IP.ADJUTOR

Wednesday, October 22, 2025

Bima Sugam India Federation Vs. A. Range Gowda

Trademark Use Through Publicity

Facts of the Case: The case revolves around the ownership and use of the term “BIMA SUGAM”, a name associated with a government-backed digital insurance marketplace initiative. The plaintiff, Bima Sugam India Federation, is a not-for-profit company incorporated under Section 8 of the Companies Act, 2013, and established under the direction of the Insurance Regulatory and Development Authority of India (IRDAI) through the Bima Sugam (Insurance Electronic Marketplace) Regulations, 2024.

The IRDAI envisioned Bima Sugam as a unified digital marketplace for insurance services—covering policy purchase, claim settlement, and grievance redressal. The platform, as per IRDAI’s vision “Insurance for All by 2047,” was meant to democratize insurance access in India.

Soon after IRDAI’s public announcement in August 2022 of this upcoming platform, Defendant No. 1, A. Range Gowda, an insurance agent from Karnataka, registered two domain names — www.bimasugam.com and www.bimasugam.in in October 2022. Defendant No. 1 also created social media handles using the same mark, claiming to represent a firm called Bima Sugam Digital Solutions.

The plaintiff alleged that Defendant No. 1’s registration of these domain names was in bad faith, amounting to cybersquatting, since the name “Bima Sugam” was already widely known as a government initiative and associated with IRDAI. The defendant later demanded INR 50 crores as “compensation” for transferring these domains to the plaintiff, which the plaintiff claimed showed malafide intent.

Procedural Details: The plaintiff filed a suit seeking a permanent injunction restraining Defendant No. 1 from using the mark “Bima Sugam,” along with a request for a mandatory injunction directing Defendant No. 2 (the domain registrar) to transfer the domain names to the plaintiff. An ad-interim injunction was granted on 29th May 2025, restraining Defendant No. 1 from using the mark and directing that the domain names be locked and suspended pending final decision. The present order dated 16th October 2025 addresses the plaintiff’s request for the transfer of ownership of the domain names.

Nature of Dispute: The dispute centers on three main questions: Who is the prior user of the mark “Bima Sugam”? Whether Defendant No. 1’s adoption of the name and domain was bona fide or in bad faith? Whether the plaintiff is entitled to transfer of the domain names at this stage of proceedings?

Detailed Reasoning and Legal Analysis: The court observed that IRDAI had publicly announced the Bima Sugam initiative on 25th and 30th August 2022, well before the defendant’s registration of domain names in October 2022. These announcements received widespread media coverage, including reports on CNBC TV-18, and were subsequently reflected in IRDAI’s Annual Reports (2022–23 and 2023–24), which recognized Bima Sugam as a flagship public digital infrastructure.

The Bima Sugam Regulations, 2024, formally notified on 20th March 2024, defined the marketplace as a public infrastructure meant to serve consumers, insurers, and intermediaries. The plaintiff company was incorporated on 18th June 2024 to operate this platform on behalf of IRDAI.

The Court relied on precedents to clarify that goodwill and use of a trademark can arise from advertising and public announcements, even before commercial launch. Citing N.R. Dongre v. Whirlpool Corporation (1995 SCC OnLine Del 310) and Radico Khaitan v. Devans Modern Breweries Ltd. (2019 SCC OnLine Del 7483), the Court held that pre-launch publicity and preparatory acts amount to “use” of a trademark under Section 2(2)(c)(i) of the Trade Marks Act, 1999. Thus, the plaintiff’s use of “Bima Sugam” through official announcements, public reports, and regulatory documents qualified as trademark use.

In contrast, Defendant No. 1’s claim of being the “first user” since 1st October 2022 was found unconvincing. He argued that “Bima Sugam” was a natural and descriptive combination of Hindi words meaning “easy insurance.” However, the Court found this claim inconsistent with his own trademark filings where he described “Bima Sugam” as an arbitrary and distinctive mark—contradicting his defense of genericness.

The defendant’s conduct further revealed bad faith. His trademark applications falsely claimed he was using the mark for manufacturing clothing, shoes, and other goods, despite admitting in pleadings that he never sold such items. His sworn affidavits before the Trademark Registry were found false. The Court concluded that such misrepresentation and contradictory claims negated his plea of honest adoption.

When the plaintiff’s stakeholders approached him through a legal notice in May 2024, the defendant demanded INR 50 crores for transferring the domains. The Court held that this exorbitant sum, disproportionate to his INR 5,000 registration cost, clearly showed cybersquatting and extortionate intent. His income tax returns revealed an annual income below INR 10 lakhs, further disproving any legitimate commercial interest.

The Court invoked the principle from Acqua Minerals Ltd. v. Pramod Borse (2001 SCC OnLine Del 444), where registering a domain name to sell or block a legitimate trademark holder constituted bad faith. It held that Defendant No. 1’s registration was primarily to obstruct IRDAI and the plaintiff from securing their rightful domain names.

The Court also rejected the defendant’s argument that transferring the domain names would amount to granting final relief at an interim stage. It noted precedents—Pfizer Products Inc. v. Altamash Khan (2005 SCC OnLine Del 1388), Eicher Ltd. v. Web Link India (2002 SCC OnLine Del 714), and Tata Sky Ltd. v. Sachin Cody (2011 SCC OnLine Bom 2126)—confirming that courts can issue interim mandatory injunctions to prevent irreparable harm in cases of cybersquatting or trademark misuse.

The Court emphasized the public interest element, noting that Bima Sugam was not a private commercial project but a statutory, national-level digital infrastructure initiative aimed at public benefit. Allowing a private individual to control or block its digital access points would directly undermine IRDAI’s regulatory vision of “Insurance for All by 2047.”Hence, the balance of convenience and irreparable injury strongly favored the plaintiff.

Judgment and Decision: The Delhi High Court held that Bima Sugam India Federation was the prior user of the mark and that Defendant No. 1’s adoption was dishonest and in bad faith. His demand for INR 50 crores further demonstrated cybersquatting and malafide intent.

Accordingly, the Court directed Defendant No. 2 (the domain registrar) to transfer the ownership of www.bimasugam.com and www.bimasugam.in to the plaintiff within two weeks. The plaintiff was directed to bear the official transfer costs. The Court added that if the final trial were to favor Defendant No. 1, the domains would be re-transferred to him, and he would be compensated as determined by the Court. Rejecting the arguments of delay and jurisdiction, the Court concluded that the plaintiff had established a strong prima facie case, and the balance of convenience lay entirely in its favor.

Conclusion: This judgment reaffirms key principles of Indian trademark and cyber law: Publicity and preparatory acts can constitute trademark “use.” Bad faith registration and cybersquatting violate not only private rights but also public interest when national digital infrastructure is involved. Courts can grant interim mandatory injunctions to restore rightful ownership and prevent misuse of digital identifiers. The Court’s decision ensures that public digital initiatives like Bima Sugam are protected from private exploitation and misuse.

Case Title: Bima Sugam India Federation Vs. A. Range Gowda & Others

Date of Order: 16th October, 2025

Case Number: CS (COMM) 577/2025

Neutral Citation: 2025:DHC:9315

Court: High Court of Delhi at New Delhi

Coram: 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

Vishal Sakhla and Others Vs. The State of Madhya Pradesh

Factual Background: The petitioners, led by Vishal Sakhla, sought quashing of an FIR registered on 22 May 2023 as Crime No. 285/2023 at Police Station Thatipur, Gwalior. The FIR alleged offences under Section 63 of the Copyright Act, 1957 and Section 33EEC of the Drugs and Cosmetics Act, 1940. The case arose from a dispute concerning Ayurvedic medicines sold under the banner “Om Shri Hari Vishnu Ayurvedic Utpad.”

Petitioner No. 3, Bharat Singh Kushwah, operated a duly registered Ayurvedic products business, possessing valid certifications under the M.P. Shops and Establishments Act, 1958, Food Safety and Standards Act, GST Act, and MSME Act, 2006. The petitioners also claimed to have applied for trademark registration for their products. They contended that the seized items were mere display samples meant for marketing, not for sale, and that the seizure itself was illegal.

According to the petitioners, the trouble began on 21 May 2023 when Manoj Sharma, claiming to be the Director of M. Satyam Pharmacy, summoned petitioner No. 1. Upon arrival, Manoj Sharma allegedly, along with his associates and some police officials, took away the petitioner’s mobile phone, abused and threatened him, and took him to the police station. Thereafter, the group allegedly entered the petitioner’s shop and warehouse forcibly, seized Ayurvedic goods, and sealed the godown after conducting a supposed sampling process without the petitioners’ presence. Based on Manoj Sharma’s complaint that deceptive or duplicate goods of M. Satyam Pharmacy were being sold, the FIR was registered past midnight.

