Dabur India Ltd. Vs. Patanjali Ayurved Ltd

The Legal Boundaries of Puffery in Indian Pharmaceutical Advertising

Introduction: The case of Dabur India Ltd. v. Patanjali Ayurved Ltd. represents a significant judicial examination of disparagement in commercial advertising, particularly in the context of Ayurvedic products regulated under the Drugs and Cosmetics Act, 1940. Dabur, a leading manufacturer of Chyawanprash, sought legal recourse against Patanjali’s advertisements for its product, 'Patanjali Special Chyawanprash,' alleging that they denigrated Dabur’s 'Dabur Chyawanprash' and the entire Chyawanprash product category. The case delves into the delicate balance between permissible comparative advertising and impermissible disparagement, especially when the product in question is a regulated Ayurvedic drug. The Delhi High Court’s ruling provides critical insights into the legal thresholds for advertising claims, the application of statutory regulations, and the protection of commercial speech under the Indian Constitution.

Factual Background: Dabur India Ltd., holding a 61.60% market share in the Chyawanprash category as of October 2024, filed a suit against Patanjali Ayurved Ltd., alleging that Patanjali’s advertisements for 'Patanjali Special Chyawanprash' disparaged Dabur’s product and the broader Chyawanprash market. The disputed advertisements included a Hindi television commercial (TVC) and Hindi and English print advertisements. 

The TVC, narrated by yoga guru Mr. Ramdev, opened with the statement, “Jinko Ayurved aur Vedo ka gyaan nahi, Charak, Sushrut, Dhanvantri aur Chyawanrishi ki parampara ke anuroop, original Chyawanprash kaise bana payenge?” (translated: “Those who lack knowledge of Ayurveda and the Vedas, how can they prepare original Chyawanprash in accordance with the traditions of Charak, Sushrut, Dhanvantri, and Chyawanrishi?”). It further claimed that Patanjali’s product, made with 51 precious herbs, was superior to “ordinary” Chyawanprash, which the plaintiff argued indirectly targeted Dabur’s product, widely advertised as containing “40+ herbs.” The print advertisements echoed this narrative, questioning, “Why settle for ordinary Chyawanprash made with 40 herbs?” and positioning Patanjali’s product as superior. 

Dabur contended that these claims falsely suggested that other manufacturers, including itself, lacked the requisite Ayurvedic knowledge, thereby misleading consumers and violating regulatory standards. Patanjali defended the advertisements as permissible puffery, arguing that they highlighted their product’s positive attributes without directly referencing Dabur’s product.

Procedural Background:Dabur initiated the suit seeking a permanent and mandatory injunction against Patanjali’s advertisements, along with damages for disparagement. Concurrently, Dabur filed two interim applications: I.A. 49744/2024 to stay the Hindi TVC and print advertisements, and I.A. 419/2025 to stay the English print advertisements. The Delhi High Court, heard arguments from both parties. 

Dabur’s counsel argued that the advertisements constituted specific and generic disparagement by portraying Dabur’s product as inferior and misleading consumers about the authenticity of other Chyawanprash products. Patanjali’s counsel countered that the advertisements were within the bounds of commercial free speech under Article 19(1)(a) of the Constitution, asserting that no specific reference was made to Dabur’s product and that the claims were mere puffery. The court reviewed the advertisements’ content, relevant statutory provisions, and judicial precedents before issuing its interim ruling.

Legal Issue: The central legal issue was whether Patanjali’s advertisements for 'Patanjali Special Chyawanprash' constituted disparagement of Dabur’s 'Dabur Chyawanprash' and the Chyawanprash product category, and whether such advertisements were permissible under the Drugs and Cosmetics Act, 1940, and the principles governing comparative advertising. The court had to determine if the advertisements’ claims, particularly the use of “ordinary” and the implication that other manufacturers lacked Ayurvedic knowledge, were misleading, untruthful, or disparaging, and whether they warranted interim injunctive relief?

Discussion on Judgments:The court extensively relied on judicial precedents to frame its analysis of disparagement and comparative advertising. Dabur cited Colgate Palmolive Company and Anr. v. Hindustan Unilever Ltd., 2013 SCC OnLine Del 4986, where the Delhi High Court held that advertisements must convey a truthful message, particularly when the reputation of a competitor’s product is at stake. In that case, the court found that a claim of “130% better” cavity protection was a serious factual assertion requiring substantiation, not mere puffery, emphasizing that untruthful comparisons are impermissible. Dabur also referenced Gillette India Limited v. Reckitt Benckiser (India) Private Limited, 2018 SCC OnLine Mad 1126, where the Madras High Court underscored that pecuniary compensation is inadequate for disparagement, and interim injunctions are justified when a strong prima facie case is established. This precedent supported Dabur’s plea for injunctive relief over monetary remedies.

Patanjali relied on Havells India Ltd. & Anr. v. Amritanshu Khaitan, 2015 SCC OnLine Del 8112, arguing that advertisements not specifically targeting a competitor’s product are permissible puffery. The court distinguished this case, noting that it involved non-medical products, unlike the regulated Ayurvedic drugs in the present dispute. Patanjali also cited Marico Limited v. Adani Wilmar Ltd., 2013 SCC OnLine Bom 386, where the Bombay High Court found no disparagement in advertisements for cooking oil that did not claim the plaintiff’s product was inferior. The Delhi High Court again distinguished this case, emphasizing the stricter scrutiny required for medicinal products under the Drugs and Cosmetics Act.

The court further considered Reckitt Benckiser (India) Pvt. Limited and Another v. Wipro Enterprises (P) Limited, 2016 SCC OnLine Del 3376, which clarified that while advertisers may embellish their product’s qualities, they cannot claim competitors’ products are inferior. This case reinforced the distinction between permissible comparative advertising and impermissible disparagement. Additionally, Godrej Sara Lee Ltd. v. Reckitt Benckiser (I) Ltd., 2006 SCC OnLine Del 351, was cited to establish that disparaging an entire product class, even without naming a specific competitor, is actionable. The court also referenced Reckitt & Colman of India Ltd. v. Kiwi T.T.K. Ltd., 1996 SCC OnLine Del 178, to affirm that ridiculing or condemning a competitor’s product constitutes disparagement, even if done indirectly. These judgments collectively guided the court’s assessment of the advertisements’ truthfulness and impact on consumers.

Reasoning and Analysis of the Judge: The court's analysis centered on the legal and regulatory framework governing Ayurvedic drugs and the principles of comparative advertising. The court noted that Chyawanprash, as an Ayurvedic drug under Section 3(a) of the Drugs and Cosmetics Act, 1940, must be manufactured in accordance with formulae in authoritative texts listed in the First Schedule. The Act does not mandate that manufacturers possess specific Ayurvedic knowledge beyond adherence to these formulae, rendering Patanjali’s claim that other manufacturers lack such knowledge false and misleading. 

The court found that the TVC’s narrative, delivered by Mr. Ramdev, a recognized figure in Ayurveda, suggested that competitors’ products were not authentic, constituting generic disparagement of the Chyawanprash category. The print advertisements’ reference to “ordinary Chyawanprash made with 40 herbs” was deemed a direct attack on Dabur’s product, given its well-known marketing as containing “40+ herbs.”

The court distinguished puffery from disparagement, noting that puffery involves exaggerated claims not taken seriously by consumers, whereas disparagement involves false or misleading statements that harm a competitor’s reputation. The use of “ordinary” was held to convey a negative impression of inferiority, unsupported by evidence, especially since all licensed Chyawanprash complies with statutory standards. The court emphasized that advertisements for regulated drugs face stricter scrutiny due to their potential to influence public health and economic behavior. Citing the Ministry of AYUSH’s 2021 notification on misleading advertisements, the court underscored the need to protect consumers from deceptive claims about Ayurvedic drugs.

