Amit Bansal Vs. Amit Garg

Introduction: This judgment from the Delhi High Court delves into a classic trademark infringement and passing off dispute centered on the mark "ATHERMAL," used in connection with welding safety glasses and related apparatus, highlighting the tensions between prior use and statutory registration under the Trade Marks Act, 1999. 

The appellant, Amit Bansal, operating as M/s Ambay Industrial Corporation, challenged the trial court's interim injunction favoring the respondents, Amit Garg and his associated entity, restraining the appellant from using the mark during the pendency of the suit. 

The case underscores the doctrine of prior user superiority, the inapplicability of approbate and reprobate in certain contexts, and the necessity for courts to scrutinize user claims through predecessors equitably, without disparate treatment. It also examines allegations of fabricated evidence and the impact of positions taken before the Trade Marks Registry, ultimately reversing the trial court's order by recognizing the appellant's prima facie prior use dating back to 1990 through familial business continuity, while dismissing the respondents' claims based on inconsistencies and later adoption in 2003. 

This decision reinforces that registration does not trump established prior use and cautions against selective acceptance of oral family settlements without corresponding scrutiny of similar predecessor claims, setting a precedent for balanced interim relief in trademark litigation.

Factual Background:The respondents initiated the suit claiming exclusive rights to the mark "ATHERMAL" for manufacturing and marketing welding apparatus, cables, regulators, transformers, machines, tools, and particularly safety glasses, asserting that the appellant illegally imitated it, leading to infringement and passing off. Respondent No. 1, Amit Garg, trading as M/s Athermal Industries AG, maintained that the mark was honestly coined and adopted in 2003 by his predecessor, Respondent No. 2, a proprietorship concern run by family members, specifically his mother under M/s Shiva Traders, with rights transferred via an oral family settlement. They filed for registration on 25.03.2010 under Application No. 1941345 in Class 9, securing certificate No. 1692988 on 01.11.2017 with a claimed user date of 18.04.2005. Additional applications were filed by respondents in subsequent years, including No. 2207990 in 2011, No. 2277143 and 2277118 in 2012, No. 2543087 in 2013, and others, some of which cited the appellant's marks as conflicting, prompting responses from respondents asserting dissimilarity to overcome objections. 

The appellant, in his written statement and counterclaim, contended that the mark "ATHERMAL" was adopted and used since 1985 by his father, Rajinder Kumar Bansal, trading as M/s Ambay Traders and Manufacturers from the same premises, with the appellant continuing independently from 2006 under M/s Ambay Industrial Corporation with his father's permission, raising invoices accordingly. The appellant applied for registration in 2011 under Nos. 2135186 (Class 9) and 2135185 (Class 7) with initial user date of 01.04.2006, later seeking amendment to 01.04.1985 post-opposition by respondents. Both parties accused each other of fabricating invoices: respondents produced five from 2003-2011, which appellant claimed were forged, supported by telephonic confirmations and a police complaint, while appellant's 1990-1999 invoices were labeled fabricated by respondents, noting abandonment post-1999 and lack of formal assignment. The dispute escalated with mutual interim applications under Order XXXIX Rules 1 & 2 CPC, leading to the trial court's favoritism toward respondents based on registration and perceived prior use.

Procedural Background:The respondents filed the suit in 2018 before the Additional District Judge, Rohini Courts, Delhi, seeking permanent injunction against infringement and passing off, accompanied by an interim application under Order XXXIX Rules 1 & 2 CPC. 

The appellant filed a written statement cum counterclaim denying claims and asserting prior use, along with his own interim application for restraint against respondents. On 05.01.2019, the trial court allowed the respondents' application, restraining the appellant from using "ATHERMAL" or similar marks, while dismissing the appellant's, citing respondents' registration and adoption in 2003 versus appellant's independent start in 2006 without assignment proof. 

Aggrieved, the appellant appealed under Order XLIII Rule 1 read with Section 151 CPC. Notice was issued on 25.01.2019, and on 08.02.2019, the High Court stayed the impugned order, observing disparate treatment of predecessor user claims. Interim observations followed: on 09.12.2022, the mark was deemed prima facie descriptive for welding glasses implying heat resistance; on 06.07.2023, respondents' admissions of dissimilarity in registry replies were noted as potentially impactful per Raman Kwatra v. KEI Industries Ltd., with stay continued. 

Reasoning and Decision of Court:The court meticulously analyzed the core issues of prior use, registration validity, and applicability of approbate and reprobate, beginning with the latter by referencing Raman Kwatra, where a party securing registration by asserting dissimilarity cannot later seek injunction claiming similarity. However, it distinguished the case, noting that while respondents repeatedly claimed dissimilarity in replies to examination reports citing appellant's marks for their secondary applications, the primary registered mark (No. 1941345) was not objected on that basis, thus no approbate/reprobate arose for the suit's foundation, as no registration was obtained on such assertions for that mark. 

Shifting to prior use, the court emphasized its superiority over registration, scrutinizing claims: appellant's invoices from 1990 under father's firm, shared premises, and familial relation established prima facie continuity since 1985, rejecting trial court's dismissal for lack of formal assignment without similar scrutiny of respondents' oral family settlement with mother-run entity, which lacked her verification in the plaint.