Procedural Details: The petitioners approached the High Court under Section 482 of the Code of Criminal Procedure, 1973, seeking quashing of the FIR and all consequential proceedings. They argued that both the Copyright Act and the Drugs and Cosmetics Act provisions had been misapplied and that the entire investigation was illegal, motivated by malice, and procedurally defective.

Nature of Dispute: The central issue revolved around whether the FIR and investigation were lawful and maintainable. The petitioners challenged the FIR on two main grounds:

Jurisdictional illegality: They contended that only a Drug Inspector could conduct search, seizure, and prosecution under the Drugs and Cosmetics Act. Therefore, the police had no authority to initiate proceedings or register the FIR.

Absence of copyright registration: The petitioners claimed that no registered copyright existed for M. Satyam Pharmacy, and thus no criminal offence under Section 63 of the Copyright Act could be invoked.

The State and the complainant opposed the plea, asserting that the FIR disclosed cognizable offences and that the police were competent to investigate because Section 63 of the Copyright Act made the offence cognizable. They argued that procedural objections regarding seizure or authorization were matters of evidence to be examined during investigation or trial—not at the stage of quashment.

Court’s Detailed Reasoning: It was observed that under Section 63 of the Copyright Act, the offence is punishable with imprisonment up to three years. Referring to M/S Knit Pro International v. State of NCT of Delhi, 2022 LiveLaw (SC) 505, the Court reaffirmed that offences punishable with imprisonment between three and seven years are cognizable in nature as per Part II of the First Schedule to the Cr.P.C.. Thus, the police had the jurisdiction to register and investigate such offences.

Addressing the argument that copyright registration was essential before alleging infringement, the Court relied on the Full Bench judgment in K.C. Bokadia v. Dinesh Chandra Dubey, (1999) 1 MPLJ 33, which held that copyright arises from authorship and not from registration. The registration merely provides prima facie evidence but is not a condition precedent to the availability of civil or criminal remedies.

On the question of police jurisdiction under the Drugs and Cosmetics Act, the Court observed that Section 32(3) of the Act allows police intervention where the act constitutes a cognizable offence under any other law. Since the FIR also contained allegations under Section 63 of the Copyright Act, the police were competent to register and investigate it. The Court also referred to Union of India v. Ashok Kumar Sharma, (2021) 12 SCC 674, which recognized the concurrent jurisdiction of the police when a cognizable offence under another statute is disclosed.

The petitioners’ claim that the search and seizure violated Sections 22 and 23 of the Drugs and Cosmetics Act was considered. The Court noted that alleged procedural lapses or factual controversies, such as improper seizure or sampling, are not grounds for quashing an FIR at the preliminary stage. Such issues must be addressed during investigation and trial.

Furthermore, the Court considered the principles laid down by the Supreme Court in State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335, which provides limited grounds for quashing FIRs under Section 482 Cr.P.C. These grounds include cases where allegations do not disclose any offence, or where proceedings are manifestly attended with mala fide intentions. Upon applying those tests, the Court found that the FIR clearly disclosed prima facie cognizable offences and could not be quashed.

In conclusion, the Court emphasized that while the petitioners’ grievances might form part of their defence, those cannot be examined at this stage without a complete investigation. The inherent powers of the High Court under Section 482 Cr.P.C. are meant to prevent abuse of process, not to pre-emptively assess the veracity of allegations.

Decision: The High Court held that the FIR disclosed cognizable offences under Section 63 of the Copyright Act, and therefore, the police had full jurisdiction to investigate the case, even though it also involved alleged offences under the Drugs and Cosmetics Act. The petitioners’ challenge to the legality of registration, seizure procedure, and police powers was rejected. The Court concluded that no exceptional ground existed to invoke inherent powers under Section 482 Cr.P.C. for quashing the FIR. Accordingly, the petition was dismissed as devoid of merit.

Case Title: Vishal Sakhla and Others Vs. The State of Madhya Pradesh and Others

Date of Order: 16 October 2025

Case Number: MCRC No. 26737 of 2023

Neutral Citation: 2025:MPHC-GWL:25605

Court: High Court of Madhya Pradesh, Gwalior Bench

Coram: Hon’ble Shri Justice Milind Ramesh Phadke

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

Grasim Industries Limited and Anr. Versus Saboo Tor

Trademark Battles over a Legacy Name

Facts: This case concerned a dispute over the use of the trademark “BIRLA”. The plaintiffs, Grasim Industries Limited and UltraTech Cement Limited—well-known entities within the Aditya Birla Group—filed a suit alleging trademark infringement and passing off against Saboo Tor Private Limited and others. The plaintiffs asserted that the “BIRLA” mark, and its derivatives such as “BIRLA WHITE”, had acquired immense fame and goodwill due to decades of use across different business sectors including cement, fiber, and construction materials. They claimed to be the rightful proprietors of over 112 trademark registrations incorporating the name “BIRLA”.

The plaintiffs discovered that the defendants had been using marks such as “BIRLA TMT” and “BIRLA E-BIKE”, registered domains like www.birlatmtsteel.com and www.birlaebike.com, and incorporated companies such as “Birla Medicare Private Limited” and “Birla Biotech Private Limited.” They contended that such activities amounted to infringement of their registered and well-known marks and also misrepresented the defendants’ goods as those affiliated with the reputed Aditya Birla Group.

The defendants denied all allegations, arguing that they had valid registrations for “BIRLA” in specific classes since 2008 and had been using the trade name independently since 2004. They claimed their products, particularly TMT bars and steel products, were distinct from the plaintiffs’ goods and that the plaintiffs had delayed filing action despite public promotional activities carried out widely through national media.

Procedural Details: The plaintiffs filed an interim application seeking an injunction to restrain the defendants from using the “BIRLA” mark. The matter was reserved on 14 August 2025 and judgment was pronounced on 16 October 2025 via video conference. Dr. Veerendra Tulzapurkar represented the plaintiffs, while Senior Advocate Mr. Ravi Kadam appeared for the defendants. The Court heard detailed arguments, referred to extensive documentation, and examined various authorities on the Trade Marks Act, 1999, to determine whether interim injunction was warranted.

Dispute: The central issue revolved around whether the defendants, as registered proprietors of the mark “BIRLA” under Class 6 (iron and steel), could be restrained from using the mark at the interim stage when the plaintiffs also claimed ownership of several “BIRLA”-based marks. Another crucial question was whether the plaintiffs had adequately demonstrated prior use, subsisting goodwill, or association with the “Birla” family to claim exclusivity over the word.

The plaintiffs alleged the defendants' registration was fraudulent, secured on the basis of false invoices, and violated Sections 11 and 29 of the Trade Marks Act. The defendants emphasized their independent business identity, claimed honesty in concurrent use, and invoked statutory protection under Sections 28(3) and 30(2)(e) of the Act, which shield registered proprietors of similar marks from infringement claims by other registered proprietors.

Reasoning and Legal Analysis: The court observed that the plaintiffs’ case largely rested on their asserted exclusive association with the “Birla” family and the Aditya Birla Group. The Court observed that mere references to the family legacy or group reputation, without documentary proof demonstrating how trade mark rights devolved upon the plaintiffs, could not establish an exclusive legal claim. No internal agreements, corporate resolutions, or assignment records linking Grasim and UltraTech to the “Birla” family trademarks were produced.

The Court noted that while Grasim Industries claimed to be the successor to Indian Rayon’s “Birla White” mark via a demerger, no documentary evidence or scheme of arrangement was filed to substantiate this succession. The earliest verifiable commercial use of “Birla White” by the plaintiffs dated 2007–2008, not 1988 as claimed, whereas the defendants showed use of “Birla TMT” since 2008 supported by inspection certificates issued by government agencies—documents the Court found credible.

Under Sections 28(3) and 30(2)(e) of the Trade Marks Act, two or more proprietors may concurrently hold registrations for identical or similar marks. Since both parties held valid registrations, the Court found that one registered proprietor cannot allege infringement against another until registration validity is disproved. Here, the plaintiffs failed to show ex facie illegality or fraud justifying intervention under Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596), which allows courts to pierce registration validity only where it “shocks the conscience”. The plaintiffs’ allegations of fabricated invoices were unsubstantiated, and the supposed fraudulent registration could not be presumed at the interlocutory stage.

The Court emphasized that classification of goods is only an administrative guideline under the Act, but similarity across classes must still yield likelihood of confusion to attract Section 11(1). The plaintiffs produced no evidence of confusion or public misassociation between “Birla TMT” and their products. It further clarified that “Birla” was a common surname, not uniquely identifying the plaintiffs’ goods like coined words such as “Kodak”.

Regarding passing off, the Court referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra (2025 SCC OnLine SC 1701), observing that to succeed, plaintiffs must prove goodwill, misrepresentation, and likelihood of damage. Given both parties used the mark for two decades independently and targeted distinct consumer segments—cement manufacturers vs. TMT iron suppliers—the Court found no risk of confusion among reasonably well-informed builders or bulk purchasers. It further observed that the plaintiffs delayed action for over 14 years, weakening their equitable claim for urgent relief.

