Anugraha Castings & Anr. Vs. Anugraha Valve Castings Limited

Plea of Prima facie invalidity under Section 124 of Trademarks Act 1999

Introduction:  This case is a legal battle between two companies in Coimbatore, India, both using the word "Anugraha" in their business names. Anugraha Castings, a partnership firm, and Anugraha Valve Castings Limited, a company, clashed over who has the right to use "Anugraha" as a trademark. The dispute reached the Madras High Court when Anugraha Castings challenged the Commercial Court’s decision on which issues should be considered in a related lawsuit. This summary explains the facts, the dispute, the court’s reasoning, and the final decision in simple language, while keeping all legal provisions intact, to help law students and junior lawyers understand the case.

Background: Anugraha Valve Castings Limited (the respondent) claimed they started using the word "Anugraha" as a trademark in 2003. They registered it as a trademark (Registration No. 5117934) on 04.09.2021 for use in Classes 6 (metals and alloys), 7 (machines and machine tools), and 40 (material treatment), which are related to the alloys and casting industry.

The respondent sent a cease-and-desist notice to Anugraha Castings in 2021, asking them to stop using "Anugraha" in their business, claiming it violated their trademark rights. However, they did not file a lawsuit until 2025, when they filed a commercial suit (C.O.S.No.2 of 2025) in the Commercial Court, Coimbatore. The suit asked for court orders to stop Anugraha Castings from using "Anugraha" and to enforce the respondent’s trademark rights.

Anugraha Castings, as defendants in the suit, argued that the respondent’s trademark was invalid because "Anugraha" is a common word used in seven languages and not a unique term created by the respondent. They also claimed the respondent lied to the Trademark Registry by saying "Anugraha" was a coined (made-up) word.

Anugraha Castings filed a Civil Revision Petition under Article 227 of the Indian Constitution in the Madras High Court. They asked the court to order the Commercial Court to include nine specific issues (numbered 4 to 12 in their draft) in the lawsuit. On 09.06.2025, the Commercial Court framed some issues for the lawsuit after hearing both sides but did not include all the issues proposed by Anugraha Castings, especially those challenging the validity of the respondent’s trademark. This led Anugraha Castings to file the revision petition in the High Court.

The Dispute: The main issue was whether the Commercial Court made a mistake by not including all of Anugraha Castings’ proposed issues, particularly those questioning the validity of the respondent’s trademark. Anugraha Castings argued that "Anugraha" is a common word, not unique to the respondent, and that the respondent misled the Trademark Registry to get the registration. They wanted the Commercial Court to frame issues that would allow them to challenge the trademark’s validity and possibly seek its cancellation (rectification). The respondent, however, argued that their trademark was validly registered, that "Anugraha" was not a common term in their industry, and that Anugraha Castings’ challenge was weak and too late.

The case involves key provisions of the Trade Marks Act, 1999, which governs trademarks in India:

Section 124: This section outlines what happens when a trademark’s validity is challenged in a lawsuit.

If a rectification (cancellation) process is already underway with the Trademark Registry or High Court, the lawsuit must be paused until that process is complete.

If no rectification process is ongoing, and the court believes there’s a strong initial (prima facie) case that the trademark is invalid, the court must frame an issue about the invalidity and give the challenger three months to file for rectification.

Section 31(1): A registered trademark is assumed valid unless successfully challenged within the legal time limit.

Section 17(2)(b): This allows someone to use a trademark in good faith if it’s a common term in the trade, without infringing on another’s rights.

Article 227 of the Constitution of India: This gives High Courts the power to oversee lower courts and correct serious errors, which Anugraha Castings used to challenge the Commercial Court’s decision.

Patel Field Marshal Agencies vs. P.M. Diesel Limited (2018) 2 SCC 112: This Supreme Court case was cited by the petitioners. It states that trademark validity issues must be decided by the Trademark Tribunal, not a civil court, but only if the court finds a strong initial case for invalidity.

Detailed Reasoning: The court agreed that Section 124 allows a defendant to challenge a trademark’s validity, but only if they present a strong and believable case (prima facie tenable). The petitioners’ main argument was that "Anugraha" is a common word in seven languages. However, the court said this didn’t matter unless "Anugraha" was a common term in the alloys and casting industry (Classes 6, 7, and 40). The petitioners provided no evidence that it was common in this industry. The respondent’s explanation—that "Anugraha" was coined from the founder’s and his wife’s names and matched their company name—seemed reasonable and believable at this stage. The court concluded there was no strong case to question the trademark’s validity, so the Commercial Court was right not to frame an issue about invalidity.

Section 124 and Prima Facie Requirement:The court clarified that Section 124 doesn’t require framing an issue for every claim of invalidity. The claim must be strong enough to justify pausing the lawsuit and allowing a rectification challenge.  The court referred to the Supreme Court’s ruling in Patel Field Marshal Agencies, which said that only credible claims of invalidity should lead to framing an issue, to avoid delays from weak or frivolous claims. Since the petitioners’ claim about "Anugraha" being a common word lacked evidence in the context of the industry, it didn’t meet the threshold for framing an issue.

Decision:The court refused to frame an issue on the invalidity of the respondent’s trademark, finding no strong or believable case to support it. The court upheld the Commercial Court’s decision not to include this issue, as the petitioners failed to show that "Anugraha" was a common term in the alloys and casting industry. There were no orders for costs, and the related Civil Miscellaneous Petition was closed.

Conclusion: This case shows how courts handle trademark disputes, especially when one party questions the validity of another’s trademark. The Madras High Court balanced the need to protect valid trademarks with ensuring a fair trial by allowing some of the petitioners’ issues but rejecting their weak challenge to the trademark’s validity. For law students and junior lawyers, this case teaches the importance of presenting strong evidence when challenging a trademark, the role of statutory time limits, and how courts decide which issues to include in a lawsuit. It also highlights the practical application of Section 124 of the Trade Marks Act in commercial disputes.

Case Title: Anugraha Castings & Anr. Vs. Anugraha Valve Castings Limited
Order Date: 22.08.2025
Case Number: CRP.No.2480 of 2025 
Name of Court: The High Court of Judicature at Madras
Name of Judge: The Hon'ble Mr. Justice P.B. Balaji

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 The Assistant Controller of Patents

Obviousness, Synergy, and Enablement in Biologic Formulations

Fact:Amgen, a U.S.-based company that makes medicines from natural substances like proteins, created a medicine called romiplostim, sold as Nplate. This medicine mimics a natural body signal (a hormone called thrombopoietin, or TPO) that tells your body to produce platelets—tiny components in your blood that help stop bleeding by forming clots. It’s vital for people with a condition called immune thrombocytopenic purpura (ITP), where the body mistakenly attacks its own platelets, causing low counts and bleeding risks.

Medicines like romiplostim, made from living sources, are delicate. They can break down or clump together if not handled carefully, much like milk curdling outside the fridge. To solve this, Amgen developed a way to freeze-dry the medicine (a process called lyophilization), turning it into a stable powder that’s easier to store, ship, and mix with water for use later.

Amgen applied for a patent in India on 9 September 2008, under application number 5857/CHENP/2008, titled “Lyophilized Therapeutic Peptibody Formulations.” They described a specific dry mix: the main medicine (romiplostim, structured as Formula V in their papers) showing the mix stays stable, doesn’t clump, and that the additives work together better than alone.

Amgen asked the Indian Patent Office to review their application. On 20 July 2013, the office issued a First Examination Report (FER), raising objections under Sections 3(d), 3(e), and 2(1)(ja) of the Patents Act, 1970. These rules block patents for things like reusing known methods, simple mixes without special effects, or ideas that aren’t creative enough compared to existing documents (called prior arts D1-D6). Amgen responded, narrowing their claims to focus on Formula V, which covered 52 slight variations of the main medicine part.

Then, Intas Pharmaceuticals Limited, an Indian company, objected on 18 July 2016, under Sections 25(1)(e) (obviousness), 25(1)(f) (not an invention), and 25(1)(g) (incomplete explanation). After hearings, the Assistant Controller rejected the application on 31 March 2023, citing the same rules: Section 2(1)(ja) (not creative), Section 3(d) (reusing known methods), Section 3(e) (simple mix), and Section 10(4) (not fully explained). They pointed to prior arts and said there was no proof of real improvement.

Amgen appealed to the Madras High Court under Section 117A of the Patents Act, 1970, which allows challenging patent rejections.