The court deemed trial court's treatment disparate, accepting respondents' 2003 user while ignoring appellant's earlier evidence, and dismissed fabrication allegations as trial matters, finding no prima facie proof on record. Balancing equities, irreparable harm, and convenience, the court held appellant's prior use since 1990 trumped respondents' 2003 claim and 2017 registration, setting aside the impugned order, rejecting respondents' interim application, and allowing appellant's, restraining respondents from using "ATHERMAL" or similar marks for specified goods pendente lite, clarifying observations were interim without prejudicing trial merits.

Point of Law Settled in the Case:The judgment solidifies that prior continuous use of a trademark through a predecessor-in-title, evidenced by invoices and familial business continuity from a shared premises, establishes superior rights over subsequent registration, even without formal assignment deeds, provided claims are not disparately scrutinized compared to similar oral settlements claimed by opponents. 

It clarifies that the doctrine of approbate and reprobate bars interim relief only where registration is secured by asserting dissimilarity to a cited mark, not extending to suits based on registrations untainted by such assertions, despite similar positions in collateral applications. The ruling mandates equitable evaluation of predecessor user claims at interim stages, rejecting selective acceptance without verification, and underscores that fabrication allegations require trial adjudication, not preempting prima facie prior use findings, thereby prioritizing user evidence over registration in balancing interim injunction factors.

Case Title: Amit Bansal Vs. Amit Garg & Anr.  

Date of Order: 31.01.2026  

Case Number: FAO-IPD 37/2021  

Neutral Citation: 2026:DHC:798  

Name of Court: High Court of Delhi at New Delhi  

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

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. Delhi High Court Upholds Prior Use Over Registration in Athermal Trademark Dispute: A Deep Dive  

2. Reversal of Interim Injunction: Analyzing Amit Bansal vs. Amit Garg on Familial Trademark Continuity  

3. Prior User Triumphs: Insights from the Athermal Mark Appeal on Approbate and Reprobate Limits 

4.Effect of contradictory stand before High Court and Registrar of Trademark

**Suggested Tags:**  

Trademark Infringement, Prior Use Doctrine, Interim Injunction, Approbate and Reprobate, Familial Business Succession, Delhi High Court Judgment, Trade Marks Act 1999, Passing Off,   

**Headnote of Article:**  

Delhi High Court allows appeal against trial court's interim injunction in trademark suit over "ATHERMAL," holding appellant's prima facie prior use since 1990 through predecessor superior to respondents' 2017 registration and 2003 claim, distinguishes approbate and reprobate as inapplicable to primary mark, sets aside order, and grants injunction to appellant pendente lite.

=====

The case involves a dispute over the trademark 'ATHERMAL' for welding safety glasses and related goods in Class 9. Respondents (Amit Garg trading as Athermal Industries AG and family proprietorship) claimed adoption since 2003, filed registration application in 2010, and obtained registration in 2017, filing suit CS No. 1/2018 for permanent injunction against infringement and passing off by appellant Amit Bansal.

Appellant claimed prior use since 1985 by his father Rajinder Kumar Bansal (Ambay Traders), continuing independently from 2006 (Ambay Industrial Corporation) at the same premises, with pending applications from 2011, asserting respondents' business started only in 2011. Trial Court granted interim injunction to respondents and denied to appellant via order dated 05.01.2019.

Appellant appealed under Order XLIII Rule 1 CPC. High Court stayed the impugned order in 2019, noted 'ATHERMAL' as prima facie descriptive (non-heat absorbing) in 2022, observed respondents' prior admission of difference in marks during examination, and heard arguments in 2025. 

The Court held that 'ATHERMAL' lacks distinctiveness for welding glasses, prior user evidence (invoices since 1985) favored appellant, respondents' registration post-dated appellant's claimed use, and respondents' inconsistent stance weakened their case. Appeal allowed, impugned interim injunction set aside, respondents' application dismissed, appellant's application allowed restraining respondents from using 'ATHERMAL', with suit to proceed on merits without prejudice.

Law Point Settled:

Trademark 'ATHERMAL' for welding safety glasses (indicating non-heat absorption) are prima facie not entitled to protection unless secondary meaning is established; prior use prevails over later registration in interim relief. 

Inconsistent positions by a party (e.g., claiming marks different during opposition but alleging similarity in suit) can impact credibility and entitlement to interim injunction

For descriptive or common marks, evidence of prior continuous open use (e.g., invoices from 1985) tilts balance of convenience in interim stage toward the prior user, especially when registration is recent and adoption claim disputed.

Case Title: Amit Bansal Vs.Amit Garg: 31.01.2026: FAO-IPD 37/2021:2026:DHC:798; Hon'ble Mr. Justice Tejas Karia.

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

=====

Innocenti SA Vs. Examiner of Trademarks

Introduction: The dispute stems from competing claims to ownership of the "LAMBRETTA" mark, tracing back to its origins in Italy and subsequent assignments involving Indian government entities. The court was tasked with resolving an appeal against the refusal of one application and two writ petitions seeking intervention in the registration process, ultimately emphasizing the structured statutory framework under the Trade Marks Act, 1999, and cautioning against bypassing opposition mechanisms through judicial writs. 

Factual Background:The "LAMBRETTA" mark originated in 1932 with Innocenti Societa Generale per l'Industria Metallurgica e Meccanica SPA, an Italian company engaged in designing and selling motor scooters. The mark was registered in Italy in 1948 for vehicles in Class 12 and in India in 1949. 

In 1972, through a tripartite agreement involving the Government of India, Automobile Products of India Limited, and the Italian entity (renamed Gepar SPA), the machinery, know-how, and trademark rights were acquired by India and assigned to Scooters India Limited, making it the proprietor. 

