Pluto Travels India Private Limited Vs. PTW Holidays Private Limited

Case Title: Pluto Travels India Private Limited Vs. PTW Holidays Private Limited Court: High Court of Delhi Judge: Hon’ble Mr. Justice Saurabh Banerjee Case No.: CS(COMM) 334/2024 Order Date: May 14, 2025 Neutral Citation: 2025:DHC:3709 Date of Order: May 14, 2025

Fact:

Pluto Travels India Private Limited (Plaintiff) has been in operation since 2004, offering luxury car rentals and travel services under the trademarks “PLUTO” and a distinctive device mark. They obtained trademark registrations and have been using these marks continuously for years. The defendant, PTW Holidays Private Limited, started its business around 2016 and adopted the mark “PLUTO TOURS” for providing travel services. The plaintiff contended that the defendant’s mark is identical and deceptively similar, leading to consumer confusion and infringement of their trademarks.

Procedural Detail:

The plaintiff filed a suit for permanent injunction and an interlocutory application seeking an interim injunction to restrain the defendant from using the mark “PLUTO TOURS.” The defendant opposed the injunction, claiming that their use was honest, since their adoption dates back to 2016, and that their marks are different in appearance and nature of services.

Issue:

The key issue was whether the defendant’s use of “PLUTO TOURS” infringed upon the plaintiff’s trademarks “PLUTO” and associated device mark, and whether an interim injunction should be granted to prevent further use by the defendant.

Decision:

The Court held that the plaintiff successfully established a prima facie case of trademark infringement and that the balance of convenience favored granting an interim injunction. It was found that the plaintiff’s longstanding use and registration of “PLUTO” and the device mark could be harmed irreparably if the defendant continued using “PLUTO TOURS.” The Court thus granted the interim injunction restraining the defendant from using the impugned marks.

Diamond Modular Pvt. Ltd. Vs. Vikash Kumar

Introduction

The case of Diamond Modular Pvt. Ltd. v. Vikash Kumar & Anr. is a pivotal trademark infringement dispute adjudicated by the High Court of Delhi, addressing the protection of registered trademarks and the scope of deceptive similarity under the Trade Marks Act, 1999. The appellant, Diamond Modular Pvt. Ltd., alleged that the respondents’ use of the unregistered mark “DIAMOND GOLD” infringed its registered trademark “DIAMOND” for electrical goods, seeking a permanent injunction. The Commercial Court dismissed the appellant’s suit, prompting an appeal before the High Court. The judgment, delivered on May 5, 2025, by Justices C. Hari Shankar and Ajay Digpaul, overturned the lower court’s decision, granting the injunction and reinforcing key principles of trademark law, including the irrelevance of identical goods for infringement and the evidential weight of uncontested trademark registrations. This case underscores the robust protections afforded to registered trademark proprietors and clarifies the application of Sections 28, 29, and 34 of the Trade Marks Act.

Detailed Factual Background

Diamond Modular Pvt. Ltd., the appellant, claimed proprietary rights over the “DIAMOND” trademark, used since 1975 for electrical goods such as switches, plugs, sockets, lamp shade holders, and fans, registered under Classes 9 and 11 of the Trade Marks Act. The appellant’s registrations included: (1) Registration No. 426403 (Class 9, electric switches, plugs, sockets, since April 1, 1975, valid until August 28, 2025); (2) Registration No. 709611 (Class 9, electric switches, sockets, connectors, proposed use, valid until April 8, 2033); (3) Registration No. 831578 (Class 9, electrical accessories, since January 1, 1975, valid until December 10, 2028); (4) Registration No. 337296 (Class 11, lamp shade holders, since April 1, 1975, valid until June 8, 2026); and (5) Registration No. 831577 (Class 11, electrical fans, coolers, geysers, since January 1, 1975, valid until December 10, 2028). The appellant, through its predecessor, Lalita Gupta, adopted the “DIAMOND” mark in 1975 under the proprietorship Diamond Products (India), later renamed New Diamond Electricals. In 1984, Rajesh Gupta, Lalita’s son, started Diamond Enterprises as a permissive user, acquiring the mark via an assignment deed dated October 19, 2001. The mark was further assigned to the appellant company, incorporated by Rajesh and Priti Gupta, on July 19, 2018. The appellant claimed a turnover of ₹23.7 crores in 2020–2021, asserting that “DIAMOND” was a well-known trademark and its logo an original artistic work under the Copyright Act, 1957. The appellant operated an interactive website, www.diamondindia.co.in.

The respondents, Vikash Kumar and another, used the unregistered mark “DIAMOND GOLD” for electrical goods, including fans, wires, cables, switches, and heaters, applying for registration in Classes 9, 11, and 35 on July 1 and 4, 2022. The appellant opposed these applications, which remained pending. The respondents promoted their products through an interactive website (https://sites.google.com/view/wwwadfancom/home), social media platforms (Facebook, WhatsApp, YouTube), and email addresses, actively marketing across India. The appellant alleged that “DIAMOND GOLD” was phonetically, visually, and structurally deceptively similar to “DIAMOND,” causing confusion and infringing its trademark rights. Evidence included screenshots of the respondents’ online presence and a WhatsApp conversation where the respondents agreed to deliver goods to a Delhi address within the court’s jurisdiction. The appellant claimed the respondents’ use was dishonest, aimed at exploiting its goodwill.

Detailed Procedural Background

The appellant filed a suit, CS (Comm) 444/2023, before the District Judge (Commercial Court)-05, South, Saket, under Sections 134, 135, and 27(2) of the Trade Marks Act, seeking a permanent injunction, delivery-up, rendition of accounts, damages, and costs. Despite summons, the respondents did not appear, and the court proceeded ex parte on April 9, 2024. The appellant led evidence through Piyush Gupta (PW-1), who filed an affidavit detailing the trademark’s history, the respondents’ infringing activities, and supporting documents, including a Legal Proceedings Certificate (LPC) dated March 12, 2021, from the Registrar of Trade Marks. The Commercial Court dismissed the suit on October 15, 2024, citing four grounds: (1) the respondents’ use of “DIAMOND GOLD” for fans did not infringe “DIAMOND” used for switches and LED lights; (2) reliance on Section 34, requiring continuous manufacture; (3) failure to prove assignment deeds from Lalita Gupta; and (4) Piyush Gupta’s incompetence as a witness. Aggrieved, the appellant filed an appeal, RFA (COMM) 166/2025, before the Delhi High Court. The appeal was heard by Justices C. Hari Shankar and Ajay Digpaul, represented by Mr. Rishi Bansal and others for the appellant, with no appearance for the respondents. The court pronounced its judgment on May 5, 2025, quashing the Commercial Court’s order and decreeing the suit.

Issues Involved in the Case

The case raises several critical issues: Whether the respondents’ use of “DIAMOND GOLD” infringes the appellant’s registered “DIAMOND” trademark under Section 29, given the alleged difference in goods (fans versus switches/LED lights). Whether the Commercial Court’s reliance on Section 34, requiring continuous manufacture, is legally sound in denying infringement relief. Whether the appellant failed to prove its proprietorial rights over the “DIAMOND” trademark due to unproduced assignment deeds. Whether Piyush Gupta was competent to testify as PW-1, given his authorization in 2024 and the historical facts dating back to 1975. Whether the appellant is entitled to a permanent injunction against the respondents’ use of “DIAMOND GOLD” for electrical goods.

Detailed Submission of Parties

Appellant’s Submissions (Diamond Modular Pvt. Ltd.): Represented by Mr. Rishi Bansal and others, the appellant argued that the Commercial Court erred on all grounds. On infringement, they contended that “DIAMOND GOLD” was deceptively similar to “DIAMOND,” phonetically, visually, and structurally, likely to cause confusion among consumers of average intelligence, per Section 29(2)(a) and (b). The goods (fans versus switches, LED lights, fans) were allied or cognate, as electrical goods are often produced by the same manufacturers, negating the need for identical goods. The appellant’s registrations in Classes 9 and 11, including fans, and priority of use since 1975, established its rights. On Section 34, the appellant argued the provision was irrelevant, as it protects prior users, not applicable here since the respondents’ use began in 2022. Regarding proprietorial rights, the appellant acknowledged not filing assignment deeds but relied on the LPC, which documented the trademark’s transfer from Lalita Gupta to Rajesh Gupta (2001) and to the appellant (2018), arguing that Section 31(1) deems registration prima facie valid, unchallenged by the respondents. On Piyush Gupta’s competence, the appellant submitted that as a company representative, Gupta relied on company records, not personal knowledge, and his testimony was uncontested, rendering the Commercial Court’s reliance on Janki Vashdeo Bhojwani misplaced, as it involved natural persons, not juristic entities.

Respondents’ Submissions (Vikash Kumar & Anr.): The respondents did not appear or file a written statement, leaving the appellant’s evidence and submissions uncontested. The court noted their absence, proceeding ex parte and refraining from awarding damages or costs due to their non-participation.

Detailed Discussion on Judgments Cited by Parties

Janki Vashdeo Bhojwani v. Indusind Bank Ltd., (2005) 2 SCC 217: Cited by the Commercial Court to question Piyush Gupta’s competence, this Supreme Court case held that a power of attorney holder cannot depose on facts within the personal knowledge of another natural person. The High Court distinguished this, noting that the appellant, a juristic entity, required a natural person to represent it. Gupta’s affidavit relied on company records, not personal knowledge, and went uncontested, rendering the precedent inapplicable.

