Laboratoires Griffon Pvt. Ltd. Vs. Adwin Pharma

Brief Introductory Head Note Summary of Case

This case involves a dispute over trademarks in the pharmaceutical industry, where a company claimed that another was copying its brand name for diabetes medications, leading to potential confusion among buyers. The court examined whether the similar-sounding names violated trademark laws and decided to protect the original brand by stopping the use of the copycat name temporarily while the full case proceeds.

Factual Background

The story begins with Laboratories Griffon Private Limited, a company established in 1947, which manufactures and sells medicines. Over time, its name changed, but it has been using the trademark "GLIMET" since 1992 for diabetes treatments. This mark was registered under an old law called the Trade and Merchandise Marks Act, 1958. Later, in 1999, it also registered "GLIMET DS," a variant. The second plaintiff is a licensee, meaning it has permission to use these marks from the first plaintiff. To show how popular and established their products are, they provided sales figures: from April 2017 to March 2023, sales under "GLIMET" and "GLIMET DS" reached about Rs. 1.95 crore, and earlier figures for the second plaintiff from 2013-2014 were around Rs. 22.5 crore. They also shared invoices to prove ongoing sales.

In June 2024, the plaintiffs discovered similar products called "ELGIMET-SR 1/500" and "ELGIMET-SR 2/500" being sold online. They made a test purchase and found that Adwin Pharma (defendant no. 1) was the manufacturer, and another company (defendant no. 2) was marketing them. A check with the trademark office revealed that defendant no. 2 had applied for "ELGIMET" in August 2023, claiming it was new and not yet in use, but the application hadn't been advertised yet.

Procedural Detail

The plaintiffs filed a lawsuit in the Bombay High Court, specifically in its commercial intellectual property division, under Commercial IP Suit No. 225 of 2024. Along with the suit, they filed an interim application (numbered Interim Application (L) No. 27480 of 2024) asking for a temporary stop to the defendants' use of the similar marks while the main case is decided. On September 4, 2024, the court granted an ex-parte ad-interim relief, meaning without hearing the defendants first, to prevent trademark infringement and appointed a court receiver to oversee things.

Once notified, the defendants appeared. Defendant no. 1 (the manufacturer) said they wanted to settle peacefully with the plaintiffs and didn't oppose the temporary relief. Defendant no. 2 filed a written statement, which the court treated as their response to the application. The court heard arguments from both sides, reserved the order on November 10, 2025, and pronounced it on November 18, 2025.

Core Dispute

The main issue was whether the defendants' marks "ELGIMET," "ELGIMET-SR 1/500," and "ELGIMET-SR 2/500" were too similar to the plaintiffs' "GLIMET" and "GLIMET DS," amounting to trademark infringement or passing off their goods as the plaintiffs'. The plaintiffs argued for visual and sound similarity, especially risky in medicines where confusion could harm health. Defendant no. 2 denied similarity, claimed honest adoption, said the marks came from drug ingredients (not protectable), pointed to price differences (Rs. 7 vs. Rs. 70 for 10 tablets), and argued prescription drugs reduce confusion risks. They also questioned the court's jurisdiction and mentioned third-party similar marks and oppositions to the plaintiffs' registration.

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

The court started by outlining the facts and arguments. It noted that defendant no. 1 wasn't opposing, so the focus was on defendant no. 2's defenses.

First, on distinctiveness: Defendant no. 2 argued "GLIMET" is descriptive, coming from ingredients Glibenclamide/Glimepiride and Metformin, so no monopoly. The court disagreed, explaining the plaintiffs' mark was registered in Part A of the Trade and Merchandise Marks Act, 1958. It quoted Section 9 of that Act, which lists requirements for Part A registration: things like company names in special form, signatures, invented words, words with no direct reference to goods' quality, or other distinctive marks. "Distinctive" means the mark distinguishes the owner's goods from others. The court said this registration shows the mark is distinctive prima facie (at first glance). It clarified that while single ingredients like Glipizide or Metformin can't be monopolized, a unique blend like "GLIMET" (a portmanteau, or combined word) can be protected. Infinite ways exist to combine names, so copying a similar combo infringes.

Next, on similarity: The marks are "GLIMET"/"GLIMET DS" vs. "ELGIMET"/"ELGIMET-SR." The court said defendant no. 2 swapped the first letters of "GLIMET" and added "E." Testing for deceptive similarity considers an average buyer with imperfect memory. Phonetically, "ELGIMET" might sound like "gi-met," close to "gli-met." Less educated buyers might mispronounce, especially with ingredient-derived names. The court found structural and sound similarity prima facie.

