Image Developer and Another Vs. Kamla Landmarc Real Estate Holding Private Limited

Mandatory Pre-Institution Mediation in Commercial Suits

Facts: This case centers on a dispute over a real estate development project in Mumbai involving multiple parties, including developers, individuals, and housing societies. The story begins with a development agreement signed on May 7, 1995, between the Gorai Road Ashtavinayak Nagar Co-op. Hsg. Societies Union Ltd., which is a federation of housing societies, and Sailee Developers Pvt. Ltd. The agreement was for redeveloping a property, where Sailee Developers was supposed to provide new flats to the existing members of the societies and use the remaining development potential for its own profit. On June 24, 1997, a few more societies joined the federation, meaning their members also became entitled to flats under the agreement. Years later, on June 29, 2006, Segment Developers Pvt. Ltd., along with Sailee Developers and some other people, formed a partnership firm called Image Developer to handle the development rights of this property. Then, on March 15, 2010, a deed of assignment was executed, transferring these development rights from Image Developer and Segment Developers to Kamla Landmarc Real Estate Holding Private Limited and four individuals: Jitendra Ramesh Jain, Jinendra Ramesh Jain, Dilipkumar Jain, and Vikaskumar C. Jain. The deal was for a total consideration of Rs. 44.87 crores, to be paid in installments, along with other obligations like allotting flats to the society members. Everything seemed fine until December 5, 2023, when Kamla Landmarc and the four individuals assigned their rights over the property to Moral Mercantile LLP, without fully meeting their obligations under the 2010 assignment, such as paying the full amount or allotting the flats. The plaintiffs, Image Developer and Segment Developers, say they first learned about this new assignment in January 2024 when they visited the site and saw Moral Mercantile's name displayed there. They then got a copy of the 2023 agreement from the sub-registrar's office. Claiming this was a breach, the plaintiffs sent a termination notice on January 19, 2024, to Kamla Landmarc and the individuals, ending the 2010 assignment due to non-payment and failure to allot flats. The recipients replied on March 1, 2024, disputing the termination. Worried that further steps might create third-party rights, the plaintiffs sent notices on October 21, 2024, under the Maharashtra Co-operative Societies Act and the Maharashtra Housing and Area Development Act to the federation and the Maharashtra Housing & Area Development Authority, asking them not to grant any permissions for development by the other parties. The plaintiffs claim the defendants owe them Rs. 7.21 crores plus interest, totaling over Rs. 28 crores as of October 2024. They say the 2023 assignment is illegal and void because it violated the terms of the 2010 deal, and Moral Mercantile knew about the breaches. The plaintiffs also argue that the defendants are trying to raise finance or assign rights further, which could complicate things more. On the other side, Kamla Landmarc and the two Jains who filed the application say the suit is invalid because the plaintiffs did not follow the required pre-suit mediation process and that it's also time-barred since the last payment was due in 2017. They argue there was no real urgency for skipping mediation, pointing to the long delays in acting.

Procedural Details: The main suit was filed on November 30, 2024, in the Bombay High Court's commercial division as a commercial suit because it involves a commercial dispute over development rights and agreements. Along with the suit, the plaintiffs filed an interim application seeking temporary relief to stop the defendants from dealing with the property or creating third-party rights. In response, on an unspecified date but before the hearing, Kamla Landmarc Real Estate Holding Private Limited, Jitendra Ramesh Jain, and Jinendra Ramesh Jain filed their own interim application asking the court to reject the entire plaint under the rules of civil procedure, claiming it violated the law on pre-suit mediation and was filed too late. 

The plaintiffs' side argued there was urgency due to the risk of third-party rights being created. The defendants' side said there was no such urgency, given the timelines. The matter was heard through video conferencing, as is common. The judge reserved the order on September 16, 2025, after listening to everyone, and pronounced it on September 19, 2025. No full trial with evidence or witnesses happened yet; this was just deciding the preliminary application to reject the suit. The court did not decide on the merits of the main claims or the limitation issue, focusing only on the mediation requirement.

Dispute: The core fight here was not about the main claims of breach of contract or validity of the termination but about whether the suit could even proceed. The defendants argued that the plaint should be thrown out right away because the plaintiffs skipped a mandatory step: pre-institution mediation under the Commercial Courts Act. This law requires parties in commercial disputes to try mediation before filing a suit, unless there's a need for urgent temporary relief. The plaintiffs said their case fit the exception because they feared the defendants would create third-party rights, making it urgent to get a court order stopping that. The defendants countered that there was no real urgency, pointing to the 10-month delay from discovering the issue in January 2024 to filing in November 2024, and then not even pushing for immediate relief after filing. They said the plaintiffs' claims of urgency were just empty words without facts to back them up. In the background, there was also a claim that the suit was barred by time limits, but the court did not rule on that since it rejected the suit on the mediation ground.

Detailed Reasoning: The judge started by explaining the purpose of Section 12A of the Commercial Courts Act, 2015. This section says that in commercial suits, you cannot file unless you first try mediation, but there's an exception if the suit involves urgent interim relief. The mediation must be done within three months, extendable by two more with agreement, and this time does not count for limitation periods. The idea is to settle disputes quickly without court time, especially in business matters where keeping relationships intact matters. The judge said compliance is mandatory, and the exception for urgency must be genuine. To check if the exception applies, the court looks at the plaintiffs' belief in needing urgent relief, but it must be based on solid facts, not just words. The judge looked at the plaint's paragraphs where the plaintiffs tried to justify skipping mediation. In paragraph 36, they talked about discovering the issue in January 2024 and said the suit was within time limits, but the judge said this was about limitation, not urgency for mediation. In paragraphs 39 and 40, they said defendants might create third-party rights, so urgent relief was needed, but the judge called these bald statements without details or proof. Plus, the termination notice already mentioned the 2023 assignment, so they knew earlier. The judge pointed out the 10-month delay from January to filing in November 2024, and then not moving the court urgently until January 2025, showing no real rush. Even after filing, they did not seek ex-parte relief. The judge said this conduct shows the urgency claim was not bona fide. On the plaintiffs' alternative argument that it's a continuous breach like an unpaid seller's charge under Section 55 of the Transfer of Property Act, 1882, the judge said that's for merits or limitation, not for skipping mediation. Such continuous cause arguments work in intellectual property cases, but not here. The judge discussed several judgments to support this. In Patil Automation Private Limited vs. Rakheja Engineers Private Limited, (2022) 10 SCC 1, the Supreme Court said Section 12A is mandatory, and suits without mediation must be rejected unless urgency is shown. The court stressed looking at the plaint to see if urgency is contemplated. In Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815, the Supreme Court explained that urgency means the relief cannot wait for mediation without causing irreparable harm. It's the plaintiff's view, but the court checks if it's genuine based on facts, cause of action, and conduct. Mere words are not enough. In Exclusive Capital Limited vs. Clover Media Private Limited & Ors., 2025 SCC OnLine Del 5221, the Delhi High Court gave a detailed analysis, saying "contemplates urgent interim relief" means the plaintiff must show real exigency through specific facts. The court must scrutinize to prevent abuse, like adding fake urgency to skip mediation. Urgency is not just any interim relief but something immediate and irreparable. The judge quoted long parts from this case, agreeing that courts act as gatekeepers to check if the urgency ticket is valid. Other cases like Ekta Housing Private Limited vs. Shraddha Shelters Private Limited, 2024 SCC OnLine Bom 3538, and Future Corporate Resources Private Limited vs. Edelweiss Special Opportunities Fund, 2022 SCC OnLine Bom 3744, were cited for similar points on strict compliance. The judge said these apply here, as the plaintiffs' pleadings lack foundation for urgency. The plaintiffs' reliance on Exclusive Capital actually supports the defendants, as it stresses scrutiny. The judge did not need to decide limitation since the suit was rejected on mediation grounds.

Decision: The court allowed the defendants' application and rejected the plaint under Order VII Rule 11(d) of the Code of Civil Procedure, 1908, because the plaintiffs did not comply with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, and failed to show genuine urgency for the exception. As a result, the main suit and the plaintiffs' interim application were disposed of without deciding on the merits or the limitation issue. The plaintiffs can file a fresh suit after mediation, where other arguments can be raised.

Case Title: Image Developer and Another Vs. Kamla Landmarc Real Estate Holding Private Limited and Others 

Order date: September 19, 2025 

Case Number: Commercial Suit (L) No.39332 of 2024 

Neutral Citation: 2025:BHC-OS:15574 

Name of Court: High Court of Judicature at Bombay Name of Hon'ble Judge: Jitendra Jain, J.