On dishonest adoption, the Court observed no material suggesting the defendants intended to deceive or ride on the plaintiffs’ goodwill; their open advertisement campaigns since 2016 on national media, under registration protection, indicated commercial transparency.

The Court held that while exclusivity on “Birla” could morally belong to the Birla family entities, legally, absent proof of inherited trade mark rights, the plaintiffs’ claim was weak. Rights under the statute accrued to whoever held valid registration; hence, no injunction could be justified when both sides were registered holders.

Judgment and Decision: The court dismissed the interim application for injunction. However, to maintain balance and accountability pending final adjudication, the Court directed the defendants to maintain true and accurate accounts of all sales under “Birla” marks until final disposal of the suit. Thus, it was held: The plaintiffs failed to demonstrate prima facie case, irreparable injury, or balance of convenience necessary for interim injunction. Both sides were registered proprietors; hence, statutory protection under the Trade Marks Act shielded the defendants from infringement claims at this stage. Allegations of fraud or bad faith adoption lacked evidentiary support. The defendants had lawfully used their registered marks since 2008, and an injunction would inflict disproportionate hardship. The interim application was dismissed.

Case Title: Grasim Industries Limited and Anr. Versus Saboo Tor Private Limited and Ors.

Date of Judgment: 16 October 2025

Case Number: Commercial IP Suit No. 422 of 2022

Neutral Citation:2025:BHC-OS:19474

Court: High Court of Judicature at Bombay

Hon’ble Judge: Justice Sharmila U. Deshmukh

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

Wow Momo Foods Private Limited Vs. Wow Burger

Trademark Distinctiveness and the Doctrine of Initial Interest Confusion

Introduction : The case of Wow Momo Foods Pvt. Ltd. Vs. Wow Burger & Anr. presented before the Delhi High Court concerned a trademark dispute arising between two entities engaged in the food business. The appellant, Wow Momo Foods Pvt. Ltd., is a well-known food chain that has built a substantial reputation under its trademarks WOW MOMO, WOW DIMSUMS, and WOW MOMO INSTANT. These marks, registered under various classes of the Trade Marks Act, 1999, have become synonymous with fast food, particularly momos and related culinary products.

The appellant had adopted and started using the word marks and device marks containing “WOW” since 2008. Over time, it expanded its operations to more than 30 cities with over 600 outlets across India, recording a turnover exceeding ₹450 crores in the year 2023–2024. The company also maintained an extensive online presence, including its registered domain wow.wowmomo.com, registered in 2013.

In December 2024, the appellant discovered that the respondent, Wow Burger, had begun preparing to launch food services in India under the mark WOW BURGER. The appellant claimed that this mark infringed upon its registered marks and amounted to passing off. Consequently, a suit (CS (COMM) 1161/2024) was filed before the Delhi High Court seeking an interim injunction to restrain the respondents from using the mark WOW BURGER pending disposal of the suit. The learned Single Judge, however, by order dated 12 September 2025, refused the injunction, leading to the present appeal.

Procedural History: The appellant’s application for interlocutory injunction (IA 48983/2024) was heard and dismissed by the learned Single Judge. The Judge held that “WOW” is a common English word and cannot be monopolized. The Single Judge further noted that the appellant had not registered “WOW” as a standalone mark and that certain registrations of the appellant carried disclaimers disallowing exclusivity over individual words.

Dissatisfied, Wow Momo filed an appeal under Section 13 of the Commercial Courts Act before a Division Bench of the Delhi High Court. Despite being served with notice, the respondents did not appear. The Division Bench, therefore, proceeded to decide the appeal based on the submissions of the appellant’s counsel.

The Core Dispute: The central dispute revolved around whether the respondent’s mark WOW BURGER infringed the appellant’s registered marks WOW MOMO, WOW MOMO INSTANT, and WOW DIMSUMS.

The appellant argued that its trademark registrations granted it an exclusive statutory right under Section 28 of the Trade Marks Act, 1999, and that the use of the term “WOW” in conjunction with another food item by the respondent would cause confusion and association in the public mind.

The respondents, however, through their absence, left the defense unrepresented. Nonetheless, the Single Judge’s reasoning, treating “WOW” as a common English laudatory word incapable of exclusivity, was the principal issue scrutinized by the Division Bench.

Legal Reasoning and Analysis: The Division Bench conducted an extensive examination of the law governing trademark infringement, referring to several key provisions of the Trade Marks Act, 1999, including Sections 9, 17, 28, 29, and 30.

The Court clarified that the question of infringement under Section 29(2)(b) arises when a registered trademark is similar to another mark used for similar goods or services, leading to a likelihood of confusion among the public. The Court also noted that infringement must be evaluated from the perspective of a “consumer of average intelligence and imperfect recollection.”

The Court observed that even if “WOW” was a common exclamation, the appellant’s marks — when viewed in their entirety such as WOW MOMO and WOW DIMSUMS — had acquired a distinctive and unique character. The combination of an exclamatory expression like “WOW” with the name of a food item created an innovative and distinctive composite mark, setting the appellant’s brand apart in the market.

In addressing the Single Judge’s observation that “WOW” lacked distinctiveness, the Bench drew attention to the principle of idea infringement, stating that while a single common word might not be protectable, the inventive idea of combining “WOW” with specific food items was unique to the appellant. The respondents’ adoption of a similar pattern (WOW BURGER) was thus not coincidental but suggestive of an attempt to trade upon the appellant’s brand identity.

The Court cited landmark precedents, including:

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 — distinguishing between infringement and passing off.

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., (1969) 2 SCC 131 — emphasizing the importance of the “essential feature” of a mark and phonetic similarity.

Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701 — reaffirming that composite marks must be compared as a whole.

Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727 — explaining appellate limits in interlocutory injunctions.

The Bench emphasized that infringement must be assessed on a “whole mark to whole mark” basis. The learned Single Judge had, in effect, dissected the appellant’s composite mark by isolating “WOW” from its context, contrary to the anti-dissection rule recognized in Indian and international jurisprudence.

The Court also invoked the family of marks doctrine, explaining that when a company owns multiple marks with a common prefix or suffix (like WOW MOMO, WOW DIMSUMS, WOW MOMO INSTANT), it builds a family of marks that acquires distinctiveness as a group. Any other mark using the same dominant prefix in the same trade area naturally leads to confusion and association in the consumer’s mind.

Additionally, the Bench noted that “WOW” was not being used by the respondents as a mere descriptive term; rather, its coupling with “BURGER” was deliberately evocative of the appellant’s marks. Applying the “initial interest confusion” test, the Court found that an average consumer encountering “WOW BURGER” would likely assume an association with “WOW MOMO.”

Judicial Reasoning and Decision: The Division Bench found that the Single Judge had erred in treating “WOW” as a mere descriptive expression devoid of distinctiveness. It held that while “WOW” alone might be common, its usage in combination with the food item formed a distinctive and protectable mark.

The Court observed that the essence of the appellant’s mark lay in the conceptual distinctiveness of pairing an exclamation with a product name, which imparted uniqueness. It concluded that the respondents’ use of “WOW BURGER” infringed upon the appellant’s registered trademarks under Section 29(2)(b) of the Act.

Consequently, the Division Bench set aside the order of the Single Judge and allowed the appeal, granting an injunction restraining the respondents from using the mark WOW BURGER or any other deceptively similar mark.

Law Settled: This judgment reaffirms several critical principles in Indian trademark jurisprudence:

Composite Marks: The distinctiveness of a composite mark must be judged as a whole and not dissected into individual components.

Idea Infringement: Even if a word is common, the inventive idea of combining it with another expression may be protectable.

Family of Marks Doctrine: Entities owning a series of marks with a common element enjoy enhanced protection against infringing marks using that element.

Initial Interest Confusion: Likelihood of confusion at the first point of contact constitutes infringement, even if the consumer later realizes the difference.

Distinctiveness of Exclamatory Marks: An exclamation like “WOW,” when used innovatively in branding, can acquire distinctiveness deserving of protection.

Final Decision: The Division Bench of the Delhi High Court allowed the appeal. The judgment of the Single Judge dated 12 September 2025 was set aside. The Court restrained the respondents from using the mark WOW BURGER or any similar mark likely to cause confusion or association with the appellant’s WOW MOMO brand. This decision reinforces the need to assess trademarks from the perspective of consumer perception and emphasizes that creativity and distinctiveness in brand composition deserve judicial protection.

Case Title: Wow Momo Foods Private Limited Vs. Wow Burger & Anr.

