Rita Verma Vs. Chetan Adesera

Brief Introductory Head Note Summary of Case

This case involves a petition filed under Article 227 of the Constitution by the defendant in a trademark infringement suit, challenging the trial court's decision to reject additional documents at a later stage of the trial. The Jharkhand High Court looked closely at how Order VIII Rule 1-A of the Code of Civil Procedure, 1908 (CPC) works in commercial cases, weighing the need for quick decisions against the main goal of ensuring fair justice.

Factual Background

Rita Verma runs a jewellery shop called Chhaganlal Madanlal & Sons at Dhanna Singh Building, New Purulia Road, Mango, Jamshedpur in East Singhbhum district. The other side, Chetan Adesera, Piyush Adesera, Manish Adesera, and Smt. Pasam Adesera, are partners in a firm named Chhaganlal Dayaljee with a showroom at Diagonal Road, Bistupur, Jamshedpur, also in East Singhbhum. Both businesses deal in jewellery and use names starting with Chhaganlal, which sparked the conflict over trademarks, logos, and how the shops look.

Procedural Detail

The plaintiffs started Original Suit No. 04 of 2017 in the Commercial Court, East Singhbhum, Jamshedpur under Section 134 of the Trade Marks Act, 1999. They asked for a permanent injunction to stop the defendant from using marks like CHHAGANLAL or CHHAGANLAL DAYALJEE or anything too similar, to prevent passing off their business as the plaintiffs', to block use of similar logos or artistic works, for delivery up and destruction of infringing items like wrappers and letterheads, for damages enquiry, receiver appointment, injunction, costs, and other reliefs.

The court framed issues, plaintiffs finished their evidence on 18.09.2024, and then it was the defendant's turn; she had examined seven witnesses by then. During the suit, the defendant applied under Order VIII Rule 1-A CPC to add documents like certified copy of trademark application No.773292 dated 24.10.1997 for CHHAGANLAL DAYALJEE MANUFACTURING JEWELLERS by Shashikant Chhaganlal under Trade and Merchandise Marks Act, 1958; certificate of registration Trade Mark No.1611685 dated 15.10.2007 for Shashikant Chhaganlal Adesara and others; newspaper Uditvani dated 01.04.2016 and 06.04.2016; application No.3305681 dated 09.07.2016 and No.3344290 dated 24.08.2016 for Chetan Adesara's logo CHD-1918; application No.4214895 dated 24.06.2019 for CHHAGANLAL DAYALJEE THE ORIGINAL; photos of plaintiffs' shop fronts; and 11 cash memos from plaintiffs' shop.

She said certified copies came later, newspapers were untraceable before, and these were key for fair decision, or she would face big loss. Plaintiffs replied that unpleaded documents should not go on record. The Commercial Court rejected it on 12.09.2025, noting plaintiffs' evidence closed 18.09.2024, defendant got multiple chances with costs before, last on 16.05.2025 and another on 18.08.2025 with Rs.2000 cost, so fifth application not allowed.

Defendant filed C.M.P. No. 1086 of 2025 under Article 227 seeking to quash that order and allow the documents list dated 04.09.2025. Heard by Division Bench, reserved 18.11.2025, pronounced 20.11.2025.

Core Dispute

The main fight was whether the trial court rightly turned down the defendant's fifth application under Order VIII Rule 1-A CPC to add relevant documents after written statement and plaintiffs' evidence, in a commercial suit needing quick end, or if courts must allow them for real justice despite delays.

Defendant said trial court too strict on procedure. Plaintiffs said commercial suits must finish fast, no endless evidence from defendant.

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

The High Court agreed commercial suits need quick disposal as per Supreme Court in BGS SGS SOMA JV Vs. NHPC Ltd., (2020) 4 SCC 234, and Ambalal Sarabhai Enterprises Limited Vs. K.S. Infraspace LLP and Another, (2020) 15 SCC 585. But speed does not mean ignoring law; here suit from 2017, plaintiffs closed evidence 18.09.2024, defendant leading evidence with seven witnesses, and trial court found no irrelevance in documents, just counted applications.

Court said procedure rules help justice, not block it; they are handmaid of justice, not to cause miscarriage. No party denied chance in justice process unless statute forces it strictly; procedural law servant, aid to justice, lubricant not resistant. Quote: mortality of justice at hands of law troubles judge's conscience. All procedure based on advancing justice, not defeating it. Procedural hurdles no bar if no serious prejudice; litigation journey to truth, court must find it. Cited Sardar Amarjit Singh Kalra (Dead) by Lrs v. Pramod Gupta (Smt) (Dead) by Lrs & Anr, (2003) 3 SCC 272; Kailash v. Nanhku & Ors, (2005) 4 SCC 480 (Constitution Bench); Sushil Kumar Sen v. State of Bihar, (1975) 1 SCC 774; State of Punjab v. Shamlal Murari, (1976) 1 SCC 719.

