Shroff Geeta Vs Controller Of Patents And Design

Brief Introductory Head Note Summary of case, factual Background procedural detail, Core dispute

This case revolves around a patent application for a composition involving human embryonic stem cells and their derivatives, along with methods for their use and preparation. Geeta Shroff filed the patent application numbered 3853/COL/MP-2008 on 22 September 2008 with the Patent Office in Kolkata. After requesting examination, the Patent Office issued a First Examination Report, to which Shroff responded, and later submitted written submissions along with amended claims 1-56 following a hearing. On 24 September 2018, the Assistant Controller of Patents and Designs rejected the application mainly under Section 3(b) of the Patents Act, 1970, finding it contrary to public order or morality due to the involvement of human embryos. Shroff then appealed this rejection under Section 117A of the Patents Act to the Calcutta High Court, Intellectual Property Rights Division, arguing violation of natural justice principles and misinterpretation of the law. The core dispute centered on whether the invention, which derives stem cells from the inner cell mass of 2 to 7-day-old human embryos using immunological or mechanical methods, necessarily destroys embryos, making its commercial exploitation unethical and non-patentable under Section 3(b).​

detailed reasoning and discussion by court including on judgement with complete citation referred and discussed for reasoning decision

The court thoroughly examined Section 3(b) of the Patents Act, 1970, which states that an invention is not patentable if its primary or intended use or commercial exploitation could be contrary to public order or morality or causes serious prejudice to human, animal or plant life or health or to the environment. The judge explained that this provision looks at four key aspects: the main purpose of the invention, its potential for harmful commercial use, its impact on public order or morality, and whether it seriously harms life or health, with the word "serious" added in the 2002 Amendment to ensure only significant risks are barred. The court noted that patent law must balance innovation with ethics, especially in biology, and Section 3(b) acts as a safeguard against inventions harming life or going against moral standards.​

Drawing from international standards, the court referred to Article 53(a) of the Paris Convention, which excludes inventions against "ordre public or morality," meant to deny patents for things likely to cause riots, public disorder, or offensive behavior. It cited Harvard College v. Canada (Commissioner of Patents) 3 S.C.R. 519, where the European Patent Office clarified that "ordre public" protects public security, individual integrity, and the environment, excluding inventions breaching peace or seriously prejudicing the environment. The judgment also discussed long-standing patent principles against immoral inventions, listing examples like human cloning, germ line genetic modification, and commercial use of human embryos, and referenced Prathiba M. Singh on Patent Law, Edition-1, Vol-I at page 140, which highlights the controversy around defining a human embryo, its use, and industrial purposes.​

Applying this to the invention, the court upheld the Controller's order, finding that embryonic stem cells are derived destructively from early-stage human embryos (2-7 days old), a delicate phase of human life formation that risks damage or miscarriage. The process involves collecting these embryos in minimal essential medium and extracting cells, leading to embryo destruction, which is unethical and fits Section 3(b) as contrary to public morality and order. The court emphasized that the impugned order was well-reasoned, considered all arguments, and aligned with the National Guidelines for Stem Cell Research 2017, despite stem cell advances in regenerative therapies. It refused to interfere, stating no illegality, irrationality, or error in law existed, and courts should not second-guess experts in such complex ethical matters. Thus, the appeal IPDPTA 88 of 2023 was dismissed on 17 November 2025.​

Concluding Note

This judgment reinforces that ethical boundaries, particularly around human embryos, override patent rights under Section 3(b), prioritizing public morality and life protection over scientific promise. It serves as a caution for biotech inventors to ensure processes avoid destructive embryo use, aligning Indian law with global norms while respecting national guidelines.​

Case Title: Shroff Geeta Vs Controller Of Patents And Design
Order date: 17.11.2025
Case Number: IPDPTA/88/2023
Neutral Citation: 2025:CalHC:IPDPTA88
Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division)
Name of Hon'ble Judge: Ravi Krishan Kapur, 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 for this legal analytical article:

