Madan Lal Purushottam Das Foods Private Limited Vs B. L. Agro Industries

Composite marks, common to trade, and consumer wonderment

Facts:This case arises from a trademark dispute in the edible oil market between B. L. Agro Industries Limited, proprietor of the registered mark “BAIL KOLHU” (word and device), and Madan Lal Purushottam Das Foods Private Limited, which began using the mark “AROHUL KOHLU” with a device featuring an ox tethered to a grinder, for similar goods including edible oils, ghee, fats and allied products, as alleged by the respondent B. L. Agro in the suit below. 

B. L. Agro claims long-standing adoption of the “BAIL KOLHU” mark since 1 January 1986, registrations for the word and device in Class 29 (including edible oils, ghee, fats, dairy products) and other classes, and copyright registrations for the device from 1999, with continuous and extensive use leading to substantial goodwill and turnover growth over the years. 

The appellant had attempted to register similar device marks on a “proposed to be used” basis in 2022 and 2023, but both applications were abandoned by the Registrar of Trade Marks in December 2023 and July 2024 respectively, leaving the appellant without any registration, while the respondent continued to own valid registrations over the BAIL KOLHU word and device marks. 

The respondent alleges that in July 2025 it discovered the appellant’s products on online platforms using “AROHUL KOHLU” with an ox-and-grinder device similar to the respondent’s device for identical goods, likely to confuse consumers and amounting to infringement and passing off, prompting the suit seeking permanent injunction and interim relief.

Procedural detail:In CS (COMM) 464/2025 before the Commercial Court, Shahdara, B. L. Agro sought an ex parte ad interim injunction under Order XXXIX Rules 1 and 2 CPC to restrain use of the impugned mark and device by the appellant and also sought appointment of a Local Commissioner under Order XXVI Rule 9 CPC to visit the appellant’s premises and seize or inventorize allegedly infringing goods . 

By order dated 4 August 2025, the Commercial Court granted ex parte ad interim injunction restraining the appellant, recorded prima facie infringement of the registered “BAIL KOLHU” trade name/device by deceptive similarity and phonetic similarity, and appointed a Local Commissioner to inventorize and seize goods, with reliance on Morgan Stanley Mutual Fund v Kartick Das, and Delhi High Court orders in Munish Kumar Singla Trading v Jollibee Foods Corporation and Devagiri Farms Pvt Ltd v Sanjay Kapur, and fixed the matter for further hearing on 20 September 2025 . 

Aggrieved, the appellant preferred FAO (COMM) 234/2025 before the Delhi High Court under Section 13 of the Commercial Courts Act read with Order XLIII CPC, challenging the ex parte interim order, and argued for interference by the appellate court rather than remand for an uninfluenced decision by the Commercial Court; upon suggestion by the Bench to allow the trial court to decide the interim application uninfluenced, the appellant declined and pressed the appeal on merits, leading to a detailed appellate analysis within the limited constraints on appellate interference with discretionary interim orders.

Dispute:The core dispute is whether the appellant’s use of “AROHUL KOHLU” with an ox-and-grinder device for edible oils infringes the respondent’s registered “BAIL KOLHU” marks and device under Section 29 of the Trade Marks Act, 1999, by causing likelihood of confusion or association in the mind of an average consumer of ordinary intelligence and imperfect recollection, and whether interim injunctive relief and appointment of a Local Commissioner were justified at the ex parte stage. 

The appellant argued that “Kolhu” is publici juris describing a traditional wood-press process for extracting mustard oil; that the respondent conceded no objection to use of the words per se; that the ox-with-grinder motif is common to the trade and non-distinctive with numerous similar registrations since 1973; that the respondent does not own a separate registration for the device per se and cannot dissect a composite mark under the anti-dissection rule in Section 17; that the device is descriptive and thus protected by Section 30(2)(a); and that when compared as whole marks “BAIL KOLHU” and “AROHUL KOHLU” are dissimilar and not likely to confuse. 

The respondent maintained status as registered proprietor since 2001 for the device and since at least 2006 and 2016 for the word in Class 29, showing long and extensive use, and argued that the overall impression of the rival marks, including the ox-with-grinder dominant feature and phonetic/visual similarity in the words, creates at least likelihood of association sufficient to find infringement at the interim stage, warranting protection of statutory rights.

Detailed reasoning :The High Court began by reaffirming the settled test that likelihood of confusion is examined from the standpoint of an average consumer of ordinary intelligence and imperfect recollection, and that marks are compared as wholes, not by placing them side by side for a meticulous comparison, consistent with Pernod Ricard v Karanveer Singh Chhabra, Khoday Distilleries Ltd v Scotch Whisky Association, and Parle Products v J.P. Co., as well as the classical position in Amritdhara Pharmacy v Satya Deo Gupta and Cadila Healthcare v Cadila Pharmaceuticals.

The Court emphasized that infringement under Section 29(2) is made out not only when a consumer confuses one mark for another, but also where, owing to similarity of marks and goods, the consumer is likely to believe there is an association between them; thus even a momentary state of wonderment about connection suffices to establish likelihood of confusion at the initial interest stage, which is enough at the interim level without proof of actual confusion . 

Applying this to the rival signs, the Court held that a consumer who had seen the respondent’s “BAIL KOLHU” device mark would, upon encountering the appellant’s “AROHUL KOHLU” with an ox-and-grinder motif for identical goods, at least wonder about an association, given the shared pictorial theme and overlap in the word elements “KOLHU/KOHLU,” which meets the Section 29(2) threshold for likelihood of confusion or association.

On the anti-dissection rule and Section 17, the Court recognized that composite marks must be considered as a whole, but courts may identify dominant or essential features within a composite mark for assessing confusion, as explained by the Supreme Court in Pernod Ricard; it concluded that, in consumer perception, the ox tethered to the grinder is the dominant or at least co-dominant feature of B. L. Agro’s device, which impresses the average consumer more immediately than the words, making replication of that motif a strong indicator of infringement even if the word elements differ. 

Drawing on South India Beverages Pvt Ltd v General Mills Marketing Inc., the Court observed that where both components are equally prominent, both deserve protection; hence, copying the ox-with-grinder motif, which is at least as dominant as the words, would justify injunctive relief, and this approach remains consistent with the anti-dissection principle because the overall commercial impression remains the focus. 

The Court also employed the concept of idea infringement, holding that appropriation of the dominant idea of the registered device—the ox tethered to a grinding machine for mustard oil—by the appellant constitutes infringement because similarity under Section 29(2) includes similarity of the idea conveyed by the marks, especially where that idea anchors consumer association with the registered mark [1].

Regarding the plea that the ox-and-grinder motif is common to the trade and thus unprotectable under Section 17(2), the Court held that merely producing screenshots of several registrations with similar motifs is insufficient; to invoke “common to the trade,” the defendant must show actual market usage in the same trade with material indicating substantial turnover or threat to the distinctiveness of the plaintiff’s mark, as elucidated by Pankaj Goel v Dabur India Ltd and Express Bottlers v Pepsi Inc.; since there was no empirical data on actual usage or market impact in the mustard oil trade, the defence failed at the interim stage. 

The Court further clarified that a trademark proprietor is not obliged to sue every small infringer and may prioritize enforcement; therefore, existence of other potential infringers does not defeat the claim against a particular infringer, per Pankaj Goel and National Bell v Metal Goods. 

The Court also rejected the contention that the device lacks distinctiveness or is descriptive, noting that distinctiveness is a fact-sensitive issue generally requiring evidence and trial, and that the registered status under Section 31 provides prima facie evidence of validity; moreover, Section 30(2)(a) was inapplicable because the ox-with-grinder image does not indicate kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics—at best it is suggestive of a process, and suggestive marks are protectable, as explained in T. V. Venugopal v Ushodaya Enterprises.

The Court refused to be swayed by differences in packaging or get-up because an infringement analysis is mark-to-mark, not a passing off inquiry; the Supreme Court’s distinction in Kaviraj Durgadutt Sharma v Navratna Pharmaceutical Laboratories was relied on to stress that added matter on packaging cannot cure infringement where the essential features of the registered mark have been adopted by the defendant. 