Case Number: FAO (OS) (COMM) 143/2025

Neutral Citation: 2025:DHC:9320-DB

Date of Decision: 16 October 2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

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

Monday, October 20, 2025

Rolls-Royce PLC & Anr. Vs. Union of India

Mandatory Timelines in Trademark Oppositions Under the 2002 Rules

Facts: Imagine a world-famous brand like Rolls-Royce, known for luxury cars and aircraft engines, facing a copycat in India. The petitioners, Rolls-Royce PLC and Rolls-Royce Motor Cars Limited, are giants in the global engineering scene, working in aerospace, defense, marine, and energy fields. Their iconic logo—the interlocking "double R" standing for founders Charles Rolls and Henry Royce—has been registered and used in over 80 countries for decades, symbolizing quality and prestige. This mark isn't just a design; it's a badge of trust in high-stakes industries.

Trouble knocks when the third respondent, Mr. Naveen Khatri trading as Rishi Hotels in Hyderabad, files a trademark application (No. 182490) in Class 42 for a similar mark. Class 42 covers services like scientific research, design, and legal services—areas where Rolls-Royce operates heavily. Spotting this as a potential threat to their brand's uniqueness, Rolls-Royce jumps in with a notice of opposition on August 27, 2010, before the Trade Marks Registry in Chennai. They argue the mark could confuse consumers and dilute their famous logo. The Registry notifies the applicant, who files a counter-statement served on Rolls-Royce by November 30, 2010. Under the rules, Rolls-Royce then has two months from December 20, 2010, to submit evidence supporting their opposition—like affidavits, sales data, and global registration proofs.

But gathering this isn't simple. Rolls-Royce's offices span continents, so collating documents takes time. Their lawyers request extensions: first, one month to March 20, 2011, then another to January 20, 2012. The Registry seems to grant initial nods, but by February 20, 2012, Rolls-Royce files an interlocutory petition with fees and affidavits to place evidence on record, serving a copy on the applicant. This evidence includes detailed proofs of their mark's worldwide use and reputation. Fast forward to October 17, 2014—the Registry rejects it outright, citing no power to extend beyond three months total under Rule 50 of the Trade Marks Rules, 2002. They lean on Intellectual Property Appellate Board (IPAB) orders (Nos. 120/2012 and 125/2012) binding them as a lower tribunal. Rolls-Royce claims they only got the rejection order in 2015, delaying their challenge. This writ petition follows, seeking to quash the rejection and force the Registry to accept their evidence, arguing the rules allow flexibility for good cause.

Procedural Detail: The saga starts at the Trade Marks Registry under the Trade Marks Act, 1999. After the opposition notice, the Registry issues TOP/2678 on September 20, 2010, calling for the applicant's counter-statement. Served by November 30, 2010, it triggers the two-month evidence window from December 20, 2010. Extension requests via letters (February 8, 2011, and later) push it forward, but the February 20, 2012, interlocutory petition (with fees under Rule 95) hits a wall. The Registry's October 17, 2014, order (MAS-765379) refuses recordal, deeming Rule 50's timeline absolute—no extensions past three months.

Rolls-Royce files this writ under Article 226 of the Constitution on October 2018 (W.P. No.25070/2018), with miscellaneous petitions for stay and interim relief. Heard by Justice M. Dhandapani, arguments span: petitioners' counsel Mr. Rajkumar Jhabakh pushes for directory interpretation via Gujarat High Court precedent; respondents 1-2 (Union and Registry), via Mr. Ravi Meenakshi Sundaram, defend mandatory timelines citing Delhi High Court. Third respondent absent. No affidavits exchanged; pure legal battle on rules' nature. Judgment reserved and pronounced October 8, 2025—14 pages dissecting precedents. Registry's stand: strict timelines curb delays in trademark processing. Post-order, no appeals noted; connected M.P.s closed.

Dispute:At its core, this is a timing tug-of-war in trademark battles: Can a global icon like Rolls-Royce get a grace period to prove its opposition, or does a rigid three-month cap slam the door? Petitioners say yes—rules under Section 131 of the Trade Marks Act, 1999, empower the Registrar to extend for "sufficient cause," making Rule 50 directory, not a guillotine. They highlight their genuine efforts and late notice of rejection, urging equity for a well-known mark against potential confusion. Respondents counter no—the 2002 Rules' "one month in aggregate" and dropped "unless Registrar directs" make it mandatory, aligning with IPAB and Delhi High Court to speed up registrations and prevent endless stalls. Broader stakes: In India's booming IP scene, does flexibility aid justice or clog dockets? Rolls-Royce fears brand erosion; the Registry prioritizes efficiency. The flashpoint: Interpret "shall" in rules as flexible (directory) or ironclad (mandatory), balancing opposer rights with applicant certainty.

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

Mandatory timeline : This judgment is a masterclass in rule interpretation, sifting precedents like a sieve to affirm mandatory timelines without mercy. He starts by framing the clash: Rule 45/50's "shall" under 2002/2017 Trade Marks Rules—directory per Gujarat's Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks (2006 SCC OnLine Guj 620), or mandatory per Delhi's Ms. Aman Engineering Works v. Registrar Trade Marks (2022/DHC/004701)? The court extracts Wyeth's key para 34-36, where Gujarat holds "shall" directory post-Salem Advocate Bar Assn., Tamil Nadu v. Union of India (2005) 6 SCC 344, as legislature left evidence filing to rules (Section 21(4)), distinguishing substantive opposition (Section 21(1)) from procedural evidence. Wyeth warns mandatory reading risks ultra vires Section 131's extension power, urging harmonious construction for fairness in global oppositions.

But Delhi's Aman dismantles this. The judge quotes paras 41-44, noting deliberate 2002 Rules shifts: Rule 50(1)'s "not exceeding one month in aggregate" caps extensions (absent in 1959 Rules' Rule 53); deleting "unless Registrar directs" from Rule 50(2) kills discretion. Citing Sunrider Corpn., U.S.A. v. Hindustan Lever Ltd. (2007 SCC OnLine Del 1018), which invokes Chief Forest Conservator (Wildlife) v. Nisar Khan (2003) 4 SCC 595 for rules as Act extensions, and Ramachandra R. v. Regional Transport Officer (2011) 1 SCC 402 for "shall" as obligatory sans leeway. Aman's para 13-20 rejects Wyeth as rewriting statute, deeming non-filing auto-abandons opposition (Rule 50(2)), no Rule 105 revival per Section 131 as Rule 50 self-limits. Echoed in Mahesh Gupta v. Registrar of Trademarks (2023 SCC OnLine Del 1324, paras 13-21), which calls Wyeth "otiose," stressing "aggregate" mandates three-month max.

IPAB's Sahil Kohli v. Registrar of Trade Mark (2018 SCC OnLine IPAB 55, paras 53-57) gets scrutiny: It deems 2017 Rule 45 directory, as omitting 2002's limits revives Section 131's broad discretion. But the judge favors Delhi: Even 2017's deletion keeps timelines inflexible, preventing "infinite delays" per Registry policy. Para 46-48 synthesizes: "One month aggregate" and discretion's ax signal mandatory; evidence runs from counter-service, direct to applicant, non-filing deems abandonment sans extension under Rules 101/109. This curbs abuse, aligning with Act's efficiency (Section 21). Wyeth/Sahil's directory view ignores legislative intent for speed post-1959 laxity. The impugned order holds: Registry bound by IPAB's own 2012 rulings (120/2012, 125/2012) limiting to three months. No laches—2014 order final; writ's 2018 filing irrelevant to merits. Result: Petition fails; evidence stays out.

Decision: Writ petition dismissed—no merits; impugned October 17, 2014, order upheld. Registry's rejection of evidence under MAS-765379 stands; opposition deemed abandoned for delay past three months. No costs. Connected miscellaneous petitions closed.

Case Title: Rolls-Royce PLC & Anr. Vs. Union of India & Ors.

Order Date: 08.10.2025

Case Number: W.P. No.25070 of 2018

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Mr. Justice M. Dhandapani

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

Meta Intelligence Private Limited Vs. Madhur Singhal

Case Title: Meta Intelligence Private Limited Vs. Madhur Singhal

Order Date: 10.10.2025

Case Number: CS(COMM) 1091/2025 & I.As. 25211-16/2025

Neutral Citation: 2025:DHC:1091

Name of Court: High Court of Delhi at New Delhi

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

Facts

In the fast-moving world of artificial intelligence and digital innovation, where ideas and code can make or break a startup, this case unfolds like a tense boardroom drama turned courtroom showdown. Meta Intelligence Private Limited, the plaintiff company, specializes in cutting-edge tech, particularly an AI-powered tool called the Real-time Interactive Digital Human Solution—think of it as sophisticated software that creates lifelike digital interactions, like virtual assistants that feel almost human. The company has two key players: Mr. Anant Haldia, holding 60% shares and serving as a director, and the defendant, Madhur Singhal, with 40% shares and also a director. These two have been partners for 15 years, building the business from the ground up, with the defendant playing a big role in developing this valuable software.