No other judgments were explicitly cited by the parties, but the court referenced statutory provisions and principles from the Trade Marks Act, particularly Sections 28, 29, 31, and 34, to analyze infringement, registration validity, and prior use. The court’s reasoning implicitly drew on established trademark jurisprudence, such as the likelihood of confusion test and the scope of “similar” goods, without citing specific cases.

Detailed Reasoning and Analysis of Judge

Justices C. Hari Shankar and Ajay Digpaul systematically dismantled the Commercial Court’s findings, addressing each ground of dismissal. On infringement, the court held that the Commercial Court erred in requiring identical goods. Section 29(2)(a) and (b) defines infringement as the use of a similar mark for identical or similar goods, likely to cause confusion or association. Fans, switches, and LED lights, as electrical goods often produced by the same manufacturers, are “similar” or cognate. The marks “DIAMOND” and “DIAMOND GOLD” were deceptively similar, sharing the dominant element “DIAMOND,” likely to confuse consumers of average intelligence. The appellant’s registrations, including for fans, and priority of use since 1975, reinforced its claim. The court clarified that actual use of the registered mark is not required for infringement under Section 28(1), and non-use only permits removal under Section 47, not denial of infringement relief.

On Section 34, the court found the Commercial Court’s reliance misplaced. Section 34 protects prior users of identical or similar marks, inapplicable here as the respondents’ use began in 2022, long after the appellant’s 1975 adoption and 1984 registration. The Commercial Court’s interpretation, requiring continuous manufacture, was unsupported by the provision’s text, reflecting a non-application of mind.

Regarding proprietorial rights, the court addressed the Commercial Court’s rejection due to unproduced assignment deeds. While the appellant did not file the 2001 and 2018 deeds, the LPC dated March 12, 2021, exhibited as PW1/11, documented the trademark’s transfer from Lalita Gupta to Rajesh Gupta (October 19, 2001) and to the appellant (July 19, 2018). Section 31(1) deems registration and assignments prima facie valid, and the uncontested LPC sufficed to prove proprietorship, especially absent respondent rebuttal.

On Piyush Gupta’s competence, the court rejected the Commercial Court’s skepticism. As a juristic entity, the appellant required a representative. Gupta’s affidavit, based on company records and verified on May 22, 2024, was uncontested, as the respondents neither appeared nor cross-examined. The Commercial Court’s reliance on Janki Vashdeo Bhojwani was erroneous, as it involved natural persons, not companies. The court further noted that courts cannot construct a case for a non-participating party, reinforcing the weight of Gupta’s unchallenged testimony.

Final Decision

The High Court quashed the Commercial Court’s judgment dated October 15, 2024, and decreed CS (Comm) 444/2023 in the appellant’s favor. A permanent injunction was granted, restraining the respondents and their agents from using “DIAMOND GOLD” or any mark identical or deceptively similar to “DIAMOND” for electrical goods or allied/cognate goods, including fans. No damages or costs were awarded due to the respondents’ absence. The Registry was directed to draw up a decree sheet, and the appeal was allowed.

Law Settled in This Case

The judgment clarifies several principles under the Trade Marks Act: Infringement under Section 29(2) of Trademarks Act 1999 does not require identical goods; similar or cognate goods (e.g., fans, switches) suffice if the marks are deceptively similar and likely to cause confusion. Section 34 is irrelevant unless the defendant proves prior use, inapplicable to late adopters. Trademark Registration and assignments are prima facie valid under Section 31(1), and uncontested evidence, like an LPC, proves proprietorship without original deeds. A company’s representative can testify based on records, and uncontested testimony carries significant weight. Courts cannot construct defenses for non-appearing parties.

Diamond Modular Pvt. Ltd. Vs. Vikash Kumar & Anr.:May 5, 2025:RFA (COMM) 166/2025:2025:DHC:3619-DB:High Court of Delhi:Hon’ble Mr. Justice C. Hari Shankar, Hon’ble Mr. Justice Ajay Digpaul

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

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal

Introduction

The case of Abros Sports International Pvt. Ltd. v. Ashish Bansal and Ors. is a significant trademark dispute adjudicated by the High Court of Delhi, addressing complex issues of trademark infringement, passing off, and the legal implications of registered trademarks under the Trade Marks Act, 1999. The case revolves around the appellant, Abros Sports International Pvt. Ltd. (ASIPL), alleging that the respondents’ use of the mark “NEBROS” infringes its registered trademark “ABROS” and constitutes passing off. The appeal arises from a Single Judge’s dismissal of ASIPL’s application for an interim injunction, prompting a deeper examination of whether an infringement suit can be maintained against a registered trademark and the procedural nuances involved. The Division Bench, unable to reconcile its interpretation with a prior coordinate bench decision, referred critical legal questions to a Larger Bench, leaving the appeal’s final resolution pending.

Detailed Factual Background

ASIPL, incorporated on February 14, 2020, claimed proprietorship of the “ABROS” trademark, used for footwear and related products. The mark, a portmanteau of “A” (from Anil Sharma, the founder) and “BROS” (indicating the family business), was conceived in March 2017 by Anil Sharma’s proprietorship and assigned to ASIPL via a deed dated January 15, 2021. ASIPL held multiple trademark registrations for “ABROS” across Classes 25 (footwear), 28 (sporting articles), and 35 (trading and e-commerce), with the earliest registration dated March 3, 2017, claiming use since March 1, 2017. ASIPL operated the domain www.abrosshoes.com since June 2018 and reported substantial sales (₹7.84 crores in 2020 and ₹216.45 crores in 2021) and advertising expenses (₹35.12 lakhs in 2020 and ₹337.69 lakhs in 2021), underscoring the mark’s market reputation.

The respondents, led by Ashish Bansal (Respondent 1), used the mark “NEBROS” for similar footwear products in the same price range (₹1500–₹2000). Respondent 1 held a trademark registration for “NEBROS” in Class 25 (clothing and footwear) from September 25, 2019, applied on a “proposed to be used” basis. Respondent 1 claimed “NEBROS” was derived from “Nice Footwear” (a business run by Bansal’s uncle) and “BROS” (indicating brothers), asserting it as a coined, distinctive mark. Respondents 2 to 6 were involved in manufacturing or trading goods bearing the “NEBROS” mark. ASIPL alleged that “NEBROS” was deceptively similar to “ABROS,” causing confusion and infringing its trademark rights, while also challenging the validity of the “NEBROS” registration. The respondents countered that “NEBROS” was distinct, with prior use since September 2020, and that “BROS” was a generic suffix, precluding ASIPL’s claim to exclusivity.

Detailed Procedural Background

ASIPL filed a suit (CS (Comm) 702/2022) before the Delhi High Court, seeking a permanent injunction against the respondents’ use of “NEBROS,” alleging trademark infringement and passing off. Alongside, ASIPL moved an application (IA 16555/2022) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), for an interim injunction. On May 2, 2024, a learned Single Judge dismissed the interim application, finding no phonetic, visual, or structural similarity between “ABROS” and “NEBROS,” and noting Respondent 1’s prior use (since September 2020) compared to ASIPL’s earliest invoice from February 2021. The Single Judge also observed that ASIPL failed to oppose the “NEBROS” registration and that the marks’ distinct logos negated passing off.

Aggrieved, ASIPL appealed to a Division Bench of the Delhi High Court vide FAO(OS) (COMM) 140/2024, accompanied by CM APPL. 38801/2024. The appeal was reserved on May 6, 2025, and pronounced on May 13, 2025. During adjudication, the Division Bench identified a fundamental legal conflict with the precedent in Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708), which held that an infringement suit could lie against a registered trademark if its invalidity was pleaded. Disagreeing with this view, the Division Bench referred the matter to a Larger Bench to resolve critical questions regarding the maintainability of infringement suits against registered trademarks and the scope of interlocutory relief in such cases.

Issues Involved in the Case

The case presents several key issues:

1. Whether the respondents’ use of “NEBROS” infringes ASIPL’s registered “ABROS” trademark under Section 29 of the Trade Marks Act, 1999?
2. Whether an infringement suit can be maintained against the proprietor of a registered trademark, particularly when the plaintiff pleads invalidity of the defendant’s registration?

Detailed Submission of Parties

ASIPL’s Submissions (Appellant):

ASIPL, represented by Mr. Ranjan Narula, argued that the Single Judge erred in dismissing the interim injunction application. Key submissions included:

• Priority of Use and Registration: ASIPL claimed priority of use since March 2017, evidenced by Narmada Polymers’ use of “ABROS” on soles, which are cognate to shoes. The mark’s presence on ASIPL’s Certificate of Incorporation and PAN Card (February 14, 2020) constituted “use” under Sections 2(2)(b) and (c) of the Trade Marks Act. The earliest “ABROS” registration (March 3, 2017) predated the “NEBROS” registration (September 25, 2019), granting ASIPL priority.
• Deceptive Similarity: “ABROS” and “NEBROS” were phonetically similar, satisfying the “triple identity test” (identical goods, same trade channels, same customer segment). The Single Judge’s focus on the “BROS” suffix was misplaced, as marks must be compared holistically, per Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13) and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980).
• Invalidity of NEBROS Registration: ASIPL challenged the “NEBROS” registration under Sections 9, 11, 12, 18, and 57, alleging it was deceptively similar, lacked distinctiveness, and was obtained in bad faith. The failure to oppose the registration was due to inadvertent oversight, not acquiescence.
• Passing Off: The distinct logos did not negate passing off, as “NEBROS” was prominently visible, likely to confuse consumers. Actual confusion was unnecessary, per Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1.
• Respondent’s Evidence: The respondents’ invoice (September 1, 2020) lacked the “NEBROS” mark, undermining their claim of prior use, per Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC).
• Legal Precedents: ASIPL relied on FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381) for the definition of “use,” Raj Kumar Prasad for infringement suits against registered trademarks, and K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131) for phonetic similarity.

