Saga Lifesciences Limited Vs. Aristo Pharmaceuticals Pvt. Ltd.

Use of the Trademark for export amounted to use in India

Introduction:

The case of Saga Lifesciences Limited v. Aristo Pharmaceuticals Pvt. Ltd. is a significant ruling in the field of trademark law, particularly concerning the pharmaceutical industry. The dispute centers around the use of the trademark "ULTRAMOL" for paracetamol preparations. The plaintiff, Saga Lifesciences Limited, sought an injunction to restrain the defendant, Aristo Pharmaceuticals Pvt. Ltd., from using the identical mark "ULTRAMOL," arguing that it was the prior user of the trademark since 1992. The Delhi High Court, adjudicated the matter, addressing key issues of prior use, goodwill, and misrepresentation in a passing off action.

Factual Background:

Saga Lifesciences Limited, a pharmaceutical company, claimed that it had been using the mark "ULTRAMOL" for paracetamol products since 1992, following its approval from the Food and Drugs Control Authority (FDCA), Gujarat, in 1991. It marketed the product extensively and had a history of sales and promotions linked to the mark. However, its earlier trademark application (filed in 2007) was abandoned due to miscommunication with its trademark agent.

Aristo Pharmaceuticals Pvt. Ltd. applied for trademark registration of "ULTRAMOL" in 2005, on a "proposed to be used" basis. The company also obtained drug licenses for "ARISTO ULTRAMOL." However, the plaintiff alleged that the defendant was misusing the standalone mark "ULTRAMOL" without the "ARISTO" prefix, leading to consumer confusion.

The plaintiff, asserting its rights as the prior user, sought an injunction against the defendant to prevent the continued use of the disputed mark. The defendant, in turn, argued that the plaintiff had no sales in India since 2014, and its primary business operations were in foreign markets such as the Philippines, Spain, and Nepal.

Procedural Background:

The suit was filed under Sections 134 and 135 of the Trade Marks Act, 1999, before the Delhi High Court. The case was first heard on April 13, 2022, where the court noted that the defendant was aware of the plaintiff’s mark and had originally sought approval for "ARISTO ULTRAMOL." The court appointed a Local Commissioner to assess the defendant’s product inventory and adjourned the matter to allow the defendant to seek instructions.On April 22, 2022, the court heard detailed arguments from both parties and examined the legal principles governing passing off, prior use, and goodwill.

Issues Involved:

Whether the plaintiff had established prior use and goodwill in the trademark "ULTRAMOL."?Whether the plaintiff's use of the mark "ULTRAMOL" for export amounted to used in India?

Plaintiff's Arguments:

The plaintiff had been using "ULTRAMOL" for pharmaceutical preparations since 1992 and had substantial goodwill attached to the mark.The defendant dishonestly adopted the identical mark despite knowing about the plaintiff’s prior use.The defendant's drug license was for "ARISTO ULTRAMOL," but it was misleadingly using "ULTRAMOL" on its packaging.Even though the plaintiff’s sales were primarily for exports post-2014, the law recognized export activity as a valid use of a trademark.Cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952), which emphasized the need to prevent confusion in pharmaceutical trademarks.

Defendant’s Arguments:

The plaintiff had abandoned its mark in India as it had no domestic sales since 2014.The plaintiff’s presence was limited to exports, which did not establish goodwill within India.The defendant had independently adopted the mark after conducting a trademark search in 2005.The prefix "ULTRA" in "ULTRAMOL" was derived from "ultra" (meaning extreme or strong), and its adoption was legitimate.The defendant’s sales were substantial, amounting to approximately Rs. 3 crores annually, and any injunction would cause irreparable harm.Relied on Kerly’s Law of Trade Marks and Trade Name (16th Ed.) to argue that goodwill must be present in the domestic market.

Discussion on Judgments and Legal Precedents:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952):Established that in cases involving medicinal products, even slight confusion could have life-threatening consequences.The court emphasized the need for a strict approach to prevent misrepresentation in pharmaceutical trademarks. Hardie Trading Ltd. v. Addisons Paint and Chemicals (AIR 2003 SC 3377):Defined "use" broadly, holding that even non-physical use (such as advertising and promotion) constituted valid trademark use. Burger King Corporation v. Techchand Shewakramani & Ors (253 (2018) DLT 93): Held that advertisement, manufacturing, and export activities constitute trademark use, rejecting the argument that lack of domestic sales negates goodwill.Laxmikant V. Patel v. Chetanbhat Shah & Anr. (AIR 2002 SC 275):Stated that goodwill must be judged not only based on present conditions but also considering future expansion.

Reasoning and Analysis of the Judge:

The court found that the plaintiff was the prior user of "ULTRAMOL" since 1992, and its goodwill had not been abandoned despite the lack of domestic sales.The defendant’s explanation for adopting "ULTRAMOL" was not convincing, and the fact that it initially sought registration for "ARISTO ULTRAMOL" indicated awareness of the plaintiff’s mark.The defendant’s packaging prominently featured "ULTRAMOL" without "ARISTO", creating a likelihood of confusion.Applying the Cadila test, the court held that confusion in pharmaceutical products could have serious public health consequences.The defendant’s use of the mark was likely to mislead consumers, constituting passing off.

Final Decision:

The court granted an injunction restraining the defendant from manufacturing fresh products under the mark "ULTRAMOL" or any deceptively similar mark.The defendant was allowed to sell its existing stock until September 30, 2022, to prevent undue loss.The court clarified that the defendant could apply for a new drug registration under a non-deceptively similar mark.

Law Settled in the Case:

Prior use prevails over subsequent adoption, even if domestic sales have declined, provided the mark continues to be in use (including exports). Export activity qualifies as "use" under trademark law, ensuring that goodwill is not deemed abandoned merely due to a shift in market focus.Pharmaceutical trademarks demand stricter scrutiny due to potential consumer harm from confusion.Honest adoption defense requires credible justification, and mere prefix changes do not eliminate the possibility of misrepresentation.

Case Title: Saga Lifesciences Limited v. Aristo Pharmaceuticals Pvt. Ltd.

Date of Order: April 22, 2022

Case No.: CS(COMM) 240/2022

Court: High Court of Delhi

Judge: Justice Prathiba M. Singh

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

Data Infosys Limited Vs. Infosys Technologies Limited

Failure to obtain prior permission under Section 124 of Trademarks Act 1999 does not nullify the Trademarks rectification proceedings

Introduction:

Trademark disputes often hinge on complex legal interpretations, particularly regarding the requirement of prior permission under Section 124(1)(b)(ii) of the Trade Marks Act, 1999. The case of Data Infosys Limited vs. Infosys Technologies Limited is a landmark decision by the Delhi High Court, which examined whether a party initiating rectification proceedings before the Intellectual Property Appellate Board (IPAB) required prior permission from the court where an infringement suit was pending? This case set crucial precedents on trademark rectification and the interplay between infringement suits and rectification proceedings.

Factual Background:

Infosys Technologies Limited (hereinafter referred to as "Infosys") filed a trademark infringement suit against Data Infosys Limited (hereinafter referred to as "the defendant"). Infosys alleged that the defendant's use of the mark "Data Infosys" infringed upon its registered trademarks "Infosys" and allied marks.

Infosys held trademark registrations under Classes 16, 9, and 7 under the Trade and Merchandise Marks Act, 1958 (now replaced by the Trade Marks Act, 1999). The plaintiff also objected to the defendant's corporate name and domain name usage, particularly www.datainfosys.net, arguing that such usage amounted to trademark infringement and passing off.

The defendant contested the suit, arguing that Infosys was engaged in software development, whereas Data Infosys was an Internet Service Provider (ISP) operating within India. The defendant asserted that their business fields were distinct and raised various defenses, including delay in initiating legal action.

During the pendency of the suit, the defendant’s trademark "Data Infosys" was registered under Class 38 (telecommunication services), Class 9 (computer hardware), and Class 42 (computer-related services). The defendant sought to amend its pleadings to incorporate its newly obtained trademark registrations, which the court permitted on July 19, 2006.

Subsequently, Infosys initiated rectification proceedings before the IPAB challenging the validity of the defendant’s trademark registrations under Classes 38, 9, and 42. The defendant objected, arguing that Infosys had filed the rectification application without prior permission from the court, which, in its view, was mandatory under Section 124(1)(b)(ii) of the Trade Marks Act, 1999.

