Rexcin Pharmaceuticals Pvt. Ltd. Vs Rekin Pharma Pvt. Ltd.

### Introduction

Decided by the High Court of Delhi, this judgment delves into the intricacies of the Trade Marks Act, 1999, emphasizing that mere incorporation or incidental mention of a name does not equate to trademark use unless it serves as a source identifier for goods or services. The dispute arose from overlapping corporate names beginning with "REXCIN" and "REKIN," but extended to allegations of trademark infringement and passing off for pharmaceutical products. The court's analysis underscores the importance of evidentiary proof in establishing actual commercial use, rejecting vague claims of similarity without demonstrable confusion or overlap in trade channels. This decision reinforces the principle that trademark rights are grounded in bona fide adoption and continuous use, not merely in registration or nominal presence, and serves as a cautionary tale for entities relying on trade names without active trademark deployment in the marketplace.

### Factual Background

Rexcin Pharmaceuticals Pvt. Ltd., incorporated in 2003, claimed to have coined and used the mark "REXCIN" since December 16, 2003, primarily as its trading style and house mark in the pharmaceutical sector. It asserted extensive use across India, displayed on product packaging, with significant promotional expenditure leading to substantial goodwill among the trade, medical professionals, and consumers. Rexcin's sales figures for the financial year 2021-2022 were reported at Rs. 830.09 lakhs, purportedly demonstrating sustained commercial activity. To protect its rights, Rexcin filed trademark applications in 2022 for "REXCIN" in Classes 16, 44, and 45, all claiming user since 2003, which were registered in December 2022. Applications in Class 5 (for pharmaceuticals) and Class 35 (for trading services) were also filed in April 2022, with the latter accepted and advertised, while the Class 5 application faced objections from the registry citing third-party marks. Notably, Rexcin admitted it was not using "REXCIN" as a product mark but as part of its corporate identity, functioning as a white-label manufacturer supplying gels and creams to major companies like Sun Pharmaceutical Industries Ltd. and previously Ranbaxy Laboratories Ltd., where products were sold under distinct third-party trademarks such as Gentalene Plus, Silverex Ionic, and Moisturex. Evidence like invoices from 2004, 2005, 2006, and 2022 showed sales to these entities, but "REXCIN" appeared only inconspicuously as the marketer or licensor, not as a source identifier for the goods themselves. On the other side, Rekin Pharma Pvt. Ltd., incorporated on March 6, 2017, positioned itself as a new-age pharmaceutical company offering affordable medicines across gynaecology, dermatology, cardiology, and general medicine. It launched over 60 products in 2017 under the "REKIN" brand with formatives like REKIN-SP, REKIN-NP, REKIN-CT, and REKIN-P, all Schedule H drugs sold directly to end consumers through B2C channels. Rekin claimed bona fide adoption of "REKIN" as a coined word, with extensive online presence via its website www.rekinpharma.in, social media, and third-party platforms, generating visibility and revenue. It secured registration for the device mark "REKIN PHARMA PVT. LTD." in Class 35 on February 23, 2021 (user claimed since January 1, 2017), and for the word mark "REKIN-SP" in Class 5 on September 1, 2020 (applied on May 4, 2017, on a proposed-to-be-used basis). Rexcin learned of Rekin's existence in May 2022 upon advertisement of the Class 35 mark, opposed it, leading to suspension, and filed the rectification petition against "REKIN-SP," alleging deceptive similarity by replacing "XC" with "K" and adding the generic "SP," claiming violations under various sections of the Trade Marks Act, 1999, including fraud, lack of distinctiveness, confusion, unfair advantage, passing off, and bad faith. Rekin countered that its marks were distinctive, there was no overlap in goods or consumers, no evidence of confusion despite six years of coexistence, and Rexcin had no Class 5 registration or actual trademark use, operating only in B2B as a supplier without consumer-facing products under "REXCIN." The parties' products, when inspected, confirmed Rekin's prominent use of "REKIN" formatives as trademarks, while Rexcin's appeared only as trade names on third-party branded items.

### Procedural Background

The dispute commenced with Rexcin filing CS(COMM) 142/2023 in March 2023, seeking permanent injunction against Rekin for trademark infringement, passing off, and related reliefs concerning the marks "REXCIN" and "REKIN," along with I.A. 4878/2023 under Order XXXIX Rules 1 and 2 CPC for interim restraint. Concurrently, Rexcin filed the rectification petition C.O.(COMM.IPD-TM) 111/2023 under Section 57 of the Trade Marks Act, 1999, challenging Rekin's "REKIN-SP" registration (No. 3541661) on grounds of absolute and relative prohibitions, including lack of distinctiveness, deceptive similarity, confusion, unfair advantage, passing off, bad faith, and arbitrary grant. The petition was listed before the court on March 14, 2023, with notice issued to Rekin on September 20, 2023. On March 4, 2024, a coordinate bench queried both parties on settling by restricting "REKIN" to corporate name use only, suggesting mediation if amenable, and listed for May 13, 2024. No settlement occurred, and the matters were argued together, with the court deciding to first resolve the rectification petition on rights in the marks before addressing the interim application. Rekin filed its reply, contending bona fide prior adoption, distinct spheres (B2C vs. B2B), no confusion evidence, and Rexcin's lack of Class 5 use or registration. Rexcin's rejoinder emphasized its tradename goodwill and deceptive similarity. The court heard arguments, perused records including invoices, Chartered Accountant certificates (deemed incomplete), and physical product samples. Reserved on September 24, 2025, the judgment was pronounced on January 27, 2026, dismissing the rectification petition and interim application, with the suit listed for directions on February 6, 2026.

### Reasoning and Decision of Court

The court's reasoning commenced with a detailed analysis of the factual matrix, noting Rexcin's 2022 registrations in Classes 16, 44, and 45, pending applications in Classes 5 and 35, and Rekin's prior 2017 application and 2020 registration for "REKIN-SP" in Class 5. It observed that on May 4, 2017, when Rekin applied for "REKIN-SP," Rexcin had no registrations or applications, making "REKIN-SP" the earlier mark under Section 11. Examining Rexcin's evidence, the court found sample invoices from 2004-2022 reflected only B2B sales of gels and creams to single entities like Sun Pharma, with "REXCIN" appearing as trade name, not trademark, and products sold under distinct third-party marks. The Chartered Accountant certificate was incomplete without product annexures, failing to prove trademark use. Product inspections confirmed "REXCIN" was inconspicuous, used as marketer/licensor, not source identifier, under Section 29(6). Rejecting Rexcin's reliance on Section 29(5), the court clarified it addresses defendant's tradename infringement, not plaintiff's use equivalence. Distinguishing cited precedents like Radheshyam Tourism and Laxmikant V. Patel, it emphasized Rexcin's lack of commercial nexus or consumer-facing use, unlike those cases. For Rekin, the court affirmed bona fide 2017 adoption, prominent trademark use on B2C pharmaceuticals, and no overlap with Rexcin's B2B sphere. Absent deceptive similarity, confusion evidence despite coexistence, or goodwill in "REXCIN" (no ads, promotions shown), statutory objections under Sections 9(1)(a), 9(2)(a), 11(1), 11(2), 11(3)(a), 11(10), and 18(4) were rejected: "REKIN-SP" was distinctive, no prior Rexcin mark, no passing off (lacking misrepresentation/damage), no bad faith, and grant not arbitrary. The rectification petition was dismissed for lacking merit. Extending this to the suit's interim application, the court denied injunction, as Rexcin failed prima facie case, balance of convenience, and irreparable harm, with Rekin as prior adopter. Reliance on Stiefel Laboratories was misplaced absent competing trademarks. Pending applications disposed, suit listed for directions.

### Point of Law Settled in the Case

This judgment settles that incidental or inconspicuous use of a corporate or trade name on product packaging, such as "manufactured for" or "under trademark usership," does not constitute "use as a trademark" under the Trade Marks Act, 1999, particularly Sections 29(5) and 29(6), unless it functions as a source identifier recognizable by consumers in the course of trade. It clarifies that for rectification under Section 57 or infringement claims, the petitioner/plaintiff must demonstrate actual commercial trademark use with evidence of consumer-facing sales, promotions, and goodwill, not mere nominal presence or B2B transactions under third-party marks. The decision emphasizes that prior adoption and registration in the relevant class (e.g., Class 5 for pharmaceuticals) prevail over later claims, absent proof of deceptive similarity, confusion, or passing off, even if names appear phonetically similar. It distinguishes trade names from trademarks, holding Section 29(5) inapplicable to equate plaintiff's tradename use with trademark rights, and rejects passing off without misrepresentation or damage, reinforcing evidentiary thresholds in pharmaceutical disputes where distinct trade channels (B2B vs. B2C) negate likelihood of confusion.

