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

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

Case Number: C.O. (COMM.IPD-CR) 880/2022, C.O. (COMM.IPD-CR) 881/2022 & C.O. (COMM.IPD-CR) 882/2022

Neutral Citation: 2024:DHC:—

Date of Order: 4th November, 2024

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Justice Mini Pushkarna

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Factual Background

This case arises out of a series of rectification petitions filed by Sonani Industries Pvt. Ltd., earlier known as Sonani Jewels Pvt. Ltd., seeking cancellation of the copyright registered in favour of Mr. Sanjay Jayantbhai Patel (Respondent No. 1). The dispute essentially concerns the ownership and validity of certain copyright designs and artistic works allegedly used in the jewelry business of both parties.

Sonani Industries, a renowned jewelry manufacturer, contended that the registration obtained by Sanjay Patel was done in violation of the mandatory procedural safeguards under the Copyright Rules, 2013. The petitioner’s principal argument was that while submitting Form XIV for copyright registration, the respondent failed to comply with Rule 70(9) of the Copyright Rules, which mandates the applicant to notify any person who is likely to have an interest in or objection to the registration. According to Sonani Industries, this rule is an essential part of the registration process, and failure to follow it renders the registration void.

At the same time, a separate civil suit for copyright infringement had been instituted by Sonani Industries before the District Court at Surat, alleging unauthorized use and copying of its artistic jewelry designs by the respondents. That civil dispute is still pending adjudication.

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Procedural History

The petitions for rectification were filed before the Delhi High Court’s Intellectual Property Division (IPD), which has jurisdiction over copyright rectification matters. Meanwhile, in the related civil proceedings at Surat, the trial court had refused to grant a full injunction in favour of Sonani Industries but had directed the respondents to maintain proper accounts of sales and refrain from disclosing the disputed copyright details to third parties.

Aggrieved by the partial relief, Sonani Industries approached the Supreme Court by way of Special Leave to Appeal (C) No. 20025/2014, titled Sonani Industries Pvt. Ltd. v. Prime Diamond Tech & Ors.. On 9th September 2024, the Hon’ble Supreme Court directed the District Court, Surat, to make an effort to dispose of the pending civil suit within one year.

Meanwhile, in Delhi, the rectification petitions (C.O. (COMM.IPD-CR) 880/2022, 881/2022, and 882/2022) were taken up together by Justice Mini Pushkarna. The petitioner’s argument was centered on the illegality of the registration process, while the respondent argued that the issues raised in the rectification petitions overlapped entirely with the subject matter of the Surat civil suit.

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Core Dispute

The core dispute revolved around two principal questions:

First, whether the registration of copyright in favour of Respondent No. 1, Mr. Sanjay Patel, was valid when the petitioner was not notified as required under Rule 70(9) of the Copyright Rules, 2013.

Second, whether the Delhi High Court should proceed to hear the rectification petitions independently or defer its decision until the conclusion of the civil suit pending before the District Court, Surat, where similar issues were under consideration.

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Arguments on Behalf of the Petitioner

Senior Advocate Mr. Raj Shekhar Rao, representing the petitioner, emphasized that the registration in favour of Sanjay Patel suffered from fundamental procedural defects. He pointed out that Rule 70(9) mandates that, before filing Form XIV, the applicant must give prior notice to any party likely to be affected by the registration. Since Sonani Industries had been in continuous commercial use of the designs in question, failure to serve notice vitiated the process entirely.

Counsel further argued that statutory requirements under Rule 70(9) are not mere formalities but safeguards designed to prevent fraudulent or overlapping copyright claims. He cited Bharat Tea Suppliers v. Gujarat Tea Traders & Anr., 2021 SCC OnLine Bom 3637, where the Bombay High Court had underscored the importance of compliance with statutory provisions in copyright registration procedures.

Relying also on the Delhi High Court’s order dated 2nd May 2024 in C.O. (COMM.IPD-CR) 750/2022, the petitioner contended that the Registrar of Copyrights must act strictly in accordance with statutory procedure, and failure to do so renders the registration liable for rectification or cancellation under Section 50 of the Copyright Act, 1957. Thus, since no notice had been given, the copyright entry in the Register of Copyrights could not stand.

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Arguments on Behalf of the Respondents

Senior Advocate Mr. Hay Savla, appearing for the respondents, countered the allegations by asserting that there was full compliance with Rule 70(9) and that the copyright registration in favour of Mr. Patel was validly obtained. He further argued that the Delhi High Court should not entertain these rectification petitions while the matter is pending before the Surat District Court, as both involve overlapping factual and legal issues.

According to the respondents, the petitioners were attempting to re-litigate issues already under active consideration in the civil suit. He also submitted that the copyright registration, once granted, is not a public notice of infringement but merely an administrative act confirming authorship and ownership. Hence, there was no requirement to presume that Sonani Industries had any right to object at the time of registration.

Mr. Savla highlighted that the District Court, Surat, had found no prima facie case of infringement against the respondents and had refused to grant an injunction restraining them from conducting their business. The only directions issued were to maintain accounts and not to disclose certain copyright-related information. These facts, he argued, demonstrated that the petitioner’s claim was weak even on merits.

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Judicial Reasoning and Analysis

Justice Mini Pushkarna, after hearing both sides, observed that the rectification petitions raised complex questions that were deeply intertwined with the factual matrix of the ongoing civil suit in Surat. The Court noted that the Supreme Court itself had already directed the Surat court to expedite the proceedings and dispose of the suit within a year. Therefore, it would be premature for the Delhi High Court to adjudicate the rectification petitions independently while the same factual and legal questions were sub judice elsewhere.

The Court analyzed the petitioner’s reliance on Rule 70(9) of the Copyright Rules, 2013, which reads that the applicant for registration must give notice of the application to every person who claims or is likely to claim any interest in the subject matter. While acknowledging the importance of this procedural rule, the Court held that the issue of whether such notice was indeed necessary and whether non-compliance invalidated the registration could only be effectively decided after evaluating the evidence and findings of the Surat trial court in the related infringement suit.

Justice Pushkarna also emphasized judicial comity and the need to avoid conflicting decisions between courts. Since the copyright infringement suit was already being examined in depth by the Surat District Court, any decision on rectification by the Delhi High Court could potentially lead to inconsistency or duplication of judicial effort.

Accordingly, the Delhi High Court deemed it appropriate to await the outcome of the pending suit rather than proceed with parallel adjudication. The Court thus decided to defer hearing and re-notify the matter for further proceedings after the decision of the Surat District Court.

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Final Decision

The Delhi High Court did not pass any substantive findings on the merits of the rectification claim but directed that the petitions be re-notified on 28th April 2025. Justice Mini Pushkarna recorded that, in light of the Supreme Court’s direction for early disposal of the related civil suit, it would be in the interest of justice to await that verdict before examining the rectification issue.

This order demonstrates judicial restraint and recognition of the interconnected nature of copyright disputes involving both infringement and registration validity. The Court reaffirmed that when two parallel proceedings are based on overlapping facts, it is prudent to await the outcome of one to prevent contradictory rulings.

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Significance of the Case

The order highlights a key procedural aspect in intellectual property litigation—coordination between civil infringement proceedings and rectification petitions. It clarifies that while copyright registration disputes are maintainable before the Delhi High Court, where factual overlap exists with pending infringement suits, the High Court may defer adjudication to ensure consistency.

Additionally, the case reiterates the importance of procedural compliance under the Copyright Rules, 2013, particularly Rule 70(9). The issue raised by the petitioner—whether failure to notify affected parties invalidates registration—is significant and will likely influence future decisions once the related suit is decided.

