Ferrero Spa & Ors. Vs . Abhimanyu Prakash

Supply Chain Liability in Counterfeit Markets:

Introductory Note:This case concerns the global confectionery brand Ferrero Spa, the manufacturer and trademark owner of the iconic hazelnut cocoa spread sold under the well-known brand NUTELLA, and its legal action against entities engaged in manufacturing and distributing empty glass jars deceptively similar to the original Nutella jars. The dispute arose when Ferrero discovered that the defendants were selling look-alike Nutella jars, thereby facilitating counterfeiting and causing damage to the brand’s trademark, goodwill, and market reputation. The Delhi High Court examined not only the aspect of trademark infringement but also whether the circumstances warranted awarding damages and legal costs in addition to a permanent injunction.

Factual Background:Ferrero Spa and its associated plaintiffs are part of the world-renowned Ferrero Group, established in 1946, and they launched the NUTELLA brand in 1964 along with the exclusive configuration of the Nutella glass jar consisting of a unique shape, logo and trade dress. The plaintiffs have maintained uninterrupted usage of these trademarks internationally and in India for over five decades, and hold multiple registrations including registration of the shape of the Nutella jar itself.

The plaintiffs discovered in October 2022 that defendants 1 to 3, based in Firozabad, were manufacturing and selling empty glass jars identical to Nutella jars on online platforms, including IndiaMart and the website of defendant no. 4. The jars were marketed using the product description "Nutella glass jars", and carried embossing identical to those recovered in earlier cases concerning counterfeit Nutella products. The plaintiffs contended that the defendants were knowingly aiding the counterfeit market by supplying these jars.

Procedural History:The suit was instituted as CS(COMM) 65/2023, and ex-parte ad-interim injunctions were granted on 06.02.2023 and 08.02.2023 restraining defendants from dealing in Nutella glass jars. Local Commissioners were appointed and seized 3,05,916 infringing jars from the premises of defendants 1 to 3.

Defendants first opposed the claims and filed written statements; however, in August 2025 they conceded to the plaintiffs’ proprietary rights and did not contest the grant of permanent injunction. Mediation was attempted but failed. Plaintiffs thereafter filed an application seeking summary judgment under Order XIII-A CPC. Damages and legal costs were pressed only against defendants 1 to 3 and not against defendant 4.

Core Dispute:The core dispute before the Court was not whether the defendants were infringing the plaintiff’s trademarks, because the defendants ultimately did not contest this point. The question before the Court was whether the plaintiffs were entitled to monetary damages and litigation costs in addition to permanent injunction, and whether defendants could seek protection as “first-time innocent infringers”. The Court had to evaluate whether the facts attracted compensatory or punitive remedies under intellectual property jurisprudence.

Detailed Reasoning: The Court began by confirming that the plaintiffs possess registered proprietary rights in the Nutella trademarks and the registered shape mark of the Nutella jar. The defendants were found to have sold empty glass jars in sizes identical to those of the plaintiffs and marketed them online as “Nutella glass jars”. The Local Commissioners found over three lakh such jars, which defendants did not dispute.

When defendants later chose not to contest the injunction, the scope of dispute was narrowed to damages and legal costs. The Court examined whether the circumstances justified relief under Order XIII-A CPC, which empowers commercial courts to decide disputes summarily where the defendant has no real prospect of defending the case. The Delhi High Court relied on the earlier judgment in Su-Kam Power Systems Ltd. v. Kunwer Sachdev to reiterate that trials are not mandatory where evidence and pleadings provide sufficient material to adjudicate.

To determine damages, the Court considered Rule 20 of the Delhi High Court IPR Division Rules 2022, which allows the Court to award compensatory, exemplary, or punitive damages in intellectual property cases based on the nature of infringement. The plaintiffs calculated the defendants’ turnover of empty jars at more than ₹18 crore and the market value of counterfeit finished products at ₹533 crore to justify damages of ₹53 crore. However, the Court noted that these calculations were not pleaded earlier and there was no direct evidence linking the defendants to sale of counterfeit Nutella products, even though the embossing on jars created suspicion.

The Court rejected the defendants' plea of being “first-time innocent infringers”. The Court reasoned that the manufacturing process, the email containing jar specifications labelled “Nutella cocoa jar”, online product descriptions, and the large scale of production showed that defendants knowingly infringed, thereby distinguishing this case from Koninlijke Philips v. Amazestore and Aero Club v. Sahara Belts, where defendants demonstrated bona-fide conduct.

However, the absence of proof that defendants were involved in selling counterfeit finished products prevented the Court from accepting the ₹53 crore damages claim. To balance deterrence with fairness, the Court decided not to undertake a detailed turnover estimation. Instead, it adopted an equitable principle: awarding partial legal costs and depriving defendants of the large stock of infringing inventory seized from their premises. This approach both punishes deliberate infringers and prevents unjust enrichment.

Decision:The Delhi High Court decreed the suit in favour of the plaintiffs and granted permanent injunction restraining all defendants from manufacturing, offering for sale or selling Nutella glass jars or any similar product. Defendants 1 to 3 were directed to deliver all seized jars to the plaintiffs within two weeks, allowing plaintiffs to dispose of them as desired, including charitable use under CSR. All remaining infringing packaging was ordered to be destroyed under supervision.

Defendants 1 to 3 were directed to pay ₹10 lakh towards legal costs within four weeks, failing which interest at 12% per annum would apply. Damages for counterfeiting finished products were not granted due to lack of supporting evidence. Relief regarding declaration of Nutella as a “well-known mark” was reserved for separate proceedings.

Concluding Note:This judgment demonstrates the evolving approach of Indian commercial courts toward intellectual property disputes. The decision reflects a balanced path: strict protection of proprietary rights with remedies tailored to the degree and nature of infringement. While the Court did not award astronomical damages without concrete evidence, it still ensured deterrence by granting permanent injunction, substantial legal costs, and forfeiture of infringing inventory worth more than ₹62 lakh. The judgment reinforces that ignorance cannot be claimed where infringement is knowing and deliberate. It emphasises that intermediaries supporting counterfeit supply chains, even indirectly, cannot escape legal responsibility.

Case Title: Ferrero Spa & Ors. Vs. Abhimanyu Prakash & Ors.

Case Number: CS(COMM) 65/2023

Order Date: 19 November 2025

Neutral Citation: 2025:DHC:10308

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Justice Manmeet Pritam Singh Arora

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

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

=====

Ferrero Spa & Ors. Vs . Abhimanyu Prakash & Ors., CS(COMM) 65/2023, Decided on 19 November 2025, by Hon'ble Justice Manmeet Pritam Singh Arora, High Court of Delhi

In a significant move strengthening trademark and trade dress protection in India, the Delhi High Court has permanently restrained the defendants from manufacturing and selling empty glass jars deceptively similar to the iconic Nutella jar owned by Ferrero Spa. The Court held that the defendants were knowingly producing and marketing look-alike “Nutella glass jars” without authorization and offering them for sale online, resulting in clear infringement of Ferrero’s registered trademarks.

The Court noted that over 3,05,000 infringing empty glass jars were seized from the defendants during court-appointed raids. The defendants, after initial resistance to the suit, later conceded to the permanent injunction. While Ferrero sought substantial damages, including loss based on counterfeit finished products, the Court found no direct evidence linking the defendants to the sale of counterfeit Nutella goods. However, the Court held that the defendants could not be treated as “innocent first-time infringers” given their deliberate imitation and commercialization of the Nutella jar design.

Consequently, the Court not only made the injunction absolute but also imposed partial legal costs of ₹10 lakhs upon defendants 1 to 3 and directed them to hand over the entire stock of seized infringing jars to Ferrero within two weeks, warning that failure to pay costs within four weeks would attract 12% interest per annum.

The ruling is notable for applying the summary judgment mechanism under Order XIII-A CPC along with Rule 20 of the Delhi High Court IPD Rules, 2022, to grant timely relief without a full trial, reinforcing judicial intolerance toward deliberate trade dress imitation and its role in facilitating counterfeit markets.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi.