Respondents’ Submissions:

Represented by Mr. Sanchay Mehrotra, the respondents defended the Single Judge’s findings, arguing:

• Distinctiveness of NEBROS: “NEBROS” was a coined mark derived from “Nice Footwear” and “BROS,” with no intent to imitate “ABROS.” The marks were visually and phonetically distinct, with different logos, negating confusion.
• Priority of Use: Respondents claimed use of “NEBROS” since September 2020, supported by invoices, predating ASIPL’s earliest invoice (February 2021). ASIPL’s reliance on Narmada Polymers’ use was irrelevant, as it pertained to soles, not shoes.
• Registered Trademark Defense: As “NEBROS” was registered, Sections 28(1), 28(3), and 30(2)(e) barred infringement claims. The respondents cited S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683) to emphasize the higher threshold for passing off against a registered mark.
• Generic Suffix: “BROS” was a common suffix, publici juris, and could not be monopolized, per the respondents’ written statement.
• Sales and Reputation: Respondent 1’s sales (₹8.5 crores in 2021–22) demonstrated “NEBROS”’s market presence, supporting its independent goodwill.
• Precedents: The respondents relied on Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95), Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022), and Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246) to argue distinctiveness and priority of use.

ASIPL’s Rejoinder:

ASIPL countered that the respondents’ sales figures reflected total turnover, not “NEBROS” sales. Section 34 (saving for vested rights) was inapplicable, as it required both prior use and registration, which Respondent 1 lacked. The “BROS” suffix argument was rebutted with Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744), emphasizing holistic comparison. Additional precedents included Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672) and Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020).

Detailed Discussion on Judgments Cited by Parties

1. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980): Cited by ASIPL to argue that marks must be compared holistically for deceptive similarity, considering phonetic, visual, and structural aspects. The Supreme Court emphasized that slight differences do not negate infringement if the marks are likely to confuse consumers.
2. Amritdhara Pharmacy v. Satya Deo Gupta (1962 SCC OnLine SC 13): ASIPL relied on this to stress phonetic similarity as a key factor in trademark disputes. The Supreme Court held that “Amritdhara” and “Lakshmandhara” were deceptively similar due to phonetic resemblance, despite minor differences.
3. K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. ((1969) 2 SCC 131): ASIPL cited this to argue that “ABROS” and “NEBROS” were phonetically similar, akin to “Ambal” and “Andal.” The Supreme Court ruled that phonetic similarity in marks for identical goods warrants injunction.
4. Russell Corp. Australia Pty. Ltd. v. Ashok Mahajan (2023 SCC OnLine Del 4796): ASIPL referenced this Delhi High Court decision to support its infringement claim, though the court’s specific findings were not detailed in the judgment.
5. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. ((2018) 2 SCC 1): ASIPL cited this to argue that actual confusion is not required for passing off or infringement. The Supreme Court clarified that likelihood of confusion suffices, particularly for well-known marks.
6. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 28 PTC 566 (SC): ASIPL relied on this to challenge the respondents’ September 2020 invoice, which lacked the “NEBROS” mark. The Supreme Court held that evidence of use must clearly demonstrate the mark’s application.
7. FDC Ltd. v. Docsuggest Healthcare Services Pvt. Ltd. (2017 SCC OnLine Del 6381): ASIPL cited this to argue that “use” under the Trade Marks Act includes non-physical applications, such as on corporate documents, supporting its claim of use since 2017.
8. Raj Kumar Prasad v. Abbott Healthcare Pvt. Ltd. (2014 SCC OnLine Del 7708): ASIPL relied on this Division Bench decision, which held that an infringement suit could lie against a registered trademark if its invalidity is pleaded, with interlocutory relief permissible under Section 124(5).
9. Neon Laboratories Ltd. v. Medical Technologies Ltd. ((2016) 2 SCC 672): ASIPL cited this to argue that Section 34 was inapplicable, as it protects only prior users with continuous use, which Respondent 1 lacked.
10. Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744): ASIPL used this to counter the respondents’ claim that “BROS” was generic, emphasizing that marks must be assessed as a whole.
11. Zydus Wellness Products Ltd. v. Cipla Health Ltd. (MANU/DE/1393/2020): ASIPL cited this Delhi High Court decision to support its passing off claim, though specific findings were not elaborated.
12. S. Syed Mohideen v. P. Sulochana Bai ((2016) 2 SCC 683): Respondents cited this to argue that passing off against a registered mark requires a higher threshold, as registration confers statutory rights.
13. Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. ((2001) 5 SCC 95): Respondents relied on this to argue that distinct marks do not infringe, emphasizing visual and structural differences.
14. Airtec Electrovision Pvt. Ltd. v. Sunil Kumar Saluja (MANU/DE/1095/2022): Respondents cited this to support their claim of distinctiveness between “ABROS” and “NEBROS,” though ASIPL distinguished it as irrelevant (involving “AIRTEC” and “AIRNET”).
15. Hindustan Sanitaryware and Industries Ltd. v. Champion Ceramic (2011 SCC OnLine Del 246): Respondents used this to argue that prior use and registration protect against injunction.
16. In re. Pianotist Co. Application (1906) 23 RPC 774): Cited by the Single Judge to emphasize holistic comparison of marks, considering appearance, sound, goods, and consumer perception.

Detailed Reasoning and Analysis of Judge

The Division Bench conducted a meticulous analysis, focusing on both the merits of the appeal and a critical legal question regarding infringement suits against registered trademarks. The reasoning unfolded as follows:

Merits of the Appeal:

The Bench noted ASIPL’s contention that the Single Judge erred in finding no similarity between “ABROS” and “NEBROS” and in prioritizing Respondent 1’s use. ASIPL argued phonetic similarity, supported by substantial sales and prior registration (March 2017). The respondents countered with their registered status, prior use (September 2020), and distinct logos. The Single Judge’s findings included:

• No phonetic, visual, or structural similarity between the marks.
• Respondent 1’s prior use (September 2020) over ASIPL’s (February 2021).
• No evidence of Narmada Polymers’ use on shoes, rendering sole-related use irrelevant.
• Distinct logos negating passing off, with no proof of actual confusion.
• “BROS” being a generic suffix, per S. Syed Mohideen, and the Trade Marks Registry’s Examination Report not citing “ABROS” as conflicting with “NEBROS.”

The Division Bench did not conclusively rule on these findings, as a fundamental legal issue necessitated referral to a Larger Bench.

Legal Issue on Infringement Against Registered Trademarks:

The Bench identified a conflict with Raj Kumar Prasad, which permitted infringement suits against registered trademarks if invalidity was pleaded, with interlocutory relief under Section 124(5). The Bench disagreed, reasoning:

• Section 29 (Infringement): Sub-sections (1) to (4) define infringement as occurring only by a person “not being a registered proprietor or a person using by way of permitted use.” Thus, a registered trademark cannot infringe, as explicitly reinforced by Section 30(2)(e), which exempts use of a registered mark from infringement claims.
• Section 28 (Rights Conferred by Registration): Section 28(1) grants the registered proprietor exclusive use and relief against infringement, but is “subject to other provisions,” including Section 28(3), which prohibits one registered proprietor from restraining another’s use of an identical or similar mark. Granting an injunction against a registered mark would violate the defendant’s exclusive rights.
• Section 124 (Stay of Proceedings): The Bench rejected Raj Kumar Prasad’s interpretation that Section 124 permits suits alleging infringement by registered marks with a plea of invalidity. Instead, Section 124(1)(b) applies when a plaintiff sues for infringement (assuming the defendant’s mark is unregistered), and the defendant raises a Section 30(2)(e) defense (asserting registration). Only then can the plaintiff plead invalidity, triggering a procedural sequence: the court assesses the plea’s tenability, frames an issue, adjourns the suit for three months, and stays the trial if rectification proceedings are initiated. Section 124(5) allows interlocutory orders only post-stay, and injuncting a registered mark would contravene Sections 28 and 30.
• Critique of Raj Kumar Prasad: The Bench found Raj Kumar Prasad’s reliance on Section 124 misplaced, as it overlooked Section 29’s restriction of infringement to unregistered marks. Permitting suits against registered marks based solely on invalidity pleas undermines the statutory scheme, effectively nullifying the defendant’s rights without rectification.
• Harmonization: The Bench emphasized harmonizing provisions but found Raj Kumar Prasad’s interpretation contradictory to Sections 28, 29, and 30. A suit alleging infringement by a registered mark is “fundamentally unsound” unless the mark’s registration is invalidated.

Referral to Larger Bench:

Given the conflict with Raj Kumar Prasad and its subsequent affirmation in Corza International v. Future Bath Products Pvt. Ltd. (2023 SCC OnLine Del 153), the Bench referred the following questions to a Larger Bench:

1. Can an infringement suit lie against a registered trademark’s proprietor?
2. If so, can the court grant an interlocutory injunction against such use?
3. If permissible, must the court follow the procedural steps under Section 124 (defendant’s Section 30(2)(e) defense, plaintiff’s invalidity plea, tenability assessment, issue framing, adjournment, rectification, and stay)?
4. Is Raj Kumar Prasad, particularly para 18, correct in its legal position?

