during the pendency of the appeal. The Court scheduled the matter for further hearing on 26 September 2025.

Law Settled in This Case

This case clarifies that where identical marks for allied or cognate goods have been registered under different classes and remain unopposed, the Registrar must apply the law consistently. Cancellation of one mark while retaining another without cogent reasoning amounts to arbitrariness and violation of natural justice. The decision also reinforces that interim relief may be granted where immediate cancellation of a mark would prejudice the registered proprietor by exposing the mark to third-party adoption, whereas no corresponding prejudice would result from maintaining the status quo until final adjudication.

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Case Details

Case Title: Mahesh Gupta Vs. The Registrar of Trademarks
Date of Order: 19 August 2025
Case Number: C.A. (COMM.IPD-TM) 50/2025
Neutral Citation: Not provided in order
Court: High Court of Delhi at New Delhi
Judge: Hon’ble Mr. Justice Tejas Karia

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

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

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Suggested Titles for Publication in Law Journal

1. Arbitrariness in Trademark Rectification: A Case Analysis of Mahesh Gupta v. Registrar of Trademarks

2. Delhi High Court on Consistency in Trademark Registration and Rectification

3. Natural Justice and Trademark Rectification: Lessons from SMART CHEF APPLIANCES

4. Balancing Equity in Trademark Disputes: Interim Relief in Mahesh Gupta v. Registrar of Trademarks

5. Anti-Dissection Rule and Rectification Proceedings: A Critical Analysis

6. Judicial Review of Registrar’s Power under Section 57(4) of the Trade Marks Act

7. Trademark Rectification and Administrative Fairness: Insights from the Delhi High Court

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Would you like me to also expand the “Discussion on Judgments” section with a deeper analysis of Indian case law on the anti-dissection rule and administrative fairness, so that it is more robust for journal publication?