The Core Dispute:

The core issue was whether Amgen’s dry medicine mix qualified as a patentable invention under the Indian Patents Act, 1970. Patents are granted only for ideas that are new, involve a creative step, and can be used industrially, but certain rules block patents for specific cases. The court had to answer four key questions:

1. Section 3(d): Did Amgen’s method for making the dry mix just reuse an old, known process without adding anything new?
2. Section 3(e): Was the mix just a simple blend of known ingredients that don’t work together in a special way to create a better result?
3. Section 2(1)(ja): Would an average expert in medicine-making (called a person skilled in the art, or PSITA) find this mix obvious by looking at old documents (prior arts D1-D5)?
4. Section 10(4): Did Amgen explain their idea fully and clearly in their application, especially since it could apply to 52 variations, but they only tested one?

Amgen argued their mix was unique for their medicine, their tests showed the ingredients teamed up to prevent spoiling and clumping, picking the right additives and amounts was a creative challenge, and their explanation was enough with one example representing the group. The opponents (the Patent Office and Intas) countered that it was obvious by combining old documents, just a simple mix, and not fully explained for all variations.

The Court’s Careful Reasoning: 

The Hon'ble judge beganexplaining in simple terms how medicines from living sources are fragile, need injections (not pills), and why choosing additives is like solving a puzzle—each medicine needs its own perfect recipe. Let’s dive into how the court handled each legal issue, keeping the law’s language intact.

1. Rejection under Section 3(d): Mere Use of a Known substabce

Section 3(d) of the Patents Act, 1970, says you can’t patent “the mere use of a known substabce” unless it creates a new product or uses a new ingredient. The Assistant Controller rejected claim 9 (the method for preparing and drying the mix with specific additives and amounts), saying it was just using the old freeze-drying process, pointing to prior art D4 (which mentioned the medicine) and general knowledge.

The court examined claim 9 and disagreed. It found no prior art showed exactly how to dry this specific medicine with these additives in these amounts. Prior art D4 mentioned freeze-drying vaguely, saying compositions “may be in dried powder, such as lyophilized form,” but gave no steps or details. Prior art D5 described drying a different substance but had no method steps. The court concluded that claim 9’s process, with its specific additives and amounts, wasn’t just reusing a known method—it added something new. Thus, the rejection under Section 3(d) was not sustainable.

2. Rejection under Section 3(e): Mere Admixture Without Synergy

Section 3(e) blocks patents for “a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof.” This means a mix where the parts just do their usual jobs, adding up normally, isn’t patentable. The mix must show synergy—where the whole is better than the sum of the parts, like ingredients in a cake that create a unique flavor together.

The Assistant Controller said Amgen’s mix was a simple blend because they didn’t provide data comparing the mix before and after drying to prove better stability. The court rejected this, saying Section 3(e) doesn’t always require before-and-after drying data. The goal is to show the ingredients interact to produce a result greater than their individual effects. Amgen’s tests (Tables 39-41) did this:

• Table 39: Showed that using at least 1.5% sucrose (a stabilizer) reduced chemical breakdown at high temperatures, while less sucrose led to more spoiling. High amounts of another additive (mannitol) alone didn’t help.
• Tables 40 and 41: Showed that adding polysorbate-20 (a clumping preventer) kept clumping under 0.1%, compared to much higher clumping without it. Tests used different medicine amounts (0.5 mg/mL and 0.3 mg/mL), but this didn’t matter for proving the additive’s teamwork.

The Controller argued the different amounts made the data weak, but the court said the tests’ purpose was to show synergy (polysorbate-20’s effect on clumping), not to compare amounts. Unlike prior art D3, which aimed to increase substance concentration, Amgen’s goal was stability, so before-and-after drying data wasn’t needed. The court found clear synergy, setting aside the Section 3(e) rejection.

3. Lack of Inventive Step under Section 2(1)(ja)

Section 2(1)(ja) requires an “inventive step”—a feature that makes the invention not obvious to a person skilled in the art (PSITA), defined as an average medicine-making expert with common knowledge but no extraordinary creativity. The Controller said the mix was obvious based on prior arts D1-D5 (D6 and D7 weren’t used in the appeal).

The court played the role of the PSITA and analyzed each prior art:

• D1-D3: D1 (Amgen’s work on a different binder) didn’t mention this medicine or drying. D2 (Amgen’s modified proteins) discussed combining parts for longer life but not drying. D3 focused on drying to increase concentration, not stability, so a PSITA wouldn’t apply it here. These didn’t make the mix obvious alone or together.
• D4: Amgen’s own document on the same medicine (including the exact structure, SEQ ID 1017) for ITP treatment. It mentioned dry forms and additives like sucrose but vaguely, without specific drying steps, additive types, or amounts. A PSITA couldn’t reach Amgen’s mix from D4 or D1-D4.
• D5: Described drying a different substance (IL-12, for cancer) with similar additives: 2% sucrose, 4.15% mannitol, 0.02% polysorbate-20, and a buffer at pH 5.6. The Controller suggested combining D4 and D5, but the court disagreed. The substances were different (IL-12 is a paired helper for cancer; romiplostim is a fused piece for platelets). D4 didn’t suggest looking at D5. Scientific literature showed 6-16 options for each additive type, making selection a complex puzzle with thousands of combinations. No standard recipe exists, and a common clumping preventer (polysorbate-80) differed from Amgen’s choice (polysorbate-20).

The court concluded that choosing these additives and exact amounts for this medicine wasn’t obvious—it took creative work. The Section 2(1)(ja) rejection was unsustainable.

4. Insufficiency under Section 10(4)

Section 10(4) requires a patent application to fully and clearly describe the invention, including the best method known, so others can recreate it. Amgen’s Formula V covered 52 variations of the medicine’s core part, but tests (Tables 39-41) only showed one (SEQ ID 1017). The court noted that these variations differ in structure, affecting how they behave. Without guidance for the other 51, the application didn’t fully enable them. However, the tested variation (and its close family, SEQ ID 1012-1017) was well-explained. The court partly upheld this objection, narrowing the patent to cover only the tested variation (SEQ ID NO. 459).

The Final Decision: 

The Madras High Court allowed Amgen’s appeal under Section 117A, setting aside the Assistant Controller’s rejection order dated 31 March 2023. The patent application was sent back for approval, but with amendment. This ruling is a milestone for medicine patents in India. It shows that courts will protect creative solutions in complex fields like biologics if they demonstrate real teamwork between ingredients and aren’t obvious combinations of old ideas. However, inventors must fully explain their work, especially for broad claims with many variations.

Case Title:Amgen Inc. Vs. The Assistant Controller of Patents and Designs 

Date of order: 22.08.2025

Case Number:CMA (PT) No.28 of 2023

Neutral Citation 2025:MHC:2096, 

Name of Court:High Court of Judicature at Madras

Name of Judge:The 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

Zydus Wellness Products Ltd. Versus Karnal Foods Pack Cluster Limited

Enforcement of Mandatory Pre-Institution Mediation in Commercial Trademark Disputes

The case titled "Zydus Wellness Products Ltd. Versus Karnal Foods Pack Cluster Limited and others," decided on August 29, 2025, in OMP No. 644 of 2025 under COMS No.1 of 2025:2025:HHC:29474: by the High Court of Himachal Pradesh at Shimla, was presided by Hon’ble Mr. Justice Ajay Mohan Goel.

## Detailed Summary

### Facts

Zydus Wellness Products Ltd., the plaintiff, is the registered proprietor of well-known trademarks "Glucon-D" and "Glucon-C" used in relation to glucose powder-based drink mixes. The plaintiff alleged that the defendants, primarily Karnal Foods Pack Cluster Limited and others, were manufacturing, selling, and offering for sale products under marks deceptively similar to the plaintiff’s trademarks such as "Glucose-D," "Glucospoon-D," and "Glucose-C," thereby infringing the plaintiff's trademark rights and committing passing off.

The plaintiff traced the alleged infringement activities to April 28, 2023, when it first sent a cease and desist notice to defendant No. 2 concerning the mark "Glucospoon-D." Subsequent reminders and notices were sent to defendants No. 1 and 2 over the following months, including in May 2023. Despite the defendants' reply in July 2023 dismissing the plaintiff’s claims, the alleged infringement continued, particularly online on third-party websites such as IndiaMart and Trade India. The plaintiff then sent fresh cease and desist notices in 2024 and even secured a signed, notarized undertaking from defendant No. 1 in July 2024 to refrain from infringing activities. Nonetheless, the defendants allegedly continued infringement and sales of products bearing the impugned marks up to December 2024, including offering the infringing products to the plaintiff’s legal counsel via WhatsApp.

