Castrol Limited Vs Sanjay Sonavane

Continuous Online Harm versus Res Judicata

Brief Introductory Note:  The Delhi High Court recently dealt with a dispute where a company (the plaintiff) sued several defendants for spreading false news, making threatening WhatsApp messages and using the plaintiff’s trademark in a way that allegedly harmed its reputation. The plaintiff had already filed an earlier suit (the “First Suit”) concerning the same trademark issue and a police raid. In the present case the plaintiff asked the court to stop the defendants from further disparagement and to remove the online material. The court had to decide whether this new suit was permissible under the law that prevents filing two suits for the same cause of action.

Factual Background: The plaintiff manufactures products bearing the mark “3X”. The defendants, especially defendant 1, filed a criminal complaint that led police to raid the plaintiff’s distributor in Nashik. After the raid, several news articles and a YouTube video appeared, and defendant 1 also shared a threatening WhatsApp message that mentioned the plaintiff’s mark. The plaintiff claimed that these actions damaged its reputation and infringed its trademark. In the First Suit, the plaintiff had asked for an injunction to stop the defendants from threatening legal action over the 3X mark and for a declaration that such threats were unjustified. The court in that suit gave a preliminary finding that the plaintiff’s use of the 3X mark did not infringe the defendants’ 3P mark and restrained the defendants from issuing further threats.

Procedural Detail: While the First Suit was still pending, the plaintiff filed a second suit (the present plaint) seeking a permanent injunction to stop the defendants from publishing the news articles, the YouTube video and the WhatsApp messages, and to have the material taken down. The defendants argued that the second suit was barred by Order II Rule 2 of the Code of Civil Procedure, which says a plaintiff cannot bring a second suit for the same cause of action if the same relief could have been claimed in the first suit. The plaintiff argued that new events – such as the sharing of the YouTube video on 19 August 2025 and the continued circulation of the material on the internet – gave rise to a fresh cause of action.

Core Dispute: The central question before the court was whether the second suit was a fresh case based on new facts, or whether it was simply an attempt to re‑litigate matters already decided in the First Suit. The court also considered whether the plaintiff could have asked for the removal of the online material in the first suit and whether the continued presence of the articles and video created a continuous cause of action.

Detailed Reasoning :  The court examined the provisions of Order II Rule 2 CPC, which is meant to stop multiple lawsuits over the same set of facts. It recalled the Supreme Court decision in Gurbux Singh v. Bhura Lal (AIR 1964 SC 1810), which laid down three conditions for applying the rule: the second suit must be for the same cause of action, the plaintiff must have been entitled to more than one relief in the first suit, and the plaintiff must have omitted to claim that relief without the court’s permission. The court noted that the plaintiff was aware of the news articles and the YouTube video when the First Suit was filed, as shown by the documents attached to that suit (DOCUMENT‑20 and DOCUMENT‑21). The plaintiff had not asked for the removal of those materials in the first suit, even though the cause of action (the alleged defamation and trademark harm) was already present.

The court also referred to Mohamad Khalil Khan v. Mahbub Ali Mian (1949 51 BomLR 9), which explains that a new suit is allowed only if the claim is substantially different. In this case, the only new fact was the forwarding of the video on 19 August 2025, which the court said could have been added to the First Suit by amendment under Order VI Rule 17 CPC. The court cited Life Insurance Corporation of India v. Sanjeev Builders Pvt. Ltd. (2022 SCC OnLine SC 1128) to stress that an amendment should not change the nature of the suit or introduce a new cause of action.

The plaintiff relied on the judgment in Ruchi Kalra (supra) and Bengal Waterproof (supra) to argue that a continuous breach gives a fresh cause of action each time the offending material is viewed or shared. The court accepted that the internet can create a continuing wrong, but held that the principle does not override the bar under Order II Rule 2 when the plaintiff already had the opportunity to seek relief in the earlier suit.