1. Embryonic Stem Cells and Moral Boundaries: Decoding Section 3(b) in Shroff v. Controller of Patents

2. Patenting Human Embryos? Calcutta High Court's Ethical Stand in Geeta Shroff's Appeal

3. Morality Over Innovation: Rejecting Stem Cell Patents Under India's Patents Act

4. Destructive Derivation of Stem Cells: A Section 3(b) Analysis from Calcutta High Court

5. Public Order, Ethics, and Patents: Lessons from Shroff Geeta v. Asst. Controller

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Calcutta High Court Dismisses Patent Appeal on Human Embryonic Stem Cells in Shroff Geeta v. Asst. Controller of Patents (IPDPTA/88/2023, Order dated 17.11.2025, Hon'ble Justice Ravi Krishan Kapur, J., High Court at Calcutta, Original Side, Intellectual Property Rights Division)

The Calcutta High Court has upheld the rejection of a patent application for a composition involving human embryonic stem cells derived from 2-7 day old embryos, ruling it non-patentable under Section 3(b) of the Patents Act, 1970, as its commercial exploitation is contrary to public order and morality. Geeta Shroff's application (No. 3853/COL/MP-2008, filed 22 September 2008) was dismissed by the Assistant Controller on 24 September 2018 after examination, response to the First Examination Report, and amended claims, prompting this appeal under Section 117A. The court found the process destructively extracts cells from embryo inner cell mass, risking harm to early human life stages and aligning with ethical prohibitions akin to human cloning or germ line modification.​

Justice Ravi Krishan Kapur emphasized Section 3(b)'s focus on primary use, commercial harm potential, and serious prejudice to life or health, referencing Article 53(a) of the Paris Convention, Harvard College v. Canada 3 S.C.R. 519, Prathiba M. Singh on Patent Law, and National Guidelines for Stem Cell Research 2017. Dismissing the appeal, the court held the Controller's order reasoned, non-violative of natural justice, and undeserving of interference in expert ethical assessments, prioritizing morality over innovation.​

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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Sh. Gaurav Khattar Vs Sh. Virender Aggarwal

Brief Introductory Head Note Summary of Case, Factual Background

This case involves a person named Gaurav Khattar who was unhappy with a court decision against him and tried to get it changed through a review process. The original issue started from a money dispute where Virender Aggarwal claimed that Gaurav Khattar owed him money based on some checks that bounced. A lower court had ruled in favor of Virender Aggarwal back in 2016 without Gaurav Khattar showing up, because the court believed he had been properly notified through his father. Years later, Gaurav Khattar appealed that decision, but the High Court dismissed his appeal mainly because it was filed way too late—over 3,000 days after the original ruling. Not giving up, Gaurav Khattar then asked the High Court to review its own dismissal, saying there were mistakes in the record and new evidence he found. The High Court looked at this request carefully but ended up saying no, keeping the earlier dismissal in place. The facts go back to 2016 when Virender Aggarwal filed a lawsuit against Gaurav Khattar in a district court in Delhi, claiming money owed from a loan, supported by checks. The court sent a notice to Gaurav Khattar, which was given to his father on May 18, 2016. Gaurav Khattar didn't appear in court, so the judge ruled against him on June 10, 2016, ordering him to pay. Gaurav Khattar says he didn't know about this until much later, in July 2023, when he got a notice about enforcing the payment. He claims his father never told him because they weren't on good terms—his sister had tried to take her own life, causing family tension—and his father had eye problems from a surgery in December 2016. Gaurav Khattar also mentioned he withdrew from society starting August 2016, got arrested in December 2021, and was out on bail in January 2022. These personal issues, he argued, explained why he didn't act sooner.

Procedural Detail

The journey through the courts started with the original lawsuit, numbered Civil Suit No. 2626/2016, filed by Virender Aggarwal in the District and Sessions Court at Karkardooma, Delhi. That court issued a summons to Gaurav Khattar, which was served on his father as per the rules in the Code of Civil Procedure, 1908. Since Gaurav Khattar didn't respond or appear, the court passed a judgment and decree against him on June 10, 2016. Fast forward to July 2023, when Gaurav Khattar received a notice for execution of that decree, meaning the court was moving to enforce the payment. He first tried to challenge it by filing an application under Order XXXVII Rule 4 of the Code of Civil Procedure in the executing court, but that was dismissed because the court said it didn't have the power to handle it. Then, he filed a similar application in the original trial court, which dismissed it on January 20, 2025, saying it was too late and lacked merit. Not stopping there, Gaurav Khattar filed an appeal against the 2016 judgment in the High Court of Delhi, numbered RFA 485/2025, along with a request to excuse the huge delay of 3192 days. The High Court heard this appeal and, on June 25, 2025, dismissed it, saying the delay wasn't justified and the original service of notice was proper. Still determined, Gaurav Khattar filed a review petition under Section 114 read with Order XLVII Rule 1 of the Code of Civil Procedure, numbered Review Pet. No. 427/2025, along with some related applications. This review was heard by the same judge, and the decision came on November 24, 2025, dismissing the review.

