Sequenom Inc and Anr. Vs Controller of Patents

Case Title: Sequenom Inc and Anr. Vs Controller of Patents

Order Date: 9th October 2025

Case Number: C.A.COMM.IPD-PAT 132022 and C.A.COMM.IPD-PAT 4482022

Neutral Citation: 2025:DHC:132022

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Justice Prathiba M. Singh

Fact:

Sequenom Inc., a company registered in the United States, along with its affiliate Sequenom Center for Molecular Medicine, filed two Indian patent applications related to non-invasive prenatal testing (NIPT) methods. These methods involve analyzing fetal nucleic acids present in maternal blood samples to detect fetal abnormalities such as aneuploidy (chromosomal abnormalities), sex determination, and other genetic traits without invasive procedures like amniocentesis. The applications claim methods of methylation-based enrichment of fetal DNA to isolate and analyze specific genetic markers through DNA sequencing and amplification techniques. The applications originated as early as 2011 and 2012 with U.S. priority claims and underwent multiple rounds of claim amendments during prosecution to address objections.

Procedural Detail:

The Indian Patent Office issued First Examination Reports raising objections on multiple grounds, including lack of inventive step, and specifically non-patentability under Sections 3(b), 3(d), 3(i), and 3(j) of the Patents Act, 1970. The rejections were upheld in orders dated 12th December 2019 and 20th January 2020, primarily on the basis that the claimed inventions fall under the exclusion of patentability under Section 3(i), which excludes diagnostic methods from patent protection. The applicants appealed these refusals under Section 117A of the Patents Act to the Delhi High Court. Given the common issue of interpretation of Section 3(i), these appeals were heard in a batch along with other landmark cases including EMD Millipore Corporation. The proceedings included extensive submissions, including those from an appointed Amicus Curiae, and the judgment was reserved on 21st December 2024 and pronounced on 9th October 2025.

Dispute:

The central dispute revolved around the scope and application of Section 3(i) of the Indian Patents Act, 1970, relating to the exclusion from patentability of diagnostic methods. The appellants contended that their invention relates to a non-invasive screening test (NIPT) rather than a diagnostic method practiced on the human body and therefore should not fall under Section 3(i). They emphasized that the methods merely provide preliminary data and risk assessments without constituting definitive medical diagnosis or treatment. On the other hand, the Patent Office represented by the CGSC argued that the test claims to detect fetal abnormalities with high accuracy and results in clinical decisions, thus qualifying as diagnostic methods excluded from patentability. They contended that Section 3(i) does not distinguish between in vivo and in vitro methods and captures any method intended for diagnosis or treatment performed on humans or animals. The scope of exclusion includes methods practiced in laboratories on human samples having diagnostic purposes. The issue of inventive step was also raised but not primarily decided.

Detailed Reasoning:

The court undertook a detailed examination of the language of Section 3(i), which excludes from patentability "any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals." It reviewed precedents and legislative history including the amendments introduced post-TRIPS, the underlying public policy to safeguard freedom of medical practitioners from patent restrictions, and the need to balance this against incentivizing innovation.

Comparative analysis with foreign laws was undertaken with detailed references to Section 4A of the UK Patents Act 1977 and Article 53(c) of the European Patent Convention (EPC) 2000, both of which exclude methods of treatment or diagnosis practiced on the human or animal body but expressly allow patents for substances or compositions for use in such methods. The Enlarged Board of Appeal decisions of the EPO in Cases G 000104 and G 000107 were a key focus, elucidating that diagnostic methods are multi-step processes involving collecting and comparing data, followed by identifying deviations and making deductive medical evaluations. Such multi-step diagnostic methods practiced on the human or animal body require professional medical judgment and carry health risks, which justifies their exclusion.

The court clarified that the exclusions apply narrowly to processes that are core medical activities involving intellectual diagnostic decision-making performed on living bodies. Ancillary or supporting processes, especially in vitro laboratory techniques without final diagnosis or treatment steps, fall outside the exclusion and qualify for patent protection. Further, diagnostic tools, instruments, machines, and products remain patentable if they fulfill patentability criteria.

The court delved into the specifications and claims of the patent applications, noting that the inventions relate to in vitro non-invasive procedures analyzing fetal DNA from maternal blood without direct interaction with the body and without final diagnostic conclusions. The inventions primarily relate to identifying probabilities and risks, distinguishing them from definitive diagnostic processes. The court highlighted the distinction between screening tests and diagnostic tests, based on medical literature and case law, including the recent decision of the Madras High Court in Chinese University of Hong Kong v. Assistant Controller of Patents. Screening tests identify a need for further confirmatory diagnosis, whereas diagnostic tests confirm presence or absence of disease requiring clinical decision and possible treatment.

The court rejected the patent office's argument that all screening tests fall under Section 3(i) if they relate to diagnosis in a broad sense, stating that statutory interpretation demands a narrower reading. It was found that in vitro laboratory tests designed merely for data gathering or analysis supporting subsequent diagnosis by medical professionals do not constitute excluded diagnostic methods.

The court also considered the legislative history, observing that Section 3(i) was introduced with intent to harmonize Indian law with global standards while preserving medical practitioners' autonomy. It pointed out that unlike EPC and UK law that specify that the exclusion applies to diagnostic methods "practiced on the human or animal body," Indian law’s text does not contain this phrase, making in vitro diagnostic methods potentially subject to exclusion. However, the court adopted a purposive interpretation to avoid stifling innovation in biotechnological and medical research fields and not unduly broadening exclusions.

On the amendments and claims, the court noted the applications had undergone significant prosecution and claims restriction to comply with patentability standards. It emphasized that inventions providing novel technical methods of analyzing biological samples while not constituting direct diagnostic processes are patentable.

Decision:

The court allowed the appeals primarily holding that the claimed inventions in both patent applications do not fall under the exclusion of Section 3(i) of the Patents Act. The inventions constitute non-invasive prenatal screening tests, involving in vitro analysis outside the human body, and do not amount to diagnostic methods involving direct diagnosis or treatment by medical professionals. Consequently, the inventions are patentable subject matter. The court directed the patent office to grant the patents after completing formalities. The court clarified that patent exclusions should be narrowly construed to protect medical practice autonomy without hindering technological innovation. The judgments provide authoritative guidance on interpreting Section 3(i), balancing between innovation incentives and public health policy.