Decision: The court concluded that the second suit was barred by Order II Rule 2 CPC because the plaintiff could have, and should have, sought the relief of taking down the media coverage and the YouTube video in the First Suit. The court dismissed the present plaint but gave the plaintiff liberty to amend the First Suit to include the later developments and the new defendants, in accordance with the law.

Concluding Note: The judgment reinforces the importance of bringing all related claims in one suit and using the amendment procedure when new facts emerge after the first filing. It also clarifies that while the internet can give rise to a continuous cause of action, that does not automatically allow a fresh suit when the same relief was available earlier.

Case Title: Castrol Limited Vs Sanjay Sonavane

Order Date: 24 November 2025

Case Number: CS(COMM) 946/2025

Neutral Citation: 2025:DHC:10370

Name of Court: High Court of Delhi

Name of Hon'ble Judge: 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

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Delhi High Court Dismisses Second Trademark‑Defamation Suit as Barred by Order II Rule 2

 In a judgment delivered on 24 November 2025 in Castrol Limited Vs Sanjay Sonavane(CS(COMM) 946/2025), Justice Tejas Karia of the High Court of Delhi ruled that a plaintiff cannot bring a fresh suit seeking the removal of online articles and a YouTube video when the same relief could have been claimed in an earlier proceeding. The court held that the plaintiff’s second suit was barred by Order II Rule 2 of the Code of Civil Procedure, which prevents multiplicity of actions on the same cause of action. The judge noted that the plaintiff was aware of the offending material when the first suit was filed and could have amended that suit to include the later developments, rather than initiating a new case. Consequently, the court dismissed the present plaint but granted the plaintiff liberty to amend the original suit to incorporate the new facts and parties.

The decision underscores the principle that while the internet can give rise to a continuing cause of action, parties must still consolidate all related claims in a single proceeding to avoid the procedural bar imposed by Order II Rule 2. The ruling also highlights the importance of timely amendments under Order VI Rule 17 when fresh evidence emerges after a suit is instituted.

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

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Bikanervala & Anr. Vs. Sh. Satya Narayan

Brief Introductory Head Note Summary of Case, Factual Background

This case involves a petition filed before the High Court of Delhi challenging an order passed by the Trial Court. The core issue revolves around the Trial Court's refusal to allow the Petitioners, Bikanervala & Anr., to submit electronic evidence (videos contained in a pen drive) in a contempt petition they filed against the Respondents, Sh. Satya Narayan & Ors. The videos allegedly show the Respondents violating an interim injunction by using a distinctive artistic label or "JHALAR device" similar to that of the Petitioners' 'BIKANERVALA' trademark. The High Court ultimately upheld the Trial Court's discretionary decision, finding no reason to interfere with the rejection of the application to take the videos on record, especially since the videos were not relied upon for the main trademark infringement suit but only for the separate contempt proceedings.

Procedural Detail

The Petitioners had filed a main suit, CS (COMM) No. 2232/2019, seeking a permanent injunction to prevent the Respondents from using the trademark and artwork 'BIKANER CORNERWALA,' which they claimed was identical or deceptively similar to their 'BIKANERVALA' mark. An interim injunction was initially granted on February 11, 2020, but a subsequent order on February 13, 2020, permitted the Respondents to use the words "Bikaner Cornerwala" or "Bikaner Corner Wala" while the injunction continued to operate specifically on the Petitioners' distinctive artistic label, the "JHALAR device". The injunction was later given full effect on May 9, 2023, restraining the use of 'BIKANER CORNERWALA' or 'BIKANER CORNER WALA' entirely.

Following this, the Petitioners conducted investigations in March and April 2023, where they shot videos allegedly revealing the Respondents' use of the "JHALAR device" in violation of the 2020 injunctions. The Petitioners then filed Contempt Petition No. 8/2023 against the Respondents, mentioning a Google Drive link to these videos.

The Petitioners filed an application on March 4, 2025, under Order XI Rule 6 of the Civil Procedure Code (CPC) as amended by the Commercial Courts Act, 2015, to place a pen drive containing the video recordings on record. This first application was dismissed by the Trial Court on July 24, 2025, because the supporting affidavit was given by the Petitioners' counsel, not a party to the proceeding, as required by Order XI Rule 6(3) of the Commercial Courts Act.