The Bench deferred the appeal’s final decision pending the Larger Bench’s resolution, as the “NEBROS” registration and ASIPL’s invalidity plea made the legal question pivotal.

Final Decision

The Division Bench did not deliver a final ruling on the appeal, instead referring the case to a Larger Bench to resolve the conflict with Raj Kumar Prasad. The appeal was re-notified for hearing on July 7, 2025, with the Registry directed to place the order before the Chief Justice for constituting the Larger Bench.

Law Settled in This Case

No definitive law was settled, as the appeal’s resolution was deferred. However, the Division Bench articulated a provisional legal position:

• A registered trademark cannot infringe, per Sections 29 and 30(2)(e).
• Infringement suits against registered trademarks are generally unsustainable unless the registration is invalidated through rectification.
• Section 124 does not permit suits alleging infringement by registered marks based solely on invalidity pleas; it applies when a defendant raises a registration defense in an infringement suit.
• The right to relief under Section 28(1) cannot override another registered proprietor’s exclusive use rights under Sections 28(3) and 30(2)(e). The final legal position awaits the Larger Bench’s determination.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.: 13 May 2025: FAO(OS)(COMM) 140 of 2024: 2025:DHC:3606-DB: High Court of Delhi: Hon'ble Justice Mr. C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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

Calvin Klein Trademark Trust Vs. Gurvinder Singh

Case Title: Calvin Klein Trademark Trust Vs. Gurvinder Singh & Others Case Number: CS(COMM) 114/2023 Date of Order: 6th May, 2025 Court Name: High Court of Delhi Judge Name: Hon'ble Mr. Justice Amit Bansal Neutral Citation: 2025:DHC:3675

Facts:

The plaintiff, Calvin Klein Trademark Trust, a global brand owner, has filed a suit against multiple defendants including Gurvinder Singh and others for manufacturing, selling, and distributing counterfeit products bearing Calvin Klein trademarks (CK). The defendants engaged in infringing activities by selling counterfeit garments, stickers, and other products that seriously threaten the goodwill, reputation, and copyright of the plaintiff’s trademarks and artistic works.

Procedural History:

The suit was filed seeking permanent injunctions to restrain defendants from infringing trademarks and copyright, along with damages and costs. The court initially granted an ex-parte interim injunction. Local Commissioners found counterfeit CK products at the premises of defendants. Several defendants, including Gurvinder Singh, did not appear and were proceeded ex-parte. The court also allowed impleadment of additional defendants and issued notices, with mediation proceedings being conducted.

Issue: The core issues are:

• Whether the defendants infringed the plaintiff’s trademarks and copyrights through manufacturing, selling, and distributing counterfeit CK products.
• Whether the defendants’ activities constitute passing off.
• The appropriate relief and damages to be awarded to the plaintiff.

Decision:

The court held that the defendants were engaged in willful infringement of the CK trademarks and copyright, and adopted a successful case of passing off. The defendants’ activities posed a serious threat to the plaintiff's goodwill and business. It was noted that defendants no.1, 2, and 8 failed to appear and contest the suit, leading to ex-parte decrees. Damages of Rs.1,00,000 each were awarded to defendants no.1, 2, and 8. The court also directed the defendants to pay settlement amounts and imposed costs. Finally, the court pronounced the decree and disposed of the pending applications.

Al Hamd Tradenation Vs. Phonographic Performance Limited

Case Title: Al Hamd Tradenation Vs. Phonographic Performance Limited Case Number: C.O.(COMM.IPD-CR) 8/2024 Date of Order: 13th May 2025 Court: High Court of Delhi Judge: Hon'ble Ms. Justice Mini Pushkarna Neutral Citation: 2025:DHC:3695

Facts: Al Hamd Tradenation, the petitioner, organized a corporate event on July 14, 2024, in Delhi. The petitioner was informed that a license from the respondent, Phonographic Performance Limited (PPL), was required to play music, with a fee of Rs. 49,500 for 1-150 persons. The petitioner disputed this high fee, offering to pay only a third of it, citing unfairness compared to market standards.

Procedural Details: The petitioner filed this petition under Section 31 of the Copyright Act, 1957, seeking a compulsory license and correct license fees, asserting that the respondent’s fees were unreasonable and amounted to a refusal to allow public performance of copyrighted works. The respondent responded by filing a suit for copyright infringement. The matter reached the High Court, which examined the licensing structure and the legality of the respondent's demands.

Issue: Whether the license fee demanded by the respondent is fair, reasonable, and in accordance with the law, and whether the petitioner is entitled to a compulsory license under Section 31 of the Copyright Act?

Decision: The court acknowledged that the respondent’s license fee structure was disproportionate and not aligned with market standards, especially as it was the same regardless of audience size, content, or duration. The court emphasized the obligation to charge fair and reasonable fees and noted that the respondent's failure to register as a copyright society or be a member of a registered society compromised its authority to issue licenses. The court directed the parties to file affidavits to determine the appropriate license terms and rates, considering statutory provisions and licensing standards.

Abros Sports International Pvt. Ltd. Vs . Ashish Bansal

Case Title: Abros Sports International Pvt. Ltd. Vs . Ashish Bansal & Ors.

Date of Order: 13 May 2025

Case No.: FAO(OS)(COMM) 140 of 2024

Neutral Citation: 2025:DHC:3606-DB

Court: High Court of Delhi

Bench: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

Facts:

Abros Sports International Pvt. Ltd. (ASIPL), owner of the registered trademark “ABROS”, alleged that the respondents were using a deceptively similar mark “NEBROS” for footwear, which was likely to confuse consumers and dilute its brand.

Procedural Detail:

ASIPL filed a trademark infringement suit and sought interim injunction before the Single Judge, which was rejected on 2 May 2024. ASIPL then filed the present appeal before the Division Bench. 

Issue:

Whether an action for trademark infringement can be maintained against the registered proprietor of a similar trademark? 

Decision:

The Division Bench held that no infringement action can lie against a registered proprietor of a trademark, as per Sections 28, 29, and 30 of the Trade Marks Act, 1999. Since “NEBROS” was also a registered mark, its use could not constitute infringement. The Court noted divergence from earlier precedent (Raj Kumar Prasad v. Abbott Healthcare) and suggested the matter may require reference to a larger bench for authoritative resolution.

Sanjay Vs Karan Johar

Background

This case concerns the unauthorized use of the name and personality attributes of film director Karan Johar in a film titled Shaadi Ke Director Karan Aur Johar. The film was co-produced by appellant Sanjay and was scheduled for theatrical release on 14 June 2024. On discovering the film’s trailer, Karan Johar filed a commercial intellectual property suit alleging infringement of his personality and publicity rights.

Relief Sought by Plaintiff

Karan Johar sought an injunction restraining the defendants from using his name or any related attributes in the film’s title, promotional materials, or public communications. He argued that the film was attempting to commercially exploit his brand, goodwill, and reputation without consent.

Arguments by Appellant

Sanjay argued that the film was fictional and that the characters “Karan” and “Johar” were common names not uniquely associated with Karan Johar. He contended there was no reference to Karan Johar personally, and that CBFC certification and pre-existing title registration legitimized the film. He further emphasized the financial loss due to last-minute injunctive relief and stated that the disclaimer clarified there was no connection with Karan Johar.

Court’s Findings

The Bombay High Court held that Karan Johar, as a widely recognized personality and brand, enjoys protectable personality and publicity rights. The title Shaadi Ke Director Karan Aur Johar clearly evoked a reference to the respondent, who is famously associated with films themed around grand weddings. The Court observed that even if the characters were fictional, the juxtaposition of name and profession created a direct connection to Karan Johar in public perception. The use was not incidental but a calculated attempt to ride on his fame. CBFC certification did not preclude legal scrutiny under personality rights.

Decision

The Court upheld the Single Judge’s order granting interim injunction. It restrained the defendants from using the name “Karan Johar” or any related identifiers in the title or promotions of the film. The appeal was dismissed, affirming that celebrities have enforceable rights against unauthorized commercial exploitation of their identity.

Sanjay Vs Karan Johar & Ors.:7 May 2025:Commercial Appeal (L) No. 9786 of 2025:2025:BHC-OS:7666-DB:High Court of Bombay:Hon'ble Chief Justice Alok Aradhe and M.S. Karnik

Sterling Agro Industries Ltd. Vs. Union of India

Accrual of Miniscule cause of action and Jurisdiction

Introduction:The case of Sterling Agro Industries Ltd. v. Union of India & Ors. [(2011) 10 GSTR 20 : (2011) 43 VST 375 : 2011 SCC OnLine Del 3162], decided by a five-judge Larger Bench of the Delhi High Court on August 1, 2011, is a pivotal decision clarifying the scope of territorial jurisdiction under Article 226 of the Constitution of India. The case arose from a reference questioning the correctness of the Full Bench decision in New India Assurance Co. Ltd. v. Union of India [AIR 2010 Delhi 43], which had held that the situs of an appellate or revisional authority alone conferred jurisdiction on the Delhi High Court, treating it as the sole cause of action. The Larger Bench, comprising Chief Justice Dipak Misra and Justices Vikramajit Sen, A.K. Sikri, Sanjiv Khanna, and Manmohan, overruled this view, emphasizing the doctrine of forum conveniens and the nuanced understanding of cause of action. 