The plaintiff filed a civil suit seeking permanent injunctions against the defendants’ use of the infringing marks, delivery up and destruction of infringing goods, rendition of accounts of profits, damages, orders against online listings of the products, and a declaration that its trademarks were well-known within the meaning of the Trademarks Act, 1999. Concurrently, the plaintiff sought interim injunctions restraining defendants from further use of the infringing marks during the pendency of the suit.

### Dispute

The defendants contested the suit on the ground that the plaintiff had not complied with the mandatory pre-institution mediation as mandated under Section 12A of the Commercial Courts Act, 2015, which requires parties in commercial disputes to attempt mediation before filing suit unless urgent interim relief is sought and justified. Defendants argued that the failure to exhaust this remedy before filing the suit warranted rejection of the plaint under Order VII, Rule 11(d) of the Civil Procedure Code (CPC). The defendants contended the plaintiff’s claim for urgent interim relief was unfounded and merely a tactic to bypass the mandatory mediation requirement.

The plaintiff responded that the suit was filed with a prayer for urgent relief justified by ongoing trademark violations, particularly the recent infringing activities in December 2024, and thus pre-litigation mediation was not necessary.

### Reasoning

The Court carefully examined the pleadings, the chronology of events, and relevant Supreme Court precedents to assess whether the plaintiff was justified in bypassing pre-institution mediation under Section 12A.

The Court noted that while the plaintiff alleged ongoing infringement recent as December 2024, the original cause of action arose in April 2023, and there was practically no qualitative or significant change in the situation between April 2023 and the filing of the suit. The defendants' use of similar marks was continuous throughout this period and had been repeatedly notified by cease and desist notices.

The Court relied on Supreme Court judgments, including Patil Automation (2022), Yamini Manohar (2024), and Dhanbad Fuels (2025), which established the mandatory nature of Section 12A mediation and clarified the criteria for claiming urgent interim relief as an exception. These rulings assert that urgent interim relief is only justified if the plaint and facts demonstrate such genuine urgency that bypassing mediation is warranted.

The Court observed the plaint and the accompanying application for urgent relief were silent on why the plaintiff required urgent relief at the time of filing without mediation. Merely filing an interim injunction application is insufficient; the court must holistically examine if the urgency is bona fide or a mask to avoid the mediation mandate.

The Court concluded that the plaintiff’s claim for urgent interim relief lacked substantiation of any new exigency since the initial cause of action. As a result, the bypassing of pre-litigation mediation was not justified. The plaintiff’s application for urgent relief was viewed as a camouflage tactic to circumvent the mandatory mediation provision.

The Court held that non-grant of urgent relief after consideration does not authorize filing the suit without complying with Section 12A. The plaintiff’s failure to comply with mandatory pre-institution mediation was grounds for rejection of the plaint under Order VII, Rule 11(d) CPC, as supported by Supreme Court rulings.

### Decision

The Court allowed the defendants’ application seeking rejection of the plaint. The plaint was rejected under Order VII, Rule 11(d) of the CPC due to the plaintiff’s failure to comply with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. Costs were made easy, and all pending miscellaneous applications were disposed of.

The Court clarified that this order was independent of whether urgent relief was granted or not and emphasized the court’s duty to prevent misuse of the urgent relief exception to bypass mandatory mediation.

***

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

Vaidya Rishi India Health Private Limited & Anr. v. Suresh Dutt Parashar

No Remedy for Infringement against Registered Proprietor of Trademark

Facts:The respondents (Suresh Dutt Parashar & Ors., originally the plaintiffs in the lower court) are the registered proprietors of several trademarks under the Trade Marks Act, 1999, including the word mark "VAIDRISHI" in Classes 5 , 35 , and 42 , as well as the device mark "ARSHKALP" (which incorporates "VAIDRISHI" as a prominent element) in Class 5. These registrations date back to December 31, 2018, with the respondents claiming prior user since January 1, 1972. The respondents operate in the health and wellness sector, particularly dealing in Ayurvedic medicines and related products.

The appellants (M/S Vaidya Rishi India Health Private Limited & Anr., originally the defendants) hold registrations for the device mark "VAIDYA RISHI" in Classes 29 , 30 , 31 , 32 , and 35 . The appellants also engage in health-related products but in different classes from the respondents' primary Class 5 registrations.

The respondents instituted a commercial suit, CS (Comm) 741/2023, before the District Judge (Commercial Court), West, Delhi, alleging that the appellants' use of "VAIDYA RISHI" infringed their registered marks "VAIDRISHI" and "ARSHKALP". Specifically, the respondents claimed that "VAIDYA RISHI" was phonetically, visually, and deceptively similar to "VAIDRISHI", and that "VAIDRISHI" formed a dominant part of the "ARSHKALP" device mark. They sought an injunction against the appellants' use of "VAIDYA RISHI" in any manner, including as a trademark, trade name, domain name (https://vaidyarishiindia.in/), or on social media and third-party platforms. The suit was based primarily on infringement under the Trade Marks Act, with no detailed examination of passing off elements like goodwill or misrepresentation.

The learned Commercial Court, relying on the Division Bench decision in Raj Kumar Prasad v. Abbott Healthcare (P) Ltd. (2014), granted an ex parte interim injunction on the respondents' application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The order restrained the appellants from manufacturing, selling, advertising, or dealing in goods under "VAIDYA RISHI" or any deceptively similar mark. It also directed the domain registrar (Defendant No. 3 in the suit) to suspend and lock the domain https://vaidyarishiindia.in/ and reveal registrant details. The Commercial Court found prima facie that the marks were phonetically similar, the appellants had dishonestly adopted the mark to ride on the respondents' goodwill, and the goods were nearly identical, likely causing consumer confusion. The balance of convenience and irreparable harm favored the respondents. Notably, the order did not address passing off, focusing solely on infringement. 

Aggrieved, the appellants filed the present appeal (FAO (COMM) 122/2024) before the High Court of Delhi, challenging the injunction on the ground that no infringement action could lie against their registered trademark.

Dispute:The core dispute in the appeal revolved around whether an action for trademark infringement could be maintained against the proprietor of a registered trademark, and consequently, whether the appellants could be injuncted from using their registered mark "VAIDYA RISHI" in the classes for which it was registered (29, 30, 31, 32, and 35). The appellants argued that their mark's registration conferred exclusive rights under the Trade Marks Act, precluding any infringement claim. They offered an undertaking to limit use to their registered classes and not encroach on the respondents' classes (e.g., Class 5). The respondents opposed this, insisting on a complete injunction, claiming priority in registration and user, and alleging deceptive similarity leading to infringement.

A broader legal question arose: the correctness of prior Division Bench decisions like Raj Kumar Prasad (which held that infringement suits against registered marks are maintainable) in light of subsequent Supreme Court jurisprudence and statutory provisions.

Reasoning:The Division Bench of the High Court, led by Hon'ble Justice Shri C. Hari Shankar, began with a prefatory note emphasizing that no infringement action can lie against a registered trademark, citing inconsistencies in prior Delhi High Court decisions. It reviewed Raj Kumar Prasad (2014), where a Division Bench affirmed that a registered proprietor could sue another registered proprietor for infringement and obtain an interim injunction. This was followed in Corza International v. Future Bath Products (P) Ltd. (2023). However, the Bench noted conflicting Single Judge decisions and its own prior reference in Abros Sports International (P) Ltd. v. Ashish Bansal (2025) doubting Raj Kumar Prasad's correctness and referring the issue to a larger Bench (outcome pending).

The Court then analyzed the Supreme Court's decision in S. Syed Mohideen v. P. Sulochana Bai (2016), which post-dated Raj Kumar Prasad and held unequivocally that no infringement action lies against a registered trademark, as registration confers absolute rights. The Bench concluded that Raj Kumar Prasad was no longer good law, being contrary to Syed Mohideen.

Delving into statutory interpretation, the Court examined key provisions of the Trade Marks Act, 1999:

Section 29 (Infringement Definition): Sub-sections (1) to (4) define infringement as use by a person "not being a registered proprietor or a person using by way of permitted use." The Court reasoned that this excludes registered proprietors from the scope of infringement, as the definition presupposes the infringer is unregistered.

Section 30(2)(e): This exempts from infringement the use of a registered trademark by its proprietor, even if identical or similar to another registered mark, reinforcing that registration grants an absolute defense against infringement claims.

Section 28(1): Grants the registered proprietor exclusive right to use the mark in relation to the registered goods/services, making any injunction against such use violative of this right.