The Petitioners filed a fresh application on August 25, 2025, for the same purpose, this time supported by an affidavit from their authorised representative. This second application was also dismissed by the Trial Court on October 31, 2025 (the Impugned Order).

The present petition, CM(M)-IPD 45/2025, was filed by the Petitioners, Bikanervala & Anr., to challenge the Trial Court's dismissal order dated October 31, 2025. The Petitioners argued that the Trial Court had dismissed the application based on the erroneous fact that the videos were downloaded from the Google Drive on August 20, 2025, when the correct fact was that they were downloaded to a local drive on April 13, 2023, and only copied to the pen drive on August 20, 2025. They asserted that the videos were highly relevant for proving the Respondents' "contumacious conduct" in the contempt matter, even if they weren't relevant for the merits of the trademark infringement suit.

Core Dispute

The central dispute in the High Court was whether the Trial Court was justified in dismissing the Petitioners' application, filed under Order XI Rule 6 CPC as amended by the Commercial Courts Act, 2015, to submit a pen drive containing video evidence in the contempt petition.

The Trial Court's reasoning in the Impugned Order, which the Petitioners challenged, rested on several observations:

The original video recordings were always in the possession or control of the Petitioners, yet they claimed they were downloaded from a Google Drive link.

The investigator, Anil Kumar, who shot the videos, was not examined as a witness.

The Google Drive link (URL) provided by the Petitioners in their previous application was non-functional and nothing was stored on the cloud as of the date of an earlier order (July 24, 2025) and even at the time of the hearing on the fresh application (October 10, 2025).

The Petitioners' stands in the affidavit and application were contradictory regarding the date of downloading the videos, stating they were downloaded on August 20, 2025, in the pen drive, but also asserting they were downloaded on April 13, 2023.

Given the link was empty earlier, it was "highly improbable" to download the videos to the pen drive on August 20, 2025, as claimed.

The Trial Court could not believe the videos were downloaded in the pen drive by the Petitioners' authorised representative as asserted.

Detailed Reasoning and Discussion by Court including on Judgement with Complete Citation Referred and Discussed for Reasoning

The High Court of Delhi, presided over by Justice Manmeet Pritam Singh Arora, heard the arguments and reviewed the Impugned Order dated October 31, 2025.

The Court's primary focus was on the scope of its extraordinary jurisdiction to interfere with a decision of the Trial Court. The High Court ruled that the Trial Court's order, which rejected the application under Order XI Rule 6 CPC as amended by the Commercial Courts Act, 2015, was a matter within the Trial Court's jurisdiction. The Court found no reason to exercise its extraordinary jurisdiction to overturn the Trial Court's discretion.

The High Court specifically addressed the relevance of the evidence. It noted that the videos were not relevant to the merits of the main trademark infringement suit. The Petitioners had already concluded their evidence in the suit and had chosen not to rely upon these videos for the issues concerning the merits of the main claim. The Petitioners were relying on these videos solely for the adjudication of the contempt petition.

The High Court provided a crucial legal distinction regarding contempt proceedings. The Court stated that the issue of whether the Respondents committed contempt is a matter "between the Court and the defendant". This principle suggests that contempt proceedings are primarily for the vindication of the court's dignity and authority, not merely an adversarial proceeding between the parties. Therefore, the issue of contempt will be decided by the Trial Court based on the evidence already filed with the contempt petition.

Given these facts—that the evidence was not critical to the main suit, that the Petitioners had already concluded their evidence, and that the Trial Court had appreciated the facts and exercised its discretion based on the contradictory stands and non-functional evidence link—the High Court found no ground to interfere with the discretion exercised by the Trial Court in dismissing the application.

(The order does not include citations of any external legal judgments referred to or discussed for reasoning beyond the facts and procedural history of the case itself ).