Core Dispute

At the heart of this case was whether the High Court should revisit its own decision to dismiss Gaurav Khattar's appeal. Gaurav Khattar argued two main points for the review: first, he had found new important evidence—an Aadhar Card and bank passbook showing he lived at a different address (219, Teliwara, Shahadara) than where the notice was served (186, Teliwara)—proving he wasn't properly notified. He said these documents weren't available to him earlier because they were with his estranged father. Second, he claimed there was an obvious mistake in the High Court's earlier judgment because it didn't consider documents about his father's eye surgery in December 2016 and his sister's suicide attempt, which explained why his father couldn't or didn't tell him about the notice. These issues, he said, meant the original court decision was unfair since he never got a chance to defend himself. On the other side, the court had to decide if these reasons met the strict rules for a review, which only allows changes if there's a clear error on the record or truly new evidence that couldn't have been found earlier with reasonable effort.

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

The High Court, through Justice Tejas Karia, carefully broke down Gaurav Khattar's arguments in the review petition. Starting with the new evidence claim, Gaurav Khattar presented his Aadhar Card and bank passbook to show he lived at a different address at the time of the notice in 2016. His lawyer argued these were discovered only recently and proved the notice was served wrong, meaning Gaurav Khattar had no knowledge of the lawsuit. The court, however, said these documents weren't really "new" in the legal sense under Order XLVII Rule 1 of the Code of Civil Procedure, which allows review only if the evidence was not known or obtainable with due diligence at the time. The judge pointed out that Gaurav Khattar could have gotten copies of his own Aadhar and bank records from the authorities anytime by being careful and proactive. Even if they were with his father, that didn't excuse not trying harder earlier. Moreover, the court said even accepting these documents, they didn't prove Gaurav Khattar was at that address exactly when the notice was served in May 2016—they just showed a general address. The record clearly showed the notice was given to his father, which is allowed under Order V Rule 15 of the Code of Civil Procedure when the person can't be found personally and a family member accepts it. No citation to other cases was directly quoted here, but the reasoning relied on the plain reading of these CPC provisions, emphasizing that service on an adult family member living in the same house is valid unless proven otherwise. Moving to the second ground, the alleged error on the face of the record, Gaurav Khattar said the High Court's June 25, 2025, judgment ignored key documents: a medical discharge summary for his father's cataract surgery in December 2016, showing vision problems, and records of his sister's suicide attempt, which caused family rift. He argued this meant his father couldn't understand or communicate the notice properly, making the service invalid. The court disagreed, explaining that an "error apparent on the face of the record" under Section 114 and Order XLVII Rule 1 must be obvious without needing deep argument or re-examination of facts—it's not for rearguing the whole case. Here, the surgery happened in December 2016, months after the notice was served on May 18, 2016, so the father's vision issues couldn't have affected that moment. The family stress from the sister's incident was assumed but not proven to prevent the father from informing Gaurav Khattar. The judge called these claims afterthoughts based on guesses, not solid proof. To support this, the court referred back to its own earlier judgment in RFA 485/2025 dated June 25, 2025, where it had already discussed the delay condonation under Section 5 of the Limitation Act, 1963, noting that the 3192-day delay wasn't excused by personal issues like withdrawing from society (which started after the 2016 judgment) or later arrest. That judgment cited no external cases but relied on CPC provisions like Order XXXVII Rules 4 and 5 for setting aside summary judgments, and stressed that Gaurav Khattar admitted giving checks for a loan but provided no evidence against it. The review judgment reiterated that both the executing and trial courts correctly dismissed his earlier applications on delay and merit, aligning with the principle that courts won't condone delays without good cause. Overall, the discussion highlighted how reviews are narrow—not a second appeal—and cited the CPC's intent to prevent endless litigation, ensuring finality unless there's a glaring mistake.