Case Detail**  

Title: Rexcin Pharmaceuticals Pvt. Ltd. v. Rekin Pharma Pvt. Ltd. & Anr.  

Date of Order: 27th January, 2026  

Case Number: C.O. (COMM.IPD-TM) 111/2023 & CS(COMM) 142/2023  

Neutral Citation: Not provided in the judgment  

Name of court: High Court of Delhi at New Delhi  

Name of Hon'ble Judge: Hon'ble Ms. Justice Manmeet Pritam Singh Arora  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it 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:**  

1. "Trade Name vs. Trademark: Delhi High Court Dismisses Rectification in Rexcin v. Rekin Pharma Dispute"  

2. "No Trademark Use, No Injunction: Analyzing the Rexcin Pharmaceuticals v. Rekin Pharma Judgment"  

3. "Bona Fide Adoption Prevails: Key Insights from Delhi HC's Ruling on Pharmaceutical Marks"  

4. "Deceptive Similarity in Pharma: Why Rexcin's Claim Failed Against Rekin's Prior Mark"  

5. "Evidentiary Gaps in IP Claims: Lessons from the Rexcin-Rekin Trademark Battle"  

**Suitable Tags:**  

Trademark Infringement, Passing Off, Trade Marks Act 1999, Pharmaceutical Trademarks, Deceptive Similarity, Rectification Petition, Prior Adoption, Goodwill and Reputation, Delhi High Court, Trade Name vs Trademark, B2B vs B2C Trade Channels, Section 57 Rectification, Interim Injunction Denial, Bona Fide User, Consumer Confusion  

**Headnote of Article**  

Delhi High Court dismisses rectification petition and interim injunction in trademark dispute between Rexcin Pharmaceuticals and Rekin Pharma, holding that incidental use of trade name does not constitute trademark use; prior bona fide adoption by Rekin in Class 5 prevails absent evidence of confusion, goodwill, or competing marks; clarifies Sections 9, 11, 18, 29 inapplicable without actual source-identifying use.

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Rexcin Pharmaceuticals Pvt. Ltd., incorporated in 2003, claimed prior adoption and use of “REXCIN” since December 2003 as its house/trade name in pharmaceutical manufacturing, mainly as a white-label supplier (B2B) to companies like Sun Pharma, with products sold under third-party trademarks and “REXCIN” appearing only inconspicuously as marketer/licensor; it held registrations in Classes 16, 44 & 45 (obtained 2022) and pending applications in Classes 5 & 35, but admitted no direct use of “REXCIN” on its own products for sale to end consumers. Rekin Pharma Pvt. Ltd., incorporated in 2017, adopted “REKIN” as its coined house mark and launched B2C pharmaceutical products under “REKIN” formatives including “REKIN-SP” (registered in Class 5 on 01.09.2020, applied 04.05.2017 on proposed-to-be-used basis). 

Rexcin filed rectification petition C.O.(COMM.IPD-TM) 111/2023 seeking cancellation of “REKIN-SP” on grounds of deceptive similarity, prior goodwill, confusion, passing off, bad faith, and violation of various Sections of the Trade Marks Act, 1999, and simultaneously filed suit CS(COMM) 142/2023 seeking injunction against Rekin for infringement and passing off. 

The Court first decided the rectification petition, finding that Rexcin failed to prove actual trademark use of “REXCIN” (mere trade name mention on third-party branded products insufficient under Sections 29(5) & 29(6)), no evidence of consumer-facing sales, promotions, goodwill or actual confusion despite six years coexistence, no overlap in trade channels (B2B vs B2C), and Rekin as bona fide prior adopter in Class 5. All statutory objections under Sections 9, 11, 18 were rejected; rectification petition dismissed for lack of merit. Consequently, interim injunction in the suit was also declined as Rexcin failed to establish prima facie case, balance of convenience, and irreparable injury.

Crisp Bullet Points of Law Settled: 

Incidental/inconspicuous mention of a corporate/trade name on product packaging (e.g., as “manufactured for” or “under trademark usership”) does not constitute “use as a trademark” or source-identifying use under the Trade Marks Act, 1999, particularly Sections 29(5) & 29(6), unless it functions as a badge of origin recognizable by consumers in the course of trade. 

For rectification under Section 57 or success in infringement/passing off claims, the petitioner/plaintiff must establish actual commercial trademark use with concrete evidence of consumer-facing sales, promotions, and acquired goodwill, not merely nominal B2B transactions or trade name presence. 

Section 29(5) applies only to defendant’s use of its trade name causing infringement; it cannot be invoked to equate plaintiff’s own incidental trade name use with trademark rights or to create prior rights against a later bona fide registrant. (Para distinguishing Section 29(5) applicability)  

In pharmaceutical trademark disputes, distinct trade channels (B2B white-label supply vs. direct B2C sales to end consumers) significantly reduce likelihood of confusion even when house marks appear phonetically similar. (Para on no overlap in goods, services, consumer base)  

- Absent proof of misrepresentation, actual damage, or likelihood of passing off, and with peaceful coexistence for years without confusion evidence, registration cannot be cancelled on grounds of Sections 9(1)(a), 9(2)(a), 11(1), 11(2), 11(3), 11(10) or 18(4). Prior bona fide adoption and registration in the relevant class prevail. (Para rejecting all grounds of cancellation)  

Case Title: Rexcin Pharmaceuticals Pvt. Ltd. Vs Rekin Pharma Pvt. Ltd. 27th January, 2026:C.O.(COMM.IPD-TM) 111/2023:2026:DHC:643: Hon’ble Ms. Justice Manmeet Pritam Singh Arora  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

=====

Pyromaitre Thermal India Pvt. Ltd. VS Pyromaitre INC.

Introduction: The case of M/s. Pyromaitre Thermal India Pvt. Ltd. v. Pyromaitre INC. and Others represents a significant judicial examination of the interplay between intellectual property rights enforcement and procedural mandates under the Commercial Courts Act, 2015, particularly the requirement for pre-institution mediation. Decided by the Bombay High Court in its civil appellate jurisdiction, this revision application underscores the evolving jurisprudence on whether suits alleging infringement of intellectual property rights can bypass the mandatory pre-litigation mediation process when they contemplate urgent interim relief. At its core, the dispute revolves around allegations of unauthorized use of proprietary designs and technical know-how in the manufacturing of industrial ovens, highlighting the tensions between protecting commercial innovations and adhering to statutory mechanisms aimed at reducing court backlogs through alternative dispute resolution. The High Court's ruling not only reaffirms the mandatory nature of Section 12A of the Act but also illustrates a balanced approach to exemptions, emphasizing the continuing nature of infringement as a key factor in determining urgency. 

Factual Background:Pyromaitre INC., a Canadian company incorporated under the Canada Business Corporations Act, is engaged in the business of manufacturing and selling industrial ovens and complex heat transfer machinery. The company has built a strong reputation in the industry for its innovative products, including the P-4412E Oven. In pursuit of expanding its operations in India, Pyromaitre INC. entered into a Licence Agreement dated 5th December 2013 with M/s. Pyromaitre Thermal India Pvt. Ltd., the applicant herein and original defendant No. 3 in the underlying suit. This agreement allowed the Indian entity to manufacture, use, and sell Pyromaitre INC.'s products by leveraging the licensor's technical and engineering knowledge and know-how. However, alleging breaches by the defendants, Pyromaitre INC. terminated the agreement effective 30th October 2015. The termination stemmed from claims that the defendants, including Vishnu Gangadhar Godse (a director and proprietor linked to the Indian company and another entity, M/s. R.V. Industries), had violated the terms of the licence. In April 2019, Pyromaitre INC. discovered that a prospective purchaser was in possession of an industrial oven that appeared to be a replica of its P-4412E model. Further investigations revealed that this infringing oven was identical in design and make to Pyromaitre INC.'s product, allegedly manufactured using the plaintiff's proprietary information without authorization. This discovery prompted Pyromaitre INC. to assert that the defendants were continuously infringing its intellectual property rights, causing ongoing harm to its business reputation, goodwill, and market position. The plaintiff contended that each instance of manufacture and sale constituted a fresh infringement, providing a continuing cause of action. Consequently, in March 2022, Pyromaitre INC. instituted Commercial Suit No. 14 of 2022 before the District Judge, Pune, seeking injunctions to restrain the defendants from further infringement, along with damages and other consequential reliefs. The plaint was signed and verified by Arunadevi Vinay Nayarankar as the authorized representative of Pyromaitre INC., and it explicitly pleaded the need for urgent interim relief to prevent irreparable injury from the persistent unauthorized use of its designs.