To support this, the court referred to its own earlier order in Laboratories Griffon Private Limited and Anr. vs. Medieos Lifesciences LLP, Interim Application (L) No. 25004 of 2024, decided on July 16, 2025, where similar issues were discussed. It also summarized tests from the Supreme Court's judgment in Cadila Health Care Ltd. and Anr. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. In Cadila, the Supreme Court said: stricter tests for drugs with different side effects; vigilance for same-ailment drugs; public interest favors lower proof for confusion in medicines vs. other goods; many patients are elderly, illiterate, or infirm and can't differentiate; prescriptions don't fully prevent confusion due to India's diverse setup (language, urban-rural gaps); confusion test checks if ordinary consumers might mix up products; marks compared as wholes, not parts. The court applied these: both drugs treat diabetes, a widespread issue; even slight confusion risks health, so restrain use.

On defenses: Price difference (Rs. 7 vs. Rs. 70) doesn't divide buyers, as both sell via pharmacists. Being Schedule H (prescription) drugs isn't enough per Cadila. Defendant no. 2's adoption explanation (from "Elcliff," their company) was weak—why add "gimet" without "l"? Plaintiffs in industry since 1992, defendants likely knew. Application for "ELGIMET" was objected, not accepted. Third-party similar marks unproven, and anyway, others' infringement doesn't allow yours. Rectification by third parties irrelevant. Jurisdiction: Plaintiffs' office in Bombay, so under Section 134 of Trade Marks Act, 1999, court has power. Leave under Clause XIV of Letters Patent (Bombay) allows passing-off claim.

On balance: Plaintiffs' long use (1992), sales ~Rs. 25 crore; defendants new (2024), no sales proof. Infringement harms plaintiffs, so convenience favors them.

On passing off: Needs reputation, misrepresentation, damage. Reputation shown, but no prima facie misrepresentation (different packaging, prices). Relief denied here.

Defendant no. 2 cited cases in writings but not argued, so ignored.

Decision

The court confirmed the September 4, 2024, temporary relief as interim: defendants restrained from using "ELGIMET" variants or similar marks infringing "GLIMET"/"GLIMET DS" in any business activity. No passing-off relief. Suit continues.

Concluding Note

This judgment highlights how courts protect unique brand names in medicines to avoid health risks from confusion, even if marks aren't identical. It balances business interests with public safety, showing early registration and use give strong protection against copycats.

Case Title: Laboratoires Griffon Private Limited and Another Vs. Adwin Pharma and Another Order Date: 18 November, 2025 Case Number: Interim Application (L) No. 27480 of 2024 in Commercial IP Suit No. 225 of 2024 Neutral Citation: 2025:BHC-OS:21288 Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction in its Commercial Division Name of Hon'ble Judge: Sharmila U. Deshmukh, J.

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

Protecting Pharmaceutical Trademarks: Analyzing Similarity and Infringement in Laboratories Griffon vs. Adwin Pharma

Deceptive Similarity in Diabetes Drug Brands: A Deep Dive into the Bombay High Court's Ruling on GLIMET vs. ELGIMET

Trademark Distinctiveness in Medicines: Lessons from the 2025 Bombay High Court Decision on Ingredient-Derived Marks

Balancing Public Health and Brand Rights: The Interim Relief in Laboratories Griffon Private Limited's Infringement Case

Phonetic Confusion in Pharma Trademarks: Judicial Scrutiny in the GLIMET-ELGIMET Dispute

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Bombay High Court Grants Interim Relief in Trademark Battle Over Diabetes Drugs: In a significant ruling on intellectual property rights, the High Court of Judicature at Bombay, through Justice Sharmila U. Deshmukh, on November 18, 2025, in the case titled Laboratoires Griffon Private Limited and Another vs. Adwin Pharma and Another (Interim Application (L) No. 27480 of 2024 in Commercial IP Suit No. 225 of 2024), confirmed temporary protection against alleged trademark infringement.

The dispute centers on Laboratories Griffon Private Limited, a pharmaceutical company established in 1947, which has used the trademarks "GLIMET" and "GLIMET DS" for diabetes medications since 1992. The company claimed that Adwin Pharma and its marketer were infringing these marks by selling similar products under "ELGIMET," "ELGIMET-SR 1/500," and "ELGIMET-SR 2/500," discovered online in June 2024. The plaintiffs argued phonetic and structural similarity could confuse consumers, especially in medicinal products where errors pose health risks.