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

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

SML Limited Vs. Safex Chemicals (India) Ltd

Allied Goods and Trade Mark Protection

Facts: This case involves a company called SML Limited, which used to be known as Sulphur Mills Limited, claiming that another company, Safex Chemicals (India) Ltd, was wrongly using a trade name very similar to its own. SML Limited makes products like fertilizers and plant nutrients, and it registered the name "TRACKON" for these items back in 2019, after applying in 2018. It also registered "TRACKON GOLD" in 2021. The company changed its name to SML Limited in 2022 and updated the registrations to show this change. SML Limited says it started using "TRACKON" in 2018 and has been selling products under this name ever since, building up sales and reputation over the years. In late 2024, SML Limited found out that Safex Chemicals had applied to register "TRACKON" for pesticides and insecticides, claiming they started using it in 2020. SML Limited opposed that registration right away. When they checked the market again in early 2025, they found Safex Chemicals selling an insecticide under "TRACKON". 

SML Limited bought a sample of it in April 2025 from a shop in Haryana. They noticed that this product was not even listed on Safex Chemicals' own website but was on third-party sites like IndiaMart. SML Limited pointed out that this was not the first time they had issues with Safex Chemicals, as there was an earlier case about another name "PEARL" where Safex Chemicals agreed to stop using it. SML Limited believes Safex Chemicals is a repeat offender, having faced court orders in other cases too. On the other side, Safex Chemicals says it has been around since 1991, selling over 120 agrochemical products. It claims it came up with "TRACKON" in 2020 honestly, after checking the market, and has been using it ever since without any problems. It argues its products are different—pesticides, not fertilizers—and the packaging, colors, and prices are not the same, so no one would mix them up. Safex Chemicals also questions SML Limited's old invoices, saying they look fake because they show the new company name on papers from before the name change. SML Limited explained that this happened because of their computer system, which updates old invoices with the new template when reprinted, and they provided proof like GST numbers and ledgers to back this up. Safex Chemicals also says SML Limited knew about them since 2024 but waited too long to sue, and that SML Limited once told the trade mark office that a similar name "TRICON" was not confusing, so they should not complain now.

Procedural Details: The case started when SML Limited filed a lawsuit in the Bombay High Court in April 2025, asking for a court order to stop Safex Chemicals from using "TRACKON". This was under the court's commercial division for intellectual property matters. Along with the main suit, SML Limited filed an interim application, which is a request for a temporary stop order while the full case is decided. The court heard arguments from both sides through video calls. Lawyers for SML Limited showed registration papers, sales records, and proof of buying the rival product. Safex Chemicals filed a reply in May 2025, denying everything and providing its own sales figures from 2022 onward. Both sides exchanged more papers, like rejoinders, to respond to each other's points. The judge reserved the decision on August 12, 2025, after hearing everyone, and gave the final order on September 22, 2025. No trial with witnesses has happened yet; this is just about the temporary relief.

Dispute:The main fight is over whether Safex Chemicals is breaking the law by using "TRACKON" for its pesticides when SML Limited already has it registered for fertilizers. SML Limited says this is infringement because the names are exactly the same, and even though the products are in different official categories (Class 1 for fertilizers and Class 5 for pesticides), they are related enough in farming that people might think they come from the same company. This could confuse farmers who buy both kinds of products from the same shops. SML Limited also says Safex Chemicals is trying to pass off its goods as theirs to cash in on their reputation. Safex Chemicals fights back by saying the products are totally different—one helps plants grow, the other kills bugs—so no confusion. They point to different packaging, like colors and shapes, and much higher prices for their item. They accuse SML Limited of hiding facts, like what they said about "TRICON" before, and of delaying the lawsuit. They claim they honestly came up with the name and have been using it for years without issues. The court had to decide if SML Limited proved enough at this early stage to get a temporary ban on Safex Chemicals using the name.

Detailed Reasoning: The judge started by agreeing that the names "TRACKON" and "TRACKON GOLD" are exactly the same as what Safex Chemicals is using, so they look, sound, and mean the same thing. SML Limited registered first, in 2019 and 2021, while Safex Chemicals applied later in 2023, claiming use from 2020. The law here is the Trade Marks Act, 1999. Section 29 says a registered name is infringed if someone else uses the same or similar name for similar or related goods, and it might confuse people or make them think the products are connected. 

The judge explained that even if goods are in different classes, like fertilizers in Class 1 and pesticides in Class 5, the classes are just for office work and not the final word. What matters is if the products are allied or cognate, meaning related or from the same family. To check this, the court used tests from old cases. In Corn Products Refining Co. vs. Shangrila Food Products Ltd., AIR 1960 SC 142, the Supreme Court said cognate goods have a trade connection, like glucose and biscuits because both are food-related. In Allied Auto Accessories Ltd. vs. Allied Motors Pvt. Ltd., 2002 SCC OnLine Bom 1138, a Bombay High Court judge said classification lists are just guides, not rules, and you look at real-world similarities. The judge also used factors from British Sugar Plc vs. James Robertson & Sons Ltd., [1996] R.P.C. 281, an English case often followed in India: look at how the products are used, who buys them, their physical nature, sales channels, where they are placed in stores, and if they compete. 

In Indchemie Health Specialities (P) Ltd vs. Intas Pharmaceuticals Ltd., 2017 SCC OnLine Bom 10127, a Bombay High Court division bench said you check nature, uses, and trade channels, and all three don't have to match perfectly. Applying these, the judge found fertilizers and pesticides are both agrochemicals for better crops—one adds nutrients, the other fights pests—so they are complementary. Farmers buy both from the same shops, so same users and channels. Even though physically different, they are related enough for infringement under Section 29(2). On confusion, the judge said since the names are identical and SML Limited has sales over Rs. 6 crore from 2018-2025, people might associate Safex Chemicals' product with SML Limited, especially farmers who aren't experts. This satisfies the "likelihood of association" in the law. The judge discussed Ruston & Hornsby Ltd. vs. Zamindara Engineering Co., (1969) 2 SCC 727, where the Supreme Court said infringement is about the mark itself, not packaging, and injunction should follow if proved. On defenses, Safex Chemicals said SML Limited's old invoices are fake because they show the new name. But SML Limited explained it's due to software that updates templates, and proved it with GST numbers, ledgers, and original filings. The judge said this is enough for now; full proof comes later. 

On prior use under Section 34, Safex Chemicals claimed 2020, but SML Limited started in 2018 and registered in 2019, so no defense. On hiding facts, SML Limited once said "TRICON" wasn't similar, but that's different from "TRACKON", so no suppression. On delay, the judge cited Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia, (2004) 3 SCC 90, where the Supreme Court said delay alone isn't enough to deny injunction in infringement, especially if fraudulent. Here, SML Limited acted in 2025 after finding the product, and no positive encouragement from them. In Jagdish Gopal Kamath vs. Lime & Chilli Hospitality Services, 2015 SCC OnLine Bom 531, the Bombay High Court said delay without acquiescence isn't a defense. On honest concurrent use under Section 12, the judge said it's for registration, not a defense in court, and anyway, uses aren't concurrent since SML Limited was first. The judge looked at Safex Chemicals' cases like Mandali Ranganna vs. T. Ramachandra, (2008) 11 SCC 1, on conduct, but said SML Limited's conduct is fine. S. P. Chengalvaraya Naidu vs. Jagannath, (1994) 1 SCC 1, and Chandra Shashi vs. Anil Kumar Verma, (1995) 1 SCC 421, on fraud, but no fraud here. Rubaljit Singh vs. M/s. Kanz Overseas, CS(OS) No. 213 of 2009 dated 20.11.2009 (Delhi High Court), on fabricated docs, but not here. Phonepe Pvt Ltd vs. Resilient Innovations Pvt. Ltd., 2023 SCC OnLine Bom 764, on changing stands, but marks here are identical, no shift. Unichem Laboratories Ltd vs. Ipca Laboratories, 2011 SCC OnLine Bom 2114, similar, not applicable. Wander Ltd vs. Antox India P. Ltd., 1990 (Supp) SCC 727, on tests for injunction, applied here. Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Limited, (2018) 9 SCC 183, on different goods, but here goods are related. AMPM Designs vs. Intellectual Property Appellate Board, 2021 SCC OnLine Bom 14029, on different goods with prior use, but no prior use here. Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, on deceptive similarity in passing off, noted but infringement is separate. Star Bazaar Pvt. Ltd. vs. Trent Ltd., 2010 SCC OnLine Del 4764, on concurrent use, but not here. For passing off, the judge cited Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories, 1964 SCC OnLine SC 14, saying passing off needs goodwill, misrepresentation, damage, and is different from infringement—packaging matters more. Here, different packaging means no misrepresentation, so no passing off.

