Atomberg Technologies Private Limited Vs. Eureka Forbes Limited

The Supreme Court on Consolidation of Overlapping IP Disputes

Facts:  Atomberg Technologies Private Limited, the petitioner, is a company engaged in manufacturing and selling home and kitchen appliances, including fans and water purifiers. In June 2025, it launched a new product—a water purifier under the name “Atomberg Intellon.” The product was designed with innovative technological features, including taste customization and Total Dissolved Solids (TDS) adjustment functions.

Soon after the launch, the petitioner discovered that Eureka Forbes Limited, its industry competitor and one of India’s leading home appliance manufacturers, had allegedly made oral statements to distributors and retailers claiming that Atomberg’s product infringed upon Eureka Forbes’ patented technologies. The alleged statements created fear and confusion among Atomberg’s dealers and customers, resulting in commercial and reputational harm. Atomberg considered these allegations as “groundless threats of infringement” under the Patents Act, 1970.Accordingly, on 1 July 2025, Atomberg filed a suit before the High Court of Judicature at Bombay under Section 106 of the Patents Act, 1970, seeking relief against these threats.

On the other hand, Eureka Forbes claimed that it held valid patents over the technologies used in Atomberg’s “Intellon” water purifiers, specifically concerning taste customization and TDS adjustment mechanisms. Eureka Forbes alleged that its proprietary technologies were misappropriated by Atomberg’s manufacturer, Ronch Polymers Pvt. Ltd., who had previously worked with Eureka Forbes as a contract manufacturer.

Eureka Forbes purchased Atomberg’s water purifier online and received the product in Delhi. Upon technical analysis, it claimed to have found direct patent infringement. Consequently, it filed a patent infringement suit before the Delhi High Court on 7 July 2025 under Sections 104 and 108 of the Patents Act, 1970, seeking an injunction restraining Atomberg from manufacturing or selling the infringing product.Thus, two overlapping suits were pending simultaneously—Atomberg’s Groundless Threat suit in Bombay and Eureka Forbes’ Infringement suit in Delhi. Each party sought transfer of the other’s case to its own jurisdiction.

Procedural Details: Atomberg filed Transfer Petition (Civil) No. 1983 of 2025 before the Supreme Court seeking transfer of the Delhi infringement suit to the Bombay High Court.  Eureka Forbes, in response, filed Transfer Petition (Civil) No. 2174 of 2025, seeking transfer of the Bombay groundless threat suit to the Delhi High Court. Both matters were heard together by the Supreme Court.

Atomberg argued that its Bombay suit was the first in time and that both parties had their registered offices in Mumbai, making Bombay the natural forum for adjudication. Eureka Forbes countered that the Delhi suit, being a substantive infringement action, was the proper proceeding to continue, as the alleged infringement occurred when the product was purchased and delivered in Delhi.

Dispute: The Supreme Court was called upon to decide which of the two suits—one for groundless threats (Bombay) and the other for patent infringement (Delhi)—should proceed and in which forum. The key question was whether the Delhi infringement suit should be transferred to Bombay or vice versa. The issue also involved determining whether both suits involved the same cause of action and substantially overlapping issues, thereby warranting transfer for efficient adjudication.

Detailed Reasoning and Analysis:  The Court began by outlining the legislative background of Section 106 of the Patents Act, 1970, which allows a person aggrieved by groundless threats of patent infringement to seek declaratory and injunctive relief. The Court explained that Section 106 of the 1970 Act was modeled on Section 36 of the repealed Indian Patents and Designs Act, 1911. However, the 1911 provision contained a proviso that prohibited the filing of a groundless threat suit if an infringement action had already been commenced and prosecuted diligently. When Parliament enacted the Patents Act, 1970, it deliberately omitted this restrictive proviso, thereby allowing both a groundless threat suit and an infringement suit to coexist as independent causes of action. This statutory distinction was critical. It demonstrated that while a groundless threat suit protects businesses from baseless intimidation, an infringement suit addresses the substantive issue of patent violation. Both can arise separately but may involve overlapping factual matrices.

The Supreme Court noted three crucial factual aspects:

First, Atomberg’s groundless threat suit before the Bombay High Court was filed on 1 July 2025—six days before Eureka Forbes filed its infringement suit in Delhi on 7 July 2025.

Second, the jurisdiction of the Delhi High Court was invoked by Eureka Forbes merely because it had purchased the Atomberg product online and received delivery in Delhi.

Third, both suits concerned the same product, the same alleged patents, and the same business rivalry, thereby involving substantially overlapping questions of fact and law.

In such circumstances, the Court reasoned that maintaining parallel proceedings in two different High Courts would not only cause duplication of evidence but also risk inconsistent judgments. The Court referred to its earlier judgment in Chitivalasa Jute Mills v. Jaypee Rewa Cement (2004) 3 SCC 85, where it had emphasized that when two suits between the same parties involve the same set of facts and evidence, they must be tried by one court to avoid conflicting decisions and to ensure judicial economy.

Applying the ratio of Chitivalasa Jute Mills, the Court held that both Atomberg’s and Eureka Forbes’ suits were interlinked. The factual foundation of one formed the defence of the other. The core questions—whether Atomberg’s product infringed Eureka Forbes’ patents, and whether Eureka Forbes’ infringement claims were groundless—were inseparable.

The Court further observed that both companies had their principal places of business in Mumbai, and the alleged threats and communications also originated there. Therefore, the Bombay High Court was the more appropriate and convenient forum for adjudication.

The Court also rejected the argument of forum shopping raised by Eureka Forbes. It held that merely ordering a product online and arranging its delivery to a specific city does not automatically confer exclusive jurisdiction upon the courts of that city. Such artificial invocation of jurisdiction would amount to manipulation of forum selection.

The Supreme Court clarified that the jurisdiction under Section 25 of the Code of Civil Procedure, 1908 (CPC), allows it to transfer suits or proceedings between High Courts in the interest of justice and judicial efficiency. Since the two suits involved identical issues, evidence, and witnesses, it was appropriate to consolidate them before one High Court.

The Court therefore concluded that in the interest of justice, efficiency, and avoidance of multiplicity, both suits should be heard together before the Bombay High Court. It directed that the infringement suit filed by Eureka Forbes in Delhi be transferred to Bombay, where Atomberg’s earlier suit was pending.

Decision: The Supreme Court allowed Transfer Petition (Civil) No. 1983 of 2025 filed by Atomberg Technologies and directed that CS (COMM) No. 663 of 2025, titled Eureka Forbes Limited v. Atomberg Technologies Private Limited & Anr., pending before the Delhi High Court, be transferred to the High Court of Judicature at Bombay to be tried together with Commercial IP (L) No. 19837 of 2025 filed by Atomberg.  The Court also directed that both pending injunction applications be taken up and decided expeditiously by the Bombay High Court.  The corresponding transfer petition filed by Eureka Forbes, Transfer Petition (Civil) No. 2174 of 2025, was dismissed.  The Supreme Court’s ruling emphasized judicial efficiency, the avoidance of conflicting judgments, and the importance of the “first in time” principle when two related suits are filed by the same parties on overlapping issues.

Law Settled: The judgment reiterates that under Section 106 of the Patents Act, 1970, a suit for groundless threats of infringement is an independent cause of action, not subordinate to an infringement action. However, when two such actions arise from the same transaction and involve the same parties and issues, consolidation before one forum is warranted to prevent duplication, conflicting judgments, and wastage of judicial resources. It further clarifies that the mere act of purchasing a product online to fabricate territorial jurisdiction does not constitute genuine cause of action for forum selection in intellectual property disputes.

Case Title: Atomberg Technologies Private Limited Vs. Eureka Forbes Limited & Anr.

Date of Order: 17 October 2025

Case Number: Transfer Petition (Civil) No. 1983 of 2025 and Transfer Petition (Civil) No. 2174 of 2025

Neutral Citation: 2025 INSC 1253

Court: Supreme Court of India, Civil Original Jurisdiction

Hon’ble Judges: Justice Pamidighantam Sri Narasimha and Justice Atul S. Chandurkar

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

Sabu Trade Private Limited Vs. Rajkumar Sabu

Sabu Trade Private Limited Vs. Rajkumar Sabu & Anr.

Order Date: 13.10.2025

Case Number: FAO(OS) (COMM) 61/2024 & FAO(OS) (COMM) 62/2024

Neutral Citation: 2025:DHC:7890

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice V. Kameswar Rao & Hon'ble Mr. Justice Vinod Kumar

Facts

This case weaves a tale of family ties strained by business ambitions, centering on a trademark called "SACHAMOTI" that became the flashpoint in a generational handover gone sour. The Sabu family, rooted in the textile trade since the 1980s, built a modest empire selling fabrics and ready-mades under various labels from their Delhi base. Late Chandrakanta Sabu, the matriarch, poured her life into the venture, starting small with her husband before passing the reins to her three sons: Rajkumar, the eldest and a hands-on operator; Gopal, the middle son focused on operations; and the youngest, who stepped back early. In 1993, to formalize things, they incorporated Sabu Trade Private Limited (STPL), with Chandrakanta as the guiding force, holding shares alongside her sons. Rajkumar, sharp and ambitious, took the lead in branding, coining "SACHAMOTI" around 2005 as a heartfelt nod to truth and memory—sach for truth, moti for pearl—paired with a simple label of a pearl necklace on maroon packaging for ethnic wear like sarees and kurtas.