Scooters India Limited faced financial difficulties, being declared sick under the Sick Industrial Companies Act in 1992 and again in 2010, but continued licensing the mark worldwide. 

In 2015, Heritage Licensing SA renamed itself Innocenti SA, ostensibly to evoke association with the original Italian entity, though accused of being a habitual infringer. 

In 2022, August Ventures acquired global rights to "LAMBRETTA" and related marks from Scooters India Limited via e-auction and assignment deed for over ₹6.86 crore.

Meanwhile, Innocenti filed applications in September 2022 for "LAMBRETTA" in Classes 12 and 25 on a proposed-to-be-used basis. Examination reports cited August Ventures' prior marks, but Innocenti's replies admitted the mark's origins with the Italian entity and its assignment to Scooters India Limited and then August Ventures. 

Despite this, the Registrar accepted Innocenti's applications in Classes 12 and 25 but refused the one in Class 12 for "LAMBRETTA." August Ventures then filed applications under Section 19 seeking withdrawal of acceptances, which went unconsidered, leading to the writ petitions.

Procedural Background:Innocenti appealed the Registrar's May 2024 order refusing registration of "LAMBRETTA" under Application No. 5628005 in Class 12, citing errors in overlooking international registrations and pending rectifications.

August Ventures filed WP 54  in September 2025 seeking a mandamus to compel the Registrar to decide its Section 19 applications for withdrawing acceptances of Innocenti's Applications Nos. 5628002 and 5628003. 

Subsequently, August Ventures filed WP 56 challenging the acceptance orders and advertisements, praying for certiorari to quash them and directions for future examinations to consider its marks. 

The court framed issues in WP 54 on whether the Registrar must consider third-party applications under Section 19 and if mandamus could issue despite alternative remedies. WP 56 was tagged with WP 54, and the appeal was heard jointly with consent.

Submissions from August Ventures emphasized the Registrar's duty to rectify erroneous acceptances under Section 19 to prevent fraudulent marks and avoid burdening proprietors with oppositions or rectifications.

Innocenti countered that Section 19 is solely the Registrar's discretion without third-party involvement, advocating opposition under Section 21 as the proper remedy. 

The Registrar supported this, arguing Section 19 is suo moto and writs bypassed statutory opposition, while defending the refusal in the appeal. The court analyzed the statutory scheme, rejecting third-party invocations of Section 19 and finding Registrar inconsistencies.

Reasoning and Decision of Court:The court  dissected Section 19, holding it confers discretionary power on the Registrar to withdraw acceptance if satisfied of error or need for conditions, but without obligation to entertain third-party applications, as Rule 38 limits proceedings to the Registrar and applicant. 

It rejected August Ventures' interpretation that the power implies a duty examinable via third-party prompts, noting the section's silence on such mechanisms and emphasizing its purpose as a corrective tool for the Registrar alone. 

Drawing from precedents like Rajkumar Sabu, the court clarified that no hearing right accrues to non-applicants under Section 19, distinguishing it from opposition under Section 21, which allows any person to challenge post-advertisement. 

The court dismissed arguments equating Section 19 to a mandatory review, stating remedies under Sections 21, 47, and 57 are stage-specific and not alternatives, but Section 19 remains internal to the Registry. 

On mandamus, it ruled no statutory duty exists to trigger writ issuance, as discretion without imposed obligation precludes compulsion, citing S.C. Advocates-on-Record Association for limited mandamus only in reasoned non-exercise cases. 

The court found WP 56 non-maintainable for duplicating WP 54's cause, amounting to forum shopping and res judicata violation, as both targeted acceptance withdrawal. Reliance on Jai Bhagwan and Kaira District was deemed inapposite, as those involved pre-acceptance advertisements or gross abuses, unlike here where procedural steps were followed. 

Noting the Registrar's contradictory stands—accepting "LAMBRETTA" in some classes while refusing in others—the court allowed Innocenti's appeal, setting aside the refusal order for inconsistency, but directed consolidated adjudication of all related applications, oppositions, and rectifications after hearing both parties within three months, without opining on merits to preserve fairness.

Point of Law Settled in the Case:The judgment settles that Section 19 of the Trade Marks Act empowers the Registrar with suo moto discretion to withdraw erroneous acceptances, uninvocable by third-party applications, confining challenges to oppositions under Section 21. 

It clarifies that no statutory duty mandates the Registrar to consider external prompts under Section 19, rendering writs of mandamus inappropriate absent grave jurisdictional errors, and successive petitions on identical causes are barred by res judicata. The ruling reinforces the Act's sequential framework, prioritizing statutory remedies over judicial intervention to maintain Registry efficiency and prevent bypassing opposition processes, while mandating consistency in Registry decisions across related marks to uphold procedural integrity.

