ITC Limited Vs. Pravin Kumar & Ors.

Descriptive Terms, Distinctive Rights

Introduction:This case presented before the Calcutta High Court is a comprehensive intellectual property dispute involving allegations of trademark infringement, copyright infringement, passing off, and trafficking in trademark rights. The plaintiff, ITC Limited, a dominant and long-standing player in the Indian tobacco industry, alleged that the defendants, including Pravin Kumar and associated entities, were engaged in manufacturing and distributing counterfeit cigarettes under the brand name “GOLD STAG” that bore deceptive similarity to ITC’s well-known cigarette brand “GOLD FLAKE.” The central legal question revolved around the extent to which a company can claim proprietary rights over a composite mark containing a laudatory expression like “GOLD” and whether the defendants’ packaging constituted infringement or passing off.

Factual Background:ITC Limited is a multinational conglomerate with a substantial presence in the manufacture and sale of cigarettes in India under the brand “GOLD FLAKE,” a trademark that it has allegedly used uninterruptedly since 1905. The plaintiff possesses numerous trademark and copyright registrations in India for marks such as “GOLD FLAKE Hallmark,” “GOLD FLAKE Ultima,” “GOLD FLAKE Century,” and “GOLD FLAKE Super Star.” The petitioner claims that the “GOLD FLAKE” mark and its associated trade dress, including the red and gold color combination, device marks, and packaging format, have become distinctive identifiers of its products.

In late 2024, ITC discovered the marketing and sale of cigarettes under the brand “IJM GOLD STAG” by the defendants. The packaging of “GOLD STAG” cigarettes bore a striking resemblance to that of “GOLD FLAKE,” employing similar colors, layout, typography, and even similar roundel devices. ITC contended that the use of the word “GOLD” and the replication of packaging elements by the defendants constituted infringement of their registered trademarks and copyright, passing off, and intentional counterfeiting.

Procedural Background:Upon discovery of the infringing activity, ITC filed the suit on 28 January 2025 under the Commercial Courts Act, 2015. The High Court initially passed an ad-interim order on 6 February 2025 and appointed Special Officers for site inspections. The defendants filed applications under GA-COM/2/2025 for vacating the interim injunction, and under GA-COM/4/2025 for revocation of dispensation under Section 12A of the Commercial Courts Act on the ground that pre-institution mediation was bypassed without just cause. All applications were heard analogously.

Legal Issue:The primary legal issues before the court were whether the defendants' use of the mark “GOLD STAG” and its associated packaging infringed upon ITC’s registered trademarks and copyrighted artistic work and whether the plaintiff’s claim of urgency justified bypassing the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. Ancillary issues involved whether the use of the word “GOLD” could be monopolized and whether the defendants’ registration of “GOLD STAG” provided them any protection against such infringement claims?

Discussion on Judgments:In support of its arguments, the plaintiff relied on multiple judicial precedents that recognized the distinctiveness of the “GOLD FLAKE” mark and the protection available under both trademark and copyright laws for packaging and trade dress.

In ITC Limited v. Golden Tobacco Limited, 2018 SCC OnLine Mad 2437, the Madras High Court acknowledged the long-standing reputation of “GOLD FLAKE” and restrained the use of similar marks. Similarly, in ITC Ltd. v. NTC Industries Ltd., 2015 (64) PTC 244 (Bom), the Bombay High Court granted injunctive relief to ITC against the use of deceptively similar marks by rival businesses. The Calcutta High Court itself had previously restrained parties from using variants like “GOLD STEP,” “GOLD FROST,” “GOLD FLICKER,” and “GOLD VIMAL” in various suits such as CS(COMM) No. 124/2024 and CS(COMM) No. 60/2024, recognizing the deceptive similarity and likelihood of confusion.

The court also cited the landmark decision in Parakh Vanijya Pvt. Ltd. v. Baroma Agro Product, (2018) 16 SCC 632, which emphasized that claims of secondary meaning and exclusivity over common or descriptive terms require careful scrutiny.

For assessing the maintainability of suit without pre-institution mediation, the court referred to Patil Automation (P) Ltd. v. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1, and Yamini Manohar v. T.K.D. Keerthi, 2023 SCC OnLine SC 1382. These decisions collectively held that mediation is mandatory unless the suit seeks urgent interim relief and the urgency is not falsely pleaded. The court emphasized that it is for the court, not the plaintiff, to determine the urgency’s authenticity.

On the procedural side, the court relied on Autodesk Inc. v. A.V.T. Shankardass, (2008) 105 DRJ 188, and Time Warner Entertainment v. RPG Netcom, 2007 (34) PTC 668 (Del), to uphold the procedural validity of executing search-and-seizure orders before formal service under Order 39 Rule 3 CPC, especially when the object is to prevent the destruction of evidence.

Reasoning and Analysis of the Judge:Justice Ravi Krishan Kapur held that the plaintiff made out a strong prima facie case for grant of interim relief. The court accepted that the plaintiff’s mark “GOLD FLAKE” had acquired distinctiveness through continuous and extensive use over decades. While acknowledging that “GOLD” is a laudatory term, the court emphasized that the overall packaging, trade dress, and visual similarities could not be ignored. The red and gold color scheme, the use of similar roundel devices, and the layout of product elements gave the impugned product an appearance deceptively similar to that of the plaintiff’s.

The judge rejected the defendant’s argument that ITC had no exclusive right over the word “GOLD” alone, stating that while “GOLD” per se may be descriptive or laudatory, its use in conjunction with deceptive packaging and overall presentation constituted actionable infringement and passing off.

On the issue of bypassing Section 12A, the court held that ITC had pleaded sufficient urgency. There was no evidence that ITC had prior knowledge of the infringing acts before December 2024. The court also noted the complex corporate structure and concealed relationships among the defendants which justified ITC’s prompt approach to court. The court distinguished this case from others where urgency was found to be a guise.

Additionally, the court found the licensing agreements submitted by the defendants to be suspect, noting discrepancies in the documents and the absence of valid assignments or written authorizations as mandated under Sections 30 and 19 of the Copyright Act, 1957.

Final Decision:The Calcutta High Court upheld the ad-interim injunction previously granted and allowed ITC’s application for interim relief. It dismissed the applications by the defendants seeking to vacate the injunction and revoke the dispensation under Section 12A of the Commercial Courts Act. The court restrained the defendants from using the impugned mark “GOLD STAG” or any deceptively similar trade dress, packaging, or devices in relation to cigarettes. The court also noted that the acts of the defendants warranted further scrutiny at trial to examine claims of counterfeiting and trafficking.

Law Settled in This Case:This case reinforces the principle that even descriptive or laudatory components of a composite trademark may attain distinctiveness when used extensively over a long period, and such acquired distinctiveness can be protected under trademark and copyright laws. The judgment clarifies that trade dress and packaging play a crucial role in consumer perception and can independently ground claims of infringement and passing off. Furthermore, the court reiterated that bypassing the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act is permissible only when genuine urgency exists, and the courts are the ultimate arbiters of such urgency.

Case Title: ITC Limited v. Pravin Kumar & Ors.:Date of Order: 20 June 2025:Case Number: IP-COM/12/2025:Name of Court: High Court at Calcutta, Original Side (IPR Division):Name of Judge: Hon’ble Justice Ravi Krishan Kapur

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

Satya Infrastructure Ltd. Vs. Satya Infra & Estates Pvt. Ltd

Case Title: Satya Infrastructure Ltd. Vs. Satya Infra & Estates Pvt. Ltd.: Date of Order:7th February, 2013:Case Number:CS(OS) 1213/2011:2013:DHC:653:High Court of Delhi:Hon'ble Mr. Justice Rajiv Sahai Endlaw

Facts:

The plaintiffs, comprising companies under the "Satya Group," claimed long-standing use of the trademark "SATYA" in connection with their real estate and infrastructure businesses since 1986. They alleged that the defendant, Satya Infra & Estates Pvt. Ltd., incorporated in 2009, had adopted the mark "SATYA" in its name with the intent to misappropriate the goodwill and reputation of the plaintiffs and cause confusion among consumers.