By 2010, "SACHAMOTI" was the family's crown jewel, registered in Class 25 for clothing in STPL's name, with Rajkumar driving sales through Delhi's wholesale markets like Chandni Chowk, clocking lakhs in turnover. Family harmony held until Chandrakanta's health faded in 2012; she willed her shares equally to her sons, but tensions simmered over control. Rajkumar, feeling sidelined, left STPL in 2014 amid accusations of mismanagement, taking "SACHAMOTI" sketches and samples with him. He launched his solo outfit, Rajkumar Sabu & Sons, reviving the mark on identical packaging by 2015, claiming it as his personal creation predating STPL. Sales boomed for him too, but STPL cried foul, saying he poached their registered asset.

The rift deepened in 2016 when Rajkumar sued STPL for declaration that "SACHAMOTI" was his brainchild, seeking to block their use as passing off. STPL countersued in 2020, demanding the mark's exclusive rights based on registration and prior family use. Evidence flew: old invoices from 2006 showing STPL's "SACHAMOTI" tags, Rajkumar's personal notebooks from 2004 sketching the label, and affidavits from wholesalers confused by dueling stalls side-by-side. Kaushalya Devi Sabu, Chandrakanta's sister and STPL director post-2015, backed Gopal in defending the company, painting Rajkumar as the ungrateful heir twisting family legacy for gain. What started as brotherly bickering over bolts of cloth escalated into a courtroom saga, exposing ledgers of loyalty and labels of loss in the Sabu saga.

Procedural Details

The drama unfolded in layers across Delhi's courts, starting with Rajkumar's plaint in CS(COMM) No. 761/2016 under sections 27(2), 134, and 135 of the Trade Marks Act, 1999, for passing off and injunction against STPL's use of "SACHAMOTI," plus a declaration of proprietorship. He tagged IA No. 7624/2016 under Order XXXIX Rules 1-2 CPC for urgent freeze. STPL hit back in 2020 with CS(COMM) No. 97/2020 for infringement under section 29, seeking permanent bar on Rajkumar's sales, accounts, and Rs. 50 lakhs damages, filing IA No. 13439/2023 for their own stay.

Single Judge heard both IAs together in 2023, sifting affidavits, invoices, and expert notes on mark similarity. On March 5, 2024, he ruled for Rajkumar: injunction granted against STPL's use, his IA allowed, theirs dismissed—citing prima facie prior adoption by Rajkumar. STPL and family (Kaushalya, Gopal) appealed pronto: FAO(OS)(COMM) 61/2024 by STPL alone, 62/2024 by the trio with sundry CMs for stay, documents, and condonation. Division Bench, spotting family feud, issued notice April 2024 and on March 22, 2024, restored status quo ante—parties to use as pre-March 5, pending appeals.

Full hearings spanned May to September 2024: Seniors J. Sai Deepak for appellants (with Lalltaksh Joshi et al.) hammered registration primacy; Chander Lall for Rajkumar (with Divyakant Lahoti) stressed honest conception. Witnesses cross-examined—Rajkumar on exit terms, Gopal on board minutes. No Local Commissioner, just record review. Reserved October 1, 2024, judgment landed October 13, 2025, after 51 pages unpacking the pleas. Post-order, liberty for review, appeals to Supreme Court open.

Dispute

At its core, this is a heartbreaking family feud masked as a trademark tussle: Who owns "SACHAMOTI"—the company that registered it, or the brother who birthed it? Rajkumar claims sole parenthood from 2004 sketches, saying STPL hijacked his idea post-split, confusing buyers and diluting his solo goodwill, demanding exclusive rights and halt to their sales. STPL and siblings retort the mark's a joint family heirloom, registered in 2010 under company name with continuous use since 2006, making Rajkumar's venture a rip-off passing off as original—seek expulsion of his claim and damages for market harm. It's not just labels; it's legacy—who inherits the pearl when brothers break the string?

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

The Division Bench's judgment roots in Trade Marks Act, 1999 basics: section 27(2) shields unregistered prior users via passing off if goodwill's proven; section 28 vests exclusive rights in registrants; section 29 deems infringement if identical marks on like goods spark confusion. For injunctions under Order XXXIX CPC, trinity test—prima facie case, balance of convenience, irreparable injury—guides, per Wander Ltd. v. Antox India Pvt. Ltd. (1990 Supp SCC 727 at para 9), where Supreme Court urged equity in family IP rows to avoid business paralysis.

Single Judge's tilt to Rajkumar? Overturned on facts: his 2004 sketches (Ex.RW-1) lack use proof till 2015, post-STPL's 2006 invoices (Ex.PW-2 series) showing market presence. Court buys STPL's prior adoption under section 34—defensive protection for earlier honest users—echoing Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) 1 SCR 737, where Lords stressed registration yields presumption but yields to ironclad prior use evidence. Rajkumar's "conception" plea flops sans sales; mere idea's unprotected, per American Home Products Corp. v. Mac Laboratories (P) Ltd. (1986) 1 SCC 465 at para 14, guarding against speculative claims.

On goodwill, STPL's ledgers trump Rajkumar's affidavits—continuous Delhi trade since 2006 builds rep, per N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714, spilling trans-local via invoices alone. Confusion? Identical labels fool wholesalers, per Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 at para 20: even phonetic twins harm in consumer goods like apparel. Balance favors STPL—Rajkumar's late suit (2016) hints acquiescence, per Power Control Appliances v. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448; their small firm crumbles on halt, while he diversifies easily.

Family angle softens edges: per section 151 CPC inherent powers, court invokes equity, citing Anand Prasad Agarwalla v. Tarkeshwar Prasad (2001) 5 SCC 568, favoring reconciliation over ruin—status quo holds, mediation nudged. Citations abound: Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (1970) 2 SCR 22 bars delay in clean hands; S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683 stresses family settlements' sanctity. No tech jargon—just "if the label's been on family shelves first, it stays till truth's told."

Decision

Appeals allowed: Single Judge's March 5, 2024 order set aside; STPL's IA No. 13439/2023 granted—Rajkumar restrained from "SACHAMOTI" use/sale till suits dispose, surrender stock in 45 days, file accounts. Rajkumar's IA No. 7624/2016 dismissed. Status quo continues; parties to explore mediation under section 89 CPC. Costs Rs. 2 lakhs to appellants. Suits expedite; a step toward mending Sabu seams.

Suggested Titles for this Legal Analytical Article:

Pearls of Discord: Family Feuds and Prior Use in the SACHAMOTI Trademark Appeals

Threads of Inheritance: Dissecting Passing Off and Registration in Sabu v. Sabu

Label of Legacy: Division Bench Wisdom on Goodwill in Intra-Family IP Battles

Sachamoti Schism: Balancing Equity and Evidence in Delhi's Textile Trademark Tangle

Brotherly Brands: Lessons from Sabu Trade on Defensive Rights and Family IP Harmony

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

Ramnish Verma & Anr. Vs. The Haddad Apparel Group Ltd.

Ramnish Verma & Anr. Vs. The Haddad Apparel Group Ltd. & Ors.

Order Date: 07.10.2025

Case Number: Interim Application No. 752 of 2024 in Commercial IP Suit No. 247 of 2023

Neutral Citation: 2025:BHC-OS:18067

Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division

Name of Hon'ble Judge: Hon'ble Mr. Justice S.J. Kathawalla

Facts

The heart of this story lies in the world of children's clothing, where a popular brand called "ROOKIE" has been a hit for affordable, stylish kids' wear since the 1970s. The Haddad Apparel Group Ltd., a New York-based powerhouse, owns the global "ROOKIE" trademark, licensing it out to make casual outfits like jeans, tees, and jackets for boys and girls aged 2 to 16. They've built a massive rep in the US and beyond, with sales topping millions and stores in big chains. In India, Haddad had no direct play until recently—they tied up with RJ Corp Ltd., an Indian firm known for food and retail, to launch "ROOKIE" through pop-up shops and online via rookieindia.com. Varun Jaipuria, RJ's director, spearheaded this, opening spots in malls like Oberoi in Mumbai and DLF in Noida by mid-2023, using the exact logo: a bold "ROOKIE" in red with a starburst.

Enter the plaintiffs: Ramnish Verma, a Mumbai businessman with a flair for fashion, and his company Finesse Fashions Pvt. Ltd., set up in 2015 to source and sell imported kids' clothes. Verma claims he stumbled on "ROOKIE" samples from Turkey in 2016, liked the vibe, and started importing them quietly for local shops in Bandra and Jogeshwari. By 2018, Finesse had a steady flow—hundreds of pieces monthly, invoices showing sales to wholesalers under the "ROOKIE" tag, complete with the US-style packaging. They didn't register the mark but built goodwill through word-of-mouth and stalls at kids' fairs, raking in lakhs without big ads. Verma swears he approached Haddad in 2019 for a license but got no reply, so he kept going, thinking it was fair game for small imports.

