Swapan Dey Vs. Competition Commission of India

Patents Act Versus Competition Act

Fact:The appellant, Mr. Swapan Dey, is a hospital CEO providing free dialysis services under the Pradhan Mantri National Dialysis Programme, who approached the Competition Commission of India alleging anti-competitive conduct by Vifor International AG concerning Ferric Carboxymaltose (FCM) injection used to treat iron deficiency anaemia common in dialysis patients and vulnerable populations, asserting that Vifor’s licensing and market practices made FCM inaccessible and unaffordable in India. 

Vifor, a Swiss company, held an Indian patent on the FCM molecule granted on 25.06.2008, which expired on 21.10.2023, and the company had entered into licensing arrangements with Indian pharmaceutical companies including Emcure Pharmaceuticals (manufacturing) and Lupin Ltd. (import and distribution), with the appellant alleging limited production, control, and discriminatory pricing. The appellant claimed contraventions under Sections 3 and 4 of the Competition Act, 2002 on the basis that Vifor’s arrangements and conduct restricted supply, involved abuse of dominance, and discriminated on pricing between public procurement and private markets, thereby harming patients’ access to essential therapy. 

Procedural Detail:The appellant filed information before the Competition Commission of India on 12.01.2022 in Case No. 05 of 2022 alleging violations under Sections 3 and 4 of the Competition Act by Vifor, which the CCI closed at the prima facie stage by order dated 25.10.2022 under Section 26(2) of the Act, concluding that there was no requirement to define a precise relevant market or assess dominance, and finding no prima facie contravention. 

The CCI’s order reasoned that Vifor’s limited-term licences with Emcure and Lupin contained reasonable IP-protective conditions, did not foreclose competition, did not restrict inter se competition between licensees, and did not indicate long-term exclusionary effects; it also observed patent expiry in 2023 would open the market, and that price differentiation between public bulk procurement and private retail could be benign. Aggrieved, the appellant filed the present appeal under Section 53B of the Competition Act before the NCLAT, where CCI supported its jurisdiction and merits closure with reference to Delhi High Court’s Monsanto 2020 single judge decision, while Vifor challenged maintainability, asserted lack of CCI jurisdiction due to the Patents Act being a special code, and pointed out patent expiry and alleged forum shopping by the appellant. 

Dispute:The core dispute was whether the Competition Commission of India had the power to inquire into and decide allegations of anti-competitive agreements and abuse of dominance relating to licensing and supply of a patented drug, when the conduct arose in the exercise of statutory rights under the Patents Act. The connected issue was whether, even if the CCI had jurisdiction, the impugned order closing the case at the prima facie stage for want of contravention required interference in appeal, in light of the licensing terms, market structure, alleged price discrimination, and patent expiry changing market dynamics. Finally, the tribunal had to consider the effect of the Delhi High Court Division Bench decision in Telefonaktiebolaget LM Ericsson PUBL v. CCI, 2023 SCC OnLine Del 4078, and the Supreme Court’s subsequent disposal of CCI’s SLP on 02.09.2025, on the jurisdictional relationship between the Competition Act and the Patents Act. 

Detailed Reasoning:The tribunal began by recording that the CCI had examined the matter within its statutory confines and closed it at the threshold under Section 26(2), having found no prima facie contravention of Sections 3 and 4, particularly in view of licensing agreements’ nature, absence of long-term foreclosure, inter se competition, and impending patent expiry in 2023, as reflected in the CCI’s reasons at paragraphs 65 to 79 of its order. The CCI’s analysis highlighted that Vifor’s licences with Emcure and Lupin were time-bound, did not include unilateral anti-competitive restraints on pricing or competition between licensees, and did not block entry by other potential producers of soluble iron injectables, with the Commission observing that not all price differentiation is discriminatory, especially when justified by bulk procurement or public purpose considerations. 