On appellate interference, the Bench reminded that appeals against discretionary interim orders are governed by the limits set in Wander Ltd v Antox India, and within those parameters there was no case to upset the Commercial Court’s ex parte injunction and appointment of Local Commissioner, particularly after the appellant elected not to accept a remand to have the Order XXXIX application decided uninfluenced on the next date.

Judgment and decision:The Delhi High Court dismissed the appeal under the limited appellate standard applicable to interim orders, thereby affirming the Commercial Court’s ex parte ad interim injunction restraining the appellant from using the impugned mark and device. 

Case Title: Madan Lal Purushottam Das Foods Private Limited Vs B. L. Agro Industries Limited  

Order Date: 28 August 2025  

Case Number: FAO (COMM) 234/2025 

Neutral Citation: 2025:DHC:7772-DB

Name of Court: High Court of Delhi 

Name of Hon'ble Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla 

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

Nilesh Girkar Vs Zee Entertainment Enterprises Limited

Judicial Remand and Court Fee Refund

Factual Background and Dispute:The dispute originated when Nilesh Girkar, the appellant, filed a suit against Zee Entertainment Enterprises Limited and others, raising grievances that invoked a commercial dispute. The suit's exact subject matter is  led to a disagreement over whether the court where the suit was filed had proper jurisdiction. The initial dismissal of the suit brought to fore questions about how and why a court may decline to hear a matter at the preliminary stage, particularly under Order VII Rule 11 of the Code of Civil Procedure, 1908, which allows a court to reject a plaint for several technical and substantive reasons.

Procedural Details:After Nilesh Girkar filed his suit, the Commercial Court rejected the plaint against Respondent 1 (Zee Entertainment Enterprises Limited) under Order VII Rule 11A of the CPC and returned the plaint against Respondents 2 to 5 under Order VII Rule 10. Order VII Rule 11A essentially empowers a court to reject a plaint if it does not disclose a cause of action or if any legal bar arises. Meanwhile, Order VII Rule 10 concerns instances where a court returns a plaint due to lack of jurisdiction. The appellant then approached the High Court in appeal against this procedural decision, challenging both the rejection and return of the plaint and seeking further remedy for the suit to be reconsidered on merits.

Detailed Reasoning and Judgement Discussion:The High Court’s judgment centres around key statutory provisions and judicial precedents. The appellant’s counsel drew attention to the Division Bench’s earlier decision in Darshan Aggarwal v Kuldeep 1998 ( 1) RCR Civil 425, which set out circumstances under which a refund of court fees is permissible when a suit is remanded after being dismissed at a preliminary stage. The court then examined Section 13 of the Court Fees Act, which states that if a suit is remanded in appeal under any grounds mentioned in Section 351 of the (erstwhile) CPC, the appellant should get a certificate for a refund of all appeal fees paid. 

Order XLI Rule 23 of the CPC allows a higher appellate court to remand a case when the trial court passed a decree on a preliminary point, and the appellate court finds it necessary for the lower court to hear and decide the entire matter afresh. The High Court found that in this case, the Commercial Court had made errors: it wrongly rejected the plaint against Respondent 1 under Order VII Rule 11A and had territorial jurisdiction, so the suit should have been entertained against all parties. The error in prematurely rejecting the plaint meant the suit was remanded for a proper, full hearing in the Commercial Court. Thus, the conditions for remand (as understood under Order XLI Rule 23) were met.

Decision:After considering the legal provisions and precedents, the High Court held that it had earlier remanded the suit for reconsideration due to an error in the initial rejection by the Commercial Court. Because the remand satisfied the statutory and judicial requirements, the appellant was entitled to a refund of all court fees paid on the appeal. The court ordered the Registry to issue a certificate to allow the appellant to claim the refund within four weeks from the order date. This decision places emphasis on the right of litigants to reclaim fees where a suit is wrongly dismissed at a threshold stage and then is reinstated by way of appellate review and remand.

Case Title: Nilesh Girkar Vs Zee Entertainment Enterprises Limited & Ors.

Order Date: 15 October 2025

Case Number: RFACOMM 251/2025

Name of Court: High Court of Delhi

Name of Hon'ble Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla

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

Honasa Consumer Limited versus Cloud Wellness Private Limited

Colour Combinations, Trade Dress & Copyright

Fact:The Plaintiff, Honasa Consumer Limited, is engaged in the marketing and sale of beauty, skin care, personal care, and baby products, sold both in India and internationally. Defendant No. 1, Cloud Wellness Pvt. Ltd., operates in the same product segment, with Defendant No. 2 being one of its directors. The Plaintiff markets a product line under THE DERMA CO. brand, which uses a distinct visual identity involving unique color schemes, stylized layouts, and packaging termed as its “Subject Trade Dress”. The Defendants market products under DERMATOUCH, whose trade dress is alleged by the Plaintiff to be deceptively similar and a slavish imitation of the Plaintiff's packaging. 

The Plaintiff claims copyright in its trade dress, having commissioned a design agency in 2019 for the artwork and used the designs since January 2020. The Plaintiff believes this trade dress has attained public recognition and acts as a source identifier. The dispute centers around whether Defendants have copied this trade dress, thereby infringing the Plaintiff's copyright and passing off their business as that of the Plaintiff’s, riding on the goodwill and reputation vested in THE DERMA CO mark[1].

Procedural Details:The Plaintiff filed a civil suit in the Delhi High Court seeking an interim injunction against the Defendants under Order XXXIX Rules 1 and 2 of the Civil Procedure Code. The relief requested was to restrain the Defendants from using the impugned trade dress for their beauty and skincare products, asserting infringement of copyright under the Copyright Act, 1957 and passing off under common law. 

Dispute:The core of the dispute is whether the Defendants' product packaging replicates, imitates, or is deceptively similar to the Plaintiff’s protected trade dress. The Plaintiff asserts ownership of original artistic work in the trade dress and claims exclusive rights under Sections 13, 14, and 51 of the Copyright Act, 1957. 

The Plaintiff further relies on the doctrine of passing off, arguing that the Defendants are riding on its goodwill through substantially similar packaging. The Plaintiff argues it has invested heavily in advertising and promotion, resulting in distinctiveness and secondary meaning acquired by its trade dress. 

The Defendants challenge this by questioning the originality of the Plaintiff’s trade dress, claiming prior existence of similar designs in the market before the Plaintiff’s adoption, and highlighting four other companies with similar packaging as early as 2010-2019. They argue the Plaintiff’s color combination and layout are neither unique nor inventive, thus incapable of protection as original artistic work. 

They further submit that consumers buy such products based on quality, ingredients, and price, not packaging, highlighting their own investment in branding and marketing. The Defendants contend their adoption was bona fide, driven by market norms, not as an imitation. They assert ongoing honest co-existence in the market for over four years, with no evidence presented by the Plaintiff of actual confusion among consumers, and argue that any loss, if caused, is compensable monetarily. 

Detailed Reasoning:The Hon'ble Court began its analysis by reiterating that interim injunctions are granted when the existence and violation of asserted legal rights are contested and uncertain. The object is to prevent irreparable injury to the Plaintiff pending trial, subject to three tests: (i) prima facie case, (ii) balance of convenience, and (iii) irreparable injury as required under Order XXXIX Rules 1 & 2, CPC.

In considering the test of deceptive similarity, the Court placed special emphasis on the nature of the skincare industry, where consumer choices are primarily ingredient-driven rather than packaging-driven. Product packaging, including color schemes or layouts, play a limited role compared to formulations and brand names depicted prominently on each product.

The Court clarified that protection under the Copyright Act, 1957, is for original artistic works as defined under Section 2(c). The Plaintiff’s claim of originality was challenged on grounds of prior art, with Defendants presenting examples of similar packaging by “Hylamide” since 2015, and other companies since 2010, and arguing that mere juxtaposition of two colors cannot be characterized as original unless distinctive creative authorship is proved. The Court referenced industry standards, the role of color theory, and the widespread adoption of similar color schemes for specific product purposes.