Decision

The High Court of Delhi dismissed the present petition, CM(M)-IPD 45/2025. Consequently, all pending applications were also disposed of. The Trial Court's decision to not permit the electronic evidence (pen drive with videos) to be taken on record in the contempt petition stands affirmed.

Concluding Note

The decision of the High Court of Delhi underscores the principle of judicial non-interference with the discretionary orders of a subordinate court, particularly when the subordinate court has considered the facts presented to it. The key takeaway for any litigant is the importance of timely and consistent presentation of evidence, especially in the context of commercial litigation governed by specific procedural rules like Order XI Rule 6 of the Commercial Courts Act. The Trial Court's refusal, upheld by the High Court, was heavily influenced by the Petitioners' conflicting statements regarding the download date of the electronic evidence and the non-functional status of the original evidence link. Furthermore, the Court reiterated the distinct nature of contempt proceedings, which are fundamentally matters between the court and the alleged contemnor, allowing the Trial Court to decide the issue based on the evidence already before it, without the High Court needing to exercise its extraordinary power to compel the acceptance of belated or questionable evidence. This highlights the strict standards applied to the introduction of electronic evidence, requiring clear chain of custody and verifiable authenticity.

Case Title: Bikanervala & Anr. Vs. Sh. Satya Narayan & Ors. Order Date: November 20, 2025 Case Number: CM(M)-IPD 45/2025 Neutral Citation: 2025:DHC:Citation No [This would be reflected at top of any page of Order in this format Year:DHC:Citation No] Name of Court: High Court of Delhi at New Delhi Name of Hon'ble Judge: Hon'ble Ms. Justice Manmeet Pritam Singh Arora

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

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

Suggested Titles for the Legal Analytical Article:

The Discreet Hand of Justice: High Court Refuses to Interfere with Trial Court's Discretion on Electronic Evidence in Contempt Proceedings

Contempt, Commercial Courts, and CPC: An Analysis of Timeliness and Authenticity in Filing Electronic Evidence

Order XI Rule 6, CPC, and the Burden of Proof: Why Bikanervala's Pen Drive Was Dismissed by the Trial Court

The Contradictory Evidence Conundrum: A Study in Admissibility of Electronic Records for Contempt in Trademark Disputes

Beyond the Main Suit: Examining the High Court's Stance on Introducing Evidence Solely for Contempt Adjudication

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Delhi High Court Upholds Trial Court's Discretion to Reject Late Electronic Evidence in Trademark Contempt Plea

New Delhi: In a recent order dated November 20, 2025, the High Court of Delhi, presided over by Hon'ble Ms. Justice Manmeet Pritam Singh Arora, dismissed a petition filed by Bikanervala & Anr. in the case of Bikanervala & Anr. Vs. Sh. Satya Narayan & Ors. (Case No. CM(M)-IPD 45/2025). The Court refused to interfere with a Trial Court's decision that declined to take on record a pen drive containing video evidence regarding an alleged trademark violation.

The dispute arose from a suit filed by the petitioners seeking to restrain the respondents from using the mark 'BIKANER CORNERWALA', claiming it infringed their well-known 'BIKANERVALA' trademark. While an interim injunction was in place restraining the use of the petitioners' distinctive "JHALAR device," the petitioners alleged that the respondents continued to violate this order. To prove this "contumacious conduct," the petitioners sought to introduce video recordings shot by investigators in 2023 into the ongoing contempt proceedings via a pen drive application under Order XI Rule 6 of the Commercial Courts Act.

The Trial Court dismissed the application, noting significant discrepancies in the petitioners' claims regarding the electronic evidence. Specifically, the Trial Court observed that the Google Drive link originally cited by the petitioners was found to be empty on multiple occasions, making the claim that videos were downloaded from it on a specific later date "highly improbable".

Upholding the lower court's decision, Justice Arora observed that the videos were not relevant to the merits of the main suit, where evidence had already concluded. Regarding the contempt petition, the High Court ruled that the issue of contempt is primarily a matter between the Court and the alleged contemnor. Finding no error in how the Trial Court exercised its jurisdiction to reject the contradictory evidence, the High Court dismissed the petition.

