IP.ADJUTOR

Saturday, November 29, 2025

Softgel Healthcare Pvt. Ltd. Vs Pfizer Inc.

Brief Introductory Head Note Summary of Case

This case involves a dispute between an Indian pharmaceutical manufacturer, Softgel Healthcare Private Limited, and the US-based company Pfizer Inc., along with its affiliates. It centers on whether Indian courts should help enforce a request from a US court for evidence in a patent infringement lawsuit. Pfizer holds a US patent for a drug called Tafamidis, sold as Vyndamax, and sued Indian companies Cipla and Hikma (formerly Zenara) in the US for trying to sell generic versions before the patent expires. To gather proof, the US court issued "Letters Rogatory," asking Indian courts to collect documents and statements from Softgel, which makes the drug for Cipla and Hikma. Softgel challenged this, arguing it violates Indian laws and international agreements. The Madras High Court initially allowed the request but was appealed. The appeal court overturned it, protecting Softgel's confidentiality and India's sovereignty in patent matters.

Factual Background

Pfizer Inc., a large pharmaceutical company based in New York, USA, owns a patent (number 9,770,441, often called the '441 patent) for the crystalline form of a drug called Tafamidis meglumine, which is 61 mg and sold under the brand name Vyndamax in the US. This drug treats a rare heart condition. In the US, companies must get approval from the Food and Drug Administration (FDA) to sell generic versions of patented drugs. Cipla Limited, an Indian company, and Hikma (which bought Zenara Pharma Private Limited, another Indian firm), filed applications called Abbreviated New Drug Applications (ANDAs) to sell generic versions of Vyndamax. Pfizer claimed these applications were filed before their patent expired, which under US law counts as infringement.

Pfizer sued Cipla and Hikma in the US District Court for the District of Delaware. During the lawsuit, Pfizer asked Cipla and Hikma for documents about how the generic drug was made. Cipla and Hikma said they didn't have all the details because Softgel Healthcare Private Limited, an Indian company based in Tamil Nadu, was the actual manufacturer under contract. Softgel produces the drug at its facility in Pudupakkam Village, Chengalpattu District.

To get information from Softgel, who isn't part of the US lawsuit, the US court issued Letters Rogatory on May 13, 2024. These are formal requests from one country's court to another's for help in gathering evidence, based on an international agreement called the Hague Convention of 1970. The request asked for documents and witness statements from Softgel about the drug's manufacturing process, testing, and polymorphic forms (different crystal structures of the drug).

Pfizer then filed petitions in the Madras High Court (O.P.(PT).Nos.5 and 6 of 2024) to execute this request. They wanted a commissioner appointed to collect the evidence, with safeguards like a confidentiality club to protect sensitive information. Softgel opposed this, saying they weren't involved in the US case, the request was too broad, and it violated Indian patent laws since Pfizer's similar patent application in India (number 20171005783) had been rejected by the Indian Patent Office. Softgel argued this was like fishing for information and could harm their business secrets.

Procedural Detail

The process started in the US when Pfizer filed infringement suits against Cipla (Civil Action No.23-879) and others. After Cipla and Hikma disclosed Softgel as their manufacturer, the US District Court issued Letters Rogatory under the Hague Convention.

In India, Pfizer filed two petitions in the Madras High Court in 2024 to enforce these letters. A single judge heard the case and, on January 28, 2025, allowed the petitions. The judge appointed a commissioner, set up a confidentiality club with representatives from both sides and experts, and ordered the process to happen in private to protect secrets. The judge relied on Indian civil procedure rules (Order XXVI, Rules 19-22, and Section 78 of the Code of Civil Procedure, 1908) that allow courts to help foreign courts.

Softgel appealed this decision to a division bench (two judges) of the Madras High Court in Letters Patent Appeals (LPA Nos.17 and 18 of 2025). The appeals were reserved for judgment on November 11, 2025, and decided on November 25, 2025. Senior lawyers argued for both sides: Mr. V. Raghavachari for Softgel, emphasizing violations of confidentiality and Indian laws, and Mr. P.S. Raman for Pfizer, arguing that such requests are standard and protected by safeguards.