The trouble starts in early September 2025. On September 9, the defendant leaves the company's office in a huff, locking down the main server with a "bitlocker"—a security feature that encrypts the entire system, blocking access to the software and critical data. The next day, September 10, he sends an email resigning from his executive roles but insists he remains a director, clinging to his shareholder rights. This lockout isn't just inconvenient; it's crippling. The company already has a signed licensing agreement with an existing customer, M/s Aptech Limited, for the software, and they're on the verge of sealing a lucrative deal with a prospective client called WPB. Without access, they can't service Aptech, risking damage to their reputation and potential lawsuits for breach, and the WPB opportunity slips away, threatening future revenue. The plaintiff sees this as a deliberate sabotage—breach of fiduciary duties as a director, illegal hoarding of company tech and data, business disruption, and even copyright infringement by potentially misusing the software outside the company. Mr. Haldia tries everything: direct talks, mutual friends mediating, a full month of negotiations—but nothing budges the defendant. Desperate to keep the business afloat, the company files this suit, seeking a permanent injunction to stop the defendant from any further unauthorized use of the software, along with urgent interim relief to regain access. They promise full transparency: share all deal details and accounts with the defendant, since he signed the Aptech agreement himself. The defendant, on his side, claims the bitlocker was just to safeguard his personal files on the office computer, which he left behind, and he's open to helping remove it—but only if his directorship and data privacy are respected.

Procedural Detail

This commercial suit bursts into the Delhi High Court on October 10, 2025, bundled with six interim applications under the Commercial Courts Act, 2015, and the Code of Civil Procedure, 1908 (CPC). First up is I.A. 25213/2025, seeking exemption from mandatory pre-institution mediation under Section 12A of the Commercial Courts Act— the plaintiff argues urgency, as the software lockout is bleeding the business dry. The defendant's counsel, Ms. Ria Yadav, enters appearance on advance notice. The court suggests trying mediation anyway, and both sides agree, so it refers them to the Delhi High Court Mediation and Conciliation Centre for a senior mediator to wrap things up fast, listing it there on October 15 at 3:30 PM. But the court still grants the exemption, citing the Supreme Court's recent ruling in Yamini Manohar v. T.K.D. Keerthi, because interim relief can't wait.

Next, I.A. 25212/2025 asks for a one-week extension under Section 149 CPC to pay court fees—the court allows it, warning the plaint gets rejected under Order VII Rule 1(b) CPC if missed. Then I.A. 25214/2025 seeks four weeks under Section 151 CPC to file a certificate under Section 63(4)(c) of the Bharatiya Sakshya Adhiniyam, 2023 (BSA)—the new evidence law replacing the Indian Evidence Act—and a declaration under Order XI Rule 6(3) CPC for document disclosure; granted as requested. I.A. 25216/2025 wants permission under Section 151 CPC to submit videos on a pen drive—the court directs compliance with Rule 24 of the Delhi High Court (Original Side) Rules, 2018, requiring encrypted, non-editable CDs for the registry to preserve them tamper-free.

The main suit, CS(COMM) 1091/2025, with I.A. 25211/2025 for stay and I.A. 25215/2025 for a receiver, gets registered, summons issued (defendant waives formal service), and timelines set: written statement in 30 days with affidavit of admission/denial of plaintiff's documents, or it's off-record; replication in another 30 days with the same for defendant's docs; costs for unjust denials; inspections per the 2018 Rules. No full trial yet—this is all pre-trial housekeeping. The court hears urgent oral arguments on access to the software, passes the matter for defendant instructions, then at second call, appoints Mr. Mayank Sansanwal (a local commissioner, contact details provided) to visit the plaintiff's office on October 14 at 11:30 AM. His job: facilitate a sit-down between Mr. Haldia and the defendant to remove the bitlocker peacefully, ensuring the computer stays in-office. The defendant must show up and assist, but the plaintiff can't use the access for the WPB deal until the next hearing. Post-removal, the commissioner hands the computer to Mr. Haldia in trust (superdari), with Rs. 75,000 fee on the plaintiff. The defendant objects to the plaintiff's counsel Ms. Ila Sheel due to her relation to Mr. Haldia—she withdraws without prejudice. Next hearing: November 3, 2025. The digital order is certified via the court's portal—no physical copies needed.

Dispute

This isn't your typical corporate spat; it's a high-stakes lockout in a tech firm where access to code equals survival. The plaintiff cries foul: the defendant's bitlocker is a weaponized exit strategy, breaching his director duties under the Companies Act, 2013 (like Sections 166 for good faith and 184 for conflicts), hoarding proprietary software that belongs to the company, disrupting operations with an existing client (Aptech) and killing a golden WPB prospect, and flirting with copyright violation under the Copyright Act, 1957 (Section 14 for exclusive rights). They want immediate unlock for business continuity, promising audits and shares, but fear the defendant might fork the software for his own gain. The defendant fires back: his email was only an executive resignation, not directorship—he's still entitled to protect his 40% stake and personal data on the shared machine. The bitlocker? Just prudence, not sabotage; he's ready to help remove it amicably and even welcomes mediation. But he draws lines: no rushing the WPB deal without his input, and swap out the biased lawyer. The flashpoint is trust—15 years of partnership soured by one dramatic departure, with the software as the battleground. Broader, it's about balancing director rights versus company needs in startups, where personal and professional lines blur, and one key person's walkout can halt everything. Can the court force access without prejudging the merits, or does mediation cool it down first?

Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed

The court, under Hon'ble Ms. Justice Manmeet Pritam Singh Arora, navigates this with a blend of firmness and fairness, prioritizing business salvage while nudging reconciliation. Starting with mediation exemption under Section 12A Commercial Courts Act, the judge notes the plaintiff's month-long failed attempts at settlement—talks, friends' interventions—making pre-suit mediation futile. Yet, on the court's proactive nudge, both consent to it, so reference to the Mediation Centre with a senior mediator and tight deadline (pre-next hearing). Crucially, exemption is still granted for urgency in interim relief, leaning on the Supreme Court's Yamini Manohar v. T.K.D. Keerthi (2024) 5 SCC 15. There, the apex court held that while mediation is mandatory for non-urgent commercial suits over Rs. 3 lakhs, exceptions apply where delay causes irreparable harm—like here, where software inaccessibility risks client loss and reputational hit, echoing Yamini's stress on "urgency" for injunctions under Order XXXIX CPC. This dual track—mediation plus exemption—shows the court's equity: encourage peace, but don't let urgency suffer.

On procedural apps, reasoning is straightforward efficiency. Court fee extension under Section 149 CPC gets a week's leash, tied to rejection under Order VII Rule 1(b) CPC if missed—standard to prevent abuse while allowing minor slips. The BSA certificate (Section 63(4)(c)) and Order XI Rule 6(3) CPC declaration get four weeks under Section 151 CPC, recognizing evidence prep in tech suits needs time without stalling. Video filing via pen drive/CD invokes Rule 24 Delhi High Court (Original Side) Rules, 2018, mandating hash-encrypted, non-editable formats to ensure integrity—vital in copyright disputes where tampering claims could derail. This upholds digital evidence standards under the BSA, replacing old Evidence Act rigors with modern tech safeguards.

For the suit's core—I.A.s for stay/receiver—the judge hears balanced submissions: plaintiff's dire need (Aptech servicing, WPB jeopardy) versus defendant's cooperative stance (willing unlock, data privacy). No full receiver appointed yet; instead, a tailored Local Commissioner under inherent powers (Section 151 CPC, akin to Order XXVI Rule 9 CPC for commissions). Mr. Sansanwal's role—facilitate October 14 meeting for bitlocker removal—strikes a middle ground: immediate access for existing ops (reputation-preserving), but WPB on hold till November 3, avoiding prejudice. The computer handover to Mr. Haldia in superdari (safe custody) protects evidence, with defendant present to oversee. Fee fixation at Rs. 75,000 on plaintiff is pragmatic, as urgency stems from their suit. The lawyer withdrawal? Voluntarily resolved, sidestepping conflict-of-interest under Bar Council rules (Section 52, no relative representation in family-like disputes). Overall, the order embodies commercial courts' speed (Section 13 timelines) and equity—citations like Yamini reinforce non-arbitrable urgency in IP/tech breaches, where time is the thief. It draws implicitly from precedents like Wander Ltd. v. Antox India (1990) Supp SCC 727 for interim balances (prima facie case, irreparable injury, balance of convenience—all tilting to plaintiff here) and Dorab Cawasji Warden v. Coomi Sorab Warden (1990) 2 SCC 117 for superdari in trust assets. By blending mediation (Section 12A) with commissions, the court prevents escalation, reminding that in director disputes, collaboration trumps confrontation—especially in AI startups where code is king.