Detailed Factual Background: The factual matrix pertains to multiple writ petitions, with the primary focus on W.P. (C) No. 6570 of 2010 filed by Sterling Agro Industries Ltd., a company based in the Industrial Area, Q-5-6, Ghirongi, District Bhind, Malanpur, Madhya Pradesh. The petitioner challenged Order No. 214-15/10-Cus., dated July 9, 2010, issued by the Revisionary Authority, Government of India, Ministry of Finance, Department of Revenue, located in Delhi. This order dismissed the petitioner’s revision application, upholding the Commissioner (Appeals-I), Customs and Central Excise, Indore’s decision, which affirmed the Assistant Commissioner of Customs, ICD, Malanpur’s order dated May 30, 2009. The Assistant Commissioner had denied the petitioner drawback facilities under the Central Excise Drawback Rules, 1995, citing violations of Rule 19(2) of the Central Excise Rules, 2002, and conditions in Notifications No. 68/2007-Cus. (N.T.) and No. 103/2008-Cus. (N.T.) due to the procurement of duty-free inputs.

The petitioner’s industry and the initial adjudicating authority (Assistant Commissioner) were located in Madhya Pradesh, with the appellate authority in Indore. The revisional authority, the Joint Secretary to the Government of India, was situated in Delhi. The petitioner invoked the Delhi High Court’s jurisdiction under Article 226, contending that the revisional authority’s location in Delhi constituted a sufficient cause of action, relying on New India Assurance Co. Ltd. v. Union of India. The connected petitions (W.P. (C) Nos. 8399/2009, 2447/2010, 2448/2010, and 6953/2010) raised similar jurisdictional issues, prompting a consolidated hearing to resolve the conflict over the Delhi High Court’s territorial jurisdiction.

Detailed Procedural Background: The procedural history begins with a Division Bench’s doubt regarding the correctness of New India Assurance Co. Ltd. v. Union of India [AIR 2010 Delhi 43], which held that the Delhi High Court had jurisdiction solely because the appellate authority was located in Delhi, treating its order as the sole cause of action. The Division Bench referred the matter to a Full Bench, which deemed it necessary for a Larger Bench to reconsider the issue, leading to the constitution of the five-judge bench. The Larger Bench heard the petitions analogously, focusing on W.P. (C) No. 6570 of 2010 for convenience.

In W.P. (C) No. 6570/2010, the petitioner challenged the revisional order dated July 9, 2010, after the Assistant Commissioner’s order (May 30, 2009) and the Commissioner (Appeals)’s affirmation. The petitioner filed the writ petition in the Delhi High Court, asserting jurisdiction based on the revisional authority’s Delhi location. The court noted the absence of respondents’ counsel in W.P. (C) No. 6953/2010 but proceeded with arguments from counsels for other petitions and amicus curiae Atul Nanda. The reference centered on whether the Delhi High Court could entertain writ petitions solely because the appellate or revisional authority was located in Delhi, necessitating a re-examination of New India Assurance’s ratio in light of Article 226’s legislative history and judicial precedents.

Issues Involved in the Case: The case raised the following issues: Whether the Delhi High Court has territorial jurisdiction under Article 226 to entertain a writ petition solely because the appellate or revisional authority passing the impugned order is located in Delhi? Whether the situs of the appellate or revisional authority constitutes the sole cause of action, compelling the Delhi High Court to entertain the petition, or whether the doctrine of forum conveniens applies. Whether the concept of cause of action under Article 226(2) includes only material, essential, or integral facts, and how it interacts with the discretionary nature of writ jurisdiction. Whether the merger of the original order into the appellate order makes the appellate authority’s location the forum conveniens?Whether the Delhi High Court can refuse to exercise jurisdiction beyond cases of mala fide invocation, considering factors like forum conveniens and the nature of the lis?

Petitioner's submission: The petitioners argued that the Delhi High Court had jurisdiction because the revisional authority’s order, passed in Delhi, constituted the cause of action. They relied on New India Assurance Co. Ltd. v. Union of India [AIR 2010 Delhi 43], asserting that the Joint Secretary’s location in Delhi was sufficient to invoke jurisdiction under Article 226(2). The petitioners contended that the revisional order was the sole cause of action, as it superseded earlier orders, and the Delhi High Court, having superintendence over tribunals in Delhi under Article 227, was duty-bound to entertain the petition. They cited Sri Nasiruddin v. State Transport Appellate Tribunal [(1975) 2 SCC 671], arguing that even a part of the cause of action (the revisional order) conferred jurisdiction, and as dominus litis, they could choose their forum conveniens. The petitioners further argued that refusing jurisdiction would contravene Article 226’s expanded scope post the Fifteenth Amendment, which introduced the cause of action concept.

Respondents' Submission: The respondents challenged the Delhi High Court’s jurisdiction, arguing that the cause of action primarily arose in Madhya Pradesh, where the petitioner’s industry and initial orders were located. They contended that the revisional authority’s Delhi location was an insignificant part of the cause of action, and the doctrine of forum conveniens favored the Madhya Pradesh High Court, where material facts occurred. The respondents cited Kusum Ingots and Alloys Ltd. v. Union of India [(2004) 6 SCC 254] and Alchemist Ltd. v. State Bank of Sikkim [(2007) 11 SCC 335], emphasizing that only material, essential, or integral facts constitute the cause of action under Article 226(2). They argued that entertaining the petition in Delhi risked conflicting judgments and jurisdictional overreach, advocating for a balanced approach considering convenience, expenses, and the lis’s nexus with Madhya Pradesh. The respondents also highlighted the discretionary nature of Article 226, urging the court to refuse jurisdiction absent a substantial cause of action in Delhi.

Amicus Curiae's submission: The amicus curiae, assisted the court by analyzing the legislative history of Article 226 and judicial precedents. He argued for a nuanced interpretation of cause of action, aligning with Oil and Natural Gas Commission v. Utpal Kumar Basu [(1994) 4 SCC 711], which defined cause of action as the bundle of facts necessary for the petitioner to prove. He emphasized that while the revisional order’s Delhi location constituted a part of the cause of action, the court’s discretion under Article 226 allowed refusal based on forum conveniens, as seen in Ambica Industries v. CCE [(2007) 213 ELT 323]. He cautioned against an absolute rule tying jurisdiction to the appellate authority’s situs, advocating for case-specific scrutiny of the lis’s nexus and practical considerations.

Detailed Discussion on Judgments and Citations: The Larger Bench extensively analyzed precedents to resolve the jurisdictional question. Below is a detailed discussion of each judgment cited, its complete citation, and its context in the case:

Election Commission of India v. Saka Venkata Rao, AIR 1953 SC 210: Cited to trace the pre-amendment strict construction of Article 226, this Supreme Court decision held that jurisdiction depended on the presence of the person or authority within the High Court’s territorial limits, not the cause of action. The court used it to highlight the limitations before the Fifteenth Amendment introduced the cause of action concept.

Lt. Col. Khajoor Singh v. Union of India, AIR 1961 SC 532: This Supreme Court decision, cited for historical context, reiterated that Article 226’s original text required the authority’s physical presence within the High Court’s territory, rejecting cause of action as a jurisdictional basis. The court noted its obsolescence post the Fifteenth Amendment, which expanded jurisdiction to include partial cause of action.

K. S. Rashid and Son v. Income-tax Investigation Commission, AIR 1954 SC 207 : (1954) 1 SCC 69 : [1954] 25 ITR 167:Referenced alongside Election Commission, this Supreme Court decision supported the pre-amendment view that jurisdiction hinged on the authority’s location, not cause of action. The court used it to contrast with the post-amendment framework under Article 226(2).

Collector of Customs v. East India Commercial Co. Ltd., AIR 1963 SC 1124: Cited by the Full Bench in New India Assurance, this Supreme Court decision was used to support jurisdiction based on the appellate authority’s location. The Larger Bench clarified that it did not establish an absolute rule, as it involved specific facts where the cause of action partly arose in the High Court’s territory.

Sri Nasiruddin v. State Transport Appellate Tribunal, (1975) 2 SCC 671: This Supreme Court decision, heavily relied on by the petitioners, held that an appellate or revisional order constitutes a part of the cause of action, conferring jurisdiction on the High Court where it is passed. The court affirmed its relevance but clarified that it does not mandate jurisdiction solely based on the authority’s situs, emphasizing forum conveniens.

Kusum Ingots and Alloys Ltd. v. Union of India, (2004) 6 SCC 254 : (2004) 120 Comp Cas 672: This Supreme Court decision was central to the respondents’ case, holding that only material, essential, or integral facts constitute the cause of action under Article 226(2). The court applied it to reject the notion that the revisional authority’s location alone was sufficient, stressing forum conveniens and discretionary refusal.

Navinchandra N. Majithia v. State of Maharashtra, AIR 2000 SC 2966:Cited by the Full Bench and petitioners, this Supreme Court decision affirmed that Article 226(2) allows jurisdiction where any part of the cause of action arises. The Larger Bench agreed but emphasized that such jurisdiction is discretionary and subject to forum conveniens, not automatic.

Kishore Rungta v. Punjab National Bank, (2003) 151 ELT 502 (Bom):This Bombay High Court decision, relied on by the Full Bench, supported jurisdiction based on a partial cause of action (appellate order in Mumbai). The Larger Bench clarified that it did not mandate jurisdiction solely on the authority’s situs, requiring scrutiny of the lis’s nexus.

Indian Institute of Technology v. Dr. P. C. Jain, (1991) 45 DLT 42:This Delhi High Court decision, cited by the Full Bench, was used to support jurisdiction based on the appellate authority’s location. The Larger Bench found it context-specific and not determinative of an absolute rule, given the doctrine of forum conveniens.