Section 28(3): Addresses scenarios where two persons hold identical or similar registered marks, stating that neither can claim exclusive rights against the other (except against third parties). This prohibits one registered proprietor from injuncting another's use, though rectification or cancellation proceedings could be pursued separately.

The Court held that these provisions collectively bar infringement suits against registered marks. An injunction based on infringement would undermine the statutory exclusivity of registration. The impugned order erred by following Raj Kumar Prasad and granting relief solely on infringement grounds without examining passing off (e.g., no findings on the respondents' goodwill or misrepresentation). The appellants' offer to restrict use to their classes further highlighted the lack of overlap, but the respondents' refusal did not alter the legal position. The Bench clarified that while passing off actions  could lie against registered marks, infringement per se could not. The Commercial Court's order was thus unsustainable.

Decision:The High Court allowed the appeal, setting aside the impugned order of the Commercial Court. It held that no infringement action could lie against the appellants' registered mark  in the classes for which it was registered, and the injunction granted on infringement grounds was contrary to law. The Hon'ble Division Bench however clarified that appellant may use the mark only in relation to  the goods and services covered by the registrations held by the appellant in Classes 29, 30, 31, 32 and 3. The respondents' suit could proceed on passing off . 

Case Title: Vaidya Rishi India Health Private Limited & Anr. Vs. Suresh Dutt Parashar & Ors.; Order date: 07.08.2025; 

Case Number: FAO (COMM) 122/2024

Neutral Citation: 2025:DHC:6644-DB; 

Name of Court: High Court of Delhi

Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla.

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

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

Optix Healthcare & Ors. Vs. S. Baskaran

The case involves a petition by M/s. Optix Healthcare, represented by its partners Mr. Balaji and M. Maria Parthiban, to rectify the Register of Trade Marks by expunging the trade mark "FLURB" (Trade Mark No. 5475906 in Class 5) registered to S. Baskaran, a former partner of the firm. The petitioners demonstrated prior use of the mark since 15.11.2016, supported by invoices from 20.09.2016, while S. Baskaran applied for the same mark on 04.06.2022 on a "proposed to be used" basis. The court found the marks to be identical and used for identical ophthalmic products, concluding that the petitioners were the prior users. Due to S. Baskaran's failure to contest the case, he was set ex parte, and the court ordered the Registrar of Trade Marks to expunge the impugned entry within thirty days.

M/s. Optix Healthcare & Ors. vs. S. Baskaran & Anr.:12.08.2025: OP(TM)/32/2025,  Mr. Justice Senthilkumar Ramamoorthy at the High Court of Judicature at Madras

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

Muthukani Thiravidakani Trading as Anil Appalam and Chips & Anr. Vs K.Raja & Anr

**Summary of Case:**  

The review petitioners, operating under "ANIL APPALAM & CHIPS," sought to review the IPAB's order dated 03.06.2013 that allowed the first respondent's rectification petition to remove their registered device mark (Trade Mark No. 687449 in Class 30, effective from 20.11.1995) from the Register. The partnership, originally formed in 1993, underwent multiple reconstitutions, with the first respondent retiring on 14.07.2000 via a release deed and assurance deed that permitted him to use the name in Tamil Nadu and Puducherry while restricting the firm from operating there. The court found the IPAB's removal order erroneous, as the documents indicated a territorial division rather than full transfer of goodwill, and directed the Registrar under Section 57 of the Trade Marks Act to modify the registration by imposing a geographical limitation excluding those territories for the petitioners' mark, to be done within 30 days.

**Case Details:** The case titled Muthukani Thiravidakani Trading as Anil Appalam and Chips & Anr. vs K.Raja & Anr., order dated 07-08-2025, case number (T) Rev.Pet. (IPD) No. 4 of 2024, with no neutral citation, was heard by The Hon'ble Mr Justice Senthilkumar Ramamoorthy at the High Court of Judicature at Madras.

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

Berkadia Proprietary Holding LLC Vs. The Registrar of Trade Marks

Berkadia Proprietary Holding LLC appealed against the Registrar of Trade Marks' order dated 17.12.2024, which rejected Trade Mark Application No. 2381187 for "INVESTOR QUERY" in Class 36, citing a lack of distinctive character. The application, filed on 06.08.2012 on a "proposed-to-be-used" basis, faced an objection in 2013, with the appellant arguing in 2014 that the mark had acquired distinctiveness through use. The High Court, noting a request to amend the mark to "BERKADIA INVESTOR QUERY," set aside the impugned order due to the material change and remanded the matter to the Registrar for reconsideration after accepting the amendment, with a fresh order to be issued within three months.

Case Details: The case titled Berkadia Proprietary Holding LLC vs. The Registrar of Trade Marks, order dated 26.08.2025, case number CMA(TM)/11/2025, with no neutral citation, was heard by the Honourable Mr. Justice Senthilkumar Ramamoorthy at the High Court of Judicature at Madras.

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

Haveli Restaurant and Resorts Ltd Vs Adison Resorts Limited

Haveli Restaurant and Resorts Ltd has filed a suit against Adison Resorts Limited, alleging trademark infringement, passing off, and copyright violation due to the defendant's unauthorized use of the 'HAVELI' mark and its derivatives, which the plaintiff has used since 2001, establishing significant goodwill, particularly in North India. The plaintiff claims the defendant, after failed business discussions in 2021, replicated its distinctive trade dress, color schemes, interior designs, and overall ambience under the mark 'PUNJABI HAVELI', applied for on a 'proposed to be used' basis in 2023, causing customer confusion and diluting the plaintiff's brand. The Delhi High Court granted an ex-parte ad-interim injunction on August 19, 2025, restraining the defendant from using the impugned mark and directing the removal of related branding materials within one week, with a potential appointment of a Local Commissioner for non-compliance.

The case titled Haveli Restaurant and Resorts Ltd vs. Adison Resorts Limited, order dated 19.08.2025, with case number CS(COMM) 791/2025 and neutral citation not provided, was heard by the Hon'ble Ms. Justice Manmeet Pritam Singh Arora at the High Court of Delhi at New Delhi.

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

New Delhi Television Limited (NDTV) Vs Ashok Kumar & Ors

New Delhi Television Limited (NDTV) has filed a suit against Ashok Kumar & Ors., alleging infringement of its registered trademark 'NDTV' and its formatives, passing off, copyright infringement, and unfair competition. NDTV, a leader in news broadcasting and digital journalism since 1988, claims that unknown Defendant No. 1 and Defendant No. 2 are operating websites incorporating the 'NDTV' trademark in their domain names, misrepresenting themselves as affiliated with NDTV. The plaintiff also alleges that Defendant No. 1 is hosting unauthorized YouTube channels, Telegram groups, X handles, and Facebook accounts/pages that use the 'NDTV' trademark and logo, potentially misleading the public. The Delhi High Court granted an ex-parte ad-interim injunction on August 20, 2025, restraining Defendants from using the 'NDTV' trademark, ordering domain name registrars, social media platforms, and government bodies to suspend/block the impugned websites, channels, and accounts, and directing disclosure of registrant details within specified timelines.

Case Details

The case titled New Delhi Television Limited vs. Ashok Kumar & Ors., order dated 20.08.2025, with case number CS(COMM) 869/2025 and neutral citation not provided, was heard by the Hon'ble Ms. Justice Manmeet Pritam Singh Arora at the High Court of Delhi at New Delhi.

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

Shiv Industries Vs Lifetime Care Kitchen Pvt. Limited

Case Title: Shiv Industries Vs Lifetime Care Kitchen Pvt. Limited; Order Date: 20.08.2025; Case Number: CS(COMM) 491/2025; Name of Court: High Court of Delhi at New Delhi; Judge: Hon'ble Mr. Justice Tejas Karia.

Summary:

The case involves a dispute where the Plaintiff, M/S. Shiv Industries, alleges trademark infringement against the Defendants, Lifetime Care Kitchen Pvt. Limited and another. The Plaintiff claims proprietary rights over the trademark "Lifetime" with a registered device (Trademark Application No. 1342486 in Class 06) originally registered by Mr. Muniyappan K. Yadav and later assigned to the Plaintiff in August 2023. The Plaintiff has been using the mark extensively since 2013 for furniture fittings and other products, accumulating significant goodwill and sales, supported by a deed of assignment and trademark renewal until 2035.