Core Dispute

The main issue was whether the Madras High Court should enforce the US court's Letters Rogatory against Softgel, a third party not involved in the US lawsuit. Softgel argued the request was vague, sought pre-trial discovery (which India has opted out of under the Hague Convention), violated their confidentiality rights, and undermined Indian patent laws since Pfizer's patent was rejected in India. They said it was like a broad search for evidence without specifics, harming their business.

Pfizer countered that the documents were specific and needed for their US case, Indian laws allow such cooperation, and safeguards like the confidentiality club would prevent misuse. They said Softgel wasn't a stranger since it manufactures for the sued companies, and international judicial help is recognized in India.

The court had to balance international cooperation with protecting national sovereignty, privacy, and domestic patent rules.

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

The division bench, consisting of Dr. Justice G. Jayachandran and Justice Mummineni Sudheer Kumar, carefully examined the arguments. They started by noting the point for consideration: whether the single judge's order violated Indian laws and the Hague Convention.

The court explained that India is a signatory to the Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, 1970, but with reservations. Under Article 3, Letters Rogatory must specify details like parties, nature of proceedings, witnesses, questions, and documents. Article 11 allows a person to refuse evidence if it violates privileges under the law of the executing country (India) or the requesting country (US). Article 12 lets refusal if it doesn't fall under judicial functions or prejudices sovereignty. Crucially, Article 23 allows countries to refuse pre-trial discovery requests, and India has declared it won't execute such letters for broad document hunts not specifying exact items.

The bench found the US request vague and omnibus, listing broad categories like "all documents relating to testing and development" without naming specific witnesses or exact documents. They extracted the list from Appendix-I of the US application, noting it included "any further document deemed necessary," which seemed like fishing for evidence.

Discussing Indian law, the court referred to Order XXVI, Rule 19 of the Code of Civil Procedure, 1908, which allows issuing commissions for foreign court requests, but must be liberally construed while protecting sovereignty. They emphasized that domestic laws prevail, and no international convention overrides them.

The judges discussed several cited cases. First, Wooster Products Inc. v. Magna Tek Inc. (1983 SCC OnLine Del 29), where the Delhi High Court said Indian courts shouldn't question the foreign court's relevance but witnesses can claim privilege. The bench agreed but noted it supports refusal by witnesses like Softgel.

They distinguished Upaid Systems Limited v. Satyam Computer Services (2009 SCC OnLine Del 2006), where the Delhi High Court enforced a request, saying it didn't fully consider India's Article 23 reservation. In Upaid, the court held that as long as Order XXVI, Rule 19 conditions are met (civil proceeding, witness in jurisdiction), enforcement is possible, but the Madras bench disagreed, stressing sovereignty under Articles 11, 12, and 23.

The court also noted a Telangana High Court judgment (not named but similar to this case) where enforcement against a third party was upheld, but rejected it because it ignored India's opt-out from pre-trial discovery.

Reasoning further, the bench said Pfizer's Indian patent rejection means they can't enforce US rights in India indirectly. The litigation links (US suit and Indian appeal) make this pre-trial evidence collection, banned under India's Hague declaration. Softgel, not a US party, has rights under Article 11 to refuse if it prejudices sovereignty or confidentiality, protected under TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights).

Pfizer offered undertakings for safeguards, but the court said confidentiality clubs aren't enough against broad requests. They held the single judge erred by not scrutinizing the Hague limits and India's notification, making the order routine without protecting national interests.

Decision

The appeals were allowed. The single judge's order dated January 28, 2025, in O.P.(PT).Nos.5 and 6 of 2024 was set aside. The petitions to execute the Letters Rogatory were dismissed, with no costs. This means Softgel doesn't have to provide documents or testimony, protecting their confidentiality and India's patent sovereignty.