Ambica Industries v. CCE, (2007) 213 ELT 323 : [2009] 20 VST 1 (SC): This Supreme Court decision, cited by the respondents, held that even a small fraction of the cause of action confers jurisdiction, but the doctrine of forum conveniens must be considered. The court applied it to advocate a balanced approach, allowing discretionary refusal.

Bombay Snuff P. Ltd. v. Union of India, (2006) 194 ELT 264 (Del): Cited by the single judge in New India Assurance, this Delhi High Court decision dismissed a writ petition for lack of substantial cause of action in Delhi. The Larger Bench used it to support the need for material facts to establish jurisdiction.

Rajkumar Shivhare v. Assistant Director of Enforcement, (2008) 154 DLT 28:This Delhi High Court decision, relied on by the single judge, emphasized that a significant part of the cause of action must arise within the court’s jurisdiction. The Larger Bench agreed, reinforcing the material facts requirement.

West Coast Ingots P. Ltd. v. CCE, (2007) 209 ELT 343 (Del):Cited by the single judge, this Delhi High Court decision supported dismissing petitions lacking substantial cause of action in Delhi. The Larger Bench used it to highlight the importance of integral facts over peripheral ones.

Alchemist Ltd. v. State Bank of Sikkim, (2007) 11 SCC 335 : (2007) 136 Comp Cas 665:This Supreme Court decision, pivotal to the respondents’ argument, clarified that only material, essential, or integral facts constitute the cause of action. The court adopted its ratio to reject the Full Bench’s view that the appellate order alone was the sole cause of action.

A. B. C. Laminart P. Ltd. v. A. P. Agencies, AIR 1989 SC 1239: Cited in Alchemist, this Supreme Court decision defined cause of action as the bundle of facts necessary for relief. The court used it to reinforce that peripheral facts, like the authority’s location, do not suffice for jurisdiction.

Union of India v. Oswal Woollen Mills Ltd., (1984) 2 SCC 646 : (1985) 58 Comp Cas 139:Referenced in Alchemist, this Supreme Court decision emphasized material facts for jurisdiction. The Larger Bench applied it to scrutinize the cause of action’s nexus with Delhi.

State of Rajasthan v. Swaika Properties, AIR 1985 SC 1289:Cited in Alchemist and Kusum Ingots, this Supreme Court decision clarified that jurisdiction requires a substantial cause of action. The court used it to advocate for forum conveniens over automatic jurisdiction.

Oil and Natural Gas Commission v. Utpal Kumar Basu, (1994) 4 SCC 711:This Supreme Court decision, relied on by the amicus curiae, defined cause of action as the bundle of facts the petitioner must prove, assessed on pleadings alone. The court adopted its test to evaluate jurisdiction based on material facts.

CBI, Anti-Corruption Branch v. Narayan Diwakar, (1999) 4 SCC 656: Cited in Alchemist, this Supreme Court decision supported the material facts requirement for jurisdiction. The Larger Bench used it to reject the Full Bench’s sole cause of action theory.

Union of India v. Adani Exports Ltd., (2002) 1 SCC 567:This Supreme Court decision, cited by the respondents, held that facts lacking nexus with the lis do not confer jurisdiction. The court applied it to emphasize that the revisional authority’s location alone was insufficient.

National Textile Corporation Ltd. v. Haribox Swalram, (2004) 9 SCC 786:Referenced in Alchemist, this Supreme Court decision clarified that peripheral facts (e.g., business location) do not constitute the cause of action. The court used it to reject jurisdiction based solely on the authority’s situs.

Chand Kour v. Partab Singh, (1889) 16 ILR Cal 98:Cited in ONGC and Kusum Ingots, this Privy Council decision defined cause of action as the grounds for relief, independent of defenses. The Larger Bench adopted it to assess jurisdiction based on pleaded facts.

Rajendran Chingaravelu v. R. K. Mishra, (2010) 1 SCC 457:This Supreme Court decision held that a part of the cause of action (e.g., initiating actions in Hyderabad) conferred jurisdiction. The court distinguished it, noting that Sterling’s cause of action was primarily in Madhya Pradesh, with only a peripheral Delhi nexus.

Musaraf Hossain Khan v. Bhagheeratha Engg. Ltd., (2006) 3 SCC 658 : (2006) 130 Comp Cas 390:This Supreme Court decision emphasized that jurisdiction requires a nexus with the lis and endorsed forum conveniens. The Larger Bench relied on it to overrule the Full Bench’s absolute rule.

Damomal Kausomal Raisinghani v. Union of India, AIR 1967 Bom 355:Cited in Kishore Rungta, this Bombay High Court decision supported jurisdiction based on partial cause of action. The Larger Bench clarified its context-specific application.

Sita Ram Singhania v. Bank of Tokyo-Mitsubishi Ltd., AIR 1999 SC 2180:Referenced in Kishore Rungta, this Supreme Court decision supported jurisdiction where part of the cause of action arose. The court noted its alignment with Article 226(2) but stressed discretionary refusal.

Bhagat Singh Bugga v. Dewan Jagbir Sawhany, AIR 1941 Cal 670:Cited in Kusum Ingots, this Calcutta High Court decision supported forum conveniens. The Larger Bench used it to advocate discretionary refusal based on convenience.

Madanlal Jalan v. Madanlal, AIR 1949 Cal 495 : (1945) 49 CWN 357:Referenced in Kusum Ingots, this Calcutta High Court decision endorsed forum conveniens. The court applied it to balance jurisdictional flexibility with practical considerations.

Bharat Coking Coal Ltd. v. Jharia Talkies and Cold Storage P. Ltd., [1997] CWN 122:Cited in Kusum Ingots, this Calcutta High Court decision supported discretionary refusal based on forum conveniens. The Larger Bench used it to emphasize case-specific scrutiny.

S. S. Jain and Co. v. Union of India, [1994] CHN 445:Referenced in Kusum Ingots, this Calcutta High Court decision endorsed forum conveniens. The court applied it to reject automatic jurisdiction based on the authority’s location.

New Horizons Ltd. v. Union of India, AIR 1994 Delhi 126 : (1997) 89 Comp Cas 785:Cited in Kusum Ingots, this Delhi High Court decision supported discretionary refusal based on forum conveniens. The Larger Bench relied on it to overrule the Full Bench’s rigid rule.

Mayar (H. K.) Ltd. v. Owners and Parties, Vessel M. V. Fortune Express, (2006) 3 SCC 100:Referenced in Musaraf Hossain, this Supreme Court decision emphasized forum conveniens in jurisdictional disputes. The court used it to advocate a balanced approach.

Detailed Reasoning and Analysis of Judge:Court meticulously analyzed the legislative history of Article 226, from its original strict territorial requirement to the expanded scope under the Fifteenth Amendment, which introduced the cause of action concept via clause (1A), later renumbered as clause (2). The court traced the shift from Election Commission and Khajoor Singh, which limited jurisdiction to the authority’s physical presence, to the post-amendment framework allowing jurisdiction where the cause of action, wholly or in part, arises.

The court scrutinized New India Assurance’s ratio, which held that the appellate authority’s Delhi location constituted the sole cause of action and that declining jurisdiction was a failure of duty. The Larger Bench found this view flawed, as it ignored the doctrine of forum conveniens and the nuanced understanding of cause of action as comprising material, essential, or integral facts (Alchemist Ltd., Kusum Ingots). The court adopted ONGC’s definition of cause of action as the bundle of facts necessary for relief, assessed on pleadings, and emphasized that peripheral facts, like the authority’s location, do not automatically confer jurisdiction (Adani Exports).

The court acknowledged that the revisional order’s Delhi location constituted a part of the cause of action (Sri Nasiruddin), but held that this alone did not compel the court to entertain the petition. The discretionary nature of Article 226, coupled with forum conveniens, allowed refusal based on convenience, expenses, and the lis’s nexus (Ambica Industries). The court rejected New India Assurance’s absolute merger doctrine, which treated the appellate order’s location as the forum conveniens, noting that jurisdiction depends on the case’s factual matrix (Musaraf Hossain).

The court clarified that while a minuscule part of the cause of action suffices for jurisdiction (Kusum Ingots), the court may refuse to exercise it if a more appropriate forum exists, considering factors like the location of material facts, parties, and evidence (Rajendran Chingaravelu). The restriction of refusal to mala fide cases was deemed too narrow, as Article 226’s discretionary power encompasses broader considerations (New Horizons). The court concluded that New India Assurance’s rigid rule risked jurisdictional overreach and potential conflicts, advocating a balanced approach rooted in judicial discretion and practical convenience.

Final Decision: On August 1, 2011, the Delhi High Court’s Larger Bench partially overruled New India Assurance Co. Ltd. v. Union of India [AIR 2010 Delhi 43], holding that the situs of the appellate or revisional authority does not automatically confer jurisdiction or constitute the sole cause of action. The court clarified that while a part of the cause of action (e.g., the revisional order) makes a writ petition maintainable, the High Court may refuse to exercise jurisdiction based on forum conveniens, considering the lis’s nexus, convenience, and material facts. The court directed the matters to be listed before the appropriate Division Bench for further consideration, answering the reference by modifying New India Assurance’s findings.