Procedural Background:The procedural journey of this case is marked by multiple rounds of litigation, reflecting the defendants' persistent efforts to challenge the suit at the threshold. Initially, in Commercial Suit No. 14 of 2022, the applicant (original defendant No. 3) filed an application under Order VII Rule 11 of the Code of Civil Procedure, 1908, seeking rejection of the plaint on grounds including non-compliance with Section 12A of the Commercial Courts Act, 2015 (requiring pre-institution mediation), absence of a cause of action, and lack of authorization for the signatory of the plaint. On 23rd October 2023, the District Judge, Pune, rejected this application (Exhibit-28), holding that the suit contemplated urgent interim relief and was thus exempt from mediation. Aggrieved, the applicant filed Civil Revision Application No. 702 of 2023 before the Bombay High Court, which, on 4th March 2025, partly allowed the revision and remitted the matter back to the Commercial Court for a fresh decision solely on the issue of whether the suit was barred by Section 12A for not resorting to pre-institution mediation. The High Court in this earlier order also addressed other grounds, finding that the plaint disclosed a cause of action and that any defect in signing/verification was curable, not warranting rejection. The applicant then escalated the matter to the Supreme Court via Special Leave Petition (Civil) No. 13532 of 2025. On 23rd May 2025, the Supreme Court disposed of the SLP, directing the Commercial Court at Pune to reconsider the matter afresh in light of its recent judgment in M/s. Dhanbad Fuels Pvt. Ltd. v. Union of India and Another (2025 INSC 696), while keeping all contentions open. Upon remand, the District Judge, Pune, vide order dated 24th June 2025, again rejected the application, concluding that the suit contemplated urgent interim relief due to the infringement of intellectual property rights, disclosed a cause of action, and was not vitiated by authorization issues. Dissatisfied, the applicant invoked the Bombay High Court's revisional jurisdiction once more through Civil Revision Application No. 470 of 2025, arguing that the lower court had misapplied the principles on urgency and mediation. 

Reasoning and Decision of Court: The Bombay High Court analyzed the applicant's contentions against the backdrop of Supreme Court jurisprudence on Section 12A. The Court first critiqued the lower court's framing of the issue as whether the suit could be "protected" from rejection, deeming it an incorrect perspective that should instead focus on whether the plaint was liable for rejection due to non-compliance with mandatory mediation. Relying on Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd. (2022) 10 SCC 1, the Court reaffirmed that Section 12A is mandatory, and suits violating it must face rejection under Order VII Rule 11 CPC, even suo motu. However, the exemption applies if the suit "contemplates any urgent interim relief." The Court examined the plaint holistically, noting averments in paragraphs 41 and 42 that asserted a continuing cause of action from ongoing infringement, despite the time lag. It rejected the applicant's argument that the delay negated urgency, emphasizing that intellectual property infringements often involve persistent injury and public interest elements, such as preventing market confusion and consumer deception. Drawing from Yamini Manohar v. T.K.D. Keerthi (2024) 5 SCC 815, the Court clarified that the test is subjective from the plaintiff's standpoint: whether the plaint and documents indicate a genuine need for urgent relief, not whether it is ultimately granted. The decision in Dhanbad Fuels (2025 SCC OnLine SC 1129) was invoked to stress that urgency is assessed based on the suit's nature, not merits, and must not be a camouflage to bypass mediation. Crucially, the Court applied the recent Supreme Court ruling in Novenco Building and Industry A/S v. Xero Energy Engineering Solutions Pvt. Ltd. (2025 SCC OnLine SC 2278), which mirrored the facts—ongoing infringement discovered years prior but suit filed later—holding that mere delay does not defeat urgency in continuing wrongs, as each act of infringement renews the cause. The High Court found the plaint's assertions of identical design replication and unauthorized use clearly demonstrated infringement, rendering the suit one contemplating urgent relief. Other grounds, like lack of cause of action and authorization defects, were dismissed as untenable, referencing prior observations that such issues are curable. Balancing the mandate of mediation with the need to protect rights, the Court concluded that a rigid construction would deprive parties of necessary relief. Thus, the impugned order was upheld, and the revision application was dismissed with costs, ensuring the suit proceeds on merits.

Point of Law Settled in the Case: This case settles that in commercial suits alleging infringement of intellectual property rights, the exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, is available even where there is a delay between discovery of infringement and suit filing, provided the plaint demonstrates a continuing cause of action and genuine contemplation of urgent interim relief from the plaintiff's perspective.  The Court clarifies that urgency is inherent in ongoing infringements, assessed holistically through the plaint's averments and documents, incorporating factors like irreparable harm, public interest in preventing deception, and the persistence of peril, rather than strict timelines or ultimate grant of relief. This prevents procedural formalities from rendering plaintiffs remediless against persistent wrongs, while guarding against abusive claims to evade mediation, aligning with Supreme Court directives to strike a balance between mandatory alternative dispute resolution and expeditious protection of proprietary rights.

Case Title: Pyromaitre Thermal India Pvt. Ltd. Vs. Pyromaitre INC. & Ors.  

Date of Order: 20th January, 2026  

Case Number:Civil Revision Application No. 470 of 2025  

Neutral Citation:2026:BHC-AS:2755  

Name of Court:High Court of Judicature at Bombay  

Name of Hon'ble Judge: N. J. Jamadar, J.  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

**Suitable Titles:**  

1. Navigating Urgency in IP Infringement Suits: Bombay High Court's Take on Section 12A Exemption  

2. Continuing Infringement and Pre-Institution Mediation: Analysis of Pyromaitre Thermal v. Pyromaitre INC.  

3. Delay Does Not Defeat Urgency: Judicial Insights on Commercial Courts Act in Intellectual Property Disputes  

4. Balancing Mediation Mandates with IP Protection: A Deep Dive into Bombay High Court's 2026 Ruling  

5. Exemption from Pre-Litigation Mediation in Ongoing IP Violations: Key Lessons from Recent Jurisprudence  

**Suitable Tags:**  

Commercial Courts Act, Section 12A, Pre-Institution Mediation, Intellectual Property Infringement, Urgent Interim Relief, Continuing Cause of Action, Bombay High Court, Supreme Court Precedents, Patent and Design Rights, Licence Agreement Breach, Civil Revision Application, Order VII Rule 11 CPC  

**Headnote of Article:**  

In a commercial suit for infringement of intellectual property rights involving continuing wrongs, delay in filing does not negate the contemplation of urgent interim relief under Section 12A of the Commercial Courts Act, 2015, exempting the suit from mandatory pre-institution mediation, as urgency is assessed from the plaintiff's standpoint considering ongoing harm and public interest. Revision application dismissed upholding rejection of plaint rejection plea.

======

Pyromaitre INC., a Canadian company specializing in industrial ovens, entered into a 2013 Licence Agreement with Pyromaitre Thermal India Pvt. Ltd. (defendant No.3) to manufacture and sell its products in India using proprietary technology. The agreement was terminated in 2015 due to alleged breaches. In April 2019, the plaintiff discovered an infringing replica of its P-4412E oven being sold, allegedly manufactured using its confidential designs and know-how by the defendants (including Vishnu Gangadhar Godse and related entities). 

Claiming continuing infringement, Pyromaitre INC. filed Commercial Suit No.14 of 2022 in March 2022 seeking injunction, damages, and other reliefs, without pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. 

Defendant No.3 moved for plaint rejection under Order VII Rule 11 CPC on grounds of non-compliance with mediation, lack of cause of action, and improper verification. The Commercial Court initially rejected the application in 2023; in revision (CRA/702/2023), Bombay High Court remanded the matter in March 2025 for fresh consideration on Section 12A only. After Supreme Court direction in May 2025 to consider Dhanbad Fuels precedent, the Commercial Court again rejected the application in June 2025. In the present revision (CRA/470/2025), the Bombay High Court upheld the order, finding the suit contemplated urgent interim relief due to the continuing nature of IP infringement despite delay, and dismissed the application with costs.

Points of Law Settled:  

In suits alleging continuing infringement of intellectual property rights, mere delay between discovery of infringement and filing of suit does not negate contemplation of urgent interim relief under Section 12A; urgency is inherent in the ongoing/persistent nature of the wrong, ongoing injury, irreparable harm, and public interest in preventing market confusion and consumer deception. (Paras 23–27, applying Novenco Building and Industry A/S v. Xero Energy Engineering Solutions Pvt. Ltd., 2025 SCC OnLine SC 2278)  

The test for “contemplates any urgent interim relief” is subjective from the plaintiff’s standpoint: the court must holistically examine the plaint, documents, and facts to assess genuine need for urgent intervention, not the ultimate grant of relief or merits of the case; the prayer must not be a camouflage to bypass mediation. (Paras 19–20, relying on Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815 and Dhanbad Fuels Pvt. Ltd. v. Union of India, 2025 SCC OnLine SC 1129)  

Case Title:Pyromaitre Thermal India Pvt. Ltd. VS Pyromaitre INC:20th January 2026:Civil Revision Application No. 470 of 2025 :2026:BHC-AS:2755: H.J. N. J. Jamadar, J.  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

=====

Karnataka Cooperative Milk Producers Federation Limited Vs Vinod Kanji Shah

# Madras High Court Protects 'Nandini' Trademark: Sets Aside Dismissal of Opposition Against Identical Mark for Agarbattis

Introduction: The trademark 'Nandini' has long been synonymous with dairy products in Karnataka and surrounding regions, owing to its extensive and continuous use by the Karnataka Cooperative Milk Producers Federation Limited since 1983. This mark enjoys significant goodwill and reputation as a household name for milk and milk-based products. 