The court applied the “reasonable man” test from Reckitt Benckiser v. Wipro Enterprises, assessing the advertisements from the perspective of an average consumer who is neither naive nor unduly suspicious. It concluded that the advertisements’ overall effect was to mislead consumers into believing that only Patanjali’s product was authentic, thereby disparaging competitors. The court also considered the balance of convenience and irreparable harm, finding that pecuniary compensation would not suffice for reputational damage caused by disparagement, as supported by Gillette v. Reckitt Benckiser. The interim relief sought was deemed necessary to prevent ongoing harm pending the trial.

Final Decision:The Delhi High Court granted interim relief, restraining Patanjali from publishing the impugned TVC and print advertisements. The court directed Patanjali to remove specific disparaging phrases from the TVC, including “Jinko Ayurved aur Vedo ka gyaan nahi…” and “Toh ordinary Chyawanprash kyu,” and similar references in the print advertisements cautioning against “ordinary Chyawanprash with 40 herbs.” Patanjali was permitted to continue the advertisements after these modifications. The court clarified that issues such as the use of “special,” claims about 51 herbs, and the presence of mercury in Patanjali’s product were reserved for trial. 

Law Settled in This Case: This case reinforces the legal principle that comparative advertising, while permissible under the Trade Marks Act, 1999, and Article 19(1)(a) of the Constitution, must not cross into disparagement by making false or misleading claims about competitors’ products. For regulated products like Ayurvedic drugs under the Drugs and Cosmetics Act, 1940, advertisements face stricter scrutiny to prevent deception that could affect public health. The court clarified that disparagement includes both specific targeting of a competitor’s product and generic denigration of an entire product class. The use of terms like “ordinary” to imply inferiority, especially when unsupported by evidence, constitutes actionable disparagement. The judgment also underscores that interim injunctions are appropriate in disparagement cases where pecuniary compensation is inadequate, emphasizing the importance of protecting reputational interests pending trial.

Case Title: Dabur India Ltd. Vs. Patanjali Ayurved Ltd.:Date of Order: July 3, 2025:Case Number: CS(COMM) 1195/2024:Neutral Citation: 2025:DHC:5232:Name of Court: Delhi High Court:Name of Judge: Hon'ble Ms. Justice Mini Pushkarna

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

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

Emami Limited vs. Dabur India Limited-DB

Emami Limited vs. Dabur India Limited:: 02 July 2025:Case : A.P.O.T. No. 53 of 2025 (IA No. GA-COM 1 of 2025) arising out of IP-COM No. 18 of 2024: 2025:CHC-OS:102-DB:Court: High Court at Calcutta, Hon’ble Justice Sabyasachi Bhattacharyya and Hon’ble Justice Uday Kumar

Very Brief Facts:

Emami Limited, manufacturer of prickly heat powders “Dermi Cool” and “Navratna”, challenged an advertisement by Dabur India for its product “Cool King”, alleging that the ad disparaged Emami’s products by depicting a bottle allegedly resembling theirs as “Sadharan” (ordinary).

Procedural Background:

Initially, an ad-interim injunction was granted by the Single Judge on 11 July 2024, restraining Dabur from telecasting the advertisement that allegedly showed Emami’s bottle. On 17 January 2025, this was modified to restrain the entire advertisement instead of specific parts. Emami appealed this modification, arguing continued disparagement.

Dispute:

Whether the advertisement by Dabur, showing a generic bottle labeled “Sadharan” and subsequently replaced by Dabur’s product, amounted to disparagement of Emami’s products.

Discussion:

The Court found no direct or indirect reference to Emami’s products in the current version of the advertisement. The bottle shown was visually different in shape and color from Emami’s. The word “Sadharan” was held not to imply inferiority or to disparage specifically. The recall value argument was rejected, as the allegedly offending earlier version had not been aired for over six months. The Court emphasized that permissible comparative advertising allows highlighting one's product as superior without degrading another’s.

Decision:

The Division Bench dismissed the appeal, upheld the modified injunction order restraining the ad as a whole, and vacated interim orders. It held that no disparagement of Emami’s product had occurred and that Dabur’s commercial speech was protected under Article 19(1)(a) of the Constitution.

Sterling Irrigations Vs Bharat Industries

Sterling Irrigations Vs Bharat Industries:Date of Order: July 1, 2025:Case Number: No. 8521 of 2024:Neutral Citation: 2025:AHC:101729:Name of Court: Allahabad High Court:Name of Judge: Hon'ble Neeraj Tiwari

Facts: The petitioners-defendants published a notice on June 18, 2015, in Amar Ujala for the transfer of a registered trademark, prompting the respondent-plaintiff, Bharat Industries, to file Original Suit No. 4 of 2015 under Section 134 of the Trade Marks Act, 1999, seeking a permanent injunction. The petitioners filed a counterclaim on December 15, 2015, also seeking a prohibitory injunction. Both parties later filed rectification applications under Section 25(a) of the Act before the Registrar of Trademarks in Kolkata and Delhi.

Procedural Background: The suit and counterclaim were filed for injunctions, not trademark infringement. Issues were framed by the Commercial Court No. 2, Agra, on August 22, 2016. The respondent filed an application (No. 196-C) on March 1, 2022, to stay the counterclaim proceedings, which the petitioners opposed. The Commercial Court stayed the counterclaim proceedings on May 6, 2024, leading to the petitioners’ challenge under Article 227.

Dispute: The key issue was whether the Commercial Court’s order to stay the counterclaim proceedings under Section 124 of the Trade Marks Act, 1999, was valid, given that the suit and counterclaim were for injunctions, not trademark infringement, and whether rectification applications filed before the Registrar, instead of the High Court, justified the stay.

Discussion: The court examined whether the suit qualified as one for trademark infringement to trigger Section 124, which mandates a stay when trademark registration validity is questioned. The petitioners argued the suit and counterclaim sought injunctions, not infringement remedies, and that Section 124 was inapplicable as no validity challenge was raised. They also contended that rectification applications should have been filed before the High Court under Section 125, not the Registrar, and that the Commercial Court failed to frame issues as required under Section 124(1)(b)(ii). The respondent argued that references to “infringement” in the pleadings meant the suit should be treated as one for infringement, making Section 124 applicable, and that prior issue framing in 2016 sufficed.

The court found that the prayers in the plaint and counterclaim sought only injunctions, not validity challenges, and that Order VII Rule 7 of the CPC requires the nature of the suit to be determined by the relief clause, not general pleadings. It held that Section 124 was inapplicable, and even if applicable, the Commercial Court erred by not framing issues before staying proceedings. Additionally, rectification applications filed before the Registrar were deemed non-maintainable under Section 125, as they should have been filed before the High Court, and no referral to the High Court had occurred.

Decision: The Allahabad High Court set aside the Commercial Court’s order dated May 6, 2024, finding it unsustainable. The court ruled that the suit and counterclaim were for injunctions, not trademark infringement, rendering Section 124 inapplicable. It further held that the rectification applications before the Registrar were invalid under Section 125, and the Commercial Court’s failure to frame issues before staying proceedings violated Section 124(1)(b)(ii). The impugned order was quashed, allowing the suit to proceed.