The Defendants are accused of using confusingly similar trademarks "Lifetime Care" in relation to household and kitchen utensils, which overlaps with the Plaintiff’s product category and consumer base. Defendant No. 1 was incorporated by Defendant No. 2, who was formerly an employee and marketing executive at the Plaintiff's company. The Defendants filed trademark applications for similar marks during their employment or shortly after, and used a domain name similar to the Plaintiff's. The Plaintiff contends that this acts as an attempt to trade on their goodwill, causing potential confusion among consumers.

The Court issued summons to the Defendants and granted the Plaintiff leave to file additional documents and replication. It restrained the Defendants and their associates from using the impugned trademarks or any deceptively similar mark in connection with household or kitchen products, finding prima facie that the Defendants' use was likely to cause confusion and amounted to infringement and passing off.

The matter is listed for further proceedings with directions regarding pleadings, affidavits for admission/denial of documents, and compliance with procedural rules.

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 

Lotus Bakeries N V Vs Micks Products LLP

The case titled "Lotus Bakeries N V Vs Micks Products LLP & Ors." (CS(COMM) 861/2025) was decided by the High Court of Delhi on August 20, 2025, before Justice Tejas Karia.

Summary:

The plaintiff, Lotus Bakeries N V, a Belgian company renowned for its "BISCOFF" trademark and distinctive biscuit shape, filed a suit for permanent injunction against the defendants Micks Products LLP and others for trademark infringement and passing off. The plaintiff has registered the "BISCOFF" trademark and associated biscuit shape internationally and in India, where it enjoys significant goodwill and commercial success. The defendants were found to have marketed and sold bakery products with a similar biscuit shape and packaging, including the use of the term "BISCO," which the plaintiff contended was phonetically and visually deceptive and likely to cause confusion. Despite receiving cease and desist notices, the defendants continued their infringing conduct, which included misleading packaging and marketing strategies mimicking the plaintiff’s brand identity. The Court held that the plaintiff made out a prima facie case of infringement and passing off, granting an ex-parte ad-interim injunction restraining the defendants from using the infringing mark, shape, packaging, and passing off the goods as those of the plaintiff. The matter was posted for further hearing.

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

Shankar Engineering Works and Ors. Vs Sankar Iron Engineering Works Pvt. Ltd

The case titled "Shankar Engineering Works and Ors. Vs Sankar Iron Engineering Works Pvt. Ltd. and Ors." (IP-COM/34/2024, GA-COM/3/2025) was decided by the High Court at Calcutta (Original Side, Intellectual Property Rights Division) on August 25, 2025, before Justice Ravi Krishan Kapur.

Summary:

The plaintiffs, engaged in manufacturing cast iron suction hand pumps, owned the registered trademark "ASHA MAYA" and had also adopted a similar mark "ASHU MAYA" since 2016, under which their products had acquired goodwill and reputation. The defendants filed trademark applications for the identical mark "ASHU MAYA" in a similar category of goods. The plaintiffs initiated a suit for passing off and damages, seeking to restrain the defendants from using the impugned mark. The defendants failed to appear or defend the suit. The Court found the defendants' mark to be deceptively identical and likely to cause confusion and damage to the plaintiffs' goodwill. The Court granted an injunction against the defendants to stop the use of the impugned mark and decreed the suit in favor of the plaintiffs.

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

Natural Medicine Institute of Zhejiang Vs The Deputy Controller of Patents

The case titled "Natural Medicine Institute of Zhejiang Vs The Deputy Controller of Patents" (CMA (PT) No.171 of 2023) was decided by the High Court of Judicature. The order was dated December 14, 2017. The appeal challenges the rejection of patent application No. 6275/CHENP/2011 for the invention titled “A Mordant and Hair Coloring Products Containing the Same.” The First Examination Report (FER) raised objections on grounds of lack of novelty and inventive step. The appellant replied with amended claims, which initially were accepted by the respondent via email. However, the appellant later filed claims differing from the ones approved, leading the Controller to refuse the patent application under section 15 of the Patent Act 1970 for non-compliance. The invention had been granted patents in multiple jurisdictions including China, USA, South Korea, Brazil, Malaysia, Japan, and the European Patent Office (EPO). The impugned order did not provide reasons rejecting the amended claims.

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

Modi-Mundipharma Pvt. Ltd. Vs. Lloyd Health Care Pvt. Ltd.

The case titled "Modi-Mundipharma Pvt. Ltd. Vs. Lloyd Health Care Pvt. Ltd. & Anr." (Case Number CS(COMM) 877/2025) was ordered on August 22, 2025, in the High Court of Delhi before Hon'ble Mr. Justice Tejas Karia.

Summary:

This suit involves a trademark infringement dispute where Modi-Mundipharma Pvt. Ltd. (Plaintiff) alleges that Lloyd Health Care Pvt. Ltd. & Anr. (Defendants) infringed its registered trademarks belonging to the CONTIN Series of Marks, specifically the "NITROCONTIN" mark used for pharmaceutical products. The Plaintiff, claiming significant goodwill and multiple registrations for CONTIN marks since 1982, contended that the Defendants marketed medicinal products under the confusingly similar mark "LOYCONTIN" for identical products (nitroglycerin controlled release tablets in 2.6 mg and 6.4 mg dosages). The Plaintiff sent cease-and-desist notices which the Defendants either refused or did not respond to and also noticed the Defendants filing a trademark application for the mark "LOY CTN." The Court found a prima facie case in favor of the Plaintiff for an ex-parte ad-interim injunction restraining the Defendants from manufacturing, selling, or distributing products under the infringing marks. The case was listed for further hearing in December 2025.

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

Utracon Corporation Pte Ltd Vs. Ucon Pt Structural System Private Limited

The case titled "Utracon Corporation Pte Ltd Vs. Ucon Pt Structural System Private Limited & Ors." (Case Number CS(COMM) 661/2024) was ordered on August 25, 2025, in the High Court of Delhi before Hon'ble Mr. Justice Tejas Karia.

Summary:

This case concerns an application filed by Utracon Corporation Pte Ltd (Plaintiff) against defendants for willful disobedience of an ex-parte ad-interim injunction dated August 7, 2024. The injunction restrained the defendants from using the Plaintiff’s registered trademark "UTRACON" or any deceptively similar mark and from using the domain name www.ultraconindia.com. The Plaintiff alleged that despite being aware of the injunction, the defendants continued to violate it by using the "ULTRACON" mark, including Defendant No. 5 continuing to use "Ultracon Structural Systems Private Limited" as its company name. The defendants disputed these allegations, stating some had ceased use and that the domain in question redirects to a different website, while Defendant No. 5 argued its corporate name usage complied with Ministry of Corporate Affairs regulations. The Court issued notice to the defendants, directing them to cease use of the domain and the name within two weeks pending further proceedings, and listed the matter for hearing in November 2025.

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

CMYK Printech Limited Vs. BAA Television Network Private Limited

The case titled  CMYK Printech Limited Vs. BAA Television Network Private Limited" (Case Number CS(COMM) 688/2025) was ordered on August 25, 2025, in the High Court of Delhi before Hon'ble Mr. Justice Tejas Karia.

Summary:

This is a commercial suit filed by M/s CMYK Printech Limited (Plaintiff) against M/s BAA Television Network Private Limited (Defendant), concerning trademark infringement, passing off, and related claims involving the "THE PIONEER" newspaper mark. The Plaintiff, engaged in the publishing business with longstanding use and trademark registration of the "THE PIONEER" mark, alleged unauthorized use of the mark by the Defendant after termination of a franchise agreement dated March 27, 2012. The Plaintiff claimed the Defendant continued to publish newspapers under the Pioneer brand unlawfully, failed to pay outstanding dues under the agreement, and was operating a digital newspaper under the "THE PIONEER" name without authorization. The Defendant contested the suit on grounds of territorial jurisdiction, prematurity owing to a six-month notice clause for termination, and argued that "Pioneer" is a generic term widely used by others. The Court found a prima facie case in favor of the Plaintiff and granted an ad-interim injunction restraining the Defendant from using the "THE PIONEER" mark on newspapers, digital media, and related services, subject to a deposit by the Plaintiff of six months' content charges. The Court also directed mediation to resolve the dispute and set a deadline for further proceedings.

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

FMC Corporation & Ors. Vs Natco Pharma Limited

FMC Corporation & Ors. Vs Natco Pharma Limited, order dated 05.12.2022, case number FAO(OS) (COMM) 301/2022, neutral citation 2022/DHC/005311, High Court of Delhi at New Delhi, Hon'ble Mr Justice Vibhu Bakhru and Hon'ble Mr Justice Amit Mahajan. 