Concluding Note

This judgment highlights the careful balance courts must strike between helping international justice and safeguarding national laws and business secrets. It reinforces that India won't assist in broad pre-trial evidence hunts from foreign courts, especially in patent disputes where local patents differ. For companies like Softgel, it offers protection against foreign overreach, while reminding multinationals like Pfizer to respect territorial limits. This case could guide future cross-border evidence requests, emphasizing specificity and sovereignty.

Case Title: Softgel Healthcare Private Limited Vs Pfizer Inc. and Others Order Date: 25.11.2025 Case Number: L.P.A.Nos.17 & 18 of 2025 and C.M.P.Nos.11011 of 2025 & 11017 of 2025 Neutral Citation: 2025:MHC:1471 Name of Court: High Court of Judicature at Madras Name of Hon'ble Judge: Dr. Justice G. Jayachandran and Justice Mummineni Sudheer Kumar

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

SKA Insurance Surveyors Vs. Regional Director Northern Region

Brief Introductory Head-Note Summary and Factual Background

The case is about a company challenging a direction given by a government official (Regional Director of the Ministry of Corporate Affairs) ordering it to change its name because its name looks almost the same as an older company’s name. The company filing the case (the Petitioner) was incorporated in 2022. Another company with a similar name (Respondent No. 2) was first incorporated in 2008, and later changed its name in 2013 to include the word "SKAAD".

The person who became a director in the newcomer company had earlier worked as a director of the older company for more than 13 years until late 2021, and soon after leaving that company, he helped create the new one. Both companies operate in the same business field — insurance surveying and loss assessment — meaning they target the same industry, customers, and market.

After the newcomer company was registered, Respondent No. 2 approached the Regional Director and said: this new company’s name is almost the same as ours and can mislead people. The Regional Director agreed and issued an order under Section 16(1)(a) of the Companies Act, 2013 directing the Petitioner to change its name within three months by passing an ordinary resolution.

The Petitioner did not want to change its name and therefore filed a writ petition before the High Court, arguing that because Respondent No. 2’s trademark application on the word “SKAAD” had reportedly been abandoned or failed formalities, the Regional Director wrongly protected Respondent No.2’s “trademark rights” and went into trademark infringement issues, which he should not have done.

Procedural Details

The Petitioner filed a writ petition under Article 226 of the Constitution of India challenging the name-change direction given by the Regional Director. The petition was heard and decided orally on 19 November 2025. The Court also dealt with an interim relief application where the Petitioner asked for a stay on the impugned order. The Court refused to interfere in the merits and dismissed the case but extended the compliance period by one more month.

Core Dispute

The main dispute is whether the Regional Director acted beyond his legal power by touching trademark disputes, or whether he acted correctly within Section 16(1)(a) which allows the government to ask a company to correct its name if it is the same or confusingly similar to an already-existing company name.

Detailed Court Reasoning with Citations and Legal Discussion

The Court held that Section 16(1)(a) of the Companies Act, 2013 gives the Central Government (and its delegate such as the Regional Director) a very wide power to direct a company to change its name if the name is:

identical to an older company name, or

too similar to make the public think both belong to the same source.

The Court explained that Section 16(1)(a) does not require proving trademark infringement. The only requirement is similarity with an older company name. It does not even need a detailed finding that confusion or deception is proven. Rather, even a mere resemblance is enough for the government to step in, because the law wants companies to have distinct identities to avoid administrative, public, financial, and legal confusion.

The Court referred in detail to the earlier judgment in cGMP Pharmaplan P. Ltd. v. Regional Director, Ministry of Corporate Affairs & Anr., decided by the same Court in 2010 under Section 22 of Companies Act, 1956 (which is legally the same as Section 16(1)(a) of the 2013 Act). That judgment said very clearly that the power of the RD is independent of trademark and passing-off disputes. The Court in that case had said:

There is no need for a trademark test,

There is no need to check actual deception, and

It is enough to look at whether two company names are “too alike when compared as a whole”.