The recent judgment of the Madras High Court in (T)CMA(TM) No.112 of 2023 reaffirms the judiciary's commitment to safeguarding well-known marks from deceptive similarity, even when applied to non-competing goods. In this appeal transferred from the Intellectual Property Appellate Board, the Court overturned the Deputy Registrar of Trade Marks' order dismissing the Federation's opposition to registration of an identical 'Nandini' mark (in stylised small letters without prefix or suffix) for agarbattis and doops in Class 3. 

The decision turns on phonetic identity, identical stylistic presentation, and the risk of consumer confusion or association, distinguishing it from the Supreme Court's earlier ruling in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183. 

By allowing the appeal, the Court emphasized that phonetic and visual similarity, coupled with the mark's acquired reputation, can justify refusal of registration under Sections 11 and 11(a) of the Trade Marks Act, 1999, irrespective of goods being dissimilar, thereby reinforcing protection against dilution or unfair advantage being taken of established marks.

Factual Background: The appellant, Karnataka Cooperative Milk Producers Federation Limited (KMF), is a federation of milk producers engaged in the procurement, processing, distribution, and sale of milk and milk products across Karnataka and neighbouring states. 

Since 1983, KMF has continuously used the trade mark 'Nandini' for its entire range of dairy products, building substantial goodwill and making it a household name in the region. The mark is duly registered and enjoys widespread recognition. 

The first respondent, Vinod Kanji Shah & Nitin Kanji Shah trading as Shalimar Agarbatti Company, secured copyright registration for labels featuring 'Nandini' in 1985 and obtained registration of the mark 'Nandini' under No.501980 in 1988, presumably for their goods. 

In the trade marks journal, KMF noticed an advertisement of the first respondent's application No.694185 in Class 3 for registration of a label mark prominently featuring the word 'Nandini' (written entirely in small letters, without any prefix, suffix, or distinctive device dominating the word) in respect of agarbattis (incense sticks) and doops (incense cones). 

Alarmed by the identical word and near-identical stylisation, KMF filed opposition No.731657, raising grounds under Sections 9 (distinctiveness), 11 (deceptive similarity and likelihood of confusion), 11(a) (passing off), and 18 (entitlement to registration) of the Trade Marks Act, 1999. 

The Deputy Registrar dismissed the opposition on 05.04.2010, holding that 'Nandini' is a personal name over which no monopoly can be claimed, the goods are entirely different, resemblance is minimal, and no confusion or deception is likely. Aggrieved, KMF appealed the order, which was originally filed before the IPAB and later transferred to the Madras High Court following abolition of the IPAB.

Procedural Background:The opposition proceedings were conducted before the Deputy Registrar of Trade Marks, Chennai (second respondent), who passed the impugned order dated 05.04.2010 rejecting KMF's opposition to application No.694185. 

The appeal against this order was initially instituted before the Intellectual Property Appellate Board, Chennai, under Section 91 of the Trade Marks Act, 1999. Following the abolition of the IPAB and transfer of pending appeals to High Courts, the matter was renumbered as (T)CMA(TM) No.112 of 2023 before the Madras High Court. 

Reasoning and Decision of Court: The Court began by noting the undisputed facts: both parties use the word 'Nandini', the appellant enjoys long-standing reputation and registration for dairy products, and the first respondent sought registration for agarbattis and doops in Class 3. The Deputy Registrar rejected the opposition primarily on grounds that 'Nandini' is a personal name (derived from Hindu mythology, meaning a divine cow or goddess), no exclusive right exists over it, goods are dissimilar, resemblance is minimal, and no confusion is likely. 

The Court then analysed the Supreme Court's decision in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (2018) 9 SCC 183, where the same appellant opposed registration of 'NANDHINI DELUXE' for restaurant foodstuffs. In that case, the Apex Court upheld registration, finding 'NANDHINI' generic, goods dissimilar (no milk products claimed), phonetic similarity insufficient due to the added 'DELUXE' and different stylisation/logos, and no deceptive similarity when viewed as a whole. 

The Madras High Court distinguished the present case on critical facts: here, the offending mark uses 'Nandini' identically—without prefix/suffix—and in the exact same all-small-letter style as the appellant's prominent usage. Phonetically identical and visually/stylistically near-identical, the mark carries a high risk of deception or association, especially given the appellant's massive reputation built over decades. 

A consumer familiar with 'Nandini' dairy products could easily be misled into believing a connection exists with the incense products. The Court held that the Deputy Registrar failed to consider these distinguishing features—phonetic identity, identical stylisation, and acquired reputation—rendering the impugned order erroneous. Accordingly, the appeal was allowed, the order dated 05.04.2010 set aside, and no costs were imposed.

Point of Law Settled in the Case:This judgment settles that phonetic identity combined with near-identical stylisation of a well-known mark can render a later mark deceptively similar under Section 11 of the Trade Marks Act, 1999, warranting refusal of registration even for dissimilar goods in different classes, where there exists a likelihood of confusion, association, or unfair advantage being taken of the earlier mark's reputation. 

The Court clarified that the Supreme Court's ruling in Nandhini Deluxe (2018) 9 SCC 183 does not lay down an absolute proposition protecting all uses of 'Nandini/Nandhini'; distinctions in additional elements (prefix/suffix like 'Deluxe'), different artistic presentation, logos, and overall get-up are decisive. Where the later mark adopts the dominant word identically in spelling, pronunciation, and writing style without differentiating features, and the earlier mark enjoys substantial goodwill, opposition must succeed to prevent deception or dilution. 

Case Title:Karnataka Cooperative Milk Producers Federation Limited Vs. Vinod Kanji Shah & Nitin Kanji Shah, Trading as Shalimar Agarbatti Company & Anr.  

Date of Order:19.01.2026  

Case Number:(T)CMA(TM) No.112 of 2023  

Name of Court:High Court of Judicature at Madras  

Name of Hon'ble Judge:Mr. Justice N. Anand Venkatesh  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it 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:**  

1. Phonetic and Stylistic Identity Seals Victory for 'Nandini': Madras HC Overturns Opposition Dismissal in Agarbatti Trademark Case  

2. Madras High Court Protects Well-Known 'Nandini' Mark: Identical Stylisation Triggers Deceptive Similarity Despite Dissimilar Goods  

3. Distinguishing Nandhini Deluxe: Madras HC Allows Appeal Against Registration of Identical 'Nandini' for Incense Products  

**Suggested Tags:** Trademark Opposition, Deceptive Similarity, Section 11 Trade Marks Act, Well-Known Mark, Phonetic Identity, Stylistic Similarity, Nandini Trademark, Madras High Court, Dissimilar Goods, Passing Off, Acquired Reputation, Intellectual Property Appeal  

**Headnote of Article:** Madras High Court set aside the dismissal of opposition to registration of the mark 'Nandini' in Class 3 for agarbattis, holding that identical phonetic identity and stylisation create deceptive similarity and likelihood of confusion with the appellant's well-known 'Nandini' mark for dairy products, distinguishing it from the Supreme Court's Nandhini Deluxe judgment due to absence of differentiating elements like suffix or different get-up.

=======

The Karnataka Cooperative Milk Producers Federation Limited (KMF), using the well-known registered trade mark Nandini  since 1983 for milk and dairy products across Karnataka and neighbouring states, opposed the first respondent's (Shalimar Agarbatti Company) application for registering an identical word mark Nandini (in small letters, same style, with floral/bird devices) for agarbattis and dhoops in Class 3. 

The Deputy Registrar dismissed the opposition in 2010 primarily on grounds that 'Nandini' is a personal/generic name, goods were different, resemblance was minimal, and no confusion was likely. Aggrieved, KMF appealed (initially to IPAB, later transferred to Madras High Court as (T)CMA(TM) No.112 of 2023). Distinguishing the Supreme Court decision in *Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.* (2018) 9 SCC 183 — where opposition was rejected due to added 'Deluxe', different logos, dissimilar overall presentation, different goods/business, and generic nature of the term.

The High Court held that here the proposed mark was phonetically identical, written in the identical style (all small letters) without any prefix/suffix, and likely to deceive/mislead consumers familiar with KMF's reputed 'Nandini' mark despite different goods, rendering it deceptively similar. The impugned order was set aside and the appeal allowed.