On passing off, the Court reiterated the classic trinity—goodwill, misrepresentation, and damage—as enunciated in Heinz Italia, Laxmikant V. Patel, Syed Mohideen, and elaborated by House of Lords and Australian High Court decisions. The burden lies on the Plaintiff to prove its get-up had acquired sufficient recognition such that consumers would likely be misled, even with the Defendants’ distinct brand name DERMATOUCH displayed. 

The Court similarly discussed that secondary meaning is critical, and colour combinations or packaging are registrable only when associated with a distinct single source. No material was provided by the Plaintiff to show exclusive association or substantial public confusion since launch.

On delay and coexistence, it was found that both parties had operated in the market for four years, and no concrete evidence of confusion or decline in Plaintiff’s sales was presented. Injunctions are not typically granted where parties have co-existed openly unless sustained prejudice can be demonstrated. 

The Court concluded that factors like the specialized, well-informed class of buyers; the absence of actual confusion over a prolonged period; the prominent use of distinct brand names; and disputed questions about originality and prior adoption would require thorough evidence, which could only be examined in full trial, not at the interim stage.

Judgment:After careful consideration, the Court held that the Plaintiff had not made out a clear prima facie case for an interim injunction. The disputed facts—originality, distinctiveness, prior use—demanded evidence and could only be resolved at trial. The prolonged market coexistence, lack of customer confusion, and the presence of distinct marks led to the conclusion that no irreparable injury would be caused to the Plaintiff without the injunction, and any loss could be compensated monetarily.

Case Title: Honasa Consumer Limited Versus Cloud Wellness Private Limited & Anr.

Order Date: 26 September 2025

Case Number: CS COMM 483/2025

Neutral Citation: 2025:DHC:8662

Name of Court: High Court of Delhi

Hon'ble Judge: Mr. Justice Tejas Karia

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

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

Mohammad Talha Vs Karim Hotels Pvt. Ltd.

Evaluating Deceptive Similarity in Restaurant Branding

FACTS:This case started when Karim Hotels Pvt. Ltd., a well-known restaurant chain from Old Delhi, learned in December 2020 about a restaurant named Gulshan-e-Karim running in Moradabad by Mohammad Talha. The word 'Karim' has long been associated with the Delhi-based restaurant established in 1913 by Haji Karimuddin, whose family had been royal cooks in the Mughal Empire. With a long history and many awards, the name ‘Karim’ became famous for Mughlai cuisine. Karim Hotels Pvt. Ltd. owns several registered trademarks for ‘KAREEM’ and 'KARIM' under various classes.

Upon finding out about the Moradabad restaurant, the company filed a lawsuit before the District Judge Commercial Court, Tis Hazari, for a permanent injunction to stop Mohammad Talha from using ‘GULSHAN-E-KARIM’ or anything similar to their marks. Appellant Talha maintained that his father had chosen this name in 1997 and started the restaurant in 2016, claiming continuous use and a Food Safety license from the Government of Uttar Pradesh. He argued that ‘GULSHAN-E-KARIM’ means ‘Garden of God’ in Urdu and further submitted that the word ‘Karim’ means ‘generous’ and is a common word, so consumers wouldn't be confused by both restaurants.

PROCEDURAL DETAILS:The lawsuit for injunction got filed in 2022, with Karim Hotels requesting an interim restraint order against Talha under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The Commercial Court granted this request on 15 January 2025, restraining Talha and associates from using 'KARIM' in any form. Aggrieved by this order, Talha appealed to the High Court of Delhi.

DISPUTE:The main dispute is whether the use of ‘GULSHAN-E-KARIM’ by the appellant amounts to infringement of the registered ‘KAREEM/KARIM’ trademarks of the respondent and whether such use could confuse consumers. Talha argued that there’s no deceptive similarity, claimed long-continued honest use in Moradabad, and further challenged the respondent’s claim of exclusivity by saying ‘Karim’ was a common word. On the other side, Karim Hotels asserted priority and exclusivity over ‘KARIM’ based on trademark ownership and decades of use, arguing that any use by Talha was likely to confuse customers, given both restaurants served Mughlai cuisine.

DETAILED REASONING:The Court looked at principles from trademark law under the Trade Marks Act, 1999, notably Sections 28, 29, 31, and 135. Section 28 gives exclusive rights to the registered proprietor of a valid trademark. Section 29 defines infringement, which occurs when someone uses a similar mark in connection with similar goods or services and causes confusion or suggests an association. Section 31 makes registration prima facie evidence of validity.

The respondent Karim Hotels had multiple registrations, much prior in time compared to appellant Talha's restaurant, showing bonafide and priority of use since 1913. The Court found that both names related to restaurants serving Mughlai food, thus targeting the same consumer base. Based on precedents like Parle Products Pvt. Ltd. v J.P. Co (1972) 1 SCC 618, the Court noted that similarity is not viewed by comparing marks side-by-side but by the overall impression they leave in the mind of an ordinary consumer with average intelligence and imperfect recollection.

Further, referencing the principle from Kaviraj Pandit Dura Dutt Sharma v Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980), the Court clarified that passing off differs from infringement; while packing and appearance matter in passing off, in infringement, it's the essential features of the mark which count. Even differences in get-up and additional matter wouldn’t avoid liability if the underlying mark could cause confusion.

Phonetic similarity, per Pianotist Co’s Application (1906 23 RPC 774), is relevant. The Court found that 'KARIM' forms the dominant part of the disputed marks, and a consumer seeing 'GULSHAN-E-KARIM' may instantly relate it to 'KARIM' restaurants in Delhi. This was deemed sufficient for potential confusion.

Regarding appellant’s defense that ‘Karim’ is generic (publici juris), the Court explained that while generic marks generally cannot be exclusively owned, distinctiveness must be assessed relative to its use. 'Karim' may be generic in religious contexts but is distinctive for a restaurant, especially given the reputation established by Karim Hotels.

The appellant’s challenge based on the anti-dissection rule (that the dominant part of the mark shouldn’t be separated for assessment) was rejected. The Court explained, citing South India Beverages Pvt. Ltd. v General Mills Marketing Inc. (2015 61 PTC 231), that the rule mainly applies to a plaintiff’s composite mark, not the defendant’s. Even so, ‘Karim’ was dominant in both marks.

The issue of acquiescence—whether the respondent allowed the use by not acting for years—was dismissed. The court found no actual evidence of commercial use by Talha from 1997 till 2016. Further, as established in Midas Hygiene Industries Pvt. Ltd. v Sudhir Bhatia (2004 3 SCC 90), mere delay does not bar relief in trademark infringement, and where infringement is found, an injunction must follow.

The Commercial Court had taken a strict approach, entirely restraining Talha from any use of ‘GULSHAN-E-KARIM’. On appeal, the High Court considered the principles of balance of convenience and equity, acknowledging that Talha’s use may not have been to capitalize on the respondent’s goodwill but was innocent and limited in scope to Moradabad. The effects of changing the name after years could disproportionately hurt Talha's business.

Thus, the High Court modified the Commercial Court’s order, allowing the appellant to continue using 'GULSHAN-E-KARIM', provided that a conspicuous disclaimer, in both English and Hindi, is displayed immediately below the mark (on signages, adverts, and online platforms). This disclaimer must state that the Moradabad outlet has no connection with the respondent’s group of restaurants and should also display the location and logo of respondent’s outlets.

DECISION:The High Court allowed the appeal to a limited extent. The appellant Mohammad Talha is permitted to use the name 'GULSHAN-E-KARIM' for his restaurant only if he consistently displays a bold, clear disclaimer stating no association with Karim Hotels Pvt. Ltd., in all physical and online places. Failure to comply with this requirement within six weeks would result in dismissal of the appeal, and the original injunction would become effective again. Thus, while the rights of the trademark holder are protected, the balance of convenience and fairness also favours the appellant under equitable principles.

Case Title: Mohammad Talha Vs Karim Hotels Pvt. Ltd.