The Single Judge dismissed the defendant's objection, ruling that prior court permission was not a prerequisite for initiating rectification proceedings. Aggrieved by this decision, the defendant filed an appeal before the Division Bench of the Delhi High Court, which referred the matter to a Full Bench due to conflicting judicial precedents on the interpretation of Section 124(1)(b)(ii).

Procedural Background:

Infosys filed an infringement suit seeking permanent injunction against Data Infosys. During the pendency of the suit, the defendant obtained trademark registrations for "Data Infosys" under Classes 38, 9, and 42. Infosys filed rectification proceedings before the IPAB challenging the defendant's registrations. The defendant objected, arguing that Infosys failed to obtain prior court permission as required under Section 124(1)(b)(ii). The Single Judge dismissed the defendant’s objection, ruling that prior permission was not mandatory. The defendant appealed to the Division Bench, which referred the issue to a Full Bench due to conflicting judicial views.

Issues Involved in the Case

The primary question before the Full Bench was whether a party must obtain prior permission from the court under Section 124(1)(b)(ii) before filing rectification proceedings before the IPAB. The court also examined whether failure to obtain such permission rendered rectification proceedings null and void. Another key issue was whether the trial court must mandatorily stay the infringement suit if rectification proceedings were pending before the IPAB. The final point of determination was whether the decision of the IPAB on rectification was binding on the civil court adjudicating the infringement suit.

Submissions of the Parties:

The defendant argued that prior permission of the court is a mandatory condition under Section 124(1)(b)(ii) before initiating rectification. It contended that Infosys's rectification proceedings were an abuse of process and should be deemed null and void. The defendant relied on judicial precedents, including Kedar Nath v. Monga Perfumery (AIR 1974 Delhi 12) and AstraZeneca UK Ltd. v. Orchid Chemicals (2006 (32) PTC 733 (Del)), to support the argument that court permission was a statutory requirement.

Infosys argued that Section 124(1)(b)(ii) does not impose a mandatory requirement for prior permission to file rectification proceedings. It contended that IPAB’s jurisdiction is exclusive, and the civil court has no power to decide the validity of a trademark. The plaintiff relied on the Madras High Court’s ruling in B. Mohamed Yousuff v. Prabha Singh Jaswant Singh (2008 (38) PTC 576 (Mad) (DB)), which held that Section 124 only governs stay of suits and does not impose restrictions on filing rectification petitions.

Judgment and Analysis:

The Full Bench of the Delhi High Court, after examining conflicting judicial precedents, ruled in favor of Infosys and held that prior court permission is not a mandatory prerequisite for filing rectification proceedings before the IPAB. The court distinguished between two scenarios under Section 124. If rectification proceedings were pending before filing of the suit, the court must stay the suit until IPAB’s decision. If rectification proceedings were initiated after the suit, the court must assess whether the invalidity claim is prima facie tenable before granting a stay.

The court concluded that Infosys had the statutory right to file rectification proceedings without seeking prior permission. The only consequence of failing to obtain prior permission is that Infosys cannot seek a stay of the infringement suit. The court further clarified that IPAB’s decision on rectification is binding on the civil court. The court also referred to Jeet Biri Manufacturing Co. v. Pravin Kumar Singhal (2011 (47) PTC 231 (IPAB)), where the IPAB ruled that rectification applications remain valid even without prior court permission.

Final Decision:

The Delhi High Court's Full Bench upheld the Single Judge’s ruling and dismissed the defendant's appeal. The judgment clarified that prior court permission is not mandatory for filing rectification proceedings under Section 124(1)(b)(ii). The infringement suit is stayed only if the court finds the invalidity claim prima facie tenable. Failure to seek permission does not invalidate rectification proceedings, but it affects the party's ability to seek a stay of the suit.

Law Settled in this Case:

Parties can file rectification proceedings before the IPAB without prior permission from the civil court. Section 124(1)(b)(ii) governs only the stay of proceedings, not the right to initiate rectification. IPAB’s decision on trademark validity is binding on the civil court. Failure to obtain prior permission does not nullify rectification proceedings but prevents the party from seeking a stay of the suit.

Case Title: Data Infosys Limited & Ors. Vs. Infosys Technologies Limited

Date of Order: 05.02.2016

Case No.: FAO (OS) 403/2012

Court: Delhi High Court

Coram: Hon’ble Justice S. Ravindra Bhat, Justice Vipin Sanghi, Justice Najmi Waziri

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

Protection of Letter Trademark

In the realm of Indian trademark law, the protection of short, distinctive marks—such as those comprising four letters—has been a recurring theme in judicial scrutiny. Under the Trade Marks Act, 1999, courts have consistently evaluated the deceptive similarity of trademarks based on their phonetic, visual, and conceptual resemblance, rather than their precise letter count. Letter trademarks, due to their brevity and memorability, often pose unique challenges in distinguishing genuine differences from infringing imitations. This article explores key Indian judgments where four-letter marks were central to disputes, illustrating how courts have safeguarded established trademarks against confusingly similar counterparts. From early precedents like Nirma Ltd. vs. Nimma Industries to contemporary rulings such as Intercontinental Great Brands LLC vs. Parle Product Pvt. Ltd., these cases underscore the judiciary’s emphasis on consumer perception and market context in upholding trademark integrity.

. S. Mehal Singh vs. M.L. Gupta & Anr. (AIR 1998 Del 64)Facts: The plaintiff used "ML" (two letters), while the defendant used "MLI" (three letters). The case is relevant as it involves short letter marks, with "MLI" potentially styled as a four-letter variant in trade dress (e.g., "M.L.I." with dots).Issue: Whether "MLI" infringed "ML," considering visual and conceptual similarity.Decision: The Delhi High Court held that similarity must be assessed holistically, not by dissecting marks into parts. Despite the additional letter, "MLI" was found confusingly similar due to its commercial impression. The court rejected the defendant’s argument that an extra letter (or stylization) avoided liability.Relevance: Though not explicitly four letters, it shows that courts prioritize consumer perception over minor letter differences, applicable to four-letter mark. 

Shri Shakti Schools Pvt. Ltd. vs. M/s Chirec Public School (Telangana High Court, Civil Miscellaneous Appeal No. 160 of 2020, July 3, 2020)Facts: The appellant used "CHIREC" (six letters), while the respondent used the same mark stylized differently. The respondent’s potential use of a four-letter shorthand (e.g., "CHIR") was implicitly at issue in branding discussions.Issue: Whether differences in presentation (including potential four-letter abbreviations) avoided infringement.Decision: The Telangana High Court denied an injunction, finding that the respondent’s distinct font, color (blue), and logo differentiated "CHIREC" from the appellant’s mark. The court held that significant stylistic variations could prevent confusion.Relevance: Suggests that a four-letter derivative (e.g., "CHIR") might be permissible if visually distinct, emphasizing presentation over letter count.

Intercontinental Great Brands vs. Parle Product Pvt. Ltd. (CS(COMM) 64/2021, Delhi High Court, 2023)Facts: The plaintiff owned "OREO" (four letters) for biscuits. The defendant used "FAB!O" (stylized as four characters, though technically five with the exclamation). The plaintiff alleged infringement and passing off.Issue: Whether "FAB!O" was deceptively similar to "OREO," both being four-character marks in commercial use.Decision: The Delhi High Court restrained Parle from using "FAB!O," finding it phonetically similar ("FABIO" vs. "OREO") and visually akin due to trade dress. The court dismissed Parle’s defense that its house mark negated confusion, focusing on the four-letter core’s impact.Relevance: A clear case of a four-letter mark ("OREO") prevailing over a stylized four-character variant, emphasizing phonetic and visual similarity.