Case Title: Innocenti SA Vs. Examiner of Trademarks & Anr. and Connected Matters  

Date of Order: 31.01.2026  

Case Number: C.A.(COMM.IPD-TM) 76/2024, W.P.(C)-IPD 54/2025, W.P.(C)-IPD 56/2025  

Neutral Citation: 2026:DHC:784 

Name of Court: High Court of Delhi at New Delhi  

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

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:**  

Trademark Registrar's Discretion Under Section 19 of Trade Marks Act 1999

2. Navigating Trademark Acceptance Withdrawals: Insights from Innocenti SA vs. August Ventures Dispute  

3. Landmark Verdict on Third-Party Challenges to Trademark Acceptances and the Primacy of Opposition Proceedings  

**Suggested Tags:**  

Trademark Dispute, Section 19 Trade Marks Act, Registrar of Trade Marks, Opposition Under Section 21, Writ of Mandamus, Delhi High Court Judgment, Lambretta Mark, Intellectual Property Law, Acceptance Orders, Procedural Inconsistencies,

**Headnote of Article:**  

In this consolidated judgment, the Delhi High Court dismissed writ petitions seeking mandamus and certiorari against trademark acceptance orders, holding that Section 19 of the Trade Marks Act, 1999, grants the Registrar discretionary suo moto power to withdraw erroneous acceptances without provision for third-party applications, directing aggrieved parties to opposition under Section 21; allowed appeal against refusal order due to Registry inconsistencies, mandating unified adjudication of related proceedings.

======

The trademark 'LAMBRETTA' was coined by Innocenti Societa Generale in Italy in 1932 for motor scooters, registered there in 1948 and in India in 1949, with rights assigned in 1972 via a tripartite agreement to the Government of India, which transferred them to Scooters India Limited (SIL); SIL, after periods of sickness, assigned global rights including goodwill to August Ventures Private Limited in 2022 for over ₹6.86 crore. 

Innocenti SA, a Swiss entity renamed from Heritage Licensing SA in 2015 and accused of habitual trademark usurpation, filed applications in 2022 for 'LAMBRETTA' in classes 12 (Nos. 5628002, 5628005) and 25 (No. 5628003) on proposed use basis.

The Registrar refused 5628005 citing August Ventures' prior marks but accepted and advertised the others despite citing similar conflicts. 

August Ventures filed applications under Section 19 to withdraw acceptances, then writ petitions for mandamus to decide those and certiorari to quash acceptances/advertisements, while Innocenti appealed the refusal. The court examined the interplay of Sections 9, 11, 18, 19, 20, 21, 47, and 57, holding Section 19 confers discretionary power on the Registrar without obligating consideration of third-party requests or hearings, as no such provision exists and alternative remedies like opposition under Section 21 suffice, rendering writs unmaintainable.

However, noting the Registrar's inconsistent stances on identical marks (refusing one while accepting others), it found the refusal erroneous and remanded all matters for consolidated adjudication. The writ petitions were dismissed, the appeal allowed, the impugned refusal set aside, and the Registrar directed to pass a reasoned consolidated order after hearing both parties on the applications, oppositions, and rectifications within three months, without expressing merits.

The power under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application is discretionary and can only be invoked by the Registrar upon their own satisfaction; it is not obligatory to consider or decide applications filed by third parties requesting its exercise. [ Para 31]

 Section 19 of the Trade Marks Act, 1999 and Rule 38 of the Trade Marks Rules, 2017 contemplate only the Registrar and the applicant as parties; there is no scope for third parties to file applications invoking the power under Section 19 or to be heard thereunder. [Para 32]

Parties aggrieved by acceptance and advertisement of a trademark application have an adequate alternative remedy under Section 21 of the Trade Marks Act, 1999 to file opposition, precluding writ jurisdiction under Article 226 for mandamus or certiorari regarding Section 19. 

Case Title: Innocenti SA Vs. Examiner of Trade Marks:31.01.2026, (COMM.IPD-TM) 76/2024 2026:DHC:784: Hon'ble Mr. Justice Tejas Karia.

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

=====

Refex Industries Limited Vs. Regional Director, Northern Region, Ministry of Corporate Affairs & Anr.

Refex Industries Limited, incorporated in 2002 originally as Refex Refrigerants Private Limited and renamed in 2013, owns registered trademark REFEX in Class 1 since 2007 for refrigerant gases manufacturing, with nine group companies also using REFEX prominently, while Refex Hotels Private Limited was incorporated in 2017 for hospitality services.

Refex Industries applied in April 2018 under Section 16(1)(b) Companies Act 2013 to Regional Director seeking direction for Refex Hotels to rectify name as identical to its trademark, but Regional Director rejected on August 23, 2018 citing different business classes and no confusion potential.

Aggrieved, Refex Industries filed writ petition in 2022 under Articles 226/227 Constitution seeking quashing of order and name change direction.

Court reasoned names are structurally/phonetically identical with REFEX as coined prominent part, dissimilarity in businesses irrelevant under Section 16 as mere resemblance to prior registered name/trademark deems undesirable per precedents like CGMP Pharmaplan, Everstone, Mondelez emphasizing no need for deception/confusion examination, rejected delay plea due to COVID limitation extensions. Petition allowed, order quashed, Refex Hotels directed to change name within four weeks, Regional Director to ensure compliance.

• A company name is undesirable if it is identical or too nearly resembles an existing company's name or registered trademark, irrespective of dissimilarity in business activities, warranting rectification under Section 4(2)(a) and Section 16 of the Companies Act, 2013, as held in para 16 
• The Regional Director's jurisdiction under Section 16 of the Companies Act, 2013, to direct a name change is triggered by mere resemblance to a prior registered name or trademark, without requiring proof of likelihood of deception or confusion, as clarified in para 11.
• A writ petition challenging an order under Section 16 of the Companies Act, 2013, is not barred by delay if filed within a reasonable time, considering extensions of limitation due to COVID-19 as per Supreme Court orders, as noted in para 19.

