Alkem Laboratories Ltd. Vs Alchem International Pvt. Ltd.

Case Title: Alkem Laboratories Ltd. Vs Alchem International Pvt. Ltd.

Order Date: 10th October 2025

Case Number: CSCOMM 10502018, I.A. 101012018, I.A. 36392020, I.A. 142222021, I.A. 144752021, I.A. 155142021

Neutral Citation: 2025:DHC:10502018

Court: High Court of Delhi at New Delhi

Hon'ble Judge: Justice Amit Bansal

Fact:

Alkem Laboratories Ltd. (Plaintiff) was incorporated in 1973 and uses the trademark ALKEM for pharmaceutical and nutraceutical products, with significant market presence and multiple registered trademarks dating back to 1973. Alchem International Pvt. Ltd. (Defendant), incorporated in 1982, uses the mark ALCHEM for pharmaceutical-related goods including API and Ayurvedic extracts and began retail sales in India from 2006. The Plaintiff alleged that the Defendant's use of the mark ALCHEM infringed its trademark ALKEM, causing confusion, and filed suit for permanent injunction against Defendant's use of ALCHEM for overlapping products.

Procedural Details:

The Plaintiff filed the suit in 2018 along with interim injunction applications under Order XXXIX Rule 1 and 2 CPC to restrain Defendant from using ALCHEM mark, seeking to maintain the status quo, and subsequent applications were filed as Defendant amplified its marketing of ALCHEM. Mediation was attempted but unsuccessful. The Defendant filed applications seeking to vacate interim orders. The matter was heard across multiple dates ending with judgment reserved on 11th July 2025 and pronounced on 10th October 2025 by Justice Amit Bansal.

Dispute:

The core dispute is over trademark infringement and passing off. Plaintiff claims prior use and registration of ALKEM since 1973 and challenges Defendant's adoption of the deceptively similar mark ALCHEM from 1985 onwards, especially for retail sales starting 2006. Defendant pleads honest concurrent use since the 1980s, contends lack of confusion due to different product lines, asserts acquiescence and delay by Plaintiff, and denies infringement, claiming ALCHEM is only a source identifier on labels.

Detailed Reasoning:

The Court examined the facts that the marks ALKEM and ALCHEM are phonetically identical and visually similar. Plaintiff held trademark registrations and had significant goodwill and reputation in ALKEM since 1973. Defendant started use in 1985 but only began retail sales in India in 2006. The Court found Plaintiff to be the prior user and registered proprietor, while Defendant had no trademark registration in India for ALCHEM despite multiple applications.

On acquiescence and delay, the Defendant's plea was rejected relying on legal precedents establishing that mere silence or delay does not amount to acquiescence. There must be positive encouragement or consent to be acquiescence. The Court held Plaintiff took positive steps like cease-and-desist notices and oppositions to prevent Defendant’s registration attempts, negating acquiescence claims. The Court noted Plaintiff filed suit when Defendant expanded business in similar product segments post-2017, which justified timing.

The Defendant's claim of honest concurrent use was rejected since it was aware of Plaintiff's prior rights and goodwill but adopted a confusingly similar mark, especially when moving into retail sales post-defiance of legal notices. The defense that products were different and no likelihood of confusion was also dismissed. Evidence showed both dealt with overlapping pharmaceutical and nutraceutical products through similar trade channels, pharmacies, and online platforms, leading to potential consumer confusion.

The Defendant's argument that ALCHEM was used as a mere source identifier on packaging was contradicted by promotional activities, including standalone use of the ALCHEM mark in advertisements, videos, and media, constituting infringement under Section 29(5) and (6) of the Trade Marks Act, 1999.

In assessing balance of convenience and irreparable harm, the Court sided with Plaintiff, noting harm to Plaintiff's goodwill and public confusion risks.

Judgment:

The Court granted interim injunction restraining Defendant from selling, manufacturing, advertising, or in any manner dealing with pharmaceutical or medicinal products under the mark ALCHEM or any deceptively similar mark to ALKEM in India for retail purposes. The injunction does not apply to Defendant's use of ALCHEM for manufacture and sale of APIs for sale in India and abroad, provided it is not used for retail sales in India.

The suit thus prima facie established trademark infringement and passing off by Defendant. The Defendant's defenses of acquiescence, bona fide use, product differentiation, and non-confusion were rejected on prima facie review. Final resolution was listed for further hearing.

Relevant Legal Provisions Discussed:

• Section 29(5) and (6), Trade Marks Act, 1999 concerning infringement by use of marks causing confusion

• Order XXXIX Rule 1, 2, and 4 of the Code of Civil Procedure, 1908 governing interim injunctions and status quo maintenance

• Doctrine of acquiescence and delay as discussed in Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. (1989) PTC 61, Power Control Appliances v. Sumeet Machines (1994) 2 SCC 448, Midas Hygiene Industries v. Sudhir Bhatia (2004), and subsequent Delhi High Court rulings

• Principle that prior user and registered proprietor rights prevail and that likelihood of confusion must be prevented especially in pharmaceutical products (citing Cadila Health Care v. Cadila Pharmaceuticals, 2001 5 SCC 73)

The Court emphasized that for similar pharmaceutical products, a stricter standard applies to avoid confusion, promoting “one mark, one source, one proprietor” doctrine in trademark protection.

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

Suggested Titles for Legal Research Paper:

1. "Trademark Conflicts in Pharmaceuticals: Analysis of Alkem Laboratories vs Alchem International"

2. "Doctrine of Acquiescence and Concurrent Use in Indian Trademark Law: A Case Study"

3. "Balancing Prior Use and Honest Adoption: Trademark Infringement in Pharmaceutical Industry"

4. "Likelihood of Confusion and Passing Off: Lessons from Alkem Laboratories Litigation"

5. "Interim Injunctions and Trademark Protection in the Health Sector: A Judicial Perspective"

Ramnish Verma & Finesse Fashions Pvt. Ltd. v. The Haddad Apparel Group Ltd. & Ors.

Case Title: Ramnish Verma & Finesse Fashions Pvt. Ltd. v. The Haddad Apparel Group Ltd. & Ors.

Order Date: 7th October 2025

Case Number: Commercial IP Suit No. 247/2023

Neutral Citation: 2025 BHC OS 18067

Name of Court: High Court of Judicature at Bombay, Commercial Division

Hon’ble Judge: Hon'ble Justice Sharmila U. Deshmukh

This case involves a trademark infringement and passing off dispute centered on the use of the trademark "ROOKIES" by the plaintiffs and the allegedly similar use of "ROOKIE USA" by the defendants. The plaintiff, Ramnish Verma, is the registered proprietor of the trademark "ROOKIES" and several related marks registered in India and select other countries, and they conduct business under this mark through exclusive brand outlets and multi-brand outlets. The defendants include The Haddad Apparel Group Ltd. and associated entities who have used the mark "ROOKIE" and "ROOKIE USA" in India, including opening retail stores under that mark without the consent of the plaintiffs.

The dispute arose when the plaintiffs found that the defendants had adopted the mark "ROOKIE USA" prominently highlighting the word "ROOKIE" in their branding, which the plaintiffs claimed was deceptively similar to their registered "ROOKIES" mark and likely to cause confusion among consumers. The plaintiffs issued cease and desist notices and initiated rectification proceedings against some of the defendants’ trademark registrations. Since the defendants had registrations for "ROOKIE" in Classes 18 and 35 but did not initially register in Class 25 (covering clothing), complexity arose over whether the goods and services covered by the marks were similar and potentially infringing.

Procedurally, the plaintiffs filed this suit for injunction and damages seeking to restrain the defendants from using the impugned mark or any mark confusingly similar and to transfer domain names incorporating "ROOKIE." The defendants contested the suit, relying on prior registrations of "ROOKIE" in India and abroad, arguing that their goods and services did not overlap with the plaintiffs'.

