Ashiana Ispat Limited Vs. Kamdhenu Limited

Maintainability Vs. Entertainability of Trademark Writ Petitions 

Facts:Ashiana Ispat Limited (Appellant) applied to register a trademark "AL KAMDHENU GOLD" for its products under the Trade Marks Act, 1999. 5 applications were made, and some were accepted and advertised, while others received an examination report (FER) from the Registrar citing certain conflicting trademarks but not all. Kamdhenu Limited (Respondent) claimed that many of its own previously registered trademarks were not cited as similar marks in the Registrar’s process. Instead of opposing the trademark through the standard legal channel, Kamdhenu Limited challenged this process by filing writ petitions in court, alleging procedural lapses by the Registrar and omission in the examination of similar marks.

Main Dispute: Whether the Registrar of Trade Marks properly followed the legal procedures for examining and advertising the trademark applications, given that all potentially conflicting registered trademarks (especially Kamdhenu’s) were not cited or considered in the examination report.

Legal Challenge: Kamdhenu Limited questioned the integrity of the Registrar’s trademark examination, particularly concerning the omission of 16 of its registered marks from the search report, and whether the acceptance/advertsisement of Ashiana Ispat’s trademark applications should be set aside for fresh examination.

Legal Reasoning: The judgment began by explaining the process for trademark registration under the Trade Marks Act and the Trade Marks Rules:

Application is filed under Section 18(1) of Trademarks Act 1999.

Registrar examines it, may accept or refuse it (Section 18(4) of Trademarks Act 1999..

Registrar can withdraw acceptance before registration if mistakes are found (Section 19) of Trademarks Act 1999.

If accepted, Registrar advertises the application (Section 20(1) of Trademarks Act 1999. .

Anyone can oppose within 4 months of advertisement (Section 21(1) of Trademarks Act 1999..

If opposition is decided in applicant’s favour or if no opposition is filed, registration proceeds (Section 23) of Trademarks Act 1999.

Rule 33 of the Trade Marks Rules outlines detailed examination steps, requiring a search of prior similar marks and issuing a First Examination Report (FER) highlighting objections and similar marks. If the applicant does not respond timely, the application may be treated as abandoned.

Maintainability Vs. Entertainability: The court discussed that “maintainability” relates to whether the High Court has basic jurisdiction under Article 226 of the Constitution to hear the petition. “Entertainability” relates to whether the court should exercise this jurisdiction, especially when alternative remedies exist.A writ petition is maintainable if it fits Article 226. Courts have the discretion whether to entertain it, and usually don’t if alternate remedies are available unless exceptional circumstances exist.

The court cited Supreme Court judgments, clarifying that alternate remedy is usually a policy or discretionary bar, not a legal bar, and in exceptional cases (like violation of natural justice, lack of jurisdiction, fundamental rights breach, etc.), a writ can be entertained even if another remedy exists.Registrar’s Duty and Rights of Trademark Owners.The Registrar is duty-bound to cite all prior, confusingly similar marks in the FER and give the applicant a chance to respond.Owners of existing registered marks have a right to see their marks cited in FERs and protect their intellectual property.If Registrar omits similar marks from the examination, affected owners can challenge this, even via a writ petition (i.e., it is actionable if Registrar is negligent).

Court’s Approach to the Case: The Single Judge (previous hearing) had allowed Kamdhenu’s writ petitions and ordered the Registrar to conduct a fresh (de novo) examination of the trademark applications, without formally issuing notice or allowing Ashiana Ispat to file a counter-affidavit.

The appellate court disagreed with this on procedural fairness grounds, stating that Ashiana Ispat should have been allowed to file a counter-affidavit in response, as the Single Judge’s approach was overly summary.

The court clarified that while the writ petition was maintainable, whether it should be entertained (especially given available alternative remedies) required fuller consideration and an opportunity for all parties to make submissions.

The appellate court quashed the Single Judge’s order and directed a fresh hearing, returning the matter to the Single Judge so all parties could be properly heard.

Decision:The appellate court set aside (quashed) the Single Judge’s impugned order.Affirmed that the writ petition was maintainable (not barred by the availability of alternative remedy).Left open the question of entertainability – whether the writ petition should be pursued despite alternative remedies, for the Single Judge to decide after hearing both sides.Directed that Ashiana Ispat (appellant) be given formal notice and time to file a counter-affidavit; Kamdhenu can file a rejoinder.

Case Title: Ashiana Ispat Limited Vs. Kamdhenu Limited & Ors.

Order Date: 03 September 2025

Case Number: LPA 407/2025

Neutral Citation: 2025:DHC:7801-DB

Name of Court: High Court of Delhi

Hon'ble Judges: Justice C. Hari Shankar and 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

Sonani Industries Pvt. Ltd. Vs Mr. Sanjay Jayantbhai Patel

Case Title: Sonani Industries Pvt. Ltd. Vs Mr. Sanjay Jayantbhai Patel & Anr.

Order Date: 04.11.2024

Case Number: C.O.(COMM.IPD-CR) 880/2022

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Ms. Justice Mini Pushkarna

Sonani Industries Pvt. Ltd. (the petitioner, formerly Sonani Jewels Pvt. Ltd.) has filed three rectification petitions seeking cancellation of copyright registrations held by Respondent No. 1 (Mr. Sanjay Jayantbhai Patel). Separately, the petitioner has filed a suit for copyright infringement against Respondent No. 1 in the District Court, Surat, which is pending. On 09.09.2024, the Supreme Court in Special Leave to Appeal (C) 20025/2014 (Sonani Industries Pvt. Ltd. v. Prime Diamond Tech and Ors.) directed the Surat District Court to endeavor to decide the suit within one year. Respondent No. 2 appears to be a government or official party, represented through counsel via video conference.

The petitioner argues that the copyright registrations in favor of Respondent No. 1 are invalid because the mandatory requirement under Rule 70(9) of the Copyright Rules, 2013 was not followed. Specifically, while submitting Form XIV for registration, Respondent No. 1 was required to give notice to the petitioner (as a potential interested party), which was not done. Thus, the petitioner claims the registrations cannot stand and must be struck off from the Copyright Register for non-compliance with statutory provisions. The petitioner relies on Bharat Tea Suppliers v. Gujarat Tea Traders and Another (2021 SCC OnLine BOM 3637) and an order dated 02.05.2024 by a coordinate bench of this court in C.O.(COMM.IPD-CR) 750/2022.

Respondent No. 1 counters that the issues in these petitions overlap with those in the pending Surat infringement suit, so the High Court should await its outcome. Respondent No. 1 asserts full compliance with Rule 70(9), and notes that the copyright is not a public document, so no presumption of infringement or dispute arises automatically. Further, the Surat court found no prima facie case for the petitioner, and even the Supreme Court granted only partial relief (direction to maintain accounts and not divulge copyright info to third parties), denying a full injunction against Respondent No. 1's business.

Considering the submissions, the court found it appropriate to await the decision in the pending copyright infringement suit in the District Court, Surat, before proceeding with the rectification petitions. The matters are re-notified for hearing on 28.04.2025.

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

Kryolan GmbH and Anr. Vs Krelon Cosmetics

Case Title: Kryolan GmbH Vs Krelon Cosmetics and Anr.

Order Date: 01.09.2025

Case Number: CS(COMM) 920/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Ms. Justice Manmeet Pritam Singh Arora

Kryolan GmbH (Plaintiff No. 1, a German company) has used the trademark 'KRYOLAN' as its trade mark, trade name, house mark, and company name since 1945 worldwide, including India, for cosmetics like mascara, gel eyeliner, makeup sponges, lipsticks, and cream blushes. Its Indian wholly-owned subsidiary (Plaintiff No. 2, established 2002) continues this use. The mark is registered in India (No. 601757, Class 3, since 15.07.1993), with additional applications pending.

Defendants (M/s Krelon Cosmetics as No. 1 and Anr. as No. 2) use 'KRELON/KRELON COSMETICS' for identical cosmetics. Plaintiffs sent a cease-and-desist notice on 20.12.2024 demanding stoppage of use or similar marks; defendants replied 06.01.2025 refusing compliance, claiming descriptive adoption. Defendants filed TM application No. 548169 (09.06.2022, Class 3, proposed use, pending under opposition by Plaintiff No. 1) and No. 6114674 (18.09.2023, Class 35, registered since unopposed, but rectification petition filed by Plaintiff No. 1 as unaware at advertisement time). Defendants claim use since 21.11.2022 and 10 years in beauty industry. On distributor site (Maniram Balwant Rai), searching defendants' products suggests plaintiffs', indicating confusion.