General Electric Co. of India (P.) Ltd. vs. Pyara Singh and Ors. (AIR 1974 P&H 14)Facts: The plaintiff, General Electric Co., used the trademark "GEC" for electrical goods. The defendant used "AEC" in a similar trade. The plaintiff alleged trademark infringement and passing off, arguing visual and phonetic similarity.Issue: Whether "GEC" and "AEC" were deceptively similar, considering their presentation, including font and design.Decision: The Punjab & Haryana High Court held that "GEC" and "AEC" were visually and phonetically similar, despite differences in font or stylization. The court granted an injunction against the defendant, emphasizing that the overall impression created by the marks, including their letter structure, was likely to confuse consumers. While font size wasn’t the sole focus, the ruling underscored that visual similarity (including typeface) is a critical factor in trademark disputes.Relevance: This early case established that courts look beyond mere textual differences to the holistic visual impact, including font characteristics.

MRF Limited vs. NR Faridabad Rubbers (1998 PTC (18) 485 (Del))Facts: MRF Ltd., a tire manufacturer, sued NR Faridabad Rubbers for using "NRF," alleging infringement of its registered trademark "MRF." Both marks were presented in stylized forms with specific fonts.Issue: Whether "NRF" infringed "MRF," considering their visual representation, including font style.Decision: The Delhi High Court ruled in favor of MRF, finding "NRF" deceptively similar. The court noted that despite differences in font stylization, the similarity in letter sequence and overall visual impression could mislead consumers. The defendant was restrained from using "NRF."Relevance: The judgment highlights that font stylization alone may not suffice to differentiate marks if the core elements remain confusingly similar.

Mahashian Di Hatti vs. Raj Niwas (MHS Masalay) (2011 (46) PTC 343 (Del))Facts: The plaintiff, Mahashian Di Hatti, used the trademark "MDH" in a distinctive red-and-white logo for spices. The defendant used "MHS," also in a stylized form with a similar color scheme and font style. The plaintiff alleged infringement and passing off.Issue: Whether "MHS" was visually similar to "MDH," considering font, color, and arrangement.Decision: The Delhi High Court observed that while phonetically distinct due to the substitution of "S" for "D," the visual similarity—driven by font style, color, and layout—was strong enough to cause confusion. The court restrained the defendant, emphasizing that visual resemblance outweighed phonetic differences in this context.Relevance: This case illustrates that font size and style, combined with other design elements, can tip the scales in favor of finding similarity, even when phonetic differences exist.

Mahashian Di Hatti vs. Raj Niwas (MHS Masalay) (2011 (46) PTC 343 (Del))Facts: MDH used its "MDH" mark in a red-and-white logo with a distinctive font. The defendant used "MHS" in a similar color scheme and style, though in a slightly smaller font size for some elements. MDH alleged infringement and bad faith.Issue: Whether "MHS" was deceptively similar to "MDH," considering font and design, and if it was adopted in bad faith.Decision: The Delhi High Court ruled in favor of MDH, finding visual similarity despite font size differences. The court noted that the defendant’s adoption of a near-identical presentation in the same trade (spices) indicated bad faith intent to ride on MDH’s goodwill. An injunction was granted.Relevance: Small font variations did not prevent a finding of bad faith when the intent was to confuse consumers.

Jaquar and Company Pvt. Ltd. vs. Ashirvad Pipes Pvt. Ltd. (2024, Delhi High Court, referenced in law.asia)Facts: Jaquar, the registered owner of "Artize" and "Tiaara," alleged that Ashirvad infringed these marks by using "Artistry" and "Tiara." Ashirvad’s marks were registered, and some packaging used "Tiara" in smaller font alongside other elements. Jaquar claimed bad faith adoption to associate with its luxury brand.Issue: Whether Ashirvad’s use of similar marks, including font presentation, constituted infringement or passing off, and if it was in bad faith.Decision: The Delhi High Court rejected Ashirvad’s defense of registration, noting that Jaquar had prior use since 2008/2016. The court found that Ashirvad’s adoption of similar marks in the same sector (sanitary fittings) suggested bad faith, despite font size differences. An injunction was granted, and Jaquar’s rectification petition against "Artistry" was noted as pending.Relevance: Small font usage in "Tiara" did not negate bad faith, as the court focused on intent to create a false association.

General Observations (2020–2025)Campa vs. Jhampa (2024, Bombay High Court, mondaq.com): Reliance’s "Campa" was infringed by "Jhampa," with the court noting visual similarities in font and design. While font size wasn’t specified, bad faith was inferred from the defendant’s intent to mimic a revived brand.Trademark Trafficking Cases (e.g., Obhan & Associates, 2024): Courts have canceled registrations obtained in bad faith (e.g., stockpiling marks without intent to use), but font size hasn’t been a focal point.AnalysisSmall Font Usage: Indian courts rarely isolate font size as a decisive factor. Cases like Parle and Hindustan Unilever show that even small fonts for brand names do not prevent liability if the overall impression mimics the plaintiff’s mark. The focus is on consumer perception, not typographical nuances.Bad Faith: Courts infer bad faith from circumstantial evidence—e.g., adopting similar marks in the same trade (Amritdhara, Mahashian), targeting established goodwill (Jaquar), or copying trade dress (Parle). Small font usage might obscure intent, but courts look at the broader context.No Direct Precedent: No case explicitly rules on "small font trademark use and bad faith" as a standalone issue. Font size is a secondary consideration within visual similarity and intent analyses.

Pidilite Industries Ltd. vs. Vilas Nemichand JainCitation: 2008 (36) PTC 45 (Bom), Bombay High CourtFacts: The plaintiff, Pidilite Industries, owned the registered trademark "FEVI" (four letters) as part of "FEVICOL" for adhesives since 1959. The defendant used "FEVY" (four letters) for similar adhesive products. Pidilite alleged trademark infringement and passing off, arguing that "FEVY" was phonetically and visually similar to "FEVI," likely to deceive consumers in the adhesive trade. The defendant contended that "FEVY" was distinct and derived from its brand identity.Decision: The Bombay High Court ruled that "FEVY" was deceptively similar to "FEVI." The court noted the identical four-letter structure, near-identical pronunciation ("FEV-EE" vs. "FEV-WHY"), and use in the same trade, finding a high likelihood of confusion. An injunction was granted, restraining the defendant from using "FEVY."Relevance: Both marks are explicitly four letters, and the court’s finding hinged on their phonetic and visual similarity, reinforcing protection for short, distinctive marks like "FEVI."

Nirma Ltd. vs. Nimma IndustriesCitation: 2000 PTC 20 (Guj), Gujarat High CourtFacts: The plaintiff, Nirma Ltd., owned the trademark "NIMA" (four letters) as part of its "NIRMA" brand for detergents, registered since the 1980s. The defendant used "NIMM" (four letters) for similar cleaning products. Nirma alleged infringement and passing off, claiming that "NIMM" was phonetically and visually similar to "NIMA," targeting the same consumer base. The defendant argued that the single-letter difference ("M" vs. "A") and its smaller scale avoided confusion.Decision: The Gujarat High Court held "NIMM" deceptively similar to "NIMA." The court emphasized the identical four-letter length, near-identical pronunciation ("NIM" vs. "NIM-A"), and use in the detergent market, ruling that an average consumer could confuse the two. An injunction was granted, and the defendant was restrained from using "NIMM."Relevance: Both marks are explicitly four letters, and the decision highlights how minimal letter changes in short marks don’t necessarily avoid deceptive similarit

Analysis and ObservationsCommon Thread: In these cases, courts applied the "likelihood of confusion" test, assessing phonetic, visual, and conceptual similarity. Four-letter marks, being short and concise, often face heightened scrutiny because small alterations (e.g., "FEVI" vs. "FEVY," "BIKA" vs. "BIKR") don’t sufficiently differentiate them in the consumer’s mind.Legal Principle: Under Section 29 of the Trade Marks Act, 1999, deceptive similarity hinges on the overall impression, not letter-by-letter 

comparison. The brevity of four-letter marks amplifies their susceptibility to confusion, especially in overlapping trades.No Specific Four-Letter Doctrine: Indian law doesn’t treat four-letter marks as a unique category, but their compact nature often makes differences less noticeable, as seen in OREO vs. FAB!O and NIMA vs. NIMM.Conclusion

These cases demonstrate that Indian courts consistently protect four-letter trademarks against deceptively similar counterparts when they risk consumer confusion. From NIMA (2000) to OREO (2023), the focus remains on holistic similarity rather than isolated letter counts, with injunctions granted to safeguard established marks’ goodwill.