Decision

All applications disposed: mediation exemption granted (with reference to Centre); court fee extension for one week (or plaint rejected); BSA/CPC certificates in four weeks; videos filed per Rule 24 (encrypted CD); suit registered, summons issued (waived), pleadings timelines enforced with costs for denials. Local Commissioner appointed for October 14 access facilitation—bitlocker removal for existing client servicing, WPB deal paused; computer in superdari to Mr. Haldia; Rs. 75,000 commissioner fee on plaintiff; defendant to attend. Lawyer withdraws. Next hearing November 3, 2025. Digital order certified.

Suggested Titles for this Legal Analytical Article:

Unlocking Trust: Director Duties and Digital Lockouts in AI Startup Disputes

Bitlocker Battles: Balancing Urgency and Mediation in Commercial Tech Suits

From Code to Court: Interim Relief in Software Sabotage and Fiduciary Breaches

Mediation with a Key: Delhi High Court's Equitable Fix for Locked-Down Legacies

15 Years to Firewall: Navigating Copyright, Access, and Amicable Exits in Partnerships

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

M. Ramesh Vs. V. Balu

Case Title: M. Ramesh Vs V. Balu & Others

Case Number: Appeal (CAD) No. 21 of 2023

Neutral Citation: 2025:MHC:XXXX

Court: High Court of Judicature at Madras

Order Date: 10 October 2025

Hon’ble Judges: Justice Dr. G. Jayachandran and Justice Mummineni Sudheer Kumar

Facts

The case arises out of a commercial dispute between partners of a family-run jewellery firm known as "Sri Valli Vilas M.V. Pavadai Chettiar & Sons." The firm, established under a partnership deed dated 01 April 2012, was engaged in the business of manufacturing and selling bullion, gold, silver, diamond jewellery, and precious stones. The partners jointly obtained trademark registration under the name “Sri Valli Vilas” with label marks in Classes 14 and 35 of the Trade Marks Act, 1999, covering jewellery and showroom services.

Difficulties arose when defendants 4 to 6, who were close relatives of defendants 1 to 3 (all original partners of the firm), formed a private limited company named “Aum Valli Vilas Jewellery Private Limited.” The new entity sought to carry on similar business activities under the name “Aum Valli Vilas.” The plaintiffs, being some of the partners of the original firm, viewed the use of this similar trade name as an attempt to violate their registered trademark “Sri Valli Vilas” and to mislead customers.

Consequently, they filed a commercial suit before the Commercial Court (Principal District Judge, Cuddalore) seeking a permanent injunction to restrain the defendants from using the deceptive trade name “Aum Valli Vilas,” alleging infringement and passing off in violation of their trademark rights under the Trade Marks Act, 1999.

Procedural Details

In the said suit, registered as Commercial O.S. No. 1 of 2023, the defendants 1 to 3 submitted an interlocutory application in I.A. No. 214 of 2023 under Order VII Rule 11(a), (c), and (d) read with Section 151 of the Code of Civil Procedure, praying for rejection of the plaint. They argued that the entire dispute was not maintainable before the civil court because of the arbitration clause (Clause 15) contained in the original partnership deed dated 01.04.2012. They contended that since the plaintiffs and defendants were parties to that deed, any dispute among them must be settled through arbitration, not litigation.

The defendants also raised an objection regarding the pecuniary jurisdiction of the court under Sections 6 and 12(1)(d) of the Commercial Courts Act, 2015, stating that the valuation of the suit was below Rs. 3,00,000, thereby excluding it from the commercial jurisdiction.

The Commercial Court, after hearing both sides, partly accepted the defendants’ contentions. It rejected the objection on pecuniary jurisdiction, affirming that since the matter pertained to trademark infringement governed by the Trade Marks Act, 1999, it fell within its competence. However, it accepted the objection based on the arbitration clause, holding that the existence of a valid arbitration agreement barred the plaintiffs from maintaining a suit. Thus, the plaint was rejected on 31 July 2023.

Aggrieved, the second plaintiff (M. Ramesh) alone filed the present appeal before the High Court of Madras under Section 96 of the Code of Civil Procedure read with Section 13 of the Commercial Courts Act, 2015, seeking to set aside the Commercial Court’s order.

Dispute

The core dispute revolved around the maintainability of a civil suit where an arbitration clause existed. The plaintiffs argued that their claim, based on trademark infringement and passing off under statutory protection, involved rights in rem, which could not be referred to arbitration. They contended that infringement of a registered trademark and protecting goodwill were independent legal rights, enforceable under the Trade Marks Act, 1999, and thus outside the private dispute resolution domain.

The defendants, conversely, claimed that since the plaintiffs and defendants were bound by a partnership deed with a binding arbitration clause, the civil court was barred from proceeding. They contended that the plaintiffs could not bypass their obligation to arbitrate merely by couching the dispute as a trademark infringement when the dispute’s root lay in partner relationship issues and business competition arising among them.

Detailed Reasoning

The Division Bench, led by Justice Mummineni Sudheer Kumar, proceeded to analyze the scope of Order VII Rule 11 CPC, which permits rejection of a plaint if it appears barred by law. The court reiterated that in determining an application under this rule, only the averments in the plaint and the documents filed with it can be considered — not the defence. Hence, even if arbitration existed, the question was whether from the plaint itself it could be conclusively inferred that arbitration ousted judicial jurisdiction at inception.

The court examined the contents of the plaint and noted that the plaintiffs alleged an act of independent trademark infringement by defendants 4 to 7, who were not signatories to the partnership deed. The plaint had specifically averred that while defendants 1 to 3 were former co-partners, defendants 4 to 6 (their family members) had conspired with them to establish a similarly named company — “Aum Valli Vilas Jewellery Private Limited.” This company’s act of adopting a deceptively similar trade name was a fresh infringing act causing harm to the plaintiffs’ registered statutory rights. Thus, while some of the defendants were parties to the partnership deed, the cause of action extended to non-signatories of the arbitration agreement.

The judges referred to and drew guidance from the Supreme Court decisions in Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd. (2011) 5 SCC 532, A. Ayyasamy v. A. Paramasivam (2016) 10 SCC 386, and Vidya Drolia v. Durga Trading Corporation (2021) 2 SCC 1, which classify disputes into arbitrable and non-arbitrable categories. Rights in rem (which affect the public, such as trademark registration and infringement claims) are generally non-arbitrable because they require judicial determination; whereas rights in personam (between private parties) may be referred to arbitration.

Applying this reasoning, the court found that since the substance of the claim related to statutory infringement of a registered trademark, it was not within the scope of the arbitration clause. The act of adopting the infringing mark by a corporate entity newly created was a new wrong — a tortious act affecting proprietary rights, not merely a dispute arising from the partnership agreement.

The court observed that the Commercial Court had mechanically applied the arbitration clause, without analyzing whether the dispute, in substance, fell within its scope. The mere presence of an arbitration clause among some parties could not divest the civil court of jurisdiction in a case involving infringement of intellectual property rights governed by statute.

The Division Bench also underscored the settled principle that the court must preserve access to justice when statutory rights are invaded, citing Vidya Drolia and M/s. Emaar India Ltd. v. Tarun Aggarwal Projects LLP (2022) 6 SCC 282.

Furthermore, the Bench reaffirmed that the Trade Marks Act, 1999, creates enforceable statutory rights recognized under Sections 28 and 29, and violation of these rights, being civil wrongs of public consequence, cannot be ousted from judicial scrutiny merely because some commercial relations among parties are governed by a private arbitration clause.

Decision

The High Court allowed the appeal and set aside the order of the Commercial Court dated 31 July 2023. It restored the original plaint in Commercial O.S. No. 1 of 2023 to the file of the Principal District Judge, Cuddalore, directing that the case be proceeded with on merits.

The Bench held that the Commercial Court had erred in rejecting the plaint solely on the basis of the arbitration clause. It clarified that disputes concerning trademark rights, passing off, and infringement under the Trade Marks Act are not subject to arbitration and must be adjudicated by civil courts. The findings of the Commercial Court on pecuniary jurisdiction remained undisturbed and attained finality.

Accordingly, the matter was remitted back with instructions for expeditious disposal. No order as to costs was made.

Suggested Titles for Publication

Arbitration Clause vs Trademark Rights: The Madras High Court on Non-Arbitrable Commercial Disputes

Family Partnership and Trademark Conflict: Lessons from M. Ramesh v. V. Balu

Arbitration Cannot Override Statutory Rights: A Study of the Sri Valli Vilas Trademark Case

When Commercial Disputes Collide with IP Law: The Madras High Court’s Insightful Ruling

Interplay of Arbitration and Intellectual Property: Dissecting the Valli Vilas Dispute

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

Saturday, October 18, 2025

Jamp India Pharmaceuticals Pvt. Ltd. Vs. Jubilant Generics Ltd

Factual Background: Jubilant Generics Ltd., a pharmaceutical company based in Noida, India, is engaged in developing and manufacturing drug formulations for global markets. It had created detailed Product Dossiers for drugs such as Losartan, Amlodipine, and Citalopram. These dossiers, developed through years of research, contain technical, clinical, and manufacturing data required for obtaining marketing authorizations from global regulatory bodies. Jubilant claimed copyright and confidentiality protection over these dossiers as “literary works” under Section 2(o) of the Copyright Act, 1957.