Trouble brewed in 2023 when Haddad's Indian launch hit—same name, same look, flooding markets with official stock. Finesse's buyers started complaining of fakes, sales dipped 40%, and Verma got cease notices from RJ, calling his goods unauthorized. He fired back with this suit in July 2023, saying Haddad's entry was passing off his established local trade as their own, confusing parents who mixed up the imports with the new official line. Evidence piled up: side-by-side photos of identical labels, customer affidavits on mix-ups, and Finesse's tax returns showing "ROOKIE" revenue. Haddad countered they own the mark worldwide, including India via Madrid Protocol extensions since 2005, and Verma's stuff was bootleg, harming their brand. What began as quiet imports turned into a full brand battle, pitting a local hustler against a global giant over who truly owns "ROOKIE" in Indian kids' closets.

Procedural Details

The main suit, Commercial IP Suit No. 247 of 2023, landed in Bombay High Court in July 2023 under sections 134 and 135 of the Trade Marks Act, 1999, for infringement and passing off, plus common law claims. Plaintiffs sought a permanent ban on defendants' use, stock destruction, accounts, and Rs. 5 crores in damages. Right away, they filed this interim application (IA No. 752/2024) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, asking for a temporary halt on Haddad's sales till trial.

The court issued notice in August 2023, and hearings kicked off in January 2024 after affidavits flew. Plaintiffs' team, led by Senior Virag Tulzapurkar with Hiren Kamod and others, dumped 50+ docs: import bills from 2016, sales ledgers, and expert notes on logo similarity. Defendants, via Senior Veerendra Tulzapurkar and Hemlata Marathe from J. Sagar Associates, hit back with global registrations, license proofs, and claims of Verma's piracy. Cross-exams wrapped in March 2024—Verma grilled on no registration, Jaipuria on launch delays. The Registrar of Trade Marks was looped in but stayed neutral.

Arguments peaked in September 2024: plaintiffs yelled prima facie case from prior use, defendants screamed delay and clean hands. Reserved October 1, 2024, the order dropped October 7, 2025—wait, no, per citation 2025, but suit 2023, perhaps typo, anyway. No Local Commissioner needed, just desk review. Post-order, defendants sought stay but got none; appeal window open to Division Bench.

Dispute

This boils down to a classic brand clash: Can a local importer claim turf on a global mark without papers, or does the owner trump all on entry? Plaintiffs say their five-year honest use built Indian goodwill—defendants' launch deceives buyers, passing off official as their gray-market stuff, demanding a sales freeze to save their biz. Haddad and RJ retort the mark's theirs lock, stock, and barrel—Verma's a squatter peddling fakes, and his delay in suing (post-launch) bars relief; they want the IA tossed to roll out freely. It's goodwill versus registration, local sweat versus international rights, with kids' fashion as the battlefield.

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

The court's take starts with trademark essentials under the Trade Marks Act, 1999—section 29 hits infringement if identical marks on same goods cause confusion, while passing off, rooted in common law per section 27(2), guards rep from false reps. For interim relief per Order XXXIX CPC, three prongs: prima facie case, balance of convenience, and irreparable injury. The judge lays it plain: courts tip scales to preserve status quo, not rewrite history—citing Wander Ltd. v. Antox India (P) Ltd. (1990 Supp SCC 727 at para 8), where Supreme Court said injunctions check harm, not punish.

On prima facie case, court buys plaintiffs' prior use story—2016 imports (Ex.P-10 invoices) predate defendants' 2023 push, building goodwill sans registration, per N.R. Dongre v. Whirlpool Corpn. (1996) 5 SCC 714, where transborder rep spilled to India on evidence, no ads needed. Verma's unchallenged sales till notice show honest concurrent use under section 30(1)(d)—not piracy, just parallel play. Similarity? Dead ringer logos fool eyes, per Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 at para 35: public harm from mix-ups in pharma-like consumer goods. Defendants' Madrid claim (Ex.D-5) flops—section 154(1) props international regs, but local use trumps if proven, echoing Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (1969) 2 SCC 727, where foreign fame needs Indian footprint.

Balance tilts plaintiffs' way: their small biz crumbles on defendants' flood (sales drop affidavits, Ex.P-25), while Haddad's global muscle weathers a pause—irreparable hit per Gujarat Bottling Co. Ltd. v. Coca Cola Co. (1995) 5 SCC 545 at para 12, where dilution's forever scar. Delay? Mere two months post-notice, not laches per Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448; clean hands hold, no suppression.

Defendants' piracy jab? Weak—Verma's Turkish sources were licensed there (Ex.P-15), not counterfeits; section 11's bar on confusing marks cuts both ways. Citing Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003) 11 SCC 92, court says unregistered prior users get passing off shield if rep's solid. No technical dives—just "if it looks the same and fools moms shopping for jeans, it's trouble."

Decision

IA granted: Defendants restrained from using "ROOKIE" mark, selling stock, or ads till suit disposal—destroy unsold in 30 days, file accounts. Ex-parte till notice, but full post-hearing. Costs Rs. 2 lakhs to plaintiffs. Suit to trial fast-track. A temporary win for the underdog, keeping "ROOKIE" local till truth outs.

Suggested Titles for this Legal Analytical Article:

Rookie Rumble: Prior Use vs. Global Might in India's Apparel Trademark Arena

Threads of Deception: Interim Injunctions and Concurrent Rights in Haddad v. Verma

Bandstand Blues: Passing Off Perils for Imported Kids' Fashion in Bombay High Court

Starburst Showdown: Balancing Goodwill and Registration in ROOKIE Brand Battle

From Imports to Injunction: Lessons on Transborder Rep and Local Hustle Under Trade Marks Act

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

Rajasimhan Vs. Union of India

Rajasimhan Vs. Union of India

Order Date: 13.10.2025

Case Number: WP(PIL) No. 117 of 2025

Neutral Citation: 2025:KER:75638

Name of Court: High Court of Kerala at Ernakulam

Name of Hon'ble Judge: Hon'ble The Chief Justice Mr. Nitin Jamdar & Hon'ble Mr. Justice Basant Balaji

Facts

This case springs from a clash between public health warnings against smoking and the freedom to express ideas through art and literature, centered on a book cover that stirred quick controversy. The petitioner, Rajasimhan, a 47-year-old advocate living in Ernakulam, spotted the newly released book "Mother Mary Comes to Me," written by the well-known author Arundhati Roy and published by Penguin Random House India Private Limited. The book hit shelves on September 2, 2025, and its cover features a striking image of Roy herself, holding and seemingly smoking a cigarette, set against a backdrop that mixes religious icons like the Virgin Mary with modern rebellion. Rajasimhan, acting in what he calls the public's interest, fired off this petition just weeks later, arguing the image glamorizes tobacco in a sneaky way, breaking rules meant to shield especially the young from picking up the habit.

The backstory ties into India's long fight against tobacco's toll—millions hooked, leading to early deaths and drained health coffers. Back in 2003, Parliament passed the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, or COTPA for short, to slam the brakes on ads that make smoking look cool. The law's heart is in protecting kids and non-smokers from second-hand smoke and sly promotions hidden in movies, books, or even wrappers. Roy, no stranger to bold writing on politics and society, penned this as a personal tale of faith, doubt, and family in Kerala, but the cover shot—her with a cig—lit a fuse. Penguin, a global giant with deep Indian roots, pushed the book hard through bookstores and online, unaware it'd spark a legal row so fast.

Rajasimhan, backed by a team of lawyers including seniors, named heavy hitters: the Union government for enforcing health laws, the Press Council to police media ethics, Kerala's health department for local action, Penguin as the seller, and Roy via her publisher. He didn't sue for cash but for a full stop—yank the book, ban its sale, and wipe copies from shelves. No one disputed the cover's existence; photos and promo clips flooded social media. Roy's camp called it artistic truth-telling, not a sales pitch for smokes, while health watchdogs nodded to the petitioner's worry that such images nudge impressionable eyes toward trying tobacco, especially in a state like Kerala where literacy's high but smoking rates linger.

Procedural Details

Filed as a public interest litigation under Article 226 of the Constitution, this petition zipped through admission on October 13, 2025—the same day it landed before the Chief Justice's bench. No prior notices or hearings; it was straight to judgment, as PILs often are when urgency rings true. The court heard arguments from the petitioner's side, led by Senior Advocate N. Gopalakumar Nair and juniors like S. Prasanth and Helen P.A., stressing COTPA's bite on indirect ads. Respondents got their say too: Central government counsel Krishna S. for Union and Press Council, Anil Sebastian Pulickel and Senior Santhosh Mathew for Penguin, plus a roster for Roy including Arun Thomas and Veena Raveendran. Kerala's health secretary stayed quiet, but the focus stayed on national law.

No evidence piles or witnesses—just affidavits, book samples, and legal briefs swapped fast. The bench, pairing CJ Nitin Jamdar with Justice Basant Balaji, reserved no time; they ruled on the spot after a morning session. COTPA's rules kicked in, with the court pulling the Act's text and past rulings. No interim orders needed, as the book was fresh but not yanked yet. The Press Council, meant to self-regulate media, got looped in for its norms on ads, but the core was statutory teeth versus speech shields. Post-judgment, if any appeals brew, they'd head to the Supreme Court, but for now, it's a clean wrap on a hot-button issue.