Decision: The court granted a temporary injunction stopping Safex Chemicals from using "TRACKON" because it infringes SML Limited's registered mark. But it did not grant one for passing off, as the different packaging means no one is likely being tricked into thinking the products are the same. The case will go to full trial later.

Case Title: SML Limited Vs. Safex Chemicals (India) Ltd

Order date: September 22, 2025

Case Number: Commercial IP Suit No. 432 of 2025

Neutral Citation: 2025:BHC-OS:16030

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Sharmila U. Deshmukh, J.

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

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

Shoranur Metal Industries LLP & Another Vs. The Metal Industries Limited

Unpacking Descriptive Trade Marks

Facts: The story of this case begins with a company called The Metal Industries Limited, which is owned by the government of Kerala. This company has been around for about 94 years, starting way back, and its main office is in Shoranur. They make things like tools for farming, such as sickles, spades, shovels, pickaxes, axes, saws, cutleries, and mammatties. Their products are sold under the brand name Tusker, which comes with a special emblem. Over the years, this company built a good name for itself, and people know it well, especially in the area. They even registered their company name, Metal Industries, as a trade mark under the law that protects such names, specifically Section 27 of the Trade Marks Act, 1999. Because it's based in Shoranur, folks often call it Shoranur Metal Industries informally.

Now, enter the other side: Shoranur Metal Industries LLP, a newer firm started in 2019, also in the same area, just about three kilometers away. This firm is run by Krishnakumar as the main partner, and they too make iron and steel tools for farming, similar to what the older company does. Their products go by the brand name K.Kumar Tools. In 2020, the older company noticed that the new firm's name was causing mix-ups among people. Customers and traders started thinking the new firm was part of or the same as the old one because both used Metal Industries in their names. The old company sent a legal notice asking the new firm to stop using that name, but the new firm replied saying they weren't doing anything wrong. That's when the old company decided to go to court, filing a lawsuit asking for a court order to stop the new firm from using Metal Industries in their name, to remove it from all their papers and ads, and even for some money as damages, about Rs.1,00,000. They said this was breaking the rules under Sections 134 and 135 of the Trade Marks Act.

The new firm fought back, saying their business wasn't exactly the same. They claimed their tools are made specially for customers' needs, unlike the old company's standard products. They argued that words like Metal Industries are just common words describing what they do, and lots of companies across India use similar names. So, no one can own those words exclusively. They also said the old company isn't really known as Shoranur Metal Industries officially, and there's no real confusion or harm.

Procedural Details: The lawsuit started as Original Suit No.1 of 2023 in the District Court at Palakkad. The old company was the plaintiff, and the new firm and its partner were the defendants. The court looked at the claims and set up six main questions to decide, like whether there was copying of the name, if it caused confusion, and if the old company deserved protection.

Both sides presented evidence. The old company had a witness (PW1) and showed documents like their registration papers (Exts.A1 to A15). The new firm had their own witness (DW1) and documents (Exts.B1 to B4). After hearing everything, the District Court sided with the old company. It gave a permanent order stopping the new firm from using Metal Industries in their business name and ordered them to remove it from all communications, ads, newspapers, social media, and so on. The new firm wasn't happy with this and appealed to the High Court of Kerala.

The appeal was filed as Regular First Appeal No.287 of 2024. The High Court heard arguments from both lawyers: Harikumar G. for the new firm (appellants) and Saji Varghese T.G. for the old company (respondents). The case was heard on August 26, 2025, and the judgment came on September 18, 2025. The judge looked at three main points: Did the new firm copy the registered name? Could they use a defense under the law? And was there something called passing off, where one business pretends to be another?

Dispute: The main fight was about whether the new firm could use the name Shoranur Metal Industries when the old company had registered Metal Industries as their trade mark. The old company said this was straight-up copying, or infringement, because their name was protected by law, and the new name was too similar, causing people to get confused and think the new firm was connected to them. They wanted the court to stop it and make the new firm change their name.

The new firm said no, because words like metal and industries are just everyday words that describe the kind of business—they're generic or descriptive. Under the law, you can't own such common words exclusively unless they've become super special over time, like gaining a second meaning that points only to your business. They also said there's no real harm or confusion since their actual product brands are different: Tusker for the old company and K.Kumar Tools for them. Plus, the name Metal Industries isn't even on the products themselves.

Another part of the dispute was about passing off. Even if not directly copying a registered mark, if the new firm was tricking people into thinking their stuff came from the old company, that could be stopped. But the new firm said there's no proof of any damage or real trickery.

Detailed Reasoning: The judge started by explaining what the law says about trade marks. A trade mark is like a special sign or name that tells people where a product comes from. It's protected so no one else can use something too similar and confuse customers. The old company had registered Metal Industries, so under Section 29 of the Trade Marks Act, 1999, if someone uses a similar name for similar goods, that's infringement, and the owner can stop it.

But there's a catch in Section 30(2)(a), which says a registered mark isn't infringed if the use just describes the kind, quality, or other features of the goods, like their type or where they're from. The new firm leaned on this, saying metal and industries are just describing a business that deals with metal products. The judge agreed, calling these words generic—common terms anyone can use—or descriptive, meaning they explain what the business does.

To back this up, the judge looked at several past court decisions. First, there's Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and others, decided by the Supreme Court in 2006, reported as (2006) 8 SCC 726. In that case, the court explained that a trade mark connects goods to their maker and builds trust in quality. If registered, others can't use it without permission, or it's infringement. But the court also said usually there's only one owner for a mark, and if two people use it, it can confuse people and even be like cheating the public. However, in our case, the judge noted that the old company didn't show their name had become uniquely tied to them beyond the common words.

Next, the judge discussed a Delhi High Court case: Pornsricharoenpun Co. Ltd. and Ors. v. L'Oreal India Private Limited and Ors., from 2022, with the citation MANU/DE/4515/2022. Here, the fight was over Low Absorb for hair products. The court said courts can check if a registered mark is valid even during early stages of a case, based on what the other side says in their defense. Some marks can't be distinctive, like common words. A descriptive mark—one that just describes the product—needs to gain a special second meaning to be protected. If it's just English words combined, like Low Absorb Technology, the owner has to live with some confusion risk. No one can own common words exclusively. The judge in our case used this to say the new firm could challenge the registration, and since Metal Industries is descriptive, like saying what the business is about, it doesn't give exclusive rights. The Delhi court also said this defense works under Sections 30 and 35 of the Trade Marks Act, even against a registered mark.

In the same Pornsricharoenpun case, the court looked at Hair Spa. The appellant used Hair Spa for cosmetics, but the defendants were using it too. The court said Hair Spa isn't made-up; it's just hair and spa put together, describing hair treatment. It's generic, lacking the uniqueness needed for protection. In paragraph 21, the court explained that such common expressions describe the product and can't identify one source only. Applying this, our judge said Metal Industries is similar—just common words for a metal business.

Another Supreme Court case mentioned was Skyline Education Institute (India) Private Ltd. v. S.L. Vaswani and Another, from 2010, reported as AIR 2010 SC 3221. There, skyline was used for schools. The court said skyline is a generic word in English and trade, used by many companies. In paragraph 18, it noted over 100 companies in India and others abroad use it, so no one can claim it exclusively. Our judge used this to show common words like metal industries are shared.

Then there's Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd. & Ors., a 2023 Delhi High Court case, 2023 SCC OnLine Delhi 7841. The plaintiff registered Institute of Directors for conferences. Defendants used Directors Institute. In paragraph 32, the court said registering common English words like that means accepting others might use similar ones. No monopoly on ordinary combinations. This supported the idea that Metal Industries can't block others.

Yatra Online Limited v. Mach Conferences and Events Limited, another 2025 Delhi case, 2025 SCC OnLine Delhi 5610, dealt with Yatra, meaning travel in Hindi. The plaintiff claimed it as dominant in their mark, but the court said generic descriptive words like that never gain distinctiveness on their own. In paragraph 53, it said words from everyday language can't be owned. Yatra is common, so no monopoly. Our judge applied this to say Metal Industries is descriptive and common.

The old company cited T.V. Venugopal v. Ushodaya Enterprises Ltd. and another, a 2011 Supreme Court case, (2011) 4 SCC 85. There, Eenadu, a descriptive word, gained a second meaning over time, becoming tied to the company's newspaper and TV in Andhra Pradesh. In paragraph 19, the court protected it because of that special reputation. But in our case, the judge said the old company didn't prove Metal Industries had such a second meaning—it's just common words without that extra layer.