The suit seeks permanent injunction against trademark infringement, passing off, dilution, unfair competition, damages, etc., under Trade Marks Act, 1999. Plaintiffs argue 'KRELON/KRELON COSMETICS' (impugned mark) is deceptively similar to 'KRYOLAN'—visually (similar structure), phonetically (sound alike), and conceptually (fanciful marks in identical cosmetics category, Class 3)—likely confusing average consumers into believing defendants' products are authorized/affiliated. Addition of 'COSMETICS' is descriptive and non-distinctive. Defendants' Class 35 registration irrelevant (services, not goods). Plaintiffs' mark is invented/fanciful house mark; defendants' descriptive claim fallacious. Bad faith presumed: Defendants aware of plaintiffs' prior use (sales ₹71.79 crores in 2022-23) yet adopted in 2022. Trade channels/consumers identical, risking misrepresentation. Defendants absent despite advance service.

The court found  Found prima facie case: Plaintiffs prior registered proprietors (No. 601757, Class 3); 'KRYOLAN' invented/fanciful with substantial goodwill/sales; 'KRELON' deceptively similar (visual/phonetic), not descriptive, in identical goods/channels, presuming bad faith awareness. Balance of convenience/irreparable injury favors plaintiffs; public interest in avoiding confusion. Ex parte ad-interim injunction granted until next hearing: Defendants, proprietors/partners/directors, and agents restrained from using 'KRELON/KRELON COSMETICS' or deceptively similar marks/names in Class 3 for cosmetics, infringing 'KRYOLAN'. Notice via all modes on process fee payment, returnable next date; reply within four weeks of notice; rejoinder four weeks thereafter.

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

Jyothy Labs Limited Vs. Gautam Kumar

Case Title: Jyothy Labs Limited v. Gautam Kumar & Anr.

Order Date: 26.08.2025

Case Number: CS(COMM) 893/2025

Name of Court: High Court of Delhi at New Delhi

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

Jyothy Labs Limited (the plaintiff) is a company that markets and sells household essentials, including its flagship product, the 'MAXO GENIUS MACHINE' mosquito repellent machine and refills (launched in 2000). This product is sold under the registered trademark 'MAXO' (in Classes 5, 7, 9, 11, and 21 since 18.07.2000), with a copyright registration (No. A-149826/2023 dated 14.12.2023) for the artwork on the packaging (trade dress), and design registrations (Nos. 332182-001 dated 20.08.2020; 375296-001 and 375295-001 dated 09.12.2022) for the bottle/refill shape.

The defendants (Gautam Kumar as Defendant No. 1 and Anr. as No. 2) are involved in manufacturing and selling spying cameras and digital gadgets. In May 2025, the plaintiff learned that the defendants were tampering with genuine 'MAXO' machines by embedding spy cameras inside them, along with refills containing mosquito repellent liquid, and selling these as "Infringing Products" on platforms like YouTube (@smarsofficial8875), Amazon, Flipkart, and their websites (www.smars.in and www.spyimporter.in). An investigator purchased samples from the defendants' listings (paying ₹2,999 on smars.in, ₹3,860 and ₹3,425 on Amazon/Flipkart via UPI/Paytm), confirming delivery of tampered products to New Delhi on 21-22.05.2025. The defendants concealed the 'MAXO' mark on online listings but delivered products with visible 'MAXO' branding and trade dress, misleading buyers into thinking they were authorized plaintiff products.

The main issue is trademark infringement, copyright infringement, passing off, dilution and tarnishment of the 'MAXO' mark and trade dress, unfair trade practices, unfair competition, disparagement, and false trade description. The plaintiff argues that the defendants' tampering alters the product's condition and functionality (from mosquito repellent to spy device), violating Sections 29, 30(3), and 30(4) of the Trade Marks Act, 1999 (no exhaustion under Section 30(2)(d) due to impairment and legitimate opposition reasons). This creates confusion, misrepresents origin/quality, and exposes the plaintiff to liability for illegal privacy breaches (e.g., sting operations), damaging its reputation and goodwill. The defendants' deliberate concealment online shows bad faith, leading to unjust enrichment from the plaintiff's brand. The suit seeks permanent injunction, damages, accounts, and delivery up. Defendants did not appear.

The court found a prima facie case. Defendants' tampering impairs the product, misappropriates the 'MAXO' mark/trade dress, and alters origin (not covered by Trade Marks Act exhaustion due to changes under Section 30(3)/(4)). Online concealment but visible delivery shows mala fides; infringing products risk illegal use, harming plaintiff's reputation irreparably. Balance of convenience favors plaintiff; no prejudice to defendants. Ex parte ad-interim injunction granted until next hearing: Defendants, assignees, affiliates, licensees, distributors, dealers, stockists, retailers, agents restrained from manufacturing, offering for sale, selling, advertising, or dealing in infringing products (spy cameras in 'MAXO' machines/refills or similar bearing 'MAXO'/deceptively similar marks, infringing trademark/copyright A-149826/2023).

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

GlaxoSmithKline Pharmaceuticals Vs. Chembott Chemicals

GlaxoSmithKline Pharmaceuticals Limited Vs. Chembott Chemicals and Pharmaceutical Private Limited  29.08.2025  CS(COMM) 916/2025 Ms. Justice Manmeet Pritam Singh Arora

GlaxoSmithKline Pharmaceuticals Limited (the plaintiff), a major player in the global healthcare industry and part of the GSK group, has been using and owning the registered trademark 'COBADEX' since 1958 (Registration No. 185987 in Class 5). This mark is used for multivitamin and mineral deficiency medicines, including tablets, capsules, and previously syrups. The plaintiff started using it in India in 1974 and has built strong goodwill through continuous sales and heavy marketing investments. Its products, like COBADEX CZS (containing ingredients such as Pyridoxine Hydrochloride, Nicotinamide, Cyanocobalamin, Folic Acid, Chromium, Zinc, and Selenium), target vitamin and mineral deficiencies in adults. The company has grown its sales significantly over the years and operates in the pharmaceutical sector.

The defendants, Chembott Chemicals and Pharmaceutical Private Limited (Defendant No. 1, a company under the Companies Act, 2013) and its director (Defendant No. 2), are also in the pharmaceutical business. In March 2024, the plaintiff learned of Defendant No. 2's trademark application (No. 6252220) for 'COZIDEX' (the impugned mark), covering similar pharmaceutical products, published in the Trade Marks Journal on 26.02.2024. 

The plaintiff opposed this on 23.04.2024, citing prior rights. Defendant No. 2 filed a counter-statement claiming use of 'COZIDEX' but missed deadlines for evidence, filing a late affidavit on 08.05.2025 with invoices from Defendant No. 1 showing the mark on similar products. Defendant No. 1's GST registration is suspended. The plaintiff sent a cease-and-desist notice on 20.06.2025, but defendants replied on 24.06.2025 denying similarity. The opposition is pending before the Trade Marks Registry. The plaintiff believes defendants are using 'COZIDEX' based on the invoices, though the product is not openly available in the market.

Dispute

The core issue is trademark infringement and passing off. The plaintiff claims 'COZIDEX' is deceptively similar to 'COBADEX'—phonetically, visually, conceptually, and structurally—because defendants altered 'BA' to 'ZI' in the mark. 

 Ex parte ad-interim injunction granted until next hearing: Defendants, their directors, officers, employees, agents, dealers, licensees, affiliates, etc., restrained from manufacturing, selling, displaying, advertising, or marketing (online/offline) any products (syrups or others) under 'COZIDEX' or similar marks deceptively akin to 'COBADEX'. Notice issued returnable next date; reply within four weeks, rejoinder four weeks thereafter. Order XXXIX Rule 3 CPC compliance within two weeks.

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

Centrient Pharmaceuticals Vs Dalas Biotech Limited

This case revolves around a patent infringement dispute in the pharmaceutical industry. The plaintiffs, Centrient Pharmaceuticals Netherlands B.V. and another entity, hold a patent numbered IN 247301. This patent covers a specific process for preparing Amoxicillin Trihydrate, which is a key ingredient used in antibiotics. The plaintiffs filed a commercial suit (CS(COMM) 218/2019) seeking a permanent injunction to stop the defendant, Dalas Biotech Limited, from using or infringing on this patented process. They claimed that the defendant was manufacturing Amoxicillin Trihydrate using a method that violated their patent rights.

The defendant filed a written statement denying the infringement. In paragraph 94 of this statement, they described their manufacturing process for Amoxicillin Trihydrate. However, the plaintiffs argued that this description was vague and full of ambiguities.