The tribunal noted the appellant’s criticism that the CCI failed to define a precise relevant market or assess dominance, and that it adopted an ex-ante lens instead of ex-post assessment under Section 3 and 4; however, the tribunal emphasized that the decisive issue in this appeal was jurisdictional primacy when alleged conduct arises from exercise of patent rights under the Patents Act. In this regard, the tribunal recorded CCI’s reference to the Delhi High Court’s decision in Monsanto Holdings Pvt. Ltd. v. CCI (W.P.(C) 1776/2016, decision dated 20.05.2020) to contend that Section 3(5) of the Competition Act does not oust CCI’s jurisdiction merely because IP is involved, but also noted that the Division Bench of the Delhi High Court in Telefonaktiebolaget LM Ericsson PUBL v. CCI, 2023 SCC OnLine Del 4078 (in LPA 247/2016 and connected matters) later reversed the Monsanto single judge view and held that, for issues concerning exercise of patent rights, the Patents Act is a special and subsequent code that prevails over the Competition Act. 

Relying on Ericsson, the tribunal reproduced and adopted the Division Bench’s reasoning that the inquiry proposed by CCI in respect of licensing terms and alleged abuse by a patentee is nearly identical to the inquiry contemplated under Chapter XVI of the Patents Act concerning compulsory licences and related reliefs, and that unreasonable licensing conditions, abuse of patentee status, and the remedial framework are a complete code under the Patents Act. The Division Bench reasoned that, applying generalia specialibus non derogant and lex posterior derogat priori, the Patents Act as the special and later legislation must prevail over the general competition law where the subject matter is anti-competitive agreements or abuse by a patentee in the exercise of patent rights, with Section 3(5) of the Competition Act further indicating legislative intendment to preserve reasonable conditions for IP protection outside competition scrutiny. 

The tribunal then recorded the subsequent development that the CCI had filed SLP No. 25026 of 2023 against the Delhi High Court’s Ericsson decision, which the Supreme Court disposed of on 02.09.2025, declining to interfere in the peculiar facts, noting that the original informants had nothing further to say, and expressly keeping questions of law open for appropriate cases. Although the Supreme Court’s order kept questions of law open, the tribunal treated the Delhi High Court’s operative conclusions as binding guidance for present purposes, reading Ericsson to mean that CCI lacks power to proceed where the alleged conduct is integrally bound to the exercise of patent rights and the Patents Act provides the special mechanism for regulating unreasonable licensing conditions and market abuses by patentees.

Within that framework, the tribunal emphasized that Section 3(5) of the Competition Act preserves the right of a patentee to restrain infringement and to impose reasonable conditions necessary to protect patent rights, while Sections 83, 84, 88, 89, and 90 of the Patents Act collectively embody a policy balance between innovation incentives, access, affordability, and public interest, including compulsory licensing to address unmet reasonable requirements of the public, non-working, or unaffordable pricing. Vifor’s submissions invoking Section 83 and the compulsory licensing regime were noted to support the view that patent-related market questions, including supply sufficiency and reasonable pricing, are primarily addressed by the Patents Act’s dedicated apparatus. 

On facts, the tribunal recorded that Vifor’s patent expired on 21.10.2023, thus placing FCM into the public domain and making it available for free exploitation by interested parties across India, which materially diminished any continuing competition law concern premised on exclusive rights; it also noted that the CCI had already considered the limited-term nature of licences, absence of licensee foreclosure, and freedom to enter more licences. Further, the CCI had observed that pricing differences in public procurement versus private retail may be justified and that cross-country comparisons, such as Bangladesh prices, are an unreliable benchmark due to distinct tax, duty, and regulatory environments. 

In this statutory and factual setting, the tribunal concluded that, guided by the Delhi High Court’s Division Bench in Ericsson and the Supreme Court’s disposal of CCI’s challenge, the CCI lacks power to examine the present allegations against Vifor because the controversy stemmed from the exercise of patent rights over FCM at the relevant time, for which the Patents Act is a complete and special code. The tribunal therefore found no merit to interfere with the CCI’s closure of the matter and held that the Patents Act prevails over the Competition Act in the facts of this case, while also noting Section 3(5) of the Competition Act protects reasonable IP-related conditions. 