The court found prima facie infringement, noting the plaintiffs' marks are distinctive portmanteaus derived from drug ingredients Glipizide and Metformin, registered under the old Trade and Merchandise Marks Act, 1958. It rejected defenses like price differences (Rs. 7 vs. Rs. 70 per strip) and prescription-only sales as insufficient to prevent confusion, citing Supreme Court precedents like Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73. However, it denied relief for passing off, finding no clear misrepresentation.

Adwin Pharma expressed intent to settle, while the marketer's application for "ELGIMET" (filed in 2023) was deemed subsequent and objected. The balance of convenience favored the plaintiffs due to their long-standing use and sales exceeding Rs. 25 crore, with no substantial proof from defendants.

The order restrains the defendants from using the impugned marks pending trial, underscoring judicial vigilance in pharma trademarks to safeguard public health.

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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Medilabo Rfp Inc. Vs The Controller Of Patents

Brief Introductory Head Note Summary of Case and Factual Background

The present appeal arose before the Delhi High Court when a company named Medilabo RFP Inc challenged an order refusing its patent application for a drug composition meant for helping patients suffering from neuro-related illnesses which progressively damage the brain (neurodegenerative diseases). The invention was a combined drug formulation containing two known medical compounds—Rifampicin (including its safe pharmaceutical derivative or salt form) and Resveratrol (including its safe derivative forms). The specification highlighted that the proposed formulation helped reduce harmful side effects that normally appear when Rifampicin is taken for long periods, and that combining it with Resveratrol could make long-term use possible for improving brain conditions such as dementia. The Controller of Patents, however, rejected the application stating it was not eligible for a patent under Section 3(i) of the Patents Act, 1970, which bars patenting of methods of medical treatment.

Procedural Details

The patent request was originally filed on 2 August 2021 with the Indian Patent Office, seeking protection for "A prophylactic or therapeutic drug for neurodegenerative disease". A request for examination was submitted on 26 December 2022, following which the First Examination Report (FER) was issued on 20 January 2023. The applicant filed a detailed reply under Rule 24B(5) of the Patents Rules, 2003, and amended the claims on 10 July 2023, which included the phrase "for transnasal administration". Later, a hearing was scheduled on 21 September 2023. Written submissions and further amended claims were filed by the applicant on 6 October 2023, where specific references to mode of administration and dosage regimen were removed from the main independent claim to make it clear that the invention was only a product composition (i.e., the combined medicine itself), not a method of treatment (i.e., how a doctor administers or prescribes it). The Controller, on 21 December 2023, issued the impugned order rejecting the claims under Section 3(i) without considering the final amended claims or discussing the supporting specification.

Core Dispute

The central question before the Court was whether a patent claim which merely describes a drug composition (product) containing known pharmaceutical components with a clear technical structure can be rejected under Section 3(i) of the Patents Act, 1970, only because its earlier version or title mentioned medical use, or because working examples demonstrated experimental administration. The dispute further included whether non-discussion of post-hearing amended claims while deciding patenteligibility amounts to serious legal error resulting from overlooking the law.

Detailed Reasoning and Discussion by Court (including Citations)

The Court began by interpreting the basic framework of patent claims under Section 10(4)(c) of the Patents Act, 1970 which clearly states that “the scope of the protection is to be determined by the claims”. In patent law, this means that what matters for deciding patent rights is only what is written in the final claims, not how the product may ultimately be used in hospitals or clinics. The Court noted that the Controller incorrectly relied on older claims instead of the final amended claims. The Controller essentially objected that the product needed a specific dosage or continuous administration for a month or more, therefore it was a medical treatment method. The High Court disagreed, noting that the independent claim after hearing contained no steps of instructing how to treat a patient, but only what the drug combined composition contained, and in what ratio by weight the components were formulated (1 part Rifampicin : 1/500 to 500 parts Resveratrol). The Court clarified that merely writing “composition for a disease” or showing feasibility by giving experimental test examples does not convert a product claim into a medical procedure claim.

In support of this reasoning, the Court cited the judgment in University of Miami v. Controller of Patents High Court of Delhi, with Neutral Citation 2020:DHC:1170, where the Court held that the use of the expression "composition for treatment" in the preamble does not make the claim a “method of treatment” performed by a doctor, and therefore Section 3(i) cannot be applied to reject composition structure claims. Likewise, in Societe Des Produits Nestle SA v. Controller of Patents, this Court, with citation 2023 SCC OnLine Del 582, held that compositions that have a clearly described structure and components are not covered by the treatment-method exclusion under Section 3(i).