On passing off, which is when someone misleads people into thinking their goods are someone else's, even without registration. The plaint didn't say passing off directly, but had hints like confusion and intent to trick. The judge cited Anwar Mohammad Khan v. Sri. Taj Mohammad Khan, 2006 (3) AWC 2166, where the court said if the core claims show passing off elements, the words don't matter. Elements are: goodwill, misrepresentation, and damage.

The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, listed factors for deceptive similarity, like mark nature, resemblance, goods type, customer class. In Mahavir Rice, Pulse Mills Bareja v. Jaikrishnan Trading Company, Miroli and Others, 2009 (4) KLT 593, paragraph 12, the court said passing off needs proof of reputation, deception likelihood, and damage. Also cited Laxmikant V. Patel v. Chetanbhai Shah (2002) and Heinz Italia v. Dabur India Ltd. (2007).

Our judge said for passing off, you need harm or likely harm. In Mariyas Soaps and Chemicals v. M/s Wipro Enterprises Limited, 2023 (4) KHC 473, even with similar marks, no injunction without damage proof. In paragraph 18, it stressed the "classical trinity": goodwill, misrepresentation, damage.

In Delmon Diagnostics and Research Center v. Doctors Diagnostics and Research Center, 2015 (3) KHC 14, paragraph 6, goodwill, misrepresentation leading to belief goods are plaintiff's, and damage. In Shakti Ceramics v. Supreme Ceramics, 2011 KHC 2924, deceptive similarity alone isn't enough; need reputation, goodwill, and loss.

The old company cited Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1, where interim stop was given for Glucose-D similar to Glucon-D, but our judge noted it was temporary, not final.

Overall, the judge said no proof of damage here. Brands are different (Tusker vs. K.Kumar Tools), name not on products, no second meaning for Metal Industries. So no infringement or passing off.

Decision: The High Court allowed the appeal, canceling the District Court's orders. No injunction against the new firm; they can keep using Shoranur Metal Industries. The original suit was dismissed. Both sides pay their own costs.

Case Title : Shoranur Metal Industries LLP & Another Vs. The Metal Industries Limited & Another

Order Date: 18th September 2025

Case Number: RFA No. 287 of 2024

Neutral Citation: 2025:KER:69913

Name of Court: High Court of Kerala at Ernakulam

Name of Hon'ble Judge: The Honourable Mr. Justice C. Pratheep Kumar

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

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

Kaira District Cooperative Milk Producers Union Ltd. Vs. The Registrar of Trade Marks

Actual Service of Notice in Trademark Oppositions

Facts of the Case: The dispute arose when the appellant, Kaira District Cooperative Milk Producers Union Ltd., popularly known for its brand association with dairy products, filed an opposition against the trademark application of Respondent No. 2. The Respondent No. 2 had applied for registration of the mark "DOODH" under Class 30. The appellant filed Opposition No. 1298974 challenging this application on various grounds, asserting that the registration of such a mark would adversely affect its business interests and was liable to be refused under the Trade Marks Act, 1999.

The Registrar of Trade Marks, however, by order dated 24 April 2025, dismissed the opposition on the ground that the appellant had failed to file its evidence affidavit in support of the opposition within the stipulated period of time. This dismissal prompted the appellant to file the present appeal before the High Court of Delhi challenging the Registrar’s decision.

The central factual controversy revolved around whether the appellant had indeed filed the affidavit of evidence within the statutory period prescribed under Rule 45(1) of the Trade Marks Rules, 2017, which allows a period of two months from the date of service of notice to submit evidence.

Procedural Background: The opposition was filed on 10 April 2024. Subsequently, a notice dated 11 September 2024 was prepared by the Registrar’s office requiring the appellant to file its evidence. This notice was served upon the appellant only via email on 15 September 2024. As per Rule 45(1) of the Trade Marks Rules, the limitation period for filing evidence commenced from the date of service, i.e., 15 September 2024. Thus, the two-month period would expire on 15 November 2024.

The appellant filed its affidavit of evidence before the Registrar on 14 November 2024 and also supplied a copy to Respondent No. 2 on 13 November 2024. In addition, the evidence was dispatched through speed post on 11 November 2024. Despite this timely filing, the Registrar dismissed the opposition by treating the filing as delayed, apparently computing the limitation from the date of the letter (11 September 2024) instead of the actual date of service (15 September 2024).

This error formed the basis of the appeal before the Delhi High Court.

The Core Dispute: The principal dispute was whether the appellant had complied with the statutory requirement of filing evidence within two months from the date of service of notice under Rule 45(1) of the Trade Marks Rules, 2017.

The appellant argued that the limitation must run from the date of actual service of notice, not from the date printed on the Registrar’s letter. Therefore, since the service was effected on 15 September 2024 and the affidavit of evidence was filed on 14 November 2024, it was clearly within the statutory time.

On the other hand, the Registrar had mistakenly concluded that the evidence affidavit was filed beyond time, while Respondent No. 2 contended that though technically served within time, this situation caused prejudice since Respondent No. 2 had already been granted registration.

Detailed Reasoning and Analysis: The High Court examined the submissions of all parties, particularly the written statement of the Registrar of Trade Marks. It was fairly conceded by the Registrar that the notice was indeed served only on 15 September 2024 via email and not earlier.

This concession was critical, as Rule 45(1) of the Trade Marks Rules, 2017, explicitly states that the period of two months for filing evidence begins from the date of receipt of notice. The Court observed that service of notice is a foundational step in limitation law. Citing the general legal principle that limitation runs from the date of actual service and not the date of the letter, the Court held that the appellant had acted within the prescribed period.

The Court emphasized that the Registrar’s finding that the evidence was filed belatedly was contrary to the record and violative of Rule 45(1). The Court also stressed that any contrary interpretation would amount to depriving a party of its statutory right to oppose a trademark merely on account of a procedural misunderstanding.

Furthermore, the Court carefully balanced equities. While setting aside the Registrar’s order, the Court recognized the concern of Respondent No. 2, who had been granted registration in the meantime. To address this, the Court directed the Registrar to decide the opposition afresh within a period of two months, strictly without adjournments, thereby protecting the rights of both parties.

The Court also directed that the relief sought in prayer clause (d) for cancellation of Respondent No. 2’s registration be allowed and the trademark registry be updated accordingly within two weeks. However, the Court clarified that nothing in its order should be read as an opinion on the merits of the opposition itself, which would have to be independently adjudicated by the Registrar.

Decision: The Delhi High Court allowed the appeal filed by Kaira District Cooperative Milk Producers Union Ltd. and set aside the impugned order dated 24 April 2025 passed by the Registrar of Trade Marks. The Court held that the appellant had filed its evidence affidavit within the prescribed period under Rule 45(1) of the Trade Marks Rules, 2017.

The Court remanded the matter to the Registrar of Trade Marks with directions to conduct a time-bound hearing and adjudicate the opposition on its merits within two months. The registration already granted to Respondent No. 2 was ordered to be updated in the records to reflect the correct legal position. Importantly, the Court clarified that its order should not prejudice the Registrar’s independent decision on the merits of the opposition.

Case Title: Kaira District Cooperative Milk Producers Union Ltd. Vs. The Registrar of Trade Marks & Anr.

Case Number: C.A. (COMM.IPD-TM) 46/2025 

Date of Decision: 19 September 2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Ms. Justice Manmeet Pritam Singh Arora

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

Woltop India Pvt. Ltd. Vs. Union of India

Territorial Jurisdiction in Trademark Rectification

Introduction: The petition sought a writ of mandamus directing the respondents to transfer rectification petitions pending before the Registrar of Trade Marks, Ahmedabad, to the Intellectual Property Division of the Madras High Court for consolidation and expeditious disposal alongside an existing civil suit.

Facts: The facts reveal that the petitioner had instituted civil suit C.S.(Comm.Div.) No. 199 of 2023 for alleged trademark infringement and passing off. Pending before the Ahmedabad Registrar were rectification petitions numbered 272370 and 272372 concerning trade mark registrations in classes 27 and 35. The petitioner requested transfer of these rectification petitions to the IPD of the Madras High Court for consolidation with the civil suit, contending that this was necessary to avoid multiplicity, delays, and conflicting judgments. Despite the petitioner’s letter dated 30.05.2024 invoking Section 125(2) of the Trade Marks Act, 1999, requesting transfer, no action was taken. Subsequently, these writ petitions were filed under Article 226 of the Constitution of India.