Judgment:The National Company Law Appellate Tribunal held that the Competition Commission of India lacks power to examine the allegations against Vifor International AG in this case because the subject matter concerns conduct by a patentee in the exercise of patent rights, an area governed by the Patents Act as a special and complete code, as clarified by the Delhi High Court Division Bench in Telefonaktiebolaget LM Ericsson PUBL v. CCI, 2023 SCC OnLine Del 4078. The tribunal noted the Supreme Court’s 02.09.2025 order disposing of the CCI’s SLP in Ericsson without interference and keeping questions of law open, but in the present facts applied the Delhi High Court’s guidance to hold that the Patents Act prevails and that CCI’s prima facie closure did not warrant interference, also taking into account the expiry of Vifor’s patent on 21.10.2023 and the CCI’s reasons that licensing terms did not show foreclosure or anti-competitive restraints and that price differentials in public procurement may be justified. 

Case Title: Mr. Swapan Dey Vs Competition Commission of India

Order Date: 30.10.2025  

Case Number: Competition Appeal (AT) No. 5 of 2023  

Name of Court: National Company Law Appellate Tribunal 

Name of Hon’ble Bench: Justice Yogesh Khanna and Mr. Ajai Das Mehrotra 

Decision:The appeal was dismissed with no order as to costs, and pending applications were closed, thereby affirming the CCI’s order dated 25.10.2022 closing the information under Section 26(2) of the Competition Act. 

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

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

R.C. Plasto Tanks and Pipes Pvt. Ltd. Vs. Ganesh Gouri Industries

Case Title: R.C. Plasto Tanks and Pipes Pvt. Ltd. Vs. Ganesh Gouri Industries & Anr.

Case Number: C.O. (COMM.IPD-CR) 868/2022 & I.As. 16726-16728/2022

Neutral Citation: 2023:DHC:—

Date of Decision: 20th February, 2023

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Justice Sanjeev Narula

---

Factual Background

The petitioner, R.C. Plasto Tanks and Pipes Pvt. Ltd., is a well-known manufacturer and supplier of water storage tanks, PVC pipes, and fittings under its registered trademark “PLASTO.” The company also holds artistic copyright registrations for its labels and designs. The respondent, Ganesh Gouri Industries, is engaged in a similar line of business involving water storage tanks and allied goods.

The dispute traces back to the year 2018 when the petitioner discovered that the respondent was selling water tanks under the mark “AQUA PLAST” accompanied by the tagline “NAAM HI GUARANTEE HAI.” The petitioner alleged that this mark and slogan were deceptively similar to its own registered mark “PLASTO” and its slogan “PLASTO HAI TO GUARANTEE HAI.” According to the petitioner, this amounted to infringement of trademark and copyright, as well as passing off.

This dispute initially led to a civil suit being filed by R.C. Plasto before the District and Sessions Judge, Nagpur, registered as Suit No. 3 of 2018. The parties subsequently reached an amicable settlement, which was recorded in the judgment dated 21st February 2019. The settlement was based on express undertakings and terms that became central to the present rectification petition.

Under the settlement, the respondent agreed not to use the mark “PLASTO” or any identical or deceptively similar mark, tagline, or trade dress. Specifically, the respondent undertook not to use the slogans “PLASTO HAI TO GUARANTEE HAI” or “NAAM HI GUARANTEE HAI,” and agreed to remove all infringing material from its products and marketing items. In return, the petitioner agreed not to object to any mark or logo of the respondent that included the word “PLAST,” provided it was not deceptively similar to the petitioner’s marks. Both parties thus agreed to maintain distinct trade identities.