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Suggested Titles for Publication

1. Rule 70(9) and the Right to Notice: Procedural Integrity in Copyright Registration

2. Parallel Proceedings and Judicial Restraint: A Study of Sonani Industries v. Sanjay Patel

3. Copyright Rectification Deferred: When Civil and Administrative Jurisdictions Intersect

4. Procedural Defect or Overlap? Delhi High Court’s Measured Approach in Copyright Dispute

5. Balancing Copyright Rights and Judicial Comity: Lessons from Sonani Industries Case

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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

Court on its Own Motion Vs. Nitin Bansal

Obstruction in execution of Local Commission and Criminal Contempt of court

Factual Background:The case originated from a civil dispute titled Bina & Ors. v. Ashok Bansal, where an interim injunction was granted under Section 9 of the Arbitration and Conciliation Act, 1996. The Single Judge of the Delhi High Court restrained Mr. Ashok Bansal from dealing with or disposing of 30,000 tons of industrial coal and from alienating assets of the partnership firm M/s G&G Concrete Solutions.

Despite the order dated 31st May 2024, allegations surfaced that Mr. Ashok Bansal was violating the injunction by continuing to dispose of the coal. Consequently, an application was filed seeking appointment of a Local Commissioner to inspect the site and report the ground situation. On 12th July 2024, the Court appointed Advocate Ms. Nandini Bali as Local Commissioner to inspect the premises of M/s G&G Concrete Solutions located in Bhupani, Faridabad, Haryana, directing full cooperation and allowing requisition of police assistance for enforcement.

On 13th July 2024, the Local Commissioner, accompanied by police officers, reached the site. During the inspection, Mr. Nitin Bansal, son of Mr. Ashok Bansal, arrived and displayed a hostile and intimidating attitude. The Local Commissioner’s report later recorded that Mr. Nitin Bansal not only refused to cooperate but also placed a pistol on the table in front of her to threaten and obstruct the ongoing commission. The police seized the weapon as it appeared to be unlicensed.

The Local Commissioner’s report dated 17th September 2024 detailed the incident and the intimidating behavior, concluding that Mr. Nitin Bansal’s conduct amounted to deliberate obstruction of judicial proceedings.

Procedural History:Upon receiving the Local Commissioner’s report, the Single Judge, by order dated 28th October 2024, referred the matter to the Division Bench for initiation of criminal contempt proceedings under Section 15 of the Contempt of Courts Act, 1971, observing prima facie interference with the administration of justice under Section 2(c)(iii) of the Act.

Pursuant to this reference, Court on its Own Motion v. Nitin Bansal was registered as CONT.CAS. (CRL) 16/2024. On 9th December 2024, notice was issued to the Contemnor to show cause why action for contempt should not be taken.

In his reply, Nitin Bansal denied all allegations, claiming he had cooperated during the inspection and that the object on the table was merely a toy gun used to scare animals. He asserted his innocence, stating that he was a law-abiding citizen with no criminal record.

To ascertain the truth, the Court, on 21st February 2025, directed the SHO of P.S. Bhupani, Faridabad to file a status report and produce the seized weapon. On 28th May 2025, the gun was produced in court by ASI Samsher Singh. Upon physical inspection, the Bench noted that the gun was not a toy gun but a real air gun.

Final arguments were heard on 8th September 2025. While Nitin Bansal maintained his innocence, his senior counsel tendered an unconditional apology on his behalf. The matter was reserved for judgment and pronounced on 29th October 2025.

Core Legal Issue:The central issue before the Court was whether Nitin Bansal’s conduct in threatening a court-appointed Local Commissioner with a weapon during execution of judicial orders constituted criminal contempt under Section 2(c)(iii) of the Contempt of Courts Act, 1971, and whether his subsequent claim that the weapon was a toy gun mitigated his liability.

Judicial Reasoning and Analysis:The Bench began by explaining the scope of criminal contempt under Section 2(c) of the Contempt of Courts Act, 1971, emphasizing that any act that interferes with, or obstructs, the administration of justice qualifies as criminal contempt. The Court cited the Supreme Court’s landmark decision in Ram Kishan v. Tarun Bajaj, (2014) 16 SCC 204, which held that contempt jurisdiction safeguards the authority of the courts — the ultimate protector of citizens’ rights. The Supreme Court clarified that punishment for contempt requires proof beyond reasonable doubt, as the proceedings are quasi-criminal in nature. The conduct must be “wilful”, intentional, and done with full knowledge of its likely consequences.

The Court further referred to Jhareswar Prasad Paul v. Tarak Nath Ganguly, (2002) 5 SCC 352, reiterating that contempt jurisdiction exists to uphold the majesty and dignity of the courts, without which the democratic fabric of society would collapse.

Applying these principles, the Bench observed that Nitin Bansal’s claim that the weapon was a toy gun was false. The air gun produced in court was verified to be a real weapon. The Court found that the contemnor had deliberately misled the court by giving a false explanation, intending to evade responsibility. This false plea itself was an aggravating factor showing a deliberate and contumacious attitude.

The Court observed that a Local Commissioner is not an ordinary visitor but an extension of the court itself, entrusted with executing judicial directions. Any obstruction to her work is equivalent to direct interference in the functioning of the court. The Bench referred to Court on its Own Motion v. M/s Obsession Naaz & Ors. (2025:DHC:7206-DB), where individuals had assaulted court commissioners executing anti-counterfeiting orders, and the Court had condemned such behavior as a grave attack on the administration of justice.

Quoting extensively from that judgment, the Bench emphasized that threatening or attacking Local Commissioners “strikes terror in their minds” and, if unpunished, would erode public confidence in the judiciary. Similarly, the Court cited Court on its Own Motion v. Sanjay Rathod (Advocate) (2024:DHC:6390-DB), where disrespectful and scandalous conduct towards the court was held to constitute contempt in the face of the court.

The Court noted that Nitin Bansal’s behaviour—placing a gun on the table while the commission was in progress—was a clear and deliberate act of intimidation. His conduct was not accidental but calculated to obstruct the execution of the judicial commission. The Court rejected his apology, calling it “a mere lip service” lacking genuine remorse or repentance.

The judgment elaborated that acceptance of apology in contempt matters is not automatic; it must be sincere, unconditional, and accompanied by genuine remorse. In this case, the Court found none of these elements present. Instead, the contemnor’s repeated falsehoods and defiant stance reflected an intentional obstruction to the course of justice.

The Bench observed that allowing such conduct to go unpunished would set a dangerous precedent, emboldening litigants to defy and intimidate court officers. The judiciary’s authority, the Court remarked, “is the bedrock of rule of law; without respect for judicial orders, the democratic framework will collapse.”

Final Decision:The Delhi High Court held that Nitin Bansal’s conduct clearly amounted to criminal contempt under Section 2(c)(iii) of the Contempt of Courts Act, 1971. The Court found his actions wilful, deliberate, and motivated by an intent to obstruct the administration of justice.

Under Section 12 of the Act, the Court sentenced Nitin Bansal to simple imprisonment for three months and imposed a fine of ₹2,000, with a direction that non-payment of the fine would result in an additional 15 days of imprisonment.

The Court ordered the police to take the contemnor into custody from the courtroom and commit him to jail. However, on his counsel’s request citing a family wedding, the Court allowed Nitin Bansal to voluntarily surrender before the Jail Superintendent, Tihar Jail, on 6th November 2025.