Procedure: Procedurally, the maintainability of the writ petitions was questioned. The petitioner argued that consolidation was fair and necessary under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023, and that neither Article 139A of the Constitution nor Section 25 of the Code of Civil Procedure applied to prevent this remedy. Counsel emphasized that the High Court’s power under Article 226 to issue writs extends where a cause of action arises within jurisdiction, regardless of the physical location of the authority to be directed.

In opposition, the respondents, particularly the fifth party, contended that jurisdiction rested with the High Court having appellate jurisdiction over the relevant Registrar’s office per Rule 4 of the Trade Marks Rules, 2017. They submitted that the writ petitions could have been filed in the Gujarat High Court where the Registrar of Trade Marks, Ahmedabad exercises authority. They denied any stay application in the civil suit and stated no impediment existed to its continued prosecution. The respondents invoked statutory provisions and procedural rules, emphasizing that only the High Court geographically competent over the Registry office can entertain rectification matters. They cautioned against judicial overreach under Article 226 when a statutory tribunal with specified jurisdiction exists.

Examination by Court: The Court examined applicable provisions from the Trade Marks Act, particularly Sections 47 and 57 relating to rectification powers, which had been amended by the Tribunals Reforms Act, 2021, replacing the erstwhile Appellate Board with the High Court. The Court noted the deliberate use of the definite article ‘the’ before ‘High Court’ in these Sections, signaling Parliament’s intent to confer jurisdiction on a specific High Court exercising appellate jurisdiction over a defined Registrar’s office. The Court contrasted this with the use of the indefinite article ‘a’ in other contexts.

The Court underscored Rule 4 of the Trade Marks Rules, 2017, designating the territorial jurisdiction of trademark registry offices, and confirmed that since the registered proprietor’s principal place of business was in Surat, Gujarat, the appropriate Registry was Ahmedabad. Hence, statutory jurisdiction over rectification petitions necessarily lay with the Gujarat High Court and itsTrademark Registry.

The Court reviewed jurisprudence including Adiuvo Diagnostics Private Limited v University Health Network (2024 SCC OnLine Mad 185), which held the appropriate Patent Office does not restrict writ jurisdiction, but distinguished this from statutory jurisdiction conferred in the TM Act for rectification matters. The Court clarified that jurisdiction under Sections 47 and 57 cannot be assumed by any High Court besides the one with territorial appellate jurisdiction, to avoid jurisdictional chaos and conflicting decisions, as multiple petitions for the same rectification could arise everywhere.

Further, the Court rejected the petitioner’s reliance on Rule 14(1) of the Madras High Court IPD Rules as conferring power to consolidate these proceedings beyond supervisory jurisdiction. It noted that commercial courts including district courts have jurisdiction for suits concerning trademarks, and consolidation across district and high court proceedings is not envisaged. The Court pointed out Section 124 of the TM Act prescribes stays of suits pending resolution of rectification petitions, thereby preventing conflict without needing transfer or consolidation in different fora.

The Court cited a contrary view held by a single judge in Nippon Paint Holdings Co. Ltd. v Suraj Sharma (MANU/TN/1388/2024) and the Delhi High Court in Dr. Reddy’s Laboratories Ltd v Fast Cure Pharma, but as this order was stayed by the Supreme Court, the Court declined to endorse it, reaffirming the territorial nexus principle for High Court jurisdiction.

Decision: The Court held that the Madras High Court did not have jurisdiction under Sections 47 and 57 of the TM Act to entertain the rectification petitions pending before the Ahmedabad Registrar. It stated that the writ petitions were discretionary remedies not suited to override statutory jurisdiction and procedural availability of remedies before the Gujarat High Court. The Court declined to grant the requested transfer or consolidation but left open the option to approach the Gujarat High Court for expeditious disposal of the rectification petitions. The writ petitions were thus dismissed without costs.

This judgment clarifies territorial jurisdiction and separation of powers under the TM Act and underscores the delicate balance between constitutional writ powers and statutory administrative adjudication. It emphasizes the need to respect jurisdictional boundaries based on territorial connections of trademark registrations to reduce litigation confusion, preserve orderly administration of justice, and avoid conflicting rulings.

Case Title: Woltop India Pvt. Ltd. Vs. Union of India and Others  

Order Date: 20th February 2025  

Case Number: W.P.(IPD) Nos. 30 & 32 of 2024  

Neutral Citation: 2025:MHC:485  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: The Honourable Mr. Justice Senthilkumar Ramamoorthy  

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

Fox and Mandal and Another Vs. Somabrata Mandal and Others

The Role of Court Discretion in Consolidating IP Proceedings

Facts:The case primarily deals with an application for consolidation and analogous hearing of three related proceedings pending before the Intellectual Property Rights Division of the Court. The petitioner sought to consolidate these proceedings for effective and consistent determination of disputes concerning ownership and use of the mark.

Procedural Background: The petitioner moved for consolidation of the suit (IP-COM 6 of 2025) with a writ petition (WPO-IPD 1 of 2025) and another commercial suit (IP-COM 31 of 2025), all concerning rival claims to rights in the trademark "Fox & Mandal." The claimed reliefs included quashing of impugned communications by the Registrar of Trade Marks, removal of registrations, stay on implementation of certain registrations, injunctions preventing unauthorized use of the mark, and monetary damages.

Petitioner's contention: The facts reveal that the petitioner claimed ownership of the trademark "Fox & Mandal," arguing that all three proceedings raise common issues such as goodwill associated with the mark, possibility of confusion among consumers due to concurrent use, exclusive ownership disputes, and questions of whether one party can restrain another from using the mark. The petitioner cited judicial precedents including Prem Lala Nahata & Ors. vs. Chandi Prasad Sikaria (2007) 2 SCC 551 and Chittivalasa Jute Mills vs. Jaypee Rewa Cement (2004) 3 SCC 85 to support the request for consolidation based on common questions of law and facts.

Respondent's contention: The respondents, who are the plaintiffs in the suit opposing consolidation, contended that the application was an abuse of process filed to delay proceedings. They argued that the suit before the Court was for passing off and that the defendants had failed to file their Written Statement within the mandatory 120-day period, indicating their intention to stall the case. They further noted that the request for consolidation had been rejected repeatedly at different stages. They submitted that the different proceedings were at incomparable stages procedurally and that consolidation would thus be improper. They relied on case law including Monohar Lal vs. Ugrasen (2010) 11 SCC 557, Ananda Swarup Agarwal & Anr. vs. State of West Bengal AIR 2000 Cal 222, and Jai Singh vs. Union of India (1977) 1 SCC 1 in support of their stance.

Relevant Provision: The Court examined the provisions under the Code of Civil Procedure, 1908, amended by the Commercial Courts Act, 2015, which permit consolidation of proceedings as part of Case Management Hearing (Order IV A), and the court’s inherent power under Section 151 CPC. It also referred to Rule 18(b) of the Intellectual Property Rights Rules, 2023 applicable in the Calcutta High Court.

The Observation: The Court observed that while the power to consolidate is discretionary and may be applied to avoid conflicting decisions or duplication of effort when there are common issues of fact or law, the stage of the proceedings is a critical factor. The suit in IP-COM 6 of 2025 was well advanced with the plaintiff having completed opening arguments in a summary judgment application, while the other suits were at much earlier or dormant stages — the writ petition had been pending without trial, and the suit IP-COM 31 of 2025 had not seen service of the summons even after two years.

The Court emphasized that a diligent party should not be delayed or prejudiced because of the indolence of the opposing party. The issues in the writ petition and other suits had no material bearing on the main disputes in the suit before the Court, which was a suit for passing off. The need for speedy disposal of commercial disputes as mandated by the Commercial Courts Act was explicitly noted, cautioning against delaying tactics through consolidation applications.

The Court further noted that the principal purpose of consolidation is to address strong common links in cause of action, injury, or relief claims, and to save time and costs. However, it may be refused where it could cause delay or embarrassment to the trial process. The Court found no strong common link warranting consolidation and held that the stage of the various proceedings was incompatible for consolidation.

Issues in Suit and Issues in Writ: Relying on precedents such as Dyna Chem vs. Jaipal Das Punjabi (2021) 4 MPLJ 406 and Supriya Roy & Anr. vs. Bijaya Bose 2018 (2) CHN 372, the Court confirmed that the issues in the writ petition were unrelated to the present suit. The Court also distinguished the petitioner’s reliance on Prem Lala Nahata and Chittivalasa Jute Mills cases as factually inapposite.

Decision: Accordingly, the Court dismissed the application for consolidation as ill-motivated and misconceived but made no order as to costs. The judgment reinforces principles that while courts have wide discretion to consolidate cases with similar facts or issues, procedural stages and the interest of justice, including the avoidance of undue delay, are paramount considerations in exercising that discretion.