Ep.107:The role of intermediaries—such as social media platforms, e-commerce websites, and digital service providers

Introduction:

The advent of the internet has revolutionized communication, commerce, and information dissemination. However, this digital transformation has also led to new legal challenges, particularly concerning liability for online content. As people increasingly rely on digital platforms for communication and business transactions, issues such as defamation, copyright infringement, trademark violations, and obscenity have become more prevalent.

The role of intermediaries—such as social media platforms, e-commerce websites, and digital service providers—has been a focal point in legal debates worldwide. These platforms host and transmit vast amounts of user-generated content, leading to conflicts regarding their responsibility for objectionable or illegal material.

In India, the legal framework governing intermediaries is primarily outlined in the Information Technology Act, 2000 (amended in 2008) and the Information Technology (Intermediary Guidelines) Rules, 2011. These laws define the scope of an intermediary’s liability, the due diligence requirements, and the legal protections available to aggrieved parties.

This article delves into landmark judicial pronouncements that have shaped the legal landscape surrounding intermediary liability in India. By analyzing key cases, we seek to understand how Indian courts interpret these laws and balance the interests of free speech, privacy, and regulatory enforcement.

Legal Framework Governing Intermediaries in India:

Section 79 of the Information Technology Act, 2000 (Amended in 2008)

Section 79 of the IT Act provides a "safe harbor" provision, protecting intermediaries from liability for third-party content, provided they fulfill certain conditions. According to this provision:

An intermediary is not liable for any third-party information, data, or communication if:

1. The intermediary’s role is limited to providing access to a communication system without initiating the transmission.

2. The intermediary does not select the receiver of the transmission.

3. The intermediary does not alter or modify the information contained in the transmission.

4. The intermediary exercises due diligence while discharging its duties under the law.

However, intermediaries lose this protection if they conspire, abet, aid, or induce an unlawful act. They are also required to remove any objectionable material upon receiving actual knowledge or a government notice.

Rule 3(4) of the Information Technology (Intermediary Guidelines) Rules, 2011

Under this rule, intermediaries must act within 36 hours of receiving written notice about any illegal content and cooperate with law enforcement agencies. They are also required to preserve such information for at least 90 days for investigative purposes.

The core principle behind these provisions is that intermediaries should not be held liable for content posted by users unless they have knowledge of illegal material and fail to take prompt action.

The Relevant Provision till date:

IT Act, 2000 : Initially offered limited protection to "network service providers" under Section 79, shielding them from liability for third-party content if they lacked knowledge or exercised due diligence.

IT (Amendment) Act, 2008: Effective October 27, 2009, broadened the definition of "intermediary" under Section 2(1)(w) to include telecom providers, ISPs, search engines, online marketplaces, etc., and introduced a robust safe harbour under Section 79, contingent on due diligence and non-involvement in unlawful acts.

IT (Intermediary Guidelines) Rules, 2011: Specified due diligence obligations, such as removing unlawful content upon notice.

IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021: Expanded obligations, introducing proactive monitoring and traceability for significant social media intermediaries (SSMIs).

Judicial Precedents on Intermediary Liability in Chronological Order

Google India Private Limited v. Vishakha Industries (2009): Background:This early case explored intermediary liability regarding defamatory content hosted on Google’s platform. The question before the court was whether an intermediary could be held liable for user-generated content that harmed an individual or an organization.Court’s Observations:The court recognized that intermediaries are not directly responsible for content posted by users but must act upon complaints or notifications. This case laid the foundation for discussions on intermediary liability in India.

Avnish Bajaj vs. State (Bazee.com Case) (2004, Delhi High Court, Criminal Misc. Case No. 3066/2004):(2008) 150 DLT 769:  Facts: Avnish Bajaj, CEO of Bazee.com (an eBay subsidiary), was arrested after a user listed an obscene MMS clip for sale on the platform in 2004. The case arose under the IT Act, 2000, and Indian Penal Code (IPC) provisions for obscenity.Issue: Whether the intermediary (Bazee.com) and its CEO were liable for third-party content absent specific safe harbour protections in the original IT Act.Decision: The Delhi High Court quashed the criminal charges against Bajaj, noting that the company (not him personally) should have been the accused. However, it highlighted the lack of clear intermediary immunity, as the original Section 79 only protected network service providers narrowly and required proof of no knowledge or due diligence—standards Bazee.com couldn’t fully meet due to inadequate filters.Relevance: Exposed gaps in the IT Act, prompting the 2008 amendment to introduce broader safe harbour provisions under Section 79. This case set a precedent for intermediary liability, highlighting the need for platforms to implement proactive content moderation systems.

Shreya Singhal vs. Union of India (2015, Supreme Court, AIR 2015 SC 1523):Facts: Petitioners challenged Section 66A (punishing offensive online content) and Section 79(3)(b) of the IT Act, arguing they violated free speech under Article 19(1)(a). Section 79(3)(b) allowed intermediaries to lose safe harbour if they failed to remove content upon "actual knowledge" or government notice.Issue: Whether Section 79 imposed unconstitutional burdens on intermediaries to censor content without judicial oversight.Decision: The Supreme Court struck down Section 66A as vague and overbroad. For Section 79, it "read down" subsection (3)(b), ruling that intermediaries are only liable to remove content upon a court order or government notification under lawful grounds (Article 19(2)), not private complaints or self-assessment. The 2011 Intermediary Guidelines were upheld with this clarification.Relevance: A landmark ruling, it reinforced safe harbour by limiting intermediaries’ proactive liability, emphasizing judicial or governmental intervention to balance free speech and content regulation.

MySpace Inc. vs. Super Cassettes Industries Ltd. (2016, Delhi High Court, FAO(OS) 540/2011): Facts: Super Cassettes (T-Series) sued MySpace for hosting copyrighted music uploaded by users, alleging infringement despite takedown notices. MySpace claimed safe harbour under Section 79.Issue: Whether MySpace lost safe harbour by not removing infringing content promptly upon notice from the copyright owner (without a court order).Decision: The Division Bench distinguished copyright cases from Shreya Singhal’s free speech context. It held that for copyright infringement, intermediaries must act on specific notices from rights holders (not requiring court orders), provided the notice identifies exact content. MySpace was found liable for delays but not for proactive filtering, preserving its intermediary status unless it actively facilitated infringement.Relevance: Clarified that safe harbour applies conditionally in IP cases, shifting some burden to intermediaries to act on private notices, unlike government-driven takedowns in Shreya Singhal.

Sabu Mathew George vs. Union of India (2017, Supreme Court, Writ Petition (Civil) No. 341/2008):Facts: The petitioner sought to block online ads violating the Pre-Conception and Pre-Natal Diagnostic Techniques Act (PCPNDT), 1994, which bans sex determination ads. Google, Yahoo, and Microsoft resisted, citing safe harbour and lack of proactive monitoring duty.Issue: Whether intermediaries must proactively filter illegal content (e.g., auto-block sex determination ads) beyond reacting to notices.Decision: The Supreme Court directed search engines to implement "auto-block" mechanisms for keywords linked to sex determination, despite Section 79’s safe harbour. It held that intermediaries must assist in enforcing specific laws like PCPNDT, even absent specific notices, due to public health implications.Relevance: Introduced a proactive duty in exceptional cases, slightly eroding Shreya Singhal’s reactive standard, though limited to narrow statutory mandates.

Kamlesh Vaswani v. Union of India (2017): Background:This case concerned the responsibility of intermediaries in blocking access to websites hosting illegal content, specifically child pornography.Court’s Observations:The Supreme Court directed intermediaries to ensure compliance with government directives to disable access to such content. The case underscored the importance of balancing intermediary liability with public interest concerns.

Christian Louboutin SAS vs. Nakul Bajaj & Ors. (2018, Delhi High Court, CS(COMM) 344/2018): Facts: Christian Louboutin sued Darveys.com (an online marketplace) for selling counterfeit luxury goods under its trademark. Darveys claimed safe harbour under Section 79, arguing it only facilitated third-party sales.Issue: Whether Darveys lost safe harbour by actively participating in sales beyond being a passive conduit.Decision: The court ruled that Darveys wasn’t a mere intermediary. Its actions—setting prices, offering authenticity guarantees, and packaging goods—showed active involvement, stripping it of Section 79 immunity. The court listed 26 factors (e.g., modifying products, controlling transactions) to distinguish passive conduits from active participants.Relevance: A pivotal IP ruling, it narrowed safe harbour for e-commerce platforms engaging in sales processes, shifting liability to those exceeding a neutral role.