The detailed reasoning of the court involved an examination of the trademark registrations, prior use, and evidence presented on both sides. The court noted that the plaintiffs had used "ROOKIES" since 2008 for clothing and footwear (Class 25) and had established goodwill and reputation in India with retail presence across multiple cities. The defendants’ registration of "ROOKIE" in Classes 18 (bags, wallets) and 35 (retail services) was noted with their first retail store in India under "ROOKIE USA" opening in 2019. The court emphasized the legal principle that classification of goods and services is for administrative convenience and does not solely determine infringement issues. It examined whether the goods (clothing) and the services (retail and marketing) are associated or cognate in commercial trade terms.

The court referred to established Supreme Court precedents such as Neon Laboratories Ltd. v. Medical Technologies Ltd. [2016 2 SCC 672] and principles related to prior use, abandonment of registered marks, and the doctrine of prosecution history estoppel, which prevents parties from taking contradictory stances in trademark oppositions. The court found that the defendants had not demonstrated genuine use of their registered marks in India prior to plaintiffs’ use of "ROOKIES," indicating potential abandonment of the defendants' claimed rights. The court held that the defendants' adoption of "ROOKIE USA" was dishonest and likely to cause confusion among the public, causing harm to plaintiffs' goodwill.

Further, the court considered the likelihood of confusion under Section 29 of the Trade Marks Act, 1999, holding that the presence of similar marks on related goods or services can result in infringement if the public is likely to be deceived or confused. It rejected defendants’ arguments that goods and services in different classes cannot be compared, noting commercial realities and consumer perception override mere classification. The court also underscored that prior registration as such does not give absolute immunity if the registration is found to be obtained or used fraudulently or dishonestly.

The court granted interim injunctions restraining the defendants from using the mark "ROOKIE" or any confusingly similar mark, including the domain names containing "ROOKIE," pending trial. It also directed the defendants to hand over the domain name "rookieindia.com" to the plaintiffs or take steps to take down the website. The court stayed the operative order for six weeks to allow for necessary compliance.

In conclusion, the judgment affirms the principles that trademark protection is grounded in prior use, reputation, and likelihood of consumer confusion. It establishes that courts may look beyond registration, especially where registrations appear fraudulent or marks are not genuinely used. The judgment underscores the legal protections against dishonest adoption of marks likely to cause confusion and the importance of safeguarding brand goodwill in Indian commercial law.

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

Suggested Titles for Publication:

"Trademark Infringement and Passing Off: The 'ROOKIES' vs. 'ROOKIE USA' Dispute"

"Beyond Registration: Examining Honest Use and Fraud in Indian Trademark Law"

"Commercial Realities and Trademark Classifications: A Legal Analysis"

"Doctrine of Prosecution History Estoppel in Trademark Disputes: Insights from Ramnish Verma v. Haddad Apparel"

"Trademark Protection and Consumer Confusion: Principles Affirmed by Bombay High Court"

Ms. Rajilaxmi Oils Vs. Kriti Nutrients Ltd.

Case Title: Ms. Rajilaxmi Oils Vs. Kriti Nutrients Ltd.

Order Date: 6th October 2025

Case Number: M.P. No. 4924/2023

Neutral Citation: 2025 MPHC IND 29084

Name of Court: High Court of Madhya Pradesh at Indore

Hon’ble Judges: Shri Justice Vivek Rusia and Shri Justice Binod Kumar Dwivedi

This case arises from a dispute between Ms. Rajilaxmi Oils and Kriti Nutrients Ltd. involving trademark and copyright claims. The petitioner, Ms. Rajilaxmi Oils, filed a civil suit under Section 142 of the Trade Marks Act, 1999, and Section 60 of the Copyright Act, 1957, in 2020 before the Commercial Court, Indore. Subsequently, the respondent filed another suit against the petitioner in 2021, also in the Commercial Court, Indore. During the pendency of these suits, the respondent obtained an ex-parte injunction from the Commercial Court, Delhi, which led to the seizure of the petitioner’s products. The petitioner alleged wrongful seizure and continued non-release of their goods even after the dismissal of the Delhi suit.

Due to these circumstances, the petitioner delayed filing their written statement in the main suit before the Commercial Court, Indore. They applied for condonation of this delay and for their written statement to be taken on record. The trial court denied this application, holding that the delay was unjustified and that the written statement was filed beyond the 120-day statutory limit prescribed by the Commercial Courts Act, 2015. The petitioner challenged this denial by filing the present petition under Article 227 of the Constitution of India.

The dispute hinged mainly on whether the trial court was justified in refusing to allow the belated filing of the written statement. The court carefully analyzed the provisions of Order VIII Rule 1 of the Civil Procedure Code as amended by the Commercial Courts Act, 2015, which governs the time limit for filing written statements. These provisions stipulate that a defendant must file a written statement within 30 days of service of summons but may be granted an extension by the court for reasons recorded in writing, provided it does not exceed 120 days. Beyond this 120-day period, the right to file a written statement is forfeited, and the court is not empowered to allow further extensions.

The court gave detailed consideration to the petitioner’s submissions that the delay was caused due to parallel suits and the impact of an ex-parte injunction obtained in the Delhi court, which impaired their ability to file the written statement on time. The court rejected these arguments, emphasizing that the Delhi suit was dismissed well before the filing of the written statement and that no genuine effort was made to file it within the statutory period after that dismissal.

The court referred extensively to authoritative Supreme Court judgments including SCG Contracts India Private Limited v. K.S. Chamankar Infrastructure Private Limited (2019 12 SCC 210), Raj Process Equipment and Systems Pvt. Ltd. v. Honest Derivatives Pvt. Ltd. (2022 SCC Online SC 1877), and Prakash Corporates v. Dee Vee Projects Limited (2022 5 SCC 112), which underscore the imperative of maintaining strict timelines in commercial litigation to ensure speedy justice. The court noted that these rulings maintain that the Commercial Courts Act’s 120-day period for filing written statements is mandatory and not extendable except within that window.

Ultimately, the court held that the trial court had rightly exercised its discretion and abided by statutory mandates in refusing to permit the belated written statement. The petition was dismissed as devoid of merit, affirming that procedural timelines in commercial suits are strict and that delay without sufficient cause cannot be condoned in the interest of expedient dispute resolution.

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

Lifestyle Equities C.V. & Another Vs. Amazon Technologies Inc.

Case Title: Lifestyle Equities C.V. & Another Vs. Amazon Technologies Inc.

Order Date: 7th October 2025

Case Number: Civil Appeal No. 19767 of 2025

Neutral Citation: 2025 INSC 1190

Name of Court: Supreme Court of India

Hon’ble Judges: J.B. Pardiwala J. and K.V. Viswanathan J.

The case before the Supreme Court arose out of a trademark infringement suit filed by Lifestyle Equities C.V. and its subsidiaries against Amazon Technologies Inc. and others. Lifestyle Equities claimed proprietary rights over the well-known trademark "Beverly Hills Polo Club" (BHPC), used extensively in garments, footwear, and lifestyle products. The plaintiffs alleged that Amazon Technologies and related parties had unlawfully used and sold goods bearing a deceptively similar mark, resulting in infringement, dilution of goodwill, and unfair competition. Lifestyle sought permanent injunctions, damages, and rendition of accounts from the defendants.

The suit was initially filed in the Delhi High Court and proceeded ex parte against Amazon Technologies after it failed to file a written statement despite summons. The High Court granted an interim injunction restraining the defendants from using the infringing logo and later decreed permanent injunctions along with damages amounting to Rs. 336 crores (approximately USD 38.78 million) and costs of over Rs. 3 crores. The damages awarded were based on computations submitted by Lifestyle during trial, which substantially enhanced the principal claim from an initial amount of Rs. 2 crores in the plaint to Rs. 336 crores in written submissions, without formal amendment or notice to defendants.