Madras Bar Association versus Union of India

Constitutional Supremacy Over Parliamentary Persistence

Inroductory Note:This is the latest chapter in the long-running legal battle between the Madras Bar Association and the Government of India over how tribunals should be set up and run in our country. Tribunals are special courts created by laws to decide specific kinds of disputes quickly – like tax cases, company matters, labour disputes, consumer complaints, intellectual property issues, and many others – so that regular courts are not overloaded. Over the last forty years the Supreme Court has repeatedly told the government that these tribunals must be truly independent, free from government control in appointments, salary, tenure, and day-to-day working, because they perform judicial functions almost like courts. 

 Factual Background:  The government brought the Tribunals Reforms Act, 2021, which fixed a minimum age of fifty years for appointment, gave only four years tenure instead of five, allowed the government to choose from a panel of two names instead of one, tied house rent allowance to ordinary government officers’ rates, and used strong “notwithstanding any judgment” clauses to override earlier Supreme Court orders. The Madras Bar Association challenged this law saying it was almost exactly the same as the 2021 Ordinance that the Supreme Court had already struck down just a few months earlier. They argued that Parliament cannot simply re-enact something the Court has declared unconstitutional without removing the defects. A Constitution Bench of the Supreme Court heard the matter and on 19 November 2025 delivered a powerful judgment upholding the independence of tribunals and striking down the most objectionable parts of the 2021 Act.

Procedural Detail:The lead case was Writ Petition (Civil) No. 1018 of 2021 filed by the Madras Bar Association directly in the Supreme Court under Article 32. Another connected petition was Writ Petition (Civil No. 626 of 2021.  During the hearing the Attorney General requested that the matter be referred to a larger bench saying the earlier judgments needed reconsideration. The Court rejected that request because the issues had already been settled by larger benches earlier. 

Core Dispute:The heart of the dispute was very simple – can Parliament ignore repeated Supreme Court directions about how tribunals should be run and pass a law that directly goes against those directions? The Court had said again and again – in 2010, 2014, 2015, 2020, 2021, and 2022 – that tribunal members must get at least five years tenure, advocates with ten years practice must be eligible, there must be no minimum age of fifty years, house rent allowance must be generous so that members do not feel financially insecure, the selection committee must be judiciary-dominated, and only one name should be recommended for each post so that the government cannot pick and choose. The 2021 Act brought back the very same provisions that had been struck down earlier – four-year tenure, fifty years minimum age, panel of two names, ordinary government-scale house rent allowance, and even added clauses saying “notwithstanding any judgment of any court”. The petitioners said this was nothing but an attempt to overrule the Supreme Court by legislation, which is not allowed in our Constitution. The government replied that Parliament has full power to make laws on tribunals and the Court cannot dictate the content of the law.

Detailed Reasoning : The Court began with a beautiful quote from Dr B R Ambedkar in the Constituent Assembly that every organ of the State – legislature, executive and judiciary – must respect its own limits and obey the Constitution and the decisions of the authority created to settle disputes between them, which is the Supreme Court. The Court said India does not have parliamentary sovereignty like England we have constitutional supremacy meaning no one, not even Parliament, is above the Constitution.

The Court then carefully examined the entire history of tribunal cases. It discussed S P Sampath Kumar v Union of India (1987) 1 SCC 124 where the Court first allowed tribunals but said they must be equal to High Courts in independence. Then R K Jain v Union of India (1993) 4 SCC 119 which said tribunals must have judicial outlook. The landmark L Chandra Kumar v Union of India (1997) 3 SCC 261 declared that judicial review by tribunals cannot take away the power of judicial review of High Courts and Supreme Court and that judicial review is part of the basic structure of the Constitution. 

Then came Union of India v R Gandhi President Madras Bar Association (2010) 11 SCC 1 popularly called Madras Bar-I where the Court laid down detailed conditions for company law tribunals – five-year tenure, judicial dominance in selection, no government officers on deputation, etc. Madras Bar Association v Union of India (2014) 10 SCC 1 called Madras Bar-II struck down the National Tax Tribunal Act completely because it gave too much power to the executive. Madras Bar Association v Union of India (2015) 8 SCC 583 Madras Bar-III corrected defects in the Companies Act tribunals. Rojer Mathew v South Indian Bank Ltd (2020) 6 SCC 1 struck down the Tribunal Rules of 2017 because the executive had majority in selection committees and suggested a National Tribunals Commission. 

Then came the most important recent judgments – Madras Bar Association v Union of India (2021) 7 SCC 369 called Madras Bar-IV where a five-judge bench struck down the Tribunal Reforms Ordinance 2021 provisions of four-year tenure and fifty years age and directed five-year tenure, generous house rent allowance, single name recommendation, etc. Just a year later in Madras Bar Association v Union of India (2022) 12 SCC 455 the Court again struck down attempts to reintroduce the same provisions.

The Court pointed out that despite all these clear judgments the government brought the Tribunals Reforms Act 2021 with almost identical provisions. The Court said this is not just non-compliance it is a direct attempt to legislatively overrule binding judicial decisions which is not permissible. 

The Court relied on several important cases to say that once the Supreme Court declares the law under Article 141 or issues directions under Article 142 or Article 32 the legislature cannot nullify them by ordinary legislation without removing the basis of the judgment. 

Important cases cited were Property Owners Association v State of Maharashtra (2000) where legislation trying to overcome a judgment was struck down NHPC Ltd v State of Himachal Pradesh 2023 INSC 810 Dr Jaya Thakur v Union of India 2023 SCC OnLine SC 813 and many others. 

The Court said when Parliament re-enacts a struck-down provision without curing the constitutional defects it shows a form of “constitutional disobedience”.

On the minimum age of fifty years the Court said it is completely arbitrary. A brilliant advocate of forty-four years with twenty years experience becomes ineligible but a fifty-year-old bureaucrat with no court experience becomes eligible. There is no rational reason for this cut-off. It violates Article 14 equality. 

On four-year tenure the Court said short tenure makes members insecure and dependent on the government for reappointment which destroys independence. Five years is the minimum needed for attracting good talent. 

On the panel of two names the Court said it gives the government a chance to pick their favourite and reject the other which again affects independence. On house rent allowance the Court said tribunal members must get proper accommodation or high HRA so they do not feel financially insecure compared to judges. Tying it to ordinary government rates defeats that purpose.

The Court rejected the Attorney General’s plea to send the case to a larger bench saying all issues have already been settled by earlier larger benches and there is no new substantial question of law.

Decision:The Supreme Court struck down the following provisions of the Tribunals Reforms Act 2021 the minimum age requirement of fifty years the four-year tenure provision the requirement of sending a panel of two names instead of one and the provisions tying house rent allowance to ordinary government scales. 

The Court upheld only the transitional provision that allowed members appointed between 2017 and 2021 to get up to five years if their original appointment letter said so. The Court directed the government to immediately set up a National Tribunals Commission as an independent body to handle all tribunal appointments and administration. Till then a separate Tribunals Wing should be created in the Ministry of Law not Finance. 

The Court also restored all the directions given in the 2021 Madras Bar judgment – five-year tenure, eligibility of advocates with ten years practice, high house rent allowance of ₹1.5 lakh and ₹1.25 lakh per month, judiciary-dominated selection committee, single name recommendation, etc. All appointments made under the old rules were protected. 

Concluding Note:This judgment is a landmark reaffirmation that in India the Constitution is supreme not Parliament and not even the Supreme Court. No organ of the State can behave as if it is above the Constitution. The repeated attempts by the government to bring back struck-down provisions have been firmly rebuffed. By striking down the age and tenure restrictions and ordering a National Tribunals Commission the Court has tried to finally settle a forty-year-old problem. Whether the government will now comply in letter and spirit or come back with new legislation remains to be seen but this judgment has sent the strongest possible message that judicial independence cannot be compromised.