Decision

The High Court dismissed the review petition, saying no valid grounds were made out for changing the earlier judgment. All related applications were also closed off, keeping the dismissal of the appeal intact. This meant the original 2016 decree against Gaurav Khattar stood, and he couldn't challenge it further through this route.

Concluding Note

This case shows how strict courts can be about deadlines and proper notice in legal matters, reminding everyone that personal troubles, while sad, don't always excuse delays unless proven directly relevant. It underlines the importance of acting quickly and gathering evidence early, as reviews are a last resort only for clear errors or truly undiscoverable facts. For anyone facing similar issues, it highlights checking family communications and records promptly to avoid losing rights.

Case Title: Sh. Gaurav Khattar Vs Sh. Virender Aggarwal

Order Date: November 24, 2025

Case Number: Review Pet. No. 427/2025 in RFA 485/2025

Neutral Citation: 2025:DHC:10364

Name of Court: High Court of Delhi at New 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

Suggested Titles for This Legal Analytical Article

1. Reviewing Judicial Decisions: Limits on New Evidence and Apparent Errors in Delhi High Court Rulings
2. The Strict Scope of Review Petitions Under CPC: Insights from Gaurav Khattar vs Virender Aggarwal
3. Delay Condonation and Service of Summons: A Case Study on Procedural Fairness in Indian Courts
4. When Personal Hardships Meet Legal Deadlines: Analyzing the Dismissal of a Review in a Debt Recovery Dispute
5. Error on the Record or Afterthought? Exploring Review Mechanisms in High Court Appeals

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Delhi High Court Dismisses Review Petition in Long-Delayed Debt Recovery Case: Sh. Gaurav Khattar vs Sh. Virender Aggarwal

New Delhi, November 29, 2025 – In a recent ruling by the High Court of Delhi at New Delhi, Hon'ble Mr. Justice Tejas Karia dismissed the review petition in the case titled Sh. Gaurav Khattar vs Sh. Virender Aggarwal, bearing case number Review Pet. No. 427/2025 in RFA 485/2025, with the order dated November 24, 2025. The decision upholds the court's prior judgment from June 25, 2025, which had rejected Khattar's appeal against a 2016 trial court decree ordering him to repay a loan to Aggarwal based on bounced cheques.

The dispute traces back to a 2016 civil suit where Aggarwal sued Khattar for loan recovery, and the trial court passed an ex-parte decree after summons were served on Khattar's father. Khattar claimed he was unaware of the proceedings due to family estrangement, his father's vision issues post-cataract surgery, and his own withdrawal from society following personal hardships, including an arrest in 2021. He only learned of the decree in 2023 during execution proceedings and filed a delayed appeal after unsuccessful attempts to set it aside in lower courts.

In the review petition, Khattar argued for reconsideration on grounds of new evidence—his Aadhaar card and bank passbook showing a different residential address—and an alleged error in the earlier judgment for overlooking documents about his father's health and his sister's suicide attempt, which he said invalidated the summons service. However, Justice Karia held that the new documents could have been obtained with due diligence and did not prove improper service at the time, as the summons were validly delivered to Khattar's father in May 2016, before the surgery. The court deemed the submissions as afterthoughts and found no apparent error on the record, dismissing the petition while emphasizing adherence to the Code of Civil Procedure's rules on service and reviews.

This ruling reinforces the strict standards for condoning delays and reviewing judgments, highlighting that personal circumstances must be substantiated and timely to warrant relief.

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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Saurabh Gupta Vs Sheopals Pvt. Ltd.