Crisp bullet points of law settled in the case:

Phonetic identity combined with identical stylistic presentation (same manner of writing, all small letters, no prefix/suffix) of the word mark can render it deceptively similar to an earlier reputed mark, even for dissimilar goods, leading to likelihood of confusion/misleading consumers familiar with the prior mark. (Para 14)

 Where the overall visual and phonetic presentation of the mark is substantially identical (unlike cases where additional words like 'Deluxe' or materially different logos distinguish the marks), the generic or mythological nature of the word alone does not preclude protection against deceptive similarity under the Trade Marks Act, 1999. (Para 11–14, distinguishing *Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.*, reported in 2018 (9) SCC 183)

Case Title: Karnataka Cooperative Milk Producers Federation Limited Vs Vinod Kanji Shah:19.1.2026:(T)CMA(TM).No.112 of 2023:MadHC:The Honourable Mr. Justice N. Anand Venkatesh

Disclaimer:Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

Edward Charles Troppi Smythe Vs. The Controller General of Patents Designs

The recent judgment from the Madras High Court in Edward Charles Troppi Smythe v. Controller General of Patents Designs and Trade Marks serves as a pivotal illustration of judicial intervention in such matters. In this case, the court exercised its equitable powers under writ jurisdiction to condone a delay in filing a request for patent examination, attributing the lapse to an inadvertent mistake by the Indian patent agent rather than any intentional abandonment by the petitioner, a US citizen. This decision underscores the balance between statutory rigidity and the protection of substantive rights, particularly for foreign applicants reliant on local agents. It builds on prior precedents to affirm that negligence by an agent should not result in the forfeiture of a genuine invention's patent rights, especially when the invention pertains to advanced technologies like satellite conjunction prediction using machine learning. By allowing the writ petition, the court not only rectified the procedural oversight but also highlighted the evolving interpretation of Sections 11B and related rules under the Patents Act, 1970, emphasizing bona fide efforts and the absence of contributory negligence. This ruling has broader implications for international patent filers, reinforcing the judiciary's role in mitigating the harsh effects of procedural defaults while upholding the integrity of the patent system.

## Factual Background

The petitioner, Edward Charles Troppi Smythe, a US citizen residing in San Diego, California, is the inventor of a sophisticated system for the prediction, visualization, and remediation of satellite conjunctions in low Earth orbit. This invention leverages machine learning to address the challenges posed by the growing number of orbiting bodies, enabling faster identification of potential collisions—up to 30 days in advance—compared to traditional supercomputer-based methods. Smythe filed a provisional patent application in the US on September 10, 2021, followed by a second US patent application on September 8, 2022. Subsequently, on September 9, 2022, he filed a Patent Cooperation Treaty (PCT) application claiming priority from both US filings. The Indian patent application in question, numbered IN202447028876, was submitted by the petitioner's Indian patent agent, claiming priority from the initial US application dated September 10, 2021. This application was part of a broader international strategy to secure protection for the invention across multiple jurisdictions. The US IP attorneys, overseeing the global prosecution, engaged an Indian firm to handle the Indian proceedings and regularly inquired about compliance with formalities. The Indian patent agent assured them that all requirements had been met. However, on October 14, 2024, the agent sent an email reminder stating that the deadline for filing the request for examination was April 8, 2025. This communication stemmed from a critical miscalculation: the agent erroneously computed the 31-month statutory period from the second US priority date of September 8, 2022, instead of the first priority date of September 10, 2021. Consequently, the actual deadline of April 10, 2024, was missed, leading to the lapse of the examination request period. Unaware of the error, the petitioner continued under the bona fide belief that time remained. It was only when the agent attempted to file Form 18 on December 10, 2024, that the Indian Patent Office's web portal rejected it as "Not valid." The petitioner promptly emailed the online services support on the same day seeking assistance, noting that the application status showed "Awaiting request for examination" but the filing access was non-functional. On December 30, 2024, the Patent Office responded, confirming the expiry of the period and deeming the application abandoned. These events precipitated the filing of the writ petition, highlighting the petitioner's diligent follow-up contrasted against the agent's inadvertent oversight in priority date calculation.

## Procedural Background

The writ petition, WP (IPD) No. 12 of 2025, was instituted before the Madras High Court seeking a writ of mandamus to direct the respondents—the Controller General of Patents, Designs and Trade Marks in Mumbai, the Joint Controller of Patents and Designs in Chennai, and the Union of India—to accept the delayed request for examination under Form 18 for the Indian patent application IN202447028876 and process it in accordance with law. The matter came up for hearing on December 18, 2025, before the Honourable Mr. Justice N. Anand Venkatesh. Ms. Preeti Mohan appeared for the petitioner, arguing the inadvertent nature of the delay due to the agent's error and relying on the precedent in Chandra Sekar v. Controller of Patents and Designs (2022 SCC OnLine Mad 5172) to contend that the petitioner's statutory rights should not be lost without evidence of intentional abandonment. The respondents were represented by Mr. K. Subbu Ranga Bharathi, the Central Government Standing Counsel, who maintained that the 31-month period under Section 11B had expired, resulting in deemed abandonment, and thus no interference was warranted. The court examined the relevant provisions: Section 11B of the Patents Act, 1970, which mandates a request for examination within the prescribed period; Rule 24B(1) of the Patents Rules, 2003, originally setting a 48-month timeline reduced to 31 months effective March 15, 2024; and Rule 138, allowing a one-month extension by the Controller, effectively extending the total period to 36 months in practice, though the court clarified the combined effect as up to six months in certain readings. The hearing focused on whether the delay constituted intentional abandonment or mere agent negligence, with the court extracting key paragraphs from the relied-upon judgments to analyze the petitioner's position. No oral evidence was adduced, and the matter was disposed of through a speaking order uploaded to the web copy, directing service to the respondents for compliance.

## Reasoning and Decision of Court

In its detailed reasoning, the Madras High Court meticulously dissected the statutory framework and factual matrix to arrive at a balanced decision favoring equity over strict procedural adherence. The court first acknowledged the undisputed expiry of the 31-month period on April 10, 2024, but pivoted to the core inquiry: whether the lapse indicated intentional abandonment or stemmed from an inadvertent mistake by the Indian patent agent. Drawing from the precedent in Chandra Sekar v. Controller of Patents and Designs, the court extracted paragraph 14, which emphasized that sheer negligence by the Indian attorney, absent contributory negligence or intent to abandon by the applicant, should not deprive the petitioner of valuable statutory rights. The judgment in Chandra Sekar had itself considered the Delhi High Court's ruling in Bry-Air Prokon Sagl v. Union of India (W.P.(C)-IPD 25/2022, dated October 17, 2022), which elaborated on abandonment, holding that unless there is clear intent to forgo the right to examination, an applicant cannot be wholly deprived due to an agent's error. Applying this to the instant case, the court found a valid ground in the agent's miscalculation of the priority date—from the second US filing on September 8, 2022, instead of the first on September 10, 2021—leading to the petitioner's bona fide belief in a later deadline of April 8, 2025. The court noted the petitioner's proactive steps, including immediate email queries upon rejection of the filing attempt, underscoring no concrete evidence of inaction or abandonment intent. Furthermore, it highlighted the petitioner's status as a US citizen dependent on the Indian agent appointed by US attorneys, a factor that could not be overlooked in international patent prosecution. The abstract of the invention was extracted to underscore its technological significance: a machine learning-based system for predicting satellite conjunctions orders of magnitude faster than state-of-the-art methods, enabling prioritization, visualization, and remediation of orbital risks. Weighing these elements, the court concluded that the nature of the invention and the absence of abandonment intent warranted intervention. Consequently, the writ petition was allowed without costs, directing the respondents to accept the Form 18 request and process the application expeditiously in accordance with law, thereby restoring the petitioner's right to examination and preventing the loss of a potentially groundbreaking patent due to procedural inadvertence.

## Point of Law Settled in the Case

This judgment settles a crucial point of law under the Patents Act, 1970, particularly regarding the interpretation and application of Section 11B read with Rules 24B and 138 of the Patents Rules, 2003, in cases of delayed requests for examination due to agent errors. It establishes that the statutory timeline for filing a request for examination, while mandatory, is not an absolute bar to judicial relief in writ proceedings when the delay arises from inadvertent negligence by the Indian patent agent, provided there is no evidence of intentional abandonment or contributory negligence by the applicant. The court clarified that the combined effect of the provisions allows for an effective extension up to six months, but beyond that, abandonment is deemed only if intent is proven; otherwise, equitable considerations prevail, especially for foreign applicants reliant on local representatives. This ruling reinforces the principle that valuable statutory rights in patent prosecution cannot be summarily extinguished due to an agent's miscalculation, such as erroneous priority date computation, and mandates that the Patent Office must consider the applicant's bona fide efforts and the invention's merit before deeming an application withdrawn. It aligns with and expands upon precedents like Chandra Sekar and Bry-Air Prokon Sagl, providing a safeguard against procedural technicalities undermining substantive innovation rights, thereby promoting fairness in India's patent ecosystem for international filers.