The plaintiffs had registered trademarks for "SATYA," "SATYA & Logo," and other variants under the Trade Marks Act, 1999 and had invested substantially in building brand recognition. They filed the suit seeking a permanent injunction, delivery of infringing materials, rendition of accounts, and damages.

Procedural History:

The defendant did not appear despite service of summons.

The court proceeded ex parte against the defendant.

Plaintiffs, through counsel, elected to pursue only the relief of permanent injunction, foregoing damages and other reliefs for expediency.

Issues:

Whether the use of the mark “SATYA” by the defendant in its corporate name constituted infringement of the plaintiffs’ registered trademark and amounted to passing off.

Decision:

The High Court:

Held that the plaintiffs had established long-standing, continuous, and registered use of the "SATYA" mark in relation to real estate and related services.

Found that the defendant's use of "SATYA" in its corporate name was likely to cause confusion and mislead the public into believing an association with the plaintiffs.

Observed that such use amounted to infringement of trademark rights under the Trade Marks Act, 1999.

Granted a permanent injunction restraining the defendant from using the name “Satya Infra & Estates Pvt. Ltd.” or any deceptively similar name or mark.

Provided a three-month period for the defendant to comply before the injunction would take effect.

Directed that a copy of the judgment be served on the Registrar of Companies to initiate rectification of the defendant’s name if necessary.

Kamdhenu Limited Vs. Union of India

Article 226 Invoked to Rectify Trademark Registry Irregularities

Introduction:This case highlights serious procedural lapses in the functioning of the Trade Marks Registry and the exercise of extraordinary jurisdiction by the High Court of Delhi under Article 226 of the Constitution of India. The petitioner, Kamdhenu Limited, approached the High Court through five writ petitions, challenging the perfunctory and irregular acceptance of certain trademark applications that had allegedly ignored the petitioner’s prior rights and bypassed the statutory mandates under the Trade Marks Act, 1999 and the Trade Mark Rules, 2017. The Court, in an unprecedented move, exercised its suo motu jurisdiction to rectify administrative irregularities that had broader implications on public confidence in the trademark registration system.

Factual Background:Kamdhenu Limited is a well-established entity with several registered trademarks to its name. The dispute arose when five trademark applications—bearing application numbers 6890699, 6845025, 6845771, 6890704, and 6742246—were hastily accepted by the Trade Marks Registry on the same date they were filed. The petitioner discovered that these applications were processed and accepted within minutes without proper examination, and shockingly, without reference to the petitioner’s prior existing trademarks, despite their valid registration status.

A glaring omission in the search reports generated by the Registry was that 16 of the petitioner’s valid trademarks were not reflected, raising concerns of non-compliance with Rule 33 of the Trade Mark Rules and Section 11 of the Trade Marks Act. These circumstances suggested a breakdown in due diligence and adherence to statutory obligations by the Registry and its officers.

Procedural Background:The matter first came up before the High Court on 9th May 2025, when the Court expressed its dissatisfaction with the records and explanations furnished by the Registry. The Court found the omissions in the search reports troubling and called upon the relevant officers—Examiners of Trade Marks, as well as the Registrar—to appear and assist the Court. Subsequently, on 15th May 2025, the officers demonstrated the software and processes used to generate search reports. Following this, the Registrar of Trade Marks voluntarily submitted a short affidavit admitting procedural failures and stating that administrative action had been initiated against the concerned Examiners. The Registrar also offered to withdraw the earlier acceptance orders and undertake a fresh examination of the applications.

Legal Issue:The diputed question was whether the acceptance of the five trademark applications by the Trade Marks Registry, in apparent disregard of prior existing marks and statutory procedures, could be sustained under law and whether the High Court could intervene under Article 226 in the absence of the petitioner having availed of alternate statutory remedies.

Discussion on Judgments:To support the writ petitions, the petitioner relied on Jai Bhagwan Gupta v. Registrar of Trade Marks & Ors., 2020:DHC:1532, where the Court emphasized the necessity for a reasoned order and clear application of mind by the Registrar while accepting a mark under Section 20(1) of the Act. It was held that such acceptance cannot be mechanical and must reflect proper scrutiny.

The petitioner also referred to Kaira District Cooperative Milk Producers Union Ltd. & Anr. vs. D. N. Bahari Trading, 2024:DHC:2868, where a Co-ordinate Bench held that compliance with Rule 33 of the Trade Mark Rules is mandatory. Though the respondent contested the relevance of this case by stating it related to a rectification petition and not a writ petition, the Court found the principles applicable given the similar factual matrix.

The respondents, particularly Respondent No. 4, cited T.K. Lathika Vs. Seth Karsandas Jamnadas, (1999) 6 SCC 632 to argue that the Court should not bypass the issue of maintainability and should allow opposition proceedings to take their course. They also relied on Kaira District Cooperative Milk Producers Union Ltd. & Anr. vs. Registrar of Trademarks & Ors., 2023:DHC:2066 to suggest that judicial restraint should be exercised where the statutory process is available.

However, the Court emphasized the exceptionality of the present facts and drew support from Commissioner of Income Tax & Ors. vs. Chhabil Das Agarwal, (2014) 1 SCC 603, and State of H.P. & Ors. vs. Gujarat Ambuja Cement Ltd., (2005) 6 SCC 499, to reaffirm the principle that the bar on writ jurisdiction in the face of alternate remedies is not absolute but a rule of prudence and policy.

Reasoning and Analysis of the Judge:  The court noticed that it was not just about isolated errors, but a systemic administrative failure that shook the very integrity of the trademark registration process. The Court noted that the speed and uniformity with which the applications were processed and accepted on the same day, without due scrutiny, indicated a failure to comply with Rule 33 and Section 11 of the Act.

The Court also appreciated the Registrar's candid admission of error and swift initiation of departmental action. However, recognizing that such failures could have far-reaching consequences and erode public faith in the statutory regime, the Court felt compelled to exercise its extraordinary jurisdiction under Article 226 to prevent further miscarriage of justice.

While acknowledging that the petitioner had not yet initiated opposition proceedings and that the time for doing so was still available, the Court found that the blatant procedural lapses warranted judicial intervention. The judge emphasized that the object was not to preempt statutory remedies but to correct a grave wrong that could affect the credibility of a public institution.

Final Decision:The Court disposed of the writ petitions by remanding all five trademark applications back to the Registrar of Trade Marks for de novo adjudication in accordance with law. The Court directed the Registrar to give appropriate notice to all concerned parties and ensure that future proceedings were conducted in compliance with the Trade Marks Act and Rules. The Registry was also instructed to initiate necessary administrative steps as per the Court’s earlier orders.

Law Settled in This Case:This case reinforces the principle that High Courts can and should invoke their extraordinary jurisdiction under Article 226 when there is a demonstrable failure of statutory duties by public authorities, even if alternate remedies are available. It also affirms that the Trade Marks Registry must adhere strictly to Rule 33 of the Trade Mark Rules and Section 11 of the Trade Marks Act, and cannot mechanically process applications without a thorough examination. Administrative convenience or speed cannot override legal compliance and procedural fairness.

Case Title:Kamdhenu Limited Vs. Union of India :Date of Order: 28th May, 2025:Case Number: W.P.(C)-IPD 29-33/2025:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

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

Kamdhenu Limited Vs. Union of India

Case Title:Kamdhenu Limited Vs. Union of India :Date of Order: 28th May, 2025:Case Number: W.P.(C)-IPD 29-33/2025:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

The petitioner, Kamdhenu Limited, filed a batch of writ petitions challenging the manner in which the Trade Marks Registry processed and accepted five trademark applications. The challenge was based on serious procedural lapses, including non-compliance with Rule 33 of the Trademark Rules and Section 11 of the Trademarks Act. It was alleged that the Registry ignored existing prior registrations of the petitioner and accepted the impugned applications within minutes on the same day of filing, without due examination.