Brief Introductory Head-Note & Case Summary

The case arises from cross-appeals before the High Court of Delhi concerning interim injunctions in a trademark infringement and passing-off suit. The plaintiff claimed that the defendant’s use of the mark “SHEOPAL’S” for cosmetics violated his trademark rights over the registered word mark OPAL in Class 3. The earlier single-judge Commercial Court order had granted injunction to the plaintiff, but on appeal, the Division Bench remanded the matter holding that the lower court had illegally dissected the defendant’s mark. On remand, the Commercial Court again dismissed the injunction sought by the plaintiff, but for flawed reasons on dominance, phonetic similarity, originality, genericity, and irreparable injury. The Division Bench, while sustaining the result of non-grant of injunction, set the law right by clarifying that neither anti-dissection nor dominance applies where the plaintiff’s mark OPAL is not composite, and that SHEOPAL’S, taken as a whole and viewed from the perspective of an average consumer, is not deceptively or phonetically confusingly similar. Equity based on defendant’s expenses is not recognized. The decision reinforces holistic comparison, common word distinctiveness by context, and statutory presumption of validity under Section 31(1) of the Trade Marks Act.

Factual Background

The plaintiff, Saurabh Gupta, owns the registered word trademark OPAL under Class 3, registered with effect from 1992, covering cosmetics items including gels, soaps, foundation cakes, and similar products. He asserted continuous use since 1992 and later species of cosmetics like shampoos and face-packs since 2015, generating large goodwill. To show market reputation, he relied on financial records depicting an annual sales turnover rising from ₹93,60,686 in 2006-07 to ₹28,50,74,632.18 in 2023-24.

The defendant, Sheopals Private Limited, was incorporated on 17 June 2016. The defendant adopted the brand name SHEOPAL’S, derived from the name of the late father of one of its founders, Sheopal Meena. The defendant also holds a registered trademark SHEOPAL’S under Class 5, registered from 23 November 2018, for health, wellness, and pharmaceutical-related products. The defendant applied for registration of SHEOPAL’S in Class 3 in 2018 and again in 2022, which were both opposed by the plaintiff. The plaintiff alleged that despite knowledge of his opposition, the defendant launched cosmetics under SHEOPAL’S in the market around February 2024.

The suit was filed in August 2024 alleging infringement under Section 29(2)(b) of the Trade Marks Act, 1999, and passing-off under common law principles.

Procedural & Procedural History

The suit was instituted as CS (Comm) 3590/2024 before the Commercial Court‑05 (District Judge) at Saket. The plaintiff’s interim injunction application under Order XXXIX Rules 1 & 2 CPC was allowed initially by order of 7 September 2024, while the defendant’s application under Order XXXIX Rule 4 CPC to vacate the injunction was dismissed.

This initial order was challenged by the defendant before the High Court of Delhi in FAO (Comm) 216/2024. A coordinate bench allowed the appeal on 20 November 2024 and remanded the Order XXXIX Rule 4 application for fresh decision, holding that the lower court’s reasoning violated the anti-dissection rule by splitting the defendant’s mark into “SHE” and “OPAL”.

On remand, the Commercial Court reheard the parties and passed the order dated 22 April 2025 (impugned order), reversing the injunction earlier granted, dismissing the plaintiff’s O39 R1-2 application, and allowing the defendant’s O39 R4 application, thereby vacating the interim protection.

Both parties filed cross-appeals FAO (COMM) 175/2025 and FAO (COMM) 187/2025 before this Court.

Core Dispute

The central question was whether the defendant’s mark SHEOPAL’S, used for cosmetics in Class 3, infringes or passes off against the plaintiff’s registered OPAL mark in Class 3, when tested by the legal standards applicable to deceptive similarity, phonetic similarity, dissection, dominance, distinctiveness, and equity.

Court’s Detailed Reasoning & Discussion (with Citation Discussion Referenced)

The Division Bench presided in the judgment by Justice C. Hari Shankar examined the legal principles threadbare, but made them clear and easy to follow.

The Court first noted that the anti-dissection principle, contained in Section 17(2)(a) of the Trade Marks Act, applies only where the plaintiff’s mark is composite and divisible into distinct parts. Since the plaintiff’s mark was a single word mark OPAL and he claimed exclusivity in the entire mark alone, anti-dissection did not apply at all. Therefore, the Commercial Court erred in applying anti-dissection to the defendant’s mark, fundamentally misunderstanding the law.

