Glorious Investment Limited Vs. Dunlop International Limited

Bar on Intra-Court Appeals in IPD Cases

Facts: Glorious Investment Limited had filed an application before the Deputy Registrar of Trademarks for registration of the trademark “DUNLOP” under the provisions of the Trade Marks Act, 1999. Dunlop International Limited opposed this application, claiming prior rights and goodwill in the mark. Despite the objection, the Deputy Registrar, by order dated July 4, 2024, allowed Glorious Investment Limited’s application and permitted registration of the mark “DUNLOP.”

Dunlop International Limited, being aggrieved, preferred an appeal under Section 91 of the Trade Marks Act, 1999 before the Single Judge of the Intellectual Property Rights Division (IPD) of the Calcutta High Court. The learned Single Judge, by an order dated June 11, 2025, set aside the order of the Deputy Registrar and remanded the matter for reconsideration after granting both parties a fresh opportunity of hearing.

Feeling dissatisfied, Glorious Investment Limited filed the present appeal before the Division Bench of the Calcutta High Court, contending that such a second appeal was maintainable under the Letters Patent and the Calcutta High Court Intellectual Property Division Rules, 2023.

Procedural Background: The sequence of proceedings began with the registration application before the Deputy Registrar of Trademarks, followed by an appeal under Section 91 of the Trade Marks Act, 1999, before the Single Judge of the High Court, and finally culminated in the present appeal before the Division Bench (Commercial Appellate Division) of the same High Court.

The essential procedural question before the Bench was whether an intra-court (Letters Patent) appeal would lie from an order passed by a Single Judge in an appeal filed under Section 91 of the Trade Marks Act, 1999.

The central issue was purely legal:Can a second appeal (intra-court appeal) be maintained before a Division Bench against an order passed by a Single Judge under Section 91 of the Trade Marks Act, 1999?  This question required the court to interpret the interplay between Section 91 of the Trade Marks Act, 1999, Section 100A of the Code of Civil Procedure, 1908, and the Intellectual Property Rights Division Rules, 2023 of the Calcutta High Court.

Arguments On behalf of the Respondent No. 1 (Dunlop International Limited): Respondent No.1 argued that this appeal was effectively a second appeal, which was barred by Section 100A of the Code of Civil Procedure, 1908. According to him, once a Single Judge had exercised appellate jurisdiction under Section 91, no further appeal could lie, even under the Letters Patent. He referred to multiple provisions of the Trade Marks Act—Sections 18, 20, 21, 23, and 91—to show the hierarchical stages and absence of a provision for a second appeal. He relied on Supreme Court precedents such as Kamal Kumar Dutta v. Ruby General Hospital Ltd. (2006) 7 SCC 613, P.S. Sathappan v. Andhra Bank Ltd. (2004) 11 SCC 672, Vasanthi v. Venugopal (2017) 4 SCC 723, and the Delhi High Court Full Bench judgment in Avtar Narain Behal v. Subhash Chander Behal (ILR 2009 II Delhi 411).He further contended that Rule 2(o) of the Calcutta High Court Intellectual Property Division Rules, 2023 does not contemplate a second appeal against an appellate order of a Single Judge.

On behalf of the Respondent No. 2 (Deputy Registrar of Trademarks):He relied on Section 97 of the Trade Marks Act to show that appeals are limited to original orders, not appellate orders, and maintained that the Rules also did not envisage a further appeal.

On behalf of the Appellant (Glorious Investment Limited): Appellant argued that Section 100A of the Code applies only when a Single Judge hears an appeal from a Civil Court. Since the Registrar of Trademarks is not a Civil Court, the bar under Section 100A does not apply. He argued that Rule 4 and Rule 5 of the IPD Rules expressly provide for appeals before the Division Bench from orders passed by Single Judges in intellectual property matters. He relied heavily on the Division Bench judgment of the Delhi High Court in Promoshirt SM SA v. Armassuisse (2023 SCC OnLine Del 5531), and Resilient Innovations Pvt. Ltd. v. PhonePe Pvt. Ltd. (2023 SCC OnLine Del 2972), both of which held that intra-court appeals remain maintainable in such circumstances.

Judicial Reasoning and Analysis:The Court first revisited the classic judgment of the Supreme Court in National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (1953) 1 SCC 794, where it was held that once a statute provides an appeal to the High Court, that appeal must follow the procedural framework of the High Court, including the availability of a further appeal under the Letters Patent, unless specifically barred.