The decision crystalizes how courts balance procedural efficiency, litigants’ rights to expeditious trial, and the avoidance of multiplicity of proceedings in intellectual property disputes. It also highlights judicial vigilance against abuse of court process under pretexts such as consolidation for delaying the progress of substantive issues like passing off.

Case Title: Fox and Mandal and Another Vs. Somabrata Mandal and Others  

Order Date: 22nd September 2025  

Case Number:  IP-COM/6/2025  

Name of Court: High Court of Calcutta

Name of Hon'ble Judge: 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

Oxular Limited Vs. The Assistant Controller of Patents

The Test of Inventive Step in Patent and Procedural Fairness

The Fact:This case center around a patent application for an ophthalmic delivery device. Oxular Limited filed Patent Application No. 201817034819 titled "Ophthalmic Delivery Device and Ophthalmic Drug Compositions" at the Patent Office, New Delhi, on 14 September 2018, through its authorized Patent Agent. A request for examination was timely filed on 13 March 2020, within the permissible window starting from the date of priority. The Patent Office took up the application for detailed examination and, on 27 August 2020, issued the First Examination Report (FER) raising a range of objections regarding novelty, inventive step, patentability under Section 3(d), and sufficiency of disclosure under Section 10(5) of the Patents Act, 1970.

Response by Appellant:Oxular Limited responded through its authorized agent, submitting a reply and amending the claims to reduce and clarify the claims under challenge. However, the Patent Office persisted with its objections and issued a hearing notice on 2 August 2023, which was followed by actual hearing only after several adjournments on 31 October 2023. Further written submissions along with amended claims were filed by Oxular Limited on 15 December 2023, aiming to address the outstanding objections. Despite these submissions, the Assistant Controller of Patents and Designs refused the application under Section 15 of the Patents Act by an order dated 9 January 2024. The primary ground was lack of inventive step as prescribed under Section 2(1)(ja) of the Act, referencing several prior arts.

The Core Issue:The dispute before the High Court of Delhi involved the appellant, Oxular Limited, challenging the order of the Assistant Controller. The appellant argued that the refusal order failed to properly consider the written submissions made in response to the hearing notice and did not apply the well-known judicial criteria for determining "inventive step."

The Reasoning:The Court’s analysis starts with recapping the reasons provided in the impugned order, which found that the claims did not involve an inventive step in light of documents cited as prior art (particularly D1 to D6). 

The Controller reasoned that using a flexible cannula deployed from a needle to the suprachoroidal or supraciliary space was obvious, and that other choices such as the shape or semi-solid state of compositions were routine and did not show any inventive step. The Court noted that the applicant’s main argument was that the device's self-actuated deployment mechanism was a significant advancement over the cited prior art and that the written submissions with clarifications had not been duly considered.

Assessment of inventive step:The appellant also invoked two key judicial precedents regarding assessment of inventive step:  

 F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd., 2016 (65) PTC 1 (Del) (DB)  

 Agriboard International LLC v. Deputy Controller of Patents & Designs, 2022 SCC OnLine Del 4786

The Hoffmann-La Roche Ltd. test involves five steps:  

1. Identify who is an ordinary person skilled in the art  

2. Identify the inventive concept in the patent  

3. Impute what was commonly known in the field at the date of invention  

4. Identify distinctions between prior art and the claimed invention  

5. Determine whether those distinctions would have been obvious.

Similarly, the Agriboard International LLC case emphasizes that, in order to refuse a patent for lack of inventive step, the Controller must consider:  

- The prior art  

- The invention as claimed  

- Whether, in light of the prior art, the invention would have been obvious to a skilled person

The Finding:The Court found that the refusal order did not reflect a reasoned application of these legal tests. It observed that the impugned order focused solely on the obviousness issue using a broad-based and generic approach, without examining whether the features unique to the applicant’s device were in fact obvious when read in the context of the technical field and the full set of prior art documents. The Court strongly reiterated, by relying on Supreme Court precedents like Assistant Commissioner v. Shukla and Brothers and Manohar v. State of Maharashtra (AIR 2013 SC 681), that a reasoned and speaking order is central to procedural fairness, a fundamental principle of natural justice.

The Conclusion:Thus, the Court concluded that the Assistant Controller had failed not only to consider the applicant’s submissions but also to pass a reasoned order as required by law. The decision was held to be non-compliant with both statutory requirements and judicial precedent laid down for patent assessments.

The Decision:Accordingly, the High Court set aside the impugned order and remanded the matter to the Patent Office for a fresh decision. The Patent Office was directed to grant a hearing to Oxular Limited and provide a reasoned order after applying the tests prescribed in F. Hoffmann-La Roche Ltd. and Agriboard International LLC. The matter was to be decided as expeditiously as possible, preferably within three months from the date of the order. The Court made it clear that no observations in this judgment should be read as an opinion on the patentability of the invention itself.

Case Title: Oxular Limited Vs. The Assistant Controller of Patents and Designs  

Order Date: 11 September, 2025  

Case Number: C.A.(COMM.IPD-PAT) 142024  

Neutral Citation: 2025:DHC:8337

Name of Court: High Court of Delhi  

Presiding Judge: Hon’ble Ms. Justice Manmeet Pritam Singh Arora  

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

Shikanji Private Limited Vs. Satish Kumar Jain

Contempt of Court in Trademark Law

Facts:The core dispute revolved around the use of several trademarks involving "Jain Shikanji." Satish Kumar Jain, the respondent, claimed exclusive rights over the trademark "Jain Shikanji." Meanwhile, the appellant company, Jain Shikanji Private Limited, and its Directors were accused of violating earlier ad-interim injunction orders by continuing to use, advertise, and promote goods under deceptively similar trademarks like "Jain Shikanji Restaurant," "Jain Asli," and related variants. This dispute even extended to online references and third-party platforms where the marks appeared.

Trial Court Order:Originally, the learned District Judge, Commercial Court-01, East District, Karkardooma Courts, Delhi, passed an order on 03.06.2023 in Suit CS COMM No. 171/2021, allowing Satish Kumar Jain’s application under Order XXXIX Rule 2A of the Civil Procedure Code, 1908. This rule deals with consequences for willful disobedience or breach of court injunctions. The Trial Court found Jain Shikanji Private Limited and its Director, Mr. Anubhav Jain, guilty of disobeying the Court’s interim injunction dated 05.11.2022 and sentenced Mr. Anubhav Jain to civil imprisonment for eight weeks. 

The Appeal:Subsequently, the appellant challenged the order in appeal before the High Court, which partially stayed only the imprisonment direction on 12.06.2023, keeping other directions active.

The Contention:The prime contention was whether the appellant and its Director had complied with the court’s injunction and multiple undertakings to stop using the disputed trademarks. Despite assurances and filing affidavits, evidence and complaints showed that the appellant continued GST filings and operated bank and UPI accounts under the name "Jain Shikanji Private Limited" even after the undertakings. Bottled beverages with the allegedly infringing trademarks continued production and sale, both under the older and newly created company names. Additionally, further products using the disputed marks were produced by associated entities such as Hawa Hawai Restaurant Private Limited and Sangria Beverages, all linked to the same family group, despite claims of retirement and non-involvement from certain directors.

The Reasoning:The High Court exhaustively analyzed the undertakings filed and the steps claimed by the appellant to comply with the orders. It found persistent violations, such as the continued use of the "Jain Shikanji Private Limited" name for banking and payment services long after affidavits claimed the name was changed. The Court noted that only after repeated complaints from the respondent did the appellant take rushed steps to change UPI details, and even then, only post-court directions in August 2025. The packaging produced in Court still featured infringing marks as per the complaints, and there was no credible denial from the appellant. Even new products launched by interrelated or formerly associated group entities bore the contentious trademarks and continued manufacturing claims.

The Finding:The bench found this conduct amounted to not just violation but to repeated contempt, as affidavits and statements before the Court proved misleading or incomplete. The Judges highlighted that instead of "purging the contempt," the appellant "compounded the same by committing further contempt during the pendency of the present appeal." Order XXXIX Rule 2A CPC was squarely invoked, which legally empowers the court to penalize for disobedience of injunction by civil imprisonment or attachment of property.

Decision:The High Court vacated the interim stay protecting Mr. Anubhav Jain from surrender and ordered compliance with the Trial Court’s punishment by 19.09.2025. All directions from the order dated 03.06.2023 remained operative. The appeal was dismissed, and pending applications were rendered infructuous. Directions for urgent compliance and transmission of orders to the Trial Court were issued to ensure execution.