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

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Ashim Kumar Ghosh Vs. The Registrar of Trade Marks

Suggestive Versus Descriptive Marks

Brief Introduction : This case arises out of an appeal under Section 91 of the Trade Marks Act, challenging the refusal of registration of the "SoEasy" trademark. Ashim Kumar Ghosh vs. The Registrar of Trade Marks dealt with the refusal of registration for the trademark "SoEasy" in respect of instructional and teaching materials (Class 16) after it had initially been accepted and advertised. The case examines the powers of the Registrar under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application and considers whether "SoEasy" is distinctive or only descriptive and generic, impacting its eligibility for registration. Ashim Kumar Ghosh filed a trademark application for "SoEasy" (No. 5799569), meant for instructional and teaching materials. His application was first accepted and published, but later the Registrar issued notice for withdrawal of acceptance, claiming the mark lacked distinctiveness. Following a hearing, the application was formally refused under Sections 9(1)(a) and 9(1)(b), as the mark was argued to be generic, descriptive, and laudatory.​

Procedural Detail: The application was filed on February 2, 2023, on a proposed-to-be-used basis. The Registrar examined it and initially accepted it, subject to use as a whole, publishing it in the Trade Mark Journal in April 2024. No opposition was filed after publication. However, in December 2024, a notice under Section 19 sought to withdraw acceptance, citing that the mark was not distinctive. The appellant responded, but after a hearing in February 2025, the Registrar issued a fresh refusal in May 2025. The applicant then appealed to the High Court of Delhi.​

Core Dispute: The central dispute is whether the Registrar could lawfully withdraw the acceptance of "SoEasy" and refuse its registration as a trademark. Secondly, the dispute was whether "SoEasy" is inherently distinctive or merely descriptive or generic in connection to the goods/services, and thus ineligible for protection under Section 9(1) of the Act.​

Detailed Reasoning: The Court outlined the relevant statutory scheme. Section 19 allows the Registrar to withdraw acceptance of an application before registration, even if accepted and advertised without opposition. This power, the Court noted, is to preserve the purity of the Register but is not unfettered.

On the argument about procedural fairness, the Court found that the Registrar was indeed within rights to revisit the acceptance, and there was no vested right to registration in the absence of an opposition.

The significant legal debate centered around Section 9(1), which bars registration of marks lacking distinctiveness (Clause (a)), or which consist exclusively of marks that designate the kind, quality, etc., of goods/services (Clause (b)). The Registry's position was that "SoEasy" is laudatory, generic, and merely descriptive.

To interpret distinctiveness, the High Court relied extensively on established legal principles from decisions such as Teleecare Network India Pvt Ltd v. Asus Technology Pvt Ltd (2019 SCC OnLine Del 8739), which, following the US landmark Abercrombie classification, defined categories: generic, descriptive, suggestive, arbitrary, and fanciful. Suggestive, arbitrary, and fanciful marks are considered inherently distinctive.

The Court explained that for a mark to be suggestive, it must require some imagination or thought for a consumer to connect the mark with the goods. A descriptive mark, in contrast, immediately conveys a quality or characteristic of the goods.

Applying this to "SoEasy," especially in the context of learning/educational materials, the Court observed the mark does not directly describe the goods’ kind or quality. Instead, it subtly suggests ease of use, thus needing consumer imagination. Therefore, the mark was classified as "suggestive" rather than descriptive or generic, making it inherently distinctive and entitled to registration.