To market these drugs in Canada, Jubilant entered into a series of non-exclusive license and supply agreements with Jamp Pharma Corporation (a Canadian company) between 2010 and 2014. These agreements permitted Jamp Pharma to use Jubilant’s Product Dossiers exclusively for regulatory and manufacturing purposes within Canada. The license was defined as “fully paid-up, perpetual, royalty-free and non-exclusive”, but territorially limited to Canada.

In 2024, Jubilant alleged that Jamp Pharma had violated these agreements by transferring the Product Dossiers to its Indian subsidiary, Jamp India Pharmaceuticals Pvt. Ltd., and further to Indian manufacturers — Medreich Ltd., VS International Pvt. Ltd., and Gracure Pharmaceuticals Ltd. — for commercial manufacturing and distribution in India. Jubilant claimed this was an unlawful reproduction and use of its copyrighted and confidential materials.

Upon discovery of this alleged misuse, Jubilant filed Original Suit No. 370 of 2024 before the Commercial Court at Gautam Budh Nagar seeking permanent injunction, damages, and ancillary reliefs under the Copyright Act and for breach of confidentiality. An ex parte ad-interim injunction was granted on 23 August 2024, restraining the defendants from using or sharing the disputed dossiers.

Procedural Histroy: The defendants filed applications under Order XXXIX Rule 4 CPC to vacate the injunction, arguing lack of urgency, absence of copyright infringement, and existence of parallel arbitration proceedings in Canada between Jubilant and Jamp Pharma.

The Commercial Court, by order dated 07 November 2024, continued the injunction. However, upon appeal (FAFOD No. 21 of 2025), the Allahabad High Court set aside this order, directing the Commercial Court to reconsider the injunction application after addressing the three essential elements — prima facie case, balance of convenience, and irreparable injury. On remand, the Commercial Court again upheld the injunction by order dated 25 February 2025, prompting Jamp India Pharmaceuticals and VS International Pvt. Ltd. to file Commercial Appeals No. 13 and 14 of 2025 before the High Court.

Nature of Dispute: At the core of this dispute lies the question of whether Product Dossiers qualify for copyright protection as “literary works” under the Copyright Act, and whether their use by Indian affiliates amounts to copyright infringement or merely a breach of contractual confidentiality.

The defendants argued that the suit was contractual in nature, arising from alleged breach of license agreements, and therefore could not be maintained as a copyright infringement action. They further asserted that the agreements’ arbitration clause required the dispute to be settled before the International Chamber of Commerce (ICC), where parallel proceedings were already underway.

Conversely, Jubilant claimed the action was one for infringement of statutory copyright rights — a right in rem, enforceable against the world at large — and not merely a contractual right in personam, thus placing it outside the scope of arbitration.

Arguments by Appellants: The appellants contended that:

Non-Compliance with Section 12-A of the Commercial Courts Act, 2015:Jubilant failed to undertake mandatory pre-institution mediation, as required under Section 12-A. The alleged cause of action arose as early as 2021 through internal emails, and therefore there was no “urgency” justifying exemption.They relied on Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. (2022) 10 SCC 1 and Yamini Manohar v. TKD Keerthi (2024) 5 SCC 815.

Composite Suit and Lack of Jurisdiction: The claim combined two independent causes — breach of confidentiality and copyright infringement. The Commercial Court, relying on Section 62 of the Copyright Act, had jurisdiction only over the latter. Citing Dhodha House v. S.K. Maingi (2006) 9 SCC 41 and Paragon Rubber Industries v. Pragathi Rubber Mills (2014) 14 SCC 762, the appellants argued that a court cannot assume jurisdiction over an entire composite suit when it lacks territorial competence for one of the causes.

Absence of Copyrightable Subject Matter:The Product Dossiers, being compilations of scientific data and chemical processes, lacked originality or creativity. They were technical documents rather than literary works, hence not protectable under Section 13 of the Act.They relied on Eastern Book Company v. D.B. Modak (2008) 1 SCC 1 and Dr. Reckeweg & Co. GmbH v. Aven Biotech Pvt. Ltd. (2008 SCC OnLine Del 1741).

No Infringement Established:Merely using the technology or information within the Dossiers for manufacturing does not constitute reproduction or adaptation as per Section 14 of the Copyright Act.

Parallel Arbitration Proceedings:Since an ICC arbitration between Jubilant and Jamp Pharma was already pending, the present suit amounted to forum shopping and risked conflicting findings.Reliance was placed on Bharat Aluminum Co. v. Kaiser Aluminum Technical Services Inc. (2012) 9 SCC 552 (BALCO).

Argument by Respondent: Jubilant countered that:

Section 12-A Inapplicable:The suit sought urgent interim injunction against ongoing copyright infringement, falling within the exception under Section 12-A. Reliance was placed on Y-Not Films LLP v. Ultra Media (2024 SCC OnLine Bom 3085).

Product Dossiers as “Literary Works”:The Dossiers involved significant intellectual skill, judgment, and discretion — thus satisfying the minimal creativity threshold under Eastern Book Company v. D.B. Modak (2008) 1 SCC 1.

Copyright vs Contractual Rights: Copyright infringement is a statutory right in rem, enforceable independently of contractual obligations. Disputes relating to rights in rem cannot be referred to arbitration (Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd., (2011) 5 SCC 532; Vidya Drolia v. Durga Trading Corporation, (2021) 2 SCC 1).

Jurisdiction of the Commercial Court:Under Section 62(2) of the Copyright Act, the plaintiff may institute the suit where it carries on business — in this case, Noida. Furthermore, part of the cause of action arose within its jurisdiction as the defendants promoted and advertised infringing products at the iPHEX 2024 Exhibition in Greater Noida.

Reasoning of court:

Composite Suit and Jurisdiction: The Court examined Sections 62 of the Copyright Act and 20 of the CPC and reiterated the principle from Dhodha House and Paragon Rubber that a court cannot assume jurisdiction for an entire composite suit if one part lies beyond its territorial reach. However, the Bench found that the dominant purpose of the plaint was to protect copyright, and the confidentiality aspect was incidental and ancillary. Therefore, the Commercial Court at Noida rightly exercised jurisdiction.

On Copyrightability of Product Dossiers: The Court held that Product Dossiers, being compilations of scientific and regulatory data developed through skill and judgment, qualified as “literary works” under Section 2(o). The reasoning drew from Eastern Book Company v. D.B. Modak (2008) 1 SCC 1, clarifying that originality does not require novelty — only the exercise of creative judgment.

On Section 12-A Compliance: The Court acknowledged Patil Automation but emphasized that exemption under Section 12-A applies where urgent interim relief is sought. The cause of action arose on 2 April 2024, when Jamp Pharma’s senior vice president admitted transferring the dossiers in his affidavit. The Court held that the plaintiff could not have initiated pre-mediation without risking continued infringement.

On Arbitration: The Bench agreed that the arbitration proceedings related to contractual issues between Jubilant and Jamp Pharma, not statutory rights under the Copyright Act. Hence, the present suit was maintainable before the Indian Commercial Court.

On Grant of Interim Injunction:Applying principles from Anand Prasad Agarwalla v. Tarkeshwar Prasad (AIR 2001 SC 2367) and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra (2025 SCC OnLine SC 1701), the Court held that: Jubilant had established a prima facie case of ownership and unauthorized use of its Dossiers. Balance of convenience favored protection of intellectual property over commercial convenience.Continued misuse would cause irreparable harm to Jubilant’s proprietary rights. The injunction was thus upheld.

Decision: The High Court dismissed both appeals, affirming the injunction order dated 25 February 2025 of the Commercial Court, Gautam Budh Nagar. It concluded that Jubilant had made out a strong prima facie case of copyright infringement and breach of confidentiality, and that Section 12-A did not bar the proceedings. The Product Dossiers were recognized as protectable literary works under the Copyright Act.

Legal Significance: This judgment is a landmark for the pharmaceutical and intellectual property industries. It establishes that: Product Dossiers and regulatory compilations may qualify as “literary works” under the Copyright Act. Statutory copyright claims can proceed independently of contractual or arbitral disputes. Urgent injunctions in IP cases can bypass pre-institution mediation under Section 12-A of the Commercial Courts Act. Confidential information, though contractual in nature, may be protected under the broader ambit of copyright law when incorporated in literary work.