However, in 2022, the petitioner discovered that the respondent had obtained copyright registration No. A-142047/2022 for an artistic label titled “Gauri Aqua Plast”. The petitioner alleged that this label used a blue background and white lettering similar to its own “PLASTO” logo and colour scheme. Viewing this as a breach of the earlier settlement and an act of copying, the petitioner filed the present petition under Section 50 of the Copyright Act, 1957 seeking removal of the impugned copyright from the Register of Copyrights.

---

Procedural History

The rectification petition was filed before the Delhi High Court’s Intellectual Property Division (IPD) under Section 50 of the Copyright Act, 1957. The respondent’s reply to the petition was delayed by 33 days, which was condoned by the Court upon sufficient cause being shown.

The petitioner’s argument primarily rested on three pillars: that the impugned registration was (i) in violation of the 2019 settlement terms, (ii) deceptively similar to the petitioner’s copyrighted artistic label, and (iii) dishonest and mala fide in nature. The respondent opposed the petition, arguing that its artwork was original, distinct, and in compliance with the settlement terms, and that the petitioner’s claim amounted to monopolizing generic elements such as colours and shapes.

---

Core Dispute

The legal question before the Court was whether the respondent’s copyright registration for the label “Gauri Aqua Plast” was liable to be cancelled under Section 50 of the Copyright Act, 1957, on the grounds that it was not original and constituted a substantial reproduction or colourable imitation of the petitioner’s artistic work.

The case also tested the limits of contractual undertakings in prior settlements and whether the use of common design elements like colour combinations and word stems (like “PLAST”) could amount to infringement or breach of settlement.

---

Arguments of the Petitioner

Counsel for the petitioner, Advocate Ajay Amitabh Suman, contended that the respondent’s impugned copyright was a clear violation of the 2019 settlement terms. It was argued that the respondent had expressly undertaken not to use any mark or slogan similar to “PLASTO HAI TO GUARANTEE HAI” or to imitate the petitioner’s blue-and-white colour scheme.

The petitioner argued that the impugned artwork “Gauri Aqua Plast” was substantially similar to its own “PLASTO” label, both in visual presentation and conceptual impression. The label used a blue background and white lettering identical to that of the petitioner, thereby creating confusion among consumers.

It was also submitted that the petitioner’s goodwill and reputation, developed over decades, were being unfairly exploited by the respondent. According to the petitioner, the adoption of the impugned label was not independent or bona fide but an act of bad faith aimed at riding on the petitioner’s established reputation.

The petitioner relied on Section 13(1)(a) and Section 50 of the Copyright Act, 1957, arguing that since originality is a prerequisite for copyright registration, any registration obtained through imitation or copying is liable to be cancelled. The petitioner further pointed out that the Delhi District Commercial Court, in CS (COMM) 545/2021, had already granted an injunction restraining the respondent from using similar trade dress and label, indicating prima facie infringement.

---

Arguments of the Respondent

The respondent, represented by Advocate Salim A. Inamdar, opposed the petition by asserting that its artwork was independently created and bore no resemblance to the petitioner’s label. It was argued that the petitioner was attempting to monopolize generic and functional elements such as the colour blue or the shape of the label, which are common in the plastic products industry.

The respondent emphasized that under the 2019 settlement, the petitioner had agreed not to object to the respondent’s use or registration of any mark that included the word “PLAST,” provided it was not deceptively similar. The respondent’s new label, it was argued, fully complied with this term as it used “Aqua Plast” with distinctive design features.

The impugned label contained a stylized “G” representing the company’s name “Gouri,” designed in the form of an “OK” hand gesture enclosing three waves, symbolizing water — a feature completely absent from the petitioner’s label. The respondent further pointed out that it used the tagline “NAAM HI KAAFI HAI” instead of “NAAM HI GUARANTEE HAI,” which indicated creativity rather than imitation.

Lastly, the respondent argued that copyright protection does not extend to ideas, colours, or common expressions but only to the original artistic arrangement. Hence, similarity in broad elements such as colour or shape could not justify cancellation of registration.