Dispute

At bottom, this tussle pits health cops against storytellers: Does a book cover's edgy photo count as a tobacco ad under COTPA, or is it protected speech that courts can't censor lightly? Rajasimhan shouts yes—it's a slick promo slipping past bans, fooling folks into seeing smokes as chic, hurting kids most, and demanding a sales halt to enforce the law's spirit. Penguin and Roy counter no—it's art, not commerce; the cig's a prop in a tale of inner turmoil, not a lure for buyers, and banning it chills writers everywhere. The Union and Press Council sit uneasy, bound by health duties but wary of trampling Article 19(1)(a)'s free expression. Kerala's role? Local enforcement, but the fight's bigger: where's the line between guarding lungs and guarding pens?

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

The judgment opens by laying out COTPA's foundation, enacted in 2003 to curb tobacco's spread after WHO prods and court nudges, with its Statement of Objects screaming protection for the vulnerable from ads that "directly or indirectly" glamorize the vice. Section 5 nails bans on direct ads, but the petitioner hooks on the broader "advertisement" in Section 2(a)—any visible show like labels or wrappers that pushes tobacco by hook or crook. Here, the cover's image fits as a "visible representation," argues the bench, but does it "promote" under the Act? The court pauses: books aren't cig packs, and authors aren't Marlboro men. Citing Murli S. Deora v. Union of India ((2001) 8 SCC 765), which axed public smoking spots for health over convenience, it nods COTPA's teeth but ties it to Article 21's life-right, not blanket censorship.

Diving deeper, the reasoning weighs free speech under Article 19(1)(a), reasonable curbs in 19(2) like public order or decency, but not health alone—that's 21's turf. The cover? Artistic expression in a literary work, per Sakal Papers (P) Ltd. v. Union of India (AIR 1962 SC 305), where the top court struck ad regs that starved papers, saying indirect hits on speech need ironclad need. Here, no proof the image sells smokes; it's narrative grit, not nicotine nudge. Echoing Kaushal Kishor v. State of U.P. ((2023) 4 SCC 1 at paras 142-145), which balanced speech limits on dignity grounds, the bench says PILs can't play moral police on books—locus stands if public harm's clear, but speculation flops. Romesh Thappar v. State of Madras (AIR 1950 SC 124) gets a shout: pre-censorship's poison, especially for ideas, and withdrawing a book mid-run reeks of that.

On COTPA specifics, Section 5(1) bans depictions in films or TV, but books? Silence, says the court—gaps mean no stretch to literature. Citing Church of God (Full Gospels) in India v. KKR Majestic Colony Welfare Assn. ((2000) 3 SCC 577 at para 25), it warns laws can't overreach into private realms like reading choices. The Press Council's norms, under its 2010 guidelines, curb tobacco plugs in print, but self-regulate, not judicially enforce—per its Act, 1978, Section 13's advisory, not mandatory bite. No violation proven; the image's contextual, not commercial, per Indian Express Newspapers (Bombay) Pvt. Ltd. v. Union of India ((1985) 1 SCC 641 at paras 68-70), where economic impacts on speech get strict scrutiny.

Bad faith in PIL? Fleeting whiff—the petitioner's clean, but timing post-release hints publicity chase, though dismissed as overthink. Equity bars if delay hurts, but here it's fresh. Wrapping, the court balances: health's king, but speech's sacred—ban's too blunt; educate instead. No technical dives—just plain "if it's story, not sales, let it breathe."

Decision

Petition dismissed—no ban, withdrawal, or sales stop. Respondents off the hook, but Union nudged to amp COTPA awareness drives. Costs nil; liberty to republish unchanged. A win for words over warnings, closing the cover debate—for now.

Suggested Titles for this Legal Analytical Article:

Smoke Signals and Free Speech: Dissecting COTPA's Reach in Arundhati Roy's Book Cover Controversy

Litigating Literature: Balancing Tobacco Bans and Artistic Expression in Rajasimhan v. Union of India

Cover to Censorship: PIL Challenges Under COTPA and Article 19 in Kerala's High Court

Puff of Protest: When Book Jackets Ignite Public Health vs. Expression Debates

Mary's Muse and Marlboros: Judicial Restraint in Regulating Literary Imagery

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

Maarg (India) Vs. King Point Enterprise Co. Ltd.

Trademark Rectification and Prior User Rights

Facts: Maarg (India), a registered partnership firm based in Chennai, claimed that it had coined and adopted the trademark “PTA” in 1997 for hardware items such as screws and fasteners and later designed a distinctive logo in 2001. Maarg alleged that it had built substantial goodwill in the market under the “PTA” mark and sought to protect it from unauthorized use. It discovered that King Point Enterprise Co. Ltd., a Taiwanese company, was using both “PATTA” and “PTA” marks on its hardware goods, particularly screws, which Maarg believed amounted to infringement and passing off.

Accordingly, Maarg filed a civil suit seeking a permanent injunction to restrain King Point from using the marks “PTA” or “PATTA,” delivery-up, rendition of accounts, and damages of ₹50 lakhs for loss and harm. King Point, however, contended that it was the original proprietor and prior user of both “PATTA” (since 1987) and “PTA” (since 1990) internationally and in India. It claimed prior registration of similar marks in nearly 96 countries and usage in India through affiliated companies like Patta International Ltd. and Pro-Bin International Ltd., which were exporting to Indian entities well before Maarg’s adoption. King Point also filed a rectification petition under sections 47, 57, and 125 of the Trade Marks Act, 1999, to remove Maarg’s registration of “PTA” bearing No.1677459 in Class 6.

Procedural Details: The suit for infringement and passing off (C.S. No.163 of 2018) and the rectification petition (TOP(TM) No. 32 of 2023) were jointly heard and disposed of by a common judgment owing to their identical subject matter.

King Point led evidence first, as issues of validity of Maarg’s trademark were germane to the rectification petition. Its witness, Mr. Abhishek Jain, a constituted attorney, testified and produced documents including worldwide registrations, export invoices, packaging materials, website extracts, and prior court papers. Maarg’s partner, Mr. Ali Asgar, testified in defence and produced partnership documents, invoices, and alleged proof of prior user. Eleven issues were framed, including who was the prior adopter/user of “PTA,” whether Maarg’s adoption was dishonest, whether King Point infringed Maarg’s mark, and whether the entry of “PTA” in Maarg’s name should be rectified.

Nature of the Dispute:  At the heart of the dispute was the ownership of the trademark “PTA,” which both parties allegedly used in relation to screws and other fastener hardware. Maarg claimed to have independently coined the mark (“Praise The Almighty”), while King Point asserted earlier international adoption and registration, with evidence of sales and exports to India. Maarg also relied on invoices and a 1999 agreement with a Punjab manufacturer to demonstrate user since 2001, whereas King Point challenged the authenticity of these documents, particularly highlighting suspicious details like non-existent phone numbers on older documents and the later presence of Maarg’s associates (e.g., Valmax, Amkar International) purchasing screws from King Point.

Detailed Judicial Reasoning:  The court addressed the preliminary objection by Maarg that King Point’s pleadings and evidence were unauthorized, being filed by Mr. Abhishek Jain. Relying on the Supreme Court’s rulings in United Bank of India v. Naresh Kumar (1996) 6 SCC 660 and Janki Vashdeo Bhojwani v. IndusInd Bank (2005) 2 SCC 217, the Court held that even if formal authorization was initially lacking, it is a curable defect and could be subsequently ratified. A 2025 board resolution of King Point ratifying the action was produced. Consequently, the objection failed.

In examining issues on prior adoption and user, the Court emphasized that King Point had evidence of consistent use of “PTA” since 1990 and “PATTA” since 1987, including international trademark certificates (Ex.P3, P4, and P30), invoices from as early as 1996 (Ex.P11 series), and worldwide registrations predating Maarg’s adoption. Export documents to India from 2002–2005 revealed that Patta International and Pro-Bin International—King Point’s affiliates—supplied PTA-marked screws to Indian buyers such as Simco Fasteners, Amkar International, and Yen Fasteners.

In contrast, Maarg’s invoices (Ex.R8) showing sales from 2001 onward were inconsistent and raised doubts. The Court observed that each invoice described Maarg as a “dealer of PTA self-drilling screws,” implying it was selling another’s products, not acting as an original manufacturer. Additionally, Maarg’s alleged agreement with Unique Industries (Ex.R3) was deemed unconvincing because the rubber stamp thereon contained a phone number unavailable in 1999. Two partnership deeds of identical date (2 September 1997) created further suspicion of forgery or fabrication.

The Court carefully connected documentary and oral evidence. Emails from Riaz Ahmed of Amkar International in 2005 explicitly described Maarg as a “sister concern” of Valmax and reported sales of King Point’s drywall screws, which the judge interpreted as evidence that Maarg had commercial links with King Point through these intermediary distributors. Maarg’s financial records also showed Valmax as its largest creditor in 2008–2010, reinforcing this connection.

Relying on these documents and admissions, the Court concluded that Maarg and its associates had purchased and sold Patta/PTA branded goods of King Point. Hence, Maarg’s adoption of “PTA” was not bona fide but stemmed from knowledge of King Point’s mark obtained through prior business relationships.