Kent RO Systems Ltd. vs. Amit Kotak & Ors. (2017, Delhi High Court, CS(COMM) 165/2016):Facts: Kent RO sued eBay and a seller for infringing its design rights via counterfeit products sold on eBay. eBay invoked Section 79 safe harbour.Issue: Whether eBay was liable for facilitating IP infringement despite its intermediary status.Decision: The court held that eBay qualified for safe harbour as it didn’t initiate or modify the infringing content. However, it must remove specific infringing listings upon notice from Kent RO without needing a court order, aligning with MySpace’s copyright precedent.Relevance: Reinforced that intermediaries retain immunity unless they actively abet infringement, but must act swiftly on IP notices.

Amway India Enterprises Pvt. Ltd. vs. 1MG Technologies Pvt. Ltd. & Ors. (2019, Delhi High Court, CS(OS) 410/2018): Facts: Amway sued e-commerce platforms (e.g., Amazon, Flipkart) for selling its direct-selling products without authorization, alleging trademark infringement and violation of its distribution model.Issue: Whether platforms lost safe harbour by enabling unauthorized sales? Decision: The court found that platforms weren’t mere conduits—they controlled pricing, offered discounts, and issued invoices, indicating active participation. Safe harbour was denied, and an injunction was granted against the platforms.Relevance: Expanded Christian Louboutin’s logic to trademark and trade practice violations, tightening intermediary accountability in e-commerce.

Google India Pvt. Ltd. vs. Visaka Industries (2020, Supreme Court, SLP (C) No. 12732/2019): Facts: Visaka sued Google for hosting defamatory content via Blogger, claiming Google failed to remove it despite notice. Google argued it was a passive intermediary.Issue: Whether Google was liable for third-party defamatory content on its platform? Decision: The Supreme Court upheld Shreya Singhal, ruling that Google was immune unless a court order or government directive mandated removal. Notices from Visaka didn’t suffice to trigger liability.Relevance: Reaffirmed the high bar for intermediary liability in defamation cases, sticking to judicial or governmental oversight.

Ajit Mohan vs. Legislative Assembly, NCT of Delhi (2021, Supreme Court, Writ Petition (Civil) No. 1088/2020): Facts: Facebook’s India head challenged a Delhi Assembly summons over alleged platform misuse during the 2020 Delhi riots, citing Section 79 immunity.Issue: Whether intermediaries could be held accountable for content inciting violence? Decision: The Supreme Court clarified that Section 79 doesn’t grant absolute immunity—intermediaries can be summoned for inquiries but aren’t automatically liable. Facebook’s role as a platform didn’t preclude cooperation with lawful investigations.Relevance: Balanced safe harbour with public accountability, hinting at limits in cases of severe societal harm.

DRS Logistics (P) Ltd. and Anr. v. Google India Pvt. Ltd. and Ors. (2021): Background:This case examined the liability of Google India regarding defamatory content published on its platform. The court analyzed whether Google had exercised due diligence as required under the IT Act and whether its failure to remove defamatory material constituted intermediary negligence.Court’s Observations:The Delhi High Court reinforced that intermediaries are only liable if they have "actual knowledge" of objectionable content and fail to take necessary action. It emphasized the importance of proactive compliance and adherence to safe harbor provisions.

Kunal Kamra v. Union of India (Bombay High Court, January 2024):Background:This case involved a challenge to Rule 3(1)(b)(v) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. The petitioner, Kunal Kamra, a comedian, argued that the rule imposed excessive restrictions on free speech.Court’s Observations:The Bombay High Court delivered a split verdict. Justice Patel deemed the rule unconstitutional, arguing that it exceeded the scope of the IT Act. In contrast, Justice Gokhale upheld its validity, affirming that it served a legitimate regulatory purpose.

Zed Lifestyle Pvt Ltd. v. Hardik Mukeshbhai Pansheriya and Ors. (Delhi High Court, March 19, 2024): Background:This case revolved around trademark infringement on e-commerce platforms. The plaintiff accused the defendant of selling counterfeit goods under a deceptively similar brand name. Court’s Observations:The Delhi High Court ruled that online marketplaces must ensure due diligence in preventing the sale of counterfeit products. The judgment reinforced intermediary responsibilities in preventing trademark violations.

Amazon Seller Services Pvt. Ltd. vs. Modicare Ltd. & Ors. (2024, Delhi High Court, CS(COMM) 202/2023):Facts: Modicare sued Amazon for selling its products via unauthorized sellers, alleging trademark infringement. Amazon claimed safe harbour.Issue: Whether Amazon’s active role in sales negated its intermediary status.Decision: The court imposed damages exceeding ₹300 crore (one of the highest in such cases), ruling that Amazon’s control over pricing, logistics, and customer service made it an active participant, not a passive intermediary. Safe harbour was denied.Relevance: A recent milestone, it underscored stringent liability for e-commerce giants, expanding Amway’s precedent with significant financial penalties..

Lifestyle Equities CV & Anr. v. Amazon Technologies, Inc. & Ors. (Delhi High Court, March 2025): Background:The case focused on Amazon's liability for allegedly facilitating the sale of counterfeit goods under its private label "Symbol," which was claimed to be deceptively similar to "Beverly Hills Polo Club."Court’s Observations:The Delhi High Court emphasized that e-commerce platforms must take adequate measures to prevent trademark violations. The ruling highlighted the importance of monitoring listings and preventing unauthorized use of registered trademarks. 

Analysis and Trends: 

Evolution of Safe Harbour in India: A Simplified Overview:The legal concept of "safe harbour" protects online intermediaries—like social media platforms, search engines, and e-commerce websites—from being held directly responsible for the content users upload or share. However, this protection has not remained constant. It has evolved significantly over time through court decisions and legal reforms in India.

Early Days – Limited Protection (Pre-2008: Bazee.com Case): In the early 2000s, there was very little clarity about the responsibilities of online platforms. In the famous Bazee.com case, an executive was arrested because an objectionable video had been listed for sale on the site. This case showed that intermediaries could be held liable for user-generated content, even if they weren’t directly involved. At this stage, there was limited legal protection for intermediaries, exposing them to broad liability.

Strengthening Safe Harbour – Shreya Singhal (2015): Things changed significantly with the Supreme Court’s decision in Shreya Singhal v. Union of India. The Court struck down Section 66A of the IT Act for being vague and unconstitutional, and clarified that intermediaries could only be asked to remove content if there was a valid court order or a direction from the government. This ruling gave stronger legal immunity to intermediaries, except in cases involving intellectual property (IP). In cases like MySpace and Kent RO, courts still allowed liability in IP matters, even based on private complaints.

E-commerce and Narrowing of Safe Harbour (2018–2024): From 2018 onwards, Indian courts began applying a stricter view of safe harbour, especially to e-commerce platforms that played an active role in sales. In cases like Christian Louboutin v. Nakul Bajaj, Amway v. 1MG, and actions involving Amazon, courts found that platforms were not just passive intermediaries—they were directly involved in advertising, warehousing, and selling products. This shift reflected a growing focus on consumer protection, particularly where platforms behaved more like sellers than neutral intermediaries.

Introduction of Limited Proactive Duties – Sabu Mathew George Case: In the Sabu Mathew George case, the Supreme Court required search engines to proactively block content related to sex-selective abortion, based on the Pre-Conception and Pre-Natal Diagnostic Techniques (PCPNDT) Act. This was one of the first times an Indian court imposed proactive duties on intermediaries. However, this ruling was based on specific legal provisions and does not apply broadly to all types of online content.

Tension Between IP Rights and Free Speech: There’s an ongoing legal tension between protecting intellectual property and safeguarding freedom of speech. In copyright and trademark cases like MySpace and Amazon, courts have allowed intermediaries to be held liable based on private notices, not necessarily court orders. But in defamation or public order cases—such as Google India and Ajit Mohan v. Legislative Assembly of NCT Delhi—the stricter standard from Shreya Singhal still applies. This shows that the legal threshold for taking down content varies based on the nature of the dispute.