The dispute centered on whether the acceptance of the impugned trademark applications by the Registrar of Trade Marks was legally valid when the process showed signs of procedural irregularities, including suspicious haste and lack of a proper search report reflecting the petitioner’s prior trademarks.

The Judge found that the circumstances indicated a clear administrative lapse and failure of statutory duties by the Registry. The Court acknowledged that although alternate statutory remedies were available, the exceptional facts warranted exercise of the High Court’s extraordinary jurisdiction under Article 226 of the Constitution. The Court noted that the Registrar of Trade Marks had already admitted errors and initiated departmental action against the concerned examiners.

In its decision, the Court exercised suo motu powers to remand all five trademark applications for fresh adjudication. It directed the Registrar of Trade Marks to conduct a de novo examination of the applications in accordance with law, after giving due notice to all parties. The petitions were accordingly disposed of without delving into the merits of each application.

RPG Enterprises Limited Vs. RPG Nirman Private Limited:

Case Title: RPG Enterprises Limited Vs. RPG Nirman Private Limited:Date of Order: 28th May, 2025:Case Number: CS(COMM) 532/2025:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

The plaintiff, RPG Enterprises Limited, filed a suit seeking permanent injunction against the defendants for trademark infringement, passing off, and related reliefs. The plaintiff asserted rights over the well-known trademark ‘RPG’, which has been in use since 1979 and registered since 1999, derived from the name of its founder Rama Prasad Goenka. The plaintiff pointed out that the defendants were using the identical mark ‘RPG’ despite an earlier rectification order dated 8th January 2025, whereby the registration of the defendant’s trademark had been cancelled on the grounds of bad faith and dishonesty.

The dispute concerned the unauthorized and continued use of the ‘RPG’ mark by the defendants, who were found to be operating from the same address and managed by the same individual. The plaintiff argued that such use was not only dishonest but also caused confusion and amounted to misuse of the goodwill attached to the well-known mark ‘RPG’.

The Judge held that a prima facie case had been established in favour of the plaintiff. The Court found that the balance of convenience was in favour of the plaintiff and that irreparable harm would be caused if the defendants were allowed to continue using the mark. The Court also observed that public interest would be harmed due to the likelihood of confusion caused by the deceptively similar marks.

The Court granted an interim injunction, restraining the defendants from using the mark ‘RPG’ or any ‘RPG’-formative marks in relation to their services, until the next date of hearing.

Paris Foods and Chemical Industries Vs. Martbaan

Case Title: Paris Foods and Chemical Industries Vs. Martbaan:Date of Order: 28th May, 2025:Case Number: CM(M)-IPD 20/2024:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

The petitioner challenged an order passed by the District Judge in a commercial suit for trademark infringement, where the trial court had permitted the respondent to place on record additional documents belatedly. These documents, including certain invoices, were allowed without notice to the petitioner and without any explanation from the respondent for the delay in filing them along with the original or amended plaint.

The dispute before the High Court involved the validity of the trial court’s order that accepted late documents without prior notice or opportunity to respond, allegedly in violation of the Commercial Courts Act and the Civil Procedure Code provisions, particularly Order XI Rule 1. The petitioner argued that allowing such documents without leave of the court and without just cause contravened procedural norms and relied on multiple precedents to support this claim.

The Judge held that the order passed by the District Judge was legally sustainable as it was a conditional order requiring the respondent to pay costs of ₹10,000 and also granted the petitioner liberty to file rebuttal documents. The Court noted that the petitioner had already accepted the cost amount, and by doing so, effectively acquiesced to the order and waived the right to challenge it. It reiterated the settled principle that parties cannot approbate and reprobate and cited various precedents confirming that accepting costs amounts to accepting the order.

The High Court dismissed the appeal, holding that there was no error in the District Judge’s decision and that the petitioner, having accepted the benefits under the impugned order, could not subsequently challenge it.

Rakesh Kumar Mittal Vs. Registrar of Trade Marks

Case Title: Rakesh Kumar Mittal Vs. Registrar of Trade Marks:Date of Order: 27th May, 2025:Case Number: W.P.(C)-IPD 40/2024:Neutral Citation: 2025:DHC:4432:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

The petitioner applied for registration of the trademark MILTON in Class 9, which was granted on 30th May 2003 and was due for renewal on 6th May 2004. The trademark was removed from the Register due to non-renewal, as notified in the Trade Marks Journal dated 16th October 2010. The petitioner later discovered via an RTI response that the Registrar had not issued the mandatory Form O-3 notice before removing the mark, as required under Section 25(3) of the Trade Marks Act, 1999 read with Rule 64(1) of the Trade Marks Rules, 2002.

The dispute revolved around whether the removal of the registered trademark from the Register was valid when the Registrar had failed to issue the statutory notice informing the proprietor of the impending expiration and renewal conditions. The petitioner contended that without such notice, he had no knowledge of the expiry and hence could not file for renewal.

The Judge analyzed Section 25(3) and Rule 64(1), affirming that the issuance of Form O-3 notice is a mandatory precondition for the removal of a registered trademark. Citing binding precedents including Union of India v. Malhotra Book Depot (2013 SCC OnLine Del 828) and Cipla Ltd. v. Registrar of Trade Marks (2013 SCC OnLine Bom 1270), the Court held that failure to serve the notice rendered the removal illegal. The Court emphasized that statutory procedures must be followed step by step and that skipping mandatory steps vitiates the legality of administrative action.

The Court held the removal of the petitioner’s trademark MILTON from the Register to be unlawful and directed its restoration. It also directed that, upon filing appropriate applications and completing formalities, the trademark must be renewed for the periods 2004–2014, 2014–2024, and 2024–2034, and renewal certificates be issued accordingly.

Ambika Industrial Corporation Vs. Registrar of Trade Marks

Procedural Integrity and Proprietary Authority in Trademark Administration

Introduction:This case concerns the legal complexities arising from a trademark ownership dispute between former partners of a business. The matter delves into issues surrounding the alteration of the registered address of a trademark, the validity of administrative orders passed by the Trade Marks Registry, and the procedural integrity of such modifications. The High Court of Delhi was approached through a writ petition by the registered proprietor of the trademark “AMBIKA,” seeking rectification of the address entry in the trademark register which had been unilaterally changed at the instance of a former partner.

Factual Background:Ambika Industrial Corporation, the petitioner firm, is a longstanding user and registered proprietor of the trademark “AMBIKA” in relation to cycles and their parts. The mark has been in use since 1981, with multiple registrations filed under various classes, particularly Classes 12, 28, and 35. The dispute arises from the involvement of Respondent No. 2, Rakesh Kumar, who was formerly a partner of the petitioner firm. He retired from the firm through a retirement deed dated 1st April 1987, relinquishing all his rights, title, and interest in the firm. Despite this retirement, Respondent No. 2 later attempted to interfere with the records of the Trade Marks Registry concerning the trademark “AMBIKA.”

The petitioner firm had obtained registration of the trademark under application number 381350. A TM-24 form was submitted on 30th April 1998, requesting entry of subsequent proprietors, which was allowed by the Registry on 30th November 2006. Subsequently, the petitioner firm also instituted a civil suit, CS(COMM) 63/2018, against Ambika Exports Pvt. Ltd., a company wherein Respondent No. 2 is a director. An ad-interim injunction was passed by the Delhi High Court restraining the use of “AMBIKA” or deceptively similar marks by the respondent’s entity.

Procedural Background:The controversy arose when Respondent No. 2 filed a Form TM-34 on 23rd September 2013, seeking change of address of the registered proprietor of the trademark to his own address at 110-R, Modern Town, Ludhiana. The Trade Marks Registry allowed this request through an order dated 13th July 2018. The petitioner firm, on discovering this development through an RTI application, filed a review petition against the said order. Although a hearing was initially scheduled, it was adjourned on the request of Respondent No. 2 and never rescheduled, despite multiple reminders from the petitioner. Consequently, the petitioner filed the present writ petition seeking restoration of the original address in the register of trademarks.