Therefore, although the Registrar followed proper process and procedure under the Act, on the facts of the case, his reasoning about lack of distinctiveness was incorrect. The Court set aside the refusal, holding the mark to be registrable.​

Decision: The High Court allowed the appeal. It set aside the impugned order of the Registrar, directed the Registry to proceed with the registration of "SoEasy," and disposed of pending applications.​

Concluding Note: This judgment clarifies that the Registrar can revisit acceptance of trademark applications before registration, but must do so with sound reasoning grounded in statutory and judicial principles. Importantly, it underscores that coined or suggestive marks—even if composed of ordinary words—can be inherently distinctive if they compel consumers to make a mental leap connecting the mark to the goods. The decision strengthens the doctrine protecting inventive and suggestive marks, while restraining the arbitrary rejection of applications based solely on dictionary meanings.​

Case Title: Ashim Kumar Ghosh Vs. The Registrar of Trade Marks

Order date: 24 November 2025

Case Number: C.A.(COMM.IPD-TM) 48/2025

Neutral Citation: 2025:DHC:10350

Court Name: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia

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

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

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In Ashim Kumar Ghosh v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 48/2025, decided on 24 November 2025 by the High Court of Delhi, Hon’ble Mr. Justice Tejas Karia set aside the Registrar’s refusal of the trademark application for “SoEasy” in Class 16 (instructional and teaching material, printed matter and bookbinding material) and directed that the application proceed to registration. The case arose from an appeal under Section 91 of the Trade Marks Act, 1999, against an order dated 20 May 2025, by which the Registrar had refused registration after initially accepting and advertising the mark and then issuing a notice withdrawing acceptance under Section 19 on the ground that the mark was devoid of distinctiveness.​

The appellant had filed the mark “SoEasy” on a proposed-to-be-used basis; the application was examined, objections under Section 9 were initially raised, replied to, and the mark was accepted and advertised with no opposition filed within the statutory period. Subsequently, the Registrar issued a Section 19 notice alleging erroneous acceptance and lack of distinctiveness, conducted a hearing, issued a fresh examination report, and finally refused registration on the basis that “SoEasy” was generic, laudatory, and covered by Sections 9(1)(a) and 9(1)(b). The appellant argued that Section 19 conferred only a limited discretionary power, that earlier acceptance on Section 9 had attained finality, that no vested right could be defeated arbitrarily after publication, and that “SoEasy” was at least a coined, inherently distinctive, or suggestive mark, not a generic or descriptive term for the goods.​

The Court held that, procedurally, the Registrar was within his powers under Section 19 to withdraw acceptance any time before registration, even in the absence of opposition, and that there was no vested right in the appellant merely because the mark had been advertised without challenge. However, examining the merits under Section 9(1), and relying on the established classification of marks into generic, descriptive, suggestive, arbitrary, and fanciful (as discussed in Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739), the Court found that “SoEasy” was a suggestive mark in the context of a learning/teaching platform and not descriptive of the goods’ qualities. The Court reasoned that consumers would need a degree of imagination to connect “SoEasy” with instructional and teaching materials for learning Hindi, and that the expression did not directly name or describe the goods but only suggested ease, thereby making the mark inherently distinctive and entitled to protection.​

On this basis, the High Court concluded that while the Registrar had followed the correct procedure in invoking Section 19, the substantive assessment that the mark was non-distinctive was flawed, and the refusal under Sections 9(1)(a) and 9(1)(b) could not be sustained. The impugned order was set aside and the Registrar was directed to proceed with the application for “SoEasy” in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.​

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

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Amylin Pharmaceuticals, LLC and Anr. Vs. Assistant Controller of Patents and Designs

Obviousness and Section 3(d) Hurdles against grant of Patent

Brief Introductory Head Note Summary: This case involves a legal battle over a patent application for a special kind of medicine delivery system designed to release drugs slowly into the body over time. The companies involved, Amylin Pharmaceuticals, LLC and AstraZeneca Pharmaceuticals LP, both from the United States, wanted to protect their invention in India. Their invention is a ready-to-use injection that contains tiny spheres (called microspheres) suspended in an oil-based liquid. These spheres hold a drug called exenatide, which helps treat diabetes, along with a bit of sugar to keep it stable. The idea is to make the drug last longer in the body so patients do not have to inject themselves every day. The factual background starts with the companies filing their patent application in India on May 1, 2011, based on an international application they had submitted earlier. They claimed priority from a U.S. application dated September 4, 2008. The invention aims to solve problems like the need for frequent injections, unstable drug mixtures, and complicated preparation before use. It promises benefits such as longer shelf life, steady drug release, and easier use for patients.