The judgment concluded with a strong observation that judicial officers and commissioners must be protected from intimidation and harassment, as they act under the authority of the court. Any attempt to interfere with their lawful duties strikes at the very foundation of the rule of law.

Case Title: Court on its Own Motion Vs. Nitin Bansal

Case Number: CONT.CAS. (CRL) 16/2024

Neutral Citation: 2025:DHC:9447

Date of Decision: 29th October, 2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Ms. Justice Prathiba M. Singh and Hon’ble Mr. Justice Rajneesh Kumar Gupta

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

Pathkind Diagnostics Private Limited Vs. Registrar of Trade Marks

Trademark Right Justice Over Technicality

Facts:  Pathkind Diagnostics Private Limited, a well-known diagnostics company, filed an appeal before the Delhi High Court under Section 91 of the Trade Marks Act, 1999 read with Section 13 of the Commercial Courts Act, 2015. The appeal challenged the order dated 23 April 2024 passed by the Registrar of Trade Marks, rejecting the company’s application for registration of the device mark “PATHKIND LABS” under Class 44, which relates to medical and diagnostic services.

The application was originally refused by the Registrar on the ground that there already existed two similar trademark registrations — the word mark “PATHKIND” and the device mark “Path Kind Labs” — bearing application numbers 3365298 and 3507524, both registered under Class 44. The Registrar held that the mark applied for was identical or deceptively similar to these existing marks and thus hit by the provisions of Section 11(1) of the Trade Marks Act, 1999, which prohibits registration of identical or similar marks likely to cause confusion.

The appellant contended that the cited marks belonged to Mr. Arjun Juneja, who also happened to be the Director of Pathkind Diagnostics Private Limited. It was submitted that there was no real conflict of ownership since both marks were effectively under the same corporate control.

Procedural Details: The appellant’s mark had been rejected at the examination stage itself by the Registrar of Trade Marks, who considered that the existence of two earlier identical marks constituted a legal bar to registration. Instead of filing a request for review or rectification before the Registrar, the appellant preferred to challenge the refusal order directly by filing an appeal under Section 91 before the High Court of Delhi.

During the pendency of the appeal, the appellant placed on record a No Objection Certificate (NOC) dated 8 July 2024 issued by Mr. Arjun Juneja, the proprietor of the cited marks. Furthermore, the appellant produced an Assignment Deed dated 5 May 2022 executed by Mr. Juneja in favour of the appellant, assigning all rights in trademarks numbered 3365298 and 3507524 and other associated marks to Pathkind Diagnostics Private Limited.

The appellant’s counsel submitted that a Form TM-P had also been filed on 13 May 2022 before the Registrar to record the assignment in official records. However, the Registrar had not yet passed any formal order recording the assignment. The appellant admitted that the fact of assignment was not brought to the Registrar’s attention at the time of refusal, which led to the mistaken rejection of the mark.On the date of hearing before the High Court, the appellant submitted all relevant documents, including the NOC and the Assignment Deed, both in original and through e-filing. The Court took them on record for consideration.

Core Dispute:  The central dispute before the Court was whether the order of the Registrar rejecting the trademark application was justified when the cited marks, though appearing to be identical, were in fact owned by the same corporate group or by a director who had already assigned the marks to the appellant company.The question arose whether, in the presence of an assignment deed and a no-objection from the original owner of the cited marks, the rejection of the appellant’s mark could be sustained, or whether it amounted to a mere technical oversight that ought to be cured in the interest of justice and fair trade practices.Another connected issue was whether the Court should condone the appellant’s failure to inform the Registrar about the assignment before the passing of the impugned order and whether the subsequent filing of documents could rectify that procedural lapse.

Judicial Reasoning and Analysis:  The Court noted that the rejection by the Registrar was based solely on the existence of the two earlier registrations under the same class. The Registrar was unaware that the owner of the cited marks, Mr. Arjun Juneja, had already executed an assignment transferring ownership of those very marks to the appellant company in May 2022.The Court observed that the Assignment Deed dated 5 May 2022 and the NOC dated 8 July 2024 sufficiently established that there was no conflict of interest or confusion between two distinct proprietors. The marks in question effectively belonged to the same business entity, making the Registrar’s objection legally redundant.

The Court, however, noted a lapse on the appellant’s part for not disclosing the existence of the assignment to the Registrar during the initial proceedings. The learned Judge observed that while the appellant was remiss in not presenting complete information, this procedural defect should not lead to forfeiture of substantive rights over a valid trademark, especially when documentary evidence proved that the earlier cited marks were under the appellant’s control.

The Court took a balanced approach, acknowledging that intellectual property rights must be protected against technical injustices. The court cited the principle that procedural lapses should not defeat legitimate rights where the underlying ownership is clear and lawful. The Court emphasized that since the appellant had already executed a proper assignment and filed Form TM-P for recordal, the delay or omission to inform the Registrar could be condoned in the larger interest of justice.

Accordingly, the Court decided to set aside the impugned order but imposed a nominal cost of ₹10,000 on the appellant to be deposited with the Delhi High Court Legal Services Committee (DHCLSC) as a condition for condonation of the lapse. This imposition served as a reminder that diligence is expected from applicants while pursuing trademark proceedings, even when internal ownership is common.

Decision:  The Delhi High Court allowed the appeal and set aside the impugned order dated 23 April 2024. The Court directed the Registrar of Trade Marks to accept and advertise the appellant’s Trademark Application No. 5347179 for “PATHKIND LABS” in Class 44 in the Trademarks Journal preferably within four weeks from the date of the order, in accordance with the Trade Marks Rules.

Furthermore, the Court directed the Registrar to process the pending Form TM-P filed on 13 May 2022 (bearing Reference No. A-3365298 Form No. 337081) for recordal of the assignment deed within four weeks, provided the documents are complete in all respects.With these directions, the appeal and all pending applications were disposed of. The Court reiterated that a digitally signed copy of the order available on the Delhi High Court’s website would be treated as a certified copy for compliance purposes.

Analytical Discussion:  This case illustrates how the Delhi High Court continues to balance procedural rigor with substantive justice in matters concerning trademark registration. The decision underscores the principle that while the Trade Marks Registry operates under strict procedural rules, the ultimate goal of trademark law is to prevent public confusion and protect legitimate proprietary rights, not to penalize applicants for internal corporate documentation delays.

The judgment reaffirms that when the ownership of conflicting marks rests with the same proprietor, objections under Section 11(1) are not maintainable. The Court recognized the inherent fairness in allowing the same entity to consolidate its trademark portfolio when supported by lawful assignments and no-objection certificates.From a broader perspective, this decision strengthens the principle that the Trade Marks Act, 1999 must be interpreted not as a rigid technical code but as a commercial statute designed to facilitate legitimate trade and business continuity.

Conclusion:  The Delhi High Court’s decision in Pathkind Diagnostics Pvt. Ltd. v. Registrar of Trade Marks is an important precedent in the field of intellectual property law, particularly concerning internal ownership conflicts and procedural errors in assignment recordals. It demonstrates that the judiciary prioritizes substance over form when ownership is clearly established and no confusion can arise in the marketplace.The ruling brings clarity to the treatment of trademark applications where the cited conflicting marks belong to the same business group, promoting a pragmatic approach consistent with commercial realities.

Case Title: Pathkind Diagnostics Private Limited Vs. Registrar of Trade Marks

Case Number: C.A. (COMM.IPD-TM) 65/2024

Date of Order: 27 October 2025

Court: High Court of Delhi at New Delhi

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

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

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

Pas Agro Foods Vs. KRBL Limited & Ors.