Case Title: Jain Shikanji Private Limited Vs. Satish Kumar Jain

Order Date: 17.09.2025

Case Number: FAO COMM 130/2023

Neutral Citation: 2025:DHC:8248-DB

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Navin Chawla, Hon'ble Ms. Justice Madhu Jain

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

Nilesh Girkar Vs Zee Entertainment Enterprises Limited

Interplay of Cause of Action and Jurisdiction

Facts:The appellant, Mr. Nilesh Girkar, an author and lyricist, was engaged by Respondents 2 to 5, including Tutri Ventures Private Limited and its directors, to write dialogues and lyrics for songs in a film initially titled "SHOOTER." It was agreed that if the appellant's work was used in the film, he would be compensated. However, in 2016, the appellant was informed that the film project was shelved, leading him to cease pursuing his claims.

Years later, the appellant discovered a film titled "OPERATION FRYDAY" streaming on ZEE5, the OTT platform owned by Respondent 1, Zee Entertainment Enterprises Limited. "OPERATION FRYDAY" was essentially the earlier shelved "SHOOTER," having been renamed but containing the appellant’s dialogues and songs. Though the film credited the appellant for the songs, it did not acknowledge his contribution to the dialogues, nor did the respondents seek his permission or pay any royalty for using his literary work.

Issuance of notices:The appellant issued multiple notices starting in February 2023, demanding recognition and compensation for his copyright, but the respondents failed to adequately respond or settle the matter amicably. Consequently, the appellant filed a suit in the Commercial Court alleging copyright infringement, seeking permanent injunctions, credits, damages, and costs.

Procedural History:The Commercial Court initially rejected the suit against Respondent 1 (Zee Entertainment) under Order VII Rule 11(a) of the Code of Civil Procedure (CPC) for lack of cause of action and returned the plaint against Respondents 2 to 5 under Order VII Rule 10 for lack of territorial jurisdiction.

The appellant appealed against this order, challenging the dismissal and return of plaint parts. On a prior occasion, a Division Bench of the High Court had ruled that dismissal under Order VII Rule 11(a) was improper when it should have been a return of plaint under Order VII Rule 10 and remanded the matter for correct consideration.

Dispute:The core dispute concerned two interlinked issues was whether the Commercial Court had territorial jurisdiction to entertain the suit given that the appellant's cause of action partly arose in Delhi, where ZEE5 operates and where the film was accessible.

The Commercial Court held that no cause of action existed against Respondent 1 since there was no direct contractual privity and that the suit was not maintainable there. It also found lack of territorial jurisdiction over Respondents 2 to 5, returning the plaint against them.

Detailed Reasoning:The High Court undertook an extensive analysis of procedural law and copyright provisions to evaluate the correctness of the Commercial Court's order.

Partial Rejection of Plaint, not permissible:The Court recognized that under Order VII Rule 10 CPC, a plaint is returned when a suit is filed in a court lacking jurisdiction, while under Order VII Rule 11(a) CPC, a plaint is rejected if it does not disclose a cause of action. The Court emphasized that a plaint cannot be rejected partially; it must either be wholly rejected or upheld, citing authoritative precedents, including the Supreme Court decision in *Geetha v. Nanjundaswamy* (2023 SCC OnLine SC 1407), which clarifies this principle.

The Court noted that the Commercial Court erred in rejecting the plaint against Respondent 1 and returning it against others simultaneously, which is not permissible.

Part of cause of action and Jurisdiction:Regarding jurisdiction, the Court relied on Section 20(c) of the CPC, which allows suits to be instituted where a cause of action, wholly or partly, arises. Since the film was streamed on the OTT platform ZEE5 accessible in Delhi, the Court held that at least part of the cause of action did arise within the Court’s territorial limits.

Significantly, the Court detailed the copyright provisions under the Copyright Act, 1957, particularly Sections 14, 17, and 51. The author of literary works—here, the dialogues and songs—holds exclusive rights including reproduction, public communication, and adaptation.

Section 51 of the Copyright Act deems infringement to occur when any person, without a license, exercises these exclusive rights or permits a place (such as an OTT platform) to communicate the infringing work to the public for profit.

The Court held that mere lack of contractual privity with Respondent 1 does not extinguish the cause of action for copyright infringement. The OTT platform owner, as the entity streaming the film containing the author’s copyrighted dialogues without authorization, is liable as an infringer under Section 51(a)(ii).

Accessibility of Platform and Jurisdiction:The Court also rejected attempts by Respondent 1 to differentiate their platform from "interactive websites" used in commerce by highlighting technical differences with subscription models and transaction types. It held that such distinctions do not negate the fact that the streaming constituted communication to the public within the meaning of copyright infringement and thus created jurisdiction in the Court where the platform is accessible.

Further, the Court observed that the appellant's grievances against all respondents formed an interconnected "bouquet of grievances" related to copyright infringement. This interconnection precluded splitting the suit by defendant. Hence, the suit was maintainable against all respondents in the Commercial Court sitting at Saket, Delhi.

Judgements Referred:The Court relied on these important precedents and legal principles: Geetha v. Nanjundaswamy, 2023 SCC OnLine SC 1407 — Partial rejection of plaint not permitted; entire plaint must be accepted or rejected.Maqsud Ahmad v. Mathra Datt & Co, AIR 1936 Lah 1021 — Early precedent on rejection of plaint. Sejal Glass Ltd. v. Navilan Merchants (P) Ltd., (2018) 11 SCC 780 and Madhav Prasad Aggarwal v. Axis Bank Ltd., (2019) 7 SCC 158 — Affirming that plaint cannot be rejected segment-wise. Banyan Tree judgment: Regarding territorial jurisdiction and "purposeful availment" in online contracts. Sections 14, 17, and 51 of the Copyright Act, 1957 — On copyright ownership, exclusive rights, and definition of infringement. The Court also carefully noted the procedural impropriety in the rejection/return order and set aside the impugned order.

Decision:The appeal was allowed to the extent that the impugned order of the learned Commercial Court dated March 20, 2025, was quashed and set aside.The matter was remitted to the learned Commercial Court at Saket for fresh adjudication, with instructions to issue summons to all respondents and consider all pending applications, including granting territorial jurisdiction over the suit as maintainable against all defendants.The rejection of the suit against Respondent 1 and return of plaint against Respondents 2 to 5 was held to be unsustainable in law.

Case Title: Nilesh Girkar Vs Zee Entertainment Enterprises Limited and Others

Order Date: September 16, 2025

Case Number: RFA(COMM) 251/2025

Neutral Citation: 2025:DHC:8281-DB

Name of Court: High Court of Delhi

Name of Judges: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla

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

BASE SE Vs. Deputy Controller of Patents and Designs

Partial Grant of Patent

Fact:The matter concerns the rejection of a patent application by the Deputy Controller and its subsequent appeal under the Patents Act, 1970.The case begin with a patent application filed on 26 February 2009 titled "Pesticidal Mixtures Comprising an Anthranilamide Compound." It contained originally 24 claims related to a chemical mixture used to protect plants from harmful fungi and pests. 

The application was subjected to the examination process under the provisions of the Patents Act, and a First Examination Report (FER) dated 13 October 2014 objected to the claims under sections 2(ij), 3(e), 3(h), and 3(i). The applicant then amended the claims, reducing them to 18 and modifying the invention's title.

Partial allowance of Claims:After successive hearings and further amendments, claims 1 to 9 and 17 were accepted and others (claims 10 to 16) were rejected under section 3(h) of the Act. The Deputy Controller directed the applicant to amend the rejected claims. 

The Appeal:The appellant challenged this decision on several grounds: that section 3(h) was wrongly applied, there was a violation of natural justice due to inadequate hearing opportunities, and partial grant of patent was warranted. The appellant supported their case by referencing several judgments, including Siemens Engineering Manufacturing Co. of India Ltd. vs. Union of India (1976) 2 SCC 981 and unreported decisions relevant to patent law.

On the other side, the respondent argued that the impugned order was passed under section 21 of the Patents Act and hence not appealable. They also held that no partial patent grant was permissible under the law, and the appellant's contentions had no merit.

Discussion:The Court meticulously examined the legal provisions relevant to the issues. Sections 3(h), 3(i), 3(j), 15, and 21 of the Patents Act, 1970, formed the backbone of the legal analysis. Section 3(h) excludes methods of agriculture or horticulture from patentability. Section 3(i) excludes plants and animals except micro-organisms and biological processes related to their propagation. Sections 15 and 21 govern the Controller's power to refuse and the time frames for compliance and abandonment.