Legal Issue:The core legal issue before the Court was whether the Trade Marks Registry acted lawfully and within its jurisdiction in allowing the change of address of the registered proprietor of a trademark on the basis of an application by a person who was no longer associated with the proprietor firm?

Discussion on Judgments:No external judicial precedents or case laws were cited by either party or referred to by the Court in the present matter. The case was determined purely on the basis of the factual matrix, administrative conduct of the Trade Marks Registry, and the proprietary status as per the Register of Trade Marks.

Reasoning and Analysis of the Judge:The Court observed that the petitioner firm continues to be the registered proprietor of the trademark “AMBIKA.” It was not in dispute that Respondent No. 2 had retired from the firm in 1987. Despite the respondent's claim to co-ownership, that dispute was pending adjudication in a civil suit and did not justify a unilateral change in the registered address by the Trade Marks Registry. The Court noted that the order passed by the Registry did not provide any rationale or legal basis for the address change, especially when it was initiated by someone with no legal authority in the firm. The Court held that such a change without notice to the registered proprietor and without any inquiry into the validity of the request was both procedurally and substantively unjustified.

Final Decision:The Court quashed the impugned order dated 13th July 2018 passed by the Trade Marks Registry and directed restoration of the registered address of the trademark “AMBIKA” to its position prior to the said order. To maintain fairness and transparency, the Court also directed that all future communications regarding the trademark by the Registry be marked to both the petitioner firm and Respondent No. 2. The writ petition was accordingly disposed of with directions for compliance to be conveyed to the Trade Marks Registry.

Law Settled in This Case:The case affirms that any administrative change in the Trade Marks Register, particularly relating to address or ownership of a registered trademark, must be based on proper authority, transparency, and rationale. Unauthorized and unilateral actions by third parties without proper notice or standing cannot form the basis of valid alterations in the official records maintained by the Trade Marks Registry. Furthermore, mere pending civil disputes regarding ownership do not empower a former partner to act as a proprietor for administrative purposes unless judicially recognized.

Case Title: Ambika Industrial Corporation Vs. Registrar of Trade Marks:Date of Order: 26th May, 2025:Case Number: W.P.(C)-IPD 35/2022:Neutral Citation:2025:DHC:4865:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

Ambika Industrial Corporation Vs. Registrar of Trade Marks

Case Title: Ambika Industrial Corporation Vs. Registrar of Trade Marks:Date of Order: 26th May, 2025:Case Number: W.P.(C)-IPD 35/2022:Neutral Citation: 2025:DHC:4865:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

The petitioner firm, Ambika Industrial Corporation, is the registered proprietor of the trademark "AMBIKA". Respondent No. 2, a former partner of the petitioner firm who had retired in 1987, filed a Form TM-34 seeking change of address of the registered proprietor to his own address. The Registrar of Trade Marks allowed this request by an order dated 13th July 2018. The petitioner challenged this order, asserting that the respondent had no right to request such a change after retirement, and that the Registry acted without justification.

The dispute centered on whether the Registry was justified in altering the registered address of the trademark on the basis of a request from a person who was no longer associated with the registered proprietor.

The Judge observed that the petitioner firm remains the registered proprietor of the mark and that the impugned order lacked any reasoning or legal basis for the address change. Without entering into the merits of the parties’ partnership dispute, which is already pending in civil court, the Court held that the change of address could not be sustained.

The Court quashed the Registrar’s order dated 13th July 2018 and directed restoration of the trademark's registered address as it stood prior to the said order. It further directed that all communications from the Registry should be marked to both the petitioner firm and respondent No. 2.

Aktiebolaget Volvo Vs. Mantis Technologies Pvt. Ltd

Case Title: Aktiebolaget Volvo Vs. Mantis Technologies Pvt. Ltd. Case Number: CS(COMM) 199/2020 Date of Order: May 13, 2025 Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal Neutral Citation: 2025:DHC:3938

Fact:

Aktiebolaget Volvo (and its associated entities) filed a suit against Mantis Technologies Pvt. Ltd. and other defendants, alleging infringement of its well-known "VOLVO" trademark, which is extensively recognized and registered in India. The plaintiffs operate in the automotive and transportation sectors, providing commercial vehicles and related services globally and in India, and have invested heavily in promoting their "VOLVO" brand. The defendants, engaged in the travel and bus services industry, used the "VOLVO" mark without authorization, creating confusion and infringing on the plaintiffs' rights.

Procedural Details:

• The original suit was filed seeking an injunction to restrain infringement and passing off.
• The court initially granted ex-parte ad interim injunctions restraining certain defendants from using the "VOLVO" mark.
• Multiple defendants were served, and some were deleted or made ex parte during the proceedings.
• The court referred parties for mediation, and some defendants settled.
• Several defendants, including defendant no.7, did not appear, and the court proceeded ex parte against them.
• The court ultimately decided the case on merits, addressing damages, infringement, and the defendants' conduct.

Issue:

Whether the defendants' use of the "VOLVO" trademark amounts to infringement and passing off, considering the well-known and registered status of the "VOLVO" mark, and whether the defendants' conduct was deliberate and mala fide, warranting damages and injunctions.

Decision:

• The court found that the defendants had infringed the plaintiffs' "VOLVO" trademark and had deliberately evaded court proceedings.
• Defendants no.5, 6, 7, and 8 were noted for continued profit-making despite service and orders.
• Damages and injunctions were granted against infringing defendants.
• The court disposed of pending applications and directed the decree sheet to be drawn up, closing all remaining claims and proceedings.

Penguin Books Ltd. Vs India Book Distributors

Protecting Foreign Literary Works in India

Introduction: This case involves a dispute between the publisher of a copyrighted book, Penguin Books Ltd., and a distributor and printers in India regarding allegations of copyright infringement. The core issue is whether the defendants illegally reproduced and distributed a book titled "Spycatcher" without proper authorization.

Detailed Factual Background:The plaintiff in the case, Penguin Books Ltd., is a reputed UK-based publishing house and the owner of the copyright for the book "Spycatcher", authored by Peter Wright. The book is an autobiographical account of Wright's time as an MI5 agent and details covert operations of the British intelligence services. Due to its sensitive and controversial content, the UK government attempted to block its publication and distribution domestically.

Despite legal efforts in the UK to restrain publication, Penguin Books Ltd. discovered that copies of the book had begun to surface in India. The plaintiff alleged that the defendants, namely India Book Distributors and associated entities, had printed and circulated the book in India without obtaining any authorization from the rightful copyright owner. Penguin Books claimed exclusive rights to the book and asserted that no Indian distributor had been granted any rights to publish or sell the work. Therefore, the plaintiff initiated legal proceedings alleging copyright infringement under Indian law.

Detailed Procedural Background: The matter was brought before the High Court of Bombay. Penguin Books Ltd. sought an interim injunction against the defendants to restrain them from printing, publishing, or distributing the infringing copies. The defendants responded by denying any wrongdoing, asserting that they had either lawfully obtained copies or were merely distributing what they believed to be legitimate publications sourced from abroad.The learned single judge, where the suit was instituted, refused the injunction. From his order of refusal Penguins appeal to this court.

Issues Involved in the Case: The primary legal issues raised in this case were:Whether the plaintiff, Penguin Books Ltd., held a valid copyright over the book Spycatcher in India?Whether the defendants violated the Copyright Act, 1957 by distributing or reproducing the book without the plaintiff’s authorization.

Detailed Submissions of Parties: The plaintiff submitted that it held exclusive rights to the book Spycatcher, and offered evidence of unauthorized sale and distribution by the defendants. They emphasized the ongoing litigation in the UK and the importance of preserving their rights internationally, including in India. They argued that allowing distribution in India would amount to a violation of international copyright norms and significantly undermine their commercial and intellectual property interests.