Legal Provisions Discussed:

Section 3(i) of the Patents Act, 1970 – Exclusion of medicinal, surgical, diagnostic, therapeutic processes

Sections 21(j) and 21(ja) – Novelty and Inventive Step

Section 59 – Amendments to Patent Applications

Section 117A – Appeals to High Court against Controller decisions

Article 27.3 of TRIPS Agreement – Flexibility to exclude certain inventions from patentability

Section 4A of UK Patents Act, 1977 – Methods of treatment or diagnosis exclusion

Article 53(c) EPC 2000 – Exceptions to patentability for diagnostic methods practiced on the human or animal body

Enlarged Board of Appeal Decisions G 000104 and G 000107 – Interpretation of diagnostic and surgical methods

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

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

Suggested Titles for Legal Research Paper:

1. "Interpreting Section 3(i) of the Indian Patents Act: A Comprehensive Analysis of Sequenom Inc. Case"

2. "Diagnostic Methods and Patent Exclusions: Lessons from the Delhi High Court on Non-Invasive Prenatal Testing"

3. "Balancing Innovation and Medical Practice Autonomy under Indian Patent Law: The Sequenom Decision"

4. "Narrow Construction of Patent Exclusions for Diagnostic Processes: A Judicial Perspective from Delhi"

5. "Scope of Patentability in Medical Biotechnologies: Analytical Review of Sequenom vs Controller"

Natera Inc and Anr. Vs Assistant Controller of Patents and Designs

Case Title: Natera Inc and Anr. Vs Assistant Controller of Patents and Designs

Order Date: 9th October 2025

Case Number: C.A.COMM.IPD-PAT 162023

Neutral Citation: 2025:DHC:162023

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Justice Prathiba M. Singh

Fact:

Natera Inc, a California-based company specializing in clinical genetics including cell-free DNA testing technology, along with UCL Business Ltd., filed an Indian patent application on 5th September 2019 titled "Methods for Lung Cancer Detection." The invention concerns a laboratory method to detect and monitor genetic mutations associated with lung cancer, specifically lung squamous cell carcinoma (a type of non-small cell lung cancer), by amplifying and sequencing tumor-derived DNA from blood samples. The method involves performing multiplex PCR amplification on nucleic acids isolated from blood or its fractions, followed by the analysis of single nucleotide variants (SNVs) associated with lung cancer. The technology is characterized by high sensitivity and the ability to detect mutations relevant for diagnosis, staging, and monitoring. The appellants claimed priority from a U.S. application dated 15th April 2016 and filed multiple amended claims through prosecution to refine the scope.

Procedural Details:

The Indian Patent Office issued a First Examination Report (FER) dated 31st August 2021 raising objections including lack of novelty and inventive step under Sections 21(j) and 21(ja), non-patentability under Sections 3(d) (improvement) and 3(i) (diagnostic exclusion), and non-compliance with formalities under Sections 104(c) and related procedural rules. The appellants responded with amended claims, reduced from 54 to 15 and finally to 8 claims. A hearing was conducted on 9th January 2023, but the application was refused by the Assistant Controller of Patents via order dated 20th March 2023 primarily on the ground that Claims 1 to 4 were excluded from patentability under Section 3(i) of the Patents Act, as the method was diagnostic for lung cancer detection. Claims 5 to 8 were held impermissible by Section 59 because they were considered beyond the scope of the original specification. The appellants challenged this refusal before the Delhi High Court under Section 117A of the Patents Act.

Dispute:

At the core lies the interpretation of Section 3(i), which excludes from patentability methods for diagnosis practiced on humans or animals. The appellant argued that the invention was a laboratory, in vitro process for detecting the presence of specific genetic variants associated with lung squamous cell carcinoma and did not itself constitute a diagnostic method practiced on the human body. They contended the claims were related to research, predisposition testing, and monitoring, not treatment or diagnosis requiring professional judgment. The respondent (Patent Office) insisted that since the complete specification described the method as improving detection, diagnosis, staging, screening, and treatment of lung cancer, the claims fell squarely within the non-patentable subject matter under Section 3(i). Further, the respondent maintained claims 5-8 were impermissible amendments beyond the original scope, violating Section 59.

Detailed Reasoning:

The Court carefully examined the language of Section 3(i) of the Patents Act, 1970, which excludes from patentability "any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals..." The Court reviewed similar provisions in foreign jurisdictions, notably the UK Patents Act 1977 and Article 53(c) of the European Patent Convention (EPC), which excludes methods of diagnosis practiced on the human or animal body but allows patents on substances or compositions used in those methods.

The Court referenced the landmark Enlarged Board of Appeal decisions of the European Patent Office defining diagnostic methods as multi-step processes practiced on the body, including: collecting data, comparing this with standard values, identifying deviations, and reaching a diagnostic decision. The exclusion applies narrowly to core medical activities that require professional skill and pose health risks, ensuring medical practitioners can diagnose and treat without infringing patents.

The subject matter of the invention was found to be an in vitro laboratory technique that amplifies and sequences nucleic acids from blood samples without direct diagnostic acts on the human body. The Court observed that the method provides genetic data related to tumor mutations but does not itself perform diagnosis, treatment, or clinical decision-making. The Court also noted that distinguishing between in vivo (on the body) and in vitro (outside the body) diagnostic methods is key: Section 3(i) does not distinguish them explicitly but the context and judicial interpretation limit exclusion to processes practiced on living bodies.

The Court further examined the detailed claims and specification, finding them aimed at detecting the presence of lung squamous cell carcinoma-associated single nucleotide variants in blood samples. The invention facilitates early detection, monitoring, and research but does not make a medical diagnosis or prescribe treatment. Hence, the Court held the process qualifies for patentability under Indian law as it falls outside the exclusion of Section 3(i).

On the question of claims 5 to 8, the Court considered Section 59 of the Act restricting amendment beyond disclaimers, corrections, or explanations. The appellants argued these claims were supported by earlier PCT claims and thus should be allowable without extending original scope. The Court referenced precedents including Axcess Limited v Controller of Patents (2024) and Allergan Inc. v Controller of Patents (2023) which endorse allowance of amendments within the scope of the original application. The Court found that these claims were within the ambit of the original specification and supported by original filings, therefore rejecting the Patent Office's objection under Section 59.

The Court also reviewed the inventive step objections but clarified that these were not examined in the impugned order and were to be decided separately.

In conclusion, the Court adopted a balanced interpretation of Section 3(i), ensuring the protection of genuine medical diagnostic processes practiced on living beings from patent monopolies to safeguard public health, while protecting innovative technical methods and tools used in diagnostics outside the human body.

Decision:

The appeal was allowed. The impugned order refusing the patent application was set aside. The Court held that Claims 1 to 4 do not fall under the non-patentable exclusions of Section 3(i) as the invention constitutes an in vitro laboratory method and not a diagnostic method practiced on the human body. Claims 5 to 8 were also held to be permissible amendments under Section 59 of the Act as they did not extend beyond the original scope. The Patent Office was directed to grant the patent after completion of formalities. The Court emphasized that the ruling strikes a balance between public interest and incentive for innovation and clarified interpretation principles for Section 3(i) exclusions to aid consistent patent examination in future.

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.

EMD Millipore Corporation Vs Assistant Controller of Patents and Designs

Diagnostic Processes and Patent Eligibility

Fact: The appellant, EMD Millipore Corporation, a U.S.-based corporation, filed a patent application bearing No.1026/DEL/2012 in India on 3rd April 2012 titled "Devices and Methods for Infrared (IR) Based Quantitation of Biomolecules." The invention concerns a method for the quantitative analysis of biomolecules in various types of samples including human plasma, food, cosmetics, and environmental samples using infrared spectroscopy. The appellant claimed priority from a U.S. patent application and amended the claims multiple times during prosecution, finally seeking patent protection for a technical innovation. The key object of the invention was to improve efficiency in IR spectroscopic analysis by reducing repeated calibration and enabling reuse of calibration data. Despite amendments to overcome objections, the Assistant Controller of Patents and Designs refused the application by order dated 18th February 2021 on the ground that the claims fall under the non-patentable subject matter exclusion of Section 3(i) of the Indian Patents Act, 1970, which excludes diagnostic processes from patentability.