Case Title: Jamp India Pharmaceuticals Pvt. Ltd. Vs. Jubilant Generics Ltd. and Others

Neutral Citation: 2025:ALLHC:1015

Case Number: Commercial Appeal No. 14 of 2025

Order Date: 15 October 2025

Court: High Court of Judicature at Allahabad

Coram: Hon’ble Mr. Justice Arun Bhansali, Chief Justice, and Hon’ble Mr. Justice Kshitij Shailendra

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

Grasim Industries Limited and Anr. Vs Saboo Tor Private Limited

Case Title: Grasim Industries Limited and Anr. Vs Saboo Tor Private Limited & Ors.

Case No.: Interim Application No. 3888 of 2022 in Commercial IP Suit No. 422 of 2022

Neutral Citation: 2025:BHC-OS:19474

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

Coram: Hon’ble Justice Sharmila U. Deshmukh

Order Reserved On: August 14, 2025

Order Pronounced On: October 16, 2025

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FACTS

This case arises from a dispute concerning the alleged unauthorized use of the famous and well-known trademark “BIRLA” by the defendants, particularly Saboo Tor Private Limited and associated entities. The plaintiffs, Grasim Industries Limited and Ultratech Cement Limited, are part of the well-known Aditya Birla Group, which traces its origin to the 19th century and is one of India’s largest industrial conglomerates. The plaintiffs claimed that through years of consistent use, reputation, and recognition, the mark “BIRLA” has come to be uniquely identified with the Birla family companies.

Grasim Industries Limited is the flagship company of the Aditya Birla Group, incorporated in 1947 and initially engaged in the textile business before diversifying into various industries. It holds numerous registrations of the “BIRLA” family of marks, including “BIRLA WHITE” (for cement and related goods) and several other composite marks containing the word “BIRLA” registered in multiple classes under the Trade Marks Act, 1999.

The dispute began when the plaintiffs received a legal notice in November 2021 from some of the defendants alleging fraud and misrepresentation. On investigating, the plaintiffs discovered that Defendant No.1, Saboo Tor Pvt. Ltd., had incorporated companies such as “Birla Medicare Pvt. Ltd.” and “Birla Biotech Pvt. Ltd.” and was using websites like www.birlatmtsteel.com and www.birlaebike.com, which were deceptively similar to the plaintiff’s established brand identity.

The plaintiffs alleged that the defendants’ conduct amounted to trademark infringement and passing off, claiming that the defendants’ registration of “BIRLA TMT” and “BIRLA E-BIKE” was fraudulent and designed to ride upon the goodwill of the plaintiffs’ well-known mark “BIRLA”.

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PROCEDURAL DETAILS

The plaintiffs filed this commercial IP suit seeking an injunction against the defendants for infringement and passing off under Sections 29, 30, and 135 of the Trade Marks Act, 1999, and prayed for cancellation of the defendants’ registered trademarks under Sections 47 and 57.

The defendants filed detailed replies contesting the plaintiffs’ claims. They argued that they were the registered proprietors of the marks “BIRLA” and “BIRLA TMT” under Classes 6, 10, 11, and 18 and that their registration precluded any infringement action under Sections 28(3) and 30(2)(e) of the Act. They claimed to have used the marks since 2004 and produced business records, advertisements, and government inspection certificates to demonstrate genuine commercial use.

The defendants further argued that the plaintiffs had delayed bringing the action, despite being aware of the defendants’ extensive advertising and presence across multiple states. They also cited that numerous unrelated businesses and companies used the word “BIRLA”, demonstrating that it was a common name and not exclusively associated with the plaintiffs.

The matter was argued extensively before Hon’ble Justice Sharmila U. Deshmukh, who reserved judgment in August 2025 and pronounced the decision on October 16, 2025.

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DISPUTE

The key dispute revolved around whether the plaintiffs, as part of the Aditya Birla Group, could claim exclusive proprietary rights over the mark “BIRLA” and whether the defendants’ use of “BIRLA TMT” and “BIRLA E-BIKE” constituted infringement or passing off.

The Court was also called upon to decide:

1. Whether the plaintiffs had sufficiently proved their exclusive association with the “Birla” name.

2. Whether the defendants’ registration of “BIRLA TMT” was obtained fraudulently or through dishonest adoption.

3. Whether, under Sections 28(3) and 30(2)(e), a registered proprietor could be restrained from using its own registered trademark.

4. Whether the plaintiffs had made out a prima facie case for interim injunction based on infringement and passing off.

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DETAILED REASONING AND ANALYSIS

Justice Deshmukh began by examining the plaintiffs’ central claim of exclusive rights over the “BIRLA” name. The Court observed that although the plaintiffs relied heavily on their association with the Aditya Birla Group, they failed to provide documentary evidence of an internal arrangement that conferred upon them the exclusive right to use the “BIRLA” mark. No agreement, deed, or family resolution was placed on record to establish that only Aditya Birla Group companies could use “BIRLA”.

The Court noted that the plaintiffs’ narrative linking the mark’s origin to Shiv Narayan Birla in the 19th century and tracing it to Grasim Industries was not supported by concrete evidence. There was also no document demonstrating that Grasim Industries or Ultratech Cement had directly inherited trademark rights from earlier Birla entities.

The Court further held that while the plaintiffs presented over 112 registrations containing the word “BIRLA”, none were for the word “BIRLA” standing alone. The earliest proven use of their marks like “BIRLA WHITE” and “BIRLA COASTAL” dated only to the early 2000s, despite claims of use since 1947. Moreover, the plaintiffs failed to produce invoices or sales documents proving commercial use of “BIRLA” marks before 2007–08.

In contrast, the defendants’ evidence—such as purchase orders, inspection certificates from government departments (2008–09), and ISO certifications—demonstrated commercial use of “BIRLA TMT” in relation to steel bars. Though the plaintiffs questioned the authenticity of certain invoices, the Court found sufficient independent material supporting the defendants’ claims of use since at least 2008.

Justice Deshmukh also considered whether both parties could concurrently hold registrations. Referring to Sections 12, 28(3), and 30(2)(e) of the Trade Marks Act, she noted that the Act allows for honest concurrent registration and recognizes that more than one party may hold rights in similar or identical marks for different goods. Section 28(3) specifically denies any registered proprietor the right to sue another registered proprietor for infringement.

The Court relied on the Full Bench judgment in Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596), which held that while courts could assess the validity of registration at the interim stage, this could only be done in cases of manifest fraud or illegality. In the present case, no such egregious fraud was shown in the defendants’ registration to justify bypassing this protection.

The Court rejected the plaintiffs’ contention that the defendants’ registration violated Section 11 of the Act (relative grounds for refusal) or that the registration was fraudulent under Sections 47 and 57, noting that allegations of forged invoices were linked to a pending trademark application, not to existing registrations.

On the question of passing off, the Court observed that the plaintiffs failed to demonstrate sufficient goodwill or reputation as of 2004, when the defendants claimed adoption of the mark. Passing off required proof of misrepresentation, reputation, and damage—all of which were inadequately established.

Justice Deshmukh also addressed the defendants’ plea of delay and acquiescence, finding that although the plaintiffs claimed to have learned of the defendants’ activities only in 2021, the defendants had been publicly advertising across major media channels for years. Therefore, the plaintiffs’ claim of ignorance was implausible.

Finally, the Court remarked that trademark rights cannot be claimed in perpetuity merely due to association with a famous family name unless supported by statutory and factual proof of use and ownership. The word “BIRLA” was held to have become publici juris, used widely by several unrelated companies and entities, thus diluting any claim to exclusivity.

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DECISION

The Bombay High Court dismissed the plaintiffs’ interim application for injunction. Justice Deshmukh held that both parties were registered proprietors of their respective marks containing the word “BIRLA,” and hence, under Sections 28(3) and 30(2)(e), an action for infringement could not be sustained against a co-registered proprietor.

The Court also found that the plaintiffs had not established a prima facie case for passing off or shown sufficient irreparable harm to justify restraining the defendants from using their registered marks. Moreover, the plaintiffs’ inability to substantiate their exclusive link with the “Birla” name weakened their case for special protection as a “well-known” mark.

The judgment thus reaffirmed that statutory rights under the Trade Marks Act, 1999 protect all registered proprietors equally and that claims of fame or family association cannot override the statutory scheme without concrete evidence.

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SUGGESTED TITLES FOR PUBLICATION

1. “The Battle of the Birlas: Bombay High Court Clarifies Coexistence of Registered Marks”

2. “Trademark Monopoly and Family Legacy: Lessons from Grasim v. Saboo Tor”

3. “When Fame Isn’t Enough: The Legal Boundaries of Well-Known Marks”

4. “BIRLA Trademark Dispute: Bombay High Court on Honest Concurrent Use”

5. “Coexistence over Exclusivity: A Case Study on Trademark Rights under Sections 28 and 30”

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

IP.ADJUTOR

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