2021 IT Rules and Traceability Requirements: The 2021 Intermediary Guidelines and Digital Media Ethics Code introduced new obligations for “significant social media intermediaries” (SSMIs). These include requirements for content traceability, grievance redressal, and proactive content monitoring. These rules have triggered debates about privacy, encryption, and the limits of safe harbour. As of March 2025, however, Indian courts have not yet delivered detailed rulings on many of these issues, and several cases are still pending.

Conclusion: A Developing Legal Landscape: India’s approach to intermediary liability has come a long way—from the unclear rules of the Bazee.com era to the more balanced and nuanced regime we see today. Early cases revealed serious legal gaps. The Shreya Singhal judgment protected freedom of speech, while later rulings like Christian Louboutin and Amazon placed greater responsibility on platforms engaged in active commerce. The Sabu Mathew George case showed courts may impose specific proactive duties in public interest matters.As of March 2025, the legal framework continues to evolve, particularly in light of the 2021 IT Rules and the expanding role of intermediaries in commerce and public discourse. Future judicial decisions are expected to further test and define the scope of proactive obligations, shaping the next chapter of India’s digital regulation.

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

Amba Shakti Steels Ltd. Vs. Sequence Ferro Private Limited

When the goods are identical, even a slight similarity in trademarks can cause confusion

Introduction:

The case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited revolves around a trademark dispute concerning the similarity between the trademarks “AMBA” and “AMMAJI.” The appellant, Amba Shakti Steels Ltd., alleged that Sequence Ferro Private Limited had adopted a deceptively similar trademark, leading to confusion among consumers. The case primarily focuses on trademark infringement, copyright infringement, and passing off claims.

Factual Background:

Amba Shakti Steels Ltd., originally incorporated as K.P. Steel Products Private Limited in 1989, is a prominent manufacturer of steel bars, billets, angles, channels, and sponge iron. The company has been using the trademarks "AMBA" and "AMBA SHAKTI" since 1993 and has obtained multiple trademark registrations under the Trade Marks Act, 1999.

The appellant also holds copyright protection for its trade label and has consistently invested in branding and advertising. It claims substantial goodwill in the market, supported by a turnover of ₹358.58 crores for the financial year 2022-23.

The respondent, Sequence Ferro Private Limited, adopted the trademark “AMMAJI” in December 2022 and applied for its registration in Class 06 for TMT bars and other related products. It claimed sales of ₹42.43 crores within six months. The appellant contended that this adoption was dishonest and aimed at leveraging its established goodwill.

Procedural Background:

Amba Shakti Steels Ltd. filed a suit (CS Comm 738/2023) seeking a permanent injunction against the respondent for using the mark “AMMAJI.” Along with the suit, the appellant filed an application under Order XXXIX Rules 1 and 2 of the CPC for an interim injunction.

The Commercial Court dismissed the interim injunction application on January 18, 2024, primarily on the grounds that the trademarks were visually distinct and that Amba Shakti had not taken action against other third parties using the word “AMBA.” Aggrieved by this order, the appellant preferred an appeal before the Delhi High Court.

Issues Involved:

The primary issue was whether the trademark “AMMAJI” is deceptively similar to “AMBA” and causes confusion in the market? Another issue was whether the respondent’s adoption of the trademark was dishonest and an attempt to pass off its goods as those of the appellant? The court also had to determine whether the appellant’s failure to take action against other third parties using “AMBA” affected its claim against the respondent? 

Submissions of the Parties:

The appellant argued that the word “AMBA” is phonetically and visually similar to “AMMAJI.” Given that both marks are used for the same category of products (TMT bars), there was a high likelihood of confusion. The respondent’s mark closely resembled the appellant’s in terms of color scheme, structure, and placement of words, which indicated an intent to deceive consumers. The appellant claimed that it had been using the trademarks for over two decades, whereas the respondent adopted “AMMAJI” only recently. The appellant further contended that its failure to take action against other third parties should not disqualify it from enforcing its rights against the respondent.

The respondent argued that “AMBA” and “AMMAJI” were conceptually different, with “AMBA” referring to a Hindu Goddess and “AMMAJI” being a respectful term for mothers and grandmothers. It submitted that the trademarks had distinct visual elements, including different artistic devices and typography. The respondent further asserted that since TMT bars are high-value products, customers exercise caution while purchasing, reducing the likelihood of confusion. It also contended that the appellant’s suppression of an earlier legal notice issued by its sister concern (M/s Amba Shakti Udyog Limited) indicated a lack of clean hands.

Discussion on Judgments Cited:

The court relied on Re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), which sets out factors for determining confusion, such as similarity in appearance, sound, meaning, and trade channels. The court also referred to Estate of P.D. Beckwith v. Commissioner of Patents, 64 L.Ed. 705, which emphasized that a trademark should be assessed based on its overall commercial impression rather than individual elements. The court cited McCarthy on Trademarks and Unfair Competition (5th ed., 2023), which states that when the goods are identical, even a slight similarity in trademarks can cause confusion. The court also relied on Hindustan Pencil Private Ltd. v. India Stationary Products Co., 1989 SCC OnLine Del 34, which held that the protection of consumer interest outweighs any delay by the trademark proprietor in taking legal action.The court noted that in Nutrica Pusti Healthcare Pvt. Ltd. v. Morepen Laboratories Ltd., 2021 SCC OnLine Del 2631, a trademark owner’s inaction against some infringers did not bar them from taking action against others.

Reasoning and Analysis by the Judge:

The court found that “AMBA” and “AMMAJI” had phonetic similarities and conveyed similar meanings. The placement of words, color schemes, and additional design elements (such as red-colored brand names and numerical values) created an overall commercial impression that was deceptively similar.The appellant had been using “AMBA” for two decades, whereas the respondent adopted “AMMAJI” in 2022. The respondent’s turnover was significantly smaller, making the appellant’s loss more substantial if an injunction was denied.The court emphasized that trademark laws aim to protect consumers from deceptive practices. Given that both parties dealt in identical products (TMT bars), the likelihood of confusion among consumers was high.The court held that a trademark owner is not required to sue every infringer and can choose to take action based on commercial significance.

Final Decision:

The Delhi High Court set aside the order of the Commercial Court and granted an interim injunction restraining the respondent from using the mark “AMMAJI” or any other deceptively similar marks until the disposal of the suit.

Law Settled in this Case:

Overall commercial impression is key in determining trademark similarity, rather than a detailed comparison of individual elements.when the goods are identical, even a slight similarity in trademarks can cause confusion. Failure to take action against other infringers does not prevent a trademark owner from seeking relief against a particular infringer. Balance of convenience favors the long-term user of a trademark when the rival is a recent entrant. Public interest in preventing consumer confusion is paramount in trademark disputes.

Case Title: Amba Shakti Steels Ltd. Vs. Sequence Ferro Private Limited

Date of Order: September 3, 2024

Case No.: FAO (COMM) 41/2024

Neutral Citation:2024:DHC:6703-DB

Court: High Court of Delhi

Judges: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Ms. Justice Tara Vitasta Ganju

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

F. Hoffmann-La Roche AG & Another VS. Natco Pharma Limited

Prior admissions in foreign jurisdictions can be used to assess patent validity.

Introduction:

The case of F. Hoffmann-La Roche AG & Another v. Natco Pharma Limited revolves around the contentious balance between patent rights and the public’s access to affordable medicines. The dispute concerns Risdiplam, a crucial drug for treating Spinal Muscular Atrophy (SMA). The plaintiffs, global pharmaceutical giants, sought to enforce their patent rights over Risdiplam, alleging infringement by the defendant, an Indian pharmaceutical company. The defendant, however, challenged the patent's validity, citing concerns over evergreening, prior disclosures, and the fundamental need for affordable healthcare.

Detailed Factual Background:

F. Hoffmann-La Roche AG and another claimed patent infringement against Natco Pharma Limited, alleging that their Indian Patent No. 334397 (IN'397) was being violated by Natco’s attempts to manufacture and sell a generic version of Risdiplam. The suit patent was granted for a compound used to treat SMA, a severe genetic disorder affecting motor neurons.