Dynamic Effect Versus Territorial Discipline in Trademark Rectification

Facts: The case arises out of a commercial dispute between Pas Agro Foods, a partnership firm based in Palakkad, Kerala, and KRBL Limited, a well-known company headquartered in Delhi, which owns the registered trademark “INDIA GATE” for rice and related food products. KRBL Limited obtained ownership of this mark through an assignment deed dated 6 August 2019, from Mr. Ram Pratap, who had initially registered the trademark in 1993 with the Trade Marks Registry at New Delhi.

Pas Agro Foods, claiming to be affected by the said registration, filed a Special Jurisdiction Case (SP.JC No. 2 of 2025) before the Kerala High Court under Section 57 read with Sections 124 and 125 of the Trade Marks Act, 1999 and Section 50 of the Copyright Act, 1957. The petition sought cancellation of KRBL’s trademark registration of “INDIA GATE”.

Before this filing, KRBL had already instituted C.S. (Comm) No. 78/2025 before the District Court (Commercial) at Tis Hazari Courts, New Delhi, alleging trademark infringement by Pas Agro Foods. On 21 January 2025, the Delhi court granted an interim injunction restraining the use of “INDIA GATE” by Pas Agro and appointed an Advocate Commissioner to seize infringing goods and materials. Acting on that order, the Advocate Commissioner, assisted by police, seized goods bearing the “INDIA GATE” name from Pas Agro’s premises in Kerala on 27 January 2025.

Subsequently, Pas Agro filed the present rectification petition before the Kerala High Court on 7 February 2025, and later applied before the Delhi District Court to stay the infringement suit till the disposal of this rectification case.

Procedural Background: KRBL Limited challenged the maintainability of Pas Agro’s rectification case by filing I.A. No. 2 of 2025, raising two main objections:

1. The Kerala High Court lacks territorial jurisdiction to entertain a rectification petition concerning a trademark registered at the Delhi Trade Marks Registry.

2. The petition is premature, as no issue of invalidity has yet been framed by the Delhi District Court under Section 124 of the Trade Marks Act.

The Kerala High Court decided to address the maintainability issue as a preliminary matter before proceeding further into the merits of the rectification claim.

Core Dispute:  The legal dispute centered on two important jurisdictional and procedural questions under the Trade Marks Act, 1999:

1. Whether a High Court other than the one exercising appellate jurisdiction over the Trade Marks Registry (where the mark was registered) can entertain a rectification petition under Section 57 of the Act.

2. Whether a rectification petition is maintainable before an issue of invalidity is framed in a pending infringement suit under Section 124(1)(ii) of the Act.

These issues have significant implications for uniformity and procedural coherence in intellectual property litigation across Indian High Courts.

Detailed Judicial Reasoning:

On Territorial Jurisdiction:  KRBL’s counsel argued that rectification petitions must be filed before the High Court that exercises appellate jurisdiction over the Trade Marks Registry where the registration occurred. Since “INDIA GATE” was registered at the Delhi Registry, only the Delhi High Court had jurisdiction. Reliance was placed on the Delhi High Court’s decision in The Hershey Company v. Dilip Kumar Bacha [MANU/DE/0904/2024] and the Madras High Court’s decision in M/s Woltop India Pvt. Ltd. v. Union of India [W.P. (IPD) Nos. 30 & 32 of 2024].

Pas Agro’s counsel countered that Section 57 merely refers to “the High Court” without restricting it to the High Court having appellate authority over a specific Registry. She argued that since part of the cause of action—specifically, the seizure of goods—occurred in Kerala, and the petitioner’s business operations were affected there, the Kerala High Court could exercise jurisdiction. She cited Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma & Anr. [C.O. (Comm.IPD-TM) 8/2023], where the Delhi High Court recognized the principle of dynamic effect—that a court could assume jurisdiction if the harmful effects of a trademark registration were felt within its territory.

Justice M.A. Abdul Hakhim analyzed Section 57 of the Trade Marks Act alongside Rules 4 and 5 of the Trade Marks Rules, 2017, as well as related provisions under Sections 47, 91, 124, and 125 of the Act. The Court observed that prior to the Tribunals Reforms Act, 2021, the Intellectual Property Appellate Board (IPAB) handled rectification matters, but this jurisdiction was now vested in High Courts.

Referring to the Woltop India decision, the Court agreed with the Madras High Court’s interpretation that the definite article “the High Court” signifies a specific High Court—the one exercising appellate jurisdiction over the Registry concerned. The use of the definite article “the” indicated legislative intent to restrict jurisdiction to a particular High Court, avoiding multiplicity of proceedings and conflicting decisions across different States.

The Kerala High Court also examined Nippon Paint Holdings Co. Ltd. v. Suraj Sharma [A.No.556 of 2024 in C.S. (Comm.Div) No.7 of 2024], where the Madras High Court had applied the dynamic effect principle to consolidate a rectification proceeding. However, since that order had been stayed by the Supreme Court (SLP (C) No.10454 of 2024), Justice Hakhim found it inappropriate to rely on it.

Ultimately, the Court held that if rectification petitions could be filed in any High Court based on where the “dynamic effect” was felt, it would lead to “jurisdictional chaos.” There was a risk of multiple rectification petitions concerning the same mark being filed before different High Courts, resulting in conflicting orders and procedural paralysis.

Therefore, the Court concluded that only the High Court exercising appellate jurisdiction over the Trade Marks Registry where the impugned mark was registered—in this case, the Delhi High Court—could entertain the rectification petition.

On Prematurity under Section 124 of the Trade Marks Act:

KRBL further argued that the petition was premature, as the Delhi District Court had not yet framed any issue on the invalidity of the registration under Section 124(1)(ii) of the Trade Marks Act. The provision stipulates that in an infringement suit, if a party raises the plea of invalidity, the trial court must first determine whether that plea is prima facie tenable and frame an issue accordingly. Only after this step can the party approach the High Court for rectification.

Justice Hakhim quoted the full text of Section 124 and examined its procedural structure. He explained that the provision contemplates two situations—

(1) when a rectification petition is already pending before the High Court or Registrar at the time the infringement suit is filed, and

(2) when no such petition is pending and the plea of invalidity is raised in the infringement suit.

In the latter case, the party must obtain the trial court’s satisfaction that the invalidity plea is prima facie tenable; only then can they approach the High Court within three months. Failing to do so results in deemed abandonment of that plea.

The Court relied heavily on the Supreme Court’s landmark judgment in Patel Field Marshal Agencies v. P.M. Diesels Ltd. [(2018) 2 SCC 112], which held that when an infringement suit is pending, any challenge to trademark validity must first be raised and endorsed by the trial court before being referred for rectification. Otherwise, the rectification proceedings are not maintainable.

Justice Hakhim reiterated that this statutory mechanism prevents misuse of rectification petitions as delay tactics and ensures coherence between civil proceedings and statutory rectification actions. He emphasized that the legislative intent was to avoid multiple parallel proceedings and conflicting outcomes, reinforcing that the rectification forum acquires jurisdiction only after the civil court’s prima facie satisfaction.

Since Pas Agro had not secured such a finding or issue framing from the Delhi District Court, its petition before the Kerala High Court was held premature and legally untenable.

Decision:  After analyzing both jurisdictional and procedural grounds, the Kerala High Court held that the Special Jurisdiction Case filed by Pas Agro Foods was not maintainable.