Vivienda Luxury Homes LLP Vs. Gregory & Nicholas

Vivienda Luxury Homes LLP Vs. Gregory & Nicholas:Date of Order: 27 June 2025:Writ Petition No. 237 of 2025(F):2025:BHC-GOA:1048:High Court of Bombay at Goa:Hon’ble Ms. Justice Nivedita P. Mehta:Para 26

Facts: The petitioner, Vivienda Luxury Home, sought to purchase a property from respondents Gregory and Nicholas for Rs. 8.05 crore to develop their business. Negotiations began in November 2003, leading to an oral agreement. The petitioner’s lawyer conducted due diligence, and the petitioner paid Rs. 73.16 lakh for stamp duty, registration, and other fees. Respondent no. 2, the designated partner for the sale, informed the petitioner on May 11, 2024, that respondent no. 3’s presence was needed for registration, which did not occur. The respondents failed to attend rescheduled registration dates on June 4 and 10, 2024, prompting the petitioner to allege a breach of the oral agreement.

Procedural Background: The petitioner filed Commercial Suit No. 20/2024/B, seeking a declaration of a valid oral agreement and specific performance or, alternatively, Rs. 8 crore in damages with 18% interest. The Trial Court granted interim relief on June 13, 2024, maintaining the status quo regarding third-party rights in the property. The respondents filed an application under Order VII Rule 10 of the Code of Civil Procedure, 1908, for return of the plaint, arguing the dispute was not commercial under the Commercial Courts Act, 2015. The petitioner responded on October 4, 2024, asserting the dispute’s commercial nature and filed an amendment application on October 5, 2024, to clarify jurisdictional facts. The Trial Court prioritized the return of plaint application over the amendment application, leading to the impugned order.

Dispute: The core issue was whether the Trial Court, a Commercial Court, had subject-matter jurisdiction to hear the suit, given the respondents’ claim that the dispute over the property sale was not commercial as the property was not “actually used” for trade or commerce, per section 2(1)(c)(vii) of the Commercial Courts Act, 2015. The petitioner argued the suit was commercial and sought to amend the plaint to clarify jurisdiction, while the respondents contended that a court lacking jurisdiction could not entertain an amendment application.

Discussion: The court examined whether the Trial Court’s decision to prioritize the return of plaint application over the amendment application was valid. The petitioner argued that procedural rules should not defeat justice and that amendments to clarify jurisdiction should be allowed. The respondents, citing precedents like Ambalal Sarabhai Enterprises Ltd., argued that only disputes involving property “actually used” for commerce qualify as commercial, and a court lacking jurisdiction cannot entertain amendments. The court distinguished between territorial and subject-matter jurisdiction, noting that subject-matter jurisdiction is fundamental to a suit’s validity. It held that a court without subject-matter jurisdiction cannot adjudicate or allow amendments to confer jurisdiction, as such orders would be null. The court found no infirmity in the Trial Court’s reasoning, emphasizing that the chronological order of applications and the foundational nature of jurisdictional issues justified prioritizing the return of plaint application.

Decision: The court upheld the Trial Court’s impugned order, finding no error in deciding the return of plaint application before the amendment application. It clarified that subject-matter jurisdiction is critical, and amendments cannot cure its absence if the plaint lacks essential jurisdictional facts.

Coromandel Indag Products India Ltd. Vs. Sumitomo Chemical Company Ltd.

Case Title: Coromandel Indag Products India Ltd. Vs. Sumitomo Chemical Company Ltd. & Anr.:Date of Order: 03 July 2025:Case Number: CS(COMM) 441/2023:2025:DHC:5192:High Court of Delhi at New Delhi:Hon’ble Mr. Justice Amit Bansal

Very brief facts: The plaintiff, Coromandel Indag Products India Ltd., part of the Coromandel Group, filed a suit seeking permanent injunction against the defendants to restrain them from using the trademark PADAN and its packaging, claiming proprietary rights and alleging infringement and passing off. The plaintiff contended it had used the mark PADAN continuously since 1988 and created original artistic packaging in 2006.

Procedural background: The defendants filed an application under Order VII Rule 11 CPC seeking rejection of the plaint on grounds that the plaintiff lacked locus standi and had no cause of action. After hearing arguments and considering written submissions, the court reserved judgment.

Dispute: Whether the plaintiff had the locus standi and a valid cause of action to sue the defendants for infringement and passing off concerning the mark PADAN and related packaging, despite not being the licensee, proprietor, or actual user.

Discussion: The court analysed documents and pleadings to establish that the plaintiff was neither the registered proprietor nor licensee of the mark PADAN. The actual license and use belonged to Coromandel Agrico Pvt. Ltd. (CAPL), a separate legal entity undergoing insolvency. The court further observed that any goodwill or sales figures submitted related to CAPL, not the plaintiff, and that the packaging copyright was also assigned to CAPL, with no assignment to the plaintiff.

Decision: The court held that the plaint disclosed no cause of action, and the plaintiff lacked locus standi. The suit was rejected under Order VII Rule 11 CPC, and all pending applications were disposed of.

Communication Components Antenna Inc. Vs. ACE Technologies Corp:DB

Suits by Foreign Plaintiffs and the Mandate of Security for Costs: Law, Limits, and Interpretations

Introduction: This case revolves around the interpretation of the proviso to Order XXV Rule 1(1) of the Code of Civil Procedure, 1908 (CPC), particularly in the context of whether courts are mandatorily required to direct a foreign-residing plaintiff without sufficient immovable property in India to furnish security for costs. The issue arose in a commercial suit concerning intellectual property rights, and the matter was referred to a Division Bench of the Delhi High Court to reconcile conflicting decisions by Coordinate Benches on the interpretation of this provision.

Factual Background:The plaintiff, Communication Components Antenna Inc., a company based outside India, filed a suit for protection of intellectual property rights against ACE Technologies Corp. and others. During the course of proceedings, the defendants filed an application under Order XXV Rule 1(1) CPC, seeking a direction for the plaintiff to furnish a security of ₹8 crores towards the costs likely to be incurred by the defendants.

The plaintiff did not possess any immovable property in India apart from the property in suit. This triggered the proviso to Order XXV Rule 1(1) CPC. However, due to diverging judicial interpretations on whether this proviso was mandatory or discretionary, the learned Single Judge referred the matter to a larger bench for authoritative adjudication.

Procedural Background:The Single Judge of the Delhi High Court, upon being confronted with conflicting judgments on the nature of the proviso to Order XXV Rule 1(1) CPC, referred the matter to the Division Bench on 10.01.2023. 

Legal Issue: The primary issues for determination before the Division Bench were: Whether it is mandatory for the court to direct a plaintiff residing outside India and not possessing sufficient immovable property in India to furnish security for costs under the proviso to Order XXV Rule 1(1) CPC.?Whether the proviso to Order XXV Rule 1(1) CPC applies only to suits relating to immovable property?

Discussion on Judgments: The parties referred to a number of judgments in support of their positions:

S.A. Brothers & Co. v. John Bartholomow & Sons Ltd., 2000 SCC OnLine Del 854 Cited by the defendants, this case supported the view that the proviso to Order XXV Rule 1(1) is mandatory where the plaintiff resides outside India and lacks sufficient immovable property.

Kiran Shoes Manufacturers v. Welcome Shoes Pvt. Ltd., 2017 SCC OnLine Del 6590 Also relied on by the defendants, the Court held that the proviso is couched in mandatory terms and applicable in cases involving a foreign-residing plaintiff with insufficient property in India.

Alberto-Culver USA Inc. v. Nexus Health & Home Care (P) Ltd., 2009 SCC OnLine Del 2818 Cited by the plaintiff to argue that the proviso is discretionary. The Court in that case had held that the provision does not mandate security for costs in every case involving a foreign plaintiff.