Law Settled in the Case: The case established the following legal principles: Territorial jurisdiction under Article 226(2) exists where the cause of action, wholly or in part, arises, but the situs of the appellate or revisional authority alone does not constitute the sole cause of action. The cause of action comprises material, essential, or integral facts, not peripheral ones like the authority’s location, as per Alchemist Ltd. and Kusum Ingots.The doctrine of forum conveniens applies to writ proceedings, allowing the High Court to refuse jurisdiction if a more appropriate forum exists, considering convenience, expenses, and the lis’s nexus.The merger of the original order into the appellate order does not automatically make the appellate authority’s location the forum conveniens; jurisdiction depends on case-specific facts.The discretionary power under Article 226 is not limited to refusing jurisdiction only in mala fide cases but extends to broader considerations like forum conveniens and the nature of the cause of action.High Courts must scrutinize the factual matrix to determine jurisdiction, balancing Article 226(2)’s flexibility with judicial discretion to avoid jurisdictional overreach.Any contrary decisions stand overruled, reinforcing a nuanced approach to territorial jurisdiction in writ proceedings.

Sterling Agro Industries Ltd. Vs. Union of India: August 1, 2011:W.P. (C) Nos. 8399/2009:2011 SCC OnLine Del 3162:High Court of Delhi:Hon'ble Judges Shri Dipak Misra, C.J., Vikramajit Sen, A.K. Sikri, Sanjiv Khanna, Manmohan, JJ.

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

Mallcom (India) Limited Vs Rakesh Kumar.

Court can pass summary Judgement under Order 13 A of commercial court act even suo moto

Introduction: The case of Mallcom (India) Limited & Anr. v. Rakesh Kumar & Ors. [CS(COMM) 480/2016], decided by the Delhi High Court on March 19, 2019, before Justice Rajiv Sahai Endlaw, is a landmark decision in Indian intellectual property law, demonstrating the efficacy of summary judgment in commercial disputes involving trademark infringement, passing off, and copyright infringement. The plaintiffs, Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., sought to restrain the defendants from using a deceptively similar trademark, "TICER," for safety shoes, which infringed their registered "TIGER" mark. The court’s grant of summary judgment without a formal application under Order XIIIA of the Code of Civil Procedure (CPC) underscores the judiciary’s commitment to expeditious resolution of commercial suits under the Commercial Courts Act, 2015. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the legal principles established, offering insights into trademark protection and procedural innovations in commercial litigation.

Detailed Factual Background: Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., market leaders in safety equipment, particularly industrial safety shoes, adopted the stylized trademark "TIGER" (Label) around 2004-05, using it intermittently and adopting it as their primary brand in 2010. The mark, registered on September 30, 2010, in Class 9 (No. 2030791) for safety shoes and equipment, features a distinctive stylization of the word "TIGER," with unique letter designs (e.g., "T" as a cursive-reverse J, "G" as a C with a bar). The plaintiffs secured copyright registration for the mark’s artistic work on October 28, 2012, and design registration for the shoe sole on May 23, 2007. Their safety shoes, sold under the "TIGER" mark, achieved BIS and ISO certifications and an India Design Mark Award. Sales grew from Rs. 11.6 crores in 2009-10 to Rs. 31 crores in 2013-14, with significant advertising expenditure. The plaintiffs’ products were exported globally, packaged in a distinctive get-up with unique color combinations, and they held pending applications for related marks in Classes 8, 9, and 25.

The defendants, Rakesh Kumar, Manoj Kumar, M.K. Sales Corporation, Adeeba International, and Alina Exim, were accused of manufacturing and selling inferior safety shoes under the mark "TICER," adopted in 2015. Defendant no. 4 (Adeeba International) claimed proprietorship of "TICER," applying for its registration on June 13, 2015, in Class 9. The defendants’ products mimicked the plaintiffs’ packaging, sole design, and mark placement, allegedly posing as authorized dealers and violating Legal Metrology (Packaging Commodities) Rules, 2011, by omitting manufacturing details. The plaintiffs provided comparative images showing near-identical trade dress and marks, alleging counterfeiting and consumer deception.

Detailed Procedural Background:The plaintiffs filed the suit [CS(COMM) 480/2016] on April 29, 2016, seeking permanent injunctions against trademark infringement, passing off, copyright infringement, and design infringement, along with delivery of infringing goods, rendition of accounts, and damages. They filed IA No. 5571/2016 for interim relief under Order XXXIX Rules 1 and 2 CPC. On May 5, 2016, the court issued summons, granted an ex parte ad-interim injunction restraining the defendants from using the "TICER" mark, and appointed commissions to seize infringing goods. Defendants no. 4 and 5 filed IA No. 12236/2017 under Order XXXIX Rule 4 CPC to vacate the interim order and IA No. 11941/2017 to amend their written statement, which was dismissed on October 5, 2018. Separate written statements were filed by defendants no. 1-3 and no. 4-5, with the plaintiffs filing replications. Defendants no. 4 and 5 also filed IA No. 12890/2018 under Order XI Rule 10 CPC and IA No. 12370/2018 under Section 151 CPC, though their specifics were not detailed.

On January 17, 2019, the plaintiffs sought summary judgment without a formal application, relying on Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, effective November 1, 2018. The court queried the procedural validity, noting Order XIIIA CPC’s requirement for an application, and adjourned the hearing to February 14, 2019. The interim injunction was made absolute on January 17, 2019. Defendants claimed a pending Special Leave Petition (SLP) against the amendment dismissal, but its outcome remained unreported. After hearing arguments on summary judgment and merits, the court reserved orders on February 14, 2019, delivering the judgment on March 19, 2019.

Issues Involved in the Case:The case raised the following issues:Whether the court could grant summary judgment without a formal application under Order XIIIA CPC, given Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018?Whether the defendants’ use of the "TICER" mark infringed the plaintiffs’ registered "TIGER" trademark and copyrighted artistic work.

Plaintiff's submission:The plaintiffs argued that their "TIGER" mark, registered in 2010, was distinctive and widely recognized, supported by sales (Rs. 11.6-31 crores), certifications, and awards. They contended that the defendants’ "TICER" mark, adopted in 2015, was deceptively similar, differing only by substituting “G” with “C,” and mimicked the stylized font, packaging, and sole design, causing confusion. The plaintiffs provided invoices from 2006, web pages, catalogues, and certifications to prove use since 2004-05. They argued that their prior registration and use entitled them to injunctions for infringement (Section 29, Trade Marks Act, 1999), passing off, and copyright infringement, citing Sun Pharmaceuticals v. Cipla [2009 (39) PTC 347 (DB)] for non-use as no defense. On summary judgment, they relied on Chapter XA Rule 1, harmonized with Order XIIIA, per Infrastructure Leasing v. Commissioner of Value Added Tax [MANU/DE/0902/2010], asserting no triable issues existed due to the defendants’ weak defense. They sought delivery of seized goods but did not press for design infringement or damages, focusing on injunctions and costs.

Defendant's submission: The defendants argued that the court lacked authority to grant summary judgment without an Order XIIIA application, citing Section 13(2) of the Commercial Courts Act for statutory precedence. They claimed “TICER” was distinct, honestly adopted by defendant no. 4 in 2015, with a pending registration application and copyright. Defendants no. 1-3, as employees or distributors of defendant no. 3 (proprietorship of Ms. Niti Devi), relied on defendants no. 4-5’s written statement. They denied the plaintiffs’ use of “TIGER” since 2004, alleging non-use and challenging invoices as unverified, citing no exclusive sales for “TIGER.” The defendants disputed the comparison images as misleading and denied posing as plaintiffs’ dealers. They argued that the plaintiffs’ assignment of a related mark (No. 1488116) to Delta Plus undermined their rights, though this was barred post-amendment dismissal. The defendants offered no substantive defense on similarity, focusing on procedural objections and general denials.

Detailed Discussion on Judgments and Citations: The court relied on several precedents to resolve procedural and substantive issues. Below is a detailed discussion of each judgment, its citation, and context:

Infrastructure Leasing & Financial Services Ltd. v. Commissioner of Value Added Tax, MANU/DE/0902/2010: Cited by the plaintiffs, this Delhi High Court decision supported harmonious construction of conflicting provisions. The court used it to reconcile Chapter XA Rule 1 with Order XIIIA, holding that the former supplemented the latter, allowing summary judgment without an application at the case management stage.

K.R. Impex v. Punj Lloyd Ltd., 2019 SCC OnLine Del 6667:Cited by the court, this Delhi High Court decision (post-dating the hearing) confirmed that Chapter XA Rule 1 permitted summary judgment without an Order XIIIA application, reinforcing the court’s procedural ruling.

Ashoka Estate Pvt. Ltd. v. Dewan Chand Builders Pvt. Ltd., 2009 (113) DRJ 193: Cited by the court, this Delhi High Court decision discussed Order XV CPC’s applicability for disposing suits without issues, supporting the court’s view that commercial suits could be resolved summarily under existing CPC provisions.

Kawal Sachdeva v. Madhu Bala Rana, 2013 SCC OnLine Del 1479: Cited by the court, this Delhi High Court decision reiterated Order XV’s scope, reinforcing the court’s authority to dispose of suits summarily when no material issues arise.

Bhupinder Jit Singh v. Sonu Kumar, 2017 SCC OnLine Del 11061: Cited by the court, this Delhi High Court decision supported summary disposal under Order XV, aligning with the court’s approach to expedite commercial suits.

Vireet Investments Pvt. Ltd. v. Vikramjit Singh Puri, 2017 SCC OnLine Del 11183: Cited by the court, this Delhi High Court decision further endorsed Order XV’s applicability, bolstering the court’s procedural framework for summary judgment.

Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, (2018) 249 DLT 220: Cited by the court, this Delhi High Court decision reinforced summary disposal principles, supporting the court’s reliance on Order XV and Chapter XA.