The Court reasoned that (1) only the Delhi High Court, having appellate control over the Delhi Trade Marks Registry, could entertain a rectification petition concerning the “INDIA GATE” mark, and (2) the petition was premature as no issue of invalidity had yet been framed under Section 124(1)(ii) of the Trade Marks Act in the ongoing infringement suit before the Delhi District Court. Consequently, I.A. No. 2 of 2025 filed by KRBL was allowed, and SP.JC No. 2 of 2025 was dismissed as not maintainable.

Case Title: Pas Agro Foods Vs. KRBL Limited & Ors.

Case Number: SP.JC No. 2 of 2025 

Neutral Citation: 2025:KER:79840

Date of Judgment: 27 October 2025

Court: High Court of Kerala at Ernakulam

Hon’ble Judge: Justice M.A. Abdul Hakhim

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

Novenco Building and Industry Vs Xero Energy Engineering Solutions Pvt. Ltd

Urgent Interim Relief in IP Disputes and Section 12A of the Commercial Courts Act 2015

Facts: The appellant, Novenco Building and Industry is a Danish company involved in manufacturing high-efficiency industrial fans sold under the brand Novenco ZerAx. Between 2007 and 2015, the company invested approximately 3.66 million euros to develop this technology, securing patents and design registrations in India and other countries. To market its products in India, it entered into a dealership agreement on 1 September 2017 with Xero Energy Engineering Solutions Pvt. Ltd., a company based in Hyderabad.

According to Novenco, Xero Energy’s Director later breached the agreement by forming a separate company named Aeronaut Fans Industry Pvt. Ltd. (respondent no. 2), which began producing and selling identical fans under a deceptively similar name and appearance. The appellant discovered this in July 2022 and sent several communications to Xero Energy in August and October of that year, but received no explanation. As a result, Novenco terminated the dealership on 14 October 2022 and issued a cease-and-desist notice on 23 December 2022 to Aeronaut Fans, who replied in February and March 2023.

In December 2023, Novenco’s technical expert inspected fans installed by Aeronaut Fans at Cavendish Industries and Hero MotoCorp in Uttarakhand and confirmed infringement. After obtaining patent and design certificates between March and May 2024, Novenco filed a commercial suit (COMS No. 13 of 2024) before the Himachal Pradesh High Court on 4 June 2024, alleging infringement and seeking an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC). It also sought exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

Procedural Background: The respondents filed applications under Order VII Rules 10 and 11 of the CPC for return and rejection of the plaint, claiming that the suit was not maintainable for non-compliance with Section 12A of the Commercial Courts Act, which requires mandatory pre-institution mediation unless the suit “contemplates any urgent interim relief.” They argued there was no real urgency because Novenco had waited over six months after the inspection before filing the suit.

The learned Single Judge of the High Court rejected the plea for return of the plaint but accepted the objection regarding non-compliance with Section 12A. The Judge noted that since Novenco had known of the alleged infringement since December 2022, there was ample time to initiate mediation. The court held that the plaintiff’s claim of urgency was unsubstantiated and that the request for exemption was a mere formality. Therefore, the plaint was rejected under Order VII Rule 11 of CPC.

Novenco appealed, but the Division Bench of the Himachal Pradesh High Court affirmed the decision on 13 November 2024, holding that the plaintiff’s delay undermined any claim of urgency. It observed that continuous infringement of intellectual property rights did not automatically make a case urgent or exempt from mediation under Section 12A. However, it clarified that the rejection of the plaint would not bar the plaintiff from refiling the suit after following mediation.

Novenco then approached the Supreme Court of India. On 7 February 2025, while entertaining the Special Leave Petition, the Supreme Court directed Novenco to approach the mediation centre of the Himachal Pradesh High Court. Mediation was attempted but failed on 23 June 2025. The matter then returned to the Supreme Court for final adjudication.

Core Dispute: The central issue before the Supreme Court was the interpretation of the phrase “contemplates any urgent interim relief” in Section 12A of the Commercial Courts Act, 2015, particularly in the context of intellectual property rights (IPR) disputes. The Court had to decide whether Novenco’s suit—alleging ongoing infringement of its patents and designs and seeking injunction—could be considered as contemplating “urgent interim relief” and therefore exempt from the mandatory requirement of pre-institution mediation.

Arguments:  For the Appellant (Novenco): It was argued that both the Single Judge and the Division Bench misapplied the legal test under Section 12A. The appellant contended that the urgent interim relief was genuinely sought to stop continuing infringement and was not a device to avoid mediation. It emphasized that each act of infringement constituted a fresh cause of action and caused irreparable harm. Delay in filing the suit, it argued, did not negate urgency when the infringement continued to occur. The appellant relied on Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2004) 3 SCC 90, where the Supreme Court held that delay in bringing an action cannot legalize infringement, and Yamini Manohar v. T.K.D. Keerthi (2024) 5 SCC 815, which recognized that the need for urgent interim relief must be assessed from the plaintiff’s standpoint.

For the Respondents (Xero Energy & Aeronaut Fans):The respondents argued that there was no actual urgency as the appellant had known of the alleged infringement since 2022 but filed the suit only in June 2024—after 18 months. They maintained that filing for interim relief did not automatically mean the case was urgent. Section 12A was mandatory, and the appellant could not bypass mediation merely by including a formal prayer for injunction. They relied on the principle that compliance with Section 12A is essential unless genuine urgency is demonstrated.

Judicial Reasoning: The Supreme Court began by reviewing Section 12A of the Commercial Courts Act, which mandates pre-institution mediation for all commercial disputes unless the suit “contemplates any urgent interim relief.” The Court explained that this provision aims to encourage mediation as a first step, so that courts are approached only when necessary.

Referring to Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. (2022) 10 SCC 1, the Court reaffirmed that Section 12A is mandatory and non-compliance renders the plaint defective. However, it also examined Yamini Manohar (supra) and Dhanbad Fuels Pvt. Ltd. v. Union of India (2025 SCC OnLine SC 1129), where it was clarified that courts must examine whether urgent interim relief was genuinely contemplated from the plaintiff’s perspective—not whether such relief would ultimately be granted.

Applying these principles, the Court observed that intellectual property cases stand on a distinct footing. Infringement of patents and designs is typically a continuing wrong, meaning every instance of unauthorized manufacture or sale constitutes a fresh cause of action. The Court held that urgency in such cases does not depend on the time elapsed since discovery of infringement but on the persistence of the wrongful act and the ongoing harm to proprietary and public interests.

The Bench emphasized that intellectual property disputes often involve public interest because continued imitation can deceive consumers and erode faith in the marketplace. Thus, stopping such infringement serves not only the proprietor’s rights but also public confidence. The Court explained that “urgency lies not in the age of the cause, but in the persistence of the peril.”

The Court criticized the High Court’s narrow reading of Section 12A, stating that both the Single Judge and the Division Bench erred by focusing on the time gap instead of the nature of harm. They assessed the merits of the relief rather than the urgency itself. The Supreme Court clarified that the role of the court under Section 12A is not to decide the strength of the case but to determine whether, from the plaintiff’s viewpoint, there is a real need for interim intervention.

The Court noted that insisting on mediation during ongoing infringement would unfairly allow the infringer to continue profiting while the rights-holder remains helpless. Section 12A was never meant to produce such an unjust consequence. In the present case, since the appellant had specifically sought injunctive relief to prevent continuing harm and had filed supporting evidence of infringement, the requirement of urgency was clearly satisfied.