Order Date: 6 November 2025

Case Number: FAO COMM 82/2025

Neutral Citation: 2025:DHC:9713

Court: High Court of Delhi

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

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

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

Ifra Sheikh, Trading As Rocket Bidi Vs Mobile Bidi Traders

Visual Similarity, Marketplace Confusion, and Trademark Rights

Fact:The dispute is between Ifra Sheikh, acting through a power of attorney and trading as Rocket Bidi Works, and Ms Mobile Bidi Traders, a partnership firm. The plaintiff, Ms Mobile Bidi Traders, has been making, marketing, and selling handmade bidis and matchboxes since 2005 and claims to have a registered trademark "Online BIDI" (registered on 04.01.2020, application dated 31.08.2017) and copyright over its label design (registered 13.06.2024). 

The plaintiff asserts that the design and blue color scheme of its packaging—known as "Asmani Puda" in the market—sets its product apart, especially as consumers are mainly workers and laborers from less educated backgrounds, making them prone to confusion. The defendant, Ifra Sheikh, sells bidis under the brand “ATM BIDI No.07.” The plaintiff alleges that the defendant’s color scheme and packaging design are deceptively similar to their own, causing a likelihood of confusion among ordinary purchasers who recognize products by appearance rather than name. 

Procedural Detail:Ms Mobile Bidi Traders filed Trademark Suit No.05 of 2024 in the District Court, seeking a temporary injunction to restrain the defendant from using confusingly similar marks or packaging. On 12.08.2025, the District Judge-12, Nagpur, granted this temporary injunction, leading the defendant to file the present appeal before the High Court. The appellant (Ifra Sheikh) argued that the two products are not similar, especially after the defendant altered its design on 01.07.2024 to avoid further disputes. The defendant also alleged that the packaging used by the plaintiff did not include the statutory health warning required by the Cigarettes and Other Tobacco Products (Packaging and Labelling) Rules, 2008, and therefore, the plaintiff should not be granted the equitable relief of injunction. Earlier, an application under Order 7 Rule 11 CPC by the defendant for rejection of the plaint on this ground was dismissed by the trial court. 

Dispute:The central dispute was whether the defendant’s packaging was deceptively similar to that of the plaintiff, potentially misleading consumers and infringing the plaintiff’s registered trademark and copyright. The defendant argued that its new packaging was not similar, that distinguishing features set the products apart, and that statutory non-compliance with health warnings on plaintiff’s outer packaging should disentitle the plaintiff from relief. The plaintiff countered that broad similarities in the products’ appearance—especially the blue color scheme—were likely to confuse consumers, who are not generally literate or brand-aware, and that the existing health warnings on bundles met statutory requirements. 

Detailed Reasoning and Discussion:The court identified that the end consumer of bidis—often workers or laborers—is likely to differentiate brands based on packaging and appearance rather than names or minor design differences. Both parties’ bidi bundles bore a blue conical design, and both included health warnings on the bundles (even if not on the wholesale outer packet). The trial court had rightly observed that similarities in the color scheme and visual presentation could be deceptive for such consumers.

In response to the defendant’s argument that the failure to provide a statutory health warning on outer packaging should disentitle the plaintiff from relief, the court looked to the Cigarettes and Other Tobacco Products Act, 2003, and its implementing rules. These provisions require statutory warnings on every “retail package.” The court found that although the external wholesale package lacked the warning, the retail bundle carried it, and that, even in case of procedural violation, relief for trademark infringement could not be denied in this context unless statutory authorities took action against the plaintiff. The policy behind the rules is consumer protection—not to be manipulated as a defence in trademark disputes (citing Sections 7, 14, 15, and 20 of the 2003 Act and Rule 3e of 2008 Rules).

The court also cited Ms Hiralal Industries Ltd. v. S.M. Associates and others (AIR 1984 Bom 218) for the principle that even where distinguishing features are identified, overall similarities—especially from an “arm-chair” or practical consumer perspective—prevail in the confusion analysis. The sales figures argument was dismissed as the plaintiff’s registered rights pertained specifically to the blue-labeled packages, which were at issue.

The appellate court reiterated the “arm-chair rule” (how a person of average intelligence and imperfect recollection would perceive the products), reinforcing protection for consumers who may be influenced by broad visual similarities in the marketplace.

On the question of discretion, the court reiterated that, in appeals against discretionary orders like temporary injunctions, interference is justified only if a clear error or legal mistake has occurred—neither of which was present in this case[1].

Judgement:The High Court found no error in the trial court’s approach and held:The plaintiff’s mark "Online BIDI" and associated blue-colored trade dress enjoys protection under Sections 28 and 29 of the Trade Marks Act, 1999, and copyright under the Copyright Act, 1957.

 Where packaging breaches are alleged under the Cigarettes and Other Tobacco Products (Packaging and Labelling) Rules, 2008, and the Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003—such breaches only lead to specified statutory consequences and not automatic disentitlement to trademark relief unless authorities take action. Section 15 of the 2003 Act allows for conditional release of confiscated goods if labeling requirements are corrected.

The principle established in Ms Hiralal Industries Ltd. v. S.M. Associates and others (AIR 1984 Bom 218), namely, that broad similarities in trade dress must prevail in such disputes, was upheld.Therefore, the order of temporary injunction restraining the defendant from using the deceptively similar trade dress was justified. 

Decision:The appeal was dismissed. The trial court’s order for temporary injunction against the defendant’s use of packaging and branding similar to the plaintiff’s was upheld. The court made no order as to costs.

Case Title: Ifra Sheikh Trading as Rocket Bidi Works Vs. Ms Mobile Bidi Traders  

Order Date: 04.11.2025  

Case Number: Appeal Against Order No.19 of 2025  

Neutral Citation: 2025BHC-NAG11393  

Name of Court: High Court of Judicature at Bombay, Nagpur Bench  

Name of Hon'ble Judge: Justice Rohit W. Joshi  

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

Quantum Hi-Tech Merchandising Pvt. Ltd. Vs. LG Electronics India Pvt. Ltd

Passing Off, Infringement, and Concealment

FACTS:Quantum Hi-Tech Merchandising Pvt. Ltd., the appellant, instituted a suit before the District Judge Commercial Court-II, Shahdara, alleging that LG Electronics India Pvt. Ltd., LG Korea, and their Brand Store in Delhi infringed its registered trademarks and attempted to pass off their products as those of the appellant. The appellant sought a permanent injunction to restrain the respondents from using the marks QUANTUM, QUANTUM PLUS, QUANTUM DISPLAY, IPS QUANTUM, RGB QUANTUM, SMART QUANTUM, and G QUANTUM for their goods, arguing that these marks were deceptively similar to the appellant’s registered trademarks QUANTUM and related device marks.

The appellant clarified during proceedings that its request was limited only to restraining the respondents from using the marks QUANTUM and QUANTUM DISPLAY, and was no longer seeking an injunction against the respondents' use of their other registered trademarks containing “QUANTUM” as a part. Quantum Hi-Tech Merchandising Pvt. Ltd. asserted its adoption of the trademark QUANTUM since 1992, with formal registration under Class 9 of the Trade Marks Act, 1999, following a transfer from its predecessor in 2006. The respondents were manufacturing televisions and related goods under similar marks, some of which were separately registered.

PROCEDURAL DETAILS:The appellant sought an interim injunction under Order XXXIX Rules 1 and 2 of the Civil Procedure Code to restrain the respondents' use of the allegedly infringing marks. An ad interim order was initially passed, restraining the respondents. Subsequently, the respondents applied under Order XXXIX Rule 4 for vacation of this interim order.

On 15 December 2021, the Commercial Court dismissed the appellant’s application for interim injunction and allowed the respondents' application to vacate the order. Aggrieved, the appellant filed an appeal before the High Court of Delhi.

DISPUTES:The main issues before the court were: Whether the appellant had a valid trademark registration for the mark QUANTUM for goods in question.Whether the respondents’ use of marks such as QUANTUM and QUANTUM DISPLAY constituted infringement or passing off.

DETAILED REASONING :The High Court noticed that the appellant had engaged in wilful and deliberate concealment of facts, noting the lack of bona fide in suppressing details regarding the nature of its trademark registration and use of the relevant affidavit. Equity dictates that interim relief can only be granted to parties who approach the court with clean hands, as per Seema Arshad Zaheer v Municipal Corporation of Greater Mumbai and S.K. Sachdeva v Shri Educare Ltd.