Procedural Detail: The appellant challenged the refusal under Section 117A of the Patents Act before the High Court of Delhi. The appeal proceeded through multiple hearings from 2021 onwards. The court sought additional reports from the patent office concerning the novelty and inventive step of the claims. A significant issue considered was the correct interpretation and scope of the exclusion clause under Section 3(i) of the Act, which bars patentability of diagnostic methods. The court appointed an Amicus Curiae to assist with submissions on complexity related to the interpretation of Section 3(i). The matter involved detailed examination of foreign jurisprudence, including decisions from the European Patent Office (EPO) on exclusions for diagnostic methods. Judgment was reserved in December 2024 and pronounced in October 2025.

Dispute: The fundamental dispute centered on whether the subject invention qualifies as a diagnostic process excluded from patentability under Section 3(i) of the Patents Act or whether it qualifies as a patentable technical method. The appellant contended that the invention was an innovative technical process improving IR spectroscopic quantitation applicable across industries and should not be barred. The respondent, represented by the Assistant Controller, argued that the invention was a diagnostic method within the scope of Section 3(i) and thus non-patentable, emphasizing that the exclusion applies broadly to diagnostic methods regardless of their in vivo or in vitro nature. Issues surrounding the legislative history of Section 3(i), international obligations under TRIPS, and Indian patent policy balances between innovation and public health were debated.

Detailed Reasoning: The court undertook a comprehensive examination of the legal framework, including Indian patent law, legislative history, and international precedents. The court noted that Section 3(i) of the Patents Act excludes "any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products" from patentability. The appellate court analyzed the corresponding provisions in foreign jurisdictions like the UK's Patents Act 1977, Article 53(c) EPC 2000, and jurisprudence from the European Patent Office's Enlarged Board of Appeal (notably Case G 000104). The court emphasized that diagnostic methods excluded under these laws are typically multistep processes involving examination, data gathering, comparison, symptom detection, and clinical decision-making practiced directly on the human or animal body.

It was clarified that the exclusion's purpose was to free medical practitioners from patent constraints when applying core diagnostic procedures requiring professional judgment and bearing health risks. However, patentability is not barred for diagnostic tools, instruments, or technical processes that do not themselves constitute a diagnostic method practiced on the living body.

The court thoroughly examined the appellant's patent claims and the specification, observing that the invention was directed to an in vitro technical process using infrared spectroscopy for biomolecular quantitation on samples that could be biological fluids but also included broad categories like cosmetics, food, water, and fuels.

Conclusion: The court concluded the invention did not involve any step constituting diagnosis for curative purposes or clinical decision-making performed on or practiced on a human or animal body. The method improved the technical aspect of IR spectroscopic measurement rather than the intellectual exercise of diagnosis itself. Furthermore, the court noted the patent had been granted in jurisdictions including the United States and Europe, where comparable exclusions exist, supporting its patentability.

The role and intent of Section 3(i) were revisited in light of legislative history and international trade commitments under TRIPS. The court held that the section was intended to exclude medical procedures requiring practitioner skill and direct interaction with the patient, but not to bar patents on inventions involving technical methods or devices that facilitate analysis or diagnostics without constituting a disallowed diagnostic method.

The court also discussed the permissibility of claims amendments during appeals under Section 59 of the Act, confirming that amendments clarifying or narrowing claims within the original disclosure are allowed. The appellant's amendments were found to be within permissible limits and did not expand the scope of the invention.

Decision: The appeal was allowed. The impugned order refusing the patent application was set aside, as the claimed invention does not fall within the exclusion of Section 3(i) of the Patents Act. The court directed the patent office to proceed with the grant of the patent to the appellant after completion of formalities. The court emphasized that the exclusion applies narrowly to core diagnostic processes practiced on the human or animal body and does not extend to technical innovations or in vitro processes. Hence, the appellant's method for IR-based quantitation of biomolecules qualifies for patent protection. The court relied heavily on the Enlarged Board of Appeal, EPO decision G 000104, setting out the multi-step definitional framework for diagnostic methods and the distinction between in vivo diagnostic processes and technical methods or tools. In sum, the judgment clearly elucidates the boundary between non-patentable diagnostic processes and patentable technical innovations, guiding future patent prosecution in medical technology fields in India.

Case Title: EMD Millipore Corporation Vs Assistant Controller of Patents and Designs

Order Date: 9th October 2025

Case Number: C.A.COMM.IPD-PAT 7/2021

Neutral Citation: 2025:DHC:8928

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Justice Prathiba M. Singh

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

Ms. Rajilaxmi Oils Vs. Kriti Nutrients Ltd.

Written Statement can not be filed beyond 120 days in a Commercial Dispute

Fact: This case arises from a dispute between Ms. Rajilaxmi Oils and Kriti Nutrients Ltd. involving trademark and copyright claims. The petitioner, Ms. Rajilaxmi Oils, filed a civil suit under Section 142 of the Trade Marks Act, 1999, and Section 60 of the Copyright Act, 1957, in 2020 before the Commercial Court, Indore. Subsequently, the respondent filed another suit against the petitioner in 2021, also in the Commercial Court, Indore. During the pendency of these suits, the respondent obtained an ex-parte injunction from the Commercial Court, Delhi, which led to the seizure of the petitioner’s products. The petitioner alleged wrongful seizure and continued non-release of their goods even after the dismissal of the Delhi suit.

Right to file Written Statement beyond 120 days: Due to these circumstances, the petitioner delayed filing their written statement in the main suit before the Commercial Court, Indore. They applied for condonation of this delay and for their written statement to be taken on record. The trial court denied this application, holding that the delay was unjustified and that the written statement was filed beyond the 120-day statutory limit prescribed by the Commercial Courts Act, 2015. The petitioner challenged this denial by filing the present petition under Article 227 of the Constitution of India.

The core dispute: The dispute hinged mainly on whether the trial court was justified in refusing to allow the belated filing of the written statement. The court carefully analyzed the provisions of Order VIII Rule 1 of the Civil Procedure Code as amended by the Commercial Courts Act, 2015, which governs the time limit for filing written statements. These provisions stipulate that a defendant must file a written statement within 30 days of service of summons but may be granted an extension by the court for reasons recorded in writing, provided it does not exceed 120 days. Beyond this 120-day period, the right to file a written statement is forfeited, and the court is not empowered to allow further extensions.

The Reasoning: The court gave detailed consideration to the petitioner’s submissions that the delay was caused due to parallel suits and the impact of an ex-parte injunction obtained in the Delhi court, which impaired their ability to file the written statement on time. The court rejected these arguments, emphasizing that the Delhi suit was dismissed well before the filing of the written statement and that no genuine effort was made to file it within the statutory period after that dismissal.