Decision:  The Supreme Court held that in cases involving ongoing infringement of intellectual property rights, the test of urgency must consider the continuous nature of the wrong and the accompanying public interest. Mere delay in filing the suit does not eliminate urgency if infringement persists.

Accordingly, the Court set aside the orders of the Single Judge (dated 28 August 2024) and the Division Bench (dated 13 November 2024) of the Himachal Pradesh High Court. The Court restored Commercial Suit No. 13 of 2024 to the High Court’s file and directed that the matter be heard on merits in accordance with law.The appeal was allowed.

Law Settled:  The judgment establishes that:

1. In intellectual property infringement cases, urgency can be inherent in the continuing nature of the violation.

2. Courts must evaluate urgency from the plaintiff’s standpoint, not merely based on elapsed time.

3. Pre-institution mediation under Section 12A of the Commercial Courts Act is not mandatory when the plaint and documents reveal a genuine need for urgent interim relief.

4. Delay alone cannot negate urgency where the harm is ongoing and irreparable.

5. Public interest in preventing deception strengthens the case for immediate judicial intervention.

Case Title: Novenco Building and Industry Vs Xero Energy Engineering Solutions Pvt. Ltd. & Anr.

Case Number:SLP (C) No. 2753 of 2025

Neutral Citation: 2025 INSC 1256

Date of Judgment: October 27, 2025

Court: Supreme Court of India, Civil Appellate Jurisdiction

Coram: Hon’ble Mr. Justice Sanjay Kumar and Hon’ble Mr. Justice Alok Aradhe

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

Jaquar and Company Private Limited Vs. Ashirvad Pipes Private Limited

Decoding Trademark Deceptive Similarity

Facts:  The plaintiff, Jaquar and Company Private Limited, a well-known manufacturer of bathroom and sanitary fittings, owns several registered trademarks, including ARTIZE, ARTIZE – Born from Art, and TIAARA. These marks are used for luxury sanitary ware and bath fittings since 2008 and 2016, respectively. The plaintiff claimed its ARTIZE brand had gained significant goodwill and had even attained the status of a “well-known trademark” under Section 2(1)(zg) of the Trade Marks Act, 1999. The plaintiff also uses a distinctive blue and gold trade dress across its packaging, which has become associated with its premium product line.

The defendant, Ashirvad Pipes Private Limited, is engaged in manufacturing pipes, sanitary ware, and bathroom fittings. The plaintiff discovered that the defendant had launched products under the marks ARTISTRY and TIARA, both as word marks and device marks. These marks, according to the plaintiff, were deceptively similar to its ARTIZE and TIAARA marks. The defendant’s advertisement in the November 2022 edition of Casa Vogue magazine revealed use of these impugned marks.

The plaintiff alleged that the defendant’s adoption was dishonest and intended to mislead consumers into associating its products with Jaquar’s high-end ARTIZE range. It further alleged that both the marks operated in the same market segment, through the same distribution channels, and targeted the same class of consumers. The plaintiff filed rectification petitions under Section 57 of the Trade Marks Act challenging the validity of the defendant’s registrations.

Procedural Background

Procedural Background: Jaquar filed a commercial suit under Section 134 of the Trade Marks Act, 1999 and the Commercial Courts Act, 2015, seeking a permanent injunction against Ashirvad Pipes from using the marks ARTISTRY and TIARA. Alongside the suit, Jaquar filed an interlocutory application (I.A. 18638/2023) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking an interim injunction.

Core Dispute:  The key dispute was whether the defendant’s use of ARTISTRY and TIARA infringed Jaquar’s registered marks ARTIZE and TIAARA under Section 29 of the Trade Marks Act, 1999. Additionally, the Court examined whether an action for infringement could lie against another registered proprietor and whether Jaquar could claim exclusivity over the prefix “ART”.  The issues also included whether the defendant’s packaging amounted to trade dress imitation, whether the defendant acted in bad faith, and whether the balance of convenience favored the grant of interim injunction.

Detailed Judicial Reasoning: On deceptive similarity, the Court invoked the classic Pianotist Test (Pianotist Co.’s Application, (1906) 23 RPC 774) emphasizing how an average consumer perceives the marks as a whole, considering their look, sound, and impression. The judge also relied on Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd. (2015) 221 DLT 359 to hold that “initial interest confusion” is sufficient to establish infringement. If a consumer, on first glance, wonders if the two marks are connected, that is enough to trigger protection.

Comparing ARTIZE and ARTISTRY, the Court found them visually and phonetically similar. The same reasoning applied to TIAARA and TIARA, which differed only by an additional letter “A” but had the same pronunciation and overall impression. Since both sets of marks were used for identical goods—bathroom and sanitary fittings—the likelihood of confusion was high.

The judge dismissed the defendant’s argument that the prefix “ART” was common to trade or descriptive of artistic products. It was held that while “ART” is a generic term, the mark ARTIZE as a whole had acquired distinctiveness through prolonged and exclusive use since 2008. The Court clarified that Jaquar was not seeking monopoly over the prefix “ART” but protection for its full marks ARTIZE and TIAARA vis-à-vis the defendant’s deceptively similar marks.

The defendant’s contention that TIARA was merely a product model number was rejected. The Court referred to invoices and advertisements to hold that the mark was indeed used as a source identifier—hence a trademark under Section 2(zb).

Regarding the argument of estoppel, the Court cited Raman Kwatra v. KEI Industries (2023) 296 DLT 529 (DB), explaining that estoppel applies only when a party contradicts a previous position taken before the Trademark Registry on the same mark. Since the defendant’s ARTISTRY and TIARA marks had never been cited against Jaquar’s applications, the estoppel argument failed.

On the principle of “bad faith adoption,” the Court referred to McCarthy on Trademarks and emphasized that when a party, with full knowledge of a senior mark, chooses a deceptively similar one, bad faith can be presumed. The defendant’s decision to use ARTISTRY despite knowing of ARTIZE and to use the same blue-gold trade dress indicated an intent to ride on Jaquar’s reputation.

The Court further analyzed Raj Kumar Prasad and S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, concluding that the latter did not dilute the former’s ratio permitting injunctions even between registered proprietors. It emphasized that interim protection under Section 124(5) could be granted pending rectification.

Finally, the Court cited Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2004) 3 SCC 90 to hold that once infringement is established, injunction must ordinarily follow, as delay or balance of convenience cannot defeat statutory protection.

Decision: The court held that Jaquar had established a prima facie case of infringement and passing off. The Court granted an interim injunction restraining Ashirvad Pipes and its agents from using the marks ARTISTRY, TIARA, or any other deceptively similar marks, logos, or trade dress, pending disposal of the suit. The defendant was directed to remove all infringing materials from physical and online platforms, including e-commerce sites and social media.The Court concluded that copying, per se, is not illegal, but copying that causes consumer confusion or dilutes a registered mark is actionable. Since Jaquar’s rights under Section 28(1) would be continuously violated if injunction were denied, the balance of convenience and irreparable harm both favored the plaintiff.  Thus, I.A. 18638/2023 was allowed, and the defendant was restrained from using ARTISTRY and TIARA until final adjudication.

Case Title: Jaquar and Company Private Limited Vs. Ashirvad Pipes Private Limited

Case Number: CS(COMM) 670/2023

Neutral Citation: 2024:DHC:2510

Court: High Court of Delhi at New Delhi

Date of Judgment: April 1, 2024

Coram: Hon’ble Mr. Justice C. Hari Shankar

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

Chaitanya Arora Vs. Shoban Salim Thakur

Suppression of Facts and Abuse of Process in Trademark Litigation

Facts:  The plaintiff, Chaitanya Arora, was the proprietor of the mark “DOCTOR EXTRA SOFT”, used for footwear products under Class 25 of the Trade Marks Act, 1999. The plaintiff claimed ownership of the trademark and alleged that the defendants—led by Shoban Salim Thakur, who owned Family Footwear—were using a deceptively similar mark and selling identical goods, thereby infringing the plaintiff’s rights.