Case Title: Madras Bar Association versus Union of India and Another

Order Date: 19 November 2025

Case Number: Writ Petition (C) No. 1018 of 2021 (with Writ Petition (C) No. 626 of 2021)

Neutral Citation: 2025 INSC 1330

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Hon'ble Mr. Chief Justice B.R. Gavai and Shri K. Vinod Chandran

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

MTS Papers India Limited v. Spento Papers India LLP

Amendment of Plaint Versus Lack of Territorial Jurisdiction

Brief Introductory Head Note:The case MTS Papers India Limited v. Spento Papers India LLP, FAO (COMM) 214/2025, decided on 17 November 2025 by the High Court of Delhi, dealt with the question whether a civil commercial court in Delhi could entertain a recovery suit when the plaint did not disclose any facts demonstrating territorial jurisdiction. The High Court examined whether a plaint that is silent on jurisdictional facts can be cured through pleadings like replication or by amendment, especially when an application under Order VII Rule 10 CPC is pending. Subsequent to filing of application of application under Order 7 Rule 10 CPC, the plaintiff filed application under Order 6 Rule 17 CPC. Trial Court rejected the Plaint. High Court upheld dismissal order.

Factual Background: MTS Papers India Limited, the appellant, is a trader of various paperboard products. It facilitated a supply arrangement between Spento Papers India LLP and a third-party customer in Vietnam. As per the understanding between the parties, MTS acted as an intermediary by negotiating price, raising orders, obtaining proforma invoices and handling commercial communication on behalf of the overseas customer. The commission payable to MTS was allegedly agreed upon by both sides.

Supply of paperboard was executed by Spento Papers to the Vietnamese customer. However, commission was not paid to MTS, despite repeated email reminders and a legal notice. MTS then initiated pre-institution mediation under Section 12A of the Commercial Courts Act, but the respondent did not appear. Consequently, MTS filed a recovery suit in Delhi seeking an amount of ₹44,88,961 together with interest.

Procedural Detail: The suit was filed before the Commercial Court in Rohini, Delhi as CS (COMM) 519/2022. Spento Papers filed a written statement and also moved an application under Order VII Rule 10 CPC seeking return of the plaint on the ground that no territorial jurisdiction existed. The trial court noted that the plaint did not contain material particulars showing how Delhi courts had territorial jurisdiction. An attempt was later made by MTS to amend the plaint under Order VI Rule 17 CPC, claiming that part of the cause of action arose in Delhi. The trial court dismissed the amendment application and thereafter allowed the defendant’s application under Order VII Rule 10, returning the plaint through an order dated 22 March 2025. MTS then filed an appeal before the Delhi High Court under Section 13(1A) of the Commercial Courts Act.

Core Dispute: The central controversy before the High Court was whether the plaint, as originally filed, disclosed territorial jurisdiction under Section 20 CPC. If it did not, could the court consider the replication or allow amendment to insert jurisdictional pleadings, while an application under Order VII Rule 10 CPC was pending? The dispute involved the interplay between the statutory requirement for jurisdiction, the scope of pleadings, and the powers of the court when jurisdictional defects exist.

Detailed Reasoning Including Judicial Citations: The High Court reiterated that the objection under Order VII Rule 10 is decided on demurrer, meaning that the facts stated in the plaint must be presumed to be true, and the question is whether, even if all facts stated are correct, the court has jurisdiction to entertain the suit. It relied on the Supreme Court ruling in Exphar SA v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, which emphasised that when territorial jurisdiction is challenged, only the plaint can be looked at and not the defence.

The Court examined the plaint and found that paragraph 23 was the only averment regarding jurisdiction, which merely stated that the plaintiff “works for profit in Delhi”. There was no pleading that any part of the cause of action arose in Delhi, no statement that the agreement was executed in Delhi, that payment was due in Delhi, or that commission invoices were payable in Delhi. Therefore, the plaint was silent on jurisdictional facts.

The High Court analysed several authorities, including: M/s RSPL Ltd. v. Mukesh Sharma, 2016:DHC:5482-DB HSIL Limited v. Imperial Ceramic, 2018 SCC OnLine Del 7185 Archie Comic Publications Inc. v. Purple Creation Pvt. Ltd., 172 (2010) DLT 234 (DB)

From these decisions, the High Court derived the settled legal position that if a plaint discloses some jurisdictional facts, even if incomplete, amendment may be allowed. However, if the plaint discloses no jurisdictional facts at all, then the court has no authority to retain the matter and cannot entertain an amendment to cure that defect. The Court emphasised that permitting such amendment would amount to conferring jurisdiction where none existed, which is legally impermissible.

The Court clarified that jurisdiction must be determined only on the basis of the plaint as originally filed. While MTS argued that replication contained jurisdictional pleadings and should have been considered, the High Court noted that replication cannot substitute or supplement the plaint for determining jurisdiction under Order VII Rule 10.

It relied on Harshad Chimanlal Modi v. DLF Universal Ltd., (2005) 7 SCC 791, which held that where a court inherently lacks jurisdiction due to statutory limitation, no amount of consent, waiver or amendment can confer jurisdiction.

The reiterated that an amendment to the plaint cannot be permitted where the averments in the plaint, as originally filed, do not disclose any facts conferring territorial jurisdiction upon the Court. High Court affirmed that the plaint did not show how Delhi courts had territorial jurisdiction; therefore, the trial court was right in returning the plaint under Order VII Rule 10 CPC.

Decision: The Delhi High Court dismissed the appeal and upheld the order of the Commercial Court. It was held that since the plaint, as presented originally, contained no facts to support territorial jurisdiction, the trial court was correct in not considering the replication and in rejecting the amendment application. As a result, the plaint stood returned to the plaintiff for presentation before the appropriate court having jurisdiction.

Concluding Note: This judgment strengthens the principle that litigants cannot choose any forum at convenience merely because they carry on business there. Jurisdiction flows from the statute and from the cause of action pleaded in the plaint. If the plaint does not disclose jurisdictional facts, the court has no authority even to allow an amendment to correct the omission. The ruling serves as a caution that recovery suits and commercial suits must plead territorial jurisdiction with precision, as defects of jurisdiction cannot be cured later.

Case Title: MTS Papers India Limited v. Spento Papers India LLP

Order Date: 17 November 2025

Case Number: FAO (COMM) 214/2025

Neutral Citation: 2025:DHC:10095-DB

Court: High Court of Delhi

Hon’ble Judges: Justice Nitin Wasudeo Sambre and Justice Anish Dayal

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

Aqualite Industries Private Limited Vs Relaxo Footwears Limited

Design Infringement and prior publication

Brief Introductory Head Note: The case Aqualite Industries Private Limited v. Relaxo Footwears Limited, FAO(OS)(IPD) 1/2022, decided on 18 November 2025 by the High Court of Delhi, involved an important dispute under the Designs Act, 2000. The court examined whether Aqualite’s sale of Hawai slippers amounted to infringement of Relaxo’s registered product designs. The decision clarified how novelty, prior publication and prior art should be assessed at the interlocutory stage while determining design piracy. The ruling is significant for commercial design protection in India because it demonstrates how courts balance interim injunction principles with the statutory protection offered to registered design holders.

Factual Background:  Relaxo Footwears Limited manufactures popular Hawai slippers, including models BHG 136 and BHG 137. These models incorporate distinctive vertical side ridges along the body of the slippers. Relaxo secured design registrations for both models under the Designs Act, vide Registration Nos. 325071 and 325074, dated 27 December 2019. The certificate of registration explicitly recognised novelty in the shape, configuration and surface pattern of the footwear, and in particular the side ridges.

In February 2021, Relaxo discovered that Aqualite Industries Private Limited had launched slippers that were visually similar and carried the same characteristic side ridges. Relaxo alleged that Aqualite had replicated the registered designs and sold replicas of BHG 136 and BHG 137 in the market. The alleged replication was supported with picture-to-picture comparison between Relaxo’s slippers and Aqualite’s products, showing substantial similarity in the placement and configuration of ridges.

Procedural Detail: Relaxo filed a commercial suit before the Intellectual Property Division of the Delhi High Court for permanent injunction against Aqualite on the basis of design infringement. Along with the suit, an application for interim injunction under Order XXXIX Rules 1 and 2 CPC was filed. On 8 October 2021, the learned Single Judge granted an interim injunction restraining Aqualite from manufacturing or selling footwear infringing Relaxo’s designs.

Aqualite challenged the injunction through an appeal before the Division Bench. Interestingly, before the Single Judge, summons in the suit had been issued only on the date when orders were reserved in the injunction application. Therefore, Aqualite had no opportunity to file a written statement, although it did file a reply to the injunction application and placed several documents on record, including photographs of footwear alleged to constitute prior art.