The Court then traced the origin and purpose of the dominant-part test. The dominant-part test is not an independent rule. It is only an aid to the anti-dissection rule and is applied when part of a composite plaintiff’s mark is so strong that an average consumer remembers that part the most. The Court explained that this test was expounded in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 61 PTC 231 (Del), and later approved again by the Supreme Court in Pernod Ricard India (P) Ltd. v. Karanveer Singh Chhabra SCC OnLine SC 1701. The Court emphasized from these citations that a consumer remembers the most striking part of a composite mark and confusion is tested by overall commercial impression, not by picking parts one-by-one. These authorities, read in the correct context, confirm that dominance applies to plaintiff’s mark (if composite), not to defendant’s mark and not to a single-word mark like OPAL. Therefore, reliance on dominance by the Commercial Court was legally unsustainable.

Next, the Court laid down the correct comparison standard: holistic assessment. The Court reiterated the long-settled principle that trademark similarity must not be judged by placing marks side by side. It must be judged by considering how an average buyer, with imperfect memory, would remember one mark and later encounter another. This foundational principle was cited from Coca‑Cola Co. of Canada Ltd. v. Pepsi‑Cola Co. of Canada Ltd. AIR 1942 PC 40, which states that courts must compare marks based on average memory, not mechanical juxtaposition.

On phonetic similarity, the Court applied the “Pianotist test”, laid down in Pianotist Co. Ltd’s Application 23 RPC 774. The Court discussed the citation to reason that pronunciation similarity alone does not automatically mean confusion. The Court must see the type of goods, the kind of people who buy them, and the real-world market effect of the marks in normal usage. After this judgment discussion, the Court held that although there is some sound overlap between OPAL and SHEOPAL’S, the mark SHEOPAL is an Indian-style personal name. A common person seeing SHEOPAL’s cosmetics would remember the mark as a name “SHEOPAL’S”, and would not break it into “She + Opal’s”. No ordinary buyer splits or analyzes names like this before buying cosmetics. Real-world confusion was therefore unlikely.

Further, the Court rejected the defendant’s argument that OPAL was a “generic word” incapable of monopolization. The Court discussed Sections 9(1)(a), 17(2)(b), and 31(1) of the Trade Marks Act in very clear and easy terms, holding that a mark is called non-distinctive only if it cannot separate one seller’s goods from another’s. The mere fact that OPAL is an English dictionary word or a gemstone name does not make it non-distinctive for cosmetics. Cosmetics have no natural connection to gemstones. When a common word is used for something it has no connection with, it becomes distinctive in trademark law. The Court cited the niche perfumery usage of the word “AND” (as a conversational reference) only to explain that trademarks need not be coined, invented, or original; they need only be distinctive by use-context. The Court held that OPAL is distinctive for cosmetics and valid enough to seek protection.

Here, the Court highlighted Section 31(1) which holds that the registration certificate itself is prima facie evidence of validity for interim injunction stage. The Court discussed that this provision means: once a trademark is registered, the plaintiff does not have to prove again, at interim stage, that it deserved registration. Registration is presumed valid unless extremely exceptional facts exist (like one mark granted against another application). The Court cited this Bench’s recent decision (for context of exception) from Quantum Hi‑Tech Merchandising Pvt. Ltd. v. LG Electronics India Pvt. Ltd. SCC OnLine Del 8238 to explain when interim invalidity can be seen, but clarified that this is very rare. In normal life trademark disputes, registration stands strong.

The Court then dealt with delay, acquiescence, and equity. The Court corrected the Commercial Court’s method of computing delay from the defendant’s application filing date. The plaintiff’s opposition in 2018 showed objection, not delay or consent. The law was reaffirmed from Midas Hygiene (Supreme Court) that mere delay cannot defeat injunction when infringement is clearly made out. The Court also explained from Power Control Appliances (1994) 2 SCC 448 that acquiescence means knowingly sitting back and letting the other party build goodwill—consent + knowledge. A person who has already opposed a trademark cannot be presumed to have given consent. Opposition and acquiescence cannot exist together.

Finally, the Court rejected any equity in favor of the defendant based on its marketing expenses, since no expenses spent on promotion of an infringing mark ever create legal equity in trademark law. A defendant can always sell goods under a non-infringing brand if it wishes to avoid injunction. The citation from Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia 3 SCC 90 was discussed to hold that injunction is the natural relief in clear infringement cases, but since on merits (holistic test) no deception or confusion was found between these two marks, injunction must be refused.