Amazon Technologies challenged the decree in appeal before the Division Bench of the Delhi High Court, contending various procedural and substantive irregularities including defective service of summons, lack of proper pleadings supporting massive damages awarded, and absence of evidence linking Amazon Technologies to infringement. The Division Bench accepted the appeal and granted stay of the judgment and decree without requiring Amazon to deposit the decretal amount pending appeal. The Division Bench noted serious infirmities in the proceedings before the Single Judge, including failure to serve summons properly, improper ex parte proceedings, and lack of pleading on Amazon's involvement specifically in infringing activities. The Division Bench also observed that the damages claim was grossly inflated without amendment of pleadings or notice to Amazon. Consequently, the stay was granted as an exceptional case involving egregious procedural lapses and patent illegalities in the original suit proceedings.

Lifestyle Equities filed a Special Leave Petition in the Supreme Court seeking to set aside the stay and enforcement of the decree. The Supreme Court thoroughly examined the contested issues, analysing the legal provisions under Order XLI Rules 5, 13, 53 of the Civil Procedure Code (CPC) governing stay of execution of money decrees pending appeal. The Court emphasized that while the general rule requires deposit or security to stay execution, the appellate court has a discretionary power to grant unconditional stay in exceptional cases involving egregious perversion or patent illegality in the judgment. The Apex Court also carefully reviewed precedents on service of summons, holding that summons must be properly served for jurisdiction and valid ex parte proceedings, citing the strict principles of natural justice. It was found that summons were never properly served on Amazon Technologies, rendering its ex parte treatment legally flawed.

The Court rejected Lifestyle’s contention that the exorbitant damages awarded could be sustained without formal pleading and notice, ruling that exact claims for damages must be pleaded and cannot be substantially enhanced post-trial without amendment. The Supreme Court observed that the original decree suffered from procedural infirmities and unreasonable enhancement of damages without due process. The Court recognized that the Division Bench had followed proper legal exercises to grant an unconditional stay to prevent grave miscarriage of justice.

In conclusion, the Supreme Court confirmed the Division Bench’s order granting unconditional stay of execution of the money decree against Amazon Technologies. The Court held that an appellate court may grant unconditional stay of execution in exceptional cases where the decree is egregiously perverse, riddled with patent illegality, or the suit procedure is fundamentally flawed. The judgment clarified the balance between securing decree-holder rights and safeguarding due process for judgment debtors, underscoring that stays are not automatic but must be granted based on sufficient cause and discretion.

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

Kanhiaya Lal and Others Vs. Subhash Chandbr

Court’s Power to Implead Legal Heirs in Trademark Disputes

Facts:This case involves a trademark dispute that traces back to the family business of Panchhi Petha Store, founded in 1952 in Agra by late Panchhi Lal. Over time, the business and the trademark rights were distributed between his two sons, Kanhaiya Lal and Subhash Chander, and their respective descendants. The original partnership registered the trademark "PANCHHI KA PETHA AUR DALMOTH" in 1971. After Panchhi Lal’s passing, a family settlement was executed in 1982 stipulating rights to use the trademark and maintaining a one-kilometer distance between respective shops operating under the "PANCHHI" name. As years passed, disputes arose when the petitioners learned that the respondent, Subhash Chandbr, had secured multiple trademark registrations in different classes without the knowledge or inclusion of the petitioners. This led to the filing of rectification petitions challenging the registrations and asserting independent rights over the "PANCHHI" trademark, as stipulated in the family settlement.

Procedural Details: Rectification petitions were originally filed before the Intellectual Property Appellate Board (IPAB) and subsequently transferred to the Delhi High Court after the IPAB was abolished. During the course of proceedings, two key petitioners, Kanhaiya Lal and Anil Kumar, passed away. Applications were filed to bring their legal heirs on record and to condone the delay in such filings—delays that resulted from bereavement, gathering legal documentation, and ongoing mediation. Respondents objected, arguing that the applications were filed well beyond prescribed limits and that the cause of action had abated against the deceased petitioners. Relying on Order XXII Rule 4 of the CPC and Section 5 of the Limitation Act, the petitioners pleaded that the delay was not deliberate but caused by unforeseen circumstances, and that the proceedings should continue on merits by impleading the legal heirs.

Dispute: The dispute centered on control and use of the "PANCHHI" trademark arising from the family settlement, as well as the right of descendants to carry out business under the established brand name. The petitioners contended their rights were being undermined by the respondent’s unilateral trademark registrations and sought to rectify the Trademark Register to restore a fair balance as agreed upon in the family settlement. The respondent resisted, citing technical delays and lack of proper cause for condonation, and relied on prior legal precedents suggesting abatement and loss of legal standing due to late filing.

Detailed Reasoning: The Court examined the facts carefully, including the terms of the family settlement that gave rise to independent trademark rights for both families and their male descendants. It cited the Supreme Court judgment in Mithailal Dalsanagar Singh v. Annabai Devram Kini (2003 10 SCC 691), which established that applications to bring legal heirs on record must be liberally construed, and that technicalities should not override substantive justice. The Court found that bereavement, mediation attempts, and administrative complexities following the death of petitioners justified condoning the delay. The family settlement agreement, especially Clause 4, was strongly relied upon, affirming the rights of descendants to carry out business under the "PANCHHI" brand and to take legal action collectively to protect their interests.

The Court also dismissed respondent’s reliance on DSGMC v. Jagmohan Singh (2021 SCC OnLine Del 5423) and Shivamma dead by LRs v. Karnataka Housing Board (2025 SCC OnLine SC 1969), finding those cases inapplicable to the particular family arrangement and independent rights at stake. The judge underscored that technical defaults should not bar parties from having their disputes decided on merits, especially where equity and long-standing business interests are involved.

Decision: The Court allowed the applications for impleadment of legal heirs, condoned the delay, and restored the abated petitions. The legal heirs—Mohit Goyal, Ankit Goyal, and Gaurav Goyal—were impleaded with direction for the petitioners to file amended memoranda within two weeks and pay costs of Rs. 25,000 per case to the respondent. By adopting a justice-oriented approach rather than dismissing on procedural grounds, the Court reinforced the principle that matters of substantial interest—like rights under a family settlement and registered trademark—should be adjudicated on merits and not buried due to technical delays.

Case Title: Kanhiaya Lal and Others Vs. Subhash Chandbr and Another

Order Date: 9th October 2025

Case Number: C.O. COMM.IPD-TM 339/2022 

Neutral Citation: 2025:DHC:8983

Name of Court: High Court of Delhi at New Delhi

Hon’ble Judge: 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

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

Patent Infringement and Person in the Know

The Appeal: In this matter, the High Court of Delhi was called upon to decide an appeal by F. Hoffmann-La Roche AG against Natco Pharma Limited regarding the manufacture and sale of the drug "Risdiplam." The appellants, holders of Indian Patent IN 3343971 concerning compounds for treating spinal muscular atrophy, sought an injunction to prevent Natco from producing and selling Risdiplam.

Facts: The facts of the case are straightforward. F. Hoffmann-La Roche AG is the patentee for Risdiplam, marketed under the brand name EVRYSDI used for spinal muscular atrophy. Natco Pharma began manufacturing and marketing Risdiplam, which the appellants argued amounted to patent infringement under Section 48 of the Indian Patents Act. The legal question was whether Natco's actions amounted to patent infringement and, if so, whether Natco could successfully invoke statutory defenses to avoid liability.

The Procedural Background: The dispute arose after a single judge of the High Court declined the injunction against Natco, leading the appellants to file the present appeal. Natco Pharma, as defendant, admitted to making and selling Risdiplam but asserted a legal defense under Section 107 of the Patents Act. This defense relies on Section 64(e) and 64(f), which allow a patent to be revoked if the invention is not new (lacking novelty) or is obvious (lacking an inventive step).