Millennium & Copthorne International Ltd. v. Aryans Plaza Services Pvt. Ltd., 2018 SCC OnLine Del 8260 Relied upon to argue that the proviso only applies to suits involving immovable property, as it mentions “immovable property within India other than the property in suit.”

Iridium India Telecom Ltd. v. Motorola Inc., (2005) 2 SCC 145 Used by the plaintiff to argue that High Court rules framed under Section 129 CPC would override CPC provisions if inconsistent. However, the Division Bench found no such inconsistency.

Shailesh Dhairyawan v. Mohan Balkrishna Lulla, (2016) 3 SCC 619 Cited to argue that the word “shall” may be construed as “may” in context and does not always indicate a mandatory provision.

Vijay Dhanuka v. Najima Mantaj, (2014) 14 SCC 638 and Deewan Singh v. Rajendra Pd. Ardevi, (2007) 10 SCC 528 Cited by the Bench to affirm the mandatory nature of the term “shall” when used in a statutory provision unless clearly stated otherwise.

Revlon Inc. v. Kemco Chemicals, 1987 SCC OnLine Cal 39, Hearst Corporation v. Dalal Street Communications Ltd., 1995 SCC OnLine Cal 231, and Gotham Entertainment Group LLC v. Diamond Comics (P) Ltd., 2009 SCC OnLine Del 4383 These supported the mandatory reading of the proviso to protect Indian defendants from vexatious litigation by foreign plaintiffs.

Reasoning and Analysis of the Judge:The Division Bench conducted a comprehensive analysis of Order XXV Rule 1(1) and its proviso. It held that the main clause uses the word “may”, granting discretion to the Court. However, the proviso is expressed in mandatory terms using the word “shall”, which indicates that the Court must order security for costs in cases where a foreign-residing plaintiff does not possess sufficient immovable property in India, apart from the property in suit.

The Bench rejected the argument that the proviso became obsolete due to the Delhi High Court (Original Side) Rules, 2018. It held that there was no repugnancy between those Rules and the CPC. It also rejected the argument that the proviso violated obligations under the TRIPS Agreement, noting that the domestic provision continues to apply unless repealed or amended by the legislature.

Importantly, the Court interpreted the phrase “immovable property within India other than the property in suit” to mean that the proviso applies only to suits involving immovable property. Accordingly, the Court clarified that in suits not involving immovable property—such as intellectual property disputes—the proviso does not apply.  Finally, the Court concluded that even when the proviso applies, the quantum of security remains at the Court’s discretion based on the facts and circumstances of the case.

Final Decision: The Division Bench answered the reference as follows: The proviso to Order XXV Rule 1(1) CPC is mandatory where the plaintiff resides outside India and does not possess sufficient immovable property in India other than the property in suit. The proviso applies only to suits involving immovable property.  The court retains discretion regarding the quantum of security for costs. The matter was directed to be listed before the Roster Bench for further proceedings in accordance with this authoritative pronouncement.

Law Settled in This Case:This case authoritatively settles the following propositions:The proviso to Order XXV Rule 1(1) CPC is mandatory in cases involving a foreign-residing plaintiff who lacks sufficient immovable property in India, but only in suits relating to immovable property. The Court retains discretion regarding the amount of security for costs, even when the proviso applies. There is no repugnancy between the CPC and the Delhi High Court (Original Side) Rules, 2018 on this subject. International treaty obligations, such as those under TRIPS, do not override clear statutory provisions unless implemented through legislative amendment.

Case Title: Communication Components Antenna Inc. Vs. ACE Technologies Corp. and Ors.: Date of Order: 01 July 2025:Case Number: CS (COMM) 1222/2018:Neutral Citation: 2025:DHC:5139-DB:Name of Court: High Court of Delhi:Name of Judges: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

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 Delhir Kaur

VIP Industries Ltd Vs. Carlton Shoes Ltd

Territorial Goodwill and the Limits of Passing Off

Introduction: The case of VIP Industries Ltd v. Carlton Shoes Ltd & Anr., decided by the Division Bench of the Delhi High Court, is a significant pronouncement in the domain of trademark law, particularly in determining the parameters of passing off where multiple registered proprietors of an identical mark co-exist. It presents a complex legal conflict involving cross-suits by two entities, each asserting goodwill and prior user rights over the trademark “CARLTON” in respect of goods under Class 18. The judgment settles the essential question of whether goodwill in a mark can be claimed generically or must be tied specifically to the goods/services concerned.

Factual Background: Carlton Shoes Ltd (CSL), a footwear brand, claimed adoption and use of the trademark “CARLTON” in India since 1994 through its registration for various goods under Class 18, including bags and luggage, although its use had been predominantly for footwear and accessories. VIP Industries Ltd (VIP), a reputed manufacturer of luggage products, acquired rights over the CARLTON mark from a UK-based entity (Carlton International PLC) via an Assignment Agreement in 2004. Since then, VIP asserted that it had been using the CARLTON mark exclusively for travel luggage, suitcases, and related goods, accruing considerable goodwill in the Indian market.

The dispute arose when CSL initiated plans to extend its use of the CARLTON mark to travel luggage. VIP objected, claiming exclusive goodwill in the luggage segment under that mark, which led to cross-suits asserting rights and seeking injunctive reliefs against each other’s use of “CARLTON”.

Procedural Background

CSL filed CS (Comm) 730/2019 seeking a permanent injunction against VIP from using “CARLTON” for goods in Class 18, relying on its prior registration and user in India. VIP responded with CS (Comm) 52/2020, requesting a similar injunction to prevent CSL from using “CARLTON” for bags and luggage. Both parties filed applications under Order XXXIX Rules 1 and 2 CPC seeking interim reliefs pending trial.

By the impugned order dated 17 July 2023, the learned Single Judge dismissed VIP’s interim injunction application and granted interim relief to CSL, restraining VIP from using the CARLTON mark for luggage and allied goods. VIP preferred two appeals: FAO(OS)(COMM) 151/2023 and FAO(OS)(COMM) 152/2023 before the Division Bench of the Delhi High Court.

Legal Issue: The central issue before the Court was whether goodwill for the purpose of a passing off action attaches to the mark generally or to the mark as used for particular goods? Additionally, the Court examined whether VIP, as a later user in India, could restrain CSL from using the mark for luggage, when CSL was the first user in India, albeit in a different product category.

Discussion on Judgments:  The parties referred to various precedents to buttress their respective positions on trans-border reputation, territoriality of trademark rights, and the essentials of a passing off claim.

VIP cited Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, and Neon Laboratories Ltd v. Medical Technologies Ltd, (2016) 2 SCC 672, to emphasize the principle of “first in the market” and to support its claim of prior user through its predecessor internationally, and domestically since 2004.

They also relied on Beiersdorf AG v. Ajay Sukhwani, 2008 SCC OnLine Del 1226, and Mittal Electronics v. Sujata Home Appliances Pvt. Ltd., 2020 SCC OnLine Del 2658, to argue that goodwill must be shown in the mark specifically for the goods concerned—in this case, travel luggage.

CSL placed heavy reliance on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, where the Supreme Court clarified that trans-border reputation alone is insufficient to claim passing off; the mark must have goodwill in India at the relevant time. CSL also cited S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, to assert the precedence of territorial use in passing off actions.

The Court further referred to the principles enunciated by Lord Diplock in Erven Warnink BV v. J. Townend & Sons (Hull) Ltd., [1979] 2 All ER 927, to define the foundational ingredients of a passing off claim: misrepresentation, damage to goodwill, and likely deception among average consumers.

Reasoning and Analysis of the Judge:  The Division Bench agreed with the learned Single Judge’s core findings. It held that since both parties were registered proprietors of the CARLTON mark under Class 18, neither could claim exclusive rights against the other under Section 28(3) of the Trade Marks Act, 1999. The controversy, therefore, was to be resolved purely on the principles of passing off.