The case revolves around a patent infringement dispute in the agrochemical sector where FMC Corporation, along with its subsidiaries FMC Agro Singapore Pte Ltd and FMC India Pvt Ltd, collectively engaged in producing and selling agrochemicals for crop enhancement and pest control, alleged that Natco Pharma Limited, a vertically integrated pharmaceutical company focused on developing, manufacturing, and marketing finished dosage formulations and active pharmaceutical ingredients, was infringing their process patent IN 298645 titled "Method for Preparing N-Phenylpyrazole-1-Carboxamides" for manufacturing Chlorantraniliprole (CTPR), an anthranilic diamide insecticide; the patent, originally granted to E.I. Du Pont De Nemours and Company on 09.07.2018 under Section 43 of the Patents Act, 1970, was assigned to FMC effective from 01.11.2017 via a confirmatory agreement dated 01.05.2018, with a filing date of 11.05.2007 in India, international application on 06.12.2005, and priority from 07.12.2004, expiring on 06.12.2025. 

Factually, FMC discovered Natco's synthesis of CTPR through an Environmental Management Plan document submitted by Natco to the Andhra Pradesh Pollution Control Board and Natco's own patent application PCT/IN2019/050321 claiming priority from Indian Application 201841015241, which disclosed a preparation method for CTPR that FMC claimed was equivalent to their patented process involving combining a pyrazole carboxylic acid (Formula 2), an aniline compound (Formula 3), and sulfonyl chloride to form CTPR, asserting infringement of claims 1, 5-8, and 11 based on the doctrine of equivalents since both processes relied on activating the pyrazole carboxylic acid to react with the aniline to produce CTPR, transforming the same reactants into the same product.

Procedurally, this was part of a broader litigation history where FMC had previously sued Natco in CS(COMM) 611/2019 for infringing patents IN 207307 and IN 213332 related to CTPR, and in CS(COMM) 167/2021 for IN 207307 and IN 215218, with IN 204978 (a Markush claim covering CTPR) expiring on 21.03.2021; in response to Natco's notice dated 27.04.2022 under Section 105 of the Patents Act asserting non-infringement of IN 645, FMC replied on 02.05.2022 seeking more details and promptly filed the infringement suit CS(COMM) 349/2022 on 03.05.2022, while Natco preemptively filed CS(COMM) 295/2022 for a declaration of non-infringement, with notice issued on 06.05.2022; the suit was listed on 23.05.2022 where Natco stated it would launch CTPR post-expiry of IN 307 and IN 332 on 13.08.2022 using a non-infringing process, leading FMC to seek an interim injunction under Order XXXIX Rules 1 and 2 via IA 8130/2022, which the Single Judge rejected on 19.09.2022, prompting this intra-court appeal. 

The core dispute centered on whether Natco's process, which used thionyl chloride to first convert the pyrazole carboxylic acid into an acid chloride before reacting it with the aniline in a two-step, two-reactor method yielding lower output but no toxic by-products, infringed FMC's single-step process using sulfonyl chloride as the activating reagent under the doctrine of equivalents, despite no literal infringement, as FMC argued the processes were substantially equivalent in function (stoichiometric activation of carboxylic acid), way (coupling intermediates), and result (CTPR production), while Natco contended the processes were distinct, with sulfonyl chloride forming a mixed anhydride versus thionyl chloride forming an acid chloride, and emphasized element-to-element comparison for process patents where monopoly is limited to the claimed method. 

The core reasons for the court's analysis stemmed from the need to interpret the scope of process patent claims under Sections 48 and 64 of the Patents Act, 1970, applying purposive construction as per Ravi Kamal Bali v Kala Tech, 2008 (110) Bom LR 1850, and considering the doctrine of equivalents from US precedents like Graver Tank & Mfg Co v Linde Air Products Co, 339 US 605 (1950), to prevent minor variations from defeating patent rights, but adapting it to Indian law where process patents protect only the method, not the product, and requiring a triple test of function-way-result while assessing essentiality of elements; to resolve technical complexities, the court appointed scientific advisors under Section 115 of the Patents Act—Dr Gopakumar Nair and Prof Bhalchandra Mahadeo Bhanage (replacing Dr Raghavan Soman)—on 29.07.2022 and 08.08.2022, with terms of reference from both parties addressing whether intermediates were prior art (e.g., in IN 215218, IN 284017, WO 518), differences between thionyl and sulfonyl chlorides (inorganic vs organic, physical/chemical properties), presence of methane sulfonic acid impurity in Natco's product, and if the processes were distinct or equivalent, with advisors concluding the intermediates were disclosed in prior art, thionyl chloride differed from sulfonyl chloride, no methane sulfonic acid impurity in Natco's dossier, the processes were distinct (Natco's two-step vs FMC's one-pot), sulfonyl chloride forms mixed anhydride while thionyl forms acid chloride not being a mixed anhydride, and Natco's process requires reacting acid with thionyl first then acid chloride with aniline, unlike FMC's simultaneous combination. 

In discussing the judgment, the Division Bench upheld the Single Judge's prima facie finding of no infringement, respecting the advisors' unchallenged opinions as per Martin F D'Souza v Mohd Ishfaq, (2009) 3 SCC 1, noting sulfonyl chloride's essentiality from the patent's description and claims where it was specified as the preferred reagent (e.g., methanesulfonyl chloride), and highlighting process differences: FMC's one-pot method mixes acid, aniline, and sulfonyl chloride simultaneously, while Natco's sequential two-reactor approach uses thionyl chloride for acid chloride formation without sulfonyl chloride, yielding different intermediates and by-products.

The court referred to international precedents like Kirin-Amgen Inc v Hoechst Marion Roussel Ltd, [2004] UKHL 46 (UK) emphasizing claim limits, Improver Corp v Remington Consumer Products Ltd, [1990] FSR 181 (UK) on variants, and US cases like Warner-Jenkinson Co v Hilton Davis Chemical Co, 520 US 17 (1997) on equivalents, but stressed in Indian context from Raj Parkash v Mangat Ram Chowdhry, AIR 1978 Del 1, that pith and marrow doctrine applies only to non-essential variations, finding thionyl chloride's substitution not trivial given chemical distinctions and sequence changes. 

Further citations included Avery Dennison Corp v Accutec Blades Inc, 45 F Supp 3d 1148 (CD Cal 2014) on process equivalents, and Indian cases like TVS Motor Co Ltd v Bajaj Auto Ltd, 2009 (40) PTC 689 (Mad) on triple test adaptation for processes, concluding Natco's method was not a subterfuge but a distinct alternative not falling within claim scope even under equivalents. 

The decision dismissed the appeal, confirming no interim injunction, allowing Natco to proceed with its process post-expiry of prior patents, with the suit to proceed on merits. 

The crucial legal principle settled is that for process patent infringement under the doctrine of equivalents in India, courts must conduct an element-to-element comparison to determine if substitutions are insubstantial, treating specified reagents like sulfonyl chloride as essential if integral to novelty and functionality, and limiting equivalents to prevent extension beyond claimed method, adapting the function-way-result test to emphasize sequence and intermediate differences in chemical processes, thereby balancing patentee rights against public interest in alternative innovations.

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.

New Delhi Television Limited versus Ashok Kumar & Ors

The case is titled "New Delhi Television Limited versus Ashok Kumar & Ors." The order was dated August 20, 2025, and the case bears the number CS(COMM) 869/2025. The matter was heard in the High Court of Delhi, authored by Hon'ble Ms. Justice Manmeet Pritam Singh Arora. There is no specific neutral citation provided in the document.

The suit was filed by the plaintiff, New Delhi Television Limited (NDTV), a well-established and respected company in India’s news broadcasting and digital journalism sector since 1988. NDTV holds multiple trademark registrations for the mark "NDTV" and its variants and has been declared a well-known trademark by the Trade Marks Registry. The plaintiff claimed extensive goodwill and reputation associated with its brand due to long-term use, advertisements, and substantial revenue generation, including advertising revenue of over Rs. 282 crores in the financial year 2024-25.

The core dispute concerns the infringement of NDTV’s trademark rights and copyrights by the defendants. The plaintiff alleged that Defendant No. 1 (an unknown entity) and Defendant No. 2 were operating websites and social media platforms that unlawfully used the plaintiff’s registered trademark "NDTV" and similar variants without authorization. These impugned platforms included multiple domain names and channels on YouTube, Telegram groups, and social media handles on X (formerly Twitter) and Facebook, which the plaintiff claimed were deceptively similar or identical to its well-known mark. The defendants allegedly misrepresented an association with NDTV, causing potential confusion among the public. The plaintiff also accused the defendants of disseminating unverified and inaccurate news content under the plaintiff’s trademark, thereby harming its brand’s credibility and journalistic integrity. The plaintiff sought permanent injunction and damages for trademark infringement, passing off, copyright infringement, and unfair competition.