Case Title: Refex Industries Limited Vs. Regional Director, Northern Region, Ministry of Corporate Affairs & Anr.: 28.01.2026: 2026:DHC:691: 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

Shyam Rastogi Trading as Shyam Hosiery Industries and Anr Vs. Hugo Boss Trade Mark Management GmbH

Introduction: This petition under Article 227 of the Constitution of India challenged a trial court order rejecting the defendant's application to introduce additional documents post-framing of issues, aimed at substantiating prior use of the "BIG BOSS" trademark. The Delhi High Court, in its judgment, meticulously dissected the requirements of "reasonable cause" under Order XI Rule 1(10) CPC, distinguishing it from broader condonation standards in ordinary civil suits and underscoring the legislative intent to curb delays in commercial disputes. Drawing on precedents like Hassad Food Company Q.S.C. v. Bank of India and Sudhir Kumar @ S. Baliyan v. Vinay Kumar G.B., the court reinforced that while the threshold for "reasonable cause" is lower than "good cause," it demands a genuine explanation for non-disclosure, particularly when documents are inherently within a party's power or custody. 

Factual Background: Hugo Boss Trade Mark Management GmbH & Co KG, a renowned German entity holding global trademarks for "BOSS" in apparel and related goods, initiated a commercial suit against Shyam Rastogi, trading as Shyam Hosiery Industries, alleging infringement through the use of "BIG BOSS" on hosiery products. Hugo Boss claimed exclusive rights to "BOSS" since its registration in India and contended that "BIG BOSS" was deceptively similar, likely to cause confusion among consumers. Shyam Rastogi, an Indian proprietor engaged in manufacturing and selling hosiery since 1996, defended by asserting prior adoption and continuous use of "BIG BOSS" from 1995, predating Hugo Boss's Indian presence. 

To bolster this defense, Shyam sought to introduce a slew of archival documents post-filing his written statement, including sales tax challans from 1996-2005 demonstrating firm authenticity and tax compliance, income tax return acknowledgments from 2001-2023 evidencing business in hosiery, printing and purchase bills from 1995-2009 showing logo design charges for "BIG BOSS," sales records from 1996-2023, manual and computerized invoices from 1997-2023. These documents were purportedly crucial to prove prior and honest concurrent use. Shyam explained the delay by noting the documents' age and unavailability during written statement preparation, with active search commencing only after a Division Bench query in an appeal on July 5, 2024.

Procedural Background: Hugo Boss filed CS(COMM) 538/2023 before the Commercial Court, Saket, New Delhi, seeking permanent injunction, damages, and rendition of accounts for trademark infringement under the Trade Marks Act, 1999. An ex-parte ad-interim injunction was granted on September 25, 2023. Shyam filed his written statement on October 27, 2023, without the additional documents, and moved an application under Order XXXIX Rule 4 CPC to vacate the injunction, which was dismissed on January 2, 2024, while confirming the injunction. Issues were framed on May 21, 2024. Aggrieved, Shyam appealed via FAO(COMM) 87/2024, where on July 5, 2024, the Division Bench noted his intent to file additional documents proving 1995 sales but granted no explicit liberty. Shyam then filed the application under Order XI Rule 1(10) and Order XIII Rule 1 CPC on January 20, 2025, before the trial court to place the documents on record. The trial court, vide order dated September 12, 2025, dismissed it, citing lack of reasonable cause, as most documents were in Shyam's possession and not disclosed timely, relying on Delhi High Court precedents emphasizing strict compliance in commercial suits. Shyam challenged this under Article 227 CPC via CM(M)-IPD 4/2026, with accompanying applications for condonation of 36-day delay (CM 11/2026) and stay (CM 10/2026, CM 12/2026). The High Court condoned the delay but heard the main petition on merits, reserving judgment on January 20, 2026, and delivering it on January 29, 2026.

Reasoning and Decision of Court: The High Court commenced by delineating the supervisory jurisdiction under Article 227, limiting interference to grave miscarriages of justice or patent illegality, not as an appellate review. It analyzed Order XI CPC as amended for commercial suits, stressing mandatory document disclosure with pleadings to expedite trials and prevent surprises. 

Drawing from Hassad Food Company Q.S.C. v. Bank of India, the court interpreted "reasonable cause" under Rule 1(10) as requiring a lower proof threshold than "good cause" under Order XIII Rule 2, yet necessitating a genuine explanation for non-disclosure, focusing on whether documents were in the defendant's power, possession, custody, or control at written statement filing. Referencing Sudhir Kumar @ S. Baliyan v. Vinay Kumar G.B., it extended the principle that post-discovery documents may bypass rigorous cause requirements, but here, Shyam's documents were intrinsically his own—tax records, bills, and registrations—undeniably accessible earlier. 

The court scrutinized paragraphs 5 and 6 of Shyam's application, finding the explanation vague: mere antiquity and post-appeal search post-July 5, 2024, order did not constitute reasonable cause, especially since the Division Bench granted no permission, only noted intent. It dismissed reliance on Sugandhi v. P. Rajkumar and other ordinary suit precedents, distinguishing them from commercial suits' time-bound ethos under the 2015 Act. The incomplete list of documents violated the mandatory proforma, failing to detail custody, originality, execution mode, etc., amounting to non-compliance warranting rejection, as per Sudhir Kumar. While agreeing the trial court erred in delving into document sufficiency/relevancy (beyond assessing cause), this did not vitiate the order, as primary non-disclosure grounds sufficed. Balancing procedural handmaid status with commercial efficiency, the court found Shyam's conduct cavalier, delaying proceedings unjustly. Consequently, the petition was dismissed without costs, upholding the trial court's order and disposing of pending applications.