The court referred extensively to authoritative Supreme Court judgments including SCG Contracts India Private Limited v. K.S. Chamankar Infrastructure Private Limited (2019 12 SCC 210), Raj Process Equipment and Systems Pvt. Ltd. v. Honest Derivatives Pvt. Ltd. (2022 SCC Online SC 1877), and Prakash Corporates v. Dee Vee Projects Limited (2022 5 SCC 112), which underscore the imperative of maintaining strict timelines in commercial litigation to ensure speedy justice. The court noted that these rulings maintain that the Commercial Courts Act’s 120-day period for filing written statements is mandatory and not extendable except within that window.

Decision: Ultimately, the court held that the trial court had rightly exercised its discretion and abided by statutory mandates in refusing to permit the belated written statement. The petition was dismissed as devoid of merit, affirming that procedural timelines in commercial suits are strict and that delay without sufficient cause cannot be condoned in the interest of expedient dispute resolution.

Case Title: Ms. Rajilaxmi Oils Vs. Kriti Nutrients Ltd.

Order Date: 6th October 2025

Case Number: M.P. No. 4924/2023

Neutral Citation: 2025 MPHC IND 29084

Name of Court: High Court of Madhya Pradesh at Indore

Hon’ble Judges: Shri Justice Vivek Rusia and Shri Justice Binod Kumar Dwivedi

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

Lifestyle Equities C.V. & Another Vs. Amazon Technologies Inc.

Unconditional Stay and Jurisdictional Fairness: A Reaffirmation of Judicial Discretion under Order XLI Rule 5 CPC

Facts: Lifestyle Equities C.V., headquartered in Amsterdam, along with its Indian licensee, owned the registered trademark “Beverly Hills Polo Club (BHPC)” used for apparel, shoes, accessories, furniture, and personal care products. Amazon Technologies Inc. was accused of facilitating sales of counterfeit goods bearing a mark identical or deceptively similar to the BHPC logo.

The Suit: In 2020, Lifestyle filed a commercial suit (CS(COMM) 443/2020) in the Delhi High Court, alleging trademark infringement and passing off, seeking permanent injunction, delivery-up of infringing goods, and damages of Rs. 2.00 crore. The suit named three defendants—Amazon Technologies Inc. (Defendant 1), Cloudtail Pvt. Ltd. (Defendant 2), and Amazon Seller Services Pvt. Ltd. (Defendant 3).

Summons were issued to all defendants. Defendant No. 1 did not appear and was proceeded ex parte. An interim order dated 12 October 2020 restrained all defendants from using the BHPC mark. The suit was ultimately decreed ex parte against Amazon Technologies Inc. by order dated 25 February 2025, granting damages of Rs. 336 crores, costs of Rs. 3.23 crores, and a permanent injunction, based on an alleged computation of damages worth USD 38.78 million.

The Appeal: Amazon’s appeal before the Division Bench of the Delhi High Court (RFA(O.S.)(COMM) 11/2025) resulted in the High Court staying execution of the money decree without requiring deposit of the decretal amount, subject only to an undertaking by the appellant to comply if the appeal were dismissed. Lifestyle Equities filed a Special Leave Petition (SLP) before the Supreme Court challenging this “unconditional stay.”

Procedural Details: The matter reached the Supreme Court through Special Leave Petition (C) No. 19767 of 2025 under Article 136 of the Constitution.

The SLP questioned whether the Delhi High Court erred in not insisting upon deposit/security as mandated under Order XLI Rule 1(3), Rule 5(3), and Rule 5(5) of the CPC while granting a stay on execution of a money decree and whether an unconditional stay was legally sustainable? 

The Dispute: The crux lay in reconciling two competing legal principles: The CPC’s general rule that mere appeal does not automatically stay execution, and that stay may be granted only upon sufficient cause with adequate security, and The High Court’s discretion to conditionally or unconditionally stay execution in exceptional cases.

Lifestyle argued that the stay was unlawful for lack of mandatory deposit. Conversely, Amazon contended that valid service of summons was never effected, the decree suffered from gross procedural and substantive irregularities, and the ex parte decree was inflated far beyond the original Rs. 2 crore claim without any amendment or notice.

Reasoning of the Court: Court's detailed reasoning traversed historical, statutory, and judicial contexts of Order XLI — balancing procedural discipline with judicial discretion.

Purpose of Order XLI Rules 1 & 5 CPC: The Court traced the legislative amendments of 1976 that introduced sub-rule (3) in Rule 1 (obliging appellants to deposit decretal amounts or furnish security) and sub-rule (5) in Rule 5 (barring stay if deposit/security is not furnished). The Court emphasized that the Parliament intended to prevent abuse of appellate process while permitting equitable discretion in exceptional cases.

Whether deposit/security is mandatory: The Court reaffirmed that the requirement of deposit is directory, not mandatory. Non-deposit disentitles stay but does not invalidate the appeal. Appellate courts may grant unconditional stay if exceptional circumstances make enforcement unjust or impossible.

Scope of judicial discretion: An unconditional stay of a money decree can only be justified if the decree is: egregiously perverse, riddled with patent illegalities, facially untenable, or affected by exceptional causes akin to fraud or manifest injustice.

Service of summons: The Supreme Court concurred with the High Court that Amazon Technologies was never served valid summons. The record revealed no affidavit of service post the order dated 7 July 2021, nor proof of notice via email/WhatsApp as directed earlier. Proceeding ex parte without proper service thus constituted a foundational illegality, vitiating jurisdiction. Reliance by Lifestyle on Order IX Rule 13 proviso and Sunil Poddar v. Union Bank (2008) 2 SCC 326 was found misplaced.

On damages and maintainability: The Supreme Court noted that the single judge’s decree inflated damages from Rs. 2 crore (as in plaint) to Rs. 336 crore without any amendment, notice, or proof. This violated Order VII Rule 2 and 7 of the CPC, which require precise quantification in money suits. The absence of pleadings or evidence supporting enhancement rendered the decree prima facie perverse.

License and liability findings: The High Court correctly observed that Amazon Technologies merely licensed its “SYMBOL” brand to Cloudtail and had no role in manufacturing or affixing the alleged infringing logo. No legal or contractual link established complicity. The single judge’s inference that all Amazon entities were one “cohesive commercial entity” lacked any pleading or evidence. These findings were perverse and speculative.

Analogy with Arbitration Act: Rejecting the petitioner’s reliance on Section 36(3) of the Arbitration Act, the Court clarified that unconditional stay power is not limited solely to cases of fraud or corruption. Discretion to grant such stay under Order XLI Rule 5 subsists independently but should be ~rarely~ exercised in extreme circumstances.

Protection of due process: The bench reaffirmed that valid service of summons is the basis of jurisdiction. Absence of due service entitles the defendant to avoid liability regardless of procedural lapses by counsel or co-defendants. The right to defend cannot be presumed to have been waived.