However, the Calcutta High Court noted that Section 100A of the Code of Civil Procedure, which was inserted later, creates such a bar. The Court observed that Section 100A clearly prohibits a further appeal from a decision of a Single Judge exercising appellate jurisdiction from an original or appellate decree or order.

The key question then became whether the Registrar of Trademarks could be considered a Civil Court and whether his decisions amounted to “orders” within the meaning of Section 100A.

The Court conducted a detailed examination of Section 127 of the Trade Marks Act, 1999, which provides that the Registrar has powers akin to a Civil Court, such as summoning witnesses, receiving evidence, and issuing commissions. The Bench compared these powers with those conferred upon the Company Law Board (CLB) under Section 10E of the Companies Act, 1956, which the Supreme Court had held in Kamal Kumar Dutta (supra) to possess “all the trappings of a Court.”

Following this analogy, the Bench concluded that the Registrar of Trademarks exercises quasi-judicial powers that carry “all the trappings of a Court.” Therefore, an appeal under Section 91 from the Registrar’s order before a Single Judge constitutes a first appeal, and any further appeal from that decision would amount to a second appeal, which is expressly barred by Section 100A of the Code.

The Court also observed that the Trade and Merchandise Marks Act, 1958, which preceded the 1999 Act, specifically provided for a second appeal (under Section 109(5)), but this provision was consciously omitted in the new Act. Such legislative deletion clearly demonstrated the legislative intent to limit appeals to a single level.

The Court distinguished the Delhi High Court’s decision in Resilient Innovations (PhonePe case) on the ground that it dealt with an original proceeding under Section 57 (Rectification), whereas the present case arose from an appellate order under Section 91, to which Section 100A squarely applies.

Further, the Division Bench noted that even within the Calcutta High Court, a similar approach had been followed earlier in The Assistant Controller of Patents and Designs v. Vishnuprasad Mohanlal Panchal (2016 SCC OnLine Cal 10988), where a Letters Patent appeal from a Single Judge’s order under the Designs Act, 2000 was dismissed on the same reasoning.

Decision: After examining all authorities and statutory provisions, the Division Bench held that the present appeal was not maintainable. The Bench emphasized that Section 100A of the Code of Civil Procedure bars such intra-court appeals from orders of Single Judges passed in appellate jurisdiction. Accordingly, the Division Bench dismissed TEMPAPO–IPD 5 of 2025 as not maintainable, along with the connected application GA–COM 1 of 2025, without any order as to costs.

Law Settled: This judgment settles the position that no intra-court appeal lies under the Letters Patent or under the IPD Rules of the Calcutta High Court from an order of a Single Judge passed under Section 91 of the Trade Marks Act, 1999. The bar under Section 100A of the Code of Civil Procedure squarely applies to such matters because the Registrar of Trademarks possesses all the trappings of a Civil Court, and hence, any appeal from his order before a Single Judge amounts to a first appeal, making a subsequent appeal impermissible.

This decision aligns the Calcutta High Court’s position with the principle laid down by the Supreme Court in Kamal Kumar Dutta v. Ruby General Hospital Ltd. (2006) 7 SCC 613, distinguishing the Delhi High Court’s contrary view in Promoshirt SM SA v. Armassuisse (2023 SCC OnLine Del 5531).

Case Title: Glorious Investment Limited Vs. Dunlop International Limited & Anr.

Case No.: TEMPAPO–IPD 5 of 2025

Date of Order: November 4, 2025

Court: High Court at Calcutta 

Coram: Hon’ble Justice Arijit Banerjee and Hon’ble Justice Om Narayan Rai

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

Siddiqua Begum Khan Vs Union of India

Posthumous Privacy and Cinematic Freedom

Factual Background:The case arises out of a legal challenge filed by Ms. Siddiqua Begum Khan, the daughter and surviving legal heir of the late Smt. Shah Bano Begum. The petitioner sought to restrain the release, promotion, and exhibition of a Hindi feature film titled “Haq”, which was scheduled for release on 7th November 2025. The film claimed to be inspired by the historical Shah Bano case — Mohammad Ahmed Khan v. Shah Bano Begum, (1985) 2 SCC 556 — a landmark Supreme Court decision that became a pivotal moment in Indian constitutional and personal law discourse.