To support their position, the plaintiff cited several landmark cases, including R.G. Anand v. Delux Films, (1978) 4 SCC 118, which laid down the principles for establishing copyright infringement, and Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, which discussed the standard of originality required for copyright protection under Indian law.

The defendants, on the other hand, denied that they had printed the book. They claimed to have lawfully procured copies from foreign sources and asserted that they were not liable for infringement. They argued that resale of lawfully purchased books, even if imported, did not constitute an infringement under Indian law. Furthermore, they contended that an Indian court should not be influenced by an ongoing UK case and that the content of the book, regardless of its sensitivity, was a matter of public interest.

Detailed Discussion on Judgments and Citations:The court closely analyzed the case of R.G. Anand v. Delux Films, (1978) 4 SCC 118, which held that copyright infringement occurs when there is substantial copying of the expression of an idea and not merely the idea itself. This case was invoked by the plaintiff to argue that unauthorized publication and sale of even part of the book without permission amounted to clear infringement.

The case of Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1, was cited to reinforce that Indian law grants copyright protection to all original literary works, irrespective of whether they were published in India. The court found this reasoning applicable in the present case, supporting the plaintiff’s claim of ownership and protection under the Indian Copyright Act, 1957.

The court also took judicial notice of the proceedings in the UK where the British Government had tried to stop the publication of Spycatcher. Although this was not directly binding, the court acknowledged that the plaintiff’s rights had been recognized by courts in other jurisdictions and should not be lightly disregarded in India.

Detailed Reasoning and Analysis by the Judge: Justice Lentin observed that there was sufficient prima facie evidence demonstrating that Penguin Books Ltd. was the copyright holder of Spycatcher. The defendants had failed to offer credible documentation or proof to establish that they had lawfully acquired the right to distribute or publish the book in India. The court emphasized that even if the books were obtained through overseas purchases, the unauthorized distribution in India still constituted infringement under Indian copyright laws.

The court noted that the plaintiff was likely to suffer irreparable harm if the defendants were allowed to continue distribution, especially considering the limited commercial window available due to the book's controversial nature. It was also found that the balance of convenience tilted in favor of the plaintiff. The judge further reasoned that public interest could not override private legal rights, especially when those rights were protected by statute.

Final Decision:The High Court of Bombay granted an interim injunction in favor of Penguin Books Ltd. The court restrained the defendants from printing, publishing, selling, distributing, or in any other manner disposing of any copies of Spycatcher pending the final disposal of the suit.

Law Settled in This Case: This case reaffirmed that Indian copyright law protects the rights of foreign copyright holders, even if the work has not been published in India. Unauthorized distribution of copyrighted work, including imported copies, without permission amounts to infringement. Indian courts can enforce such rights and grant relief, including injunctions, irrespective of ongoing international disputes or foreign court orders. This ruling underscores the territorial integrity and application of the Copyright Act, 1957 within India.

Case Title: Penguin Books Ltd. Vs India Book Distributors & Ors.:Date of Order: 1 August 1984:Citation: AIR1985DELHI29, 26(1984)DLT316:Court: High Court of Delhi:Presiding Judge: Hon'ble Justice Shri Avadh Bihari Rohtagi

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

SML Limited Vs. Mohan & Company & Anr.

Interim Relief and Presumption of Validity in Patent Law

Introduction:This case involves a significant dispute in the field of intellectual property law, particularly relating to patent infringement in the agricultural sector. The litigation centers on Indian Patent No. 282092, concerning a novel agricultural composition. The plaintiff, SML Limited, a research-driven agrochemical company, approached the High Court of Himachal Pradesh alleging patent infringement by the defendants, Mohan & Company and Safex Chemicals India Ltd., over a competing fertilizer product branded as "Aladdin." The plaintiff sought interim injunctive relief pending final adjudication. The case illustrates critical questions of patent validity, inventive step, public interest under regulatory frameworks, and the balance of convenience in granting interim relief in infringement suits.

Factual Background:SML Limited is the assignee and lawful proprietor of Indian Patent No. 282092, granted on March 30, 2017, for a fertilizer composition comprising sulfur, zinc oxide, and an agrochemically acceptable excipient in specific micronized granular form. The plaintiff launched its product under the brand name “Techno Z” in August 2018. The patent was subjected to pre-grant and post-grant oppositions, both of which were dismissed after full consideration by the Indian Patent Office.

In 2023, the plaintiff discovered that the defendants were marketing a similar product under the name “Aladdin,” which allegedly fell within the scope of Claims 11 and 12 of the suit patent. The composition, structure, and particle size of the product were alleged to be substantially identical to those protected under the patent.

Procedural Background:The plaintiff filed a suit for permanent injunction along with an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, seeking interim injunction to restrain the defendants from continuing the manufacture, sale, and distribution of the infringing product. An ex parte interim injunction was granted on July 24, 2023. The defendants challenged the injunction through a commercial appeal, which was dismissed on the grounds of delay. Subsequently, the High Court heard detailed arguments from both sides and reserved judgment on the interim application on April 25, 2025.

Legal Issue:The primary legal issue was whether the plaintiff was entitled to an interim injunction against the defendants for the alleged infringement of Indian Patent No. 282092. The question further involved whether the defendants had raised a credible challenge to the validity of the patent under Sections 3(d), 2(1)(ja), and 64 of the Patents Act, 1970, and whether public interest considerations under the Fertilizer Control Order (FCO) could override proprietary patent rights.

Discussion on Judgments:The plaintiff placed heavy reliance on Novartis AG & Anr. v. Cipla Ltd., 2015 SCC OnLine Del 6430, where the Delhi High Court held that a patentee enjoys exclusive monopoly over the patented invention and is entitled to seek protection under Section 48 of the Patents Act. The Court emphasized that even at the interim stage, the statutory rights of a patent holder must be protected in the absence of a strong challenge to the validity of the patent.

Another case cited was Bristol-Myers Squibb Co. & Ors. v. J.D. Joshi, 2015 SCC OnLine Del 10109, where the Court held that old and unopposed patents enjoy a presumption of validity and interim relief should ordinarily be granted unless a strong prima facie challenge is made.

To support its claim of credibility in patent enforcement, the plaintiff referred to Strix Ltd. v. Maharaja Appliances Ltd., MIPR 2010 (1) 0181, where it was held that a defendant must present acceptable scientific material supported by expert evidence to raise a credible challenge to validity.

The defendants relied on Dhanpat Seth & Ors. v. Nil Kamal Plastic Crates Ltd., 2007 SCC OnLine HP 33, where the Himachal Pradesh High Court held that mere grant of a patent does not automatically entitle the patentee to an injunction. Section 107 of the Patents Act allows a defendant to challenge the validity of a patent even in an infringement suit.

They also cited F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2008 SCC OnLine Del 382, where the Delhi High Court held that the six-year rule for old patents is only a cautionary principle, and the patentee must still demonstrate prima facie strength in its case.

The defendants further relied on Novartis AG v. Natco Pharma Ltd., 2021 SCC OnLine Del 5340, to argue that claims lacking inventive step or falling within prior art should not be protected under an interim injunction. They asserted that their product followed government-mandated FCO standards, and that the plaintiff's patent simply mimicked these existing public standards.

Reasoning and Analysis of the Judge: The Court analyzed the pleadings, scientific material, expert affidavits, and comparative composition data presented. The Court observed that the plaintiff had not only secured a statutory patent but had also successfully defended it in both pre- and post-grant opposition proceedings. The patent had remained unchallenged for over 14 years.

The Court noted that Claims 11 and 12 of the suit patent clearly described a fertilizer composition with specific ranges for sulfur, zinc oxide, and particle size, and the expert report from Dr. Phool Kumar Patanjali demonstrated that the defendants’ product “Aladdin” fell within these technical specifications. The Court found that the defendants had not submitted any rebuttal expert testimony or substantial material to credibly challenge the novelty or inventive step of the patent.