Core Dispute:  The core legal controversy revolved around two issues. First, whether Aqualite had infringed Relaxo’s registered designs by using identical side ridges on slippers. Second, whether Aqualite could avoid injunction by arguing that the registered designs lacked novelty and were liable to be cancelled, invoking Section 22(3) of the Designs Act.

Relaxo’s case relied on Section 22(1) of the Designs Act which protects a registered design from piracy during the term of copyright in the design. Relaxo submitted that replication of the registered side ridges amounted to piracy.

Aqualite did not deny the similarity between the products, but defended itself under Section 22(3), claiming that the registered designs lacked novelty because prior art already contained similar ridge-patterned slippers. Aqualite also contended that the designs were not visually appealing and were liable to cancellation under Section 19(1)(b) and (c).

Detailed Reasoning: The Court examined the design registrations and product comparisons and found that the side ridges formed the central novel feature highlighted in the certificates. The Court reiterated that the comparison must occur between the registered designs and the defendant’s articles, rather than between the finished products sold in the market, as held consistently under the Designs Act.

The Court noted that Aqualite admitted the existence of identical side ridges in its slippers. Multiple pictures in the record showed that the ridges were replicated either for the full length or in the frontal arch area exactly as in Relaxo’s registered models. The Court concluded that design piracy under Section 22(1) had clearly occurred.

With respect to Aqualite’s defence under Section 22(3), the Court explained that although the Designs Act permits raising grounds of cancellation as a defence, such defences must be supported by adequate pleadings and evidence. Aqualite had indeed filed images of alleged prior art, but there were no pleadings supporting those images, nor was there proof regarding their dates of publication or market availability. The Division Bench observed that two alleged prior arts lacked any evidence regarding date of publication, which made them unreliable for establishing lack of novelty. Reliance was placed on Reckitt Benckiser v. Wyeth Ltd and Bharat Glass Tube Ltd v. Gopal Glass Works Ltd to explain the legal threshold of “prior publication” that is required to defeat novelty.

Since the defendant had not filed a written statement or comprehensive pleadings, the Court found that the prior-art argument rested on weak foundations at the interlocutory stage. Consequently, the defence did not neutralise Relaxo’s statutory rights arising from the registered designs.  The Court also clarified that colour similarity of slippers had no effect on piracy because the design certificates protected only the shape, configuration and surface pattern, not colour combinations.  The Court emphasised that when piracy is prima facie established, interim injunction becomes necessary because the very purpose of design registration would become futile if replicas are permitted to circulate in the market while litigation continues.

Decision:  The High Court dismissed the appeal, upheld the order of the learned Single Judge and restored the injunction. Aqualite was restrained from manufacturing, selling or dealing in slippers that infringed Relaxo’s registered designs 325071 and 325074. The ruling reinforced that design owners must be protected from replicas during litigation where replication is admitted, especially when defences suggesting invalidity are unsubstantiated at the interim stage.

Concluding Note: This decision reiterates that design registration offers statutory protection which must be given practical effect through injunctions when piracy is prima facie established. Defendants cannot rely on speculative or weak allegations of prior art to escape liability at the interlocutory phase. The ruling emphasises that replication of visually distinctive structural elements of a registered design is sufficient to secure injunction, and courts will focus on comparing the registered design itself with the impugned article. The case strengthens design jurisprudence in India by reinforcing that novelty must be challenged through cogent evidence and that mere allegations of similarity with older products do not dilute the enforceability of a valid registered design.

Case Title: Aqualite Industries Private Limited Vs Relaxo Footwears Limited

Order Date: 18 November 2025

Case Number: FAO(OS)(IPD) 1/2022

Neutral Citation: 2025:DHC:10128-DB

Court: High Court of 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

Rajeev K.P. Vs Unais K.K.

Rectification Proceedings Do Not Freeze Trademark Rights

Brief Introductory Head Note Summary of the Case:  This case concerns a trade mark infringement dispute relating to the compost bin product known as “BOKASHI BUCKET”. The plaintiff, Rajeev K.P., who owns the registered trademark for the term BOKASHI BUCKET, approached the court seeking a temporary injunction preventing the defendant, Unais K.K., from selling an identical product using the same trademark. The trial court rejected the application for temporary injunction, but the Kerala High Court reversed that decision and granted injunction in favour of the plaintiff.

Factual Background: The plaintiff is the proprietor of Global Pharmaceuticals, and claims to have introduced an innovative composting product under the registered trademark BOKASHI BUCKET, which is scientifically designed to convert biodegradable waste into manure. The plaintiff asserts that due to extensive usage, promotional activities and presence in the market, the product enjoys wide reputation, especially with repeated procurement by Suchitwa Mission and local government authorities.

According to the plaintiff, distributors discovered that an identical compost bin was being sold by the defendant. It was alleged that the defendant copied the overall appearance, design, configuration and features of the plaintiff’s product and further used the words “BOKASHI BUCKET”, thereby infringing the plaintiff’s registered trademark and passing off his goods as those of the plaintiff.

Procedural Detail:  The plaintiff filed a suit in the Additional District Court, Manjeri, along with an application for interim injunction. Initially, an ad-interim injunction was granted; however, after the defendant appeared and filed objections, the trial court vacated the injunction through its order dated 23.08.2025, holding that there was no prima facie case, and that balance of convenience and irreparable injury did not favour the plaintiff.  Aggrieved, the plaintiff filed FAO No.118 of 2025 before the Kerala High Court under appellate jurisdiction.

Core Dispute:  The pivotal legal issue before the High Court was whether the plaintiff, as the registered proprietor of the trade mark BOKASHI BUCKET, was entitled to a temporary injunction on the ground of trademark infringement, especially when the defendant was also using the term “BOKASHI BUCKET” to market identical goods.

A side issue argued by the defendant was that a rectification petition was already filed before the Trade Marks Registry against the plaintiff’s registration. Hence, according to the defendant, failure of the plaintiff to file counter statement meant that the registration had become ineffective, extinguishing the plaintiff’s statutory rights.

Detailed Reasoning Including Judgment with Citations:  The High Court first clarified that since the plaintiff confined the appeal only to the ground of trademark infringement, aspects of design registration, patent claims and prior user were not germane for consideration.

It was undisputed that:

1. The plaintiff held valid trademark registration for “BOKASHI BUCKET”.

2. The defendant was using the same term (“BOKASHI BUCKET”), and

3. Both parties were selling identical goods – compost bins.

This combination brought the case squarely within Section 29(2)(c) of the Trade Marks Act, which states that infringement occurs when there is identity of both trademark and goods, resulting in deemed likelihood of confusion. Section 29(3) mandates that in such situations the Court shall presume confusion.

The High Court relied heavily on the Supreme Court’s landmark decision in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Others, (2022) 5 SCC 1, which clarified that in an infringement action, once identity of the marks and goods is established, no further inquiry into confusion or deception is necessary. The Supreme Court had reiterated earlier positions laid down in:

Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980

Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727

The Court highlighted that in an infringement matter, arguments regarding get-up, packaging and price difference are irrelevant if the essential features of the registered trademark are adopted by the defendant.

Regarding the defendant’s argument that failure to file counter-statement in rectification proceedings resulted in extinguishment of trademark rights, the High Court interpreted Rule 98 of the Trade Marks Rules, 2017, and held that:

Non-filing of counter-statement only allows the rectification applicant to proceed with evidence.There is no statutory consequence of deeming the registration as void or inoperative due to this delay.Therefore, the Court held that so long as the trademark remains on the register, the statutory protections under Sections 28 and 29 remain fully enforceable.

Decision: The High Court concluded that:The plaintiff had a strong prima facie case.Balance of convenience favoured the plaintiff because permitting the defendant to continue use of the registered trade mark would dilute statutory rights.Irreparable injury would occur if infringement continued during the pendency of the suit.Accordingly, the order of the trial court was set aside, and a temporary injunction was granted restraining the defendant from manufacturing, selling, or promoting compost bins under the name “BOKASHI BUCKET”, until disposal of the suit.

Concluding Note: This judgment reinforces the principle that once a trademark is validly registered, the statutory right of exclusivity under Sections 28 and 29 of the Trade Marks Act becomes absolute in infringement matters. Even ongoing rectification proceedings do not dilute trademark protection unless the registration is removed through a final order. The case further underscores that infringement analysis is distinct from passing off, and where identity of mark and goods is established, injunction becomes a legal consequence rather than a discretionary relief.