The plaintiffs application (I.A. 15057/2019) under Order XI Rule 2 of the Code of Civil Procedure (CPC), 1908, as amended by the Commercial Courts Act, 2016, read with Section 151 CPC.

The main dispute in this application was whether the court should force the defendant to answer the plaintiffs' interrogatories and disclose detailed information about their manufacturing process and regulatory filings.

The defendant opposed, saying the interrogatories were irrelevant to the suit, sought confidential business information, and were just a "fishing expedition" to gather evidence instead of proving the case through trial.

In essence, this was a battle over discovery rights: How much detail must the defendant reveal early in the case to defend against infringement claims, especially when it involves trade secrets and regulatory approvals?

• Burden under Section 104A(1)(b) Patents Act: Plaintiffs must prove infringement first (via product comparison). Their attempt here is to discover the defendant's "exclusive evidence" through fishing—e.g., demanding documents that reveal trade secrets.
• Interrogatories can't replace cross-examination. The "optionality" issues (enzyme, acids, pH) can be tested during trial by questioning the defendant's witnesses on credibility.

The court dismissed the application. It held that directing the defendant to answer the interrogatories would not serve justice, as it amounts to an impermissible roving inquiry. The issues can be resolved at trial through evidence and cross-examination. No merit in the application; it stands dismissed.

This decision emphasizes the limits of discovery in patent suits: Plaintiffs can't use interrogatories to force disclosure of confidential processes without strong proof of relevance, especially when trial mechanisms exist. It protects trade secrets while upholding the burden-shifting under the Patents Act.

Case Title: Centrient Pharmaceuticals Netherlands Vs Dalas Biotech Limited

Order Date: January 27, 2021

Case Number: CS(COMM) 218/2019

Neutral Citation: AIRONLINE 2021 DEL 68

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice V. Kameswar 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

Arteform Designs Private Ltd. Vs. Abrol Engineering Company Pvt. Ltd

When Interrogatories Cross the Line

Factual Background: Arteform Designs Pvt. Ltd. (the plaintiff) entered into a turnkey contract with Abrol Engineering Co. Pvt. Ltd. (the defendant) for the construction of a residential house in Kapurthala, Punjab, for the defendant’s Managing Director.

Under this turnkey arrangement, Arteform was to construct and hand over a fully functional house at a fixed cost of ₹5,000 per square foot (plus taxes). According to the plaintiff, about 80–90% of the project was completed, but when the defendant stopped paying the running bills (RA bills), Arteform stopped further work and filed the present recovery suit.

The defendant, however, questioned the cost of construction and filed an application under Order XI Rule 1 of the Code of Civil Procedure (CPC), seeking the Court’s permission to serve interrogatories (a set of written questions to be answered on oath by the other party).

Core Dispute

The main issue before the Court was:Whether the defendant could compel the plaintiff to disclose details of procurement of goods, vendor names, GST numbers, bills, and payments related to the project by using interrogatories, even when the contract was for a fixed rate of ₹5,000 per square foot.

The Court dismissed the defendant’s applications under Order XI CPC.It held that the interrogatories sought were irrelevant to the dispute, amounted to a fishing inquiry, and could not override the admitted terms of the contract.

Order XI CPC is not meant for fishing inquiries or filling gaps in evidence.

Interrogatories must be directly connected to the issues framed in the suit, and their scope is narrower than cross-examination.

If dissatisfied with performance or quality, a party must file a counter-claim or separate suit, not misuse interrogatories.

Arteform Designs Private Ltd. Vs. Abrol Engineering Company Pvt. Ltd.:Case Number: CS(COMM) 142/2022:High Court of Delhi :Hon’ble Judge: Justice Jasmeet Singh:Order Date: 4 March 2024

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

Essel Sports Pvt. Ltd. Vs. Union of India

Interrogatories Cannot Replace Cross-Examination

Factual Background: Essel Sports Pvt. Ltd., the plaintiff, is the company behind the Indian Cricket League (ICL). The defendants include the Union of India and notably the Board of Control for Cricket in India (BCCI). The plaintiff alleged that BCCI engaged in unfair practices, intimidating and threatening players who were associated with the ICL, thereby damaging the plaintiff’s business interests. During the trial, the plaintiff produced six witnesses, including famous cricketers like Kapil Dev and Kiran More, who testified in support of the plaintiff. Their cross-examination concluded in 2009 and 2010 respectively. The plaintiff thereafter closed its evidence.

Later, BCCI (Defendant No. 5) filed an application under Order XI CPC (Civil Procedure Code) seeking permission to serve interrogatories (a set of written questions that must be answered on oath) to the plaintiff. The reason was that BCCI had received letters in 2012 from Kapil Dev and Kiran More stating they had disassociated themselves from Essel Sports and ICL, and allegedly implying their earlier testimonies may have been given under pressure.

Core Dispute:The dispute before the Court was whether, at such a late stage (after completion of plaintiff’s evidence and cross-examination), BCCI could still serve interrogatories on the plaintiff regarding these two witnesses and their disassociation from the company.

Submissions by the Parties:Defendant No. 5 (BCCI):Argued that Order XI CPC does not limit when interrogatories may be served.Claimed that the plaintiff concealed the fact that Kapil Dev and Kiran More had later disassociated from ICL.Asserted that the interrogatories were necessary for proper adjudication and relied on case laws like:Aluminium Corporation of India Ltd. v. Lakshmi Ratan Cotton Mills Co. Ltd. (AIR 1968 All 601).Smt. Sharda Dhir v. Ashok Kumar Makhija (99 (2002) DLT 350).Canara Bank v. Rajiv Tyagi (166 (2010) DLT 523)

Plaintiff (Essel Sports):Opposed the application as mala fide (bad faith) and an attempt to cover up deficiencies in BCCI’s earlier cross-examinations.Argued that the interrogatories were irrelevant, scandalous, and amounted to abuse of process.Stated that since the witnesses’ cross-examinations had been completed years earlier, their later disassociation letters were not relevant.Submitted that BCCI was trying to delay the trial and engage in a “roving inquiry.”

Court’s Reasoning:Justice Vipin Sanghi carefully analyzed the legal position and facts:

Timing of Interrogatories:Order XI CPC allows interrogatories but they must be relevant and timely.Interrogatories are meant to clarify issues or shorten litigation, not to substitute cross-examination.

Stage of the Case:Plaintiff’s witnesses had been cross-examined and discharged years before the letters surfaced.Evidence was closed, so there was no concealment by the plaintiff.If BCCI wanted to rely on the new letters, they could either produce Kapil Dev and Kiran More as their own witnesses or seek recall of those witnesses for further cross-examination.

Limitations of Interrogatories:Interrogatories cannot be used to reopen evidence or fix gaps in cross-examination.Rule 1 of Order XI clearly restricts interrogatories to matters directly related to issues in the suit.

Distinguishing Cited Cases:The precedents cited by BCCI involved situations where interrogatories were raised before or during trial, not after completion of evidence.Thus, those cases were not applicable here.

Fairness and Justice:Allowing interrogatories at this late stage would be unfair and contrary to natural justice.The Court observed that BCCI was trying to indirectly nullify the testimony of Kapil Dev and Kiran More through interrogatories instead of following the proper legal route.

Final Decision:The Court dismissed BCCI’s application as misconceived and unjustified. The Court held that interrogatories at this stage were not permissible. 

Case Title:Essel Sports Pvt. Ltd. Vs. Union of India

Date of Order:26.08.2013

Case No.: CS (OS) 1566 OF 2007

Name of Court:Delhi High Court

Name of Hon'ble Judge: Shri Vipin Sanghi

Law Settled by the Case:Interrogatories under Order XI CPC cannot be used as a substitute for cross-examination. They must be relevant to issues framed in the suit and cannot be raised at any arbitrary stage. After witnesses are cross-examined and discharged, interrogatories cannot be served to indirectly challenge or discredit their testimony. If fresh facts arise later, the correct remedy is to either recall the witnesses (with court’s permission) or produce them as one’s own witnesses, not to misuse interrogatories.

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

Castrol Limited Vs . Sanjay Sonavane

Castrol Limited Vs . Sanjay Sonavane:CS(COMM) 855/2025:High Court of Delhi:19.08.2025: Hon'ble Judge Justice Tejas Karia

Castrol Limited, a global leader in engine oils and lubricants, sells products in India under its well-known trademarks and packaging. Castrol uses marks like “3X,” “3X PROTECTION,” “3XCLEAN,” and “3 IN 1 FORMULA.” The Defendants, however, claimed exclusive rights over their own “3P” mark and alleged copyright infringement. They threatened Castrol and its distributors with legal proceedings, published a public notice warning the public, and even caused police seizure of Castrol’s genuine products, leading to an FIR against Castrol’s Indian subsidiary and its distributor.