While the defendants argued that the product complied with FCO standards and involved bentonite as an excipient, the Court held that FCO compliance could not justify infringement of a patent. The regulatory framework under the Essential Commodities Act, 1955, does not supersede proprietary rights granted under the Patents Act. The Court was also unconvinced by the defendants’ jurisdictional objections, finding that sales within the State had been established.

Importantly, the Court held that public interest would not be served by allowing unlicensed use of patented technology, especially when the patentee had invested in significant R&D efforts and the patent had survived statutory scrutiny.

Final Decision:The High Court granted the interim injunction, restraining the defendants from manufacturing, using, selling, offering for sale, importing, or exporting the infringing product “Aladdin” or any product covered under Indian Patent No. 282092 until further orders. The Court upheld the statutory exclusivity conferred by the patent and found that the balance of convenience, irreparable harm, and prima facie case all lay in favor of the plaintiff.

Law Settled in This Case:The judgment reaffirmed that the grant of an Indian patent, especially one that has stood the test of opposition and been in force for a significant duration, enjoys a presumption of validity. A defendant challenging such a patent in interim proceedings must raise a credible and scientifically supported challenge. The case establishes that statutory compliance with FCO regulations does not immunize an infringing product from patent enforcement. Furthermore, the Court clarified that interim injunctions in patent cases must balance statutory rights, prima facie infringement, and the public interest without deferring entirely to regulatory standards under different legislation.

Case Title: SML Limited Vs. Mohan & Company & Anr.:Date of Order: 6 June 2025:Case Number: OMP No. 320 of 2023 in COMS No. 6 of 2023:Neutral Citation: 2025:HHC:18160:Name of Court: High Court of Himachal Pradesh, Shimla:Name of Judge: Hon’ble Mr. Justice Sandeep Sharma

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

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.

Protecting Packaging, Get-Up, and Trade Dress under Indian IP Law

Introduction:The present case revolves around a commercial intellectual property dispute involving alleged infringement of well-established trademarks and copyright-protected artistic works. The Plaintiff, Marico Limited, initiated an action against Zee Hygiene Products Pvt. Ltd. and its affiliates, alleging deliberate imitation of its proprietary trade marks, packaging, and get-up of various product lines under the iconic “PARACHUTE” brand family. The suit sought to restrain the Defendants from using deceptively similar marks and trade dress in connection with coconut and jasmine hair oil products. This judgment provides significant jurisprudential guidance on the scope of interim injunctions in trade mark and copyright infringement matters.

Factual Background:Marico Limited is the registered proprietor of the trade marks “PARACHUTE”, “PARACHUTE ADVANSED”, and “PARACHUTE JASMINE”, among others, which have been in use since 1948. The Plaintiff’s products, especially edible and cosmetic coconut oils, are sold in a distinctive packaging involving a blue bottle, green-bordered flag device, broken coconut imagery, and white-colored font in stylized form. Over the years, Marico introduced various artistic modifications, all while preserving the essential features of its trade dress and branding, which have been granted statutory protection under both trade mark and copyright law.

The Plaintiff asserted that it enjoys immense goodwill and reputation in the market, evidenced by high sales turnover and promotional expenditure. Marico alleged that the Defendants launched a competing product line under the brand “COCOPLUS” and “COCOPLUS JASMINE,” using trade dress, packaging, bottles, and labels strikingly similar to Marico's registered marks, including the use of a blue container, broken coconut imagery, and flag devices.

Procedural Background:Marico first issued a cease-and-desist notice to the Defendants in February 2021, followed by another in April 2021. However, no response or corrective action was taken. Due to difficulties arising during the COVID-19 pandemic, Marico was unable to assess the extent of infringement. Upon rediscovery of the infringing products in the market in 2024, Marico initiated a commercial IP suit before the Bombay High Court. The Plaintiff also filed an interim application seeking injunctive relief to prevent ongoing infringement pending the final disposal of the suit.

The Defendants filed a written reply, claiming to be prior users of the “COCOPLUS” mark since 2005 and argued that their trade mark was registered and the packaging bore no resemblance to Marico’s registered marks. The Defendant also raised defences of delay, common trade usage, and lack of deceptive similarity.

Legal Issue:The primary legal issue before the Court was whether the Defendants' use of the “COCOPLUS” and “COCOPLUS JASMINE” marks, along with the allegedly similar trade dress, bottle design, and packaging, infringed upon the Plaintiff’s registered trade marks and copyrights. A related question was whether the Defendants could rely on their own trade mark registration and the defence of delay to defeat Marico’s claim for interim relief.

Discussion on Judgments:The Plaintiff relied on multiple precedents to establish the standard of interim relief in cases of infringement. In Xotik Frujus Pvt Ltd v. Bubalus Beverages, IA (L) No. 24055 of 2021 in COMIP Suit No. 448 of 2021, the Bombay High Court granted injunction despite prior registration by Defendant, highlighting the importance of actual use and trade dress similarity.

In Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005, the Delhi High Court emphasized the relevance of trade dress, overall visual appearance, and likelihood of confusion among illiterate consumers, ruling in favor of the prior user.

The landmark decision in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90, was cited to assert that delay alone cannot defeat a claim for interim injunction in cases of fraudulent adoption.

The Plaintiff also cited Pidilite Industries Ltd. v. S. M. Associates, 2003 SCC OnLine Bom 143, and Pidilite Industries Ltd. v. Pom a-Ex Products, 2017 SCC OnLine Bom 7237, to assert that the copying of essential features of a registered mark constitutes infringement regardless of minor differences.

The Defendant, on the other hand, relied on Charak Pharmaceuticals (India) Ltd. v. Glenmark Pharmaceuticals Ltd., 2007 SCC OnLine Bom 1192, to argue that delay and balance of convenience should defeat an injunction. The Court, however, found this inapplicable given the Plaintiff’s vigilance in asserting its rights.

The Supreme Court decision in Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727, was invoked to argue the discretionary nature of interim relief, but again found unpersuasive in the face of prima facie evidence of copying.

Reasoning and Analysis of the Judge:The Court found that the Defendants’ registered trade mark “COCOPLUS” was not in actual use in its registered form. Instead, the Defendants used packaging and trade dress nearly identical to the Plaintiff’s marks, including the use of blue-colored bottles, green-bordered flag devices, and the iconic broken coconut imagery.

The Court ruled that the defence under Section 30(2)(e) of the Trade Marks Act, 1999—regarding permissible use under a registered mark—was unavailable since the Defendant was not using its registered version. The Court noted that trade mark rights also encompass trade dress and that essential features had been slavishly copied. The Defendant’s assertion of delay was rejected, citing Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., AIR 1990 Delhi 19, where it was held that delay unaccompanied by acquiescence is not a valid defence.

The Court emphasized that the visual similarity and structural mimicry were likely to confuse the public, thus constituting trade mark infringement under Section 29 of the Trade Marks Act. The Judge also noted the copyright infringement of the artistic elements used on the Plaintiff’s packaging.

Final Decision:The Bombay High Court granted an interim injunction in favor of Marico Limited. The Court restrained the Defendants from using the infringing marks, packaging, bottles, containers, or any other materials bearing similarities to Marico’s registered marks. Relief was granted under prayer clauses (a) to (f) as sought in the application. The interim order was stayed for four weeks to allow the Defendants to seek appellate relief, if so advised.

Law Settled in This Case:This case reinforces that mere registration of a trade mark does not immunize a party from liability for infringement if the actual use deviates and mimics another’s registered mark. It establishes that copying essential features of a registered trade mark and trade dress—even in the absence of literal word mark similarity—constitutes infringement. The decision affirms that delay without acquiescence is not a bar to injunctive relief and clarifies that the defence under Section 30(2)(e) is limited to actual use of the registered form. The Court further emphasized the necessity of protecting not only the proprietary rights of trade mark owners but also the interests of the consuming public.