Point of Law Settled in the Case: This judgment clarifies that under Order XI Rule 1(10) CPC, as applicable to commercial suits, "reasonable cause" for non-disclosure of documents with the written statement demands a genuine, specific explanation, with a lower proof threshold than "good cause" but mandating demonstration that documents were not in the defendant's power, possession, custody, or control at filing; mere delay or post-appeal discovery without prior diligence does not suffice, reinforcing the Commercial Courts Act's intent for vigilant, time-bound litigation over procedural leniency in ordinary suits. It affirms that incomplete compliance with the mandatory document list proforma constitutes fatal non-adherence, disentitling relief, and limits trial court inquiry to non-disclosure cause, not document merits, unless integral to assessing reasonableness.

Case Detail: Shyam Rastogi Trading as Shyam Hosiery Industries and Anr v. Hugo Boss Trade Mark Management GmbH and Co KG and Anr

Date of Order: 29.01.2026

Case Number: CM(M)-IPD 4/2026

Neutral Citation: 2026:DHC:703

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tushar Rao Gedela

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. Delhi High Court Reinforces Strict Disclosure Norms in Commercial Trademark Suits: Analysis of Shyam Rastogi v. Hugo Boss

2. Interpreting 'Reasonable Cause' under Order XI CPC: Key Insights from Shyam Hosiery v. Hugo Boss Trademark Dispute

3. Procedural Rigor in IP Litigation: Delhi HC Dismisses Belated Document Filing in Big Boss Trademark Case

4. From Prior Use Defense to Procedural Lapse: Unpacking the Shyam Rastogi v. Hugo Boss Judgment

5. Commercial Courts Act in Action: High Court's Stance on Document Non-Disclosure in Trademark Infringement Appeals

### Suggested Tags

Trademark Infringement, Commercial Courts Act 2015, Order XI CPC, Reasonable Cause, Prior Use Defense, Delhi High Court, Document Disclosure, Article 227 Petition, Hugo Boss v Big Boss, IP Litigation Procedures, Belated Evidence Filing,

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Hugo Boss sued Shyam Rastogi for trademark infringement by using BIG BOSS deceptively similar to BOSS on hosiery goods, obtaining ex-parte injunction on September 25, 2023, which was confirmed on January 2, 2024, while dismissing Shyam's vacation application, with issues framed on May 21, 2024.

Shyam appealed, and during hearing on July 5, 2024, the division bench noted intent to file documents proving 1995 sales but granted no liberty, prompting Shyam to apply under Order XI Rule 1(10) CPC on January 20, 2025, to introduce old tax challans, returns, bills, sales records, advertisements, and registrations from 1995-2023 to establish prior use, citing antiquity and post-appeal search as cause.

Trial court dismissed on September 12, 2025, for lack of reasonable cause, documents being in possession. Shyam petitioned under Article 227 . High Court analyzed Order XI CPC for commercial suits, interpreting reasonable cause as lower threshold than good cause but requiring genuine explanation for non-disclosure, finding Shyam's vague antiquity and post-query search insufficient, documents intrinsically in possession, and list incomplete per mandatory proforma, distinguishing from ordinary suits and upholding despite trial court's erroneous relevancy assessment. Petition dismissed without costs.

• In commercial suits under the Commercial Courts Act, 2015, "reasonable cause" under Order XI Rule 1(10) CPC for non-disclosure of documents with written statement requires a genuine explanation, with a lower proof threshold than "good cause" but mandating demonstration that documents were not in defendant's power, possession, custody, or control at filing, as held in para 19 of Shyam Rastogi Trading as Shyam Hosiery Industries and Anr. v. Hugo Boss Trade Mark Management GmbH and Co KG and Anr., CM(M)-IPD 4/2026, Delhi High Court (January 29, 2026), referring to Hassad Food Company Q.S.C. v. Bank of India.
• The principle from Sudhir Kumar @ S. Baliyan v. Vinay Kumar G.B. extends to Order XI Rule 1(10) CPC, exempting rigorous reasonable cause requirement for documents discovered post-written statement, but only if averred they were not in power, possession, control, or custody earlier, as noted in para 22.
• Incomplete compliance with the mandatory proforma for list of documents under Commercial Courts Act disentitles relief, as it violates procedure, per para 29 citing Sudhir Kumar @ S. Baliyan v. Vinay Kumar G.B.
• Trial courts under Order XI Rule 1(10) CPC should limit inquiry to reasonable cause for non-disclosure, not document sufficiency or relevancy unless integral to cause assessment, as clarified in para 30.
• Appellate interference under Article 227 in commercial suit procedural orders is limited to patent illegality or miscarriage of justice, not reappreciation, reiterated in para 18.

Case Title: Shyam Rastogi Trading as Shyam Hosiery Industries and Anr Vs. Hugo Boss Trade Mark Management GmbH and Co KG and Anr: 29.01.2026: CM(M)-IPD 4/2026: 2026:DHC:703: Hon'ble Mr. Justice Tushar Rao Gedela

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

Canva Pty Ltd & Ors. Vs. RxPrism Health Systems Private Limited

Introduction: This appeal before the Delhi High Court challenged an interim injunction granted by a single judge, restraining Canva from using its "Present and Record" feature in India on the grounds that it infringed RxPrism's Indian Patent No. 360726. The patent, titled "A system and a method for creating and sharing interactive content rapidly anywhere and anytime," protects a technology enabling users to generate layered, interactive content with synchronized media elements, such as background slides and foreground video overlays, along with configurable call-to-action components. The division bench  examined principles of claim construction, the doctrine of equivalents, and validity challenges, ultimately affirming the single judge's decision. 