The dispute was whether Castrol’s use of “3X” related marks infringed the Defendants’ “3P” marks or copyright. Castrol argued that the threats were false and unjustified under Section 142 of the Trade Marks Act, 1999 and Section 60 of the Copyright Act, 1957, and sought an injunction against such groundless threats.

The Court held that Castrol’s “3X” marks were completely different from the Defendants’ “3P” marks, and the Defendants could not claim monopoly over the number “3.” The seizure and public notice amounted to groundless threats. The Court found a prima facie case in Castrol’s favour and restrained the Defendants from issuing any further threats or legal actions against Castrol, its Indian subsidiary, or distributors regarding use of the “3X” marks until the next 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

Exphar S A & Anr. Vs. Essphar Private Limited

Exphar S.A. Vs. Essphar Private Limited:CS(COMM) 891/2025High Court of Delhi:26.08.2025:Hon’ble Judge: Justice Tejas Karia

Exphar S.A., a Belgium-based pharmaceutical company, has been using the coined trade name and mark “EXPHAR” since 1981 and selling in India since 1991. It holds trademark registrations in India and internationally. Essphar Pvt. Ltd. adopted the mark “ESSPHAR”, which looked and sounded very similar to “EXPHAR,” used the same red, black, and white color scheme, the red plus (+) sign, and even sold medicines through online platforms like Apollo Pharmacy. Exphar alleged that this imitation was dishonest and risky in the pharmaceutical field where confusion can be dangerous.

Exphar claimed infringement under the Trade Marks Act, 1999 and violation of copyright under the Copyright Act, 1957, arguing that Essphar’s mark was deceptively similar to its own and caused confusion. Essphar opposed, arguing that the Delhi High Court lacked jurisdiction since Exphar was a foreign company and sales were only exports, not within India.

The Court noted that Exphar had sales in India and under Section 56 of the Trade Marks Act, even exports from India count as “use” of the mark in India. The Court found the two marks—“EXPHAR” and “ESSPHAR”—to be visually, phonetically, and structurally similar. Since pharmaceuticals are sensitive products, such similarity could cause serious harm to patients and irreparable damage to Exphar’s goodwill.

Therefore, the Court granted an ad-interim injunction, restraining Essphar from using “ESSPHAR” or any similar mark, and directed removal of its listings from Apollo Pharmacy, JustDial, IndiaMart, PharmaCompass, Tata nexarc, CB Insights, and LinkedIn.

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

Basant Goel Vs. Som Prakash Sethi

Court’s Approach to New Facts Introduced in Rebuttal Affidavits

Facts of the Case  :This case revolves around a civil dispute involving Basant Goel (Plaintiff) and Som Prakash Sethi & Others (Defendants) related to an Agreement to Sell dated 27 June 2021. The core issue is whether the terms of this agreement were modified later, and if any party failed to perform their obligations under it.

During the case proceedings, an important piece of evidence came into focus—a WhatsApp chat dated 21 September 2021 between the parties. The Plaintiff filed a rebuttal affidavit after the completion of evidence by both parties. This late filing included fresh explanations concerning the WhatsApp chat and a specific meeting dated 20 September 2021, where threats were allegedly made, and discussions about forfeiture of earnest money took place.

The Defendants objected strongly to this late evidence, claiming that the Plaintiff tried to introduce facts beyond the original pleadings and delayed dealing with the WhatsApp chat despite knowing about it since the start.

Dispute  :The main dispute was whether the Plaintiff should be allowed to file and rely upon the rebuttal affidavit that introduces new evidence (the 20 September meeting and explanation of the 21 September WhatsApp chat) at such an advanced stage of the trial, given these facts were not mentioned in the original plaint or in the Plaintiff’s initial evidence affidavit.

The Defendants argued that:  - The WhatsApp chat had been in Plaintiff’s knowledge from the beginning since it was filed with the Defendants’ written statement.  - Plaintiff had a full opportunity during their evidence and cross-examination phases to deal with the chat but did not.  - The Plaintiff's filing of the rebuttal affidavit after evidence had closed was an improper attempt to fill gaps and address shortcomings in the earlier evidence.  - The Plaintiff’s case should be confined to the original pleadings, which did not mention this meeting or the WhatsApp discussion explicitly.

The Plaintiff argued that:  - The onus (burden) to prove modification of the agreement lies on the Defendants (Issue No. c), thus Plaintiff had reserved the right to file rebuttal evidence.  - The Plaintiff’s initial evidence affidavit was filed as "Affirmative Evidence," indicating intent to reserve rebuttal.  - A formal separate application for filing rebuttal evidence is not necessary under Order XVIII Rule 3 of the Civil Procedure Code (CPC) 1908.  - The WhatsApp chat had been referred to indirectly and was part of the defense, needing explanation in light of the Defendants’ evidence.  

- The pleadings should be read with a liberal approach, not overly technical, and facts relevant to the dispute should not be excluded on technicalities.

Reasoning by the Court  The Court carefully reviewed the facts and the applicable law. The following points are crucial:

Pleadings and Evidence:The Court examined the plaint (the formal statement of claims) and found it absent of any reference to the WhatsApp chat dated 21 September 2021 or the meeting on 20 September 2021. This meant the Plaintiff was introducing new facts very late.

Opportunity to Deal With Evidence:Though the WhatsApp chat was produced by Defendants with their written statement, the Plaintiff had ample opportunity to address and explain this chat during the evidence phase but chose not to do so. This included cross-examination of a Defendant's witness where the chat was discussed.

Rebuttal Evidence Rules:Order XVIII Rule 3 CPC allows rebuttal evidence to be led without prior leave of the court but must be strictly confined to rebutting the evidence of the other side and not to introduce new facts. The Court observed that the Plaintiff’s rebuttal affidavit introduced entirely new facts (like the meeting and alleged threats) not pleaded earlier.

Liberal Construction of Pleadings:While the Court acknowledged that pleadings should be liberally construed and not interpreted narrowly, this principle does not allow a party to bring in new facts beyond original pleadings at a late stage to gain tactical advantage.

No Sufficient Cause Provided:   The Plaintiff did not provide satisfactory reasons for the delay or for not including these facts earlier. It appeared to the Court that the Plaintiff was trying to patch up defects noticed in the earlier evidence.

Cross Examination and Opportunity: The Plaintiff argued no questions were asked during cross-examination about the WhatsApp chat, but the Court found this was incorrect. Questions related to this chat had indeed been put to both Plaintiff and Defendant witnesses.

Decision  :The Court rejected the Plaintiff’s attempt to file the rebuttal affidavit containing new facts related to the WhatsApp chat and the meeting of 20 September 2021. The Plaintiff failed to show sufficient cause to allow such evidence at the advanced stage of the case.

 Key Legal Provisions Discussed  :Order XVIII Rule 3, Civil Procedure Code 1908: Related to the filing of rebuttal evidence after afffirmative evidence, allowing it only to contradict the evidence already led, and not to introduce new facts. 

Crux of the case:The Plaintiff tried to introduce new claims and explanations through rebuttal evidence at the very late stage of the trial, namely to explain a WhatsApp chat and a meeting where threats were made. However, these claims were not mentioned in the original complaint or the initial evidence. The documents were already with Plaintiff early on, so they had many chances to talk about it but chose not to. The Court held that allowing this late evidence would be unfair and against proper legal procedure. Therefore, the Court did not allow the late rebuttal affidavit and insisted the case proceed to final hearing based on the evidence already admitted.

Case Title: Basant Goel Vs. Som Prakash Sethi

Case Number: CS(COMM) 557/2022

Court: High Court of Delhi

Hon’ble Judge: Justice Manmeet Pritam Singh Arora

Order Date: 27.08.2025

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

Cyril Bath Company Vs. Controller of Patents and Designs

Cyril Bath Company Vs. Controller of Patents and Designs :IPDPTA/8/2025: High Court at Calcutta: Justice Ravi Krishan Kapur:01.09.2025

Dispute: Cyril Bath Company had filed a divisional patent application in India (Application No. 1376/KOLNP/2013). The Controller of Patents rejected the divisional application, holding that modification of claims in a PCT national phase application is not allowed under the Patents Act and Rules. The Controller concluded that such modification could only be sought through amendment, not by filing a divisional application.

Reasons (Court’s Discussion): The Court observed that the Controller’s order was defective because it only quoted provisions (like Sections 10, 11, 16, etc. of the Patents Act) but gave no reasoning. Under law, an order must satisfy the tests of “why” and “what”—the reasoning must explain why the conclusion has been reached. Without reasons, the order becomes unsustainable.