The court’s decision granted the plaintiff an ex-parte ad-interim injunction to restrain the defendants, particularly Defendant Nos. 1 and 2, from using the NDTV trademarks and any deceptively similar variations across various platforms, domains, social media, and business papers. The court directed several domain registrars and platform operators (Defendants Nos. 3 to 19) to lock, suspend, or remove the infringing websites, channels, and social media accounts within 48 hours of receiving the order and to disclose relevant subscriber information to the plaintiff within three weeks. The Department of Telecommunications and the Ministry of Electronics and Information Technology were also directed to issue notifications to ISPs and telecom providers to block access to the infringing websites. The court recognized the strong prima facie case made by the plaintiff, indicating that the defendants’ actions would cause irreparable harm that could not be compensated with monetary damages alone. The plaintiff was also given liberty to seek impleadment of any other similar infringing websites or accounts that may surface during the proceedings. The court clarified that non-infringing websites inadvertently affected by the order could seek modification of the injunction on providing suitable undertakings.

The legal principle settled in this case centers on the protection of well-known trademarks against unauthorized use, domain name infringement, and the liability of registrars and platform providers to act promptly in preventing trademark violations online. The case reinforces the enforcement of intellectual property rights in the digital ecosystem by allowing courts to grant interim injunctions that include blocking and suspending infringing digital assets and directing disclosure of subscriber information for enforcement. Additionally, the case highlights the significance of trademark rights in preserving journalistic integrity and preventing public deception through false associations in the media landscape.

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.

Actavis UK Limited and others (Appellants) v Eli Lilly and Company

The case is Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent), decided by the United Kingdom Supreme Court on 12 July 2017, with the case number UKSC 48. The judgment was delivered by Lord Neuberger, President, with Lords Mance, Clarke, Sumption, and Hodge concurring.

The factual background involves pemetrexed, a chemical known for therapeutic effects on cancerous tumors but with significant toxic side effects when used alone. The patent in question, European Patent (UK) No 1 313 508, owned by Eli Lilly, disclosed that these side effects could be mitigated by administering pemetrexed disodium with vitamin B12, enabling a successful medicament marketed as Alimta since 2004. The patent claims focused on using pemetrexed disodium in medicaments combined with vitamin B12 for cancer treatment. Actavis developed products with pemetrexed diacid, pemetrexed ditromethamine, or pemetrexed dipotassium instead of pemetrexed disodium and contended that these did not infringe Eli Lilly’s patent. Eli Lilly argued that Actavis’s products infringed the patent directly or indirectly.

The main dispute was whether Actavis’s products infringed the patent claims limited to pemetrexed disodium. The lower court, Arnold J, initially found no infringement, with the Court of Appeal confirming no direct infringement but accepting indirect infringement. Eli Lilly appealed the rejection of direct infringement, and Actavis cross-appealed the finding of indirect infringement.

The Supreme Court held that Actavis’s products did directly infringe Eli Lilly’s patent in the UK and corresponding designations in France, Italy, and Spain, and dismissed Actavis’s cross-appeal on indirect infringement. The Court applied a nuanced approach to patent claim interpretation, emphasizing the Protocol on the Interpretation of Article 69 of the European Patent Convention, which calls for a balance between fair protection for patentees and legal certainty for third parties. The Court reformulated the established 'Improver' questions to determine infringement under the doctrine of equivalents, requiring that a variant achieves substantially the same result in substantially the same way, that it would be obvious to a skilled person that the variant works equivalently, and that the patentee did not intend a strict literal interpretation excluding such variants.

The Court found that although Actavis’s products did not literally fall within the claims limited to pemetrexed disodium, they were equivalent variants achieving the same therapeutic result through substantially the same means under the patent. The prosecution history limiting claims to pemetrexed disodium did not preclude the doctrine of equivalents extending protection to other pemetrexed salts or the free acid. The Court also confirmed that indirect infringement applies where the Actavis products, when dissolved in saline for administration, effectively produce pemetrexed disodium in solution.

This case clarified the application of the doctrine of equivalents in patent infringement, endorsing a purposive interpretation of patent claims that balances the literal wording with the inventive concept and the principle of equivalents. It provided guidance on how courts should approach equivalence, endorsing a more pragmatic approach whereby the skilled person assesses variants knowing the variant works, rather than speculating on outcomes without such knowledge. The decision is influential for patent law concerning pharmaceutical patents and equivalents.

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.

Promoshirt SM SA Vs. Armasuisse

Introduction: The case of Promoshirt SM SA Vs. Armasuisse and Anr. is a pivotal decision by the High Court of Delhi that addresses the maintainability of Letters Patent Appeals (LPAs) under the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908 (CPC). This case arose from a challenge to a Single Judge’s judgment on appeals against the Deputy Registrar of Trade Marks’ order, raising a significant preliminary objection regarding the applicability of Section 100-A, which bars further appeals from a Single Judge’s appellate decisions. The Division Bench examined whether an LPA is permissible when a Single Judge exercises appellate jurisdiction under a special statute like the 1999 TM Act. The decision clarifies the scope of Section 100-A, the nature of the Registrar of Trade Marks as a non-civil court, and the preservation of Letters Patent remedies in trademark disputes, offering critical insights into appellate jurisdiction in intellectual property law.

Factual Background: Promoshirt SM SA, the appellant, sought registration of certain trademarks under the Trade Marks Act, 1999. Armasuisse, the respondent, opposed these applications, but the Deputy Registrar of Trade Marks, on July 25, 2022, rejected Armasuisse’s opposition and directed that Promoshirt’s trademark applications be processed for registration. Aggrieved, Armasuisse appealed to the High Court of Delhi under Section 91 of the 1999 TM Act, which allows appeals against the Registrar’s orders to be heard by a Single Judge. On January 4, 2023, the Single Judge delivered a judgment, prompting Promoshirt to file two Letters Patent Appeals (LPAs 136/2023 and 137/2023) before the Division Bench. Armasuisse raised a preliminary objection, arguing that Section 100-A of the CPC barred these LPAs, as the Single Judge was exercising appellate jurisdiction. The dispute centered on whether the Registrar’s orders constituted decrees or orders of a civil court under the CPC and whether the 1999 TM Act’s appellate framework permitted further appeals under the Letters Patent.

Procedural Background: The procedural journey began with the Deputy Registrar’s order on July 25, 2022, accepting Promoshirt’s trademark applications and rejecting Armasuisse’s opposition. Armasuisse invoked Section 91 of the 1999 TM Act to appeal this order to a Single Judge of the High Court of Delhi. The Single Judge’s judgment on January 4, 2023, led Promoshirt to file LPAs under Clause 10 of the Letters Patent, challenging the maintainability of the Single Judge’s decision. Armasuisse’s counsel, Mr. Pravin Anand, argued that Section 100-A of the CPC, which prohibits further appeals from a Single Judge’s appellate decisions, rendered the LPAs non-maintainable. The Division Bench was tasked with resolving this preliminary objection before addressing the substantive merits of the appeals, focusing on the interplay between the CPC, the 1999 TM Act, and the Letters Patent powers of the High Court.

Legal Issue: The primary legal issue was whether a Letters Patent Appeal is maintainable against a Single Judge’s judgment rendered under Section 91 of the Trade Marks Act, 1999, in light of Section 100-A of the Code of Civil Procedure, 1908, which bars further appeals from a Single Judge’s decisions in appeals from original or appellate decrees or orders? The court had to determine whether the Registrar of Trade Marks’ decisions constitute decrees or orders of a civil court under the CPC and whether the 1999 TM Act’s appellate provisions, lacking explicit reference to CPC rules, preserve the right to an LPA under the Letters Patent.

Discussion on Judgments: The court extensively referenced prior judgments to address the maintainability of the LPAs, with both parties citing precedents to support their positions. Armasuisse relied on Kamal Kumar Dutta & Anr. v. Ruby General Hospital Ltd. & Ors. ((2006) 7 SCC 613), where the Supreme Court held that Section 100-A overrides Letters Patent powers, barring further appeals from a Single Judge’s decision in an appeal from an original order of the Company Law Board (CLB). The court noted the CLB’s quasi-judicial nature and its trappings of a court, applying Section 100-A to preclude an LPA. Armasuisse argued this precedent conclusively settled the issue, as the Registrar’s orders were akin to those of the CLB.