Further, the Court referred to the Bayer Pharma Aktiengesellschaft decision—Neutral Citation 2024:DHC:2395, wherein the Federal Circuit of the U.S. also observed that the "preamble" part of claims should not be treated as a limiting restriction unless it mentions core steps or essential technical structure of the invention. The Indian Manual of Patent Office Practice and Procedure, 2019 (Paragraph No. 09.03.05.08) was also noted, which excludes medical procedures like vaccination or administering medicine, but not actual medicine compositions or formulations or curative instrument/apparatus themselves. The Court read Section 3(i) along with the Manual to emphasize that the Patents Act only bars method/procedure of medical treatment, and is not a bar against product claims for pharmaceutical formulations which have specific technical components and are not prescribing doctor-based steps.

The Court also criticized the Controller for selectively stopping the analysis after holding the claims as non-patentable under 3(i), despite the hearing notice having other objections under Sections 2(1)(ja), 59, and 3(d). By relying on the ruling in Adama Makhteshim Ltd. v. Controller of Patents (C.A.(COMM.IPD-PAT) 167/2022), the High Court reiterated that "the Controller must consider all objections even if claims appear non-patentable on one ground". Not doing so shows lack of proper application of the law.

Decision

The Court ultimately set aside the order and sent (remanded) the matter back to the Controller for fresh decision, clearly directing that the final amended claims must be considered. The Court clarified that its present decision was not based on deciding merits of novelty or inventive step, but only on the legal question whether 3(i) was wrongly applied to refuse a composition-product claim. The Controller was directed to decide the application within six months and provide a fresh hearing to the applicant.

Concluding Note

This decision serves as an important reminder that patent law, though technical in structure, operates on simple fairness: a medicine as a thing (product) can be patented if it has a novel technical structure and meets other requirements, but a doctor’s action of prescribing or administering it cannot be patented. The High Court balanced innovation rights of applicants with safeguards for medical freedoms under the law. The ruling corrects a common misunderstanding at patent offices where medical-use phrases in titles or older claims often lead to automatic rejection without deep reading of final claims and supporting written explanations. The message is clear—read the claims carefully, read the specification fairly, and do not stop the analysis half-way.

Concluding Note for Publication—Suggested Article Titles

The Ordinary Man’s Patent and the Doctor’s Freedom: Understanding Product vs Treatment Claims; Pharmaceutical Formulation Patents and the Myth of Treatment Exclusion Under Section 3(i); Preamble Misinterpretation in Patent Claims—A Simple Guide Through Medilabo v Controller; Combination Drug Compositions—Eligible for Patent Protection in India?; When a Medicine is Patentable but its Use is not—Lessons from the Delhi High Court.

Case Title: Medilabo Rfp Inc. VS The Controller Of Patents

Order Date: 24 November 2025

Case Number: C.A.(COMM.IPD-PAT) 16/2024

Neutral Citation: 2025:DHC:10362

Name of Court: Delhi High Court

Hon'ble Judge: Justice Tejas Karia, High Court of Delhi

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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The Delhi High Court, in the case Medilabo RFP Inc. VS The Controller of Patents, decided on 24 November 2025 in appeal number C.A.(COMM.IPD-PAT) 16/2024, delivered an important ruling through Justice Tejas Karia. The order came from the Delhi High Court, which is one of India’s constitutional courts of record. The appeal was filed by Medilabo RFP Inc., challenging the decision of the Indian Patent Office, passed by the Assistant Controller on 21 December 2023, which had refused their patent for a combined drug composition meant for the prevention and long-term treatment of brain-damaging diseases such as dementia. The refusal was made under Section 3(i) of the Patents Act, 1970, which prohibits patents on medical treatment methods. The company argued that their claim was not a treatment method but a medicine composition itself containing two known substances—Rifampicin and Resveratrol, combined in a specific, safe ratio to reduce side effects for long-term use, not explaining any steps of how doctors should treat patients.

The Court observed that patent law protects inventions based on what is finally written in the claims, not older versions or the effect it may have when eventually administered in labs or hospitals. The judge noted that the Controller had mistakenly examined older claims instead of the final amended claims filed after hearing, and had not explained from the patent’s description how the “method of treatment” boundaries extended into the claim. Relying on past rulings of Societe Des Produits Nestle SA v. The Controller of Patents and Bayer Pharma Aktiengesellschaft v. The Controller of Patents, the Court re-affirmed that pharmaceutical compositions which clearly define their components and structure are not barred by Section 3(i), even if they mention treatment or prevention in the introduction of the claim. It was also held that the Controller should decide on all pending objections and not stop the analysis only on one section ignoring others. In view of these legal mistakes, the refusal order was set aside, and the patent application was sent back (remanded) for fresh examination with an assurance of a new hearing and a time-bound decision within six months, strictly as per law without influence from the Court’s observations.