The Court also noted that the Controller had wrongly relied on the Delhi High Court decision in Boehringer Ingelheim without considering the later judgment in Syngenta Ltd. v. Controller of Patents (2023), which had clarified the law.

Decision:The High Court set aside the Controller’s order and remanded the matter back to the Controller of Patents to decide the divisional application afresh in accordance with law, within three months. The Court made it clear that it had not given any opinion on the merits of the divisional application itself.

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)

Hero Ecotech Limited and Another Vs. Hero Cycles Limited

Interplay of Statutory Requirements and Private Agreements in Trademark Infringement Disputes

Facts of the Case:This legal dispute involves several companies and family members from the Munjal business family, centered on the use and ownership of the trademark “HERO” in the manufacturing and marketing of bicycles and related products. The Munjal family business was once unified but diversified over the years into different segments. To manage this complexity and avoid conflicts, the four branches of the Munjal family entered into a Family Settlement Agreement (FSA) and a Trademark and Name Agreement (TMA) in 2010. These agreements clearly divided trademark rights and business domains among the four groups. Specifically, the use of the “HERO” trademark for bicycles was assigned exclusively to one family group (F-4 Family Group), while other groups were allocated different trademark rights related to other products or geographic regions.

Despite these agreements, disputes arose when Hero Ecotech Limited (F-1 Family Group) and associated entities started using the name "HERO ECOTECH" on bicycle products marketed by their group company under the brand name "KROSS." The plaintiffs (Hero Cycles Limited and others, representing the F-4 Family Group) alleged this was in violation of the FSA and TMA, amounts to infringement of the “HERO” trademark in relation to bicycles, and constitutes passing off. The plaintiffs had obtained interim injunctions in earlier proceedings prohibiting the defendants from using the “HERO” mark in bicycle manufacture and sales.

Dispute:The core dispute is whether the defendants violated the injunction and family agreements by using the "HERO ECOTECH" name on bicycle products, which the plaintiffs allege is trademark infringement and amounts to contempt of court. The defendants argued that “HERO ECOTECH LIMITED” was only used as a legal manufacturer’s name on packaging as required by law, not as a trademark or brand. They also contended that the trial court erred in initiating contempt proceedings without following proper procedural requirements, such as instituting a miscellaneous judicial case and permitting evidence.

Legal Provisions Involved: Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC): Prescribes the procedure and consequences for disobedience of any injunction granted by the court, including attachment of property and imprisonment for contempt.

Section 141 of the CPC: Requires the procedure for miscellaneous proceedings to follow the suit trial procedure as far as possible.

Rule 459 (a) (xii) of the Civil Court Rules of Patna High Court: Requires miscellaneous judicial cases such as those under Order XXXIX Rule 2A to be instituted separately.

Trade Marks Act, 1999: Governs protection of registered trademarks against infringement and passing off.

Legal Metrology Act, 2009 and Legal Metrology (Packaged Commodities) Rules, 2011: Mandates specification of manufacturer’s name and address on product packaging.

Reasoning by the High Court:

Procedural Shortcomings: The Court first observed that the trial court had prematurely ordered initiating contempt proceedings without first instituting a separate miscellaneous judicial case as mandated by Rule 459 (a) (xii) of the Civil Court Rules. Further, Section 141 of the CPC requires following suit procedures for evidence and document production in such proceedings, which the trial court bypassed.

Premature Contempt Finding: The court noted that the trial court recorded a prima facie finding of contempt against the defendants before leading evidence or adjudicating the issues, which violates principles of fair play and procedural fairness. The label of “contempt” was inappropriate since the proceedings under Order XXXIX Rule 2A are meant to assess if there has been disobedience or breach of injunction, a question requiring evidence.

Interpretation of Family Agreements: The Court observed that neither the Family Settlement Agreement nor the Trademark and Name Agreement explicitly prohibited the defendants from using their corporate or manufacturer names on products or packaging.

Finality of Supreme Court Orders: The defendants had unsuccessfully challenged earlier injunctions in various courts and the Supreme Court had restored injunctions against the defendants from using the “HERO” mark in bicycle manufacturing and sales. However, the matter of whether the defendants used the mark as a trademark or merely stated their corporate name remained open for further inquiry.

Scope of High Court’s Supervisory Jurisdiction: The High Court, exercising its supervisory power under Article 227 of the Constitution, declined to assume appellate functions or enter into merits and fact-finding. It focused solely on legality and procedural propriety of the trial court’s order.

Decision: The High Court held that the trial court’s order dated 07-09-2019 initiating contempt proceedings against the defendants was an erroneous exercise of jurisdiction for the following reasons:

Failure to institute a separate miscellaneous judicial case as per Rule 459 (a) (xii).Premature recording of contempt finding without evidence and without proper procedure.Inappropriate use of “contempt” label where the question was about breach of injunction warranting inquiry.Failure to consider statutory mandate of Legal Metrology Act on manufacturer name disclosure.Procedural irregularities that go to root of jurisdiction.The Court accordingly set aside the trial court’s impugned order and allowed the civil miscellaneous petition. It also reminded the trial court to expedite disposal of the underlying trademark suit.

Case Title: Hero Ecotech Limited and Another Vs. Hero Cycles Limited and Others

Order Date: 03-09-2025

Case Number: Civil Mis No.1711 of 2019

Name of Court: High Court of Patna

Name of Hon'ble Judge: Honourable Mr. Justice Arun Kumar Jha

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

Mangalam Organics Ltd Vs N Ranga Rao And Sons Pvt Ltd

When Courts Won't Go Behind Trademark Registration

Facts:The case involves Mangalam Organics Ltd (the Plaintiff), a company dealing in camphor-based products, suing N Ranga Rao And Sons Pvt Ltd (the Defendant), another company in the fragrance and sanitary products industry, for trademark infringement and passing off. The Plaintiff claimed it created the trademark "CAMPURE" (and its stylized logo) around March 2017 for camphor-related items like deodorants, air fresheners, soaps, hair products, and sanitary toiletries where camphor is the key ingredient. The Plaintiff registered this mark in Classes 3, 4, and 5 under the Trade Marks Act, 1999, with registrations dating back to 2017, and these remain valid. 

In 2014, the Plaintiff launched a unique cone-shaped camphor product under its "MANGALAM" brand, wrapped in non-woven fabric, and started using "CAMPURE" for this in 2017. In December 2022, the Plaintiff learned the Defendant might launch a similar cone-shaped product and sent a cease-and-desist notice. The Defendant replied, denying any trademark issues and noting the Plaintiff's cone shape wasn't uniquely registered. No such product appeared from the Defendant at that time.

In July 2024, while checking trademark records, the Plaintiff discovered the Defendant's registration for "AIR KARPURE" (No. 4732154, dated November 4, 2020, in Class 5, on a proposed-to-be-used basis) and similar device marks. The Defendant's website (www.karpure.in) showed use of "AIR KARPURE" (with "AIR" in small font and "KARPURE" prominent) for camphor products like air fresheners, pouches, tablets, mosquito repellents, and personal care items. The Plaintiff filed for rectification/cancellation of the Defendant's mark on August 1, 2024, and the Defendant countered in January 2025, claiming adoption in 2020 and use since 2022.

The Defendant, established in 1948 as a family business and incorporated in 2014, has well-known marks like "CYCLE" (recognized by courts) and uses taglines emphasizing "purity" (e.g., "Purity of Prayers"). It claimed "KARPURE" combines "Karpura" (Sanskrit for camphor) and "Pure," adopted honestly in 2020. The Defendant has registrations in Classes 5 and 11, with sales of Rs. 479 lakhs in 2024-25 under the mark. It argued no infringement suit lies against a registered proprietor and accused the Plaintiff of concealing an opposition to its own "CAMPURE" registration by a third party (Lifestar Pharma for "CALAPURE"), where the Plaintiff had argued no monopoly over "PURE" and settled by restricting goods. The Defendant also claimed dissimilarity in marks and delay in the Plaintiff's suit.

In reply, the Plaintiff argued the Court could question the Defendant's registration at the interim stage due to fraud (e.g., wrong class), similarity in marks as wholes, no estoppel from prior opposition (as "CALAPURE" was dissimilar), no delay (2022 notice was only for cone shape), and jurisdiction as products are sold online in Bombay.

Dispute:The main dispute was whether the Defendant's "AIR KARPURE"/"KARPURE" marks infringed the Plaintiff's "CAMPURE" mark or amounted to passing off. The Plaintiff sought an interim injunction to stop the Defendant from using similar marks, logos, or domain names. 