Decision

The Court ultimately dismissed the plaintiff’s appeal FAO (Comm) 175/2025 and disposed of the defendant’s appeal only by correcting the law, sustaining the result that injunction is refused.

Concluding Note

The judgment reinforces a simple but powerful principle—trademark confusion is tested by the mind of an average buyer and not by courts splitting words or balancing equities based on money spent. Distinctiveness flows from use-context, not dictionary originality. Registration carries presumption of validity for interim stage. Opposition negates consent. The Court preserved the integrity of statutory provisions but made the law clear for every reader.

Concluding Observations

The decision is a strong restatement of the holistic trademark similarity test, fair-use of personal names, contextual distinctiveness, and immediate consequence of injunction only when deception is prima facie found.

Concluding Note & Paper Essence

The judgment stands as a guiding light for junior lawyers, students, and common citizens to understand that trademarks are compared in whole form, and expenses do not override statutory rights.

Saurabh Gupta Vs Sheopals Pvt …

Case & Order Details (in prescribed format)

Case Title: Saurabh Gupta Vs Sheopals Pvt. Ltd.

Order Date: 26 November 2025

Case Number: FAO (COMM) 175/2025 

Neutral Citation: 2025:DHC:10443-DB

Court: High Court of Delhi

Hon'ble Judge: Justice C. Hari Shankar, Om Prakash Shukla

Suggested Suitable Titles for Article Publication in Legal Journal

The Ordinary Consumer’s Lens: A Simple Understanding of Deceptive Similarity in Trademarks

Single-Word Marks and the Myth of Dominance: The OPAL–SHEOPAL Debate Before Delhi High Court

Can Marketing Money Create Trademark Equity? A Clear Legal Answer from Delhi High Court

When Does a Common English Word Become a Strong Trademark? OPAL Cosmetics Decision Explained

Holistic Trademark Comparison and the Risk Doctrine: SHEOPAL’s vs OPAL in Cosmetic Trade

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

======

Saurabh Gupta Vs. Sheopals Pvt. Ltd., decided on 26 November 2025 by the Delhi High Court in cross-appeals FAO (COMM) 175/2025 & connected matter, involved trademark protection in cosmetics. The order disposed the appeal arising from CS (Comm) 3590/2024, and was delivered by the Hon’ble Bench of Justice C. Hari Shankar, High Court of Delhi, sitting at the High Court of Delhi. The Court examined if the cosmetics company Sheopals Pvt. Ltd., incorporated in 2016, could be stopped from using its brand SHEOPAL’S on beauty products because Saurabh Gupta already had the trademark OPAL registered since 1992 in Class 3.

The Court clarified that anti-dissection and dominant-part tests apply only when the plaintiff’s own mark is composite. Since the OPAL mark was a single ordinary word, the Court held that no breaking into parts was legally needed. Though “opal” is the name of a gemstone, cosmetics have no direct connection with gemstones, so OPAL is distinctive for beauty goods. The Court followed the long-standing holistic comparison rule in Coca-Cola Co. of Canada Ltd. v. Pepsi-Cola Co. of Canada Ltd. (AIR 1942 PC 40), and the phonetic similarity test in Pianotist Co. Ltd’s Application (23 RPC 774) to hold that an average buyer would remember and read SHEOPAL’S as one full Indian-style name, rather than splitting it as “She + Opal’s”. Mild sound overlap alone was held not enough to prove likely confusion in the real market.

On delay, the Court reiterated the Supreme Court position in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90) that delay alone cannot defeat injunction in clear infringement cases, and explained from Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448) that acquiescence means knowing consent, which cannot be presumed when the plaintiff had already formally opposed the defendant’s trademark filings in 2018 and 2022. Marketing expenses spent by a defendant on its brand never create equity to deny trademark protection.

Holding that there was no deceptive similarity likely to confuse ordinary buyers, the Court refused interim injunction, dismissed the appellant’s appeal, and disposed of the defendant’s appeal only by correcting the law without disturbing the final result.

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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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