This ruling clarifies a key public-interest issue—that a medicine as a product may be eligible for a patent if it shows technical innovation, but a doctor’s act of prescribing or administering it cannot be patented. The judgement protects both innovation rights and medical freedom under the law, while correcting frequent misunderstandings in patent refusals involving pharmaceutical combination claims.

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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ITC Limited Vs Pelican Tobacco Co Ltd

This case concerns a dispute between ITC Limited (the Plaintiff), a well-established manufacturer and trader of cigarettes, and Pelican Tobacco Co Ltd (the Defendants), who have adopted allegedly infringing marks and trade dress for cigarettes. The matter was adjudicated before the High Court of Delhi and the judgment was delivered by Hon'ble Mr. Justice Tejas Karia on 24th November 2025.

The Plaintiff ITC Limited has been using the trademark GOLD FLAKE since 1905 and has developed a long-standing reputation and goodwill in this mark related to cigarette products. The company claimed registrations for the trademark GOLD FLAKE and variants, along with original artistic trade dress and labels which have been granted copyright protection. The Defendants launched cigarette brands using deceptively similar marks such as GOLD FLAME and GOLD FIGHTER, along with packaging and labels closely resembling those of the Plaintiff. The Plaintiff contended that these acts amounted to trademark infringement, copyright violation, and passing off.

Procedurally, the Plaintiff filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure seeking an injunction against the Defendants’ use of these marks and trade dress. An ex-parte ad-interim injunction was granted on 13th March 2024. Subsequently, the Defendants filed an application under Order XXXIX Rule 4 seeking to vacate this injunction, which was contested by the Plaintiff.

The core dispute centered on whether the Defendants’ use of the marks GOLD FLAME and GOLD FIGHTER, along with similar trade dress, constituted infringement and passing off in violation of the Plaintiff's established trademark rights. The Plaintiff asserted that despite minor superficial changes in the marks, the overall presentation was confusingly similar and intentionally designed to ride on their goodwill. The Defendants argued that ‘GOLD’ is a generic and common descriptive word, denying any dishonest adoption or passing off. They asserted that their marks and trade dress were distinct enough, and that the Plaintiff’s delay in filing suit indicated acquiescence.

The Court undertook a detailed analysis of the legal principles governing trademark infringement and passing off. It observed that a trademark is an indicator of origin, serving to distinguish one's goods from those of others, and that this mark must possess a distinctive character. The Plaintiff’s mark GOLD FLAKE, used continuously since 1905 and registered since 1942, was found to have acquired distinctive character and goodwill recognized even in other judgments, including being recognized as a well-known mark by the Madras High Court.

The reasoning relied heavily on the resemblance between the Plaintiff's marks and the Defendants’ marks, including the dominant use of the word GOLD and similar packaging colors and labels. The Court rejected the Defendants’ defense that GOLD is a generic term, stating that the term in context had acquired secondary meaning specifically associated with the Plaintiff’s cigarettes. On the matter of passing off, the Court noted the utility of the “initial interest confusion” test, which considers confusion that occurs even before the purchase of the product is finalized. The Court recognized that cigarettes are often sold individually and by retailers, and imperfect recollection could easily mislead consumers into believing that the infringing products originated from the Plaintiff.

The Court referenced key Supreme Court decisions including Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., and Pernod Ricard India P Ltd. v. Karanveer Singh Chhabra to uphold that broad similarity in essential features suffices to establish infringement. It further held that delay in filing suit is not a valid defense when the opposing party has adopted marks dishonestly, citing Midas Hygiene Pvt. Ltd. v. Sudhir Bhatia and Hindustan Pencils Pvt. Ltd. v. India Stationery Products. The Defendants failed to provide a plausible explanation for the adoption of the marks, further supporting the conclusion of bad faith.

Balancing the equities, the Court found a strong prima facie case favoring the Plaintiff with the potential for irreparable harm if the injunction was denied. It emphasized that the restricted space available for cigarette packaging due to mandatory health warnings increased the likelihood of confusion caused by similar marks and trade dress.

The final decision was to confirm and make absolute the ex-parte ad-interim injunction granted earlier, restraining the Defendants from using the impugned marks, labels, and trade dress during the pendency of the suit. The application to vacate the injunction filed by the Defendants was dismissed.