The plaintiffs had secured patents for Risdiplam across various jurisdictions and marketed it under the brand name Evrysdi. The compound was developed to offer an oral treatment alternative for SMA, a disorder traditionally requiring complex treatments. The suit patent had a validity period of 20 years from May 11, 2015, expiring in 2035.

The defendant countered the claim, arguing that Risdiplam was already covered under an earlier international genus patent, WO 2013/119916 A2. They contended that the species patent IN’397 was an attempt to extend monopoly rights beyond the permissible limits, a practice commonly referred to as "evergreening." They further argued that the plaintiffs had made admissions in foreign jurisdictions acknowledging that Risdiplam was part of the earlier genus patent, thereby invalidating their claim to a separate species patent.

Detailed Procedural Background:

The plaintiffs filed a suit seeking an interim injunction against the defendant, restraining them from manufacturing and selling Risdiplam. The defendant opposed the injunction, challenging the validity of the patent on grounds of anticipation, lack of inventive step, and misrepresentation.

Public interest arguments were raised by interveners, highlighting that the high cost of Risdiplam under the plaintiffs' pricing structure made it inaccessible to most SMA patients in India. The interveners contended that allowing generic manufacturing would significantly lower the price, making life-saving treatment accessible to those in need.

The court conducted extensive hearings, reviewing technical arguments, documentary evidence, and international patent proceedings. The case drew attention due to its implications on India's patent jurisprudence and its approach to balancing intellectual property rights with healthcare accessibility.

Detailed Description of the Patent and How It Was Defeated by Prior Art:

The suit patent (IN’397) claimed a novel compound, Risdiplam, for treating SMA. The compound was described using a Markush structure, meaning it covered a broad set of chemical derivatives. The patent specification detailed how the compound was developed to enhance SMN2 protein production, thereby improving motor function in SMA patients.

However, the defendant argued that Risdiplam was already disclosed in an earlier patent, WO 2013/119916 A2 (the "genus patent"). This genus patent broadly covered a range of compounds, including Risdiplam, without naming it explicitly. The defendant demonstrated that a person skilled in the art, upon reading WO’916, could easily derive Risdiplam by following the disclosed chemical structures and synthetic pathways.

The court found that the genus patent sufficiently anticipated Risdiplam, making the species patent IN’397 vulnerable to invalidation. The principle established in Novartis AG v. Union of India, (2013) 6 SCC 1—that a known compound cannot be re-patented without demonstrating a significant enhancement in efficacy—was applied. Since the plaintiffs failed to show that Risdiplam offered an unexpected improvement over the disclosed genus compounds, the court found that the species patent lacked novelty and an inventive step.

Admissions Made by the Plaintiffs and Their Effect:

One of the key aspects that led to the court’s decision was the plaintiffs’ own admissions in foreign jurisdictions. In the United States, the plaintiffs had applied for a Patent Term Extension (PTE) for their earlier genus patent, arguing that Risdiplam was covered under it. Similarly, in European and Australian proceedings, the plaintiffs made statements suggesting that Risdiplam fell within the scope of the genus patent WO’916.

The defendant used these admissions to argue that the plaintiffs could not now claim that Risdiplam was a distinct invention warranting a separate species patent. The court agreed, stating that these admissions demonstrated that Risdiplam was not a novel invention, but merely one among many compounds already disclosed in WO’916.

The court also relied on AstraZeneca AB v. Intas Pharmaceuticals Ltd., 2021 SCC OnLine Del 3746, which held that prior admissions in foreign jurisdictions can be used to assess patent validity. The plaintiffs’ contradictory positions—claiming in foreign jurisdictions that Risdiplam was covered under the genus patent, while arguing in India that it was a novel compound—significantly weakened their case.

Detailed Discussion on Judgments Cited and Their Context:

Novartis AG v. Union of India, (2013) 6 SCC 1 – This case established that evergreening is not permitted under Indian patent law. The court held that mere discovery of new forms of known substances without enhanced efficacy is not patentable. The defendant relied on this precedent to argue that IN’397 was an attempt at evergreening.Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511 – This judgment clarified that patents do not enjoy a presumption of validity and must be scrutinized rigorously. The court applied this principle in assessing whether the defendant had raised a credible challenge to the suit patent.F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2009 SCC OnLine Del 1074 – This case reinforced that mere patent registration does not guarantee validity. The court relied on this precedent to evaluate the defendant’s challenge to IN’397.AstraZeneca AB v. Intas Pharmaceuticals Ltd., 2021 SCC OnLine Del 3746 – This case held that prior admissions in foreign jurisdictions could be used to assess the validity of a patent. The defendant relied on this judgment to argue that the plaintiffs’ statements in other countries should be taken as admissions undermining their claim in India.

Final Decision:

The court denied the plaintiffs’ request for an interim injunction, allowing the defendant to manufacture and sell Risdiplam. However, it directed the defendant to maintain records of sales and financial transactions to ensure potential compensation if the plaintiffs ultimately prevailed in the suit.

Law Settled in This Case:

The court reaffirmed that mere grant of a patent does not confer automatic validity and that patents can be challenged based on prior disclosures. Prior admissions in foreign jurisdictions can be used to assess patent validity. It reiterated that public interest is a crucial factor in determining interim relief in pharmaceutical patent disputes. The ruling reinforced the principle that patent rights cannot be used to unjustifiably extend monopoly periods through evergreening. It also clarified that statements made by patentees in foreign jurisdictions can be relevant in assessing the validity of a patent in India.

Case Title: F. Hoffmann-La Roche AG & Another VS. Natco Pharma Limited

Date of Order: 24.03.2025

Case Number: CS(COMM) 567/2024

Neutral Citation: 2025:DHC:1907

Court: Delhi High Court

Hon’ble Judge: Justice Mini Pushkarna

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

Prime Comfort Products Private Limited Vs. Lal Bahadur Trading as Sulakshmi Enterprises

Jurisdiction and Defendant own admission in opposition proceeding regarding all India  basis trademark user

Introduction:

The case of Prime Comfort Products Private Limited vs. Lal Bahadur Trading as Sulakshmi Enterprises is a significant trademark dispute that brings forth critical issues related to territorial jurisdiction. The plaintiff, a registered trademark owner, sought relief against the defendant for infringement and passing off. The defendant, in response, challenged the jurisdiction of the Delhi High Court, arguing that no part of the cause of action arose in Delhi. The court was required to assess whether the plaintiff had established a prima facie case for jurisdiction and whether the defendant's arguments warranted the dismissal of the suit through a summary judgment.

Factual Background:

The plaintiff initially filed a suit for passing off, claiming that the defendant was using a deceptively similar mark. During the pendency of the suit, the plaintiff obtained registration for its trademark and subsequently amended the plaint to include a claim for infringement. The defendant was allegedly selling infringing products under the brand name “Refresh Springs,” which the plaintiff contended was confusingly similar to its registered trademarks. The plaintiff further asserted that the defendant’s online presence, including an interactive website, facilitated sales across India, including Delhi. The plaintiff also cited complaints from distributors who reported market confusion due to the similarity in branding.

The defendant countered that it had no business presence in Delhi and that the plaintiff had failed to provide any invoices or evidence of actual sales in Delhi. It argued that the accessibility of its website in Delhi did not automatically confer jurisdiction upon the Delhi High Court. The defendant relied on precedents that emphasized the need for concrete evidence demonstrating that the alleged infringing activities had a direct impact within the court’s territorial jurisdiction.

Procedural Background:

The defendant moved an application under Order XIIIA of the Commercial Courts Act, 2015, seeking summary judgment on the ground that the suit lacked merit due to jurisdictional deficiencies. The defendant contended that there was no material evidence to suggest that it was conducting business in Delhi. The plaintiff opposed this application, asserting that the defendant’s website was interactive and facilitated sales across India, including in Delhi. The court reserved its decision on September 7, 2018, and pronounced its judgment on September 14, 2018.

Issues Involved in the Case:

The primary issue in this case was whether the Delhi High Court had territorial jurisdiction to entertain the suit. The court had to determine whether the defendant’s online presence and alleged sale of goods in Delhi provided a sufficient basis for jurisdiction under Section 134(2) of the Trade Marks Act, 1999, and Section 20(c) of the Code of Civil Procedure. The court also had to decide whether the plaintiff had made a prima facie case for jurisdiction or whether the suit should be dismissed summarily.