Importantly, the Court emphasized that the exclusion under section 3(h) is policy-driven, aimed at preserving traditional agricultural practices from monopolization. The Court relied on recommendations of the Ayyangar Committee and judicial pronouncements such as Monsanto Technology LLC v. Nuziveedu Seeds Ltd., 2019 3 SCC 381 and the recent unreported decisions from the Delhi and Calcutta High Courts. It clarified that section 3(h) excludes pure agricultural methods but does not bar technical, scientific innovations at the interface of agriculture and chemistry.

The impugned order was criticized for failing to distinguish between a pure method of agriculture and human scientific inventions embodied in chemical mixtures. The Court found no reasoning in the order to support the application of section 3(h), holding that this represents a narrow exception to patentability that does not include inventions like the present one.

Partial Grant of Patent:Regarding the issue of partial patent grant, the Court categorically held that the legislative scheme does not allow splitting claims within a single application into granted and rejected parts. The applicant must put the entire application in order for grant. Partial grants would disrupt the unity of invention principle and encourage legal uncertainty. Instead, rejected claims could be pursued via separate divisional applications under section 16 of the Act.

Finally, the Court dealt with procedural challenges about appealability and natural justice. It distinguished the impugned order as a decision under section 15 rather than a deemed abandonment under section 21, allowing the appeal to proceed. It further held that the appellant had not abandoned the application and had responded to objections within prescribed timelines, negating any claim of procedural unfairness.

Decision:The Court allowed the appeal and set aside the impugned order. It directed the Controller of Patents and Designs to reconsider the application afresh, complying with statutory procedures and principles within three months. The Court emphasized proper hearing rights for the applicant and clarified that the Controller was not bound by this order's observations, maintaining judicial neutrality on merits pending re-examination.

This judgment significantly clarifies the interpretation of sections 3(h) and 3(i) of the Patents Act, reinforcing the limited scope of exclusions and safeguarding the patent rights of innovations that intersect with agriculture but involve human technical intervention. It also reaffirms procedural safeguards in patent prosecution and rejects any notion of partial patent grants, emphasizing statutory coherence and legal certainty.

Case Title: BASE SE Vs. Deputy Controller of Patents and Designs  

Order Date: 16 September 2025  

Case Number: IPDPTA 3 of 2023  

Name of Court: High Court at Calcutta

Name of Hon'ble Judge: 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

UPL Limited Vs. Union of India

The Intersection of Patent Procedure and Natural Justice

Facts: This case revolves around a patent application made by UPL Limited seeking rights over a specific fungicidal combination, which, according to the company, shows unexpected benefits such as a reduction in fungal diseases, delayed ageing in crops, and improved yield. The invention proposed the combination of various categories of fungicides—specifically a succinate dehydrogenase inhibitor (SDHI), a dithiocarbamate fungicide, and another fungicide from either the ergosterol biosynthesis inhibitor or quinone outside inhibitor family. UPL filed a provisional specification on 4 November 2016 and followed up with a complete specification and request for examination on 1 November 2017 under Patent Application No. 201631037704. The First Examination Report (FER) was issued by the authorities, after which UPL responded to the objections. However, a pre-grant opposition was filed by another party, and UPL had to submit replies and evidence.The core benefit claimed for the patent was the synergy created by combining different classes of fungicides, which, according to the applicant, resulted in superior technical performance on crops.

Procedural Details: The patent application went through several procedural stages. After UPL filed its original application and the subsequent complete specification, the Patent Office issued a First Examination Report in April 2019. UPL responded, clarifying and defending its claims. In July 2020, a pre-grant opposition was filed under Section 25(1) of the Patents Act, alleging lack of novelty, lack of inventive step, and that the invention was merely a non-patentable admixture. Both oral and written submissions were made by UPL and the opposing party. The hearing on the opposition was held in May 2023, and both sides subsequently filed written submissions.

On 3 November 2023, the Controller of Patents issued an order rejecting UPL’s patent application. UPL challenged this order in the High Court, arguing that the decision violated the principles of natural justice—primarily because the Controller neither considered expert evidence submitted by UPL nor afforded separate hearings for the application and the opposition as mandated by law. The challenge was filed as a writ petition under Article 226 of the Constitution rather than by way of statutory appeal.

Dispute

The main dispute in the case centers around the following issues:Whether the patent application was rejected validly on the ground that it lacked novelty and inventive step and constituted a mere admixture.Whether the procedure adopted during the hearing of the pre-grant opposition, including the consideration of evidence and the conduct of hearings, adhered to the principles of natural justice.Whether the writ petition before the High Court was maintainable, considering the existence of an alternative statutory remedy.

UPL argued that the Controller ignored material evidence, especially expert affidavits demonstrating technical advancement and synergy of the combination. UPL further contended that the Controller, in the final order, relied on his own technical analysis and data that were not shared with the parties, violating the right to a fair hearing. Additionally, UPL claimed that the legal requirement of holding separate hearings for the application (under Sections 14 and 15) and the opposition (under Section 25(1)) was disregarded, further infringing procedural rights.

The respondents (Union of India and opposing party) maintained that mere non-acceptance of expert evidence did not vitiate the order and argued that the High Court should not intervene since a statutory appeal remedy was available. They also defended the Controller’s findings regarding the lack of novelty and inventive step, asserting the invention did not demonstrate any real synergy beyond what was expected from the mixture of known fungicides.

Detailed Reasoning and Legal Discussion: The High Court, presided by Justice Ravi Krishan Kapur, began by addressing the maintainability issue. The respondents argued that the writ petition should be dismissed since UPL had an alternative statutory remedy—namely, an appeal under the Patents Act. However, the Court noted established principles from key judgments—Whirlpool Corporation vs. Registrar of Trade Marks (1998) 8 SCC 1, Harbanslal Sahnia vs. Indian Oil Corporation Ltd. (2003) 2 SCC 107, and Radha Krishan Industries vs. State of H.P (2021) 6 SCC 771—that although alternative remedies exist, writ jurisdiction under Article 226 can still be invoked in cases where there is a violation of natural justice, lack of jurisdiction, or where fundamental rights are affected.

Referring to these precedents, the Court explained that the principle of “alternative remedy” is not absolute and serves more as a rule of prudence and convenience. The Court is empowered to intervene where procedural or substantive natural justice is denied, or when statutory procedures are ignored.

The Court then proceeded to examine the substantive legality of the proceedings before the Controller. A key legal issue was the proper application of Section 25(1) of the Patents Act (pre-grant opposition), Sections 14 and 15 (examination of applications), and Rule 55(5) of the Patent Rules. The Court highlighted that under law, pre-grant opposition and the application review are two separate processes. Legal precedent requires them to be conducted distinctly so that the applicant receives fair opportunity to respond to objections regarding their patent application as well as specific oppositions raised by opponents.

Justice Kapur observed that, in the present case, the expert affidavit and technical evidence submitted by UPL were not addressed or even recognized in the impugned order. Instead, the Controller conducted an independent technical analysis and drew conclusions without disclosing the basis to UPL or inviting submissions in response. This, in the Court’s view, violated the core principles of natural justice, especially the right to a fair hearing and to respond to the evidence against one’s case. The authorities also failed to grant UPL separate hearings as required under the Act and Rules.

The Court further pointed out that, as elaborated in the Supreme Court’s judgment in Oyster Point Pharma Inc v. Controller of Patents and Designs, 2023 SCC Online Cal 1214 and AstraZeneca v. Intas Pharmaceutical Ltd., 2020 SCC Online Del 2765, the law recognizes the possibility to submit additional evidence to demonstrate technical advancement, even after the initial application. Therefore, the argument that expert evidence could not be considered was found unsustainable.

On the merits, the Court declined to express any views on the substantive patentability or validity of UPL’s invention. Instead, it restricted its analysis to procedural fairness. The Court noted that since technical material evidence had been disregarded and the required procedural safeguards not followed, the order under challenge was unsustainable.

Decision: The High Court set aside the order of the Controller dated 3 November 2023. The matter was remanded for fresh consideration by a different Hearing Officer who must hold separate hearings under Sections 14 and 25, consider all evidence (including the expert affidavit), and pass reasoned orders on both the application and pre-grant opposition as required by law. The Court expressly clarified that there had been no adjudication on the merits—every issue was left open for fresh consideration and decision.

Case Title: UPL Limited Vs. Union of India & Ors.

Order Date: 16 September 2025

Case Number: WPA-IPD No.3 of 2024

Neutral Citation: 2025:CHC-AS:1812

Name of Court: High Court at Calcutta

Name of Hon’ble Judge: 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