On the issue of trans-border reputation, the Court reiterated the territoriality principle as settled in Toyota Jidosha. It concluded that VIP had not placed sufficient material to show spillover of reputation in India before 2004, i.e., before it began domestic use of the CARLTON mark. It found VIP’s evidence of foreign advertising and brand recognition to be weak in demonstrating substantial awareness among Indian consumers.

More crucially, the Court ruled that CSL had substantiated its claim of goodwill in India from as early as 2003, supported by sales invoices, marketing in Indian publications, and a presence on Indian e-commerce platforms. The Bench dismissed VIP’s argument that goodwill must be tied to the specific product (luggage) rather than the mark itself, noting that CSL had, at the very least, established goodwill in the CARLTON mark for accessories falling under Class 18, including handbags, thereby making the likelihood of confusion real and imminent.

The Court emphasized that passing off is a tort rooted in protecting goodwill from misrepresentation, and since CSL had shown prior commercial use of the mark in India, VIP’s use, even if innocent, would amount to misrepresentation likely to cause confusion.

It further rejected VIP’s allegation of CSL’s dishonest intent, noting that CSL had earlier rights and that VIP’s claim of launching “Carlton” luggage in 2004 was not convincingly supported by contemporaneous evidence. On the contrary, VIP’s own annual reports suggested a “soft launch” of Carlton luggage only in 2010-11.

The Bench also declined to grant relief to VIP on the grounds of delay or balance of convenience. It held that the iniquitous consequence VIP complained of—being injuncted despite longer usage for luggage—was a result of its own inability to establish goodwill prior to CSL’s user.

Final Decision:  The Division Bench upheld the decision of the learned Single Judge. It dismissed VIP’s appeals (FAO(OS)(COMM) 151/2023 and FAO(OS)(COMM) 152/2023), thereby maintaining the interim injunction against VIP. Consequently, VIP is restrained from marketing or selling bags and related goods under the CARLTON mark in Class 18, while CSL is permitted to continue its use.

Law Settled in This Case: This judgment reinforces the principle that in a passing off action between proprietors of the same registered mark under Section 28(3), priority of goodwill and actual territorial use in India determines the right to injunctive relief. The Court clarified that goodwill in a mark need not always attach to a specific sub-category of goods if confusion is likely to arise. The territoriality principle remains dominant, and trans-border reputation must be backed by evidence of actual recognition in India. The ruling also underscores that misrepresentation, even if innocent, may support a claim of passing off if confusion is probable and goodwill exists.

Case Title: VIP Industries Ltd Vs. Carlton Shoes Ltd & Anr.:  Date of Order: 1 July 2025:  Case Number: FAO (OS) (COMM) 151/2023 & FAO (OS) (COMM) 152/2023:Neutral Citation: 2025:DHC:5042:DB:Court: High Court of Delhi at New Delhi:Coram: Justice C. Hari Shankar and 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

Modi-Mundipharma Pvt. Limited Vs. Speciality Meditech Pvt. Ltd

Modi-Mundipharma Pvt. Limited Vs. Speciality Meditech Pvt. Ltd. : July 01, 2025:RFA(OS)(COMM) 8/2023:2025:DHC:5039-DB:High Court of Delhi:Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

The appellant, Modi-Mundipharma Pvt. Ltd., filed a suit alleging that the respondents’ use of the mark FEMICONTIN infringed its registered trademarks FECONTIN-F and CONTIN, part of its “CONTIN family of marks” used for pharmaceutical products, claiming long-standing use and market reputation. The respondents contended that CONTIN was descriptive, that the rival marks were visually and phonetically different, and that FEMICONTIN originated from “FE” denoting iron and “CONTIN” suggesting continuous release, a common industry term.

Procedurally, the appellant had previously filed suits in other forums, withdrawn them due to jurisdictional objections, and finally pursued the present suit, which was dismissed by the learned Single Judge on March 23, 2023. The appellant then filed this appeal under the Commercial Courts Act, 2015.

The dispute centered on whether the appellant could claim exclusive rights over the mark CONTIN either as a standalone mark or within a family of marks, and whether the respondents’ use of FEMICONTIN infringed FECONTIN-F or amounted to passing off.

In discussion, the Court noted the appellant had not used CONTIN as a standalone mark and that “FE” was a descriptive prefix relating to iron, while “CONTIN” referred to the drug’s continuous release feature. The Court emphasized that descriptive or generic parts of a mark cannot be monopolized, drawing from judgments like Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 and Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448. It found that FEMICONTIN and FECONTIN-F differed in composition, packaging, price, and appearance, reducing the likelihood of confusion.

The Court ultimately upheld the learned Single Judge’s dismissal of the suit, holding that the appellant failed to establish infringement or passing off. It noted the mark CONTIN was never used per se by the appellant and the descriptive elements could not be exclusively claimed.

Kabushiki Kaisha Toyota Jidoshokki Vs. LMW Limited

Kabushiki Kaisha Toyota Jidoshokki Vs. LMW Limited:July 01, 2025:CS(COMM) 881/2024:2025:DHC:5122:High Court of Delhi:Hon’ble Mr. Justice Saurabh Banerjee

The plaintiff, a Japanese company and owner of Indian Patent IN244759 titled “Fiber Bundle Concentrating Apparatus in Spinning Machine,” alleged that the defendant’s spinning machine product “Spinpact” infringed its patented technology by using bottom nip rollers with grooves of depth greater than 0.04mm, matching the patented claims. The plaintiff had filed a suit seeking a permanent injunction against the defendant’s manufacture and sale of the allegedly infringing product.

Procedurally, the plaintiff filed an interim application under Order XXXIX Rules 1 and 2 CPC for injunction during the pendency of the suit. The defendant contested the application, raised counterclaims challenging the validity of the patent for lack of novelty and inventive step, and argued that the patent had already expired on May 24, 2025, which made the injunction futile.

The dispute centered on whether the plaintiff could secure an interim injunction to restrain the defendant’s alleged infringement despite the patent’s expiry, and whether the claimed invention involved sufficient inventive step over prior art.

In discussion, the Court noted that under Section 53 of the Patents Act, once a patent expires, its subject matter enters the public domain and cannot be protected further. The Court relied on the Supreme Court’s decision in Novartis AG & Anr. v. Natco Pharma Limited, SLP(C) No.16237/2024, which held that post-expiry of a patent, it is unnecessary to adjudicate interim injunction applications on merits, as injunctions would become legally ineffective.

The Court dismissed the application for interim injunction, holding that after expiry of the patent, the plaintiff could not restrain others from using the patented technology, though the plaintiff remained entitled to prove past infringement during the patent’s subsistence and claim damages. The Court directed the defendant to file an affidavit disclosing details of products made before expiry, to assist in final adjudication.

Amazon Technologies Vs Lifestyle Equities

Amazon Technologies Vs Lifestyle Equities:July 01, 2025:RFA(OS)(COMM) 11/2025: 2025:DHC:5036-DB: High Court of Delhi: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

The appellant, Amazon Technologies Inc, challenged a judgment where the Single Judge awarded Lifestyle Equities CV and its group damages of ₹336 crores for alleged trademark infringement concerning the use of a polo player logo mark on apparel sold under Amazon’s private label ‘Symbol’ through Cloudtail on Amazon India’s platform. The claim in the original plaint had been for ₹2 crores, which was never formally amended.