Regarding infringement, the High Court clarified that had the concealment not happened, the appellant might otherwise have had a good case for injunction based on a valid device mark registration, especially since “QUANTUM” is the dominant part of its device mark (see K. R. Chinna Krishna Chettiar v Shri Ambal Co, South India Beverages Pvt Ltd v General Mills Marketing Inc, Pernod Ricard India P Ltd v Karanveer Singh Chhabra). If a dominant part of a composite mark is replicated in another’s mark, confusion is likely under Section 29(2)(b) of the Act.

For passing off, the court cited Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories and Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd. Passing off requires evidence of sale in the market and accumulation of goodwill before the defendant began using the impugned mark. As there was no proof of sale or sufficient material regarding goodwill, the passing off claim failed.

DECISION:The High Court upheld the Commercial Court’s order, finding that the appellant was guilty of concealment of facts and therefore not entitled to interim injunction. The appeal was dismissed, with no orders as to costs.

Case Title: Quantum Hi-Tech Merchandising Pvt. Ltd. Vs. LG Electronics India Pvt. Ltd. & Ors.

Order Date: 4 November 2025

Case Number: FAO COMM 22/2022

Neutral Citation: 2025:DHC:9630-DB

Court: High Court of Delhi at New Delhi

Hon'ble Judges: Justice C. Hari Shankar and Justice Om Prakash Shukla

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

Arun R and Others Vs. Integray Health Care Private Limited

Consolidation of design cancellation with civil IP suits

Facts:The applicants, namely Arun R, Dinesh M, and M/s Espoirs Solution represented by its partner G. Lakshmi Prabha, instituted a commercial intellectual property suit in the Madras High Court against Ms Integray Health Care Private Limited and its promoters, alleging passing off in relation to the design and shape of a product described as a Carbon Fiber Cervical Extension device used in medical applications, and sought damages, accounts, delivery-up, recovery of dues, and return of a demonstration unit besides injunctive reliefs, in addition to addressing design-related issues linked to the respondent’s registered design bearing No. 400027-001 in the Designs Registry at Kolkata. 

The core product is a cervical extension device and the grievance is that the respondents’ design or shape closely imitates the applicants’ design and causes confusion in the marketplace, amounting to misrepresentation and damage to goodwill; alongside the civil suit, cancellation of the impugned design registration was already sought by the applicants before the Controller of Patents and Designs, Kolkata, under reference D-9107/2024-KOL. 

Since all private parties are based in Chennai, the applicants approached the High Court with an application to direct the Controller to transfer the pending design cancellation petition from the Designs Office at Kolkata to the Madras High Court to enable consolidated adjudication with the pending commercial suit concerning the same design subject matter. 

Procedural detail:The suit was filed under Order VII Rule 1 CPC read with Order IV Rule 1 of the Original Side Rules and Sections 27 and 135 of the Trade Marks Act, 1999 to seek injunctive and monetary reliefs typical of a passing off action in trade dress and product configuration disputes, while acknowledging that the respondents hold a registered design and that cancellation is separately pursued under the Designs Act mechanisms before the Controller in Kolkata. 

In the suit, the applicants moved Application No. 726 of 2025 specifically praying for a direction to the Controller of Patents and Designs, Kolkata, to transfer their pending design cancellation petition concerning Design No. 400027-001 (Ref. D-9107/2024-KOL) to the Madras High Court to be heard along with the commercial suit; notice was given of a prior representation dated 27 March 2025 to the Controller invoking the Supreme Court’s guidance on transfer of cancellation proceedings to the High Court when suits involving the same design issues are seized by the High Court.. 

The respondents opposed the application relying on a previous Madras High Court order in OP (PT) No. 2 of 2024 between the same parties, and on the Supreme Court’s decision in S.D. Containers, Indore v. Mold Tek Packaging Ltd., Civil Appeal No. 3695 of 2020, to argue that cancellation petitions lie only before the Controller and the High Court lacks concurrent original cancellation jurisdiction save in appellate capacity or via statutory transfer when defences under Section 22(3) are raised in a suit.

Dispute:The immediate dispute before the Court is jurisdictional and procedural: whether, in the presence of a pending commercial suit concerning passing off and related reliefs over the same product shape or design, the Madras High Court can direct transfer of the applicants’ design cancellation petition from the Controller at Kolkata to the High Court at Madras for consolidated adjudication, by drawing upon Section 19(2) of the Designs Act, 2000, Section 22(4) of the Designs Act in appropriate circumstances, the Supreme Court’s pronouncements harmonizing these provisions, and the Madras High Court Intellectual Property Rights Division Rules, 2022 permitting consolidation of related IP proceedings. 

The applicants rely on the Supreme Court’s order in Maya Appliances Pvt. Ltd. v. Preethi Kitchen Appliances Pvt. Ltd., 2020 SCC OnLine SC 1563, where both parties’ cancellation petitions pending before the Controller were directed to be referred to the Madras High Court under Section 19(2), given the pendency of a suit on infringement/passing off between the same parties concerning the same subject matter, to avoid multiplicity and conflicting outcomes. 

The respondents contend that S.D. Containers clarifies that a cancellation petition under Section 19 must be filed before the Controller and that High Court jurisdiction is appellate save when Section 22(3)-(4) is triggered by a defence to a piracy action, and they also rely on an earlier Madras High Court order declining original cancellation jurisdiction under the Designs Act and requiring resort to the Controller’s forum.

Detailed reasoning including on judgment:The Court began with the statutory framework. Section 19 of the Designs Act, 2000 provides that any person interested may present a petition for cancellation of registration to the Controller on grounds such as prior registration, prior publication, lack of novelty or originality, non-registrability, or that the subject is not a “design” under Section 2(d); critically, Section 19(2) permits an appeal from any order of the Controller to the High Court and also permits the Controller to refer any such petition to the High Court, with the High Court to decide any petition so referred, thereby establishing a statutory pathway for the High Court to decide cancellation petitions referred by the Controller. 

The Madras High Court engaged with its earlier decision in OP (PT) No. 2 of 2024 that held cancellation applications must be presented to the Controller and that the High Court’s role is appellate or upon statutory transfer, but distinguished that ruling by emphasizing that in the present scenario the applicants sought not to file an original cancellation directly in the High Court but to direct a transfer or referral of a pending Controller petition to the High Court seised of the related commercial dispute, which is contemplated under Section 19(2) and reinforced by Supreme Court practice in Maya Appliances.

The Court then examined the Madras High Court Intellectual Property Rights Division Rules, 2022. Rule 6 and Rule 14 expressly empower the Court to consolidate suits for infringement or passing off with other proceedings involving the same IPR, to direct consolidated recording of evidence and adjudication, and to use powers of transfer under Section 24 CPC to bring matters pending before commercial courts to the IP Division when consolidation is in the interests of justice, thus evidencing an institutional framework for unified IP adjudication where parallel proceedings exist. 

The Court reasoned that consolidation of the Controller’s cancellation petition with the pending suit would best serve judicial economy and consistency, especially as all parties are located in Chennai and the High Court is already seized of the connected civil dispute, and it noted that the Supreme Court has recognized such transfers to an appropriate High Court when cause of action and parties are centred there, as seen in S.D. Containers where the Supreme Court, while preserving the statutory scheme, adjusted forum on cause of action grounds in line with Godrej Sara Lee principles on jurisdiction .

On this foundation, the Court concluded that there is no legal impediment to ordering the Controller to transfer the pending cancellation petition to the Madras High Court for decision, either by the Controller referring the petition under Section 19(2) or by virtue of the Court’s authority to consolidate and secure a single-forum decision when Section 22 issues are live or likely to arise, and that this approach aligns with the Supreme Court’s guidance and the IPD Rules’ consolidation mandate.

Decision:Allowing Application No. 726 of 2025, the Court directed the Controller of Patents and Designs, Kolkata, to transfer the applicants’ petition for cancellation of Design No. 400027-001 in favour of Respondent No. 1, bearing Ref. D-9107/2024-KOL, to the Madras High Court for adjudication along with the pending commercial suit. 

Case Title: Arun R & Ors. Vs Ms Integray Health Care Pvt. Ltd. & Ors.  