---

Judicial Reasoning and Analysis

Justice Sanjeev Narula commenced the analysis by examining the scope of Section 50 of the Copyright Act, 1957, which allows the High Court to order rectification of the Register of Copyrights if a registration has been “wrongly made” or if any entry has been made or remains on the Register “without sufficient cause.” The Court noted that to justify removal, the petitioner must establish either lack of originality in the respondent’s work or substantial reproduction of the petitioner’s existing copyrighted work.

The Court compared both the labels in question and observed that while both used the word “PLAST” and had blue and white colours, the overall artistic impression was different. The respondent’s label had distinct visual elements such as the stylized letter “G,” additional taglines, and differentiated fonts. The composition, artistic layout, and design collectively rendered it an original work capable of copyright protection.

The Court emphasized that copyright law protects expression and not mere ideas or functional aspects. A blue-and-white colour scheme or a rectangular label are common features in packaging and cannot form the exclusive property of one entity. Referring to the settled principle laid down in R.G. Anand v. Deluxe Films (AIR 1978 SC 1613), the Court reiterated that where the expression of ideas is substantially different, no case of infringement or copying arises.

Justice Narula also relied on the petitioner’s own settlement terms to underscore that the petitioner had explicitly agreed not to object to the respondent’s use of “Aqua Plast” so long as it was not deceptively similar. Since the impugned label bore clear differences in artistic features, font styles, and slogans, it did not violate the settlement agreement. The use of the word “PLAST” was held to be generic, derived from the word “plastic,” and not exclusively associated with the petitioner.

The Court concluded that the petitioner’s claim was primarily based on broad similarities that could not satisfy the legal test of substantial reproduction under copyright law. The mere use of the same colour background and general layout was insufficient to prove copying or breach of settlement.

---

Final Decision

The Delhi High Court dismissed the petition, holding that no ground was made out for removal of the impugned copyright under Section 50 of the Copyright Act, 1957. The Court observed that the respondent’s label was original and did not constitute a reproduction of the petitioner’s copyrighted work.

Justice Sanjeev Narula further held that the terms of the prior settlement had not been violated and that the petitioner was attempting to overextend its exclusive rights beyond reasonable limits. The Court imposed costs of ₹10,000 on the petitioner, payable to the Delhi State Legal Services Authority, and dismissed all pending applications.

---

Significance and Legal Insight

This case is significant as it clarifies the distinction between artistic similarity and copyright infringement in label design disputes. It reinforces the principle that copyright does not protect common design elements or colour combinations used widely across an industry. Moreover, it highlights the importance of honouring settlement terms and restricting legal action to clear cases of deception or bad faith.

The judgment also serves as a practical lesson for intellectual property owners: once a settlement allows limited use of certain terms or design elements, they cannot later object to such use merely on the basis of stylistic similarities.

---

Suggested Titles for Publication

1. Colour, Shape, and Settlement: Delhi High Court on the Limits of Copyright Protection

2. When Blue is Just a Colour: RC Plasto v. Ganesh Gouri and the Meaning of Originality

3. Copyright, Contract, and Commonality: A Study in Industrial Label Disputes

4. The Fine Line Between Inspiration and Infringement: Lessons from RC Plasto Case

5. Generic Words and Common Colours: Delhi High Court Redefines Copyright Boundaries in Label Art

---

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

Pradeep Bailey Vs Gilma Daniel

Additional documents at the stage of trial

Factual Background:The dispute between the petitioner, Mr. Pradeep Bailey, and the respondent, Ms. Gilma Daniel, arose from a long-standing family property conflict concerning ownership and possession of a shop measuring 8’x10’ located at property No. WZ-5A/31, Vishnu Garden, New Delhi. The petitioner, Mr. Bailey, claimed to be the rightful owner of the property by virtue of documents executed by his late mother in 2003, while the respondent, his sister, asserted ownership on the basis of a prior Will dated 17th November, 1994.