Case Title: Rajeev K.P. Vs Unais K.K.

Order Date: 18 November 2025

Case Number: FAO No.118 of 2025

Neutral Citation: 2025:KER:87639

Court: High Court of Kerala at Ernakulam

Hon’ble Judge: Justice S. Manu

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

Fontaine Limited Versus Berkeley Beauty Brands Private Limited

Unauthorized Stock Dump and Trademark Infringement

Facts:The case centers on a trademark dispute in the luxury perfume industry between Fontaine Limited, the owner of the world-famous CREED brand, and several related Indian companies and their directors known as the defendants. CREED, started in 1760, is a high-end perfume house famous for its unique scents for men and women, built on years of use, ads, and strict quality checks that have created huge trust among buyers. Fontaine took over the CREED business in India in 2020 through deals that gave it full rights to the brand's trademarks, including the CREED device mark registered in India under Class 3 for perfumes and protected under Classes 3, 4, and 35 via the Madrid Protocol since early 2022.

Before Fontaine's takeover, a company called Erol International had a deal with Defendant No. 2 from 2017 to bring in, sell, and spread CREED products in India as the only allowed seller, with rights to use ads and promo stuff. Defendant No. 1, linked to Defendant No. 2, ran a CREED store in Delhi's Chanakya Mall. After Fontaine bought the business, it kept supplying products to Defendants 1 and 2. But starting in June 2021, Defendant No. 2 delayed payments on bills, paying late only in February 2022 after reminders. Because of these repeats and no responses, Fontaine let the deal end on 9 August 2022 and asked for a smooth close-up. Under the deal's rules, after it ended, Defendants 1 and 2 lost rights to buy, sell, or use CREED marks.

Even after warnings, Defendants 1, 3, and 4— all part of the same group—kept selling CREED items through wrong channels like side shops and WhatsApp under names like 'CREED the Chanakya' to fool buyers into thinking they were still official. Defendants 5 to 7 were the bosses running daily work for these companies. Fontaine sent stop notices on 30 August 2022 and 7 July 2023, offering to buy back good stock at cost price and destroy bad stuff under watch, but Defendants ignored them and kept going, hurting Fontaine's name and sales.

Procedural Detail:Fontaine filed the suit in August 2023 for a full stop order against the misuse, plus orders to hand over and destroy wrong items, plus money for losses and costs. Right away, on 18 August 2023, the court gave a quick one-sided stop order against using CREED marks or selling through wrong ways, and sent a checker to look at Defendants' spots. The checker went on 29 August 2023 and found empty boxes, bags, booklets, signs, and a screen with CREED marks at Defendant No. 1's place, plus a list of leftover stock that matched Fontaine's info.

Defendant No. 1 answered on 28 December 2023 but skipped admitting or denying many papers, and admitted running the store till 29 April 2023 even after the deal ended. Defendants 2 to 7 got papers but didn't show up, so on 21 February 2024, the court shut their chance to answer. On 1 May 2024, the quick stop became lasting. Fontaine then asked on 20 September 2024 for a fast win under Order 13-A CPC and IP rules. Defendant No. 1 added a late paper answer on 8 April 2025. Hearings happened, and the full 24-page order came on 14 November 2025.

Dispute:The main fight was over whether Defendants could keep selling leftover CREED stock after their deal ended on 9 August 2022 without permission, using the CREED name on the store and WhatsApp to trick buyers. Fontaine said this broke the deal's end rules, hurt its good name, and cheated customers by pretending to be official sellers, asking for a forever stop, stock handover, and money for lost sales and costs around Rs. 45 lakhs. Defendant No. 1 agreed to the stop but fought the money part, saying no proof of sales after end date and that all stock was tossed by late 2023. Others didn't fight at all. The key was if Fontaine proved the wrong sales with papers like checker reports, buy tests, and chats, and if a fast win fit without full trial since no real fight back.

Detailed Reasoning:The court used the easy three-step check for quick wins in business cases: if the claim looks strong on first look, if waiting for full proof would waste time without real doubt, and if no strong reason needs a full hearing. Here, since Defendant No. 1 agreed to the stop and others skipped court, there was no real fight, making trial needless.

The court first explained CREED's fame and Fontaine's full rights via 2020 deals, noting registrations and how Defendants got short-term okay under the 2017 deal that ended naturally. It stressed deal rules required giving back good stock at cost and stopping all use, but Defendants kept the store open till April 2023 and sold via WhatsApp in mid-2023, fooling buyers. The court saw this as clear misuse under the Trademarks Act, 1999, hurting trust and sales.

For the fast win, the court leaned on Su-Kam Power Systems Ltd. v. Kunwer Sachdev (2019 SCC OnLine Del 10764), where a same-level bench said business suits aim for quick ends, and trials aren't always needed if no real chance to win for the other side—'real' means solid, not just dreams. Here, no real doubt since Defendant No. 1 admitted the store ran post-end and didn't deny key papers like notices and checker finds, and others admitted everything by not showing up.

On money, the court matched it to Rule 20 of Delhi High Court IP Rules 2021, which helps figure losses from wrong use. It used the checker list of leftover stock (undisputed) and test buys (with bills showing Defendant links) to back Fontaine's math in Document 1: Rs. 37.43 lakhs profit grab from Rs. 2.1 crore sales. No counter proof like tax returns from Defendants sealed it. The court cited Aero Club v. M/s Sahara Belts (2023 SCC OnLine Del 7466) for using seized stock lists for damage math, and Hindustan Lever Ltd. v. Satish Kumar (2012 SCC OnLine Del 1378) and Ebay Inc. v. Mohd. Waseem (2022 SCC OnLine Del 3879) saying skippers can't dodge money claims—they admit faults.

For how bad the wrong was, the court used Koninlijke Philips v. Amazestore (2019 SCC OnLine Del 8198), listing bad acts like repeat wrongs (Defendants hit before in Yves Saint Laurent v. Brompton Lifestyle, CS(COMM) 789/2022 order 4 January 2024) as high-level bad, needing strong stops and money to scare off future cheats. This fit since Defendants are group-linked bosses who hid sales via side firms. The court said money covers lost chances, name harm, and unfair gains, plus costs (Rs. 7.97 lakhs for fees, checker, court) to make Fontaine whole.

All defendants shared blame jointly since linked, and must hand over seized stuff in 4 weeks or pay 12% interest. The quick stop from 18 August 2023 merged into the full order.

Decision

Decision:The application I.A. 40224/2024 allowed. Restraint order against using CREED marks or selling products wrong, handover/destroy of seized items, Rs. 37,42,737 damages, Rs. 7,97,000 costs, all joint on Defendants 1-7, payable in 4 weeks or with 12% interest. Suit decreed; no more dates.

Case Title: Fontaine Limited Versus Berkeley Beauty Brands Private Limited & Ors.

Order Date: 14 November 2025 

Case Number: CS(COMM) 564/2023 

Court: High Court of Delhi 

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

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

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

FMC Corporation & Ors. Versus Natco Pharma Limited

Credible Challenge to Patent and Patent Infringement

Interim injunction refused in IN’645 despite admitted infringement; patent held highly vulnerable. The Court refused to grant an interim injunction, holding that the patent is highly vulnerable on multiple grounds: prior claiming by FMC’s own earlier patent IN 269104, lack of novelty and inventive step over cited prior art. Relying on the “credible challenge” principle laid down in F. Hoffmann-La Roche v. Cipla, Ericsson v. Lava, and Interdigital v. Xiaomi, the Court observed that only 19 days of patent life remained, Natco had already launched the product after obtaining regulatory approvals, and monetary compensation would suffice for the short remaining period.

Facts: The case revolves around a patent dispute in the agrochemical industry between FMC Corporation (an American company) along with its group companies (collectively called the plaintiffs) and Natco Pharma Limited (an Indian pharmaceutical and agrochemical company, referred to as the defendant). The plaintiffs own Indian Patent No. 298645 (called the suit patent), granted in 2018, which is titled “Method for Preparing N-Phenylpyrazole-1-Carboxamides”. This patent covers a process to make certain insecticides, and importantly, Claim 12 protects a specific chemical compound known as the Compound of Formula 3, which is an intermediate chemical used in that process. This intermediate is 2-amino-5-cyano-N,3-dimethylbenzamide – basically a building block chemical needed to produce the final insecticide called Cyantraniliprole.