The Court’s detailed reasoning began by clarifying the law surrounding appellate review, citing Wander Ltd. v. Antox India P Ltd. (Supreme Court: 1990 Supp SCC 727), emphasizing that appeals against discretionary relief like injunctions are not appeals on facts but on principles. The Court would not substitute its own judgment for that of the original judge unless the lower court exercised its discretion arbitrarily or ignored settled legal principles.

The Legal Provision: Legal provisions under scrutiny included Section 48 (patentee’s rights), Section 64(e) (lack of novelty), and Section 64(f) (obviousness) of the Patents Act. Notably, infringement as such is not strictly defined in the Act, but Section 48 grants patent owners the exclusive right to control the making, using, selling, or importing of the patented product.

The Single Judge, whose decision was under appeal, found in favor of Natco based on these defenses. The core legal issue centered around two concepts: whether Risdiplam was "disclosed" within the scope of prior art (other earlier patents), and whether the claimed invention was obvious to a skilled person in the field.

The Single Judge and the Division Bench focused on whether Risdiplam, though covered under a so-called "Markush" chemical claim in earlier patents (WO916, US955), had been "disclosed" in such a way as to destroy novelty under Section 64(e). The difference between "coverage" (a compound is one of many possible encompassed by a broad patent claim) and "disclosure" (the compound is specifically taught or enabled) was discussed at length, referencing notable precedents including Novartis AG v Union of India (2013 6 SCC 1) and Astrazeneca AB v Intas Pharmaceutical Ltd (2020 84 PTC 326 Del).

While earlier cases such as Astrazeneca held that a plaintiff alleging infringement of both a genus (broad) and a species (narrow) patent amounts to admitting disclosure in the genus patent, the Division Bench in this case questioned whether infringement (predicated on coverage) was the same as invalidity (predicated on disclosure). The Bench favored the view that disclosure must be enabling – it should teach a skilled person how to make the specific compound; mere theoretical coverage is not sufficient. However, as the Single Judge's ruling was consistent with the then-prevailing interpretation of Astrazeneca, it was not faulted.

The obviousness: On the question of obviousness under Section 64(f), the Court examined whether, based on teachings in earlier patents and general knowledge, a skilled person could have arrived at Risdiplam without inventive effort. It was observed that Risdiplam differed from "Compound 809" of the prior art only by a single atom – a nitrogen (N) in place of a CH group. The Division Bench elaborated that several compounds in the prior art involved variations at this very position, and chemical principles (such as those set out in the Grimms Hyride Displacement Law) suggested substituting nitrogen for carbon-hydrogen as a routine modification. The Court also referred to the fact that in pharmaceutical chemistry, it is common to make such changes to optimize properties like potency and stability.

Person in the Know: Importantly, the decision observed that where the inventors of both the earlier patent and the current patent are the same, the "person skilled in the art" test shifts. The actual inventor, being "in the know," is presumed to choose relevant modifications more easily and to know how to arrive at the claimed invention. This mitigates against permitting so-called "evergreening," where a small, obvious change is used to obtain a new patent and extend exclusivity, especially in the realm of essential or life-saving drugs.

The Court cautioned that patent protection is intended only for true inventions, and that prolonging monopolies by minor modifications that would have occurred to the original inventors themselves conflicts with public interest. If inventors are allowed to obtain new patents for minor, obvious changes, society may suffer by not having access to important drugs at affordable rates.

In the concluding part, the Division Bench stated that its appellate review was limited to checking whether the judge below applied the correct legal principles. Since the judge did so, and no arbitrary or capricious conduct was shown, the appeal was dismissed. The Bench did not find it necessary to examine every nuance of the parties’ arguments in detail, since the core legal findings were unimpeachable. A credible challenge to the validity of the patent had been established, so the injunction was rightly denied.

Decision: The appeal was dismissed, affirming that a credible defense of obviousness had been shown. The Court did not interfere with the lower court’s exercise of discretion, leaving the validity of the patent and the parties’ broader disputations to potential further proceedings or trial stages if warranted.

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

Order Date: 9th October 2025

Case Number: FAO(OS)(COMM) 43/2025

Neutral Citation: 2025:DHC:8943-DB

Name of Court: High Court of Delhi at New Delhi

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

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

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

Tapas Chatterjee Vs. Assistant Controller of Patents and Designs

Guidelines for Assessing Inventive Step in Patent Appeals

Facts: This case involved a patent dispute centering around the process for recovery of potassium sulphate and other valuable products from distillery spent wash, ultimately leading towards a Zero Liquid Discharge (ZLD) system. The appellant, Tapas Chatterjee, applied for a patent for this process in 2019, aiming to address the issue of water pollution caused by alcohol distilleries. The invention was intended to recover potassium sulphate, magnesium sulphate, activated carbon, and other value-added products from effluent, with the additional benefit of ZLD, which meant no liquid effluent was discharged back into the environment. The Council of Scientific and Industrial Research (CSIR) filed a pre-grant opposition against this application, citing several provisions of the Patents Act, 1970.

Procedural Detail: After the application was filed, the Assistant Controller of Patents and Designs (AC) conducted the standard examination, including the First Examination Report and subsequent reply from the appellant. The AC then dealt with the pre-grant opposition by CSIR, which was based on multiple grounds under Section 25(1) of the Patents Act. The main objections were that the invention was not novel, lacked inventive step, was not patentable under Section 3(d), and the methodology was not sufficiently described.

The AC rejected the opposition regarding lack of novelty but upheld the challenges relating to inventive step and Section 3(d). Consequently, the patent application was refused. The appellant appealed to a Single Judge of the High Court of Delhi, who affirmed the Controller’s decision. The appellant then brought a Letters Patent Appeal before the Division Bench.

Dispute: The core of the dispute revolved around two primary legal issues: Whether the invention as claimed was non-patentable under Section 3(d) of the Patents Act on grounds of being a mere use of a known process? Whether the invention lacked an inventive step, i.e., it was obvious in light of prior art documents , as per Section 2(1)(ja) and Section 25(1)(e)? The respondents (CSIR) contended that all steps described by the appellant were already disclosed in prior arts individually or in combination, and did not present any technical advance or require inventive faculty?

Detailed Reasoning: The Division Bench delved deeply into the reasons given by the Assistant Controller and the Single Judge. It noted that although the Controller accepted that the subject invention was novel, he still found a lack of inventive step compared to prior arts D1 (US patent) and D2 (Indian Standard). According to the Controller and the Single Judge, the steps of the claimed process were standard chemical engineering procedures, and no aspect of the steps was sufficiently distinct to warrant patent protection. The Controller held that routine operations (like concentration, thermal decomposition, dissolution, recovery) were obvious.

However, the Division Bench identified that the reasoning of both the AC and the Single Judge was inadequate and did not reflect a detailed, independent analysis of the prior arts compared to the subject invention. The Bench emphasized the importance of the legal test for inventive step outlined in F. Hoffmann-La Roche Ltd v. Cipla Ltd., which includes identifying the “person skilled in the art,” identifying the inventive concept, assessing the general knowledge at the priority date, and recognizing the differences between prior art and the claimed invention.

The key legal finding was that the Controller had failed to articulate which specific features of the claimed invention were obvious, and simply concluded so without detailed comparison. The prior arts (D1 and D2) had different approaches, products, and processes compared to the claimed invention’s steps, especially regarding the various fractions and recovery steps described in the application, and the additional by-products (magnesium sulphate, activated carbon) which were not claimed outcomes in D1 or D2.

The Division Bench also clarified the application of Section 3(d): it will only apply if the invention is a mere use of a known process, which was not positively shown in this case, and Section 3(d) would not apply if the process yields a new product or uses a new reactant. Since the process resulted in value-added products not described in the prior arts, the invocation of Section 3(d) was incorrect. Ultimately, the approach of the Controller (mechanical and unsupported by explicit reasons) and the analysis of the Single Judge (which skipped essential steps in the Hoffmann test) were found deficient.