Factual Background: RxPrism Health Systems Private Limited, an Indian startup incorporated under the Companies Act, 1956, specializes in technology solutions for social selling and digital customer engagement. In December 2018, RxPrism filed a patent application for a system that allows users to create and share interactive multimedia content swiftly across devices. The invention features a computing device with processor, memory, display, camera, microphone, and media library, where a user presents first media like images or slides as background, while recording second media such as audio or video as a movable foreground overlay. An authoring module facilitates recording and configuration, and a player module enables viewers to interact with the content, pausing, navigating slides, and jumping timelines for a non-linear experience. The content is stored as a network resource accessible via URL. This technology was commercialized through RxPrism's "My Show & Tell" product launched in May 2020, targeting sales, education, and corporate sectors. The patent was granted on March 10, 2021, as Indian Patent No. 360726. 

Canva Pty Ltd, an Australian company, operates a global online design platform. On August 27, 2020, Canva introduced the "Present and Record" feature, allowing users to record themselves presenting slides, generating synchronized composites popular during the pandemic for remote communications. RxPrism discovered this feature in June 2021, conducted a technical analysis, and concluded it replicated the patented layered architecture, synchronization, and interactive elements. Communications ensued from June to September 2021, with RxPrism sharing patent details, claim mappings, and offering a license, but Canva continued usage without agreement, leading RxPrism to view amicable resolution as unfeasible.

Procedural Background: RxPrism initiated a commercial suit, CS (COMM) 573/2021, before the Delhi High Court, seeking permanent injunction against Canva for infringing Patent No. 360726 through the "Present and Record" feature, alleging violation of Section 48 of the Patents Act, 1970. An interim application under Order XXXIX Rules 1 and 2 CPC sought urgent relief. RxPrism argued its product embodied the patent, distinguishing it from prior art , which lacked layered interactivity and configurable elements. 

Canva opposed, claiming the suit premature as the post-grant opposition period under Section 25(2) was unexpired, and denying infringement, asserting no three-layer architecture or essential features. Canva challenged validity on grounds of anticipation and obviousness, citing prior art mosaicing. 

The single judge, after hearings and demonstrations, granted interim injunction on July 18, 2023, finding prima facie infringement, directing Canva to cease the feature in India, deposit Rs. 50 lakhs as security based on usage data up to June 30, 2022, and pay Rs. 5 lakhs costs, noting Canva's lack of Indian assets and language in pleadings. Aggrieved, Canva appealed under Section 13(1) of the Commercial Courts Act, 2015, read with Order XLIII Rule 1(r) CPC, as FAO(OS) (COMM) 211/2023, contending errors in claim construction, infringement analysis, doctrine of equivalents application, validity assessment, and reliance on Canva's PCT application. The division bench reserved judgment on December 1, 2025, and pronounced it on January 28, 2026.

Reasoning and Decision of Court: The division bench commenced by reiterating the limited scope of appellate interference in interlocutory orders under Order XXXIX CPC, as per Wander Ltd. v. Dexo Laboratories, confining review to arbitrariness, perversity, or contravention of settled principles rather than reappreciating evidence. It recapitulated patent infringement tests from F. Hoffmann-La Roche Ltd. v. Cipla Ltd., emphasizing two-stage analysis: claim construction as a legal exercise, reading specifications holistically to ascertain scope without extraneous limitations, followed by comparison with the accused product. 

Claims define monopoly, construed purposively from the skilled person's perspective, ensuring consistency for validity and infringement. The court affirmed the doctrine of equivalents from FMC Corporation v. Vovantis Crop Protection Pvt. Ltd., preventing evasion through minor variations, applying "function-way-result" for products but "essential element test" for processes, comparing elements, steps, and interactions. Applying this, the bench found the single judge correctly identified seven inventive steps from Claims 1 and 39, with Canva admitting three, and properly mapped the disputed four (layered presentation retaining interactivity, modifiable layers without re-recording, configuration interface for editing stored content, and rendering CTAs during playback). 

It rejected Canva's arguments of product-to-product comparison, noting the judgment's claim-centric focus, and upheld equivalence application, deeming absences like movability or sandwiched layers inessential variations. On validity, the bench dismissed anticipation pleas, finding the single judge compared prior art with claims, implicitly treating layering and configurability as inventive over non-merged, non-interactive systems. It corrected minor factual errors on Canva's PCT application but upheld its evidentiary reliance as corroborating imitation without substituting infringement analysis. Balancing equities, the court noted RxPrism's startup status, patent commercialization, and irreparable harm from unlicensed use, against Canva's global operations and low Indian revenue from the feature, affirming the injunction and deposit as proportionate security. Dismissing the appeal, the bench clarified observations as prima facie, not binding at trial.