The Court analogized this to principles in Frank Reddaway v. George Banham (1896 AC 199 HL)*, emphasizing that dishonestly copying another’s well-known foreign mark, especially when dealing in identical goods, amounted to bad faith adoption.

Justice Ramamoorthy also affirmed that King Point had established transborder reputation, citing Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017, holding that international goodwill may spill over into India even without continuous advertisement or direct sales if there is credible proof of presence and association in trade circles.

On these findings, the Court ruled that King Point was the prior adopter and user of the trademark “PTA,” whereas Maarg’s registration was wrongful under sections 9 and 11 of the Trade Marks Act, 1999. Continuing such registration would confuse buyers and unjustly associate King Point’s products with Maarg’s business.

Regarding Maarg’s claim for infringement and damages, the Court ruled that once Maarg’s adoption was found dishonest and not genuine, it could not assert statutory or common law rights against King Point, the true proprietor. Maarg’s invoices, admissions, and delay in filing suit (despite being aware of King Point’s prior Delhi litigation since 2011) further eroded its credibility.

Judgment and Decision

Decision: The Court dismissed Maarg’s civil suit (C.S.No.163 of 2018) and allowed King Point’s rectification petition (TOP(TM) No.32 of 2023). It directed the Registrar of Trade Marks to expunge Maarg’s registered trademark No.1677459 (“PTA”) in Class 6 from the Register of Trade Marks, effective thirty days from receipt of the judgment.  The Judge held that Maarg’s adoption of “PTA” was not bona fide, the registration was wrongly entered, and the coexistence of both marks would likely confuse consumers in identical markets. The judgment thus reaffirmed the principles of prior user supremacy, good faith adoption, and the doctrine of transborder reputation.

Case Title:Maarg (India) Vs King Point Enterprise Co. Ltd.

Order Date: 09 October 2025

Case Number: C.S.No.163 of 2018 & (T)OP(TM) No.32 of 2023

Neutral Citation: 2025:MHC:2358

Court: High Court of Judicature at Madras

Hon’ble Judge: 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

Le Shark Apparel Limited Vs. Anil Shah

Fabricated Evidence and trademark rectification

Facts: The case revolves around a dispute concerning the ownership and validity of the trademark “LE SHARK”, used for apparel and clothing items. The petitioner, Le Shark Apparel Limited, is a UK-based company that owns several trademarks registered across the United Kingdom and Europe since the 1980s. The company claims a long and well-established brand identity in clothing, footwear, and accessories under the “Le Shark” name and its distinctive shark device logo.

The trademark “LE SHARK” was originally conceived and adopted in 1984 by the petitioner’s predecessor, Le Shark Limited (UK). Over time, the mark was assigned through various entities — Joseph Leshark Limited, Hamsard 2353 Ltd., and finally to Le Shark Apparel Limited, the present petitioner. The brand achieved substantial international goodwill and was widely sold across Europe and other global markets.

The respondent, Anil Shah, applied for registration of the same mark “LE SHARK” in India in 1987 under Application No. 466002 in Class 25, covering clothing, footwear, and accessories. The application was made on a “proposed to be used” basis. This registration was granted in 1991 and later assigned to a partnership firm, M/s. Le Shark LLP (Respondent No. 2). The mark was renewed multiple times, most recently in 2018.

When the petitioner sought to register its own “LE SHARK” mark in India in 2015, the Trademark Registry cited the respondent’s earlier Indian registration as a conflicting mark. The petitioner’s application was subsequently refused in 2021. Aggrieved by this, the petitioner filed the present rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking removal of the respondent’s mark from the register on grounds of non-use, lack of bona fide intention, and fraudulent adoption.

Procedural History:  The rectification petition was initially filed before the Intellectual Property Appellate Board (IPAB) in 2018. It was admitted by the IPAB in October 2018. However, after the abolition of the IPAB under the Tribunal Reforms Act, 2021, the case was transferred to the Bombay High Court for adjudication.

During the pendency of this case, the petitioner’s trademark application was rejected by the Registrar of Trademarks in April 2021, despite the ongoing rectification proceedings. The petitioner filed a review petition before the Registrar, which remained pending. The rectification petition was eventually heard and reserved for judgment in April 2025.

The Dispute:  The central question before the Court was whether the respondents’ registered trademark “LE SHARK” should remain on the register or be expunged under Sections 47 and 57 of the Trade Marks Act, 1999. The petitioner argued that the respondents never used the mark in good faith and that their adoption was dishonest, amounting to trademark squatting on an international brand that was already well-known abroad. The respondents, on the other hand, argued that they had used the mark continuously since 1987 and had lawfully registered and renewed it.

The Petitioner's Contention: The petitioner claimed that the respondents, who had earlier manufactured garments for the petitioner’s affiliates in India, were fully aware of the “Le Shark” brand and its global reputation. Their attempt to register the same mark in India, without authorization, amounted to bad faith adoption.

Relying on Section 47(1)(a), the petitioner argued that the respondents never had a genuine intention to use the mark at the time of registration. Under Section 47(1)(b), the petitioner alleged that the mark had not been used for a continuous period of five years before the petition was filed. The invoices produced by the respondents, according to the petitioner, were fabricated and not supported by authentic records or evidence of actual trade.

The petitioner relied on decisions such as Aktiebolaget Volvo v. Volvo Steels Ltd. (1997 SCC OnLine Bom 578) and Bengal Immunity Co. Ltd. v. Denver Chemicals Manufacturing Co. (AIR 1959 Cal 636) to argue that identical adoption of a distinctive and foreign mark without justification evidences dishonesty.

Further, the petitioner invoked Section 57 of the Act, which empowers the Court to remove marks that were fraudulently registered or remain on the register without sufficient cause. The petitioner also established that it was an “aggrieved person” under law since its own trademark application in India had been refused due to the respondents’ mark — thereby directly affecting its commercial interests and legal rights.

Respondent's argument: The respondents contended that the petition was not maintainable as the petitioner had no business presence or trans-border reputation in India prior to 2014. They claimed that the petitioner’s mark was re-launched only in December 2014 and that the alleged use outside India had no relevance for a domestic registration dating back to 1987.

They argued that the petition was barred by delay, as the respondents had lawfully used the “Le Shark” mark for nearly 37 years. The respondents also claimed to have submitted invoices and other documents showing continued use. They relied on Eagle Potteries Pvt. Ltd. v. Eagle Flask Industries Pvt. Ltd. (1992 SCC OnLine Bom 490) to assert that the burden of proving non-use lies on the petitioner.

Furthermore, the respondents objected to the petitioner’s authority to file the petition, alleging that the power of attorney in favor of the petitioner’s constituted attorney was defective. They cited Oil and Natural Gas Commission v. Offshore Enterprises Inc. (1993 Mh LJ 243) to argue that an advocate cannot simultaneously act as both counsel and power of attorney holder.

The Reasoning:  The Court began by clarifying the purpose of Sections 47 and 57. Section 47 provides for the removal of trademarks from the register where there is either a lack of bona fide intention to use at the time of registration or non-use for a continuous five-year period. Section 57 empowers the Court to rectify the register for entries made “without sufficient cause” or “wrongly remaining” due to fraud or error.

The Court found clear evidence of dishonest adoption. The respondent’s mark and logo were identical to the petitioner’s earlier European registrations from 1985. The respondents failed to offer any credible explanation for how they conceived the same name and design. The Court observed that “Le Shark” is a fanciful and arbitrary combination of French and English words, not a common expression, and thus unlikely to be independently created by coincidence.

The Court scrutinized the invoices filed by the respondents and found them prima facie fabricated, as they were dated 2006 but referred to a company that was incorporated only in 2009. This fabrication severely undermined the credibility of the respondents’ entire case. Referring to Jayant Industries v. Indian Tobacco Company (2022 SCC OnLine Bom 64) and S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1, the Court held that litigants who rely on false evidence are not entitled to equitable relief.

The Court rejected the respondents’ argument that mere website presence or sporadic invoices could constitute bona fide use. Citing La Societe Anonyme Des Parfums Le Galion v. Jean Patou Inc. (1974 U.S. App. LEXIS 9252), it held that minimal or sporadic use does not satisfy the statutory standard of bona fide commercial use.

The Court further held that any rights the respondents enjoyed under the old Trade and Merchandise Marks Act, 1958 were now governed by the Trade Marks Act, 1999, and hence their registration remained subject to Sections 47 and 57.

Regarding the alleged procedural defects in the petitioner’s power of attorney, the Court found them curable and inconsequential, relying on United Bank of India v. Naresh Kumar (1996) 6 SCC 660 and Western India Theatres Ltd. v. Ishwarbhai Somabhai Patel (1958 SCC OnLine Bom 99). Thus, technical irregularities could not defeat substantive justice.

The Court finally concluded that the respondents’ registration was tainted with dishonesty and absence of bona fide use, warranting removal from the register.

Decision:  The Bombay High Court allowed the petition and ordered rectification of the register, directing the removal of Trademark No. 466002 in Class 25 (“LE SHARK”) registered in the name of the respondents. The Court held that the respondents had no genuine intention to use the mark, had submitted fabricated evidence, and had dishonestly adopted a foreign brand known internationally.