Key issues:- Similarity: Were the marks visually, phonetically, structurally, or conceptually similar enough to cause confusion? - Validity of Defendant's Registration: Could the Court go behind the registration at the interim stage and find it invalid (e.g., ex facie illegal or fraudulent under Sections 9 and 11 of the Trade Marks Act, 1999)?- Infringement: Under Section 29 of the Trade Marks Act, 1999, does use by a registered proprietor constitute infringement?- Passing Off: Did the Plaintiff prove goodwill/reputation by 2022, misrepresentation by the Defendant, and likely damage?- Suppression: Did the Plaintiff hide facts about its own prior opposition, leading to estoppel or denial of relief?- Delay/Laches/Acquiescence: Was the suit delayed after the 2022 notice?- Jurisdiction: Did the Bombay High Court have jurisdiction for passing off, given online sales?

The Plaintiff argued phonetic similarity ("CAMPURE" vs "KARPURE"), copied capital "P," similar goods/channels, prior use since 2017, and fraud in Defendant's Class 11 registration (for apparatus, but used for soaps). The Defendant countered with dissimilarity, honest adoption from Sanskrit and "pure" theme, no monopoly on "PURE," valid registrations, no infringement against registered proprietors (Sections 28(3) and 30(2)(e)), suppression by Plaintiff, and no goodwill shown for 2022.

Detailed Reasoning: The Court began by noting this was an interim application for injunction in a trademark infringement and passing off suit. It summarized facts and submissions from both sides, citing various precedents.

On maintainability against a registered proprietor: Since both parties are registered, no infringement remedy lies (citing Corona Remedies Pvt Ltd vs Franco-Indian Pharmaceuticals Pvt Ltd and S Syed Moideen vs Sulochana Bai). The pleadings showed the Plaintiff relied on "deceptive similarity" from Section 29, but this doesn't apply between registered proprietors.

On validity of Defendant's registration: The Plaintiff challenged it under Sections 9(2)(a) (absolute grounds, e.g., deceptive marks) and 11 (relative grounds, e.g., similarity to earlier mark causing confusion). The Court noted registration confers exclusive rights if valid (Section 28), but between identical/similar registered marks, no exclusive right against each other (Section 28(3)) and no infringement (Section 30(2)(e)). Citing Lupin Ltd vs Johnson and Johnson (Full Bench), the Court can question validity at interim stage only in exceptional cases where registration is ex facie illegal, fraudulent, or shocks the conscience—not just an arguable case. The burden is heavy on the challenger.

Comparing marks: The Court reproduced rival marks and found no ex facie illegality. Plaintiff's "CAMPURE" (block letters, tall "P" in elongated shape) vs Defendant's "KARPURE" (cursive, flower "K," contiguous "P"). Visual, structural, and artwork differences (e.g., no slurring "r" to "m"); phonetic dissimilarity; no confusion likely among educated consumers for these products. Defendant's registration passed Sections 9/11 scrutiny (no opposition from Plaintiff). No fraud shown—Class 5 overlaps with Class 3 for fresheners/deodorizers; classifications are administrative (citing Allied Auto Accessories Ltd vs Allied Motors Pvt Ltd). Honest adoption from "Karpura" +"Pure" (Defendant's theme). Precedents like Pidilite cases (exact copying) didn't apply here.

On suppression: Plaintiff hid opposition to its "CAMPURE" by third party ("CALAPURE"), where it argued no monopoly on "PURE" and settled by restricting goods. This is material; non-disclosure disentitles discretionary relief (citing Phonepe Pvt Ltd vs Resilient Innovations Pvt Ltd).

On passing off: Relevant date is Defendant's adoption (2022). Plaintiff must prove goodwill/reputation by then, misrepresentation, and damage. Sales figures/ad expenses were for all camphor products since 2014, not specifically under "CAMPURE" for 2022—no standalone proof of distinctive reputation. No specific pleading on which Defendant products pass off as Plaintiff's (cone shape excluded). Packaging dissimilar (colors, look); no misrepresentation or confusion (citing Ruston & Hornsby Ltd vs Zamindara Engineering Co; no delay defense as mere delay insufficient without acquiescence).

On other points: No delay/laches (2022 notice was for cone shape); jurisdiction exists due to online sales in Bombay. But overall, no prima facie case for injunction.

Decision:The Court dismissed the interim application, refusing the injunction. The Plaintiff failed to prove ex facie invalidity of Defendant's registration or passing off. The Defendant can continue using its registered mark. 

Case Title: Mangalam Organics Ltd Vs N Ranga Rao And Sons Pvt Ltd

Order Date:September 3, 2025

Case Number:Commercial IP Suit No. 194 of 2025

Neutral Citation:2025:BHC-OS:14413

Name of Court:High Court of Judicature at Bombay

Name of Hon'ble Judge:Sharmila U. Deshmukh, J.

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

Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai

Section 29 (4) of Trademarks Act 1999 applies only to dissimilar goods and not relevant to identical services

Introduction

In the realm of intellectual property, where brands battle for supremacy, Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others emerges as a landmark showdown before the Supreme Court of India. Decided on January 19, 2022, this case pits a global hospitality giant against a local hotel operator over the use of the trademark "RENAISSANCE." The dispute encapsulates the tension between statutory trademark rights and claims of honest use, weaving a narrative of legal precision, commercial identity, and judicial interpretation. The Supreme Court’s ruling not only resolves a contentious infringement claim but also illuminates the contours of the Trade Marks Act, 1999, offering a masterclass in statutory application and trademark protection in India’s evolving commercial landscape.

Detailed Factual Background

Renaissance Hotel Holdings Inc., a Delaware-based corporation, stands as a titan in the global hospitality industry, operating under the trademark "RENAISSANCE" since 1981. This mark, registered in India under Class 16 (Registration No. 610567) for printed materials and Class 42 (Registration No. 1241271) for hotel and related services, has adorned its hotels, spas, and merchandise worldwide, including establishments in Mumbai and Goa since 1990. With an annual advertising budget of US$14 million and a domain name (www.renaissancehotels.com), the appellant asserts a formidable trans-border reputation, claiming "RENAISSANCE" as a distinctive symbol of its luxury hospitality empire.

The respondents, led by B. Vijaya Sai, operate two modest hotels in Bangalore (Kadugodi) and Puttaparthi under the name "SAI RENAISSANCE." Devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba, they adopted this name in 2001, believing the latter to be a reincarnation of the former—thus, "renaissance" symbolizing rebirth. Their hotels cater primarily to Sai Baba devotees, offering vegetarian fare sans alcohol, a stark contrast to the appellant’s five-star offerings. The respondents’ use of "SAI RENAISSANCE" came to the appellant’s attention in 2008 via the website www.sairenaissance.com, prompting an investigation that revealed alleged copying of signage, business cards, and the "RENAISSANCE" mark, suggesting an unauthorized affiliation.

Detailed Procedural Background

The appellant initiated legal action in 2009, filing O.S. No. 3 of 2009 before the Principal District Judge, Bangalore Rural District, seeking a permanent injunction, delivery of infringing materials, and damages of Rs. 3,50,000. On June 21, 2012, the trial court partly decreed the suit, granting an injunction against the respondents’ use of "SAI RENAISSANCE" or any mark incorporating "RENAISSANCE" in Classes 16 and 42, but denying damages and delivery-up claims. The respondents appealed to the High Court of Karnataka in Regular First Appeal No. 1462 of 2012. On April 12, 2019, a Single Judge reversed the trial court’s decree, dismissing the suit on grounds of no trans-border reputation, honest use by the respondents, and no likelihood of confusion due to differing customer bases. Aggrieved, the appellant escalated the matter to the Supreme Court via Civil Appeal No. 404 of 2022, arising from SLP(C) No. 21428 of 2019, culminating in the January 19, 2022, judgment by a three-judge bench.

Issues Involved in the Case

The case revolves around several critical issues. First, whether the respondents’ use of "SAI RENAISSANCE" infringes the appellant’s registered trademark "RENAISSANCE" under Sections 29(2)(c), 29(3), 29(5), or 29(9) of the Trade Marks Act, 1999. Second, whether the High Court erred in applying Section 29(4) (for dissimilar goods/services) instead of provisions for identical marks and services. Third, whether the respondents’ use qualifies as honest concurrent use under Section 30, shielding them from infringement. Fourth, whether the appellant’s delay in filing the suit constitutes acquiescence, barring relief. Finally, whether "RENAISSANCE"’s generic nature or the respondents’ addition of "SAI" negates infringement.