Judgment and Decision

Decision: The Supreme Court upheld the Delhi High Court’s judgment dated 1 July 2025, dismissing the Special Leave Petition. It held there was no valid reason to interfere, as the Division Bench rightly found the single judge’s decree tainted by serious procedural irregularities and lack of jurisdiction. The stay of execution, therefore, was justified even without deposit.

Court emphasized that unconditional stay is not the rule but an exception, permissible where enforcement of decree would cause grave miscarriage of justice. In this case, the court found multiple irregularities, including: absence of valid summons to Amazon, massive jump in damages without amendment, lack of specific findings of infringement against Amazon, and misreading of a license agreement unconnected to the infringing mark.

Consequently, the Supreme Court affirmed that the High Court’s exercise of discretion under Order XLI Rule 5 CPC did not suffer from any legal infirmity.

Final Holding:  The Special Leave Petition was dismissed on 7 October 2025, confirming the High Court’s order of unconditional stay. The Court reiterated that unconditional stay of a money decree remains permissible in exceptional circumstances and highlighted due process and fairness over procedural rigidity.

Case Title: Lifestyle Equities C.V. & Another Vs. Amazon Technologies Inc.

Order Date: 7th October 2025

Case Number: Civil Appeal No. 19767 of 2025

Neutral Citation: 2025 INSC 1190

Name of Court: Supreme Court of India

Hon’ble Judges: J.B. Pardiwala J. and K.V. Viswanathan 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

Kanhiaya Lal and Others Vs. Subhash Chandbr

Court’s Power to Implead Legal Heirs in Trademark Disputes

Facts: This case involves a trademark dispute that traces back to the family business of Panchhi Petha Store, founded in 1952 in Agra by late Panchhi Lal. Over time, the business and the trademark rights were distributed between his two sons, Kanhaiya Lal and Subhash Chander, and their respective descendants. The original partnership registered the trademark "PANCHHI KA PETHA AUR DALMOTH" in 1971. After Panchhi Lal’s passing, a family settlement was executed in 1982 stipulating rights to use the trademark and maintaining a one-kilometer distance between respective shops operating under the "PANCHHI" name. As years passed, disputes arose when the petitioners learned that the respondent, Subhash Chandbr, had secured multiple trademark registrations in different classes without the knowledge or inclusion of the petitioners. This led to the filing of rectification petitions challenging the registrations and asserting independent rights over the "PANCHHI" trademark, as stipulated in the family settlement.

Procedural Details: Rectification petitions were originally filed before the Intellectual Property Appellate Board (IPAB) and subsequently transferred to the Delhi High Court after the IPAB was abolished. During the course of proceedings, two key petitioners, Kanhaiya Lal and Anil Kumar, passed away. Applications were filed to bring their legal heirs on record and to condone the delay in such filings—delays that resulted from bereavement, gathering legal documentation, and ongoing mediation. Respondents objected, arguing that the applications were filed well beyond prescribed limits and that the cause of action had abated against the deceased petitioners. Relying on Order XXII Rule 4 of the CPC and Section 5 of the Limitation Act, the petitioners pleaded that the delay was not deliberate but caused by unforeseen circumstances, and that the proceedings should continue on merits by impleading the legal heirs.

Dispute: The dispute centered on control and use of the "PANCHHI" trademark arising from the family settlement, as well as the right of descendants to carry out business under the established brand name. The petitioners contended their rights were being undermined by the respondent’s unilateral trademark registrations and sought to rectify the Trademark Register to restore a fair balance as agreed upon in the family settlement. The respondent resisted, citing technical delays and lack of proper cause for condonation, and relied on prior legal precedents suggesting abatement and loss of legal standing due to late filing.

Detailed Reasoning: The Court examined the facts carefully, including the terms of the family settlement that gave rise to independent trademark rights for both families and their male descendants. It cited the Supreme Court judgment in Mithailal Dalsanagar Singh v. Annabai Devram Kini (2003 10 SCC 691), which established that applications to bring legal heirs on record must be liberally construed, and that technicalities should not override substantive justice. The Court found that bereavement, mediation attempts, and administrative complexities following the death of petitioners justified condoning the delay. The family settlement agreement, especially Clause 4, was strongly relied upon, affirming the rights of descendants to carry out business under the "PANCHHI" brand and to take legal action collectively to protect their interests.

The Court also dismissed respondent’s reliance on DSGMC v. Jagmohan Singh (2021 SCC OnLine Del 5423) and Shivamma dead by LRs v. Karnataka Housing Board (2025 SCC OnLine SC 1969), finding those cases inapplicable to the particular family arrangement and independent rights at stake. The judge underscored that technical defaults should not bar parties from having their disputes decided on merits, especially where equity and long-standing business interests are involved.

Decision: The Court allowed the applications for impleadment of legal heirs, condoned the delay, and restored the abated petitions. The legal heirs—Mohit Goyal, Ankit Goyal, and Gaurav Goyal—were impleaded with direction for the petitioners to file amended memoranda within two weeks and pay costs of Rs. 25,000 per case to the respondent. By adopting a justice-oriented approach rather than dismissing on procedural grounds, the Court reinforced the principle that matters of substantial interest—like rights under a family settlement and registered trademark—should be adjudicated on merits and not buried due to technical delays.

Case Title: Kanhiaya Lal and Others Vs. Subhash Chandbr and Another

Order Date: 9th October 2025

Case Number: C.O. COMM.IPD-TM 339/2022 

Neutral Citation: 2025:DHC:8983

Name of Court: High Court of Delhi at New Delhi

Hon’ble Judge: Ms. Justice Manmeet Pritam Singh Arora

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

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

F. Hoffmann-La Roche AG & Another Vs. Natco Pharma Limited

Patent Infringement and Person in the Know

The Appeal: In this matter, the High Court of Delhi was called upon to decide an appeal by F. Hoffmann-La Roche AG against Natco Pharma Limited regarding the manufacture and sale of the drug "Risdiplam." The appellants, holders of Indian Patent IN 3343971 concerning compounds for treating spinal muscular atrophy, sought an injunction to prevent Natco from producing and selling Risdiplam.

Facts: The facts of the case are straightforward. F. Hoffmann-La Roche AG is the patentee for Risdiplam, marketed under the brand name EVRYSDI used for spinal muscular atrophy. Natco Pharma began manufacturing and marketing Risdiplam, which the appellants argued amounted to patent infringement under Section 48 of the Indian Patents Act. The legal question was whether Natco's actions amounted to patent infringement and, if so, whether Natco could successfully invoke statutory defenses to avoid liability.

The Procedural Background: The dispute arose after a single judge of the High Court declined the injunction against Natco, leading the appellants to file the present appeal. Natco Pharma, as defendant, admitted to making and selling Risdiplam but asserted a legal defense under Section 107 of the Patents Act. This defense relies on Section 64(e) and 64(f), which allow a patent to be revoked if the invention is not new (lacking novelty) or is obvious (lacking an inventive step).