According to the petitioner, the film was a dramatized portrayal of the personal and matrimonial life of her deceased mother, Shah Bano Begum, without her knowledge or consent. The teaser and trailer, released on 23rd September and 23rd October 2025 respectively, allegedly sensationalized her mother’s personal experiences, depicting them inaccurately and exploiting her image for commercial purposes. The petitioner issued a legal notice on 6th October 2025 calling upon the producers to halt release, but the respondents refused, replying on 14th October 2025 that the film was fictional. This prompted the petitioner to approach the High Court under Article 226 of the Constitution of India, seeking judicial intervention.

Procedural History:The writ petition was heard by the Madhya Pradesh High Court, Indore Bench. The petitioner was represented by Advocate Shri Tousif Warsi. Respondent No. 1, the Union of India, was represented by the Deputy Solicitor General, Shri Romesh Dave. Respondent No. 3, one of the producers, was represented by Shri H.Y. Mehta with Shri Chinmay Mehta. Senior Advocate Shri Ajay Bagadia appeared for Respondent No. 5, another production entity involved in the film.

The matter was heard finally with the consent of the parties, considering the film’s imminent release. The Central Board of Film Certification (CBFC) had already granted a UA 13+ certificate on 28th October 2025.

Core Dispute:The primary dispute centered on whether the film “Haq”, inspired by the Shah Bano case, violated the right to privacy, dignity, and reputation of the deceased Shah Bano Begum and whether her legal heir — the petitioner — could claim to have inherited such posthumous rights. The petitioner contended that dramatizing private aspects of her late mother’s life amounted to a violation of Article 21 of the Constitution, and that the CBFC had failed to discharge its statutory duties by certifying the film without ensuring consent from legal heirs.

The respondents, on the other hand, defended the film as a fictional and dramatized adaptation of the English book “Bano: Bharat ki Beti” by journalist Jigna Vora, inspired by the spirit of the Shah Bano judgment, not its factual accuracy. They argued that personality rights and privacy cease upon a person’s death and that freedom of artistic expression under Article 19(1)(a) of the Constitution protected their work.

Arguments of the Petitioner: The petitioner argued that releasing the film without her consent infringed her mother’s right to privacy, dignity, and reputation, protected under Article 21. She relied on several precedents to assert that unauthorized portrayal of private life constituted a legal wrong. They relied on the following Judgements:  K.S. Puttaswamy v. Union of India (2017) 10 SCC 1 – recognizing privacy as a facet of the right to life,R. Rajagopal v. State of Tamil Nadu (1994) 6 SCC 632 – on limits of media publication of private life,Khushwant Singh v. Maneka Gandhi (2002) 4 SCC 30 – balancing free speech with individual reputation,Phoolan Devi v. Shekhar Kapoor 1994 SCC OnLine Del 788 – where depiction of a living person’s life in film required consent,Titan Industries Ltd. v. Ramkumar Jewellers (2012) 50 PTC 486 (Del) – concerning personality and publicity rights, The petitioner emphasized that her late mother’s life, although connected to a public judgment, remained largely private and not intended for commercial dramatization.

Arguments of the Respondents: Respondents No. 3 and 5 (the producers) countered that the film did not depict Shah Bano’s real life but was a fictional story inspired by the judgment and a literary work. They maintained that personality rights and privacy end with death, hence no legal heir can inherit such rights. They invoked the fundamental right of freedom of expression under Article 19(1). They also cited the following authorities:Babuji Rawji Shah v. S. Hussain Zaidi (2023) 20 SCC 660,R. Rajagopal v. State of Tamil Nadu (1994) 6 SCC 632,R.G. Anand v. Delux Films (1978) 4 SCC 118 – distinction between inspiration and copying,Viacom 18 Media Pvt. Ltd. v. Union of India (2018) 1 SCC 761 – presumption of validity of CBFC certification,Priya Singh Paul v. Madhur Bhandarkar (2018) 13 SCC 438 – protection of creative freedom,Deepa Jayakumar v. A.L. Vijay 2021 SCC OnLine Mad 2642 – holding that privacy and reputation end with death,Krishna Kishore Singh v. Sarla A. Saraogi 2023 SCC OnLine Del 3997 – similar ruling in the Sushant Singh Rajput film dispute.They further contended that the petitioner delayed filing the writ petition until just six days before the film’s release despite being aware of its production since early 2024.