## Case Detail

**Title:** Edward Charles Troppi Smythe v. The Controller General of Patents Designs and Trade Marks & Ors.  

**Date of Order:** 18-12-2025  

**Case Number:** WP (IPD) No. 12 of 2025  

**Neutral Citation:** Yes/No (Not specified in document)  

**Name of Court:** High Court of Judicature at Madras  

**Name of Hon'ble Judge:** Mr. Justice N. Anand Venkatesh  

**Headnote:** In a landmark decision, the Madras High Court condoned a delay in filing a patent examination request under Section 11B of the Patents Act, 1970, attributing it to an Indian agent's inadvertent miscalculation of the priority date, and directed acceptance of the request absent evidence of intentional abandonment by the US applicant, thereby protecting substantive rights in innovative satellite technology.

**Disclaimer:** Readers are advised not to treat this as substitute for legal advise as it 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:**  

1. Judicial Relief for Delayed Patent Examination: Madras HC Overrules Agent's Error in Priority Calculation  

2. No Abandonment Without Intent: Madras High Court Restores Rights in Satellite Conjunction Prediction Patent  

3. Equity Over Technicality: Condemnation of Delay in Indian Patent Request Due to Agent Negligence  

**Suggested Tags:** Patent Law, Section 11B Patents Act, Request for Examination, Agent Negligence, Priority Date Miscalculation, Writ of Mandamus, Madras High Court, International Patent Filing, Satellite Technology, Machine Learning Invention, Abandonment of Patent Application, Patents Rules 2003

======

The US citizen petitioner Edward Charles Troppi Smythe filed an Indian patent application IN202447028876 for an invention involving machine learning-based prediction, visualization, and remediation of satellite conjunctions, claiming priority from his first US provisional application dated 10.09.2021. Due to an inadvertent error by the Indian patent agent, who wrongly calculated the 31-month deadline for filing the request for examination (Form 18) from the second US priority date of 08.09.2022 instead of the first, the agent informed the petitioner of a deadline of 08.04.2025, whereas it had actually expired on 10.04.2024 under Section 11B of the Patents Act, 1970 read with amended Rule 24B(1) of the Patents Rules, 2003. 

The agent attempted to file the request belatedly on 10.12.2024, which was rejected as invalid by the Patent Office portal, and on 30.12.2024 the office confirmed the period had expired, deeming the application abandoned. The petitioner, upon learning of the lapse, promptly sought assistance and filed the writ petition WP (IPD) No. 12 of 2025 before the Madras High Court seeking a mandamus to accept and process the delayed request. The court, after hearing both sides, held that the delay stemmed from the agent's inadvertent mistake in priority date computation rather than any intentional abandonment by the petitioner, who had diligently followed up through US attorneys and showed no contributory negligence. 

Relying on Chandra Sekar v. Controller of Patents and Designs (2022 SCC OnLine Mad 5172) and the Delhi High Court's ruling in Bry-Air Prokon Sagl v. Union of India (W.P.(C)-IPD 25/2022 dated 17.10.2022), the court emphasized that valuable statutory rights cannot be forfeited due to agent negligence absent evidence of intent to abandon, particularly for a foreign applicant dependent on local representation, and considering the invention's innovative nature in satellite technology. Accordingly, the writ petition was allowed without costs, directing the respondents to accept the Form 18 request and process the application expeditiously in accordance with law.

Points of law settled in the case:

Abandonment of a patent application under the Act is deemed only upon clear evidence of intentional relinquishment; it cannot be presumed merely from procedural default due to agent mistake, especially for foreign applicants reliant on local agents (paras 16-17)

In the absence of concrete material showing the applicant's inaction or disinterest, and where bona fide efforts to prosecute are evident, the court will protect substantive patent rights over strict technical adherence to timelines, preventing forfeiture of innovative inventions (paras 18, 20).

Case Title:Edward Charles Troppi Smythe Vs. The Controller General of Patents Designs:18-12-2025:WP (IPD) No. 12 of 2025:Madras HC: Hon'ble Mr. Justice N. Anand Venkatesh  

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation  

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

Satyanarain Khandelwal Vs Prem Arora

Introduction:The judgment delivered by the Delhi High Court in the batch of transfer petitions led by Satyanarain Khandelwal v. Prem Arora represents a significant judicial exposition on the interplay between legislative intent, statutory interpretation, and the principle of retrospectivity in the context of commercial litigation reforms in India. 

At its core, the case grapples with the applicability of the Commercial Courts (Amendment) Act, 2018, which reduced the "specified value" threshold for commercial disputes from Rs. 1 crore to Rs. 3 lakhs, thereby expanding the jurisdiction of designated commercial courts. 

The petitioners, who were tenants involved in disputes over agreements to sell shops in a property, sought the transfer of their pending civil suits from ordinary civil courts to commercial courts, arguing that the amendment should apply retrospectively to suits filed before its commencement on May 3, 2018. 

This contention invoked Section 15 of the parent Commercial Courts Act, 2015, which mandates the transfer of pending suits involving commercial disputes to specialized courts. The High Court, however, rejected this plea, emphasizing the prospective nature of statutes unless explicitly stated otherwise, and underscored the potential disruption to substantive rights and administrative processes if retrospectivity were imputed.

Drawing from foundational principles of jurisprudence, the court highlighted the presumption against retrospectivity to avoid unsettling vested rights, such as rights of appeal or procedural entitlements in ongoing litigations. 

This decision not only clarifies the temporal scope of the 2018 Amendment but also reinforces the judiciary's role in adhering to the literal meaning of statutes while balancing the legislative objective of expediting commercial resolutions with the stability of existing legal proceedings. 

By involving the High Court's administrative wing and soliciting responses on an internal decision dated February 4, 2020, which limited the amendment's application to post-2018 suits, the judgment provides a comprehensive analysis that could influence similar transfer applications across jurisdictions, particularly in high-volume commercial hubs like Delhi.

Factual Background:The disputes in this case originated from a property located at RZ-21/284, Gitanjali Park, West Sagarpur, New Delhi, comprising nine shops owned initially by the mother of Respondent No. 1, Prem Arora. The petitioners, including Satyanarain Khandelwal, Ishwar Singh, Prakash Chand Modi, Mahaveer Bansal, Radhey Shyam, and Manoj Kumar Bansal, were inducted as tenants by Respondent No. 2 (Prem Arora's father), each paying a security deposit. 

In 2009, the mother executed a General Power of Attorney and a Will in favor of Respondent No. 1, followed by a Gift Deed in 2014, transferring ownership to him. Prior to formal ownership transfer, Respondent No. 1 approached the petitioners in late 2013 to sell them the shops they occupied, accepting advances via cheques dated between November 17 and 25, 2013. 

These advances ranged from Rs. 2 lakhs to Rs. 4 lakhs per petitioner. On January 6, 2014, Agreements to Sell were executed, adjusting the prior security deposits against the sale consideration, with further payments made on January 14 and 30, 2014, bringing the total per shop (except for Modi's double shops) to Rs. 12 lakhs after adjustments. 

Respondent No. 1, not yet the owner, sought extensions for execution, assuring the petitioners they were virtually owners and need not pay rent. However, tensions arose when Respondent No. 1 denied the agreements in subsequent proceedings, claiming forged signatures. 

This led the respondents to file eviction suits in 2017 for possession, arrears of rent, and mesne profits against each petitioner, titled as Prem Arora & Anr. v. respective petitioners. 

In response, the petitioners filed suits in December 2018 for specific performance of the Agreements to Sell and permanent injunctions against eviction. The underlying facts thus revolved around allegations of breach of contract, denial of agreements, and competing claims over property rights, with the commercial angle emerging from the immovable property transactions qualifying as "commercial disputes" under the 2015 Act.

Procedural Background:The procedural journey began with the respondents' 2017 eviction suits pending before the Additional District Judge at Patiala House Courts, New Delhi. The petitioners filed written statements denying eviction claims and highlighting the Agreements to Sell. In replications, Respondent No. 1 disavowed the agreements, prompting the petitioners' 2018 suits for specific performance. Recognizing overlapping issues, the petitioners sought transfer of their suits to the court handling the eviction matters via petitions allowed on February 5, 2019, by the District and Sessions Judge, consolidating proceedings before the Additional District Judge. 

Subsequently, an application under Section 151 of the Code of Civil Procedure was filed for formal consolidation, citing common substantial questions and evidence, but this was dismissed on November 25, 2020. A review application met the same fate on June 25, 2021, leading to a Civil Miscellaneous Petition before the High Court, which was dismissed as withdrawn on September 2, 2021. 