The plaintiffs discovered that Natco was manufacturing and selling an insecticide product called Cyantraniliprole 10.26% OD (Oil Dispersion) using this exact patented intermediate. Natco openly admitted in court that it was using this intermediate in its manufacturing process. The plaintiffs therefore filed this suit as a preventive (quia timet) action, meaning they wanted to stop Natco even before huge damage was done, asking the court to stop Natco from using their patented intermediate. The patent is set to expire on 6 December 2025, so very little time was left when the judgment came.

There was already a long history of litigation between these two companies over related insecticides (Chlorantraniliprole and Cyantraniliprole). Earlier cases dealt with the process claims (Claims 1 to 11) of the very same patent, where courts had refused to grant interim injunctions to FMC because Natco’s process was found different enough. This time the fight was only about Claim 12 – the intermediate compound itself.

Procedural Detail: The suit was filed in 2024. The plaintiffs moved an application (I.A. 34151/2024) under Order 39 Rules 1 & 2 CPC for interim injunction. By the time the matter came up for hearing, Natco had already launched its product. On 1 August 2025 the court asked Natco to disclose its stock and sales, which Natco did through an affidavit in August 2025. The hearing took place over several dates and the judgment was delivered on 17 November 2025, just nineteen days before the patent was to expire.

Natco had earlier filed a revocation petition against the patent and had also taken regulatory approvals to sell the product. There were parallel commercial court cases in Chandigarh that were transferred to the Delhi High Court. The matter was therefore heard urgently because the patent life was almost over.

Dispute

The core dispute was very simple: Natco admitted it was using the exact chemical intermediate covered by Claim 12 of the patent to make Cyantraniliprole. FMC therefore said there is clear infringement, and since the patent is valid till 6 December 2025, Natco must be stopped immediately. Natco did not deny using the intermediate but argued that the patent itself is invalid on multiple grounds – lack of novelty, obviousness, prior claiming by FMC’s own earlier patent IN 269104, Section 3(d) (mere new form), Section 3(e) (mere admixture), and that the claim was too broad (Section 10, insufficient disclosure, etc.). Natco said it had filed a revocation petition, so it had “cleared the way” and the court should not grant injunction when the patent is vulnerable and has only days left.

FMC replied that Natco is a habitual infringer, they themselves have many patents around the molecule (evergreening allegation by Natco), and since infringement is admitted, injunction must follow.

Detailed Reasoning of the Court:  The court first noted that in patent interim injunction matters, once infringement is admitted or clear, the burden shifts to the defendant to show a credible challenge to the validity of the patent. If the challenge is credible (meaning the patent looks seriously vulnerable), injunction is normally refused. This principle comes from the Division Bench judgment in F. Hoffmann-La Roche Ltd. v. Zydus Lifesciences Ltd. 2024 SCC OnLine Del 8291 and several other cases like Interdigital v. Xiaomi, Nokia v. Oppo, and Telefonaktiebolaget Ericsson v. Lava International.

The court then examined each ground of invalidity:Prior Claiming / Double Patenting: Natco argued that the same intermediate was already claimed in FMC’s earlier patent IN 269104. The court studied both patents and found substantial overlap in the chemical structure and examples. The court held that there is a serious triable issue of prior claiming under Section 64(1)(f) because the intermediate in IN’645 is essentially mirrors what was disclosed in IN’104. The court relied on M/s. Surendra Lal Mahendra Kumar Jain HUF v. Sri Maruthi Industries and Avery Dennison Corporation v. Konti Continental to hold that when two patents by the same patentee claim substantially the same invention, the later patent is vulnerable.

Lack of Novelty (Section 64(1)(e)): Natco placed several prior art documents (D1 to D12) that disclosed similar benzamide compounds. The court found that D4 (WO 2003/015519) and D6 (WO 2004/067528) disclosed very close structures and the difference was only minor alkyl substitutions. The court said the challenge looks strong because the claim is broad and covers almost all alkyl substitutions.

Obviousness (Section 64(1)(f)): The court applied the Pozzoli test as approved in F. Hoffmann-La Roche v. Cipla (2016) 65 PTC 1 (Del) and found that a skilled person reading the prior arts together would find the specific intermediate obvious. The court noted the motive to arrive at the compound was clearly provided in the prior arts themselves.

Section 3(d) – Mere new form: The court held that the intermediate is a new form (alkyl derivative) of known compounds disclosed in prior art and FMC failed to file any comparative data showing enhanced efficacy. Following Novartis v. Union of India (2013) 6 SCC 1 and Hoffmann-La Roche v. Natco Pharma, the court said Section 3(d) applies with full force to intermediates also, and absence of data makes the claim vulnerable.

Section 3(e) – Mere admixture: The claim was to a single compound with provisos, but the court found the provisos were not sufficient to take it out of mere admixture, so this ground was not accepted.

Insufficient disclosure / inoperability (Section 64(1)(h) & Section 10): Natco argued the patent does not teach how to make compounds where R3 is other than methyl. The court found merit in the argument and said this is a serious issue.

Excessive claim breadth / Aggrieved person: Not pressed strongly.

After examining all prior arts and applying the law, the court concluded that the patent is highly vulnerable on multiple grounds – prior claiming, novelty, obviousness and Section 3(d). The court distinguished the Chinese revocation (which was on different grounds) and said Indian law on Section 3(d) is stricter.

The court heavily relied on the following key cases and explained them simply:F. Hoffmann-La Roche v. Cipla 2015 – If defendant raises credible challenge, no injunction even if infringement is clear.Telefonaktiebolaget Ericsson v. Lava – Detailed checklist for “vulnerable” patent.Interdigital v. Xiaomi 2024 – Short patent life is a strong factor against injunction.Nokia v. Oppo – Revocation petition + strong prior art = credible challenge.Avery Dennison v. Konti Continental – Overlapping claims by same patentee = vulnerable.Bristol Myers Squibb v. J.B. Chemicals – Balance of convenience tilts against injunction when patent life is ending.

The court noted that only 19 days of patent life were left, Natco had already launched after taking approvals, and huge stock would go waste if injunction was granted now. Irreparable injury was not made out because money damages can compensate for 19 days.

Decision:  The application I.A. 34151/2024 was dismissed. No interim injunction was granted. 

Case Title:FMC Corporation & Ors. Versus Natco Pharma Limited

Judgment Date: 17 November 2025 

Case Number: CS(COMM) 607/2024

Neutral Citation: 2025:DHC:10092 

Court: High Court of Delhi 

Hon'ble Judge: Ms. Justice Mini Pushkarna

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

Mohanlal U. Jain Vs. LKB Engineering Pvt. Ltd.

Failure to show service of Notice of Opposition

Facts: The appellant, Mohanlal U. Jain, trading as M/s Master Marketing, claimed rights over the trademark “RALLISON” for goods falling under Class 21 and Class 7, relating to household appliances and kitchenware. The appellant asserted continuous use of the mark since 6 April 2002 in Class 21 and 3 April 2002 in Class 7. To secure statutory protection, two separate applications were filed before the Trade Marks Registry under Application Nos. 2835978 and 2896138, each supported by user claims from 2002.

Both applications were published in the Trade Marks Journal on 22 May 2017 and 5 June 2017, giving public notice of advertisement. Subsequently, the first respondent, LKB Engineering Pvt. Ltd., filed trademark oppositions on 21 September 2017 and 5 October 2017.

The appellant contended that a copy of the oppositions was never served upon them as required under Section 21(2) of the Trade Marks Act, 1999, which mandates that the opponent must serve the applicant with a copy of the notice of opposition before the Registry can proceed further. Because a copy of the opposition was never received, the appellant could not file a counter-statement. This ultimately led to the Trade Marks Registry passing orders dated 15 March 2018 and 20 March 2018 declaring both trademark applications abandoned due to non-filing of a counter.

The appellant filed the present appeals under Section 91 read with Section 92 of the Trade Marks Act, 1999, challenging the abandonment orders and seeking restoration of the trademark applications.