This judgment reinforces the protection accorded to well-established trademarks and trade dress and clarifies that superficial alterations to evade infringement claims, especially in industries with limited branding space, will not be tolerated. The judgment also affirms the law relating to the acquisition of secondary meaning in descriptive terms and the doctrine of initial interest confusion.

Case Title: ITC Limited Vs Pelican Tobacco Co Ltd

Order Date: 24th November 2025

Case Number: CSCOMM 2212024

Neutral Citation: 2025:DHC:10358

Court: High Court of Delhi

Hon'ble Judge: Mr. Justice Tejas Karia

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

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

Suggested Titles for Publication:

1. "Trademark Infringement and Passing Off: The ITC Limited v. Pelican Tobacco Co Ltd Case Explored"

2. "Protecting Well-Known Marks in Restricted Packaging Environments: A Study of the GOLD FLAKE Dispute"

3. "Initial Interest Confusion and Secondary Meaning in Trademark Law: Insights from ITC Limited v. Pelican Tobacco"

4. "The Doctrine of Passing Off and Trademark Infringement in the Tobacco Industry: Delhi High Court's Recent Landmark"

5. "Descriptive Marks and the Limits of Monopoly: The Legal Battle Over ‘GOLD’ in ITC Limited v. Pelican Tobacco Co Ltd"

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Delhi High Court Confirms Injunction in ITC Limited vs Pelican Tobacco Co Ltd Trademark Dispute

New Delhi, November 24, 2025: In ITC Limited vs Pelican Tobacco Co Ltd & Ors (CSCOMM 2212024), the High Court of Delhi, presided over by Hon'ble Mr. Justice Tejas Karia, confirmed an ex-parte ad-interim injunction granted on March 13, 2024, restraining Pelican Tobacco from using marks like GOLD FLAME and GOLD FIGHTER, along with similar labels and trade dress for cigarettes.​

ITC Limited, using GOLD FLAKE since 1905 with registrations dating back to 1942 and massive sales turnover exceeding ₹40,000 crores in FY 2023-24, accused the defendants of infringing its well-known trademark—recognized as such by the Madras High Court—and copying trade dress, leading to passing off. The court found the impugned marks deceptively similar visually and phonetically, especially in limited packaging space mandated by tobacco health warning laws, creating "initial interest confusion" among average consumers with imperfect recollection, including when cigarettes are sold loose.​

Rejecting defendants' claims of delay, acquiescence, and "GOLD" being generic, the court held that ITC established secondary meaning in "GOLD" for cigarettes through extensive use, citing Supreme Court precedents like Kaviraj Pandit Durga Dutt Sharma v Navaratna Laboratories (AIR 1965 SC 980), Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd (2001 5 SCC 73), and Pernod Ricard India P Ltd v Karanveer Singh Chhabra (2025 SCC OnLine SC 1701). It ruled dishonest adoption overrides delay, with triple identity in marks, goods, and trade channels warranting protection; balance of convenience and irreparable injury favored ITC.​

The court dismissed the defendants' bid to vacate the injunction (IA 30198/2024), making it absolute till suit disposal, emphasizing no need for actual damage proof in infringement cases.​

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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Koninklijke Philips N.V. & Ors. Vs Karma Mindtech

Brief Introductory Head Note Summary of Case

This case involves a legal battle between a global technology company specializing in medical software and a group of defendants accused of pirating and tampering with that software. The company, Koninklijke Philips N.V. and its related entities, sued Karma Mindtech and others for infringing their copyrights, trademarks, and trade secrets in a specialized medical imaging software called IntelliSpace Portal. The dispute escalated when one defendant filed what the company claimed was a false affidavit in response to court-ordered questions, leading to an application for criminal action against him. The court had to decide whether this affidavit amounted to perjury and obstruction of justice, highlighting the importance of honesty in court proceedings.

Factual Background

Koninklijke Philips N.V., along with its affiliates, develops and sells advanced software for medical purposes, including the IntelliSpace Portal, which helps doctors visualize and analyze medical images like MRIs and CT scans. They have invested heavily in creating different versions of this software, with one version registered for copyright in China. To protect their work, they use security tools like the Integrated Security Tool, which controls access through certificates and licenses. Employees and authorized users must sign confidentiality agreements to access this sensitive information, known as Customer Service Intellectual Property.