On Order VIII Rule 1-A CPC, quoted Supreme Court in Sugandhi v. Rajkumar, (2020) 10 SCC 706: Rule 1-A(1) says defendant list and produce documents with written statement, state if not in possession; (3) such document not received in evidence without court leave; exceptions for cross-exam or memory refresh. Sub-rule (3) gives second chance with leave on good cause, exercised judiciously, no fixed formula. Procedure handmaid, no hurdles if no prejudice, lenient view for relevant documents needed for just decision; there defendants said documents missing then traced, court should allow.

Also Levaku Pedda Reddamma & Ors v. Gottumukkala Venkata Subbamma & Anr, Civil Appeal No.4096 of 2022: trial and high court erred not allowing documents despite delay; relevance for trial court to check, denial of documents denies justice; procedure handmaid, impose costs not refuse.

Trial court hyper-technical, erred rejecting when defendant still giving evidence, no irrelevance finding.

Decision

Petition allowed, order 12.09.2025 set aside, documents allowed subject to Rs.25,000 cost to Jharkhand State Legal Services Authority. Trial court decide suit by 31.03.2026, parties appear 28.11.2025, pending applications disposed.

Concluding Note

Judgment stresses procedure must serve justice, not trip it; in commercial suits Order VIII Rule 1-A(3) leave for late documents on good cause with costs if relevant, no serious prejudice. Trial courts avoid hyper-technical rejection, balance speed with fair trial to find truth.

Case Title: Rita Verma Vs. Chetan Adesera & Ors.

Order date: 20/11/2025

Case Number: C.M.P. No. 1086 of 2025

Neutral Citation: 2025:JHHC:34689-DB

Name of Court: High Court of Jharkhand at Ranchi

Name of Hon'ble Judge: Per Tarlok Singh Chauhan, C.J. and Rajesh Shankar, 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 5 Suitable titles:

1. Procedural Fairness Over Technicality: Jharkhand HC on Order VIII Rule 1-A in Trademark Suits

2. Handmaids of Justice: Allowing Late Documents in Commercial Litigation

3. Balancing Expediency and Equity: Analysis of Rita Verma v. Chetan Adesera

4. From Rigidity to Relevance: Supreme Court Precedents on CPC in High Court Ruling

5. Truth in Trial: Late Evidence under Order VIII Rule 1-A CPC Revisited

Jharkhand High Court Permits Late Documents in Trademark Row: Rita Verma v. Chetan Adesera & Ors (C.M.P. No. 1086 of 2025, Order dated 20.11.2025, Neutral Citation 2025:JHHC:34689-DB, Per Hon’ble Chief Justice Tarlok Singh Chauhan with Hon’ble Mr. Justice Rajesh Shankar, High Court of Jharkhand at Ranchi)

Division Bench set aside Commercial Court's rejection of defendant's fifth application under Order VIII Rule 1-A CPC to file trademark applications, registrations, newspapers, photos in 2017 infringement suit by Chhaganlal Dayaljee partners against Rita Verma's similar jewellers in Jamshedpur. Citing Sugandhi v. Rajkumar (2020) 10 SCC 706 and Levaku Pedda Reddamma (CA 4096/2022), court held procedure aids justice, allow relevant late files with costs (Rs.25,000), direct suit end by 31.03.2026 despite delays post-2017 filing.

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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Jharkhand High Court Allows Late Filing of Documents in Trademark Dispute: Rita Verma Vs. Chetan Adesera (C.M.P. No. 1086 of 2025, Order dated 20.11.2025, Neutral Citation 2025:JHHC:34689-DB, authored by Hon’ble Chief Justice Tarlok Singh Chauhan with Hon’ble Mr. Justice Rajesh Shankar, High Court of Jharkhand at Ranchi) 

In a key ruling on procedural fairness in commercial litigation, the Jharkhand High Court set aside a trial court order rejecting the defendant's application to introduce additional trademark documents under Order VIII Rule 1-A CPC in a long-pending trademark infringement suit.  The underlying Original Suit No. 04 of 2017, filed by partners of "Chhaganlal Dayaljee" jewellers against Rita Verma, proprietor of "Chhaganlal Madanlal & Sons", alleges infringement and passing off of the "CHHAGANLAL" mark and logo in Jamshedpur's jewellery market. 

The Commercial Court at Jamshedpur had dismissed the defendant's fifth bid on 12.09.2025 to file items like old trademark applications (e.g., No. 773292 of 1997), registrations (e.g., No. 1611685 of 2007), newspaper clippings from Uditvani, shop photos, and cash memos, citing repeated delays post-plaintiffs' evidence closure in September 2024.  The High Court, invoking Supreme Court precedents like Sugandhi v. Rajkumar (2020) 10 SCC 706 and Levaku Pedda Reddamma (Civil Appeal No. 4096/2022), held that procedural rules are "handmaids of justice" and trial courts must allow relevant late documents with costs if no serious prejudice occurs, rather than adopt a "hyper-technical view". 

Permitting the documents subject to Rs. 25,000 costs to the Jharkhand State Legal Services Authority, the Division Bench directed the trial court to expedite the 2017 suit's disposal by 31 March 2026, emphasizing balanced speedy justice in commercial matters. 

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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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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