Procedural History:After the abandonment orders, the appellant approached the High Court, arguing that they were denied the opportunity to file a counter-statement because the mandatory statutory requirement under Section 21(2) was never complied with. The appellant’s counsel submitted that the agent on record, M/s H.P. Associates, had communicated an email ID to the Registry — tmharshad@gmail.com — but no service of the opposition was actually undertaken in a manner recognised by law.

The first respondent argued that an email dated 8 November 2017 was sent by the Trade Marks Registry to the appellant’s agent serving the opposition notices, and therefore the appellant could not claim ignorance. Reliance was placed on the Supreme Court judgment Dalip Singh v. State of U.P. (2010) 2 SCC 114, stressing that litigants must approach courts with clean hands and cannot take advantage of procedural lapses.

However, the Trade Marks Registry did not produce independent proof that the opposition was served on the appellant in conformity with Section 21(2).

Core Dispute: The core legal issue before the Court was whether the trademark applications were rightly abandoned by the Trade Marks Registry despite there being no evidence of service of the notice of opposition on the applicant. The question therefore centred around whether the statutory mandate of service of opposition notice under Section 21(2) was complied with before abandoning the trademark applications.

Judicial Reasoning and Analysis: Court examined the evidence and submissions with respect to the statutory scheme governing opposition proceedings under the Trade Marks Act, 1999. Section 21(2) clearly mandates that after an opposition is filed, a copy of the notice of opposition must be served on the applicant, and only then does the applicant’s time to file a counter-statement begin. If the counter is not filed within the prescribed period, only then can the application be treated as abandoned.

The Court noted that the core requirement in the present case was not whether the opposition had been filed, but whether it had been properly served upon the applicant. The file did not contain any independent acknowledgement or proof by the Registry to demonstrate that service was actually effected on the appellant or on the authorised agent. Though the first respondent referred to an email, the Registry did not discharge its responsibility to produce proof of legally valid service.

The Court held that in the absence of proof of service, the right to file a counter-statement cannot be defeated. The appellant was therefore deprived of the legal right to defend the opposition and argue for trademark registration.

The Court acknowledged the Supreme Court’s observations in Dalip Singh v. State of Uttar Pradesh, which emphasise that litigants must not mislead the judicial process. But the Court clarified that this principle applies when a party conceals facts or manipulates the judicial process. In the present case, there was no concealment or misrepresentation by the appellant. The dispute arose because the Registry failed to provide proof of compliance with Section 21(2). Therefore, the Supreme Court decision did not apply adversely to the appellant.

Ultimately, the Court reaffirmed that service of opposition notice is a mandatory safeguard and abandonment of marks without fulfilling this safeguard would violate natural justice, since the applicant would be deprived of the statutory right to file a counter-statement.

Decision:  The High Court allowed the appeals and set aside the abandonment orders dated 15 March 2018 and 20 March 2018 passed by the Trade Marks Registry in relation to Trademark Application Nos. 2835978 and 2896138. The Court directed that a fresh opportunity must be granted to the appellant by properly serving copies of the oppositions and thereafter passing orders within 12 weeks from receipt of the Court’s order. 

Case Title: Mohanlal U. Jain Vs. LKB Engineering Pvt. Ltd. & Another

Order Date: 28 October 2025

Case Number: (T) CMA (TM) Nos. 196 of 2023 and 2 of 2024

Court: High Court of Judicature at Madras

Hon’ble Judge: 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

Marico Limited Vs. Prahalad Rai Kedia

Trade Dress Protection and Originality in Copyright

Facts: The petitioner, Marico Limited, is a well-known Indian consumer goods company that has been manufacturing and selling several popular products for decades, including Parachute, Parachute Advansed Jasmine, Hair & Care, Nihar, Saffola, Mediker, Livon, Revive, Silk-n-Shine, and Set Wet. In particular, Marico’s coconut oil brand PARACHUTE is widely recognised for its distinctive packaging label, including the flag device logo, the broken coconut symbol, the blue and green colour combination, and the overall trade dress and layout used for many years.

Marico holds prior copyright registration for this label under Copyright Registration No. A-64997/2003, along with multiple trademark registrations for the artistic representation used on its packaging. Marico alleged that the first respondent, Prahalad Rai Kedia, proprietor of Kedia Industries, secured Copyright Registration No. A-85790/2009 in respect of packaging and label for EVEREST Coconut Oil by copying and imitating features of Marico’s PARACHUTE label.

Marico contended that the Everest label copied the essential features of the Parachute label and that the respondent concealed the existence of Marico’s prior copyright and trademark when applying for registration. According to Marico, this amounted to fraudulent registration, copyright infringement, passing off, and unfair competition. Marico also submitted that the respondent had previously copied Parachute packaging in 2002 under the brand SHRI LAXMI and continued to imitate the label even after receiving cease-and-desist notices.

Procedural History: Marico filed a petition under Section 50 of the Copyright Act, 1957, seeking suspension and expunction of Copyright Registration No. A-85790/2009 from the Copyright Register. Because the first respondent did not appear despite notice, he was set ex parte on 14 August 2025. The second respondent, the Registrar of Copyrights, appeared and defended the grant of registration.

Core Dispute: The central legal question before the Court was whether the artistic work forming the packaging label for EVEREST Coconut Oil was a substantial reproduction or imitation of the PARACHUTE packaging label, such that the registration obtained by the first respondent should be removed under Section 50 of the Copyright Act, 1957. In other words, the Court had to decide whether the EVEREST label infringed Marico’s copyright and should therefore be expunged from the Copyright Register.

Judicial Reasoning and Analysis: The Court acknowledged that Marico holds trademark and copyright protection for its artistic label and has been continuously using the PARACHUTE trade dress for many decades. It also noted that the Delhi High Court has previously restrained various third parties from infringing or copying Marico’s trade dress and trademarks in earlier matters.

However, the Court emphasised that the question in the present petition was not whether Marico owns valid intellectual property rights, but whether the EVEREST packaging label amounts to copyright infringement and therefore warrants expunction of its registration.

The Court compared both labels and observed variations in colour scheme, wording, trade descriptions and logo elements. It found that while both labels used a blue background, the use of blue in hair oil packaging is extremely common in the market and cannot be monopolised by any single manufacturer. The Court held that the overall artistic expression of the respondent’s label is distinct, with a different layout and visual identity.

The first respondent’s reply dated 4 July 2016 was also examined, where the respondent asserted that the EVEREST brand has been used since 2006 with a corresponding label adopted in 2007, and that the adoption was bona fide, honest and independent. The respondent relied on its own copyright registration in support of this claim. The Court noted that Marico did not produce sufficient evidence to counter the respondent’s assertion of originality.

On evaluating the issue of infringement, the Court held that Marico failed to produce convincing comparative material showing that the EVEREST label is a direct or substantial copy of the PARACHUTE label. The Court concluded that Marico’s effort appeared to be an attempt to monopolise the trade of coconut oil by relying on similarities that were generic to the industry rather than unique to its brand.

Based on the evidence placed on record, the Court held that Marico did not satisfy the legal burden required under Section 50 of the Copyright Act for removal of a registered copyright. The respondent’s work could not be considered a pirated reproduction.

Decision: The High Court dismissed Marico’s petition. It held that the EVEREST packaging label was not deceptively similar to the PARACHUTE packaging label and therefore did not infringe Marico’s copyright. As a result, there was no ground to suspend or expunge the first respondent’s copyright registration No. A-85790/2009 from the Copyright Register. No costs were awarded.

Marico Limited Vs. Prahalad Rai Kedia & Another

Order Date: 11 November 2025

Case Number: (T)OP(CR) No. 1 of 2024

Court: High Court of Judicature at Madras

Hon’ble Judge: 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

Dharampal and Others Vs. Devraj

Common Law Protection of Trade Names in Local Markets

Facts: The plaintiff, Devraj, had been running a saree business in Bhiwani for nearly forty years under the name “Bimal Saree Centre”, earning goodwill and reputation among local customers. Documentary evidence including bills, income tax returns, bank account documents, advertisements and GST registration proved that the business was not only old but also widely known.