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.:Case Number:Commercial IP Suit (L) No. 32952 of 2024:Neutral Citation:2025:BHC-OS:9444:Date of Order:25 June 2025:Court:High Court of Judicature at Bombay:Judge:Hon'ble Ms. Justice Sharmila U. Deshmukh

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

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.

Marico Limited Vs Zee Hygiene Products Pvt. Ltd.:Case Number:Commercial IP Suit (L) No. 32952 of 2024:Neutral Citation:2025:BHC-OS:9444:Date of Order:25 June 2025:Court:High Court of Judicature at Bombay:Judge:Hon'ble Ms. Justice Sharmila U. Deshmukh

Brief Facts:Marico Limited, owner of the well-known trademarks "PARACHUTE", "PARACHUTE ADVANSED", and "PARACHUTE JASMINE", alleged that Zee Hygiene Products Pvt. Ltd. copied its trade dress, packaging, and trademarks. Marico claimed infringement of its registered trademarks and copyrights, and also passing off.

Dispute:The Plaintiff alleged that the Defendant's products under the mark “COCOPLUS” (including COCOPLUS JASMINE) copied essential elements like the blue bottle, green-bordered flag device, broken coconut device, and overall trade dress deceptively similar to Marico’s products. The Defendant argued prior use, registration of its own mark, and denied copying.

Discussion by Judge:The Court found that the Defendant’s actual packaging was not the same as its registered mark and had copied essential features of the Plaintiff’s well-known packaging.The Defendant's mark “COCOPLUS” was not used in its registered form and its label slavishly imitated Marico’s products.Delay in filing suit was not fatal as there was no acquiescence.The defence under Section 30(2)(e) of the Trade Marks Act was rejected, and balance of convenience favored Marico.The Court held that mere registration of the Defendant's mark did not protect deceptive use.

Decision:The Court granted interim injunction restraining the Defendants from using the infringing marks, packaging, bottles, and artistic works similar to Marico’s "Parachute" products, until final disposal of the suit. Reliefs under prayer clauses (a) to (f) were granted.

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited

An Examination of Prior Use, Acquired Distinctiveness, and the Limits of Trademark Registration

Introduction:This case pertains to a dispute over trademark rights in the plywood industry, involving the plaintiffs, Duroply Industries Limited and its sister concern, and the defendant, Ma Mansa Enterprises Private Limited. The matter centers on the alleged infringement and passing off of the plaintiffs’ long-established trademarks containing the prefix “DURO” by the defendant’s use of the mark “DURO TOUCH.” The case raises pertinent issues about the rights of prior users versus registered proprietors, the doctrine of passing off, and the extent to which a generic or descriptive word can be protected if it has acquired distinctiveness through use.

Factual Background: Duroply Industries Limited, formerly known as Sarda Plywood Industries Ltd., has been engaged in the business of manufacturing and selling plywood and related products since its incorporation in 1957. It adopted the word “DURO” as part of its primary brand identity as early as 1964 and subsequently registered various marks such as “DUROPLY,” “DUROBOARD,” “DUROMAC,” and others. The plaintiffs have continuously used the “DURO” brand in the market and claimed to have developed substantial goodwill and reputation associated with these trademarks.

In 2018, the plaintiffs discovered that Ma Mansa Enterprises was using and had obtained registration for the mark “DURO TOUCH” in respect of similar products, including plywood and teak ply. A cease and desist letter was issued by the plaintiffs, but the defendant responded asserting its own use of the mark since 2006 and claimed independent goodwill in certain northern Indian markets. This prompted the plaintiffs to initiate legal action.

Procedural Background:The plaintiffs filed a suit before the Calcutta High Court seeking a permanent injunction to restrain the defendant from using the mark “DURO TOUCH” or any other mark deceptively similar to the “DURO” family of marks. Alongside the suit, an interlocutory application for interim injunction was also filed under IA No. GA/1/2020 in IP-COM/3/2024. The defendant contested the application by filing an affidavit-in-opposition and raising multiple legal and factual contentions. The interim application was heard and disposed of by order dated 25th June, 2025.

Legal Issue:The primary legal issue was whether the plaintiffs, as prior users of the mark “DURO,” were entitled to an injunction against the defendant’s use of the registered mark “DURO TOUCH” on the grounds of trademark infringement and passing off, despite the defendant's registration and long use since 2006.

Discussion on Judgments:The plaintiffs relied heavily on the doctrine of prior use and common law rights of passing off. They referred to S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, where the Supreme Court held that rights of a prior user are superior to those of a registered proprietor, and that common law remedies for passing off remain unaffected by the registration of a trademark. The case also highlighted that statutory registration does not extinguish pre-existing rights acquired through use.

In Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, the Supreme Court clarified the first-user principle and the operation of Section 34 of the Trade Marks Act, 1999. The Court emphasized that registration does not confer exclusive rights over a mark if another party has been using it continuously prior to the registrant.

The plaintiffs also cited Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors., (2022) 5 SCC 1, where infringement was established based on the deceptive similarity of marks even when one was a word mark and the other a label mark. The decision underscored the importance of visual and phonetic similarity in evaluating infringement.

To reinforce the rights under passing off despite disclaimer clauses, the plaintiffs relied on Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257 and Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558, both of which held that disclaimers in registration do not bar common law passing off actions.

Other authorities cited include Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, both elaborating on distinctions between infringement and passing off, and stressing that phonetic and visual similarities could lead to consumer confusion.

In opposition, the defendant cited Ultratech Cement Ltd. v. Dalmia Cement, (2016) SCC OnLine Bom 3574, and Soothe Healthcare v. Dabur India Ltd., (2022) SCC OnLine Del 645, to argue that “DURO” was descriptive and common to the trade. The defendant also relied on Pidilite Industries Ltd. v. Vilas Nemichand Jain, (2015) SCC OnLine Bom 4801, arguing that the plaintiffs failed to prove that the descriptive mark had acquired distinctiveness.

Reasoning and Analysis of the Judge:Court conducted an extensive analysis of the statutory framework under Sections 27, 28, and 34 of the Trade Marks Act, 1999, read alongside common law principles of passing off. The Court noted that the plaintiffs were established prior users of the “DURO” mark and had used it continuously since 1964, which created undeniable goodwill and reputation.

While acknowledging that the defendant was a registered proprietor of “DURO TOUCH” and had used it since 2006, the Court held that the prior use by the plaintiffs gave them superior rights. The Judge emphasized that registration is not an absolute defense, and that long-standing use that builds goodwill entitles a trader to protection under passing off.

The Court accepted that the use of “DURO” by the plaintiffs had acquired a secondary meaning and that the general public could associate the defendant’s mark “DURO TOUCH” with the plaintiffs’ goods, especially given the similarity in the products and the phonetic structure of the marks.

The defendant’s arguments on delay, estoppel, and acquiescence were rejected. The Court reiterated that every act of passing off is a continuing tort and that delay alone cannot defeat the right to relief. The argument about the descriptive nature of the word “DURO” was countered by showing that distinctiveness can evolve over time through usage.

The Court concluded that there was a prima facie case of passing off and potential trademark infringement, and that the balance of convenience lay in favour of the plaintiffs. Allowing the defendant to continue would likely result in irreparable harm to the plaintiffs’ goodwill.

Final Decision:The Court allowed the interim application and passed an injunction restraining the defendants, their agents, and associates from using the marks “DURO TOUCH,” “DURO,” or any other deceptively similar mark to the plaintiffs’ registered “DURO” family of trademarks, in relation to plywood and similar goods, until further orders. The Court clarified that these observations were tentative and would not affect the final adjudication of the suit on evidence.

Law Settled in This Case:This case reinforces the principle that prior user rights in trademarks are superior to registration under the Trade Marks Act, 1999. It affirms that common law rights of passing off exist independently of statutory rights and can override registration where deceptive similarity and misrepresentation are shown. The case also reaffirms that descriptive or generic marks, through continuous and extensive use, may acquire distinctiveness and be protected against infringement and passing off. Delay in initiating proceedings does not negate the right to injunctive relief if misrepresentation and likelihood of confusion are established. The ruling underscores that trademark law prioritizes the protection of goodwill and consumer association built through sustained commercial use.