Decision: The Division Bench allowed the appeal. The orders of the Single Judge and the Assistant Controller rejecting the appellant’s patent application were set aside. The matter was remanded to CGPDTM (Controller General of Patents, Designs and Trade Marks) for fresh consideration, specifically to reconsider the inventive step objection under Section 25(1)(e) read with Section 2(1)(ja), based strictly on the principles laid down in Hoffmann and the present judgment. The Bench unequivocally rejected the Section 3(d) objection raised by CSIR, stating there was no material basis for treating the process as a mere use of a known process. The adjudicating authority was directed to render a well-reasoned decision post-hearing, limited to the material already on record, and both parties were allowed to supplement their written submissions.

Case Title: Tapas Chatterjee Vs. Assistant Controller of Patents and Designs & Anr.

Order Date: 6 October 2025

Case Number: LPA 836/2023

Neutral Citation: 2025:DHC:8824-DB

Name of Court: High Court of Delhi at New Delhi

Hon’ble Judges: Justice C. Hari Shankar, 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

B. L. Agro Industries Limited Vs. Registrar of Trade Marks

Stay of operation of registration of the mark in Trademark Appeal

Facts  :The appellant, B. L. Agro Industries Limited, is a long-time user and registered proprietor of the trademark "NOURISH" in Class 30, which covers a wide range of food-related products including edible oils, ghee, milk and dairy products, pulses, tea, coffee, flour, confectionery, spices, and other allied goods. The mark "NOURISH" has been in use since 2007, and the appellant holds registrations covering Classes 29, 30, and 31.  

The respondent Urban Exports (P) Ltd. applied for registration of the mark "TeaNOURISH" (stylized) under Application No. 6544100 in Class 30 covering similar goods such as coffee, tea, biscuits, confectionery, spices, and sauces. The respondent claimed user of this mark since December 1, 2020.  

Procedural Detail  :B. L. Agro filed an opposition (Opposition No. 1347124) against the registration of the respondent's mark on the ground that "TeaNOURISH" was deceptively similar to its registered "NOURISH" mark, specifically highlighting that the word "Tea" is descriptive and laudatory, not distinctive on its own. It contended that the exclusive trademark right lies in the word "NOURISH."  

An interim injunction restraining the respondent from using the impugned mark was granted by the Commercial Court, where B. L. Agro also filed a suit (CS(COMM) 910/2024) against the respondent. Given the overlap of issues, the suit was directed to be transferred to the High Court to be heard along with the present appeal.  

Dispute  :The dispute primarily revolves around the similarity and likelihood of confusion between "NOURISH" and "TeaNOURISH" marks, the scope of trademark protection in composite marks, and whether the descriptive word "Tea" can dilute the distinctive character of "NOURISH." The appellant claims prior adoption, use, and registration rights since 2007, whereas the respondent claims usage only from late 2020.  

 Reasoning  :The Court recognized that B. L. Agro is the prior adopter and registered proprietor of the trademark "NOURISH" widely used for a broad variety of food products starting 2007. The impugned mark "TeaNOURISH" overlaps in class and nature of goods leading to a high likelihood of confusion in trade channels and among consumers.  

The Court noted that the addition of the word "Tea" (which is laudatory and descriptive) does not create material distinction because it merely describes some characteristic of the goods and is not a distinctive element. Therefore, the dominant and registrable feature of the respondent’s mark is "NOURISH," which is identical to the appellant’s mark.  

It was held that under Section 9(1)(b) of the Trade Marks Act, 1999, if two marks are identical or deceptively similar and used for similar or allied goods or services, the later mark should be refused registration to prevent confusion among consumers. The suit's interim injunction demonstrates the prima facie case of deception and irreparable injury to the appellant.  

The Court directed that the registration of the respondent's mark "TeaNOURISH" granted by the Registrar of Trade Marks be stayed during the pendency of this appeal and suit. This preserves the balance of rights pending final adjudication.  

Decision  :The Court issued notice to the respondents and stayed the operation of registration of the mark "TeaNOURISH" pending disposal of the appeal and the transferred suit. 

Case Title: B. L. Agro Industries Limited Vs. Registrar of Trade Marks & Another  

Order Date: September 24, 2025  

Case Number: C.A.(COMM.IPD-TM) 65/2025  

Name of Court: High Court of Delhi  

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia  

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  

Pushpdeep Cotex Private Limited Vs Anoop Agarwal

Role of Artistic Labels and Color Combinations in Trademark Disputes

Facts:In this case, Pushpdeep Cotex Private Limited, the petitioner, filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking cancellation of trade mark registration no. 5925080. This registration covered a label device granted to respondent Anoop Agarwal on May 6, 2023, in Class 26, which pertains to textile goods like saree falls. 

The petitioner claimed it had been using the trademarks “Rani” and “Rachna” on saree falls and blouse textile pieces for many years, with the earliest trademark “Rani” registered since May 16, 2000. The petitioner presented evidence showing continuous and extensive use of these marks and their artistic labels since 2007. It also produced artistic receipts, newspaper advertising, and a caution notice issued in 2021 well before the respondent’s adoption of the impugned mark.

Procedural Detail:The respondent, Anoop Agarwal, countered the petition by stating that his label “Ragini Smile Polyester Saree Fall” was adopted in February 2022 for honest and bona fide reasons and that the trademark application was granted without any objection from the Trade Mark Registry. The respondent claimed that the mark “Ragini” was distinct from “Rani” and “Rachna,” both phonetically, visually, and conceptually, and that there was no risk of confusion to the public. Proceeding further, the High Court heard arguments from both sides, reviewed evidence placed by the petitioner, and considered the respondent’s defenses.

Dispute:The central dispute revolved around whether the impugned label registered by the respondent was deceptively or confusingly similar to the petitioner’s earlier registered marks and their associated artistic presentation. The matter called for a determination of prior and continuous use, the strength and originality of the petitioner’s artistic labels, and the risk of confusion among the consumers due to similarities in the marks and trade getup.

Reasoning:The High Court thoroughly examined the evidence and noted very strong visual and conceptual similarities between the petitioner’s and respondent’s labels. The petitioner’s label for “Rani” was artistically styled, and the same font, design, color scheme (yellow and red), tagline layout (“Smile Polyester Saree Fall” and “A Quality Product From The House Of …”), and imagery were all replicated in the respondent’s “Ragini” label. The only significant difference was the names “Rani” and “Ragini.” The Court found that even this difference lost importance because both were written in an identical style and lettering, leaving an overall impression of near identity between the labels.

The High Court relied on the benchmark judgment Colgate Palmolive Co. v. Anchor Health and Beauty Care P Ltd. [2003 SCC OnLine Del 1005], which observed that substantial imitation of color combination and get-up of a container can itself cause deception—even if the trade names differ. The test is the likelihood of confusion or deceptiveness in the minds of unwary customers.

The Court also emphasized that distinctive color combinations and artistic styles could serve as trade marks, protected not only against direct copying but also against substantial and conscious imitation. It found the petitioner had shown prior and wide use of its label since 2007, with the 2021 caution notice predating the respondent’s adoption in 2023.

Further, the Court applied the principle that rights of a prior user override registration by a subsequent user. Citing S. Syed Mohideen v. P. Sulochana Bai [2016 2 SCC 683], the Court reiterated that rights of prior use always prevail over later registrants. This was further supported by reference to Neon Laboratories Ltd. v. Medical Technologies Ltd. [2016 2 SCC 672] and N.R. Dongre v. Whirlpool Corp. [1996 5 SCC 714], noting that prior use involving generation of goodwill and reputation outscores statutory registration.

The respondent’s defense of honest adoption and absence of registry objection was not accepted because the similarities were overwhelming and the evidence for prior use by the petitioner was clear. The Court concluded that the respondent was a subsequent user and the adoption of the mark was both dishonest and in bad faith.