The Court’s detailed reasoning began by clarifying the law surrounding appellate review, citing Wander Ltd. v. Antox India P Ltd. (Supreme Court: 1990 Supp SCC 727), emphasizing that appeals against discretionary relief like injunctions are not appeals on facts but on principles. The Court would not substitute its own judgment for that of the original judge unless the lower court exercised its discretion arbitrarily or ignored settled legal principles.

The Legal Provision: Legal provisions under scrutiny included Section 48 (patentee’s rights), Section 64(e) (lack of novelty), and Section 64(f) (obviousness) of the Patents Act. Notably, infringement as such is not strictly defined in the Act, but Section 48 grants patent owners the exclusive right to control the making, using, selling, or importing of the patented product.

The Single Judge, whose decision was under appeal, found in favor of Natco based on these defenses. The core legal issue centered around two concepts: whether Risdiplam was "disclosed" within the scope of prior art (other earlier patents), and whether the claimed invention was obvious to a skilled person in the field.

The Single Judge and the Division Bench focused on whether Risdiplam, though covered under a so-called "Markush" chemical claim in earlier patents (WO916, US955), had been "disclosed" in such a way as to destroy novelty under Section 64(e). The difference between "coverage" (a compound is one of many possible encompassed by a broad patent claim) and "disclosure" (the compound is specifically taught or enabled) was discussed at length, referencing notable precedents including Novartis AG v Union of India (2013 6 SCC 1) and Astrazeneca AB v Intas Pharmaceutical Ltd (2020 84 PTC 326 Del).

While earlier cases such as Astrazeneca held that a plaintiff alleging infringement of both a genus (broad) and a species (narrow) patent amounts to admitting disclosure in the genus patent, the Division Bench in this case questioned whether infringement (predicated on coverage) was the same as invalidity (predicated on disclosure). The Bench favored the view that disclosure must be enabling – it should teach a skilled person how to make the specific compound; mere theoretical coverage is not sufficient. However, as the Single Judge's ruling was consistent with the then-prevailing interpretation of Astrazeneca, it was not faulted.

The obviousness: On the question of obviousness under Section 64(f), the Court examined whether, based on teachings in earlier patents and general knowledge, a skilled person could have arrived at Risdiplam without inventive effort. It was observed that Risdiplam differed from "Compound 809" of the prior art only by a single atom – a nitrogen (N) in place of a CH group. The Division Bench elaborated that several compounds in the prior art involved variations at this very position, and chemical principles (such as those set out in the Grimms Hyride Displacement Law) suggested substituting nitrogen for carbon-hydrogen as a routine modification. The Court also referred to the fact that in pharmaceutical chemistry, it is common to make such changes to optimize properties like potency and stability.

Person in the Know: Importantly, the decision observed that where the inventors of both the earlier patent and the current patent are the same, the "person skilled in the art" test shifts. The actual inventor, being "in the know," is presumed to choose relevant modifications more easily and to know how to arrive at the claimed invention. This mitigates against permitting so-called "evergreening," where a small, obvious change is used to obtain a new patent and extend exclusivity, especially in the realm of essential or life-saving drugs.

The Court cautioned that patent protection is intended only for true inventions, and that prolonging monopolies by minor modifications that would have occurred to the original inventors themselves conflicts with public interest. If inventors are allowed to obtain new patents for minor, obvious changes, society may suffer by not having access to important drugs at affordable rates.

In the concluding part, the Division Bench stated that its appellate review was limited to checking whether the judge below applied the correct legal principles. Since the judge did so, and no arbitrary or capricious conduct was shown, the appeal was dismissed. The Bench did not find it necessary to examine every nuance of the parties’ arguments in detail, since the core legal findings were unimpeachable. A credible challenge to the validity of the patent had been established, so the injunction was rightly denied.

Decision: The appeal was dismissed, affirming that a credible defense of obviousness had been shown. The Court did not interfere with the lower court’s exercise of discretion, leaving the validity of the patent and the parties’ broader disputations to potential further proceedings or trial stages if warranted.

Case Title: F. Hoffmann-La Roche AG & Another Vs. Natco Pharma Limited

Order Date: 9th October 2025

Case Number: FAO(OS)(COMM) 43/2025

Neutral Citation: 2025:DHC:8943-DB

Name of Court: High Court of Delhi at New Delhi

Hon’ble Judges: Mr. Justice C. Hari Shankar and Mr. Justice Ajay Digpaul

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

Tapas Chatterjee Vs. Assistant Controller of Patents and Designs

Guidelines for Assessing Inventive Step in Patent Appeals

Facts: This case involved a patent dispute centering around the process for recovery of potassium sulphate and other valuable products from distillery spent wash, ultimately leading towards a Zero Liquid Discharge (ZLD) system. The appellant, Tapas Chatterjee, applied for a patent for this process in 2019, aiming to address the issue of water pollution caused by alcohol distilleries. The invention was intended to recover potassium sulphate, magnesium sulphate, activated carbon, and other value-added products from effluent, with the additional benefit of ZLD, which meant no liquid effluent was discharged back into the environment. The Council of Scientific and Industrial Research (CSIR) filed a pre-grant opposition against this application, citing several provisions of the Patents Act, 1970.

Procedural Detail: After the application was filed, the Assistant Controller of Patents and Designs (AC) conducted the standard examination, including the First Examination Report and subsequent reply from the appellant. The AC then dealt with the pre-grant opposition by CSIR, which was based on multiple grounds under Section 25(1) of the Patents Act. The main objections were that the invention was not novel, lacked inventive step, was not patentable under Section 3(d), and the methodology was not sufficiently described.

The AC rejected the opposition regarding lack of novelty but upheld the challenges relating to inventive step and Section 3(d). Consequently, the patent application was refused. The appellant appealed to a Single Judge of the High Court of Delhi, who affirmed the Controller’s decision. The appellant then brought a Letters Patent Appeal before the Division Bench.

Dispute: The core of the dispute revolved around two primary legal issues: Whether the invention as claimed was non-patentable under Section 3(d) of the Patents Act on grounds of being a mere use of a known process? Whether the invention lacked an inventive step, i.e., it was obvious in light of prior art documents , as per Section 2(1)(ja) and Section 25(1)(e)? The respondents (CSIR) contended that all steps described by the appellant were already disclosed in prior arts individually or in combination, and did not present any technical advance or require inventive faculty?

Detailed Reasoning: The Division Bench delved deeply into the reasons given by the Assistant Controller and the Single Judge. It noted that although the Controller accepted that the subject invention was novel, he still found a lack of inventive step compared to prior arts D1 (US patent) and D2 (Indian Standard). According to the Controller and the Single Judge, the steps of the claimed process were standard chemical engineering procedures, and no aspect of the steps was sufficiently distinct to warrant patent protection. The Controller held that routine operations (like concentration, thermal decomposition, dissolution, recovery) were obvious.

However, the Division Bench identified that the reasoning of both the AC and the Single Judge was inadequate and did not reflect a detailed, independent analysis of the prior arts compared to the subject invention. The Bench emphasized the importance of the legal test for inventive step outlined in F. Hoffmann-La Roche Ltd v. Cipla Ltd., which includes identifying the “person skilled in the art,” identifying the inventive concept, assessing the general knowledge at the priority date, and recognizing the differences between prior art and the claimed invention.