In 2021, Mr. Bailey filed a civil suit for recovery of possession, eviction, mesne profits, and injunction against the respondent, alleging that she had been permitted to reside in the property as a licensee but had later refused to vacate. The respondent, on the other hand, claimed that she was the true owner of the property under her mother’s 1994 Will, under which the mother had disinherited the petitioner due to his alleged misconduct and lack of filial care.

The dispute soon extended beyond mere ownership claims. Mr. Bailey, during the pendency of the trial, sought to introduce additional documents which, according to him, were vital to prove his ownership, occupation, and contribution to the family, including two subsequent Wills of 2000, house tax receipts, bills, professional certificates, and membership records.

Procedural Background:The civil suit was registered as Civil DJ No. 934/2021 before the District Judge, where the respondent filed her written statement in March 2022. Subsequently, Mr. Bailey filed a replication along with an application under Order VII Rule 14 read with Section 151 of the Code of Civil Procedure, 1908 (CPC), seeking permission to place additional documents on record.

The trial court, however, dismissed this application on 17th May, 2023. The trial judge held that the petitioner had failed to provide a satisfactory explanation for not filing the documents with the plaint or at least mentioning them earlier in the replication. The judge also observed that the receipts and property tax documents appeared to have interpolations, such as the petitioner’s name being added in a different handwriting, and that some of the documents, like electricity and water bills, had no direct relevance to the main issues.

Aggrieved by this order, Mr. Bailey approached the Delhi High Court under Article 227 of the Constitution of India, contending that the trial court’s refusal was arbitrary and unjust, particularly when the case was still at the evidence stage and no prejudice would be caused to the respondent by admitting the documents.

Core Legal Dispute:The essential legal question before the High Court was whether the trial court had erred in refusing to permit the petitioner to file additional documents under Order VII Rule 14 CPC, despite his claim that those documents were necessary for just adjudication and were not in his possession when the plaint was filed.

This dispute brought into focus the balance between procedural compliance and substantive justice — whether technical delay in filing documents should defeat a party’s right to produce crucial evidence for determining the truth.

Arguments on Behalf of the Petitioner:Counsel for the petitioner argued that the documents sought to be placed on record were highly relevant for proving his ownership and rebutting the respondent’s claims. These documents included Wills dated 19.09.2000 and 24.08.2000, house tax receipts, tent house business vouchers, electricity and water bills, membership of a traders’ association, and payment slips of burial expenses of the mother.

The petitioner contended that the documents could not be filed earlier because his previous counsel had failed to include them and some were later discovered when handed over by his sister-in-law in 2022. He maintained that since the case had not yet proceeded to evidence, allowing such documents would not prejudice the respondent. Reliance was placed on Kapil Kumar Sharma v. Lalit Kumar Sharma (Civil Appeal No. 2330/2009) and Nishant Hannan & Ors. v. South Delhi Municipal Corporation (CM(M) 262/2014), where courts permitted additional documents at later stages in the interest of justice.

Arguments on Behalf of the Respondent:The respondent’s counsel opposed the petition, contending that the petitioner was attempting to fill lacunae in his case. He argued that the petitioner had already filed replication with new documents and was now attempting to introduce even more without justification. The delay of over two years was deliberate and not supported by a credible explanation.

According to the respondent, their late mother had, by a Will dated 17th November 1994, bequeathed the suit property solely to her daughter (the respondent) and had expressly disinherited the petitioner for his neglectful and abusive behavior. The respondent further contended that the petitioner’s conduct had forced their parents to publicly debar him through an affidavit and newspaper publication.