Order Date: 25 October 2025

Case Number: A No. 726 of 2025 in C.S. (Comm. Div.) No. 152 of 2024  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: Hon’ble Mr. Justice N. Senthilkumar 

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

Suparshva Swabs India Vs. AGN International

Floral Words and Trademark Boundaries

Factual Background: This case arose out of a conflict between two entities engaged in manufacturing and marketing consumer goods, primarily involving the use of the word “TULIP” as a trademark. The appellant, Suparshva Swabs India, is a partnership firm engaged in manufacturing cotton buds, cotton balls, and allied products since 1999. The firm claimed that it had coined, adopted, and used the trademark “TULIPS” (word and device) continuously since that year and had obtained registrations under various classes of the Trade Marks Act, 1999. According to the appellant, the mark “TULIPS” had, over time, acquired substantial goodwill and reputation, not just in India but also abroad, and had attained a distinctive association with its hygiene products.

On the other hand, the respondent, AGN International, is a firm engaged in the business of perfumes and cosmetic products. It had registered the trademark “AGN TULIP” in 2010 in Class 3 under a “proposed to be used” application, claiming that its goods, namely perfumes and sprays, were unrelated to the appellant’s products. The appellant alleged that the respondents had dishonestly and fraudulently adopted a deceptively similar mark to trade upon its reputation and confuse consumers.

In 2021, Suparshva Swabs discovered that AGN International was marketing perfumes under the name “AGN TULIP”. Believing that the impugned mark infringed its “TULIPS” trademark and amounted to passing off, the appellant filed a suit before the Commercial Court, South, Saket, New Delhi, seeking a permanent injunction to restrain AGN International from using the word “TULIP” in any form for perfumes, cosmetics, or related goods.

The plaintiff also filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking a temporary injunction pending trial. The trial court dismissed this application on 03.10.2023, holding that no prima facie case was made out. The appellant challenged this order before the Delhi High Court under Section 13(1) of the Commercial Courts Act, 2015.

Procedural Background: Before the District Judge, Suparshva Swabs claimed that its trademark “TULIPS” was arbitrary, coined, and distinctive. It argued that the mark was registered in several classes, including Class 3 (cosmetics), and that it had long-standing use since 1999, with significant advertising and international recognition. The plaintiff asserted that AGN International’s use of “AGN TULIP” for perfumes was deceptively similar, given that the dominant portion of the respondent’s mark was the word “TULIP,” used prominently while “AGN” appeared merely as a prefix.

The defendants opposed the injunction, contending that “TULIP” is a generic term associated with fragrances and floral products. They asserted that their mark “AGN TULIP” was duly registered and that their goods — perfumes and sprays — were entirely different in nature and market segment from the plaintiff’s cotton buds and swabs. They further argued that the plaintiff had no exclusive right over a common word like “TULIP,” which naturally described the floral fragrance of their goods.

The District Judge, after hearing both sides, held that the plaintiff failed to establish a prima facie case or show irreparable harm. The court found that “TULIP” is a generic term for perfumes and that the goods were dissimilar. The judge observed that perfumes, being fragrant floral products, naturally associate with flowers such as tulips and roses. Hence, “TULIP” could not be monopolized by one trader for all categories of goods. The plaintiff’s plea for interim injunction was thus rejected.

Feeling aggrieved, the plaintiff filed the present appeal before the Delhi High Court.

The Dispute:  The principal question before the High Court was whether the trial court erred in refusing to grant an interim injunction under Order XXXIX Rules 1 and 2 CPC. The core issue revolved around whether the appellant’s mark “TULIPS” enjoyed such reputation and goodwill that it extended to the respondents’ category of perfumes, making their use of “AGN TULIP” likely to cause confusion or deception in the minds of consumers.

The dispute also required the Court to determine whether “TULIP” was a generic or descriptive term in relation to perfumes and fragrances, and whether the appellant’s prior use since 1999 conferred upon it rights superior to the respondents’ later registration from 2010.

Reasoning:  The High Court began by reaffirming that when both parties hold trademark registrations, no action for infringement can lie between them. The only available remedy is passing off, as explained by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683. Therefore, the question before the Court was confined to whether the appellant had established goodwill and reputation in “TULIPS” sufficient to sustain a passing off action against “AGN TULIP.”

The Court then examined the three essential elements of passing off laid down in Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65 — goodwill, misrepresentation, and damage. The judges emphasized that goodwill must be established in the specific market or line of trade in which the alleged misrepresentation occurs. They further referred to Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 73 PTC 1 (SC), where it was held that goodwill cannot be presumed merely from global reputation; it must exist in India and within the relevant segment of trade.

Applying these principles, the Court found that while Suparshva Swabs had substantial goodwill in relation to cotton buds, cotton balls, and hygiene products, it had not demonstrated that this goodwill extended to perfumes or fragrances before the respondents’ adoption in 2010. The evidence produced, including invoices, advertisements, and awards, showed recognition in hygiene products, but not in cosmetics or perfumery. Thus, the element of goodwill within the relevant trade segment was not satisfied.

The Court also evaluated whether “TULIP” was capable of exclusive protection. It noted that while “TULIP” might be arbitrary in connection with cotton products, it is descriptive or generic when used for perfumes, as tulips are flowers naturally associated with fragrance. Citing Nestle’s Products (India) Ltd. v. P. Thankaraja, 1977 SCC OnLine Mad 72, and Jain Riceland (P) Ltd. v. Sagar Overseas, 2017 SCC OnLine Del 11305, the Court reiterated that generic words cannot be monopolized by traders for ordinary use. Hence, the plaintiff could not prevent others from using a floral name for perfumes.

The Court further discussed the claim that “TULIPS” was a well-known mark under Section 2(1)(zg) and Section 11(6) of the Trade Marks Act, 1999. It observed that for a mark to achieve “well-known” status, it must be widely recognized by the general public beyond its product class. Relying on Mahindra & Mahindra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147, the judges noted that while “Mahindra” immediately evokes the automobile company, “TULIP” does not trigger an immediate association with Suparshva Swabs in the minds of consumers. The recognition of “TULIPS” was confined to a specific market segment of hygiene products, not perfumes or cosmetics.

On the issue of prior use, the Court reaffirmed that though prior use prevails over registration, it must be shown within the relevant trade context. The plaintiff’s use since 1999 in hygiene products did not automatically extend to perfumes. The Court found no evidence of consumer confusion or overlap in product identity sufficient to warrant protection across categories.

The High Court also referred to Wipro Enterprises Pvt. Ltd. v. Himalaya Wellness Co., 2024 SCC OnLine Del 6859, which reiterated that the test of “allied and cognate goods” depends on consumer perception, not mere retail proximity. The Court concluded that even though hygiene products and perfumes might appear in similar retail spaces, they cater to different consumer needs and associations.

Finally, the Court upheld the trial court’s view that “TULIP” was generic in the context of perfumes and that no irreparable injury or confusion was demonstrated. The balance of convenience lay with the respondents, who were using a registered mark within their trade domain.

Decision: The Delhi High Court dismissed the appeal and upheld the District Judge’s order dated 03.10.2023. It held that the appellant failed to establish the essential elements of passing off — particularly, goodwill in the relevant trade and likelihood of deception. The Court clarified that procedural fairness and trademark protection cannot extend to monopolizing common or descriptive words, especially those naturally connected to the goods in question. The Court concluded that both parties, being registered proprietors in their respective domains, must coexist without encroaching upon each other’s legitimate business rights.

The Court’s closing observation emphasized that the word “TULIP,” while distinctive in connection with hygiene products, cannot be treated as a proprietary or well-known mark across unrelated product categories such as perfumes. Hence, the injunction sought by the appellant was rightly denied, and the appeal was dismissed with no order as to costs.

Case Title: Suparshva Swabs India Vs. AGN International & Ors.