The defendants, who earlier ran a hosiery shop at the same location under the traditional family name “Dharampal Di Hatti”, later started selling sarees. The evidence showed that for almost four decades the defendants did not use the name “Vimal” at all.

In 2021, the defendants changed their business name unexpectedly to “Vimal Saree Palace”, despite having an established older business identity. The new shop was located only six shops before the plaintiff’s shop in the same street, meaning close proximity. The names “Vimal Saree Palace” and “Bimal Saree Centre”, especially when written in Hindi, looked and sounded very similar.

This caused customers to confuse both shops, and many asked about the location of “Bimal Saree Centre” while being present inside the defendants’ shop. The plaintiff alleged deliberate intention to divert his customers and take advantage of his decades of goodwill. The defendants also hired a former employee of the plaintiff, which further supported the allegation of dishonest intent.

The plaintiff filed a suit for permanent injunction under the Trade Marks Act, 1999, seeking to restrain the defendants from using the deceptively similar name.

Procedural History: The Trial Court decreed the suit on 17.10.2022, restraining the defendants from using the trade name “Vimal Saree Palace” or “Vimal Wadhwa Saree Palace”.The defendants filed Regular First Appeal (RFA-1291-2022) before the High Court and argued that:a) They had already changed their name from “Vimal Saree Palace” to “Vimal Wadhwa Saree Palace,” making the suit infructuous.b) The plaintiff himself did not appear as a witness.c) Other saree shops existed in the area, so no monopoly could existed. The word “Vimal/Bimal” was generic and could be used by anyone.

Core Dispute for Adjudication:  The central issue before the High Court was whether the defendants’ use of the business name “Vimal Saree Palace / Vimal Wadhwa Saree Palace” amounted to passing-off, causing confusion and deception among customers who associated saree sales in that area with the well-known and pre-existing business “Bimal Saree Centre.”

Judicial Reasoning and Analysis:

The Court found that the plaintiff established prior and long-standing usage of the trade name “Bimal Saree Centre” supported through documentary evidence and testimony of PW-1 Rajesh Kumar (plaintiff’s son and power of attorney). The Court accepted his testimony as he managed the business personally and was aware of all transactions, and relied on the Supreme Court in Man Kaur (Dead) by LRs v. Hartar Singh Sangha, (2010) 10 SCC 512, to hold that where the authorised attorney operates day-to-day business, his deposition is valid despite the plaintiff not appearing in person.

The Court rejected the defendants’ argument that the name had been voluntarily changed to avoid confusion. The Local Commissioner’s report and photographs showed that the defendants continued displaying the word “Vimal” prominently, violating even the undertaking given before the Court.

The Court held that the phonetic and visual similarity between “Vimal” and “Bimal,” particularly in Hindi script, created clear likelihood of deception and confusion. Evidence also showed that even independent dealers mistakenly addressed the defendants as “Bimal Wadhwa Saree Palace” instead of “Vimal Wadhwa Saree Palace”, proving confusion beyond customers.

The Court further accepted sales decline proved through GST returns, noting a clear drop in the plaintiff’s turnover after the defendants adopted the confusing name. It observed that since the documents were exhibited without objection, the defendants could not later challenge them on mode of proof. Reliance was placed on Bhagwan Dass v. Khem Chand, 1973 AIR Punjab & Haryana 477 and Gopal Das (Privy Council, AIR 1943 PC 83).

The Court relied on the earlier binding precedent D.P. Jagan and Sons v. M/s D.P. Jagan & Co. (RFA-1571-2017 decided on 12.05.2020) to reinforce that a prior user of a business name is entitled to protection under common law of passing-off, even without trademark registration, and that similar business names used in the same street amount to actionable deception.

The Court concluded that adoption of “Vimal” instead of “Bimal” was intentional, dishonest and commercially motivated to capture plaintiff’s goodwill. The fact that the defendants had an earlier business name and abandoned it—despite it having a longer history—showed malafide intention.

Final Decision:  The High Court upheld the Trial Court’s decree and permanently restrained the defendants from using the trade names “Vimal Saree Palace” or “Vimal Wadhwa Saree Palace” or any other deceptively similar name likely to lead customers to believe that their goods and services were connected with “Bimal Saree Centre.”

Case Title: Dharampal and Others Vs. Devraj

Case Number: RFA-1291-2022 (O&M)

Neutral Citation: 2025:PHHC:148569

Date of Decision: 29 October 2025

Court: High Court of Punjab and Haryana at Chandigarh

Hon’ble Judge: Justice Vikas Bahl

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

AB Initio Technology LLC Vs The Controller of Patents and Designs

Balancing Innovation and Exclusion in Software Patents

FACTS: The appellant, AB Initio Technology LLC, filed an Indian national phase patent application No. 4693/CHENP/2010 dated 27 July 2010, based on PCT application PCT/US2009/035293, claiming priority from U.S. Patent Application 61/031,672 dated 26 February 2008. The invention was titled "Graphic Representations of Data Relationship".

The application was directed to a technological solution for identifying and tracing defective or altered data from multiple data sources after the global financial crisis of 2008, where failure in a single data component could affect multiple downstream computations. The invention enabled automated retrieval and graphical representation of data lineage, showing the relationship between programs and datasets across distributed systems.

A First Examination Report was issued on 30 January 2018, raising objections on novelty, inventive step, patentability under Section 3(k), lack of clarity and insufficiency of disclosure. The applicant replied and amended claims on 12 July 2018. A hearing was held on 7 January 2020, followed by written submissions and further amendments. Despite this, the Controller rejected the application on 13 July 2020, sustaining objections under Section 3(k) and Section 2(1)(j).

PROCEDURAL HISTORY: After rejection of the application, AB Initio filed a statutory appeal under Section 117-A(2) of the Patents Act, 1970, before the Madras High Court. The appellant argued that the Controller had ignored the technical contribution of the invention and applied Section 3(k) without proper reasoning. The respondent defended the rejection by characterising the invention as a mere software implementation of data queries.

CORE DISPUTE: The dispute revolved around two legal questions:Whether the claimed invention is barred from patent protection under Section 3(k) as a computer program "per se".Whether the invention lacks novelty and inventive step under Section 2(1)(j) in view of prior arts.

JUDICIAL REASONING: The Court noted that the Controller had rejected the invention on the reasoning that it merely automated data queries using algorithms and did not contain novel hardware. However, the Court scrutinised this view against statutory interpretation and international legal developments.

Regarding Section 3(k), the Court analysed the meaning of “computer programme per se” and highlighted that the exclusion cannot be applied mechanically to any invention involving software. The correct legal test is whether the claimed invention provides:

• a technical contribution,

• a technical effect, or

• a technical advancement in computer functionality.

The Court carefully examined the invention and found that it did not merely display data but introduced a technical solution to a technical problem. The system retrieved metadata sets through selection specifications, automatically identified upstream and downstream data relationships, and generated a visual lineage diagram capturing interconnections among programs and datasets. This improved efficiency of data tracing across heterogeneous systems, a task not feasible manually at scale.

Thus, the invention satisfied the threshold of technical contribution and was not a computer programme per se. The fact that the invention could run on general-purpose hardware did not strip away patentability.

Regarding novelty and inventive step, the Court compared the invention with D1. The prior art disclosed retrieval of related data entities but did not reveal data lineage tracing among programs and data using configuration information sets containing multiple selection specifications of different types. D1 did not provide a visual lineage structure that exposed transformation and relational evolution of data. Therefore, the Controller’s finding of lack of novelty and lack of inventive step was held unsustainable.

The Court emphasised that the Controller had neither properly analysed the technical contribution nor considered whether a person skilled in the art would be able to derive the claimed invention from prior art, and had therefore failed to apply Section 2(1)(j) lawfully.

DECISION: The Madras High Court held that the invention provided a genuine technical advancement and that the rejection under Section 3(k) and Section 2(1)(j) was unsustainable. The Court allowed the Appeal and directed grant of Patent.

Case Title: AB Initio Technology LLC Vs The Controller of Patents and Designs

Order Date: 04.11.2025

Neutral Citation: 2025:MHC:2579

Case Number: (T)CMA(PT) No. 58 of 2023 / OA/57/2020/PT/CHN

Court: High Court of Judicature at Madras

Hon’ble Judge: Justice Senthilkumar Ramamoorthy

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