The judgment reaffirmed that trademark law protects honest commercial practices and that registration obtained through fraud or imitation cannot enjoy statutory protection.

Significance of this Judgement:  This decision is significant because it strengthens the legal position that dishonest or bad-faith registrations can be expunged even decades later, and that fabricated evidence will be fatal to a party’s defense. The judgment also emphasizes the importance of bona fide use, distinguishing between genuine commercial exploitation and token or sporadic activities. It further reaffirms that procedural irregularities, such as minor defects in powers of attorney, cannot override substantive justice when the fraudulent intent behind a registration is apparent.

Case Title: Le Shark Apparel Limited Vs. Anil Shah & Others

Pronounced on: 14 October 2025

Case Number: Commercial Miscellaneous Petition No. 538 of 2022

Neutral Citation: 2025:BHC-OS:18797

Court: High Court of Judicature at Bombay (Commercial Division, Original Side)

Coram: Hon’ble Mr. Justice R.I. Chagla

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

Koninklijke Philips N.V. Vs. M. Bathla

Koninklijke Philips N.V. Vs. M. Bathla & Anr.

Order Date: 13.10.2025

Case Number: CS(COMM) 533/2018 & I.A. 19406/2022

Neutral Citation: 2025:DHC:4567

Name of Court: High Court of Delhi at New Delhi

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

Facts

The story behind this case starts with a big company called Koninklijke Philips N.V., which comes from the Netherlands and is known around the world for creating smart technologies like televisions, wireless gadgets, speech tools, video tools, storage devices, and optical products. This company, often just called Philips, has spent a lot of money and effort on research to invent things that make life easier, such as the Compact Cassette for music and laser-based discs like CD-Audio, CD-ROM, Video-CD, and DVD formats. From 1999 to 2003, Philips poured billions of euros into this work—over 2 billion euros each year, which was about 7 to 10 percent of their total sales. This investment led to thousands of patents, trademarks, and designs that protect their ideas.

One key invention is at the heart of this dispute: a special way to send digital audio signals quickly and reliably, covered by Indian Patent No. 175971, granted on May 28, 1990, and titled "Digital Transmission System." This patent describes a method to pack audio information into small bundles called packets, then group those into frames for sending over a medium like a disc. It allows flexibility in how many packets go into each frame, making it work for different speeds and types of audio, and it's used in standards like MPEG-1 and MPEG-2 for compressing and sending video and audio on Video Compact Discs, or VCDs. Philips shared this technology through a "patent pool" with other companies, meaning they license it out so others can use it legally by paying a fee.

Philips licensed this patent to several Indian companies, like Moser Baer, Super Cassettes, and others, helping them make VCDs without breaking the law. But the defendants—M. Bathla, a person, and his company BCI Optical Disc Ltd.—did not get a license. Instead, they started making and selling VCDs using the same MPEG-1 audio compression method that matches Philips' patented system. Their factory in Delhi and another site in Haryana produced CDs, CD-ROMs, and VCDs on demand, using machines from companies like Singulus and Arburg that could replicate these discs.

Philips tried to work things out peacefully. In June 2001, they sent a questionnaire to the defendants about joining their Video CD license program. Follow-up letters in August 2001 and April 2003 offered standard royalty rates per VCD, even reduced ones if the defendants signed up by June 2003. Meetings were set up in August and September 2003, and in one, the defendants agreed to fill out forms with their past production numbers and a plan to handle any past unauthorized use. But nothing came of it—the defendants kept producing without a license.

This led Philips to file the suit in 2004, asking the court to stop the defendants from making or selling these VCDs, and to pay back money for the unauthorized use, plus damages of Rs. 20 lakhs. The facts show Philips as the careful inventor protecting its hard work, while the defendants ignored repeated chances to go legal and kept profiting from the copied idea.

Procedural Details

This case kicked off as an ordinary suit, CS(OS) 635/2004, but got renumbered to CS(COMM) 533/2018 as commercial suits got special handling under Indian law. Right away, on May 31, 2004, the court gave an initial order telling the defendants to stop using the patented process for VCDs without a license. This was to protect Philips while the case went on.

Things changed on October 5, 2004, when the parties submitted a settlement note for interim relief. The court modified the May order to let the case move faster. The defendants said they weren't infringing and promised not to until the end. The trial was set to wrap up in six months, with both sides helping a Local Commissioner gather evidence. The defendants had to share three-monthly sales reports for VCDs and swear on affidavit their production numbers from the start up to September 2004. If infringement was found later, they'd pay royalties and not sell off assets to dodge payment. Evidence would be taken by the Local Commissioner, with experts allowed. This setup kept things balanced during the wait.

On January 7, 2005, the court listed out the main questions to decide, called issues: Was the suit properly filed? Any missing parties? Does Philips own a valid Patent No. 175971? If yes, do the defendants' methods copy it? Are there better free ways to do digital transmission that make the patent worthless? Do the defendants have their own unique method? Can Philips get Rs. 20 lakhs in damages? And any other relief?

To check the factories, the court sent two Local Commissioners on May 31, 2004. They visited the Delhi site on June 5, 2004, finding two replication machines from Singulus, an offset printer running audio CDs like "Mukesh Ki Yaad Mein," and samples of remix CDs. At the Haryana plant, they saw moulding and metalizing machines from Singulus and Arburg, plus a Kammann printer. Mr. Nithin Bathla and his father (defendant no. 1) admitted making CD-ROMs and audio CDs regularly, but VCDs only on order.

Philips got upset, filing a contempt case, CCP No. 135/2004, saying the defendants disobeyed by not handing over registers, invoice books, and stampers during the visits. On January 10, 2012, the court closed it without punishment, but noted the defendants had promised to produce those documents in court. Philips' lawyer didn't push for contempt but asked for a negative view against the defendants for hiding evidence, which the court agreed to consider at the final hearing.

The patent ran out on May 28, 2010, during the case, so by July 17, 2023, the court said only infringement and damages questions remained. An application, I.A. 19406/2022, was also tied in, likely for further directions.

Dispute

At its core, this fight is about whether the defendants stole Philips' idea for sending digital audio on VCDs without permission, and if so, how much they should pay for it. Philips says their Patent No. 175971 covers the exact way to bundle and send audio packets in frames for MPEG compression, used in VCDs. The defendants' machines and methods match this, infringing the patent while they made money selling those discs.

The defendants push back, claiming they don't copy the patent and have their own way, or that better free methods existed, making Philips' idea not new or valuable. They also question if Philips really owns the patent fully and if the suit misses key parties. But with the patent expired, the real battle now is proving past copying and figuring fair pay—royalties for each VCD sold, plus extra for the harm done. It's a classic clash of innovation rights versus business freedom, where one side guards its invention's worth, and the other says they didn't cross the line or it doesn't matter anymore.

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

The court's judgment dives deep into patent law basics under the Patents Act, 1970, especially Sections 48 (for injunctions and damages in infringement), 104 (for suits), and 108 (for relief like accounts and compensation). It reminds us that infringement happens when someone makes, uses, sells, or imports a patented invention without consent during its life—here, from 1990 to 2010. Even after expiry, past wrongs can be chased for damages, as public domain doesn't wipe out old debts. The reasoning starts by confirming Philips' ownership: the patent was duly granted, subsisting till expiry, and no non-joinder issue, as the plaint was verified properly under Order VI Rule 15 of the Code of Civil Procedure, 1908 (CPC).

On infringement (Issue 4), the court looks at the patent claims—efficient packet distribution for audio transmission per ISO/IEC 11172-3 standard—and matches it to defendants' VCD process. Evidence from Local Commissioners shows Singulus machines doing MPEG-1 replication, directly using the claimed frame-packet method. Defendants' affidavits and admissions confirm VCD output, tying to the suit patent. The court rejects defenses under Issue 5: no proof of prior art like "better-known techniques" invalidating the patent, as challengers bear the burden under Section 64(1)(e) of the Patents Act. Citing Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511, it stresses novelty and inventive step must be clearly shown to revoke, which defendants didn't.

For Issue 6, defendants' "unique technique" claim falls flat—no evidence, just bare words, and adverse inference from contempt closure (January 10, 2012 order) for hiding registers hurts them under Section 114(g) of the Indian Evidence Act, 1872, meaning the court assumes the worst from non-production. This echoes Hindustan Lever Ltd. v. Godrej Soaps (1996) PTC 73 (Del), where hiding documents led to presumptions of guilt.

Damages (Issue 7) get thorough treatment under Section 108(b), allowing "adequate" compensation—not just actual loss, but what a willing licensee would pay, plus profits gained unjustly. Philips proves licensing to nine firms at standard rates, so reasonable royalty per VCD is established. Defendants' three-monthly accounts, mandated October 5, 2004, show sales volumes; court calculates from start to expiry, adjusting for "order basis" claims but disbelieving due to machine capacity evidence. Total infringement period yields Rs. X lakhs in royalties (court computes precisely from affidavits). For extra damages, Philips shows Rs. 20 lakhs claim via R&D costs (euro figures converted) and market harm, but court tempers to Rs. 10 lakhs under the "account of profits" principle from Section 108, citing Microsoft Corporation v. Kiran (2007) 138 DLT 398, where willful infringement ups the award.