The Petitioner had relied heavily on the Panchhi Petha Store judgment given in 2024. The Court clarified the difference. In Panchhi Petha Store v. Union of India, the RD’s order was set aside because the RD had wrongly examined trademark ownership and based his order on trademark rights. But in the present case, the RD’s order was not about trademark rights, it was only about similarity in company names. Therefore this case follows the reasoning of cGMP Pharmaplan and not Panchhi Petha Store.

The Court also saw that a real-world problem had already happened: an insurance company mistakenly deposited money into Respondent No.2's bank account, thinking it belonged to the Petitioner, because the names were almost the same. This, though not legally required to prove, showed how similar names can lead to real confusion, justifying the RD’s action.

The Court held that the names "SKA" and "SKAAD", followed by identical wording “Insurance Surveyors and Loss Assessors Private Limited”, are substantially the same names when viewed together. Therefore the impugned order was correct and not unreasonable.

The Court finally held that under Article 226, it can interfere in government orders only if they are (a) illegal, or (b) totally unreasonable, or (c) make no legal sense. Since Section 16(1)(a) clearly covers this situation, the RD did not act illegally and therefore the High Court refused to interfere.

Decision

The Writ Petition was dismissed. The Court upheld the name-change direction but extended compliance by one more month.

Concluding Note

This ruling reinforces a very practical message: disputes over company names are decided under the Companies Act, not trademark law. Even if a trademark application fails or is abandoned, that does not stop the government from correcting confusingly similar names between companies if an older company already exists. The purpose of the law is not a battle over logos or brand ownership, but public clarity, market honesty, and corporate separateness.

Concluding Note

This ruling reinforces a very practical message: disputes over company names are governed by the Companies Act, not trademark law. Even if a trademark application fails or is abandoned, the Regional Director can still direct a name change when a new company’s name closely resembles the name of an older, existing company. The intent of Section 16(1)(a) is to maintain corporate distinctiveness for public clarity, administrative accuracy, and market honesty — not to determine trademark ownership or infringement.

The Court’s refusal to interfere under Article 226 emphasizes that writ jurisdiction is meant to correct clear illegality or extreme unreasonableness, not to substitute administrative judgement when statutory conditions are satisfied. The real-world financial mix-up between similarly named companies strengthened the practical logic behind the Regional Director’s decision, even though legally, mere similarity suffices for action under Section 16(1)(a).

This decision serves as useful reading for law students, junior lawyers, and the general public to understand that company identity enjoys independent statutory protection and does not depend on separate trademark rights being formally registered or successfully pursued. The law prioritizes uniqueness in names to prevent public and commercial confusion at its source itself.

Concluding Note

Recently, the High Court of Delhi delivered an important ruling explaining how the law handles disputes related to company names that are very similar to each other. The order emphasizes a very simple principle — when the government asks a company to change its name because it looks almost the same as an older existing company, the test comes from the Companies Act, 2013, not trademark law.

In this case, the Regional Director used Section 16(1)(a) to direct the Petitioner company (incorporated in 2022) to change its name because it is almost identical to an older company’s name (registered in 2008 and renamed in 2013). The Petitioner argued that the trademark application of the older company had failed, so the Regional Director should not have protected trademark rights. The Court rejected this argument, clarifying that Section 16(1)(a) does not require trademark registration or infringement tests — only similarity between company names is enough for the government to act.

The Court relied heavily on the earlier decision in cGMP Pharmaplan P. Ltd. v. Regional Director, Ministry of Corporate Affairs (2010), which held that the Regional Director’s power is wider and independent, requiring no proving of actual confusion. It also distinguished the 2024 ruling in Panchhi Petha Store v. Union of India, where interference was allowed because the Regional Director wrongly decided trademark ownership — something not done in the present case.

Most importantly, the Court refused to interfere under Article 226 because the Regional Director acted clearly within statutory limits, noting further that a real incident had already occurred where payments were wrongly forwarded to the similarly named company’s bank account, showing how harmful near-identical names can be.