Judicial Reasoning and Analysis: Court examined the submissions and judicial precedents, approaching the dispute through three major questions:

1. Whether the right to privacy, dignity, or reputation survives the death of an individual and can be inherited.2. Whether a dramatized film inspired by public records violates any existing legal right of a deceased person or their heirs.3. Whether the High Court could interfere when an alternate statutory remedy under Section 5-E of the Cinematograph Act, 1952 was available.

The Court first noted that the right to privacy, as recognized in K.S. Puttaswamy v. Union of India (2017), is a natural and inalienable right that exists only during a person’s lifetime. Quoting paragraph 557 of that judgment, it held that privacy “is born with the human being and extinguishes with the human being.”

Referring to Deepa Jayakumar v. A.L. Vijay (AIR 2021 Mad 167), the Court emphasized that privacy and reputation cannot be inherited like movable or immovable property. Once a person dies, their right to control representation of their personality ceases. This principle was reaffirmed by the Delhi High Court in Krishna Kishore Singh v. Sarla A. Saraogi (2023 SCC OnLine Del 3997), concerning depiction of a deceased celebrity.

Applying these principles, Justice Verma held that since Shah Bano was no longer alive, her right to privacy and reputation could not be claimed by her daughter. The petitioner also failed to show how her own rights were violated by the film.

The Court then examined the disclaimer attached to the film, which clearly stated that the film was a “dramatized and fictionalized adaptation” inspired by the Shah Bano judgment and the book Bano: Bharat Ki Beti, disclaiming any authenticity or factual accuracy. It also declared that any resemblance to real persons was purely coincidental. Given this, the Court found that the film did not claim to depict actual events or individuals, and therefore could not be said to have fabricated facts about the petitioner’s family.

Justice Verma further referred to R. Rajagopal v. State of Tamil Nadu (1994) 6 SCC 632, where the Supreme Court held that once information becomes a matter of public record — including court judgments — it ceases to be private and may be freely discussed or dramatized. Since the Shah Bano judgment is part of public record and extensively debated for decades, the Court held that using it as inspiration does not infringe privacy.

The Court also noted that the CBFC, having issued a valid UA certificate, is presumed to have followed due process. Following Viacom 18 Media Pvt. Ltd. v. Union of India (2018) 1 SCC 761, the High Court observed that certification carries a presumption of legality unless procedural irregularity is shown, which was not the case here.

Additionally, the Court emphasized that an effective alternate remedy existed under Section 5-E of the Cinematograph Act, allowing the petitioner to seek revocation or suspension of the certificate through the Central Government. Her direct approach under Article 226 without availing this remedy was therefore not maintainable.

Lastly, the Court observed that the petitioner’s conduct lacked vigilance, as she waited until the eve of the film’s release to file the petition despite being aware of its making for more than a year. Hence, the writ petition also suffered from delay and laches.

Decision: After a detailed consideration of facts, arguments, and precedents, the High Court dismissed the writ petition. It held that:

1. The right to privacy, dignity, or reputation of Shah Bano Begum ceased upon her death and was not inheritable.

2. The film “Haq” was a fictionalized work inspired by public records and literary material, and did not violate any existing right of the petitioner.

3. The CBFC’s certification carried legal presumption of validity, and the petitioner had an alternate statutory remedy that she failed to pursue.

4. The petition suffered from unexplained delay and laches.

Accordingly, the petition was found devoid of merit and dismissed by the Hon’ble Court on 4th November 2025.

Law Settled: This judgment reinforces an emerging judicial consensus that privacy and personality rights are non-heritable and extinguish with death. It also underscores the freedom of artistic and creative expression as long as fictionalization and disclaimers clearly separate fact from dramatization. Moreover, it reaffirms that certification by the CBFC enjoys statutory presumption of legality and that parties must first exhaust remedies under the Cinematograph Act before invoking writ jurisdiction.

Case Title: Ms. Siddiqua Begum Khan v. Union of India & Others

Case Number: Writ Petition No. 42708 of 2025

Neutral Citation: 2025:MPHC-IND:32075

Date of Order: 4th November, 2025

Court: High Court of Madhya Pradesh, Bench at Indore

Coram: Hon’ble Shri Justice Pranay Verma

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

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