Procedurally, Amazon Technologies was proceeded ex parte after allegedly being served, though the service itself and the manner of proceeding were contested. The trial, recording of evidence, and final submissions happened entirely in the absence of Amazon, with only the plaintiff present. The Single Judge ultimately passed a decree against Amazon Technologies for ₹336 crores plus costs, based solely on the plaintiff’s evidence and post-argument written submissions that significantly enhanced the damages claim, without any formal amendment to the pleadings.

The dispute centered on whether it was legally permissible to award damages vastly beyond what was pleaded, and whether Amazon Technologies, which claimed only to have licensed its ‘Symbol’ mark to Cloudtail, could be held liable for infringing products where Cloudtail had admitted unilateral responsibility.

In discussion, the Division Bench highlighted that the entire trial and award process violated principles of natural justice, as the decree was passed in the absence of the main defendant, based on new claims that were neither pleaded nor proven through contested evidence. The Court emphasized that the damages claim could not be expanded from ₹2 crores to ₹336 crores through written submissions alone, without amendment and without giving the absent defendant a chance to respond.

The Court stayed the operation of the decree, including the requirement to furnish security, finding this to be an exceptional case where enforcing the decree pending appeal would cause substantial injustice.

Dong Yang PC, Inc. Vs. Controller of Patents and Designs

When Simplicity Becomes Innovation: Examination of Section 2(1)(ja) of the Patents Act 1970

Introduction: This case concerns the appeal filed by Dong Yang PC, Inc. against the Controller of Patents and Designs under Section 117A of the Patents Act, 1970. The dispute revolves around the refusal of the appellant's patent application for a “Vertical Rotary Parking System” on grounds of lacking an inventive step under Section 2(1)(ja) of the Act. The key issue is whether the subject invention represents a true technical advancement or is merely a workshop modification of an earlier patent (D-5) by the same applicant.

Factual Background: Dong Yang PC, Inc. filed an Indian Patent Application (No. 2554/DEL/2013) on August 29, 2013, for a “Vertical Rotary Parking System” designed to optimize parking in narrow spaces. The application underwent examination and received its First Examination Report (FER) in August 2018, to which the appellant replied in January 2019.

Subsequently, a pre-grant opposition was filed by Parkerbot India Pvt. Ltd., citing prior art documents D-1 to D-4. A hearing was scheduled in November 2023. Just days before the hearing, the opponent introduced an additional document—D-5—which was not part of the original opposition.

Despite the opponent's absence at the hearing, the Controller relied heavily on D-5 to reject the patent application, claiming that the subject invention lacked inventive step, was obvious to a person skilled in the art, and did not qualify as an “invention” under Section 2(1)(ja) of the Act.

Procedural Background:  The patent application was rejected by the Controller of Patents and Designs on April 12, 2024, under Section 15 of the Patents Act. The grounds cited were lack of inventive step, mere reversal of male and female coupling components, and rejection of an amendment request filed under Form-13. Aggrieved, the appellant challenged the decision before the High Court of Delhi by filing C.A. (COMM.IPD-PAT) 60/2024 under Section 117A of the Patents Act. The matter came up for hearing before Hon’ble Ms. Justice Mini Pushkarna.

Legal Issue:The central legal issues for determination were: Whether the subject invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970?Whether the Controller erred in rejecting the amendment of specifications under Form-13?

Discussion on Judgments:

1. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511

Cited by the Respondent to assert that mere workshop modifications or mechanical alterations without technical advancement do not qualify for patent protection. The Supreme Court had held that if the invention is obvious and lacks novelty, it cannot be patented.

2. Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659

Relied upon by the Appellant and discussed by the Court, this case emphasized that even simple inventions, if novel and offering technical advancement, are patentable. The Court highlighted that a significant time gap between the prior art and the current invention may suggest non-obviousness.

3. AGFA NV v. Assistant Controller of Patents and Designs, 2023 SCC OnLine Del 3493

This case discussed the requirements for establishing "common general knowledge". It held that the Controller must cite specific sources and prove that such knowledge existed prior to the filing date.

4. Opentv INC v. Controller of Patents and Designs, 2023 SCC OnLine Del 2771

The Court held that amendments to patent claims can be allowed at the appellate stage as long as they fall within the scope of the original claims and comply with Section 59 of the Act.

5. Knoll Pharmaceutical Company, Inc. v. Teva Pharmaceuticals U.S.A., Inc., 367 F.3d 1381 (Fed. Cir.)

Referenced for the principle that post-filing data may be submitted to support patent validity if consistent with the originally disclosed invention.

6. Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291 (Fed. Cir.)

Reinforced the rule that post-filing evidence of unexpected results is admissible when consistent with the disclosure in the patent application.

Reasoning and Analysis of the Judge: The court held that the Controller’s decision lacked adequate reasoning on why the modification of the coupling elements was obvious or devoid of technical advancement. The Court noted that simplicity does not negate patentability, and that the alleged interchange of male and female coupling parts resulted in significant improvements including lower noise, better safety, and reduced friction.The Judge also found fault with the Controller's rejection of the Form-13 amendment application. Since document D-5 was not cited in the FER and was introduced only later, the appellant had a right to amend the specification and explain the inventive step. Denial of this amendment was a violation of the principles of natural justice.Further, the Controller’s reliance on “common general knowledge” was not supported by any documentation or expert testimony, which undermined the validity of the refusal.The Court accepted the technical evidence affidavit dated 05.07.2024 submitted by the appellant, emphasizing that post-filing evidence is admissible if consistent with the original invention and helpful in establishing its technical merits.

Final Decision: The High Court of Delhi set aside the impugned order dated April 12, 2024. The matter was remanded to the Controller of Patents and Designs for de novo consideration. The patent application was restored and a fresh hearing was directed to be conducted by a different officer. The Controller was instructed to pass a reasoned order within four months, uninfluenced by the previous decision.

Law Settled in This Case: This case reinforces several important principles in Indian patent jurisprudence:  Simple inventions are not necessarily obvious and may still qualify for patents if they provide technical advancement or economic significance.The inventive step must be analyzed not only with reference to prior art but also with substantiated evidence of “common general knowledge”.Applicants have a right to amend specifications even at the appellate stage when new prior art is introduced later in the examination process.Post-filing technical data can be considered to support claims of inventive step if aligned with the original specification.Failure to consider amendment requests and deprive an applicant of a fair hearing constitutes a violation of natural justice.

Case Title: Dong Yang PC, Inc. v. Controller of Patents and Designs:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 60/2024:Neutral Citation: 2025:DHC:5124:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

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

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

Communication Components Antenna Inc. Vs. Ace Technologies Corp

Case Title: Communication Components Antenna Inc. Vs. Ace Technologies Corp. :July 01, 2025:Case Number: CS(COMM) 1222/2018:Neutral Citation: 2025:DHC:5107:High Court of Delhi at New Delhi:Mr. Justice Saurabh Banerjee

The plaintiff, a Canadian company holding Indian Patent No.240893 for antennas used in telecommunications, filed a suit for permanent injunction alleging infringement by the defendants, including a South Korean manufacturer and its subsidiaries. The plaintiff argued that the defendants’ continued sales of allegedly infringing antennas threatened the enforceability of any decree due to their limited assets in India and the absence of a reciprocal arrangement for enforcing Indian judgments in South Korea.

Procedurally, an earlier interim order in July 2019 directed the defendants to deposit bank guarantees and sums equal to 10% of their sales. This was upheld by the Division Bench and the Supreme Court. Later, based on concerns over the financial deterioration of the defendants and risk of frustration of any future decree, the plaintiff filed the present application under Section 151 CPC, seeking an additional deposit equal to 25% of the claimed damages.