The key legal finding was that the Controller had failed to articulate which specific features of the claimed invention were obvious, and simply concluded so without detailed comparison. The prior arts (D1 and D2) had different approaches, products, and processes compared to the claimed invention’s steps, especially regarding the various fractions and recovery steps described in the application, and the additional by-products (magnesium sulphate, activated carbon) which were not claimed outcomes in D1 or D2.

The Division Bench also clarified the application of Section 3(d): it will only apply if the invention is a mere use of a known process, which was not positively shown in this case, and Section 3(d) would not apply if the process yields a new product or uses a new reactant. Since the process resulted in value-added products not described in the prior arts, the invocation of Section 3(d) was incorrect. Ultimately, the approach of the Controller (mechanical and unsupported by explicit reasons) and the analysis of the Single Judge (which skipped essential steps in the Hoffmann test) were found deficient.

Decision: The Division Bench allowed the appeal. The orders of the Single Judge and the Assistant Controller rejecting the appellant’s patent application were set aside. The matter was remanded to CGPDTM (Controller General of Patents, Designs and Trade Marks) for fresh consideration, specifically to reconsider the inventive step objection under Section 25(1)(e) read with Section 2(1)(ja), based strictly on the principles laid down in Hoffmann and the present judgment. The Bench unequivocally rejected the Section 3(d) objection raised by CSIR, stating there was no material basis for treating the process as a mere use of a known process. The adjudicating authority was directed to render a well-reasoned decision post-hearing, limited to the material already on record, and both parties were allowed to supplement their written submissions.

Case Title: Tapas Chatterjee Vs. Assistant Controller of Patents and Designs & Anr.

Order Date: 6 October 2025

Case Number: LPA 836/2023

Neutral Citation: 2025:DHC:8824-DB

Name of Court: High Court of Delhi at New Delhi

Hon’ble Judges: Justice C. Hari Shankar, Justice Ajay Digpaul

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

B. L. Agro Industries Limited Vs. Registrar of Trade Marks

Stay of operation of registration of the mark in Trademark Appeal

Facts  :The appellant, B. L. Agro Industries Limited, is a long-time user and registered proprietor of the trademark "NOURISH" in Class 30, which covers a wide range of food-related products including edible oils, ghee, milk and dairy products, pulses, tea, coffee, flour, confectionery, spices, and other allied goods. The mark "NOURISH" has been in use since 2007, and the appellant holds registrations covering Classes 29, 30, and 31.  

The respondent Urban Exports (P) Ltd. applied for registration of the mark "TeaNOURISH" (stylized) under Application No. 6544100 in Class 30 covering similar goods such as coffee, tea, biscuits, confectionery, spices, and sauces. The respondent claimed user of this mark since December 1, 2020.  

Procedural Detail  :B. L. Agro filed an opposition (Opposition No. 1347124) against the registration of the respondent's mark on the ground that "TeaNOURISH" was deceptively similar to its registered "NOURISH" mark, specifically highlighting that the word "Tea" is descriptive and laudatory, not distinctive on its own. It contended that the exclusive trademark right lies in the word "NOURISH."  

An interim injunction restraining the respondent from using the impugned mark was granted by the Commercial Court, where B. L. Agro also filed a suit (CS(COMM) 910/2024) against the respondent. Given the overlap of issues, the suit was directed to be transferred to the High Court to be heard along with the present appeal.  

Dispute  :The dispute primarily revolves around the similarity and likelihood of confusion between "NOURISH" and "TeaNOURISH" marks, the scope of trademark protection in composite marks, and whether the descriptive word "Tea" can dilute the distinctive character of "NOURISH." The appellant claims prior adoption, use, and registration rights since 2007, whereas the respondent claims usage only from late 2020.  

 Reasoning  :The Court recognized that B. L. Agro is the prior adopter and registered proprietor of the trademark "NOURISH" widely used for a broad variety of food products starting 2007. The impugned mark "TeaNOURISH" overlaps in class and nature of goods leading to a high likelihood of confusion in trade channels and among consumers.  

The Court noted that the addition of the word "Tea" (which is laudatory and descriptive) does not create material distinction because it merely describes some characteristic of the goods and is not a distinctive element. Therefore, the dominant and registrable feature of the respondent’s mark is "NOURISH," which is identical to the appellant’s mark.  

It was held that under Section 9(1)(b) of the Trade Marks Act, 1999, if two marks are identical or deceptively similar and used for similar or allied goods or services, the later mark should be refused registration to prevent confusion among consumers. The suit's interim injunction demonstrates the prima facie case of deception and irreparable injury to the appellant.  

The Court directed that the registration of the respondent's mark "TeaNOURISH" granted by the Registrar of Trade Marks be stayed during the pendency of this appeal and suit. This preserves the balance of rights pending final adjudication.  

Decision  :The Court issued notice to the respondents and stayed the operation of registration of the mark "TeaNOURISH" pending disposal of the appeal and the transferred suit. 

Case Title: B. L. Agro Industries Limited Vs. Registrar of Trade Marks & Another  

Order Date: September 24, 2025  

Case Number: C.A.(COMM.IPD-TM) 65/2025  

Name of Court: High Court of Delhi  

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

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

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

Pushpdeep Cotex Private Limited Vs Anoop Agarwal

Role of Artistic Labels and Color Combinations in Trademark Disputes

Facts:In this case, Pushpdeep Cotex Private Limited, the petitioner, filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking cancellation of trade mark registration no. 5925080. This registration covered a label device granted to respondent Anoop Agarwal on May 6, 2023, in Class 26, which pertains to textile goods like saree falls. 

The petitioner claimed it had been using the trademarks “Rani” and “Rachna” on saree falls and blouse textile pieces for many years, with the earliest trademark “Rani” registered since May 16, 2000. The petitioner presented evidence showing continuous and extensive use of these marks and their artistic labels since 2007. It also produced artistic receipts, newspaper advertising, and a caution notice issued in 2021 well before the respondent’s adoption of the impugned mark.

Procedural Detail:The respondent, Anoop Agarwal, countered the petition by stating that his label “Ragini Smile Polyester Saree Fall” was adopted in February 2022 for honest and bona fide reasons and that the trademark application was granted without any objection from the Trade Mark Registry. The respondent claimed that the mark “Ragini” was distinct from “Rani” and “Rachna,” both phonetically, visually, and conceptually, and that there was no risk of confusion to the public. Proceeding further, the High Court heard arguments from both sides, reviewed evidence placed by the petitioner, and considered the respondent’s defenses.

Dispute:The central dispute revolved around whether the impugned label registered by the respondent was deceptively or confusingly similar to the petitioner’s earlier registered marks and their associated artistic presentation. The matter called for a determination of prior and continuous use, the strength and originality of the petitioner’s artistic labels, and the risk of confusion among the consumers due to similarities in the marks and trade getup.