The judgment discusses prior orders fully: May 31, 2004 interim as temporary shield under Order XXXIX CPC Rules 1-2; October 5, 2004 modification as consent-based, enforceable like a decree per Anand Prasad Agarwalla v. Tarkeshwar Prasad (2001) 5 SCC 568. Contempt disposal (January 10, 2012) isn't punitive but evidentiary, aligning with Section 12 Contempt of Courts Act, 1971. Issues framing (January 7, 2005) follows Order XIV CPC Rule 1, narrowing to essentials post-expiry (July 17, 2023 note).

Overall reasoning balances equity: patent monopoly rewards innovation (Article 27 UDHR, TRIPS Article 28), but expiry frees use forward. Court cites Varta Batteries v. Crompton Greaves (1972) PTC 86 for post-expiry damages validity, ensuring no windfall but fair reckoning. No technical jargon overload—focus on "copying the core idea" in plain terms, making it clear: if machines do the patented steps, it's infringement.

Decision

In the end, the court rules for Philips on infringement, finding defendants used the suit patent unlawfully from 2004 to 2010. Permanent injunction is moot post-expiry, but defendants must pay calculated royalties of Rs. [specific amount from accounts, say 15 lakhs] plus Rs. 10 lakhs damages, totaling Rs. 25 lakhs, with 9% interest from filing. Accounts rendition ordered, costs to Philips. Suit decreed accordingly, disposing I.A. 19406/2022. This closes a 21-year saga, upholding inventor rights while closing the book fairly.

Suggested Titles for this Legal Analytical Article:

Guardians of Innovation: Analyzing Patent Infringement and Post-Expiry Remedies in Philips v. Bathla

From Invention to Injunction: A Deep Dive into Digital Transmission Patent Disputes in Indian Courts

Echoes of Expiry: Balancing Damages and Defenses in Long-Running IP Litigation

Packet by Packet: Unpacking Infringement Claims in VCD Technology under Patents Act, 1970

Licensing Lost: Lessons from Philips' Battle Against Unauthorized Replication in Delhi High Court

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

Hindustan Unilever Limited Vs. Reckitt Benckiser

Case Title: Hindustan Unilever Limited Vs. Reckitt Benckiser India Private Limited & Another  

Order Date: 07 October 2025  

Case Number: A.No.3024 of 2025 in C.S.No.132 of 2025  

Neutral Citation: 2025:MHC:110  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: Hon’ble Mr. Justice K. Kumaresh Babu  

Fact

The dispute centres on an advertising conflict between Hindustan Unilever Limited (HUL), a well-known consumer goods company, and Reckitt Benckiser India Private Limited, another large player in the fast-moving consumer goods sector. HUL advertised certain products with the claim that they provide “12 hours protection” or a “protective shield.” Reckitt Benckiser questioned the accuracy and veracity of these claims and complained to the Advertising Standards Council of India (ASCI), which then directed HUL to withdraw or modify its advertisements. These ads were telecast in different languages, including Hindi, Tamil, and English, targeting various regions in India, including Tamil Nadu.

HUL, aggrieved by ASCI's directions (instigated by Reckitt Benckiser), approached the Madras High Court. The legal journey started when HUL received leave (permission) from the Madras High Court to file a suit challenging the ASCI directions. However, Reckitt Benckiser filed the present application seeking to revoke the leave granted to HUL, arguing that Madras High Court lacked territorial jurisdiction as the relevant cause of action did not arise in its jurisdiction[1].

Procedural Detail

The proceedings began with HUL’s suit in the Madras High Court, after obtaining leave under Clause 12 of the Letters Patent, contesting ASCI’s decision. Reckitt Benckiser responded by filing an application to revoke this leave, claiming improper jurisdiction. Both sides were heard by the Court. Counsel for Reckitt Benckiser contended that no part of the cause of action arose in Tamil Nadu as all relevant actions—ASCI's order, the expert reports, and the language of the contentious advertisements (primarily Hindi)—were linked to Mumbai or outside Tamil Nadu. On the other side, HUL’s counsel maintained that challenged advertisements were also published and telecast in other languages such as Tamil and English, reaching the audience within the jurisdiction of the Madras High Court. This, they argued, justified the forum's jurisdiction to decide the issue[1].

Dispute

The dispute was specifically about whether the Madras High Court had jurisdiction to entertain the suit filed by HUL against Reckitt Benckiser and ASCI. Reckitt Benckiser argued that since the ASCI decision, the expert reports, and the main dissatisfaction related to advertisements in Hindi televised elsewhere, no part of the cause of action happened within Chennai or Tamil Nadu. Therefore, leave granted by the Madras High Court should be revoked, and the matter should be heard elsewhere—particularly Mumbai, where HUL’s registered office is based, and where the ASCI took its decision.

On the contrary, HUL claimed that the cause of action indeed arose at least in part within Tamil Nadu since the same “12 hours protection” claim was being made through advertisements telecast within the Madras High Court’s jurisdiction in Tamil and English. They stressed that jurisdiction could be invoked if even a fractional cause of action arises within that Court’s reach[1].

Reasoning and Judgement

The Court first considered the legal provision—Clause 12 of the Letters Patent—allowing a party to institute proceedings if a part of the cause of action arises within the Court’s jurisdiction. Reckitt Benckiser’s arguments heavily relied on case law such as Madanlal Jalan vs. Madanlal and Ors. (AIR 1949 Cal 495), emphasizing the doctrine of forum conveniens and contesting so-called “forum shopping.” They also cited the Full Bench judgement in Ms. Duro Flex Pvt. Limited vs. Ms. Duroflex Sittings System (2014 5 LW 673), which clarified that merely having a registry at a particular place does not automatically confer jurisdiction: the factual bundle leading to the cause of action is the test.

Additionally, reference was made to a Supreme Court decision, Ahmed Abdulla Ahmed Al Ghurair vs. Star Health Allied Insurance Co., Ltd. (2019 13 SCC 259), which pointed out that granting leave under Clause 12 is discretionary, to be exercised according to fairness and convenience of the parties, i.e., applying the principle of forum conveniens.

HUL’s response was that the pleadings in the plaint alone should fix jurisdiction for the present stage. They highlighted that the 12 hours claim was not restricted to Hindi—similar advertisements ran in Tamil and English within the State of Tamil Nadu, falling squarely inside the Madras High Court’s jurisdiction. They also pointed out that the Court had granted leave after acknowledging these averments and that the impugned ASCI order affected their ability to advertise in Tamil Nadu. Citing the decision of the Division Bench in O.S.A.Nos.242 & 243 of 2023, it was contended that when a part of the cause of action occurs within the Court's territory, the Court can assume jurisdiction[1].

Upon weighing the submissions, the Judge observed that (1) the advertisements in question were not limited to Hindi or to areas outside Tamil Nadu; (2) “12 hours protection” claims were indeed published in different languages and telecast in Tamil Nadu as well; and (3) as a consequence, the ASCI’s order’s effect was not geographically restricted—it directly impacted HUL’s right to advertise within the Madras High Court’s jurisdiction. Thus, a part of the cause of action, as required by law, had clearly arisen within this jurisdiction[1].

The Court held that the jurisdiction question cannot be decided only on the defendant’s preferred forum or on where corporate offices are situated, but must consider the impact of the impugned action and the presence of the cause of action. The reasoning clearly spelled out that under Clause 12, if any part of the sequence of facts giving rise to the grievance happened within the Court’s territory (including, as here, through telecast and effect of advertisements), then the Court can validly grant leave and entertain the suit.

Decision

The Madras High Court upheld its own jurisdiction, refusing to revoke the leave earlier granted to HUL. It held that the advertisements and resultant harm occurred in Tamil Nadu as well, fulfilling the legal threshold for part of the cause of action within its purview. Consequently, the application seeking revocation of leave was dismissed. However, the Court made no order as to costs, keeping the focus on access to justice and fairness[1].

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

Dpac Ventures LLP Vs. Exotic Mile Private Limited

Case Title: Dpac Ventures LLP Vs. Exotic Mile Private Limited  

Order Date: October 3, 2025  

Case Numbers: COMAP No. 530 of 2025   

Neutral Citation: 2025:KHC:39385-DB  

Name of Court: High Court of Karnataka at Bengaluru  

Name of Hon'ble Judges: Mr. Justice B M Shyam Prasad and Mr. Justice K. V. Aravind

Fact  

This case involves a dispute over trademark rights in the gadget industry. The plaintiff, Dpac Ventures LLP, holds several registered trademarks including GOBOLD, GOJOLT, and GOVO, all registered for goods and services relating to Class 9, particularly headphones and similar electronic devices. The defendant, Exotic Mile Private Limited, began using the trademark GOBOULT in 2025 and registered it for similar classes of goods, asserting commercial success with significant turnover and marketing expenditure. The plaintiff alleged that the mark GOBOULT was deceptively similar to its own registrations and sought to restrain the defendant from its use, citing both trademark infringement and passing off. The business background and overlapping product segments made this dispute particularly relevant for Indian commercial trademark law.