Invoking the Commercial Courts Act, 2015, as amended in 2018, the petitioners then filed the instant transfer petitions under Section 15(5) in 2021, arguing the suits involved commercial disputes over Rs. 3 lakhs and should be transferred to designated commercial courts. 

Notices were issued, and on March 25, 2022, the High Court sought the High Court's administrative response on a February 4, 2020, decision limiting the 2018 Amendment to post-commencement suits. 

Reasoning and Decision of Court:The High Court's reasoning commenced with framing the core issue: whether Section 19 of the 2018 Amendment, stating "Save as otherwise provided, the provisions of this Act shall apply only to cases relating to commercial disputes filed on or after the date of commencement of this Act," permits retrospective application to pre-2018 suits valued above Rs. 3 lakhs, enabling transfers under Section 15 of the 2015 Act. 

Rejecting the petitioners' purposive interpretation, the court invoked cardinal principles from Supreme Court precedents like Monnet Ispat and Energy Ltd. v. Union of India and Hitendra Vishnu Thakur v. State of Maharashtra, affirming that statutes are prima facie prospective unless expressly or impliedly retrospective, to preserve vested rights and avoid unsettling past transactions. 

The court found no ambiguity in Section 19's language, which explicitly limits application to post-commencement cases, and held that imputing retrospectivity would infringe substantive rights, such as unrestricted appeals or exemptions from mandatory pre-institution mediation under the new Section 12A. Administratively, it would burden commercial courts with small-value pre-2018 disputes, defeating the Act's goal of speedy resolution for high-value matters. 

The Saving Clause in Section 19 was interpreted narrowly to preserve existing rights without creating new ones, and harmoniously with Section 15, not to extend retrospectivity. The court dismissed reliance on Hari Singh v. MS Superhouse Ltd., viewing it as a general directive inapplicable here. Ultimately, the petitions were dismissed on July 18, 2022, refusing transfer and affirming the 2018 Amendment's prospective operation.

Point of Law Settled in the Case:The judgment settles that the Commercial Courts (Amendment) Act, 2018, does not apply retrospectively to commercial disputes filed before May 3, 2018, even if their value exceeds the reduced threshold of Rs. 3 lakhs. 

This precludes transfers of such pending suits from ordinary civil courts to commercial courts under Section 15 of the 2015 Act, based on the presumption against retrospectivity absent explicit legislative intent. It clarifies that the Saving Clause in Section 19 preserves pre-existing rights but does not extend the amendment's benefits to prior cases, ensuring stability in procedural and substantive entitlements while aligning with the Act's objective of efficient commercial adjudication without overwhelming specialized courts.

Case Title: Satyanarain Khandelwal Vs Prem Arora

Date of Order: 18th July, 2022

Case Number: TR.P.(C.) 47/2021 

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble the Chief Justice Satish Chandra Sharma and Hon'ble Mr. Justice Subramonium Prasad

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Ayur United Care LLP Vs Union of India

Introduction:In the evolving landscape of intellectual property law in India, the abolition of the Intellectual Property Appellate Board (IPAB) on April 4, 2021, marked a significant shift in the adjudication of IP disputes, transferring such matters to the High Courts. This transition raised intricate questions about procedural norms, particularly regarding the appropriate bench composition for hearing challenges to pre-abolition IPAB orders. 

The case of Ayur United Care LLP versus Union of India & Anr., along with several connected writ petitions, exemplifies this transitional complexity. Decided by the High Court of Delhi, the judgment delves into whether writ petitions under Articles 226 and 227 of the Constitution, contesting IPAB decisions on trademark rectifications, should be adjudicated by a Single Judge or a Division Bench. At its core, the dispute revolves around the interpretation of the Intellectual Property Division (IPD) Rules, 2021, and the Delhi High Court Rules, 2018, highlighting tensions between statutory mandates, judicial efficiency, and historical appellate structures. The petitioners, primarily entities holding or challenging the trademark "AYUR," faced rectification orders from the IPAB that favored the second respondents, prompting these writs. 

Factual Background:The controversy stems from disputes over the trademark "AYUR," a term associated with traditional Indian wellness and Ayurvedic products. The petitioners, including Ayur United Care LLP, M H Polymers Pvt. Ltd., and Three N-Products Pvt. Ltd., held registrations for this mark, which they claimed as proprietary for their goods and services. 

The second respondents, appearing in various petitions, filed rectification applications before the IPAB, arguing that "AYUR" was generic or descriptive and thus not eligible for exclusive registration. On June 28, 2013, the IPAB allowed these rectification petitions, effectively challenging or revoking the petitioners' registrations in favor of the applicants. 

Aggrieved by this, the petitioners invoked Articles 226 and 227 of the Constitution to file writ petitions before the High Court of Delhi, seeking to set aside the IPAB's orders. These petitions were lodged prior to the IPAB's abolition but gained renewed urgency post-April 4, 2021, when the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, dissolved the IPAB and transferred its pending matters to the High Courts. 

The factual matrix is compounded by multiple interconnected petitions, each involving similar trademark disputes but with varying parties, such as Ayur United Care LLP as the common petitioner in several cases, and entities like Three N-Products Pvt. Ltd. in others. The underlying IP issue—whether "AYUR" qualifies as a distinctive mark or falls into the public domain—remains substantive, but the judgment primarily addresses a preliminary threshold question arising from the respondents' objection that these matters could not be heard by a Single Judge.

Procedural Background:The procedural journey began with the filing of rectification petitions against the "AYUR" trademark registrations before the IPAB, culminating in its June 28, 2013, order favoring rectification. The aggrieved registrants then approached the High Court of Delhi via writ petitions under Articles 226 and 227, which were initially listed and proceeded in the ordinary course. However, the abolition of the IPAB on April 4, 2021, via the Tribunals Reforms Ordinance (later enacted as the Tribunals Reforms Act, 2021), redirected all IPAB-related appeals and proceedings to the jurisdictional High Courts, including Delhi's newly established Intellectual Property Division (IPD). 

This led to the transfer and re-designation of the petitions as W.P.(C)-IPD series cases. During hearings, the respondents raised a serious preliminary objection, contending that these writs, challenging quasi-appellate IPAB orders, must be heard by a Division Bench rather than a Single Judge, invoking rules on bench composition for matters involving fundamental rights or statutory interpretations. The petitioners countered that the IPD Rules mandated Single Judge adjudication for IP subject matters, except in specified exceptions. 

Reasoning and Decision of Court:The court's reasoning commences with a clear delineation of the rival submissions, acknowledging the petitioners' insistence on Single Judge jurisdiction under the IPD Rules and the respondents' push for Division Bench hearing based on the Delhi High Court Rules and the nature of the writs. 

Rule 4's general mandate for Single Judge adjudication in IPD, Rule 2(l)'s inclusion of writs arising from IPR subjects except Division Bench matters, and the wide ambit of "matter" in Rule 2(i) encompassing trademarks. It noted that Section 13 of the Commercial Courts Act pertains to appeals from decrees, irrelevant here. Harmonizing the rules, the court rejected the rigid Division Bench requirement, holding that a writ petition challenging an IPAB trademark order constitutes an "IPR subject matter" to be heard by a Single Judge under IPD Rule 4, as it does not trigger DHC Rules' Division Bench exceptions. 

The decision underscores that post-abolition, such petitions are original proceedings before the IPD, not appeals, and thus fall within Single Judge domain for efficiency. While appreciating alternative options, the court deemed them unnecessary, affirming its own jurisdiction as a Single Judge and directing the matters to proceed on merits, thereby resolving the preliminary objection in favor of Single Bench hearing.

Point of Law Settled in the Case: The judgment settles a pivotal point of law concerning the jurisdictional framework post-IPAB abolition: writ petitions under Articles 226 and 227 challenging pre-abolition IPAB orders on intellectual property matters, such as trademark rectifications, are to be adjudicated by a Single Judge of the Intellectual Property Division (IPD) of the High Court, unless they fall within explicit exceptions requiring Division Bench hearing under the Delhi High Court Rules, 2018, or Section 13 of the Commercial Courts Act, 2015. 

This clarification arises from a harmonious interpretation of the IPD Rules, 2021—particularly Rules 4, 2(i), 2(j), and 2(l)—which define IP subject matters broadly to include patents, copyrights, trademarks, and related disputes, mandating Single Judge resolution for efficiency in the post-tribunal era. 

The court elucidates that such petitions, though stemming from appellate-like IPAB proceedings, are treated as original IPD matters upon transfer, not invoking DHC Rules' Division Bench mandates for cases involving statutory vires, personal liberty, or public interest litigation. 

This ruling prevents procedural fragmentation, ensuring streamlined adjudication of legacy IPAB cases while respecting the legislative intent behind the Tribunals Reforms Act, 2021, to decongest tribunals and empower High Courts. It also underscores that the term "matter" in IPD Rules encompasses IPAB orders, rejecting arguments for mandatory Division Bench listing based on the quasi-appellate nature of the challenge, and affirms that Single Judges possess inherent jurisdiction unless statutorily ousted.