Decision:Accordingly, the High Court ordered cancellation of respondent’s trademark registration no. 5925080 under Section 57 of the Trade Marks Act, 1999. The Registrar of Trade Marks was directed to rectify and remove the impugned trademark from the Register within four weeks. The petition and related applications were disposed of, affirming the legal position that the rights of a prior user, backed by substantial evidence of continuous use, trump a later registration even if the registry was not objected to initially.

Case Title: Pushpdeep Cotex Private Limited Vs Anoop Agarwal & Another

Order Date: September 24, 2025

Case Number: C.O. COMM.IPD-TM 108/2025

Name of Court: High Court of Delhi

Name of Hon’ble Judge: 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

Gopika Industries Vs Dayal Industries Pvt. Ltd.

Prima Facie Plea of Invalidity of registered Trademark

Facts of the Case:The lawsuit was initiated by Gopika Industries, which claimed infringement of its registered trademark DYAL, used for cattle feed and registered since April 4, 1996 under Trade Mark No. 709502 in Class 31. Gopika Industries had records showing use of the DYAL mark both in English and regional languages. The defendant, Dayal Industries Pvt. Ltd., is also in the business of manufacturing and selling cattle feed and holds its trademark DAYAL (Trade Mark No. 923948) registered on May 10, 2000 in Class 31. Both parties claimed to use their respective marks for similar goods and in similar languages.

Procedural Detail:Dayal Industries filed an application seeking court permission to initiate rectification proceedings against Gopika Industries' registered trademark. In its written statement defending the application, Dayal Industries raised several pleas to challenge the validity of the DYAL mark. These included claims that Dayal Industries was the prior user of the mark DAYAL for cattle feed products since 2000, while the earliest invoice of plaintiff Gopika Industries was from 2001. 

The defendant claimed further rights through its own group company Dayal Fertilizers Pvt. Ltd., which used the mark DAYAL in allied products as early as 1979. The defendant also asserted that the plaintiff was misusing the goodwill of the DAYAL mark to confuse consumers and pass off its products as those of Dayal Industries. Meanwhile, the group company Dayal Fertilizers Pvt. Ltd. had already filed a separate commercial suit against Gopika Industries regarding trademark issues.

Dispute:The core dispute was whether Gopika Industries' registration of DYAL in 1996 gave it superior rights, even if contemporaneous commercial use commenced later (2001), and if Dayal Industries could challenge this registration based on alleged prior use or invalidity. The defendant argued that mere registration did not suffice to claim rights if commercial use was delayed, and invoked grounds such as prior use by their company or affiliated group companies, as well as visual and phonetic similarity of the marks DYAL and DAYAL. The plaintiff countered by relying on statutory provisions and judicial precedents that clarified the status of rights derived from statutory registration of trademarks.

Reasoning :The Court examined arguments from both sides, referring to the Trade Marks Act, 1999, especially Section 34, which deals with infringement protection based on prior use, and Section 18 regarding registration based on actual or proposed use. The defendant contended, relying on Section 34, that the plaintiff was barred from claiming rights based on mere registration, if actual use began after the defendant's usage. 

However, the court referred to the precedent set in Worknest Business Centre LLP v. Worknests through SH Raesh Goyal [2023 SCC OnLine Del 1678]. This landmark judgment clarified that the relevant date for establishing trademark ownership and prior use is the date of registration application, not actual commercial use. 

The law creates a presumption of validity and proprietary ownership for registered marks, irrespective of when commercial use begins, provided the proprietor demonstrates steps towards using the mark—which Gopika Industries did through documentary evidence and correspondence with authorities between 1996 and 1999.

The defendant's argument about prior use through Dayal Fertilizers Pvt. Ltd. was dismissed by the court because its trademark application (TM No. 923948 for cattle feed) only claimed user from May 2000 onward, not from 1979. Furthermore, Dayal Fertilizers Pvt. Ltd. was not selling cattle feed under the DAYAL mark, so its use in allied products (fertilizers) was held irrelevant to the present dispute.

The court cited two further judgments:

- Patel Field Marshal Agencies v. P.M. Diesels Ltd. [2018 2 SCC 112]

- Amrish Aggarwal Trading as Ms. Mahalaxmi Product v. Venus Home Appliances Pvt. Ltd. [2024 SCC OnLine Del 3652] 

Both judgments reconfirmed that the statutory presumption linked to registered marks stands unless clear, continuous prior use in the precise category of goods is established. The court found no adequate demonstration by the defendant of usage of DAYAL for cattle feed before April 4, 1996—the plaintiff's date of registration application—which under law is regarded as the decisive cut-off for prior use.

Decision:The Hon'ble High Court rejected the defendant's request to initiate rectification proceedings against Gopika Industries' trademark and dismissed the plea of invalidity. The application did not raise a triable issue affecting the registered mark DYAL held by Gopika Industries for cattle feed. The court clarified that its observations did not impact separate pending petitions between the parties or Dayal Fertilizers Pvt. Ltd., which would be decided independently. The suit remains listed for further trial on connected matters.

Case Title: Gopika Industries Vs Dayal Industries Pvt. Ltd.

Order Date: September 26, 2025

Case Number: CSCOMM 700/2017

Name of Court: High Court of Delhi

Name of 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

Triumph Designs Limited Vs Tube Investments of India

Non-Use as Grounds for Trademark Cancellation

Fact :This case is about a company called Triumph Designs Limited, which is the petitioner, asking the court to cancel a trademark owned by Tube Investments of India, the first respondent, and another party. The trademark in question is "TRIUMPH," registered under number 135253 in class 12, which covers cycles that are driven only by feet, like basic bicycles. 

The main reason the petitioner wants this cancellation is because the respondent has not used the mark at all for a very long time. The petitioner is a well-known company from the United Kingdom that makes motorcycles and is part of a group including Triumph Motorcycles Limited and Triumph Motorcycles (India) Private Limited. They all use the "TRIUMPH" mark for motorcycles. The petitioner says they have been using "TRIUMPH" since 1886 in the UK, and over time, it has become famous worldwide, including in India, with good reputation and sales. They have registered the mark in India and many other countries for motorcycles. In India, they have used it continuously and advertised it a lot, leading to high sales. 

The petitioner found out about the respondent's old registration, which dates back to September 28, 1950, but claims there is no proof the respondent ever used it for bicycles. To support this, the petitioner showed internet search results showing no evidence of use. They argue that this unused mark is just blocking them from fully using their own mark and should be removed under the law because of non-use.

Procedural Detail  :The petitioner filed this application under Section 47 of the Trademarks Act, 1999, which allows for the removal of a registered trademark if it has not been used. The case number is IPDATM/30/2023, and it was heard in the Intellectual Property Rights Division of the High Court at Calcutta's Original Side.

Dispute  :The main fight here is whether the respondent's trademark "TRIUMPH" for foot-driven cycles should be canceled because it has not been used for over 75 years. The petitioner says yes, because non-use for five years or more means it can be removed under the law, and they provided proof like internet searches showing no activity. They also say this old unused mark is stopping the trademark office from letting them expand their own use. The respondent says no, arguing that the petitioner is not a "person aggrieved" under the law, meaning they are not really hurt by this mark.

The respondent points out that the petitioner has many registrations themselves that they do not use, like for mopeds or scooters, so they are being hypocritical and just want to grab the mark as a business rival. This, they say, is unfair and against public interest. The dispute boils down to whether the petitioner qualifies to ask for cancellation, if non-use is proven, and if there are any excuses for the non-use.

Reasoning:This case focuses on the rules for removing a trademark that is not being used, as set out in Section 47 of the Trademarks Act, 1999. This section says that a registered trademark can be removed if someone who is aggrieved applies, and shows either that it was registered without any real plan to use it and it was never used, or that it was not used for a continuous five years plus three months before the application. There is also a part about special reasons for non-use, like legal restrictions, that might excuse it. 