The court also considered P.S. Sathappan v. Andhra Bank Ltd. ((2004) 11 SCC 672), a Constitution Bench decision cited by Armasuisse, which clarified that Section 100-A, as amended in 2002, specifically excludes LPAs when a Single Judge hears an appeal from an original or appellate decree or order. The court emphasized the legislature’s intent to limit appeals, reinforcing Armasuisse’s contention that Section 100-A applied universally.

Subal Paul v. Malina Paul ((2003) 10 SCC 361) was referenced, with Armasuisse highlighting the Supreme Court’s observation that statutory bars to appeals, like Section 100-A, must be expressly stated. This supported their argument that Section 100-A’s non-obstante clause overrides Letters Patent provisions. Similarly, Gandla Pannala Bhulaxmi v. Managing Director, A.P. SRTC (2003 SCC OnLine AP 525) and United India Insurance Co. Ltd. v. S. Surya Prakash Reddy & Ors. (2006 SCC OnLine AP 434), Full Bench decisions of the Andhra Pradesh High Court, were cited by Armasuisse. These cases held that Section 100-A bars LPAs in matters arising under special statutes like the Motor Vehicles Act, as the non-obstante clause overrides Letters Patent powers, even for tribunals with court-like functions.

Kesava Pillai Sreedharan Pillai v. State of Kerala (2003 SCC OnLine Ker 293), a Kerala High Court Full Bench decision, was invoked by Armasuisse to argue that Section 100-A’s amendments in 1999 and 2002 aimed to abolish intra-court appeals, except in writ petitions, applying to appeals under statutes like the Land Acquisition Act. Rouf Ahmad Zaroo v. Mst. Shafeeqa (2014 SCC OnLine J&K 137) was cited, where the Jammu and Kashmir High Court, relying on Kamal Kumar Dutta, held that Section 100-A barred an LPA from a Single Judge’s appellate order under the Guardians and Wards Act, reinforcing Armasuisse’s position.

Promoshirt countered with National Sewing Thread Co. Ltd. v. James Chadwick & Bros. (AIR 1953 SC 357), where the Supreme Court held that an appeal under Section 76 of the Trade Marks Act, 1940, to a Single Judge is subject to High Court rules, including Letters Patent appeals, unless the statute expressly bars further appeals. Promoshirt argued that the 1999 TM Act’s silence on further appeals preserved the LPA remedy. Mahli Devi (unreported, cited in the judgment), a Delhi High Court Full Bench decision, was referenced to assert that LPAs are maintainable under Section 54 of the Land Acquisition Act, as it lacks a bar on second appeals, supporting Promoshirt’s claim that the 1999 TM Act’s structure allows LPAs.

Resilient Innovations Pvt. Ltd. v. Phonepe Private Limited and Anr. (2023 SCC OnLine Del 2972) and V.R. Holdings v. Hero Investocorp Limited & Anr. (2023 SCC OnLine 4673), recent Delhi High Court decisions, were cited by Promoshirt. These cases held that LPAs are maintainable under the 1999 TM Act, as it lacks provisions excluding Letters Patent appeals, unlike its predecessors. The court in Resilient Innovations emphasized that the absence of CPC application in the 1999 TM Act preserves the LPA remedy under Clause 10 of the Letters Patent.

Avtar Narain Behal (not fully cited but discussed extensively) was a Delhi High Court Full Bench decision relied upon by Armasuisse, interpreting Section 100-A to bar LPAs under the Indian Succession Act, 1925, due to its adoption of CPC appeal provisions. Promoshirt distinguished this, arguing that the 1999 TM Act does not similarly incorporate CPC rules. Nahar Industrial Enterprises Ltd. v. Hong Kong & Shanghai Banking Corpn. ((2009) 8 SCC 646) was cited by Promoshirt to argue that tribunals like the Registrar of Trade Marks are not civil courts, as they lack the full attributes of a civil court, supporting the maintainability of LPAs.

Paramjeet Singh Patheja v. ICDS Ltd. ((2006) 13 SCC 322) was referenced by Promoshirt to clarify that non-civil court decisions, like arbitration awards, are not decrees under the CPC, reinforcing that the Registrar’s orders do not fall under Section 100-A. Additional cases included Sharda Devi v. State of Bihar ((2002) 3 SCC 705), supporting LPAs under the Land Acquisition Act; Aswini Kumar v. Arbinda Bose (AIR 1952 SC 369) and Madhav Rao Scindia v. Union of India (AIR 1971 SC 530), on the scope of non-obstante clauses; and I.T.C. Ltd. v. State of Karnataka (1985 Supp SCC 476) and Kulwant Kaur v. Gurdial Singh Mann ((2001) 4 SCC 262), on the supremacy of central legislation, all contextualizing the interplay between CPC and special statutes.

Reasoning and Analysis of the Judge: The Division Bench began by examining Section 100-A’s language, which bars further appeals from a Single Judge’s decisions in appeals from original or appellate decrees or orders, noting its non-obstante clause overriding Letters Patent provisions. However, the court emphasized that Section 100-A’s applicability hinges on the definitions of “decree” and “order” under Sections 2(2) and 2(14) of the CPC, which require adjudication by a civil court. The Registrar of Trade Marks, as a statutory authority, does not qualify as a civil court, as it lacks the power to conduct trials under the CPC or Evidence Act, failing the “trappings of a court” test articulated in Nahar Industrial Enterprises and Paramjeet Singh Patheja.

The court distinguished precedents like Kamal Kumar Dutta, which applied Section 100-A to the CLB due to its quasi-judicial status and statutory deeming provisions under the Companies Act, 1956. Unlike the CLB or Motor Accident Claims Tribunals, which have limited civil court status under their statutes, the 1999 TM Act contains no such provision, and the Registrar’s role is administrative, not judicial. The court also contrasted the 1999 TM Act with its predecessors, noting that Sections 76(3) of the 1940 TM Act and 109(8) of the 1958 TM Act applied CPC rules to appeals, a feature absent in the 1999 TM Act, indicating legislative intent to preserve Letters Patent remedies.

Analyzing Avtar Narain Behal, the court clarified that its holding applied to the Indian Succession Act, 1925, because Section 299 explicitly subjects appeals to CPC provisions, attracting Section 100-A’s bar. In contrast, Section 91 of the 1999 TM Act is silent on CPC application, aligning with National Sewing Thread and Mahli Devi, which upheld LPAs absent statutory bars. The court reconciled these precedents by holding that Section 100-A applies only when a special statute adopts CPC appeal rules or when the original decision emanates from a civil court.

The court further addressed the legislative intent behind Section 100-A, noting its aim to limit appeals in civil court matters, as per the CPC’s preamble, which governs “courts of civil judicature.” Extending Section 100-A to all special statutes would overstep its scope, especially for non-civil court authorities like the Registrar. The decisions in Resilient Innovations and V.R. Holdings were upheld as correctly interpreting the 1999 TM Act’s framework, reinforcing that LPAs remain viable absent express exclusion.

Final Decision: The Division Bench overruled Armasuisse’s preliminary objection, holding that the LPAs were maintainable. The court directed that the appeals (LPA 136/2023 and LPA 137/2023) be listed for consideration on their merits on September 19, 2023, affirming that Section 100-A does not bar LPAs against a Single Judge’s judgment under Section 91 of the 1999 TM Act.

Law Settled in This Case: The case established several key principles in trademark and appellate law. First, Section 100-A of the CPC bars further appeals only from decrees or orders of a civil court, as defined under Sections 2(2) and 2(14), and does not apply to decisions of non-civil court authorities like the Registrar of Trade Marks. Second, the Registrar of Trademark does not qualify as a civil court, lacking the attributes of conducting trials under the CPC or Evidence Act, as per the “trappings of a court” test. Third, the 1999 TM Act’s silence on applying CPC rules to appeals, unlike its predecessors, preserves the right to LPAs under the Letters Patent unless expressly barred. Fourth, Section 100-A applies to special statutes only when they explicitly subject appeals to CPC provisions, as in the Indian Succession Act, 1925, but not in the 1999 TM Act. Finally, the court affirmed that Letters Patent remedies remain intact for trademark appeals under Section 91, ensuring an additional layer of judicial scrutiny absent statutory restrictions.

Case Details: Promoshirt SM SA v. Armasuisse and Anr.: September 6, 2023: LPA 136/2023 & LPA 137/2023:2023:DHC:6352-DB:High Court of Delhi:Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

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