On 30th June 2025, the Court had granted an ex parte ad interim injunction, restraining the defendants from using the impugned trademark. Later, the defendants challenged this order under Order XXXIX Rule 4 of the Code of Civil Procedure, seeking to vacate the injunction on the ground that it had been obtained through suppression of material facts.

Procedural Background:  The plaintiff initially approached the Bombay High Court seeking urgent interim relief against the defendants without giving them prior notice. The Court, relying on the plaintiff’s representation and supporting documents, issued an ex parte injunction.

However, the defendants subsequently filed an application under Order XXXIX Rule 4 CPC, asserting that the plaintiff had misled the Court by hiding crucial information—especially a territorial limitation/disclaimer attached to the plaintiff’s trademark registration in Class 25, which confined its protection only to the State of Maharashtra.

The defendants also produced material showing that their business was significantly harmed due to the injunction and that the plaintiff’s conduct amounted to misleading the Court.

Core Dispute: The central question before the Court was whether the plaintiff had suppressed material facts in obtaining the ex parte injunction and whether such suppression justified setting aside the order and dismissing the entire suit.

Specifically, the dispute revolved around: Whether the plaintiff’s Class 25 registration, limited to Maharashtra, could form the basis for pan-India relief? Whether failure to disclose this limitation amounted to deliberate suppression. Whether suppression of this nature vitiated the plaintiff’s entire case and warranted exemplary costs.

Detailed Reasoning and Judicial Analysis: Court examined the record in detail and noted several serious inconsistencies in the plaintiff’s conduct.

First, it was undisputed that the plaintiff’s registration in Class 25 for footwear contained a specific territorial limitation restricting the mark’s validity to Maharashtra. Despite this, the plaintiff had filed a pan-India suit seeking to restrain the defendants in Delhi and other states. This, the Court held, was a deliberate act of suppression.

The Judge found that the plaintiff’s omission was not “inadvertent.” The plaint had lengthy paragraphs discussing various registrations, oppositions, and proceedings in Class 25, yet the most crucial element—the territorial restriction—was missing. The Court concluded that no genuine mistake could explain the omission of such a vital fact.

The Court emphasized that any party seeking ex parte ad interim relief must make full and fair disclosure of all relevant facts. This duty is higher when the opposing party is not present. Justice Doctor relied on the principle that a litigant must “come to court with clean hands” and cited several leading precedents to reinforce this duty:

Prestige Lights Ltd. v. State Bank of India (2007) 8 SCC 449 — Held that suppression of material facts is sufficient to reject relief.

Bhaskar Laxman Jadhav v. Karamveer Kakasaheb Wagh Education Society (2013) 11 SCC 531 — Reiterated that full disclosure is a mandatory obligation.

Ramjas Foundation v. Union of India (2010 SCC OnLine SC 1254) — Stated that courts must protect themselves from unscrupulous litigants who pollute the stream of justice.

Kewal Ashokbhai Vasoya v. Surabhakti Goods Pvt. Ltd. (2022 SCC OnLine Bom 3335) — Clarified that ex parte injunctions require complete and fair disclosure of all material information.

PhonePe Pvt. Ltd. v. Resilient Innovations Pvt. Ltd. (2023 SCC OnLine Bom 764) — Established that statements made during trade mark registration can be relevant in later proceedings.

Om Prakash Gupta v. Praveen Kumar (Delhi High Court, 2025) — Held that disclaimers are material facts which must be disclosed when seeking injunctions.

Applying these precedents, Justice Doctor concluded that the plaintiff had taken an inconsistent and dishonest stand. Before the Trade Marks Registry, the plaintiff had expressly stated that it did not claim exclusivity over the words “DOCTOR” or “SOFT”, but in the present suit, it claimed infringement based on those very words. This contradiction was seen as an attempt to mislead the Court.

The Judge held that it was not for the plaintiff to decide what was “material” and what was not. The duty of candor required full transparency, especially when the plaintiff sought relief without notice to the other side.

Court also noted that the plaintiff’s act of filing a rejoinder later—claiming the omission was “inadvertent”—only made matters worse. Such an afterthought, the Court said, was “an affront to the Court” and amounted to putting a premium on dishonesty.

On Costs and Judicial Duty:The Court referred to Section 35 of the Code of Civil Procedure, as amended by Section 16 of the Commercial Courts Act, 2015, which authorizes courts to impose costs, including legal fees, based on the conduct of the parties.

Relying on Sai Trading Co. v. KRBL Ltd. and Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd., Justice Doctor emphasized that unscrupulous litigants who misuse the judicial process waste valuable court time and must face exemplary costs to deter such practices.

The Court quoted from Dnyandeo Sabaji Naik v. Pradnya Prakash Khadekar (2017) 5 SCC 496, where the Supreme Court directed that litigants abusing court procedures should be penalized heavily to prevent a culture of evasion and dishonesty in litigation.

Final Decision: After detailed analysis, Justice Arif S. Doctor held that the plaintiff had:

Deliberately suppressed material facts regarding the territorial limitation of its trademark.

Misled the Court by seeking ex parte relief on false premises.

Abused the process of law by not acting with clean hands.

Accordingly, the Court dismissed the entire suit and imposed exemplary costs of ₹25,00,000 each on Defendants 2 and 3, payable by the plaintiff. The Court Receiver was discharged, and all seized goods were ordered to be returned to the defendants. All interim applications and reports were disposed of.

Conclusion: This judgment serves as a strong reminder that intellectual property rights are not absolute, and equitable conduct is paramount. Even a registered proprietor cannot claim relief if it approaches the Court dishonestly or conceals material facts. The judgment reinforces that truth and transparency are the foundation of justice, and litigants who attempt to manipulate the system will face severe consequences.

Case Title: Chaitanya Arora Vs. Shoban Salim Thakur

Order Date: 15th October, 2025

Case Number: Interim Application (L) No. 18278 of 2025 in Commercial Suit (L) No. 18197 of 2025 with Leave Petition (L) No. 18257 of 2025

Neutral Citation: 2025:BHC-OS:19616

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

Judge: Hon’ble Justice Arif S. Doctor

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 (India) Pvt. Ltd.

Case Title: Hindustan Unilever Limited Vs. Reckitt Benckiser (India) Pvt. Ltd. and The Advertising Standards Council of India

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

Neutral Citation: 2025:MHC:25605

Court: High Court of Judicature at Madras

Date of Order: Pronounced on 7 October 2025 (Reserved on 18 July 2025)

Coram: Hon’ble Mr. Justice K. Kumaresh Babu

Facts of the Case

The dispute arises between two of India’s leading fast-moving consumer goods (FMCG) giants — Hindustan Unilever Limited (HUL) and Reckitt Benckiser (India) Pvt. Ltd. (RB) — regarding the content and jurisdictional implications of certain advertisements. HUL, represented by its power agent Vidya Chandrasekar, filed an application to revoke the leave earlier granted to Reckitt Benckiser to institute a civil suit before the Madras High Court.