This order is a reminder for everyone, especially young lawyers and students, that every law protects something different — trademark law protects brands, while the Companies Act protects the identity of companies so that the public always knows who is who.

Case Title: SKA Insurance Surveyors and Loss Assessors Pvt. Ltd. Vs. Regional Director (Northern Region)
Order Date: 19.11.2025
Case Number: W.P.(C) 17574/2025
Neutral Citation: 2025:DHC:???? (to be updated after official upload)
Name of Court: High Court of Delhi
Hon’ble Judge: Justice Prateek Jalan

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

Suggested Titles

“Distinct by Name, Distinct by Law — Understanding Section 16(1)(a) of the Companies Act, 2013”

“Where Similarity Alone Suffices — Judicial Review of Company Name Rectification Orders”

“Company Identity v. Trademark Confusion — A Practical Reading of SKA Insurance Surveyors Case”

“Why Company Names Must Never Overlap — Lessons from Delhi High Court’s Section 16 Interpretation”

“Corporate Name Rectification and Writ Jurisdiction — Keeping Legal Tests Simple for Public Use”

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On 19 November 2025, the High Court of Delhi, presided over by Hon’ble Mr. Justice Justice Prateek Jalan, delivered an oral order in the case of SKA Insurance Surveyors and Loss Assessors Pvt. Ltd. v. Regional Director (Northern Region), Ministry of Corporate Affairs & Anr. The petition, registered as W.P.(C) 17574/2025, was filed to challenge a name-change direction issued by the Regional Director under Section 16(1)(a) of the Companies Act, 2013. The Court upheld the government’s decision, observing that the law allows intervention when a newly registered company name is identical or too similar to an existing company name, irrespective of trademark claims. The ruling emphasized that the Regional Director does not need to determine trademark rights or prove actual deception—mere similarity of company names is sufficient. The writ petition was dismissed, though the time to comply with the name-change order was extended by one month.

The dispute stemmed from the Petitioner’s incorporation in 2022 under a name that was almost the same as an older company, “SKAAD Insurance Surveyors and Loss Assessors Pvt. Ltd.”, which was originally registered in 2008 and renamed in 2013. Notably, a director of the Petitioner had served as director in the older entity for over 13 years until December 2021, and soon after resigning, helped incorporate the new company. Both companies operate in the same line of business as insurance surveyors and loss assessors. A real financial mix-up had already occurred when payments due to the Petitioner were mistakenly deposited into Respondent No.2’s bank account because of the equally similar names—although the Court clarified that such actual confusion was not legally required to empower action under Section 16(1)(a).

Referring to the 2010 judgment in cGMP Pharmaplan P. Ltd. v. Regional Director, which interprets the earlier but legally similar 1956 provision, the Court held that the name comparison must be made as a whole and that the government’s power is wider than a Civil Court’s power in trademark or passing-off actions. The Court also distinguished the 2024 decision in Panchhi Petha Store v. Union of India, where interference was made because the RD had wrongly decided trademark ownership—something not done in the present matter. Here, the RD order was purely on company-name similarity, and therefore within jurisdiction.

The decision reiterates that protection of a company’s name-identity is governed independently by the Companies Act and does not depend on the success or failure of trademark registration. The law aims to keep corporate identities separate and easily distinguishable in public and official records.

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

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.

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:

Embryonic Stem Cells and Moral Boundaries: Decoding Section 3(b) in Shroff v. Controller of Patents
Patenting Human Embryos? Calcutta High Court's Ethical Stand in Geeta Shroff's Appeal
Morality Over Innovation: Rejecting Stem Cell Patents Under India's Patents Act
Destructive Derivation of Stem Cells: A Section 3(b) Analysis from Calcutta High Court
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.

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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

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

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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Saturday, November 29, 2025

Brief Introductory Head Note Summary of Case

Factual Background

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

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