Procedural Detail: The patent office in Delhi examined the application and issued a first report on March 29, 2017, pointing out issues. The companies responded on September 27, 2017, with changes to their claims. Then, on October 16, 2017, they got a notice for a hearing, which happened on November 13, 2017. After the hearing, they submitted more written arguments and updated claims on November 28, 2017. Despite this, on July 10, 2018, the Assistant Controller rejected the application, saying it lacked originality and fell under a rule that blocks patents for mere discoveries of new forms of known substances without better results. Feeling this was wrong, the companies appealed to the Delhi High Court under a law that allows challenges to patent decisions. 

Core Dispute: The main fight was whether the invention was truly new and clever enough to deserve a patent. The patent office said no, because it seemed obvious based on four earlier documents (called prior arts, labeled D1 to D4) that described similar ideas. These documents talked about drug delivery using tiny spheres, oils, and the drug exenatide. The companies argued that their mix was unique: it used a specific oil (non-water-based with certain fatty acids) that kept everything stable and ready-mixed, unlike the others which needed mixing or had drawbacks like quick drug bursts or short shelf life. They said the office ignored their explanations and data showing better stability and ease of use. Another key point was a law that says you cannot patent a new form of a known drug unless it works much better therapeutically. The companies claimed their version did, but the office disagreed, saying no proof of better healing effects was shown, just better storage or release. The court had to decide if combining ideas from those old documents would naturally lead someone skilled in the field to this invention, or if it was a real step forward.

Detailed Reasoning: The court started by laying out what both sides said. The companies pointed out that the patent office did not properly look at their final changes and arguments about why their invention was not obvious. They went through each prior document: D1 (a U.S. publication from 2004) talked about spheres for drug delivery but not the specific oil or ready-mix setup; D2 (another U.S. publication from 2008) focused on liquid mixes without spheres and even warned against sphere-based systems; D3 (a journal article from 2000) used different drugs and a water-based carrier; D4 (an international publication from 2005) aimed at low-burst release but without the oil carrier. They argued no one skilled would combine these to get their invention, and they had patents in other countries like the U.S. and China. The patent office countered that D1 suggested oils and spheres, D2 added exenatide and sugar for stability, D3 showed in-place forming spheres, and D4 had similar release controls. They said mixing these ideas was straightforward for someone in the field, and no real proof of better healing was shown, just practical perks.

The judge then analyzed if the rejection was fair. First, on originality (under the law's Section 2(1)(ja), which requires an inventive step), the court used a method from a past case called Hoffmann-La Roche Ltd. v. Cipla Ltd., decided in 2016 by the Delhi High Court (full citation: Hoffmann-La Roche Ltd. v. Cipla Ltd., (2016) 65 PTC 1 (Del.)). This case sets steps to check if something is obvious: identify what a skilled person knows, spot differences from old ideas, and see if bridging them needs creativity. Applying this, the court found D1 hints at non-water oils like "fixed oils" (which often mean triglyceride oils) and mentions oleic acid (a longer-chain fatty acid), making shorter chains like C6-C12 seem logical tweaks. D2 clearly has exenatide (0.1-10%) and sugars for stability, plus talks of long-lasting formulas. D3 uses PLGA spheres forming on-site with similar carriers. D4 adds sugar in spheres for steady release and names exendin-4 (same as exenatide). The court said a skilled person, starting from D1's need for better spheres, would look to D2 for the drug and stability, D3 for forming methods, and D4 for low-burst tricks. 