Case Detail: Ayur United Care LLP Vs Union of India & Anr. 

Date of Order: 16 October 2023

Case Number: W.P.(C)-IPD 61/2021

Neutral Citation: 2023:DHC:7556

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Mr. Justice C. Hari Shankar

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Kedar Nath Mishra Vs Invision Medi Sciences Pvt. Ltd.

Introduction: This judgment, delivered by a division bench, underscores the distinction between mere prior use and the requirement to establish protectable goodwill in passing off actions, even when the defendant holds a registered trademark. 

At stake were competing marks "BONERICH" and "BONRICH" for medicinal products aimed at bone health, highlighting how courts balance statutory registration rights under the Trade Marks Act, 1999, against common law remedies for unregistered marks. 

The appellant, a sole proprietor, challenged the restraint on his use of "BONERICH," arguing that the respondent's claim lacked foundational proof of reputation predating his adoption, while the respondent defended its prior user status dating back to a proprietorship era. 

The High Court's intervention, setting aside the injunction, reinforces that passing off cannot succeed on priority alone but demands evidence of market recognition and potential harm, drawing on precedents like Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra and Wander Ltd. v. Antox India (P) Ltd. 

Factual Background:The dispute centers on two phonetically and visually similar trademarks, "BONERICH" and "BONRICH," both used for pharmaceutical preparations related to bone health and nutritional supplements under Class 5. The appellant, Kedar Nath Mishra, operating as a sole proprietor, asserted that he honestly adopted and began using "BONERICH" on August 29, 2011, for marketing and distributing medicinal products, claiming continuous and uninterrupted commercial use that built distinctiveness and exclusive association with his goods over time. 

To secure statutory protection, he first applied for registration on September 18, 2013, but the application was refused due to non-prosecution of objections under Sections 9 and 11 of the Trade Marks Act; subsequently, a fresh application on December 5, 2018, led to registration on February 8, 2021, with claimed prior use from 2011. 

The respondent, Invision Medi Sciences Pvt. Ltd., incorporated on February 22, 2011, engaged in pharmaceuticals including allopathic, ayurvedic, and homeopathic medicines, contended that its promoter, Mukesh Kumar, had adopted "BONRICH" since 2007 through his proprietorship firm, initially named Marx Remedies and later Invision Medi Sciences. Upon incorporation, the respondent claimed the entire business, including goodwill and trademarks, was transferred to it, enabling continuous use of "BONRICH" from 2007 onward. 

The appellant became aware of the respondent's mark on July 29, 2021, when the latter applied for registration under Application No. 5064847, initially claiming use from November 18, 2011—a date postdating the appellant's adoption—but later amended to December 31, 2007, via a form filed on January 18, 2023, supported by an Assignment Deed dated January 14, 2023, formalizing the transfer from Marx Remedies.

The respondent bolstered its prior use claim with documents like VAT registrations, licenses, stock registers, invoices showing sales of Rs. 25.73 lakhs from 2007-2011 and Rs. 1.05 crores thereafter, CA certificates, and evidence of pan-India distribution. Conversely, the appellant challenged these as fabricated, pointing to inconsistencies in the respondent's pleadings about Marx Remedies' existence and the absence of any mention of its takeover in the respondent's Memorandum of Association, which only referenced Invision Medi Sciences.

 This factual matrix revealed a classic conflict between a registered mark's proprietor asserting infringement and a prior user relying on common law rights through assignment and succession, setting the stage for examining whether documentary evidence of use sufficed without proven market reputation.

Procedural Background:The proceedings commenced with the appellant filing a commercial suit, CS (COMM) 702/2022, before the District Judge (Commercial Court-01), South, Saket, Delhi, seeking permanent injunction against the respondent for trademark infringement and passing off, along with delivery-up, damages, and costs, based on the deceptive similarity between "BONERICH" and "BONRICH" for identical goods. Accompanying the suit was an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, for interim relief. Summons were served on the respondent on January 12, 2023, prompting it to file a written statement denying the claims, alleging suppression by the appellant, and asserting prior use since 2007.

Simultaneously, the respondent lodged a counter-claim, CS (COMM) 79/2023, for passing off, seeking similar injunctive relief against the appellant, supported by its own interim application under Order XXXIX Rules 1 and 2, an application under Section 124(2) of the Trade Marks Act for permission to file rectification proceedings challenging the appellant's registration, and relying on the amended user claim and Assignment Deed. 

The appellant responded with an application under Section 340 of the Code of Criminal Procedure, accusing the respondent of perjury through fabricated documents. The Commercial Court, in its order dated June 7, 2024, disposed of the interim applications by dismissing the appellant's plea for injunction, granting the respondent's counter-claim interim relief restraining the appellant from using "BONERICH," allowing three months for rectification proceedings, and deferring the Section 340 application to trial. 

Aggrieved solely by the injunction in the counter-claim, the appellant filed two appeals under Section 13 of the Commercial Courts Act, 2015, read with Order XLIII Rule 1(r) CPC: FAO (COMM) 160/2024 challenging the dismissal of his interim application, and FAO (COMM) 159/2024 assailing the grant of injunction to the respondent. The High Court, after hearing arguments from both sides on prior use, goodwill, assignment validity, and passing off elements, delivered an oral judgment on January 13, 2026, partly allowing the appeals by setting aside the injunction against the appellant, while clarifying that observations were prima facie and not binding on trial.

Reasoning and Decision of Court:The division bench of the Delhi High Court meticulously analyzed the impugned order, emphasizing the limited appellate scope under Wander Ltd. v. Antox India (P) Ltd., where interference is warranted only for arbitrariness, perversity, or disregard of legal principles, and found the Commercial Court's grant of injunction flawed for failing to establish goodwill and reputation essential to passing off. 

Recalling the tripartite test for passing off—goodwill/reputation, misrepresentation, and damage—from precedents like Pernod Ricard and FDC Ltd. v. Faraway Foods (P) Ltd., the court noted that prior use under Section 34 of the Trade Marks Act defends against infringement but does not suffice for affirmative passing off relief without proven market recognition predating the rival's adoption. 

The bench observed that while the Commercial Court prima facie accepted the respondent's prior use since 2007 based on invoices, sales figures (Rs. 25.73 lakhs pre-2011, Rs. 1.05 crores post), licenses, and pan-India presence, it merely catalogued these without evaluating if they translated into goodwill by August 29, 2011, when the appellant adopted "BONERICH." 

Rejecting the respondent's argument that such findings were implicit, the court stressed that passing off requires explicit prima facie satisfaction on reputation, as mere sales do not automatically confer protectable goodwill without evidence of consumer association or market impact. The bench dismissed the appellant's challenges to the Assignment Deed and Marx Remedies' existence as trial issues but held that even assuming valid prior use, the absence of goodwill findings vitiated the injunction, rendering it an error on principle. 

Consequently, the court set aside the restraint on the appellant's use of "BONERICH," dismissed the respondent's interim application in the counter-claim, and clarified that its observations were tentative, not influencing the final trial, thus balancing interim equities without prejudging merits.

Point of Law Settled in the Case:This judgment crystallizes the principle that in an action for passing off, particularly at the interim stage, mere establishment of prior use of a mark does not entitle a party to injunctive relief against a subsequent user, even if the latter holds a registered trademark, unless the court records a prima facie finding on the existence of goodwill and reputation in the mark predating the rival's adoption, as goodwill forms the sine qua non of the tort, distinct from statutory defenses under Section 34 of the Trade Marks Act. 

It reiterates that passing off requires proof of the classical trinity—goodwill/reputation, misrepresentation leading to confusion, and actual/likely damage—with courts mandated to analyze evidence like sales figures and geographical presence not just descriptively but evaluatively to determine if they evince market recognition capable of deception. 

The decision affirms that appellate courts will interfere under Order XXXIX CPC if lower courts grant injunctions without explicit satisfaction on these elements, preventing presumptive relief based solely on documentary use without reputational impact, and underscores that allegations of document fabrication under Section 340 CrPC are trial matters not preempting interim assessments.

Case Title: Kedar Nath Mishra Vs Invision Medi Sciences Pvt. Ltd.;13 January 2026;FAO (COMM) 159/2024:2026:DHC:352:DB: Mr. Justice C. Hari Shankar and Mr. Justice Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it 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:

Prior Use vs. Goodwill in Passing Off

Suggested Tags:

Trademark Infringement, Passing Off, Goodwill and Reputation, Prior User Rights, Section 34 Trade Marks Act, Interim Injunction, Order XXXIX CPC, Pharmaceutical Trademarks, Assignment Deed Validity, Delhi High Court, Commercial Courts Act, Pernod Ricard Precedent, Wander v. Antox Principle