The defendants, including Karma Mindtech, were accused of bypassing these security measures to access and alter the software without permission. They allegedly imported old hardware like computers and monitors, refurbished them, and installed tampered versions of the IntelliSpace Portal software on them. This tampered software had its trial period extended indefinitely, allowing it to be sold to medical centers for use with diagnostic machines. One defendant, who was a former employee of Philips, had access to confidential information during his job but was said to have misused it.

Philips discovered this through investigations, leading to a police raid where tampered software was seized from the former employee's home. The software found had an unnatural validity period of over 5,000 years, far beyond the normal one-month trial. This raised concerns not just about intellectual property theft but also about potential risks to patient safety if faulty software was used in medical settings.

Procedural Detail

The case began when Philips filed a civil suit in the Delhi High Court seeking a permanent injunction to stop the defendants from dealing with the pirated software, along with demands for damages, accounts of profits, and handover of infringing materials. On December 20, 2023, the court granted a temporary injunction without hearing the defendants first, restraining them from using or selling the software.

Later, Philips filed an application under the Code of Civil Procedure, as modified for commercial cases, asking the court to order the defendants to disclose documents and answer specific questions about their activities, such as when they started pirating the software, who they sold it to, and how they bypassed security measures.

The court allowed this application on December 16, 2024, directing the defendants to answer the first eleven questions by affidavit within four weeks. The deadline passed on January 13, 2025, but one defendant filed his affidavit late on February 8, 2025. Philips then filed another application under the new criminal procedure law, Section 379 of the Bharatiya Nagarik Suraksha Sanhita, 2023, accusing this defendant of committing offenses like perjury and fabricating evidence under Sections 227, 229, 236, 237, and 246 of the Bharatiya Nyaya Sanhita, 2023. This application sought to initiate criminal proceedings against him for lying in his affidavit.

Core Dispute

The main issue in this particular application was whether the defendant's affidavit contained deliberate lies and evasions that amounted to perjury and interfered with justice. Philips argued that the affidavit contradicted the defendant's own earlier statements in his defense, a local commissioner's report, and other admitted documents. For example, the defendant had previously admitted to buying pirated software from a Chinese seller thinking it was genuine and starting his infringing business in August 2021. But in the affidavit, he denied everything vaguely, including any involvement in piracy or access to confidential information. Philips claimed this was a willful attempt to mislead the court, suppress the truth, and fabricate falsehoods, which courts treat seriously to maintain the integrity of legal processes.

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

The court, in its judgment, carefully examined the submissions from Philips and highlighted the contradictions in the defendant's affidavit. It noted that the affidavit provided vague denials to every question, summarily rejecting all allegations without specifics, which directly clashed with prior records.

The judge discussed how the defendant's written statement admitted to purchasing the software from a Chinese person for $1200 via PayPal, believing it genuine, only realizing it was pirated after Philips' complaint. This was cited from paragraph 18 of the written statement. However, the affidavit denied any piracy or sales, which the court saw as a clear falsehood.

The local commissioner's report from January 12, 2024, was referenced, where the defendant admitted starting the business in August 2021 and using infringing software. The court quoted the relevant part: "I inquired about the same and was informed by Defendant No. 2 / Karan that he commenced the said business in or around August 2021." This admission contradicted the affidavit's denials.

The employment agreement and undertaking were also key, as they acknowledged the defendant's access to confidential information. The court pointed out that the defendant had admitted the correctness of these documents in court, yet denied access in the affidavit. The Integrated Security Tool credentials further confirmed this access.

In reasoning why this amounted to perjury, the court referred to Sections 227, 229, 236, 237, and 246 of the Bharatiya Nyaya Sanhita, 2023, which deal with giving false evidence, fabricating false evidence, using evidence known to be false, and related offenses. It explained that these sections replace older provisions from the Indian Penal Code but maintain the principle that lying under oath to mislead the court is a serious crime.

The judge discussed precedents to support the decision. For instance, in Chandra Shashi v. Anil Kumar Verma (1995) 1 SCC 421, the Supreme Court of India emphasized that courts must deal sternly with false affidavits as they pollute the stream of justice. The court quoted: "The stream of justice has to be kept clean and pure, and anyone soiling its purity must be dealt with sternly so that others may not dare to repeat the mistake."

Another citation was from Muthu Karuppan v. Pariban (2011) 5 SCC 496, where the Supreme Court held that filing a false affidavit is an attempt to deceive the court and interferes with justice administration. The judgment noted: "Filing of false affidavit or making a false statement on oath in courts aims at striking a blow at the rule of law and no court can ignore such conduct which has the tendency to shake public confidence in the judicial institutions."