To back this, the judge cited Astrazeneca AB and Another v. Torrent Pharmaceuticals Ltd, a 2020 Delhi High Court decision (full citation: Astrazeneca AB and Another v. Torrent Pharmaceuticals Ltd, 2020 SCC OnLine Del 1446), which says no "teaching away" if a document prefers one way but does not rule out others—here, D1 prefers some oils but opens to fixed oils. Another case, Fresenius Kabi Oncology Limited v. Glaxo Group Limited & Anr, from the Intellectual Property Appellate Board in 2013 (full citation: Fresenius Kabi Oncology Limited v. Glaxo Group Limited & Anr, 2013 SCC OnLine IPAB), was used to explain that alternatives in old documents do not discourage trying them unless strongly warned against. Finally, Bristol-Myers Squibb Holdings Unlimited Company and Others v. BDR Pharmaceuticals International Pvt. Ltd., another 2020 Delhi High Court ruling (full citation: Bristol-Myers Squibb Holdings Unlimited Company and Others v. BDR Pharmaceuticals International Pvt. Ltd., 2020 SCC OnLine Del 1700), warned against hindsight—picking bits from old documents only after seeing the new invention. But the court felt the connections were natural, not forced.

On the other ground (Section 3(d), which stops patents for new forms of known drugs without proven better healing), the court noted no data showed the mix cured diabetes better, just stored or released better. The companies' foreign patents did not sway things, as Indian law is stricter. The judge quoted the office's order, agreeing it reasoned well enough, even if copying some arguments.

Decision: The court decided against the companies. It said the invention seemed obvious to someone skilled, based on combining old ideas without real creativity. The rejection for lacking an inventive step and not showing better therapeutic effects was correct. So, the appeal was dismissed, and the patent office's decision from July 10, 2018, stood. No costs were awarded.

Concluding Note

This ruling shows how strict Indian patent law is on drug inventions, especially those tweaking known ideas. It stresses that improvements must be truly clever and prove real health benefits, not just convenience. For companies, it means gathering strong data early and watching how offices combine old documents. Overall, it balances innovation with preventing monopolies on minor changes.

Case Title: Amylin Pharmaceuticals, LLC and Anr. Vs. Assistant Controller of Patents and Designs 

Order date: 24/11/2025 

Case Number: C.A.(COMM.IPD-PAT) 76/2022 

Neutral Citation: 2025:DHC:10342 

Name of Court: High Court of Delhi  

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia

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

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

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High Court of Delhi at New Delhi dismissed the appeal in the case titled Amylin Pharmaceuticals, LLC and Anr. vs. Assistant Controller of Patents and Designs, case number C.A.(COMM.IPD-PAT) 76/2022, on November 24, 2025. The case stemmed from the rejection of a patent application for "Sustained Release Formulations Using Non-Aqueous Carriers," a ready-to-use injectable microsphere formulation containing the diabetes drug exenatide, designed for prolonged drug release without needing on-site mixing.

The appellants, U.S.-based pharmaceutical companies Amylin Pharmaceuticals, LLC and AstraZeneca Pharmaceuticals LP, had filed the application in India in 2011, claiming priority from a 2008 U.S. filing. They argued that their invention offered advantages like stability, ease of use, and a specific non-aqueous carrier of medium-chain triglycerides (C6 to C12 fatty acids), which the patent office overlooked in its 2018 rejection order. They contended the formulation involved an inventive step over prior arts (D1 to D4) and did not fall under Section 3(d) of the Patents Act, which bars patents for new forms of known substances without enhanced efficacy.

The respondent, the Assistant Controller, maintained that the invention was obvious, combining elements from existing documents: D1 on microsphere delivery, D2 on exenatide with sugar stabilizers, D3 on in-situ PLGA microspheres, and D4 on low-burst release profiles. The court, after detailed analysis citing precedents like Astrazeneca AB vs. Torrent Pharmaceuticals (2020) and Bristol-Myers Squibb vs. BDR Pharmaceuticals (2020), agreed that a person skilled in the art would find the combination straightforward without creativity. It held the application lacked an inventive step under Section 2(1)(ja) and upheld the rejection, noting no interference was needed despite foreign grants in countries like the U.S. and China.

This decision reinforces India's strict standards for pharmaceutical patents, emphasizing the need for genuine innovation over minor modifications.

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

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