Case Number: FAO (COMM) 253/2023

Neutral Citation: 2025:DHC:9625-DB

Order Date: 03.11.2025

Court: High Court of Delhi at New Delhi

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

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

Ankit Batra Vs Ravinder Kumar

Stay of Registered Trademark during pendency of Rectification Proceeding

Factual Background:  This case centers around a trademark dispute in the Indian spices industry, where the petitioner, Mr. Ankit Batra, proprietor of M/s KD Industries, sought rectification and cancellation of the registered trademark ‘KEEP DEEP - KD MASALE’ owned by respondent Mr. Ravinder Kumar. The conflict arose over the use of the letters “KD”, which the petitioner claimed as the core part of his brand identity.

The petitioner’s case was founded on long-standing use, reputation, and prior adoption of the trademark ‘KD’ and its label ‘KD Masale’. The petitioner asserted that his firm, M/s KD Industries, had been using the mark ‘KD’ since 2003 in connection with manufacturing and selling spices and blended condiments. The mark had become widely recognized in both domestic and international markets, with sales and exports extending to countries such as Australia, the United Kingdom, the United States, and Canada.

The petitioner claimed that the rights in the trademark ‘KD’ were originally held by his predecessor in business, who had assigned those rights to him through a valid Assignment Deed dated 16 February 2022. Thus, by operation of both statutory and common law principles, he was the lawful proprietor and user of the trademark.

According to the petitioner, the respondent dishonestly and with mala fide intent adopted a deceptively similar mark, ‘KEEP DEEP - KD MASALE’, under Application No. 4923053 in Class 30, which covers spices and similar goods. The petitioner argued that this imitation was deliberate and intended to exploit his established goodwill and reputation, thereby deceiving consumers and diluting the distinctiveness of his mark.

The petitioner supported his claim with evidence including invoices dating back to 2013, packaging, promotional materials, and online listings showing consistent and extensive use of the ‘KD’ mark and label for over two decades.

Procedural Background: The petitioner approached the High Court under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation and rectification of the respondent’s registered trademark on grounds of dishonest adoption and likelihood of confusion. Alongside the main petition, he filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking a stay on the operation of the respondent’s registration during the pendency of the rectification proceedings.

The petition also included an application requesting the Court to summon the complete record of the impugned registration from the office of the Registrar of Trade Marks to facilitate fair adjudication.

Upon hearing the matter, Hon’ble Justice Tejas Karia issued notice to both respondents — Mr. Ravinder Kumar (the private respondent) and the Registrar of Trade Marks (as the statutory respondent). The Central Government Standing Counsel accepted notice on behalf of the Registrar.

The respondent was directed to file a reply within four weeks, and the petitioner was allowed to file a rejoinder thereafter. Meanwhile, the Court proceeded to examine the petitioner’s interim application for a stay on the respondent’s mark.

Core Legal Dispute: The principal issue before the Court was whether the registration of the respondent’s trademark ‘KEEP DEEP - KD MASALE’ was valid and bona fide or whether it constituted an infringement upon the petitioner’s prior rights in the mark ‘KD’.

The case also raised critical questions of trademark law such as:Whether the respondent’s adoption of the impugned mark was honest or tainted by mala fide intent;Whether the impugned mark was deceptively similar to the petitioner’s registered and prior-used mark;Whether continued operation of the respondent’s registration would cause confusion and prejudice to the petitioner’s business;Whether the Registrar’s decision to register the mark contravened Sections 9(2)(a) and 11 of the Trade Marks Act, 1999.

Arguments on Behalf of the Petitioner:  Counsel for the petitioner argued that his client was the lawful proprietor of the trademark ‘KD’, being the assignee of the original registration (No. 1446270 in Class 30). The mark, they submitted, had been continuously and extensively used since 2003 and had acquired a strong reputation and distinctiveness in the market.

The petitioner’s mark ‘KD’ formed the dominant and essential feature of his packaging, labeling, and brand presentation under ‘KD Masale’. Because the respondent’s mark, ‘KEEP DEEP - KD MASALE’, prominently reproduced the same element ‘KD’ in identical font and structure, it was bound to create confusion among consumers.

It was also pointed out that the respondent’s application was filed in 2021, almost two decades after the petitioner’s adoption of the mark, and that it was made on a “proposed to be used” basis, demonstrating the absence of prior use. The petitioner alleged that the respondent’s adoption was not innocent but intentionally designed to mislead consumers and unfairly benefit from the goodwill of the ‘KD’ brand.

Citing Sections 9(2)(a) and 11 of the Trade Marks Act, counsel argued that registration of the impugned mark was in direct violation of statutory provisions, as it was both deceptive and confusingly similar to an existing registered mark. They further contended that balance of convenience and equity lay in favor of the petitioner since continued use of the impugned mark would irreparably harm his reputation and mislead the public.

Arguments on Behalf of the Respondents:  The respondent’s counsel was yet to file a formal written reply, but during oral submissions, the government counsel representing the Registrar accepted notice and agreed to furnish the complete record of the registration in question. The respondent’s position, as recorded, was that the petition would be contested, though no concrete rebuttal on merits was placed on record at this interim stage.

Judicial Reasoning and Analysis:  The Court nocied that the petitioner had produced ample evidence of use of the mark ‘KD’ since 2003, supported by documentary proof such as invoices, packaging labels, and promotional materials. The petitioner’s business, it was observed, was not limited to domestic operations but had extended internationally, thereby adding weight to his claim of distinctiveness and goodwill.

The Court further observed that the impugned mark ‘KEEP DEEP - KD MASALE’ reproduced the essential and dominant part of the petitioner’s mark — the letters ‘KD’. This similarity, both visually and phonetically, was likely to cause confusion among consumers in the same line of trade, especially because both parties operated in the same market segment (spices under Class 30).

The Court also considered the statutory framework under the Trade Marks Act, 1999. Section 9(2)(a) prohibits registration of marks that are likely to deceive or cause confusion, while Section 11 mandates refusal of registration if the mark is identical or deceptively similar to an earlier registered mark in respect of similar goods or services.

On this basis, the Court found that the respondent’s registration appeared prima facie to violate these provisions. The respondent’s mark was a subsequent adoption made in bad faith and lacked originality. The Court held that the balance of convenience was clearly in favor of the petitioner, as the potential for confusion in the marketplace was undeniable.

Court also observed that the petitioner had established both statutory rights (through registration and assignment) and common law rights (through long and continuous use), entitling him to protection even independent of registration. Allowing the respondent’s registration to remain in effect during pendency of the rectification petition would, therefore, cause irreparable harm to the petitioner and mislead the public.

In light of these findings, the Court exercised its equitable powers under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 to grant interim relief.

Decision:  The Court held that the petitioner had made out a strong prima facie case for protection of his mark and for suspension of the respondent’s registration. It observed that the impugned mark ‘KEEP DEEP - KD MASALE’ incorporated the petitioner’s dominant feature ‘KD’ and was likely to deceive the public and trade.

Consequently, the High Court of Delhi ordered that the operation and effect of the registration of the impugned mark (Application No. 4923053 in Class 30) be stayed until the next date of hearing. The Court concluded that the respondent’s registration was prima facie in violation of Sections 9(2)(a) and 11 of the Trade Marks Act, 1999.

Conclusion:  This case highlights how courts protect prior and bona fide trademark owners from deceptive and opportunistic registrations that attempt to capitalize on existing goodwill. The judgment also reinforces the dual protection afforded under Indian trademark law — both statutory and common law — and emphasizes the importance of continuous, consistent use in establishing proprietorship.

The Court’s reasoning affirms the principle that in matters of trademark disputes, the dominant feature test, likelihood of confusion, and intent of adoption are crucial determinants of judicial protection. The stay granted here safeguards both commercial integrity and consumer interest until a final determination is made.

Case Title: Sh. Ankit Batra, Proprietor of KD Industries Vs. Ravinder Kumar & Anr.

Case Number: C.O. (COMM.IPD-TM) 253/2025

Date of Order: 16 October 2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Mr. Justice Tejas Karia

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

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

Caledon Technologies India Pvt. Ltd. Vs State of Karnataka

Private complaint in non-compliance of Section 155(3) of Cr.P.C. is not maintainable

Factual Background: This case arose from a conflict between M/s Caledon Technologies India Pvt. Ltd. (the petitioners) and Mr. Ashish Koruth Philip (the complainant), concerning ownership and control over an online domain name — routesrezworld.com — and allegations of cyber fraud and data misuse.