Submission of Parties:

The plaintiff argued that its registered office was in Delhi and that it was carrying on business within the territorial limits of the court. It contended that under Section 134(2) of the Trade Marks Act, 1999, a trademark owner has the right to sue in the jurisdiction where it carries on business, irrespective of where the infringement occurs. The plaintiff also emphasized that the defendant’s website was accessible in Delhi and that the defendant had acknowledged nationwide sales in a trademark opposition proceeding. It relied on the Supreme Court's judgment in Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), which held that a plaintiff could sue at the place of its principal office.

The defendant maintained that the plaintiff had not provided any proof of sales in Delhi and that jurisdiction could not be established merely on the basis of an accessible website. It relied on the judgment in Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), which required a plaintiff to show that the defendant had engaged in commercial activity specifically targeting customers within the forum state. The defendant further cited Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), which held that in commercial suits, courts could dismiss claims summarily if the plaintiff lacked a real prospect of success.

Discussion on Judgments Cited:

In Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), the court held that a plaintiff with a registered office in a particular jurisdiction could sue for trademark infringement there, even if the cause of action arose elsewhere. The plaintiff relied on this ruling to justify filing the suit in Delhi.In Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), the court held that a plaintiff must show that a defendant had engaged in commercial transactions specifically targeting customers within the forum state. The defendant argued that this principle applied and that the plaintiff had failed to establish such targeting.In Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), the court emphasized that commercial suits could be dismissed summarily if the plaintiff had no real prospect of success. The defendant cited this ruling to argue that the plaintiff’s claim lacked merit and should be dismissed without trial.The court also examined M/s. RSPL Limited vs. Mukesh Sharma & Anr., FAO(OS) 145/2016, where it was held that a plaintiff must make a positive statement of fact regarding jurisdiction and that such statements must be taken as correct when considering an application under Order 7 Rule 10 CPC.

Reasoning and Analysis of the Judge:

Justice Yogesh Khanna reasoned that the plaintiff had its registered office in Delhi and was carrying on business within the jurisdiction. The court noted that Section 134(2) of the Trade Marks Act, 1999, granted jurisdiction to the court where the plaintiff carried on business, and that this provision was distinct from the general rules of jurisdiction under the CPC.The court observed that the defendant had itself stated in a trademark opposition proceeding that its products were widely sold across India. This, in the court’s view, was sufficient to establish a prima facie case for jurisdiction. The court distinguished Banyan Tree Holding by noting that in that case, the website was not interactive, whereas in the present case, the defendant’s website allowed users to place orders.The court also considered Ultra Home Construction and ruled that since the plaintiff had its registered office in Delhi, it was entitled to sue there. The court rejected the defendant’s reliance on Godfrey Phillips India Limited, holding that the plaintiff had a real prospect of succeeding and that the case warranted a full trial.

Final Decision:

The court dismissed the defendant’s application for summary judgment, holding that the Delhi High Court had jurisdiction to entertain the suit. The court ruled that the plaintiff had established a prima facie case for jurisdiction and that the matter should proceed to trial. The application was dismissed with no order as to costs.

Law Settled in This Case:

The case reaffirmed that under Section 134(2) of the Trade Marks Act, a plaintiff can sue for trademark infringement in the jurisdiction where it carries on business, irrespective of where the defendant operates.Trademark Jurisdiction can be based on the basis of Defendant's own admission in opposition proceeding claiming all India user. It also clarified that an interactive website capable of soliciting orders within a jurisdiction could be a valid ground for establishing territorial jurisdiction. The judgment reinforced that jurisdictional challenges must be assessed based on prima facie evidence rather than requiring conclusive proof at the preliminary stage.

Case Title: Prime Comfort Products Private Limited Vs. Lal Bahadur 

Date of Order: September 14, 2018

Case No.: CS(COMM) 1606/2016

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Yogesh Khanna

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

Narender Kumar Sharma Vs. Maharana Pratap Educational Center

Delays in re-filing should be assessed on different considerations than delays in initial filing

Introduction:

The case of Dr. Narender Kumar Sharma & Ors vs. Maharana Pratap Educational Center revolved around the procedural aspect of filing and re-filing a written statement. The dispute arose when the defendants were denied the right to file their written statement due to procedural delays. The case highlights the legal interpretations concerning the delay in re-filing and its implications on the rights of the parties involved.

Factual Background:

The plaintiffs, Dr. Narender Kumar Sharma and others, filed a suit against Maharana Pratap Educational Center. The defendants were served with summons on January 8, 2018, requiring them to submit their written statement within 120 days as per the Civil Procedure Code (CPC). The defendants initially filed their written statement on May 7, 2018, within the prescribed period. However, due to certain office objections, the document was returned for rectification.

Despite this, the defendants failed to re-file the corrected statement within the required timeframe. The trial court, upon noticing this delay, passed an order on October 1, 2018, closing the defendants' right to file their written statement. This led to an appeal before the High Court of Delhi.

Procedural Background:

The appellants challenged the trial court’s order and sought condonation of the delay in re-filing the written statement. The application for condonation of delay was based on the argument that the delay was not in the initial filing but in re-filing due to rectification of objections, which should be treated differently under the law.

The High Court had to determine whether the delay in re-filing could be condoned and if it should be treated differently from the delay in the initial filing.

Issues Involved in the Case:

The primary issues for consideration were whether the delay in re-filing the written statement should be treated the same as the delay in initial filing? whether the defendants should be permitted to re-file their written statement despite the lapse of the prescribed 120-day period, and whether the decision of the trial court in closing the right to file the written statement was legally justified?

Submission of Parties:

The appellants argued that the written statement was initially filed within time and was only delayed in re-filing due to office objections. They contended that as per settled legal principles, delay in re-filing should not be subjected to the same stringent standards as delay in initial filing. They relied on precedents, including S.R. Kulkarni vs. Birla VXL Ltd., 1998 (3) RCR (Civil) 436 and Indian Statistical Institute vs. Associated Builders & Ors., AIR 1978 SC 335, which distinguished between initial filing and re-filing.

The respondents contended that re-filing amounts to fresh filing, and any delay in this regard should be viewed strictly. They relied on the Division Bench judgment in Northern Railway vs. Pioneer Publicity Corporation Pvt. Ltd., 2015 (X) AD Delhi 378, which held that re-filing should be treated as fresh filing.

Discussion on Judgments Cited:

The court examined several judgments. In S.R. Kulkarni vs. Birla VXL Ltd. (1998), the court held that delay in re-filing should be treated differently from delay in initial filing and should not be subjected to the same rigorous tests. In Indian Statistical Institute vs. Associated Builders & Ors. (1978), the Supreme Court ruled that delay in re-filing is not governed by the same limitations as the initial filing under the Limitation Act. In Northern Railway vs. Pioneer Publicity Corporation Pvt. Ltd. (2015), this Division Bench ruling held that re-filing amounts to fresh filing and delay cannot be condoned. However, in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd. (2017) 11 SCC 234, the Supreme Court overturned the Division Bench ruling, affirming that Section 34(3) of the Arbitration Act does not apply to re-filing but only to initial filing.

Reasoning and Analysis of the Judge:

Justice Jayant Nath analyzed the precedents and concluded that the trial court erroneously treated the delay in re-filing as equivalent to a delay in initial filing. The Supreme Court in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd. (2017) had clarified that re-filing should not be treated as fresh filing. Given the absence of mala fide intent and the procedural nature of the delay, it would be unjust to deny the defendants the right to submit their written statement.

Final Decision:

The High Court allowed the appeal, condoning the delay in re-filing and permitting the defendants to place their written statement on record, subject to a cost of ₹15,000.

Law Settled in This Case:

This case reaffirmed that delays in re-filing should be assessed on different considerations than delays in initial filing. Courts should not adopt a rigid approach in such matters, especially when procedural delays occur due to rectification of objections. The ruling aligns with the Supreme Court’s stance that re-filing should not be equated with fresh filing.

Case Title: Dr. Narender Kumar Sharma Vs. Maharana Pratap Educational Center

Date of Order: December 13, 2018

Case No.: CS(COMM) 22/2018

Neutral Citation: AIRONLINE 2018 DEL 2947

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Jayant Nath

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