Bhavna Khanna v. Subir Tara Singh, 2019 SCC OnLine Del 6978: Cited by the court, this Delhi High Court decision aligned with the court’s view on summary disposal, emphasizing expeditious resolution in commercial suits.

Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., 2009 (39) PTC 347 (DB): Cited by the court, this Delhi High Court Division Bench decision held that non-use is not a defense to infringement unless the mark is removed via a Registrar application. The court applied it to reject the defendants’ non-use plea, as no removal application was filed.

H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd., (2018) 251 DLT 651: Cited by the court, this Delhi High Court decision reaffirmed that non-use does not bar infringement actions and supported the plaintiffs’ right to injunctions despite the defendants’ honest adoption claim, relevant to both infringement and passing off.

N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714:Cited by the court, this Supreme Court decision held that advertising constitutes use of a mark. The court used it to validate the plaintiffs’ evidence of use through web pages, catalogues, and advertisements.

Revlon Inc. v. Sarita Manufacturing Co., AIR 1998 Del 38: Cited by the court, this Delhi High Court decision reinforced that advertisements qualify as mark use, supporting the plaintiffs’ claim of continuous use.

N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300: Cited by the court, this Delhi High Court decision (predecessor to the Supreme Court ruling) similarly recognized advertising as use, bolstering the plaintiffs’ evidence.

Indian Shaving Products Ltd. v. Gift Pack, 1998 (18) PTC 698 (Del): Cited by the court, this Delhi High Court decision supported the principle that advertisements constitute use, affirming the plaintiffs’ documented use.

J.N. Nichols (Vimto) Ltd. v. Rose & Thistle, AIR 1994 Cal 43 (DB): Cited by the court, this Calcutta High Court Division Bench decision aligned with the advertising-as-use principle, reinforcing the plaintiffs’ claim.

Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, (2002) 98 DLT 499: Cited by the court, this Delhi High Court decision held that competitors in the same trade are presumed aware of prior marks, negating honest adoption. The court applied it to find the defendants’ adoption mala fide.

Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., (2004) 113 DLT 363: Cited by the court, this Delhi High Court decision (affirmed in Reddy Pharmaceuticals v. Dr. Reddy’s Laboratories, 2007 (99) DRJ 331 (DB), SLP dismissed) supported the presumption of awareness, reinforcing the defendants’ bad faith.

Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court, this Supreme Court decision held that courts determine similarity in infringement and passing off cases, not witnesses, guiding the court’s visual comparison of “TIGER” and “TICER.”

Larsen & Toubro Ltd. v. Lachmi Narain Traders, (2008) 149 DLT 46 (DB): Cited by the court, this Delhi High Court Division Bench decision followed Mahendra & Mahendra, supporting the court’s authority to assess similarity without trial.

Staar Surgical Company v. Polymer Technologies International, 2016 SCC OnLine Del 4813: Cited by the court, this Delhi High Court decision reinforced judicial assessment of similarity, aligning with the court’s approach to deceptive similarity.

Kanungo Media (P) Ltd. v. RGV Film Factory, 2017 SCC OnLine Del 8768: Cited by the court, this Delhi High Court decision supported the court’s role in determining similarity, relevant to the “TIGER” vs. “TICER” comparison.

Jaideep Mohan v. Hub International Industries, (2018) 249 DLT 572: Cited by the court, this Delhi High Court decision endorsed judicial determination of similarity, supporting the court’s findings on deceptive similarity.

The Financial Times Ltd. v. The Times Publishing House Ltd., (2016) 234 DLT 305: Cited by the court, this Delhi High Court decision reinforced the court’s authority to assess similarity, applied to the visual and stylistic identity of the marks.

Biofarma v. Bal Pharma Ltd., CS(COMM) No. 1668/2016 (Decided on November 22, 2018):Cited by the court, this Delhi High Court decision supported judicial assessment of similarity, guiding the court’s conclusion on consumer confusion.

Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd., 2014 SCC OnLine Del 3412: Cited by the court, this Delhi High Court decision noted the human tendency to identify words by first and last letters, applied to find “TICER” deceptively similar to “TIGER.”

Pratibha M. Singh v. Singh & Associates, 2014 SCC OnLine Del 1982:Cited by the court, this Delhi High Court decision supported the letter-identification principle, reinforcing the likelihood of consumer confusion.

The Gillette Company LLC v. Tigaksha Metallics Pvt. Ltd., (2018) 251 DLT 530:Cited by the court, this Delhi High Court decision aligned with the letter-identification principle, supporting the court’s similarity findings.

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65: Cited by the court, this Supreme Court decision held that honest adoption does not bar injunctions if marks are similar, guiding the court’s grant of injunctive relief.

The Timken Company v. Timken Services Pvt. Ltd., (2013) 200 DLT 453:Cited by the court, this Delhi High Court decision supported injunctions despite honest adoption, applied to prioritize consumer protection.

Jolen Inc. v. Doctor & Company, 2002 SCC OnLine Del 518: Cited by the court, this Delhi High Court decision reinforced that similarity overrides honest adoption for injunctions, supporting the plaintiffs’ relief.

Detailed Reasoning and Analysis of Judge: Court addressed both procedural and substantive issues with precision. On the procedural question, the court held that Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, empowered it to grant summary judgment sua sponte during case management, harmonizing it with Order XIIIA’s application requirement (Infrastructure Leasing, K.R. Impex). The court noted that Section 13(2) of the Commercial Courts Act applied to appeals, not procedure, and that Section 122 CPC allowed High Courts to amend CPC rules, including Order XIIIA. The court also invoked Order XV Rule 1 CPC, which permits judgment when no issues arise (Ashoka Estate), reinforcing its authority to dispose of the suit summarily.Substantively, the court applied Order XIIIA’s test: whether the defendants had a real prospect of defending the claim and if compelling reasons existed for trial. The court found no triable issues, reasoning as follows:

Prior Registration and Use: The plaintiffs’ 2010 registration (No. 2030791) predated the defendants’ 2015 application, establishing seniority (Sun Pharmaceuticals). The defendants’ unchallenged denial of invoices from 2006 lacked substance, as tax-paid invoices, web pages, catalogues, BIS/ISO certifications, and awards evidenced use since 2004 (N.R. Dongre). The defendants’ failure to seek removal of the plaintiffs’ mark for non-use negated their defense (H&M Hennes).

Deceptive Similarity: The court visually compared “TIGER” and “TICER,” finding them deceptively similar due to identical stylization and the substitution of “G” with “C,” unlikely to be noticed by unwary consumers (Mahendra & Mahendra, Allied Blenders). The Registrar’s description of “TIGER” as “CIGER” and the defendants’ identical mark placement reinforced confusion (Larsen & Toubro).

Bad Faith: The defendants, in the same trade, were presumed aware of the plaintiffs’ mark, and their 2015 adoption without challenging the plaintiffs’ registration indicated mala fide intent (Info Edge, Dr. Reddy’s). The invented word “TICER” lacked explanation, unlike the English word “TIGER” (Laxmikant Patel).

Passing Off and Copyright: The defendants’ mimicry of packaging and mark placement constituted passing off, as the plaintiffs’ trade dress was distinctive (H&M Hennes). The copyrighted stylization was infringed by identical letter designs (Jolen Inc.).

No Triable Issues: The defendants’ general denials and failure to explain honest adoption did not warrant trial, as similarity alone justified injunctions (Timken Company). The amendment plea regarding assignment was irrelevant, as it concerned a different mark (Insecticides India).

The court declined relief for design infringement, as not pressed, and for damages, due to lack of trial evidence, but awarded costs considering the defendants’ 2015-2016 use. The balance of convenience favored the plaintiffs, as consumer confusion risked irreparable harm, outweighing the defendants’ investment in infringing goods.

Final Decision: On March 19, 2019, the Delhi High Court passed a decree in favor of the plaintiffs, granting: (i) permanent injunctions restraining the defendants from infringing the “TIGER” trademark, copyrighted work, and passing off [prayer paragraphs 35(b), (c), (e)]; (ii) delivery of seized infringing goods to the plaintiffs within one month; and (iii) costs of Rs. 6 lakhs. The court granted liberty to sue separately for design infringement and disposed of the suit via summary judgment, with the decree sheet to be drawn up.

Law Settled in the Case: The case established the following legal principles:Summary Judgment Without Application: Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, allows courts to grant summary judgment sua sponte during case management, supplementing Order XIIIA CPC, enhancing expeditious disposal of commercial suits.Trademark Infringement: Prior registration and use confer rights to restrain junior users, and non-use is no defense unless challenged via a Registrar application (Section 29, Trade Marks Act, 1999).Deceptive Similarity: Courts determine similarity based on consumer perception, focusing on visual and stylistic identity, where minor letter changes (e.g., “G” to “C”) do not avert confusion.Passing Off: Mimicry of trade dress and mark placement by a junior user constitutes passing off when the senior mark is distinctive and widely recognized.Copyright in Stylized Marks: Artistic stylization of a trademark is protectable under the Copyright Act, 1957, and identical replication infringes such rights.Bad Faith Adoption: Competitors are presumed aware of prior marks in the same trade, and unexplained adoption of similar marks indicates mala fide intent, negating honest adoption defenses.Relief Scope: Honest adoption does not bar injunctive relief if marks are similar, though it may influence damages; costs can account for limited infringing use without trial.

Mallcom (India) Limited Vs Rakesh Kumar:March 19, 2019: CS(COMM) 480/2016:: High Court of Delhi:Hon'ble Judge Shri Rajiv Sahai Endlaw, J.

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

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