The court also referred to Suo Moto Proceedings Against R. Karuppan, Advocate (2001) 5 SCC 289, stressing that perjury undermines the judicial system and must be punished to deter others.

In discussing the application under Section 379 of the Bharatiya Nagarik Suraksha Sanhita, 2023, which allows courts to proceed against perjury, the judge explained that this provision empowers the court to take cognizance of such offenses without a separate complaint if they occur in its presence. It drew from Rita Markandey v. Surjit Singh Arora (1996) 6 SCC 14, where the Supreme Court clarified that courts can initiate proceedings for perjury if false statements are evident from the record.

The reasoning emphasized that the defendant's actions were suppressio veri (suppression of truth) and suggestio falsi (suggestion of falsehood), intending to obstruct justice. The court rejected any leniency, noting that in commercial disputes involving intellectual property, honesty is crucial to fairly assess damages and infringements.

Decision

The court allowed the application and directed the initiation of criminal proceedings against the defendant under the mentioned sections of the Bharatiya Nyaya Sanhita, 2023. It ordered the defendant to appear before the appropriate criminal court and imposed costs on him for abusing the process. The civil suit continues separately.

Concluding Note

This judgment underscores the judiciary's commitment to upholding truth in legal proceedings, especially in intellectual property cases where technical complexities can be exploited. It serves as a warning that false statements, even in affidavits, can lead to severe consequences, reinforcing trust in the legal system.

Koninklijke Philips N.V. & Ors. Vs Karma Mindtech & Ors., 24/11/2025, CS(COMM) 914/2023, 2025:DHC:10345, High Court of Delhi at New Delhi, 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

Here are 5 suitable titles for this legal analytical article to be published as a legal research paper in a legal journal:

1. Perjury in Intellectual Property Litigation: Analyzing False Affidavits in Koninklijke Philips N.V. v. Karma Mindtech
2. Safeguarding Judicial Integrity: Court's Response to Evasive Denials in Software Piracy Disputes
3. The Perils of Suppressio Veri in Commercial Courts: Lessons from the Philips ISP Infringement Case
4. Criminal Ramifications of False Evidence in Civil Suits: A Study of BNSS and BNS Applications
5. Trade Secret Protection and Affidavit Accountability: Judicial Reasoning in a Medical Software Piracy Matter

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Delhi High Court Initiates Criminal Proceedings Against Defendant in Philips Software Piracy Case

In a significant ruling on intellectual property rights, the Delhi High Court, in the case titled Koninklijke Philips N.V. & Ors. vs Karma Mindtech & Ors., bearing case number CS(COMM) 914/2023, delivered its judgment on November 24, 2025, by Hon'ble Mr. Justice Tejas Karia. The court addressed an application seeking criminal action against one of the defendants for submitting a false affidavit in an ongoing suit over alleged copyright infringement, trade secret violations, and software piracy involving Philips' IntelliSpace Portal (ISP) medical imaging software.

The suit, filed by Philips, accuses the defendants of tampering with and distributing pirated versions of ISP, a proprietary software used for advanced medical imaging analysis. Philips claims the defendants bypassed security measures like the Integrated Security Tool (IST), accessed confidential trade secrets, and sold altered software to diagnostic centers, potentially endangering public health and eroding the company's goodwill. A former Philips employee, Defendant No. 2, is alleged to have misused his access to confidential information.

The court had earlier granted an ex-parte interim injunction in December 2023, restraining the defendants from dealing in the software. Philips then sought discovery through interrogatories, which the court allowed in December 2024. Defendant No. 2's late affidavit, filed in February 2025, contained vague denials contradicting his own written statement, a local commissioner's report, and admitted documents, including admissions of purchasing pirated software from a Chinese seller and starting infringing activities in August 2021.

Justice Karia held that the affidavit amounted to willful suppression of truth and fabrication of falsehood, constituting perjury and obstruction of justice under Sections 227, 229, 236, 237, and 246 of the Bharatiya Nyaya Sanhita, 2023. Citing Supreme Court precedents like Chandra Shashi v. Anil Kumar Verma (1995) 1 SCC 421 and Muthu Karuppan v. Pariban (2011) 5 SCC 496, the court emphasized the need to deal sternly with false statements to preserve judicial integrity. The application under Section 379 of the Bharatiya Nagarik Suraksha Sanhita, 2023, was allowed, initiating criminal proceedings against Defendant No. 2.

This decision highlights the judiciary's firm stance against perjury in commercial disputes, particularly those involving technology and intellectual property.

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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