Reasoning:The High Court thoroughly examined the evidence and noted very strong visual and conceptual similarities between the petitioner’s and respondent’s labels. The petitioner’s label for “Rani” was artistically styled, and the same font, design, color scheme (yellow and red), tagline layout (“Smile Polyester Saree Fall” and “A Quality Product From The House Of …”), and imagery were all replicated in the respondent’s “Ragini” label. The only significant difference was the names “Rani” and “Ragini.” The Court found that even this difference lost importance because both were written in an identical style and lettering, leaving an overall impression of near identity between the labels.

The High Court relied on the benchmark judgment Colgate Palmolive Co. v. Anchor Health and Beauty Care P Ltd. [2003 SCC OnLine Del 1005], which observed that substantial imitation of color combination and get-up of a container can itself cause deception—even if the trade names differ. The test is the likelihood of confusion or deceptiveness in the minds of unwary customers.

The Court also emphasized that distinctive color combinations and artistic styles could serve as trade marks, protected not only against direct copying but also against substantial and conscious imitation. It found the petitioner had shown prior and wide use of its label since 2007, with the 2021 caution notice predating the respondent’s adoption in 2023.

Further, the Court applied the principle that rights of a prior user override registration by a subsequent user. Citing S. Syed Mohideen v. P. Sulochana Bai [2016 2 SCC 683], the Court reiterated that rights of prior use always prevail over later registrants. This was further supported by reference to Neon Laboratories Ltd. v. Medical Technologies Ltd. [2016 2 SCC 672] and N.R. Dongre v. Whirlpool Corp. [1996 5 SCC 714], noting that prior use involving generation of goodwill and reputation outscores statutory registration.

The respondent’s defense of honest adoption and absence of registry objection was not accepted because the similarities were overwhelming and the evidence for prior use by the petitioner was clear. The Court concluded that the respondent was a subsequent user and the adoption of the mark was both dishonest and in bad faith.

Decision:Accordingly, the High Court ordered cancellation of respondent’s trademark registration no. 5925080 under Section 57 of the Trade Marks Act, 1999. The Registrar of Trade Marks was directed to rectify and remove the impugned trademark from the Register within four weeks. The petition and related applications were disposed of, affirming the legal position that the rights of a prior user, backed by substantial evidence of continuous use, trump a later registration even if the registry was not objected to initially.

Case Title: Pushpdeep Cotex Private Limited Vs Anoop Agarwal & Another

Order Date: September 24, 2025

Case Number: C.O. COMM.IPD-TM 108/2025

Name of Court: High Court of Delhi

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

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

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

Gopika Industries Vs Dayal Industries Pvt. Ltd.

Prima Facie Plea of Invalidity of registered Trademark

Facts of the Case:The lawsuit was initiated by Gopika Industries, which claimed infringement of its registered trademark DYAL, used for cattle feed and registered since April 4, 1996 under Trade Mark No. 709502 in Class 31. Gopika Industries had records showing use of the DYAL mark both in English and regional languages. The defendant, Dayal Industries Pvt. Ltd., is also in the business of manufacturing and selling cattle feed and holds its trademark DAYAL (Trade Mark No. 923948) registered on May 10, 2000 in Class 31. Both parties claimed to use their respective marks for similar goods and in similar languages.

Procedural Detail:Dayal Industries filed an application seeking court permission to initiate rectification proceedings against Gopika Industries' registered trademark. In its written statement defending the application, Dayal Industries raised several pleas to challenge the validity of the DYAL mark. These included claims that Dayal Industries was the prior user of the mark DAYAL for cattle feed products since 2000, while the earliest invoice of plaintiff Gopika Industries was from 2001. 

The defendant claimed further rights through its own group company Dayal Fertilizers Pvt. Ltd., which used the mark DAYAL in allied products as early as 1979. The defendant also asserted that the plaintiff was misusing the goodwill of the DAYAL mark to confuse consumers and pass off its products as those of Dayal Industries. Meanwhile, the group company Dayal Fertilizers Pvt. Ltd. had already filed a separate commercial suit against Gopika Industries regarding trademark issues.

Dispute:The core dispute was whether Gopika Industries' registration of DYAL in 1996 gave it superior rights, even if contemporaneous commercial use commenced later (2001), and if Dayal Industries could challenge this registration based on alleged prior use or invalidity. The defendant argued that mere registration did not suffice to claim rights if commercial use was delayed, and invoked grounds such as prior use by their company or affiliated group companies, as well as visual and phonetic similarity of the marks DYAL and DAYAL. The plaintiff countered by relying on statutory provisions and judicial precedents that clarified the status of rights derived from statutory registration of trademarks.

Reasoning :The Court examined arguments from both sides, referring to the Trade Marks Act, 1999, especially Section 34, which deals with infringement protection based on prior use, and Section 18 regarding registration based on actual or proposed use. The defendant contended, relying on Section 34, that the plaintiff was barred from claiming rights based on mere registration, if actual use began after the defendant's usage. 

However, the court referred to the precedent set in Worknest Business Centre LLP v. Worknests through SH Raesh Goyal [2023 SCC OnLine Del 1678]. This landmark judgment clarified that the relevant date for establishing trademark ownership and prior use is the date of registration application, not actual commercial use. 

The law creates a presumption of validity and proprietary ownership for registered marks, irrespective of when commercial use begins, provided the proprietor demonstrates steps towards using the mark—which Gopika Industries did through documentary evidence and correspondence with authorities between 1996 and 1999.

The defendant's argument about prior use through Dayal Fertilizers Pvt. Ltd. was dismissed by the court because its trademark application (TM No. 923948 for cattle feed) only claimed user from May 2000 onward, not from 1979. Furthermore, Dayal Fertilizers Pvt. Ltd. was not selling cattle feed under the DAYAL mark, so its use in allied products (fertilizers) was held irrelevant to the present dispute.

The court cited two further judgments:

- Patel Field Marshal Agencies v. P.M. Diesels Ltd. [2018 2 SCC 112]

- Amrish Aggarwal Trading as Ms. Mahalaxmi Product v. Venus Home Appliances Pvt. Ltd. [2024 SCC OnLine Del 3652] 

Both judgments reconfirmed that the statutory presumption linked to registered marks stands unless clear, continuous prior use in the precise category of goods is established. The court found no adequate demonstration by the defendant of usage of DAYAL for cattle feed before April 4, 1996—the plaintiff's date of registration application—which under law is regarded as the decisive cut-off for prior use.

Decision:The Hon'ble High Court rejected the defendant's request to initiate rectification proceedings against Gopika Industries' trademark and dismissed the plea of invalidity. The application did not raise a triable issue affecting the registered mark DYAL held by Gopika Industries for cattle feed. The court clarified that its observations did not impact separate pending petitions between the parties or Dayal Fertilizers Pvt. Ltd., which would be decided independently. The suit remains listed for further trial on connected matters.

Case Title: Gopika Industries Vs Dayal Industries Pvt. Ltd.

Order Date: September 26, 2025

Case Number: CSCOMM 700/2017

Name of Court: High Court of Delhi

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

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

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