Reckitt Benckiser had initially approached the High Court challenging an order passed by the Advertising Standards Council of India (ASCI), which had found certain advertisements of Reckitt to be misleading, particularly concerning claims of “12-hour protection” and “protective shield.” ASCI’s decision stemmed from a complaint made by HUL against Reckitt’s advertisements, notably the “Lift Advertisement” and “Hands Advertisement”, both aired in Hindi.

HUL contended that since the complaint, the ASCI order, and related events occurred in Mumbai, the Madras High Court lacked territorial jurisdiction. Reckitt, however, maintained that the advertisements were broadcast nationwide, including in Tamil Nadu in Tamil and English versions, thereby giving rise to part of the cause of action within the Madras High Court’s jurisdiction.

Procedural Details

This case emerged from an application — A. No. 3024 of 2025 — filed by HUL seeking revocation of the leave granted on 16 June 2025 in A. No. 2655 of 2025, which had permitted Reckitt Benckiser to institute its main suit (C.S. No. 132 of 2025) before the Madras High Court.

The application for revocation was argued by Mr. Madhan Babu for HUL, while Mr. P.S. Raman, Senior Counsel, represented Reckitt Benckiser. The ASCI was represented by Advocate Mr. Avni Singh.

The central procedural question was whether the Madras High Court was the correct and convenient forum under Clause 12 of the Letters Patent Act, which allows a court to exercise jurisdiction if any part of the cause of action arises within its territorial boundaries.

Nature of Dispute

The heart of the dispute revolved around territorial jurisdiction and the doctrine of forum conveniens. HUL argued that no material event occurred within the territorial jurisdiction of the Madras High Court, since the ASCI’s order was passed in Mumbai, based on expert reports from Mumbai, and that both HUL and ASCI were based in Mumbai while Reckitt’s registered office was in Gurugram, Haryana.

HUL contended that the advertisements in question — the “Lift” and “Hands” advertisements — were in Hindi and were not telecast within Tamil Nadu. Therefore, the claim that any part of the cause of action arose in Chennai was unfounded. It relied upon several precedents, notably:

Madanlal Jalan v. Madanlal and Others, AIR 1949 Cal 495, which held that the question of granting leave under Clause 12 must be based on whether any substantial part of the cause of action arose within the court’s jurisdiction, and that the court must also consider convenience of parties (forum conveniens).

M/s. Duro Flex Pvt. Ltd. v. M/s. Duroflex Sittings System 150 and Another, (2014) 5 LW 673, where the Madras High Court’s Full Bench held that mere registration of a trademark in Chennai does not confer jurisdiction unless other substantive facts occur within its territory.

Ahmed Abdulla Ahmed Al Ghurair v. Star Health & Allied Insurance Co. Ltd., (2019) 13 SCC 259, where the Supreme Court emphasized that grant of leave under Clause 12 is discretionary and must consider the principle of forum conveniens to avoid harassment and forum shopping.

HUL therefore asserted that the balance of convenience lay in favor of Mumbai or Gurugram courts, as all material witnesses, records, and corporate offices were located there.

Reckitt, represented by Senior Counsel P.S. Raman, argued that the cause of action could not be narrowly confined to the place where the complaint was filed or order passed. Reckitt maintained that its advertisements were broadcast not only in Hindi but also in Tamil and English across multiple states, including Tamil Nadu. Therefore, the order of ASCI — which directed modification and withdrawal of the “12-hour protection” claim — affected Reckitt’s right to advertise in all languages and regions, including Tamil Nadu.

Detailed Reasoning of the Court

Justice K. Kumaresh Babu carefully analyzed the rival contentions, the jurisdictional principles under Clause 12 of the Letters Patent Act, and the doctrine of forum conveniens.

The Court began by recalling that leave to institute a suit under Clause 12 can be granted when even a part of the cause of action arises within the territorial jurisdiction of the Court. The “cause of action” was described as the entire bundle of essential facts which, if traversed, must be proved by the plaintiff to sustain a legal action.

The Court noted that the ASCI order was based on advertisements which, though in Hindi, concerned the general marketing claim of “12-hour protection” applicable across languages and markets. Therefore, the ASCI’s directive to modify or withdraw such claims was not language-specific but applied to all regional versions of Reckitt’s advertisements, including those in Tamil and English.

Justice Babu found merit in Reckitt’s argument that similar advertisements in Tamil and English were telecast within Tamil Nadu, thereby establishing a partial cause of action within the Madras High Court’s jurisdiction.

Citing the Division Bench’s decision in O.S.A. Nos. 242 & 243 of 2023, the Court reiterated that when a portion of the cause of action arises within its territorial limits, the Madras High Court is competent to exercise jurisdiction even if the principal offices of the parties are located outside its territory.

The Court further observed that the ASCI’s order impinged on Reckitt’s right to advertise nationwide, including within Tamil Nadu. Consequently, the alleged restriction imposed by ASCI had a direct impact within the territorial jurisdiction of this Court.

Addressing the doctrine of forum conveniens, Justice Babu held that while convenience is an important factor, it cannot override the legal determination that a part of the cause of action had arisen within Chennai. Since the advertisements were telecast and viewed in Chennai, the plaintiff’s right to advertise and the resultant grievance both existed within this jurisdiction.

The Court distinguished the precedents relied upon by HUL, noting that in those cases no act or consequence of the impugned action occurred within the forum’s territory. Here, however, the advertisements in question were broadcast across Tamil Nadu, making the effect of the ASCI’s order tangible within the jurisdiction of this Court.

In essence, the Court concluded that Reckitt’s grievance was not limited to events in Mumbai or Gurugram but extended to its inability to air its advertisements within Tamil Nadu due to the ASCI order. Hence, the Madras High Court was competent to hear the case.

Judgment and Decision

After considering all arguments and precedents, the Madras High Court held that part of the cause of action indeed arose within its jurisdiction, since the advertisements subject to the ASCI order were telecast within Tamil Nadu in Tamil and English. Consequently, the order of ASCI had direct implications for Reckitt’s commercial and constitutional rights within the State.

The Court therefore dismissed HUL’s application (A. No. 3024 of 2025) seeking revocation of leave earlier granted to Reckitt Benckiser to institute its suit under Clause 12 of the Letters Patent.

Justice K. Kumaresh Babu concluded that the leave granted on 16 June 2025 was valid and properly exercised. The application for revocation was found meritless, and no costs were awarded.

Conclusion

This decision clarifies that in advertising and intellectual property disputes involving nationwide marketing, part of the cause of action arises wherever the advertisement is viewed or has an effect. The Court reaffirmed that jurisdiction is not confined to the site of corporate offices or regulatory orders but extends to any place where the impugned activity or its impact occurs.

The ruling also reiterates that the principle of forum conveniens cannot override the statutory right of a plaintiff to file a case where even a part of the cause of action exists. This ensures that corporations engaged in nationwide marketing cannot evade accountability merely by locating their headquarters outside the jurisdiction.

The Madras High Court thus upheld the balance between practical convenience and the need to ensure accessibility of justice, especially in disputes that span multiple states and linguistic markets.

Suggested Titles for Publication

Jurisdiction Beyond Boundaries: The Madras High Court’s Pragmatic Approach in the HUL–Reckitt Advertising Dispute

Advertising, Jurisdiction, and Forum Conveniens: A Simplified Analysis of HUL v. Reckitt Benckiser

Where Does an Advertisement “Exist”? Understanding Territorial Jurisdiction in the Digital Age

The Madras High Court on Clause 12 and the Reach of Cause of Action in Nationwide Advertising

When Hindi Meets Tamil: Jurisdictional Reasoning in the HUL–Reckitt Advertising Controversy

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

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