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited:Date of Order: 25th June, 2025:Case Number: IP-COM/3/2024:High Court at Calcutta:Name of Judge: Hon’ble Justice Sugato Majumdar

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

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited

Duroply Industries Limited. Vs. Ma Mansa Enterprises Private Limited:Date of Order: 25th June, 2025:Case Number: IP-COM/3/2024:High Court at Calcutta:Name of Judge: Hon’ble Justice Sugato Majumdar

Very Brief Facts:Duroply Industries (formerly Sarda Plywood) has used the trademark "DURO" since 1964 for plywood products. They discovered Ma Mansa Enterprises using the mark "DURO TOUCH" for similar goods and filed a suit alleging trademark infringement and passing off.

Dispute: The core dispute is whether the defendant’s mark "DURO TOUCH" infringes on Duroply’s rights over the “DURO” family of marks and whether the use constitutes passing off, despite the defendant having registered "DURO TOUCH" and using it since 2006.

Discussion by Judge:  The Court acknowledged that both parties had registered marks and long-standing use. However, it emphasized that Duroply had been using “DURO” since 1964, giving it superior common law rights. The Judge cited multiple Supreme Court rulings on the superiority of prior user rights over registered rights and upheld that passing off remedies are not defeated by disclaimers or registration alone. The term “DURO,” while arguably descriptive, had acquired a secondary meaning due to long use by the plaintiff. The Court found that the defendant’s mark could cause confusion and was deceptively similar.

Decision: The Court granted an interim injunction restraining the defendant from using "DURO TOUCH" or any deceptively similar mark for plywood-related goods. The matter is to proceed to trial for final adjudicatio

Dr. Ena Sharma Vs. State of Himachal Pradesh

Copyright Infringement in Medical Publications

Introduction:The present case revolves around allegations of copyright infringement in an academic publication, where the petitioner, Dr. Ena Sharma, sought quashing of an FIR registered under Section 63 of the Copyright Act, 1957. The core dispute concerns the alleged unauthorized use of research material and images previously published in an article co-authored by the complainant. The matter raises significant questions on intellectual property rights, locus standi in criminal jurisprudence, and the scope of judicial interference at the FIR stage.

Factual Background:The complainant, a Senior Resident at Dr. Yashwant Singh Parmar Medical College, Nahan, co-authored a research article titled “Wrist Arthrodesis in Rheumatoid Arthritis using Reconstruction Plate,” which was published in March 2017 in the International Journal of Advanced Research (IJAR). Her husband, Dr. Amit Lakhani, was the principal author. The article, based on a study of five patients, included images and research observations.

Subsequently, another article on a similar subject was published in February 2021 in the Journal of Pharmaceutical Research International (JPRI), wherein Dr. Ena Sharma was named as a co-author. The complainant alleged that the second article reproduced X-ray images, intraoperative photographs, and other research material from the 2017 article without her consent or knowledge, constituting a clear case of copyright infringement.

The petitioner, Dr. Ena Sharma, contested this allegation, arguing that the data and images used were based on a separate study conducted by Dr. Amit Lakhani on 15 patients. She asserted that she merely performed statistical analysis and was falsely implicated due to matrimonial disputes between the complainant and her husband.

Procedural Background:Following the complaint, FIR No. 131 of 2022 was registered at Police Station Nahan, District Sirmaur under Section 63 of the Copyright Act, 1957. The petitioner filed the present petition under Section 482 of the Code of Criminal Procedure seeking quashing of the FIR. The State and the complainant opposed the petition, contending that there was prima facie evidence of copyright infringement and the investigation was at an initial stage.

Legal Issue:The central legal issue in the case was whether the FIR alleging copyright infringement, based on the republication of certain images and content from a previously published article, warranted judicial interference and quashing under Section 482 CrPC at the threshold stage.

Discussion on Judgments:The petitioner relied heavily on the principles laid down in Madhavrao Jiwaji Rao Scindia v. Sambhajirao Chandrojirao Angre, (1988) 1 SCC 692, where the Supreme Court held that proceedings may be quashed if the uncontroverted allegations do not establish a cognizable offence. She also cited B.N. John v. State of U.P., AIR 2025 SC 759, reiterating that FIRs not disclosing a cognizable offence should be quashed. Further reliance was placed on Ajay Malik v. State of Uttarakhand, 2025 SCC OnLine SC 185, to argue that criminal proceedings should not be used as instruments of personal vengeance.

The complainant invoked R.G. Anand v. Deluxe Films, AIR 1978 SC 1613, which laid down that substantial similarity in expression or content, not necessarily exact copying, could amount to copyright infringement. She also referred to Knit Pro International v. State of NCT of Delhi, 2022 LiveLaw (SC) 505, to assert that copyright offences can attract criminal prosecution. The judgments in A.R. Antulay v. Ramdas Sriniwas Nayak, (1984) 2 SCC 500, and Vishwa Mitter v. O.P. Poddar, (1983) 4 SCC 701, were cited to rebut the plea of lack of locus standi, affirming that any individual can initiate criminal proceedings unless explicitly prohibited by statute.

The State and complainant further relied on Neeharika Infrastructure Pvt. Ltd. v. State of Maharashtra, (2021) 19 SCC 401, to argue that courts must exercise extreme restraint in quashing FIRs at the investigation stage. State of Karnataka v. L. Muniswamy, (1977) 2 SCC 699, was cited to delineate the limited circumstances under which judicial interference is permissible.

Reasoning and Analysis of the Judge:The Court, after analyzing the contents of both research articles, observed that some of the images used in the second article published in JPRI were indeed identical to those in the earlier IJAR publication. This prima facie indicated infringement of copyright. The claim that both articles were based on separate studies was not accepted without further investigation, especially as both articles had the same co-author (Dr. Amit Lakhani), who had already assigned the copyright of the first article to IJAR.

The Court rejected the argument that the complainant lacked locus standi, holding that criminal law can be set into motion by anyone unless expressly barred. Relying on A.R. Antulay and Ratan Lal v. Prahlad Jat, (2017) 9 SCC 340, the judge reiterated that copyright infringement, being a cognizable offence under the Copyright Act, can be reported by any aggrieved party.

The judge emphasized that quashing of FIR at the threshold is an exception, not the rule. Citing Neeharika Infrastructure and State of Haryana v. Bhajan Lal, 1992 Supp (1) SCC 335, the Court held that where the allegations in the FIR, taken at face value, disclose the commission of an offence, the investigation must be allowed to proceed. The FIR did not appear to be malicious or frivolous on its face, nor was the case one of absurdity or manifest illegality warranting judicial intervention.

Final Decision:The High Court dismissed the petition for quashing the FIR, holding that the allegations made in the complaint, supported by preliminary materials, warranted further investigation. The Court found that the continuation of the investigation did not amount to an abuse of process and that the matter was not fit for interference under Section 482 CrPC.

Copyright Infringement in Medical Publications

Law Settled in This Case:The judgment reinforces that where an FIR discloses prima facie elements of a cognizable offence, particularly in matters of copyright infringement involving publication of academic articles, the High Court will be slow to quash the proceedings at the threshold. The ruling also affirms the settled legal position that anyone can initiate criminal proceedings unless explicitly prohibited, and that the assignment of copyright to a journal extinguishes any claim of reuse without consent. Substantial similarity of content or reproduction of key elements, even if not verbatim, may amount to copyright infringement and warrants investigation.

Case Title: Dr. Ena Sharma Vs. State of Himachal Pradesh & Others:Date of Order: 26th June, 2025:Case Number: Cr. MMO No. 242 of 2023:Neutral Citation: 2025:HHC:19863: Name of Court: High Court of Himachal Pradesh, Shimla:Name of Judge: Hon’ble Mr. Justice Rakesh Kainthla

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