Detailed Submission of Parties

The appellant, represented by Senior Counsel K.V. Viswanathan, argued that the respondents’ use of "SAI RENAISSANCE" infringed its registered mark under multiple provisions of Section 29. Under Section 29(2)(c), the identical mark and services (hotels) triggered a statutory presumption of confusion per Section 29(3). Section 29(5) was invoked as the respondents used "RENAISSANCE" in their trade name, a direct infringement. Section 29(9) applied due to phonetic and visual similarity. Viswanathan contended that the High Court misapplied Section 29(4), which requires reputation and detriment only for dissimilar goods, irrelevant here given the identical services. Citing precedents, he argued that in infringement cases, confusion need not be proven when marks are identical, and the prefix "SAI" did not mitigate the violation.

The respondents, represented by B.C. Sitarama Rao, countered that the suit was untenable due to delay and the appellant’s lack of legal personhood. They portrayed "RENAISSANCE" as a generic dictionary term, incapable of exclusive appropriation, and justified "SAI RENAISSANCE" as an honest tribute to Sai Baba’s reincarnation, used since 2001 without appellant awareness until 2009. They highlighted distinct customer bases—devotees versus luxury travelers—and differing services (vegetarian versus full-service), negating confusion. Claiming honest concurrent use under Section 12 and protection under Section 30, they relied on precedents to argue that their use neither exploited nor harmed the appellant’s mark.

Detailed Discussion on Judgments Cited by Parties and Their Context

The appellant cited Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], where the Supreme Court upheld an injunction against a similar mark in the same trade, emphasizing protection of goodwill. In Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727], the Court ruled that in infringement cases, identical mark use warrants an injunction without proving confusion, distinguishing it from passing off. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [[1965] 1 SCR 737] reinforced that close similarity in marks negates the need for further evidence in infringement actions. Midas Hygiene Industries (P) Limited v. Sudhir Bhatia [(2004) 3 SCC 90] underscored that injunctions typically follow infringement, irrespective of delay unless adoption is dishonest.

The respondents relied on Khoday Distilleries Limited v. Scotch Whisky Association [(2008) 10 SCC 723], which addressed acquiescence in rectification proceedings, not infringement, rendering it inapposite. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited [(2018) 9 SCC 183] distinguished dissimilar marks and goods (milk versus restaurants), unlike the identical services here. Corn Products Refining Co. v. Shangrila Food Products Limited [[1960] 1 SCR 968] and Neon Laboratories Limited v. Medical Technologies Limited [(2016) 2 SCC 672] dealt with distinct contexts (opposition and interim injunctions), offering limited relevance.

Detailed Reasoning and Analysis of Judge

Justice B.R. Gavai, authoring the Supreme Court’s opinion, meticulously dissected the High Court’s errors. The Court traced the evolution of trademark law from the 1940 Act to the 1999 Act, emphasizing the latter’s intent to harmonize global trade practices and prohibit unauthorized use of registered marks in trade names. Under Section 29(2)(c), the identical mark "RENAISSANCE" and identical services (hotels) triggered a presumption of confusion under Section 29(3), rendering further proof unnecessary. Section 29(5) applied as "RENAISSANCE" formed part of the respondents’ trade name, and Section 29(9) covered phonetic and visual similarity, amplifying the infringement.

The High Court’s reliance on Section 29(4) was deemed a misstep, as it pertains to dissimilar goods/services and requires reputation and detriment—irrelevant here given the identical services. The Court criticized the High Court’s focus on customer classes and confusion, citing Ruston & Hornsby to affirm that infringement hinges on mark use, not deception likelihood. The respondents’ Section 30 defense failed, as honest use required both fair practice and no detriment, conditions unmet given the unauthorized adoption. Textual and contextual interpretation, per Reserve Bank of India v. Peerless [(1987) 1 SCC 424], and holistic statutory reading, per Balasinor Nagrik Cooperative Bank [(1987) 1 SCC 606], underscored the High Court’s fragmented approach, ignoring legislative intent.

Final Decision

The Supreme Court allowed the appeal, quashing the High Court’s judgment of April 12, 2019, and reinstating the trial court’s decree of June 21, 2012. The respondents were restrained from using "SAI RENAISSANCE" or any mark incorporating "RENAISSANCE" in Classes 16 and 42, affirming the appellant’s exclusive rights.

Law Settled in This Case

The judgment clarifies that under Section 29(2)(c) and (3), identical marks and goods/services presume confusion, mandating injunctions without further evidence. Section 29(5) prohibits use of a registered mark in trade names, and Section 29(9) extends protection to phonetic/visual similarity. Section 29(4) applies only to dissimilar goods, requiring reputation and detriment, not relevant to identical services. Section 30’s honest use defense demands both fair practice and no detriment, a conjunctive test. The ruling reinforces statutory primacy in infringement actions, distinguishing them from passing off’s common law roots.

Case Title: Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai and Others
Date of Order: January 19, 2022
Case No.: Civil Appeal No. 404 of 2022 [Arising out of SLP(C) No. 21428 of 2019]
Name of Court: Supreme Court of India
Name of Judges: Justice L. Nageswara Rao, Justice B.R. Gavai, Justice B.V. Nagarathna

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

Maryam Bee Versus Shuibham Jain and Ors

Impleadment of Third Parties in Specific Performance Suits

The case titled Maryam Bee versus Shuibham Jain and Ors., with Case Number FAO(OS) (COMM) 199/2024 : 2025:DHC:7318-DB High Court of Delhi at New Delhi on 26 August 2025 by Hon'ble Mr. Justice Anil Ksheterpal and Hon'ble Mr. Justice Harish Vaidyanathan Shankar.

Detailed Summary of the Case

Facts

The underlying dispute originates from a commercial suit for specific performance of an Agreement to Sell (ATS) dated 27 December 2022, concerning a property admeasuring 82.5 square yards, bearing Municipal No. 1806 (Mezzanine Floor to Second Floor with roof rights), Ward No. 4, Chandni Chowk, Dariba Kalan, New Delhi, 110006 (referred to as the "suit property"). The plaintiffs in the original suit (Respondent Nos. 1 to 3 herein, namely Shuibham Jain and others) filed CS (Comm) No. 590/2023 against the appellant, Maryam Bee, seeking specific performance of the ATS. According to the plaintiffs, the ATS was executed for a total sale consideration of Rs. 7,00,00,000 (Rupees Seven Crores Only), and they had made partial payments, but the appellant failed to execute the sale deed in their favor, necessitating the suit.

The appellant (Maryam Bee), however, contended that the total sale consideration was actually Rs. 9,00,00,000 (Rupees Nine Crores Only), as an additional ATS for Rs. 2,00,00,000 (Rupees Two Crores Only) was executed on the same date (27 December 2022). She claimed that the plaintiffs' failure to pay the full amount prevented her from executing the sale deed.

During the pendency of this suit, Respondent No. 4 (the brother-in-law of the appellant) filed an application under Order I Rule 10 of the Code of Civil Procedure, 1908 (CPC), being I.A. No. 23592/2023, seeking to be impleaded as a party to the suit. Respondent No. 4 claimed to be a co-owner of the suit property to the extent of 50%, along with his brother Abdul Malik (the appellant's husband). He asserted that the appellant's ownership claim was based on two Gift Deeds dated 23 August 1981 executed by Late Smt. Zubeda Khatoon and Late Sh. Sheikh Abdul Sattar Sahib (the appellant's mother-in-law and father-in-law, respectively). In contrast, Respondent No. 4 argued that the property was co-shared between him and Abdul Malik.

On 7 May 2024, the learned Single Judge of the Delhi High Court allowed this impleadment application, observing that Respondent No. 4 appeared to have some interest in the property, and excluding him could lead to multiplicity of litigation and conflicting rulings. Aggrieved by this order (specifically the portion allowing impleadment), the appellant filed the present appeal under Order XLIII Rule 1 CPC read with Section 10 of the Delhi High Court Act, 1966 (DHC Act). The appeal was reserved on 6 August 2025 and pronounced on 26 August 2025.

Notably, the plaintiffs (Respondent Nos. 1 to 3) opposed the impleadment in the original application and supported the appellant's claim of sole ownership in the appeal. They had separately challenged another portion of the impugned order (regarding a deposit direction) in FAO(OS)(COMM) 167/2024, which was dismissed on 6 August 2024, rendering the impleadment final as against them.