The dispute focused on whether the plaintiff was entitled to further security during the pendency of the suit, especially when the defendants had already deposited significant amounts earlier. The plaintiff stressed the risk of non-enforceability abroad and cited falling share value of defendant no.1, whereas the defendants argued they were financially stable, had already complied with previous orders, and no technical infringement had yet been proved.

In discussion, the Court analyzed the power under Section 151 CPC to protect the plaintiff’s interests when no other remedy is adequate, emphasizing that the plaintiff had established a prima facie case and balance of convenience. Relying on precedents like Deoraj v. State of Maharashtra (2004) 4 SCC 697, Nokia Technologies v. Guangdong Oppo Mobile Telecommunications Corp. Ltd., and M. Ramachandra Rao v. Varaprasad Rao, the Court held it was just to require further security to prevent the suit from becoming infructuous.

The Court ultimately directed the defendant no.1 to deposit, within four weeks, an additional amount equivalent to 25% of the claimed damages of Rs.1160 crores, amounting to Rs.290 crores, by way of bank guarantee or fixed deposit in the name of the Registrar General of the Court, besides amounts already deposited earlier.

Avient Switzerland GmbH Vs. Treadfast Ventures

Burden of Proof in Trademark Opposition

Introduction: This case involves a trademark dispute between Avient Switzerland GMBH, a global chemical manufacturer, and Treadfast Ventures, concerning the registration of the mark ‘RENOL’ in Class 2. The primary issue was whether the appellant had established prior use and proprietorship over the mark ‘RENOL’ in India, in the face of opposition by the respondent who owns the registered trademark ‘REINOL’ in Classes 1 and 3. The High Court of Delhi was called upon to assess the legality and sustainability of the order passed by the Assistant Registrar of Trade Marks rejecting the appellant’s application for the mark ‘RENOL’.

Factual Background: The trademark ‘RENOL’ was originally adopted by Clariant AG, the predecessor-in-interest of the appellant, Avient Switzerland GMBH, as far back as 1905 in Germany. The appellant claimed international use of the mark and specifically asserted use in India since December 26, 2001. An application for registration in India under Application No. 1336157 in Class 2 was filed on February 3, 2005, with a priority claim from August 11, 2004. The specification was later narrowed to colorants for resins.

In contrast, the respondent Treadfast Ventures owned the trademark ‘REINOL’, with registrations in Classes 1 and 3, dating back to 1984 and 1991. These marks were claimed to be used in India since those respective years. The respondent filed an opposition to the appellant’s application based on similarity and likelihood of confusion.

Procedural Background: The Trade Marks Registry issued an Examination Report in 2005, which did not cite the respondent’s mark as a conflicting registration. The appellant filed responses and amended the user claim to reflect use since December 2001. The mark was advertised in the Trade Marks Journal in 2016.

The respondent filed a Notice of Opposition in 2017 but later chose not to submit any evidence under Rule 45 of the Trade Marks Rules, 2017. In contrast, the appellant submitted evidence of use, including invoices dated December 16, 2001. Hearings were conducted across 2019, 2022, and 2023. On February 12, 2024, the Assistant Registrar passed the impugned order allowing the opposition and rejecting the appellant’s application, leading to the present appeal under Section 91 of the Trade Marks Act, 1999 before the Delhi High Court.

Legal Issue: The primary issues before the High Court were whether the Assistant Registrar erred in allowing the opposition and rejecting the application without proper consideration of evidence; whether the respondent’s mere registration of a similar trademark, without evidence of use, could justify refusal of the appellant’s application; and whether the marks ‘RENOL’ and ‘REINOL’ were deceptively similar in law to warrant rejection of the appellant’s mark under Section 11 of the Trade Marks Act, 1999.

Discussion on Judgments: Century Traders v. Roshan Lal Duggar & Co., FAO (OS) 46/1976, was cited by the respondent to argue that registration confers presumptive validity. The appellant countered that this case emphasizes that to claim proprietorship, a party must prove actual use, which the respondent failed to do.

Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, was invoked by the appellant to assert that mere presence of a mark on the register does not equate to proof of use or goodwill. The Supreme Court emphasized that assertions of prior rights must be backed by evidence.

Gupta Enterprises v. Gupta Enterprises & Anr., AIR 1998 Delhi 232, was relied upon by the appellant and reaffirmed by the Court to support the proposition that the burden of proof in opposition proceedings rests first on the opponent to prove use, registration, and reputation of their mark.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., MANU/SC/1619/2017, was relied on by the respondent to argue that foreign registration and use do not establish goodwill or reputation in India. The Court recognized this principle but held it did not aid the respondent’s case, as they too failed to establish use in India.

Vishnudas Trading v. Vazir Sultan Tobacco Co., (1997) 4 SCC 201, was cited to emphasize that trademark rights are not absolute or perpetual and can be challenged based on non-use or lack of genuine use, even if registered.

Patel Field Marshal Agencies v. P.M. Diesels Ltd., MANU/SC/1509/2017, was relied on by the respondent for the principle that registered trademarks enjoy presumptive validity. However, the High Court noted this presumption is rebuttable and must be tested through evidence.

Reasoning and Analysis of the Judge: The Court carefully analyzed the materials on record and found that the Assistant Registrar had failed to appreciate key aspects. Specifically, the Assistant Registrar did not consider the invoice dated December 16, 2001, evidencing the appellant’s use of the mark ‘RENOL’ in India. The respondent, on the other hand, did not file any evidence under Rule 45 to support the opposition.

The Court emphasized that while registration is prima facie evidence of validity, the burden of proof in opposition proceedings lies first with the opponent. The respondent failed to discharge this burden by not submitting even a single document to support its claim of use. The Assistant Registrar’s reliance on bare assertions in the Notice of Opposition was found legally untenable.

Furthermore, the Court rejected the assumption that marks in allied and cognate classes automatically lead to confusion. It reiterated that evidence of actual market confusion or reputation must be led. It also found the Assistant Registrar’s order lacking in reasoning and factual analysis.

The Court held that ignoring the appellant’s evidence and uncritically accepting the respondent’s unsupported claims rendered the impugned order unsustainable. It clarified that even a valid registration must be supported by active use and proof of reputation to sustain an opposition under Section 11.

Final Decision:  The Delhi High Court allowed the appeal. The impugned order dated February 12, 2024, was set aside. The matter was remanded to the Registrar of Trade Marks for a fresh adjudication of the opposition proceeding in accordance with law and on merits. The Registrar was directed to conclude the matter within six months. The Court explicitly stated that it had not expressed any view on the merits, leaving the Registrar to decide afresh.

Law Settled in This Case:  This case reaffirms critical principles of trademark law. Mere registration does not confer an absolute right to oppose another mark unless substantiated by proof of use and reputation. The burden of proof in opposition proceedings lies first with the opponent, who must lead cogent evidence. The Registrar must evaluate all evidence holistically, and not rely solely on pleadings or assertions. Foreign use and international registration do not by themselves establish user rights in India. The presence of similar marks in allied and cognate classes does not automatically warrant refusal; the test is actual likelihood of confusion, based on evidence.

Case Title: Avient Switzerland GMBH Vs. Treadfast Ventures & Anr.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-TM) 44/2024:Neutral Citation: 2025:DHC:5104: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

Kroll Information Assurance, LLC Vs. The Controller General of Patents

Computer Programme per se and the Patent Law Threshold

Introduction: This case addresses a crucial intersection in Indian patent law, focusing on whether an invention that involves software or algorithms qualifies as patentable subject matter under Section 3(k) of the Patents Act, 1970. The case of Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks engages deeply with the exclusion of “computer programme per se” and “algorithm” from the definition of inventions. The decision sheds light on the permissible scope of claim amendments under Section 59 and tests the limits of patentability of computer-implemented inventions (CIIs).