The complainant, Mr. Philip, claimed that he personally purchased and registered the domain routesrezworld.com through GoDaddy.com on 28th October 2019, using his own HDFC Bank account, for a payment of ₹400.85. He alleged that the domain was never part of any intellectual property transfer agreement with the petitioners, as the agreements between the parties dated 7th February 2019 were executed before this domain even existed.

He further claimed that the petitioners later attempted to forcibly take control of his domain by changing passwords and credentials, misusing customer credit card data without authorization, and fraudulently operating the website for profit. The complainant alleged that this conduct violated PCI (Payment Card Industry) regulations and amounted to cybercrime.

On the other hand, the petitioners — a company engaged in technological and software services — contended that routesrezworld.com was, in fact, their lawful business asset, transferred to them under an Intellectual Property Purchase Agreement (IPR Agreement) and Service Bond Agreement executed between Mr. Philip’s former firm, StraightDrive Softlab LLP, and the petitioners. They asserted that the complainant’s claim was false and had already been settled through arbitration proceedings, where his rights over the disputed domain were conclusively determined.

Procedural Background:Following the complainant’s allegations, a First Information Report (FIR) dated 3rd May 2025 was registered by Surya Nagar Police Station, Bangalore, bearing Crime No. 0185/2025. The offences invoked included Sections 66, 66C, 66D, 84C, and 85 of the Information Technology Act, 2000, along with several provisions of the Bharatiya Nyaya Sanhita (BNS), 2023, including Sections 3(5), 308, 314, 316, 318, 319, 323, 351, 353, 45, and 61(2).

The petitioners, feeling aggrieved, approached the High Court of Karnataka under Section 482 of the Code of Criminal Procedure, 1973 (now Section 528 of the Bharatiya Nagarik Suraksha Sanhita, 2023), seeking to quash the FIR on grounds that the dispute was purely civil and commercial, not criminal in nature. They argued that the matter had already been adjudicated in arbitration, where the complainant’s claim was rejected, and thus, the continuation of criminal proceedings amounted to abuse of process of law.

Core Dispute:The central question before the Court was whether the FIR and criminal proceedings initiated against the petitioners amounted to misuse of criminal law to re-litigate a commercial dispute that had already been conclusively decided in arbitration.

Closely tied to this was the question of ownership over the domain routesrezworld.com: whether it belonged personally to Mr. Philip or was part of the intellectual property assets acquired by M/s Caledon Technologies India Pvt. Ltd. under the IPR Agreement.

Arguments on Behalf of the Petitioners: The petitioners argued that the complaint was baseless, malicious, and filed to harass them after losing in arbitration. They produced documents such as the Intellectual Property Purchase Agreement and Service Bond Agreement dated 7th February 2019, which explicitly transferred all technological assets, software programs, and related intellectual property from the complainant’s former firm to the petitioners.

They relied heavily on the arbitration award, which had already restrained the complainant from using or interfering with the domain name routesrezworld.com and the associated trademark Caledonrez. This award had attained finality, and thus, the issue was no longer open to criminal proceedings.

The petitioners also presented email communications from November 2019 and January 2020, showing that the complainant himself had acknowledged the domain as belonging to the company and had sought permission from the company’s directors regarding its use. They further contended that although the initial domain payment was made by the complainant, the company had later reimbursed him, and therefore the domain was purchased for business, not personal use.

They also raised a procedural challenge under the Bharatiya Nagarik Suraksha Sanhita (BNSS), 2023, arguing that the private complaint was invalid because the complainant failed to comply with Section 173(1) and (4) of the BNSS, which require prior intimation to the Superintendent of Police before filing a private complaint. Lodging a report on the cybercrime online portal, they argued, did not satisfy this legal requirement, since the portal was not recognized as a “police officer” or “police station” under the law.

Arguments on Behalf of the Respondent (Complainant): The complainant, argued that the domain was personally purchased by Mr. Philip in October 2019 and therefore was not part of the earlier IPR transfer. She emphasized that the payment for the domain and its four-year renewal was made entirely from his personal HDFC account, and documentary evidence of such transactions was submitted.

She contended that the company later hacked into his GoDaddy account, altered credentials, and gained unauthorized control over the domain, thereby committing offences under the Information Technology Act, 2000.

Regarding the procedural objections, she submitted that the filing of a complaint through the cybercrime portal constituted substantial compliance with the requirement of reporting to police under Section 155(3) CrPC (now Section 173 BNSS). Reliance was placed on Supreme Court rulings in S.N. Vijayalakshmi v. State of Karnataka (2025 INSC 917) and Siddartha v. State of Karnataka (Criminal Appeal Nos. 1044-46/2022), where the Court recognized flexibility in procedural compliance when substantial justice required it.

Judicial Analysis and Reasoning: The court examined the Intellectual Property Purchase Agreement (IPR Agreement) between the parties. Clause 8(a) of the Agreement made it clear that all intellectual property, including software programs, web interfaces, and related technological developments, vested solely in the purchaser — M/s Caledon Technologies India Pvt. Ltd. The clause explicitly prohibited the creator (Mr. Philip) from holding or using any copies of source codes or related data, and Clause 8(b) obligated him to execute further documents to give full effect to this transfer.

The Court concluded that, by this clause alone, the ownership of all intellectual property — including domains developed for the company’s business — rested with the petitioner company.

Next, the Court turned to the arbitral award, which had directly addressed the issue of domain ownership. Paragraph 66 of the arbitral award categorically stated that the complainant (Mr. Philip) was restrained from interfering with the domain routesrezworld.com and the trademark Caledonrez, both of which were declared to be the exclusive property of the petitioner company. The arbitrator had also prohibited the complainant from engaging in competing business activities or operating similar websites.

Based on this finding, the Court held that the issue of ownership had already been conclusively determined in arbitration and could not be reopened through a criminal complaint. Allowing the complaint to proceed, the judge observed, would amount to “re-litigation of a settled civil dispute through criminal law machinery,” which is impermissible.

The Court then analyzed the complainant’s argument about personal payment for the domain. Documentary evidence, including emails from 2019 and 2020, revealed that the complainant had acknowledged the company’s ownership of the platform and discussed rebranding the site under the name Caledonrezworld. Furthermore, the company had reimbursed him for the domain registration expenses, reinforcing the conclusion that the domain was acquired for business use, not personal use.

On the procedural aspect, the Court emphasized that merely filing a complaint on the cybercrime portal does not constitute compliance with Section 155(3) CrPC or Section 173 BNSS. The online portal is not equivalent to a “police officer” or a “police station” under statutory definitions. Therefore, the private complaint filed without following this legal procedure was not maintainable.

Citing the principle that criminal law should not be used as a tool to settle business or contractual disputes, the Court reiterated the settled law from State of Haryana v. Bhajan Lal (1992 Supp (1) SCC 335) that where allegations predominantly involve a civil nature, the High Court should exercise its inherent powers under Section 482 CrPC to prevent abuse of the judicial process.

Final Decision:  The Court concluded that the dispute between the parties was purely civil and commercial in nature, having already been settled through arbitration. The FIR, therefore, was an abuse of process. The complaint did not disclose the essential ingredients of any offence under the Information Technology Act or the BNS, 2023.

Accordingly, the High Court allowed the criminal petition and quashed the FIR dated 3rd May 2025 (Crime No. 0185/2025) registered at Surya Nagar Police Station for alleged offences under Sections 66, 66C, 66D, 84C, and 85 of the IT Act, and multiple sections of the BNS, 2023, as against the petitioners. The court concluded by reaffirming that criminal law cannot be invoked to settle contractual or proprietary disputes that have already been adjudicated by a competent arbitral forum.

Case Title: Caledon Technologies India Pvt. Ltd. & Ors. Vs. State of Karnataka & Anr.

Neutral Citation: 2025:KHC:43558

Case Number: Criminal Petition No. 7222 of 2025

Order Date: 30th October 2025

Court: High Court of Karnataka at Bengaluru

Coram: Hon’ble Mr. Justice Sachin Shankar Magadum

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