Dispute

The primary dispute in this appeal revolves around the maintainability and propriety of impleading Respondent No. 4 as a defendant in a suit for specific performance of the ATS. The appellant argued that:

• A third party or stranger to the contract cannot be impleaded in a specific performance suit merely to avoid multiplicity of suits, as it would impermissibly enlarge the scope of the suit from enforcing a contract to determining title and possession.
• Respondent Nos. 1 to 3, as dominus litis (masters of the suit), opposed the impleadment, and their stance should be respected.
• The impleadment converts the suit into one for title, which is not permissible.

In opposition, Respondent No. 4 contended:

• The impugned order is not appealable under Order XLIII Rule 1 CPC, and Section 10 of the DHC Act cannot be invoked due to Section 13(2) of the Commercial Courts Act, 2015 (CCA). He relied on cases like Kandla Export Corpn. v. OCI Corpn. (2018) 14 SCC 715, M.V. Polaris Galaxy v. Banque Cantonale De Geneve (2024) 5 SCC 750, Trex India Pvt. Ltd. v. CDE Asia Limited 2023 SCC OnLine Del 2388, and Alka Traders v. Cosco India Ltd. 2020 SCC OnLine Del 3694.
• Impleadment in specific performance suits depends on facts and circumstances, and no rigid rule prohibits it. He cited Sumtibai v. Paras Finance Co. (2007) 10 SCC 82 and Rajesh Kumar Arora v. Smt. Shila 2016 SCC OnLine Del 1277.
• The impugned order had attained finality against the plaintiffs, as their separate appeal was dismissed.

A preliminary objection was raised on the appeal's maintainability under the CCA and CPC provisions.

Reasoning

The Division Bench of the Delhi High Court, comprising Justices Anil Ksheterpal and Harish Vaidyanathan Shankar, first addressed the preliminary objection on maintainability. They distinguished the relied-upon cases (Kandla Export, M.V. Polaris Galaxy, Trex India, and Alka Traders), noting that those dealt with arbitration appeals, admiralty suits, rejection of plaints, or ex parte proceedings, which were inapplicable here. Instead, relying on Gurmauj Saran Baluja v. Mrs. Joyce C. Salim 1988 SCC OnLine Del 295 and Supreme Court precedents like Shah Babulal Khimji v. Jayaben D. Kania (1981) 4 SCC 8 and Jugal Kishore Paliwal v. S. Sat Jit Singh (1984) 1 SCC 358, the Bench held that the impugned order qualifies as a "judgment" under Section 10(1) of the DHC Act. It affects substantive rights (e.g., enlarging the suit's scope and forcing a de novo trial), making the appeal maintainable even if not expressly listed under Order XLIII CPC.

On merits, the Bench analyzed Order I Rule 10(2) CPC, which allows impleadment only if a party's presence is necessary for complete adjudication of the issues involved. They emphasized that suits for specific performance are contract-centric, adjudicating enforceability between contracting parties, and result in judgments in personam (not in rem). Citing the Supreme Court's seminal ruling in Kasturi v. Iyyamperumal (2005) 6 SCC 733, the Bench reiterated that impleading a third party claiming adverse title enlarges the suit into one for title/possession, which is impermissible. The two tests from Kasturi for a "necessary party" were applied: (i) right to relief against them in the controversy, and (ii) inability to pass an effective decree without them. A "proper party" requires their presence for effective adjudication.

The Bench distinguished Sumtibai (supra), where impleadment was allowed due to prima facie semblance of title via a registered sale deed involving the defendant's legal representatives (LRs), noting it was fact-specific and not a blanket exception. Similarly, Rajesh Kumar Arora was deemed inapplicable, as it involved multiple applications, pending inter se suits among parties, and the appeal on impleadment was dismissed without merit analysis.

The Bench concluded that Respondent No. 4, as a stranger to the ATS, failed the tests under Order I Rule 10 CPC. His impleadment would introduce collateral title issues, contrary to precedents like Anil Kumar Singh v. Shivnath Mishra (1995) 3 SCC 147, Vijay Pratap v. Sambhu Saran Sinha (1996) 10 SCC 53, and Bharat Karsondas Thakkar v. Kiran Construction Company (2008) 13 SCC 658. The learned Single Judge's reasoning (potential interest and multiplicity avoidance) was flawed, as it overlooked the suit's limited scope. Even assuming Respondent No. 4's prima facie interest, it did not make him necessary or proper for adjudicating the contract's enforceability.

Decision

The appeal was allowed, and the impugned order dated 7 May 2024 (allowing I.A. No. 23592/2023) was set aside, thereby reversing the impleadment of Respondent No. 4 as Defendant No. 2 in CS (Comm) No. 590/2023. Respondent No. 4 was granted liberty to pursue his claims via an independent suit before a competent court. The appeal and pending applications were disposed of accordingly, with no other submissions noted from the parties.

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 Title for This Article

": Delhi High Court Sets Aside Order Allowing Co-Ownership Claim in Contract Dispute"

Karim Hotels Pvt. Ltd. Vs. AL Kareem

Balancing Prior Use and Honest Concurrent Adoption in Trade Mark Rectification

Facts: Karim Hotels Pvt. Ltd., a Delhi-based restaurant company, claimed to have used the trademark “KARIM/KARIM’S/KAREEM” since 1913 for their non-vegetarian restaurant business, mainly in Delhi and the NCR, with plans to expand. Incorporated in 1987, they held multiple trademark registrations and provided media articles (Rediff.com 2005, New York Times 2012) and financial records (2003–2021) to prove their reputation.

The first respondent, Al Kareem, a Hyderabad-based hotel, used the trademark “AL KAREEM” (registered under No. 3385555 in Class 43 for restaurant services). They claimed use since 1965, supported by an affidavit from Abdul Hameed Khan, a 1996 Mutton Supply Contract, a 1996 receipt, a 2016 Zomato toolkit, and 2018 FSSAI licenses. Their 2016 trademark application was initially “proposed-to-be-used,” but a 2017 reply claimed use since 2001.

Karim Hotels sought to remove “AL KAREEM” from the Trade Marks Register under Sections 47, 57, and 125 of the Trade Marks Act, 1999, arguing it was too similar to their mark and wrongly registered. Al Kareem countered that their mark was distinct, used honestly in Telangana, and caused no harm to Karim Hotels.

Dispute: The main issue was whether “AL KAREEM” should be removed from the register due to deceptive similarity with “KARIM” or improper registration. Karim Hotels claimed prior use and national rights, while Al Kareem argued honest concurrent use and geographic separation.

Person Aggrieved (Sections 47 and 57):Sections 47 and 57 allow a “person aggrieved” to seek trademark removal or rectification if harmed by the mark’s presence. Arguments: Al Kareem argued Karim Hotels wasn’t aggrieved, as their businesses were in different regions (Delhi vs. Telangana), citing Toshiba (2009). Karim Hotels claimed pan-India trademark rights. Court’s Reasoning: Citing Hardie Trading (2003), the court broadly interpreted “person aggrieved.” Since both were in the restaurant business and Karim Hotels held registered marks, they qualified as aggrieved due to potential rights restrictions.

Section 47: Non-Use: Legal Provision: Section 47 allows removal for non-use in the five years and three months before the petition. Arguments: Karim Hotels questioned Al Kareem’s use since 1965, noting inconsistencies in their claims. Al Kareem provided documents showing use. Court’s Reasoning: Al Kareem’s 1996 contract, receipt, 2016 Zomato toolkit, and 2018 licenses proved use, defeating the Section 47 claim.

Section 57: Wrongful Registration: Legal Provision: Section 57 allows rectification for wrongful or confusing registrations. Arguments: Karim Hotels claimed use since 1913 and argued “AL KAREEM” was deceptively similar, citing S. Syed Mohideen (2016). Al Kareem claimed honest use since 1965, supported by evidence, and geographic limitation, citing London-Rubber (1963) and Section 12.Court’s Reasoning: Karim Hotels’ 1913 claim lacked evidence linking them to earlier users. Al Kareem’s evidence of use since 1996 was sufficient, and their geographic limitation reduced confusion. The Petitioner failed to prove deceptive similarity or wrongful registration.

Section 12: Honest Concurrent Use:Legal Provision: Section 12 allows registration of similar marks if used honestly and concurrently. Court’s View: Al Kareem’s honest use in Telangana supported retaining their mark. Decision: The mark remains on the Register but with an express geographical limitation: This protects the respondent under Sections 12 and 35 while addressing the petitioner's concerns about dilution.

Case Title:  Karim Hotels Pvt. Ltd. Vs. AL Kareem and The Registrar of Trade Marks;

Order Date: 29-07-2025;

Case Number: (T)OP(TM) No. 406 of 2023;

Neutral Citation: 2025:MHC:1859;

Name of Court: High Court of Judicature at Madras;

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