Factual Background:The appellant, Kroll Information Assurance, LLC, a U.S.-based entity, filed an Indian patent application numbered 8100/DELNP/2007, titled “A System, Method and Apparatus to locate at least one type of person, via a Peer to Peer Network.” The application was a national phase entry of a PCT application filed on April 11, 2006, claiming priority from a U.S. application dated April 12, 2005.

The invention purported to offer a technological solution for locating users (or types of persons) inadvertently or maliciously sharing sensitive information over peer-to-peer networks. The claimed invention employed specific search terms known to be associated with such content and profiled users accordingly.

Procedural Background:The application was published on July 4, 2008, and underwent examination following a request dated November 1, 2007. The First Examination Report (FER) was issued on February 19, 2013, raising objections under Sections 2(1)(j), 2(1)(ja), 3(b), 3(k), and 10(4)(c) of the Act. The appellant responded on October 22, 2013, including proposed claim amendments.

A hearing notice dated April 10, 2019, reiterated objections under Sections 2(1)(j), 3(k), and Section 59 (concerning claim amendments). Following the hearing on May 13, 2019, the Assistant Controller of Patents passed an order on June 25, 2019, rejecting the application on the following grounds: the claim amendments violated Section 59; the claimed invention lacked inventive step under Section 2(1)(j); and the subject matter was non-patentable under Section 3(k).Kroll challenged this decision under Section 117A of the Patents Act by filing an appeal before the Delhi High Court.

Legal Issue: The key issues before the Hon’ble Delhi High Court were:Whether the proposed claim amendments were permissible under Section 59 of the Patents Act, 1970?Whether the claimed invention qualified as patentable subject matter or was excluded under Section 3(k) as an “algorithm” or “computer programme per se.”Whether the Controller’s assessment of the invention’s technical contribution and inventive step was valid in law.?

Discussion on Judgments: Nippon A & L Inc. v. Controller of Patents, 2022 SCC OnLine Del 1909:Relied upon to interpret Section 59 of the Act, the Court clarified that amendments must be by way of disclaimer, correction, or explanation, and must not broaden the scope of the originally filed claims. The decision was instrumental in evaluating whether Kroll’s proposed amendments exceeded the permissible scope.

Lava International Ltd. v. Telefonaktiebolaget LM Ericsson, 2024 SCC OnLine Del 2497:Cited by the appellant to argue that software-related inventions may be patentable if they produce a technical effect or advance the functionality of hardware. This case emphasized that a mere inclusion of software elements does not automatically exclude an invention under Section 3(k).

Microsoft Technology Licensing v. Controller of Patents & Designs, 2024 SCC OnLine Del 3239:Applied by the Court to reiterate that software must result in a specific and credible technical enhancement to avoid exclusion under Section 3(k). A mere implementation of search algorithms, even on hardware, is insufficient.

Blackberry v. Controller of Patents & Designs, 2024 SCC OnLine Del 3791:Relied upon by the respondent and referred to by the Court, this case held that inventions based solely on software instructions without substantial hardware impact or technical advancement are barred under Section 3(k).

Guidelines for Examination of Computer Related Inventions (CRI Guidelines), 2017:These were used as interpretive tools to assess the subject invention’s technical contribution. The Guidelines mandate focusing on the “underlying substance” of the invention to determine patentability.

Reasoning and Analysis of the Judge: The Court first addressed the objection under Section 59. Upon a comparative reading of the originally filed claims and the amended ones, the Court found that the additional features (particularly sub-clauses iii and iv of Claim 1) narrowed the claim scope and served an explanatory purpose. These additions were found to be consistent with the complete specification and did not introduce any new matter. Consequently, the rejection under Section 59 was held to be erroneous.

However, the primary hurdle lay in the non-patentability under Section 3(k). The Court analyzed the claimed invention’s technical contribution and concluded that the invention was primarily a sequence of instructions executed by generic hardware. The search functionality and profiling based on keyword matches were seen as typical outputs of conventional computing systems.

The Court further observed that the invention did not offer any advancement or transformation of hardware capabilities. While the use of peer-to-peer networks and specific search terms was noted, these were not sufficient to demonstrate technical advancement or effect.

Drawing from the Microsoft, Lava, and Blackberry precedents, the Court held that a mere implementation of software logic or algorithms—even if practically useful—does not cross the threshold for patentability in the absence of hardware-level enhancement.

The appellant’s reliance on foreign grants (including from the USA, China, and Japan) was not found persuasive, as Indian patent law has specific statutory exclusions under Section 3(k) that are distinct from other jurisdictions.

Final Decision: The Court allowed the proposed claim amendments and overruled the Controller’s findings under Section 59. However, it upheld the Controller’s decision refusing the patent application under Section 3(k) on the ground that the claimed invention was a computer programme per se and an algorithm, with no demonstrable technical effect or hardware advancement. The appeal was accordingly dismissed.

Law Settled in This Case:This case reinforces that: Claim amendments are permissible under Section 59 if they narrow the scope and are supported by the original disclosure. For inventions involving computer programmes to be patentable in India, they must demonstrate a tangible technical effect or hardware-level transformation. Search mechanisms and profiling based on keyword logic, even when implemented via sophisticated systems, do not inherently constitute patentable subject matter under Section 3(k). The mere presence of computer implementation or general-purpose hardware does not suffice to escape the bar under Section 3(k).

Case Title: Kroll Information Assurance, LLC v. Controller General of Patents, Designs and Trademarks and Ors.:Date of Order: 01 July 2025:Case Number: C.A. (COMM.IPD-PAT) 439/2022:Neutral Citation: 2025:DHC:5096: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

Jagat Agro Commodities P Ltd Vs. Union of India

Case Title: Jagat Agro Commodities P Ltd Vs. Union of India & Ors.: Date of Order: July 01, 2025: Case Number: W.P.(C)-IPD 15/2024: Name of Court: High Court of Delhi at New Delhi: Name of Judge: Hon’ble Mr. Justice Amit Bansal

The petitioner sought directions to renew its registered trademark ‘JAGAT(DEVICE)’ bearing no.01253200 in class 30, arguing that the Registrar of Trademarks failed to issue the mandatory Form O-3 notice required under the Trade Marks Rules, 2002, to inform them of the approaching expiry of the registration. The respondents contended that the notice had indeed been issued and served on 14 October 2023 but could not produce any proof of service.

The dispute centered on whether the non-receipt of Form O-3 notice, which is mandatory under law, justified restoration and renewal of the trademark despite the petitioner’s failure to renew it on time.

In discussing the matter, the Court referred to Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors., 2017 (72) PTC 480 (Del), which held that the proprietor should not be penalized for the lapse of the Registry when it fails to follow statutory procedure.

The Court also cited CIPLA Limited v. Registrar of Trade Marks & Ors., 2013 (56) PTC 217 (Bom) (DB); Union of India and Ors. v. Malhotra Book Depot, 2013 (54) PTC 165 (Del) (DB); and Gopal Ji Gupta v. Union of India, 2019 SCC OnLine Del 7670, reaffirming that issuing Form O-3 is mandatory before any adverse action is taken. Additionally, the Court noted its own similar order in M/S Zine Davidoff S.A v Union Of India And Anr, W.P.(C)-IPD 57/2021, decided on 22 April 2025.

The Court concluded that since no proof of service of the statutory notice was produced and applying the principles of natural justice, the petitioner could not be faulted. The writ petition was accordingly allowed with directions to issue the certificate of renewal for the trademark, restore it on the register, and update the records, subject to payment of requisite fees and compliance with formalities.