The respondent relied on several precedents including Asia Pacific Breweries v. Superior Industries (2009) 158 DLT 670, Gold Rock World Trade Ltd. v. Veejay Lakshmi Engineering Works Ltd. (2007) 143 DLT 113, and Haldiram (India) Pvt. Ltd. v. Haldiram Bhujiawala (2009) 5 ILR (Del) 503, all of which emphasize that courts must exercise discretion in allowing late filing of documents strictly and sparingly, to prevent misuse and delay.

Legal Analysis and Judicial Reasoning:  Court analyzed the intent and scope of Order VII Rule 14 of the CPC, which mandates that all documents relied upon by the plaintiff should ordinarily be filed with the plaint. However, sub-rule (3) provides that a document not produced at that stage may later be received in evidence with the leave of the court. The judge observed that the 2002 amendment to this rule was enacted precisely to soften the earlier rigid embargo on filing documents belatedly, thereby allowing genuine parties an opportunity to present relevant materials if justice so requires.

The Court referred to the Delhi High Court’s own ruling in Haldiram (India) Pvt. Ltd. v. Haldiram Bhujiawala (2009 5 ILR (Del) 503), which clarified that this is a discretionary power to be used sparingly, only in genuine cases and not as a matter of routine.

The Court also cited the Supreme Court’s judgment in Sugandhi (Dead) by LRs v. P. Rajkumar (2020) 10 SCC 706, where it was held that procedural rules should not act as stumbling blocks in the path of substantive justice. The Apex Court had emphasized that the objective of such provisions is to aid in discovering the truth rather than penalizing inadvertent procedural lapses. Similarly, reference was made to Mohanraj v. Kewalchand Hastimal Jain (AIR 2007 Bom 69), which held that courts should take a liberal approach in allowing relevant documents necessary for a fair decision.

The petitioner’s additional documents, the Court noted, were directly relevant to his claim that he was employed, financially independent, and had been taking care of his mother, contrary to the respondent’s allegations of negligence. Moreover, some of the documents, such as property tax receipts and municipal payment slips, were public records whose authenticity could be verified at a later stage through evidence.

The judge found that the trial court had taken an overly rigid and mechanical approach in rejecting the documents solely on procedural grounds. He reasoned that since the trial was still at the initial stage and evidence had not commenced, allowing the petitioner to file these documents would not cause any serious prejudice to the respondent. Rather, it would enable the court to effectively adjudicate the real issues between the parties.

The High Court also observed that even if the petitioner’s explanation about his previous counsel’s negligence appeared weak, courts should adopt a pragmatic and compassionate view. Minor mistakes or lapses by litigants or their counsel should not deprive them of a fair chance to present their case, especially when no substantial delay or prejudice is caused to the opposite side.

Final Decision:The High Court allowed the petition, setting aside the trial court’s order dated 17th May 2023. It permitted Mr. Bailey to place the additional documents on record and prove them in accordance with law. Justice Dudeja emphasized that “procedural rules are meant to advance the cause of justice, not to obstruct it.” Excluding potentially relevant documents at this stage, he said, would elevate technical formalities over the pursuit of truth.

The Court concluded that the trial court’s order suffered from “gross illegality and perversity,” as it failed to consider the importance of the documents for the fair adjudication of the matter. The petition was therefore allowed, with both parties directed to bear their own costs.

Legal Principle and Impact:This judgment reaffirms the settled principle that procedural law is a means to achieve justice, not an end in itself. The decision underscores the judiciary’s discretion under Order VII Rule 14 CPC to allow late filing of documents if it serves the interests of justice and does not prejudice the other party. It also serves as a guiding precedent for lower courts to adopt a balanced approach, avoiding undue rigidity in procedural compliance.

Case Title: Pradeep Bailey Vs Gilma Daniel

Case Number: CM(M) 1506/2023

Neutral Citation: 2025:DHC:4992

Date of Decision: 18th June, 2025

Court: High Court of Delhi 

Hon’ble Judge: Justice Ravinder Dudeja

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

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

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

---

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.

---

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.

---

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.

---

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.

---

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.

---

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.

---

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.

---

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.

---

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

---

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