The court explains that three main things need to be true for removal: the applicant must be a person aggrieved, there must be no use for at least five years and three months before applying, and no special circumstances explain the non-use. To explain this, the court refers to a case called Kellogg Company vs. Pops Food Products (P) Ltd., 2018 SCC OnLine Del 6562, decided by the Delhi High Court. 

In that case, the court said that for removal due to non-use, these three conditions must be met, and the use has to be real and commercial in the right category of goods. Here, the court looked at the records and saw that the respondent got the mark in 1950 but showed no proof of using it for 75 years, which is way more than the five-year limit. The court says use must be genuine, meaning actual sales or promotion in the market for bicycles, and there is no explanation from the respondent for why they did not use it.  

To support this point about what counts as genuine use, the court brings up two more cases. One is Russell Corp Australia PTY Limited vs. Ashok Mahajan And Another, (2023) SCC OnLine Del 4796, also from the Delhi High Court. In that judgment, the court discussed how non-use means the mark must be taken off the register if there is no evidence of commercial activity, and internet searches or lack of sales records can prove non-use. 

The other is Fedders Llyod Corporation LTD & Anr vs. Fedders Corporation & Anr., ILR (2005) I Delhi 478, again from Delhi, where the court said that if a mark is registered but not used for years without reason, it blocks others and should be removed to keep the register clean. In this case, the court applies these ideas by saying the respondent's claim of use is empty, with no documents, so non-use is basically admitted.  

Person Aggrieved:Now, on whether the petitioner is a "person aggrieved," the respondent said no, because the petitioner is just a rival trying to corner the market and has unused marks themselves. But the court disagrees, using a key Supreme Court case: Hardie Trading Ltd. vs. Addisons Paint & Chemicals Ltd., (2003) 7 SCC 92. In that judgment, the Supreme Court explained that "person aggrieved" has different meanings depending on the section.

 For non-use under Section 47 (which was Section 46 in the old act, but similar), it is narrower, but for correcting wrong entries under Section 56, it is broader to keep the register pure for public interest.

 The court quotes paragraphs 30 to 32, where the Supreme Court says for non-use, the person must have a real interest, like being in the same trade, but for wrong registrations, anyone in the trade or public can apply. 

Here, the court says the petitioner is aggrieved because they are in a related field—vehicles like motorcycles—and the unused mark blocks them. The petitioner's own non-use of some marks does not matter, as the law focuses on the mark in question. The court rejects the respondent's argument that the petitioner is opportunistic, saying the law allows rivals to apply if non-use is clear.  

Decision :The court allowed the petitioner's application. It ordered that trademark number 135253 for "TRIUMPH" in class 12 be canceled and removed from the register because of proven non-use without any excuse. The court found the petitioner was a person aggrieved, the non-use was for far more than five years, and no special circumstances existed. The case IPDATM/30/2023 was decided in favor of the petitioner.

Case Title:Triumph Designs Limited Vs Tube Investments of India and Anr  

Order date: 25th September, 2025  

Case Number: IPDATM/30/2023  

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

Pooja Electric Co. Vs. Anand Tomar

Subsequent Trademark Grants in Pending Suits

Fact :This case involves a legal battle over trademarks between Pooja Electric Co., which is the plaintiff, and Anand Tomar, who runs a business called Pooja Rading Company, as the defendant. The plaintiff is a company dealing in electrical goods and has claimed rights over certain trademarks related to its business. The main suit was filed to protect these trademarks from being used by the defendant in a way that could confuse customers or harm the plaintiff's reputation. 

The plaintiff had applied for registration of three specific trademarks with numbers 2990322, 3382660, and 2990321 before starting the lawsuit. These applications were still pending when the suit began, and the plaintiff had already mentioned this fact in the original complaint, known as the plaint. After the court had gone through the initial stages and set the main issues for trial on December 18, 2024, something new happened. 

On January 14, 2025, the trademark office approved and granted registration for these three trademarks. This meant the plaintiff now had official certificates proving ownership of these marks. Wanting to update the court about this development, the plaintiff filed a request to change the plaint to include this new information. The defendant opposed this request, but did not file any written reply despite getting chances to do so. The court had to decide whether to allow this change at this stage of the case.

Procedural Detail  :The main lawsuit, numbered CS(COMM) 517/2023, was filed by Pooja Electric Co. against Anand Tomar under the laws protecting trademarks. Along with the suit, there were other related requests, like I.A. 14153/2023, but the key one here is I.A. 3702/2025, which is the application for amending the plaint. 

This application was made under Order VI Rule 17 of the Code of Civil Procedure, 1908, which is a rule that allows parties to correct or update their written statements in a lawsuit if needed, and also under Section 151 of the same code, which gives the court general power to do what is fair. 

Dispute : The main disagreement in this particular application was whether the plaintiff should be allowed to update the plaint to mention the new trademark registrations that were granted after the issues in the case had already been decided. 

The plaintiff argued that this was just a simple update to reflect the current reality, since the pending applications were already disclosed in the original plaint, and now they had become registered. This would help strengthen their case without changing the basic facts. The defendant, on the other hand, opposed the idea, though without explaining why in writing. The broader dispute in the suit is about trademark infringement, where the plaintiff claims the defendant is using similar names or marks that could mislead people into thinking the defendant's products are connected to the plaintiff's business. But for this application, the focus was narrow: is it okay to add this new fact about registrations without a full rewrite of the plaint, especially since the trial stage had started?

Reasoning: The court starts by looking at the rules under Order VI Rule 17 of the Code of Civil Procedure, 1908, which says that a party can ask to amend their plaint at any time, but after the trial begins, the court can only allow it if the change is needed to settle the real issues and if the party could not have known about it earlier despite trying hard. 

Here, the registrations happened after the issues were framed, so it was a new event that the plaintiff could not have included before. The court agreed that the basic facts about the trademark applications were already in the original plaint, so there was no need to rewrite everything. 

Instead, it allowed the plaintiff to just add the registration certificates to the record as Document-B and use them when presenting evidence. This way, the case can move forward without delay. The court also considered the stage of the suit, noting that issues were framed but evidence had not started yet, so this update would not unfair surprise the defendant. It pointed out that the defendant did not file a reply, which weakened their opposition. Overall, the court used its power under Section 151 of the Code of Civil Procedure to do what is just, keeping all arguments about the main dispute open for later.  

Decision  :The court allowed the plaintiff's application in part. It permitted the registration certificates to be placed on record as Document-B, and the plaintiff can use them during evidence. However, it said there is no need to actually amend the plaint because the key facts about the applications were already there. The application was disposed of with these directions, and the defendant's rights to argue on the main issues remain open. For the main suit, the plaintiff must file affidavits of all witnesses within four weeks, and the case is listed before the Joint Registrar on November 21, 2025, to fix dates for evidence.

Case Title:Pooja Electric Co. Vs. Anand Tomar Trading as Pooja Rading Company  

Order date: September 25, 2025  

Case Number: CS(COMM) 517/2023  

Name of Court: High Court of Delhi 

Name of Hon'ble Judge: 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

Helsinn Healthcare SA & Anr. Vs Hetero Healthcare Limited

Interpreting Time Limits for Replication in Delhi High Court: 

Facts:This case involves a patent dispute between two companies in the healthcare field. The plaintiffs, Helsinn Healthcare SA and another party, filed a lawsuit against the defendant, Hetero Healthcare Limited. The main claim was that the defendant was infringing on the plaintiffs' registered patent number 426553 by selling a product called "NETUPIN." The plaintiffs asked the court for a permanent order to stop the defendant from selling or promoting this product, along with requests for money damages, an accounting of profits, and handing over any infringing items. The lawsuit deals with medicinal or pharmaceutical products, and it touches on complex technology, including references to prior inventions that the defendant used in its defense. The written statement from the defendant was long, running to 81 pages, and relied on 12 earlier documents to argue against the patent claim. 