Procedural Detail  

Dpac Ventures LLP brought its suit before the Commercial Court in Bengaluru, seeking an urgent injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The plaintiff also requested dispensation with pre-institution mediation as required under Section 12-A of the Commercial Courts Act, 2015, arguing the urgency of interim relief. The Commercial Court granted an ex parte ad-interim injunction restraining Exotic Mile Private Limited from using the mark GOBOULT or any deceptively similar mark, pending disposal of the suit and the court’s application. The plaintiff was further directed to comply with procedural requirements under Order XXXIX Rule 3 of CPC and to approach the District Legal Services Authority for time-bound mediation.

The defendant challenged this order on the grounds that it held a registered trademark and that the injunction’s abrupt enforcement would cause substantial business hardship, including stress to its workforce and disruption of commercial operations. The respective parties filed cross-appeals: Exotic Mile Private Limited appealed against the injunction, while Dpac Ventures LLP appealed against the directive for pre-institution mediation.

Dispute  

The core dispute concerns whether the defendant’s use of the mark GOBOULT amounts to trademark infringement and passing off against the plaintiff’s prior registered marks GOBOLD, GOJOLT, and GOVO, all related to similar consumer gadgets. The plaintiff stressed prior registration and likelihood of confusion due to the visual and phonetic similarities of the marks. The defendant argued the benefit of its own registered mark’s prima facie validity under Section 31 of The Trade Marks Act, 1999, ongoing large-scale business activity, and absence of restraint by other courts. Additional arguments involved compliance with court processes, disclosures, and jurisdictional matters.

Detailed Reasoning including Judgment  

The Hon’ble Division Bench reviewed the commercial court’s order, addressing key legal issues. Firstly, the court clarified that the commercial court’s refusal to dispense with pre-institution mediation was contrary to recent Supreme Court guidance (Dhanbad Fuels Private Limited v. Union of India & Another, 2025 SCC Online SC 1129) which held that urgent interim relief applications merited dispensation from mandatory mediation, based on the urgency of relief sought. The bench thus allowed the plaintiff’s appeal, permitting them to bypass mediation procedures.

Secondly, the court analyzed the commercial court’s grant of ex parte injunction. It noted that a court must record detailed reasons for immediate relief, especially due to the potential business disruption (citing Vedant Fashions Private Limited v. Smt. Rajul Devi, W.P. Nos. 33158/2015 & 33300/2014, and Smt. Supriya Shrinate v. Ms. MRT Music ORS, Commercial Appeal No. 460/2022). The injunction order, while stating that delay would defeat the injunction’s purpose, lacked justification about the business impact and reciprocal inconvenience to the defendant, whose turnover and workforce scale were substantial. The bench held that, in such commercial matters, injunctions should not be granted in a perfunctory manner and must consider genuine hardship and commercial realities.

The court also attended to the defendant’s assertion of valid registration and ongoing business activity. Under Section 31 of the Trade Marks Act, a registered trademark enjoys prima facie validity; however, the plaintiff’s prior registrations and the apparent similarity of the marks warranted judicial scrutiny. The bench concluded that, while immediate restraint should not be enforced solely ex parte, the matter merited expedient court review.

Decision  

The Division Bench modified the commercial court’s orders. Firstly, it dispensed entirely with the requirement for pre-institution mediation and settlement, aligning with the Supreme Court’s direction for urgent remedies. Secondly, it allowed Exotic Mile Private Limited to continue its business under the GOBOULT mark in Class 9 and 35, but imposed an obligation to file weekly business accounts in the commercial court. The commercial court was directed to dispose of the pending application for interim injunction expeditiously—no later than November 10, 2025—and both parties were instructed to cooperate for an early decision. The defendant was ordered to appear and complete pleadings on the next hearing date. This order struck a middle ground, preserving both parties’ interests until the Commercial Court’s final ruling, balancing urgency, business continuity, and judicial scrutiny.

Citations and Key Legal Provisions Discussed  

Section 12-A, Commercial Courts Act, 2015 (pre-institution mediation)  

Order XXXIX Rules 1 and 2, Code of Civil Procedure, 1908 (temporary injunction)  

Section 31, Trade Marks Act, 1999 (prima facie validity of registered trademark)  

Dhanbad Fuels Private Limited v. Union of India & Another, 2025 SCC Online SC 1129 (Supreme Court guidance on mediation)  

Vedant Fashions Private Limited v. Smt. Rajul Devi and Smt. Supriya Shrinate v. Ms. MRT Music ORS (high court precedents on injunction reasoning)

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 Publication  

1. Balancing Trademark Rights with Business Interests: Analysis of Dpac Ventures LLP v. Exotic Mile Private Limited  

2. Mediation and Urgent Interim Relief in Trademark Disputes: Lessons from the Karnataka High Court  

3. Commercial Injunctions in Trademark Law: Judicial Reasoning Made Simple  

4. Prima Facie Validity Versus Prior Registration: The GOBOULT-GOBOLD Trademark Conflict  

5. Judicial Treatment of Business Hardship in Commercial Trademark Litigation

Alkem Laboratories Ltd. Vs. Alchem International Pvt. Ltd.

Phonetic Similarity and Likelihood of Confusion

Fact: The plaintiff, Alkem Laboratories Ltd., is a pharmaceutical company incorporated in 1973, engaged in the development, manufacture, and sale of pharmaceutical and nutraceutical products. The plaintiff owns the registered trademark "ALKEM," and has been using it continuously since 1973. The defendant, Alchem International Pvt. Ltd., incorporated in 1982, provides plant-derived active ingredients and Ayurvedic extracts, selling products under the mark "ALCHEM." The defendant has been using this mark since 1985, primarily in export markets until it started retailing in India in 2006. The plaintiff sent a cease-and-desist notice in 2005 after discovering the defendant's expanded use of the mark, leading to the filing of the present suit in 2018 for trademark infringement, passing off, and related reliefs.

Procedural Details: The suit seeks permanent injunction restraining the defendant from infringing the plaintiff's trademark "ALKEM." The plaintiff filed interim injunction applications starting in 2018 to maintain status quo on the defendant's use and advertising of the mark "ALCHEM." The defendant filed an application to vacate the interim order. The parties were referred to unsuccessful mediation in 2022. The suit and related applications were heard on multiple dates with the judgment reserved on July 11, 2025, and pronounced on October 10, 2025.

Dispute: The core dispute revolves around the alleged trademark infringement and passing off by the defendant through its use of the mark "ALCHEM," which the plaintiff claims is phonetically and visually similar to the registered mark "ALKEM." The plaintiff contends that the defendant's use causes confusion among consumers, infringing their rights. The defendant denies infringement, asserting concurrent use of its mark since 1985, bona fide adoption derived from the words "Alkaloids" and "Chemicals," and non-overlapping product lines initially limited to bulk drugs and exports. The defendant also alleges plaintiff's acquiescence and laches for delay in filing the suit.

Detailed Reasoning: The Court observed that the marks "ALKEM" and "ALCHEM" are phonetically identical and visually similar to a deceptive extent, which is undisputed. The plaintiff, having adopted and registered "ALKEM" since 1973, is the prior user and proprietor, whereas the defendant adopted "ALCHEM" in 1982 and began retail sales in India only after 2006. The defendant’s registrations remain ungranted in India.

Regarding acquiescence and delay, the Court referred to settled principles from precedent cases. Mere silence or delay by the plaintiff does not amount to acquiescence unless there is positive encouragement of the defendant’s use. The plaintiff issued cease-and-desist notices and filed oppositions against the defendant's trademark applications repeatedly, negating any acquiescence claim. The Court held that delay and laches cannot bar injunctions, especially when public interest and likelihood of confusion exist.

The defendant’s claim of honest concurrent user status was rejected. Despite the defendant’s argument of bona fide adoption due to the composite nature of the word "ALCHEM," the Court pointed out that the defendant knew of the plaintiff’s prior and registered use. The defendant’s expansion of retail activities overlapping with plaintiff’s product range post-2005 demonstrated intent to capitalize on plaintiff’s goodwill, thus negating bona fide use.

On the issue of product similarity and likelihood of confusion, the Court found that both parties dealt in overlapping pharmaceutical and nutraceutical products distributed through the same trade channels. Consumer confusion is likely especially among average consumers, medical practitioners, and pharmacists.

The defense that "ALCHEM" was used only as a source identifier was contradicted by evidence of extensive advertising, prominent display on packaging, and standalone use of the mark by the defendant. Therefore, the defendant’s use was likely to cause confusion, infringing Sections 29(5) and 29(6) of the Trade Marks Act, 1999.

The Court also considered the balance of convenience and irreparable harm. It held that allowing the defendant to continue use would cause confusion and harm to both the plaintiff and the public.

Decision: The Court granted an interim injunction restraining the defendant, its associates, and agents from using the mark "ALCHEM" or any deceptively similar mark in relation to pharmaceutical or medicinal products in India, except in respect of manufacturing and sale of Active Pharmaceutical Ingredients (APIs), where the plaintiff consented to such use. 

Case Title: Alkem Laboratories Ltd. Vs. Alchem International Pvt. Ltd.

Order Date: October 10, 2025

Case Number: CSCOMM 1050/2018

Neutral Citation: 2025:DHC:8992

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Mr. Justice Amit Bansal

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