Point of Law Settled in the Case: This judgment reinforces that in patent infringement suits involving software features, claim construction must be purposive, holistic, and claim-centric, drawing from specifications without importing unclaimed limitations, ensuring uniform scope for validity and infringement analyses. It clarifies the doctrine of equivalents' application to process patents through an "essential element test," evaluating substantial identity in elements, steps, and interactions rather than mechanical "function-way-result" triple test, allowing injunctions where variations are minor, inessential, or camouflaging. The decision emphasizes structured prior art comparisons with asserted claims, not commercial embodiments, rejecting mosaicing and upholding prima facie validity absent credible challenges. It affirms appellate restraint in interlocutory appeals, interfering only for perversity or principle errors, and validates securing foreign defendants via deposits based on usage data when no local assets exist, balancing irreparable harm to patentees against minimal prejudice to infringers with alternative revenues.

Case Title: Canva Pty Ltd & Ors. Vs. RxPrism Health Systems Private Limited & Anr.

Date of Order: 28.01.2026

Case Number: FAO(OS) (COMM) 211/2023

Neutral Citation: 2026:DHC:659

Name of Court: High Court of Delhi at New Delhi

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

Delhi High Court Upholds Injunction in Canva v. RxPrism: A Deep Dive into Patent Infringement in Digital Content Tools

Analyzing Canva's Appeal Dismissal: Key Insights on Claim Construction and Doctrine of Equivalents in Software Patents

RxPrism v. Canva: How the Delhi High Court Reinforced Prima Facie Protection for Interactive Content Patents

Patent Battles in the Digital Age: Unpacking the Reasoning in Canva Pty Ltd v. RxPrism Health Systems

From Single Judge to Division Bench: The Journey of the "Present and Record" Feature Infringement Dispute

Suggested Tags

Patent Infringement, Software Patents, Doctrine of Equivalents, Claim Construction, Delhi High Court, Interactive Content Creation, Canva v RxPrism, Interim Injunction, Prior Art Analysis, Intellectual Property Disputes, Digital Tools, Validity Challenges, Technology Startups

Headnote

Delhi High Court dismisses Canva's appeal against interim injunction for infringing RxPrism's patent on interactive content system; upholds single judge's prima facie findings on layered architecture, configurability, and doctrine of equivalents; emphasizes claim-centric analysis for infringement and validity, rejecting product-to-product comparisons and unsubstantiated prior art challenges; directs security deposit for foreign defendant lacking Indian assets.

=====

RxPrism Health Systems, an Indian startup, owns patent IN360726 granted in 2021 for a system and method to create and share interactive multimedia content with synchronized layers including background media like slides and foreground video overlay, commercialized via "My Show & Tell" in 2020, while Australian company Canva launched "Present and Record" feature in 2020 allowing similar synchronized presentations with video overlays that gained popularity during COVID-19.

RxPrism discovered the feature in 2021, conducted analysis showing infringement, engaged in unsuccessful licensing talks, and filed suit CS(COMM) 573/2021 seeking injunction under Patents Act alleging literal infringement and distinguishing from prior art like PowerPoint and Loom lacking layered interactivity.

Canva opposed the interim application claiming suit premature as post-grant opposition period unexpired, denying infringement for lacking three-layer architecture, and challenging validity on anticipation and obviousness grounds. Single judge granted injunction on July 18, 2023, finding prima facie infringement, restraining feature use in India, directing Rs 50 lakh deposit as security given no Indian assets, and imposing Rs 5 lakh costs.

Canva appealed arguing errors in claim construction, improper equivalents application, validity misassessment, and disproportionate relief. Division bench examined under limited appellate scope per Wander Ltd, recapitulated purposive claim construction from skilled person's view without importing limitations, applied essential element test for process patent equivalents assessing substantial identity in elements/steps/interactions rather than rigid function-way-result, found single judge correctly construed claims focusing on layered media and post-creation configurability as essentials, mapped disputed features holding absences like third layer or movability non-essential variations, rejected product-to-product comparison and mosaicing of prior art, upheld validity prima facie as prior art lacked interactivity, corrected minor factual errors but affirmed PCT application reliance as corroborative not substitutive, and balanced equities favoring startup patentee's irreparable harm over Canva's minimal Indian prejudice. Appeal dismissed upholding injunction as reasoned exercise without perversity.

Claim construction must remain consistent for validity and infringement analyses, avoiding narrow interpretation to evade prior art while broadening for infringement, as held in para 110 of the judgment in Canva Pty Ltd & Ors. v. RxPrism Health Systems Private Limited & Anr., FAO(OS) (COMM) 211/2023, Delhi High Court (January 28, 2026).

Doctrine of Equivalents for process patents applies "essential element test" evaluating substantial identity in essential elements, steps, and their interactions, not mechanical "function-way-result" triple test suited for products, permitting infringement finding despite minor variations introduced to camouflage piracy, as settled in para 119 referring to FMC Corporation v. Nativo Crop Protection Pvt. Ltd.

Appellate interference in interim injunction orders under Order XXXIX CPC is limited to arbitrariness, perversity, or contravention of principles, not reappreciation of evidence or substituting views, per Wander Ltd. v. Antox India Pvt. Ltd. reiterated in para 100.

Prior art analysis for validity requires comparison with asserted claims, not commercial embodiments, rejecting impermissible mosaicing of multiple references unless skilled person would combine them, as noted in para 64.

Security deposits against foreign defendants without Indian assets are proportionate when based on usage/revenue data to secure past infringement claims, as directed in para 196.

Case Title: Canva Pty Ltd & Ors. v. RxPrism Health Systems Private Limited:28.01.2026:FAO(OS) (COMM) 211/2023:2026:DHC:659: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble 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

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.

=====

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.

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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

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