Procedural Details:The lawsuit started when the plaintiffs filed their complaint, and it first came before the court on April 30, 2024. On that day, the court gave a temporary order stopping the defendant from selling the product until the case could be heard more fully. The complaint was then officially registered as a suit, and a notice was sent to the defendant, who received it on May 21, 2024. The defendant filed its defense document, known as a written statement, on August 16, 2024, but this was late because the rules require it within 30 days of receiving the notice, with a possible extension up to 120 days in some cases. Since it was delayed, the defendant had to ask the court for permission to accept it late. On August 23, 2024, a court officer called the Joint Registrar allowed this delay but made the defendant pay 3,000 rupees as a penalty. The defendant paid this amount on August 30, 2024. After that, the plaintiffs filed their replication on October 5, 2024, along with a request to excuse a 13-day delay in filing it. The court had to decide on this request under a rule from the Delhi High Court that sets time limits for such replies.

Dispute:The main disagreement was about when the clock starts ticking for the plaintiffs to file their replication. The rules of the Delhi High Court say that a replication should be filed within 30 days of receiving the written statement, and the court can extend this by up to 15 more days if there is a good reason, but no longer than that. The defendant argued that the plaintiffs received the written statement by email on August 16, 2024, so the 30-day period ended on September 15, 2024, and even with the extra 15 days, it ended on September 30, 2024. Since the replication came on October 5, 2024, the defendant said it was too late and should not be allowed. The plaintiffs said the time should start from August 23, 2024, when the court officially accepted the late written statement, or even from August 30, 2024, when the penalty was paid. Using that starting point, the 30 days ended on September 22, 2024, and the full 45 days ended on October 7, 2024, making their filing on October 5 timely. They argued that until the court accepts a late defense, there is no need to reply to it, so the time should not start earlier.

Reasoning:The court looked closely at the rule in question, which is Rule 5 of Chapter VII from the Delhi High Court (Original Side) Rules, 2018. This rule says the replication must be filed within 30 days of receiving the written statement, and if the court sees a good reason like something unavoidable stopping the filing on time, it can give up to 15 more days, but not beyond that. The rule also says the plaintiff must pay some costs for the extension, and if no replication is filed even then, the court will decide what to do. An advance copy must be sent to the defendant. The court explained that this rule is meant to keep cases moving quickly and avoid delays, but it needs to be applied fairly. The judge noted that in normal cases where the defense is filed on time, the 30 days start from when the plaintiff gets it. But here, the defense was late, so it only became official when the court allowed the delay.

To support this view, the court discussed several past decisions. First, it referred to SNS Products Pvt. Ltd. v. Ijaz Uddin, 2023 SCC OnLine Del 787. In that case, the court said that when a written statement is filed late and only accepted after excusing the delay, the time for replication starts from the date it is taken on record. The reasoning was simple: if the court rejects the late defense, there is nothing to reply to, so it makes no sense to start the clock earlier. The judge in SNS Products explained that the Division Bench in an earlier case, Ram Sarup Lugani v. Nirmal Lugani & Ors., 2020 SCC OnLine Del 2621, had ruled that the 45-day limit is strict and cannot be extended beyond that, but it did not address when the period starts in cases of late filings. So, SNS Products filled that gap by saying the start date is when the defense is officially accepted.

The court also discussed Aroti Sarkar & Anr. v. Ashok Sarkar & Ors., order dated December 5, 2023 in CS(OS) 823/2022. There, the defense was accepted only if costs were paid, and since the costs were not paid yet, the time for replication had not even started. The judge agreed with SNS Products and said payment of costs is a condition for the defense to count, so the replication time begins after that. Similarly, in Parmeet Singh Anand v. Subhash Chand Aggarwal, order dated August 29, 2024 in CS(COMM) 824/2022, the court held that the replication period starts from when the written statement is taken on record after condoning the delay. The same idea was followed in Tata Sons v. Marvel Ltd., order dated December 19, 2024 in CS(COMM) 724/2024, and Quasar Airlines (P) Ltd. v. Shaurya Aeronautics (P) Ltd., 2025 SCC OnLine Del 2821, where the start date was the acceptance of the late defense.

In cases where acceptance depended on paying costs, like Neeraj Saran Srivastava v. Loudon Owen & Ors., Neutral Citation: 2025:DHC:283, and Bunch Microtechnologies Private Limited & Ors. v. Creator Economy Tech Private Limited & Ors., order dated March 14, 2024 in CS(OS) 14/2023, the courts said the time starts from when the costs are actually paid. The judge in this case applied these ideas, noting that the defense was accepted on August 23, 2024, with costs paid on August 30, 2024. Even starting from August 23, the replication on October 5 was within 45 days.

The defendant argued using other cases that the time always starts from receipt, like in Presto Stantest Pvt. Ltd. v. Pacorr Testing Instruments Pvt. Ltd. & Ors., Neutral Citation: 2023:DHC:9461, where an email was seen as receipt. Other cases cited included FITJEE Ltd. v. Vidya Mandir Classes & Ors., order dated September 4, 2023 in CS(OS) 656/2021; Shri Ram Housing Finance and Investment of India Ltd. v. Omesh Mishra Memorial Charitable Trust & Ors., order dated October 4, 2023 in CS(OS) 38/2023; Asha & Ors. v. Rajbala & Ors., order dated October 5, 2023 in CS(OS) 662/2021; Smt. Saroj & Ors. v. Smt. Uma & Ors., order dated December 5, 2023 in CS(OS) 539/2023; Dr. Reddys Laboratories Ltd. v. Wockhardt Ltd. and Anr., order dated February 26, 2024 in CS(COMM) 101/2023; Pradeep Kumar v. Sudesh Bhatia, order dated July 15, 2024 in CS(COMM) 500/2023; and Mrs. Bushra Shuaib v. Mr. Hilal Ahmed, order dated August 22, 2024 in CS(OS) 135/2023. These all said time starts from receipt of the defense.

The defendant also used Ram Swarup Lugani v. Nirmal Lugani & Ors., order dated September 30, 2019 in CS(OS) 182/2019; Ram Swarup Lugani v. Nirmal Lugani & Ors., Neutral Citation: 2020:DHC:3049-DB; Louis Dreyfus v. Nutralite Agro, Neutral Citation: 2024:DHC:238; Delhi Gymkhana Club v. Col. Ashish Khanna, 2024 SCC OnLine Del 7022; and the Supreme Court's order dated June 28, 2021 in SLP(C) No. 15142/2020 in Ram Swarup Lugani v. Nirmal Lugani & Ors. These emphasized that the 45-day limit is absolute and cannot be ignored. The defendant said SNS Products was wrong to mix up "receipt" with "taken on record," as receipt means getting the document, not court approval.

The court disagreed, saying those cases did not deal with late defenses, so they do not apply here. Instead, the line of cases like SNS Products better fits when the defense is belated. The judge also referred to Union of India v. Popular Construction Co., (2001) 8 SCC 470, where the Supreme Court said phrases like "but not thereafter" mean no further extensions, but here the issue was the start date, not extending beyond 45 days. 

The court said interpreting "receipt" as the date of official acceptance in late cases makes sense to avoid unfairness and keep the process logical. It helps decide cases on real issues rather than strict time traps. The judge noted the conflict in past decisions but followed the purposive approach, meaning looking at the rule's goal of fair and quick justice.

Decision: The court decided in favor of the plaintiffs. It ruled that the replication was filed within the allowed time, starting from August 23, 2024, when the written statement was accepted. The 13-day delay was excused, and the replication was allowed on record. 

Case Title: Helsinn Healthcare SA & Anr. Vs Hetero Healthcare Limited

Order Date: September 26, 2025

Case Number: CS(COMM)347/2024

Neutral Citation: 2025:DHC:8658

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Mr. Justice Tejas Karia

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