Sunflame Enterprises Pvt.Ltd. Vs Kitchenopedia Appliances Pvt.Ltd

Introduction:;The case of Sunflame Enterprises Private Limited v. Kitchenopedia Appliances Private Limited & Anr. exemplifies a classic trademark battle in the competitive kitchen and home appliances sector, where visual, phonetic, and structural similarities in brand names and logos can lead to consumer confusion and dilution of established goodwill. Sunflame, a well-entrenched brand with over four decades of market presence, sought to restrain the defendants from using the mark 'Sunflare' (with a flame device), alleging infringement and passing off. 

The dispute underscores the protection afforded to prior registered users against later-adopted deceptively similar marks, particularly when the rival mark appears designed to capitalize on the plaintiff's reputation in household consumer goods. The interim application under Order XXXIX Rules 1 and 2 CPC focused on preventing irreparable harm pending trial, balancing the equities in favor of preserving established goodwill.

Factual Background:  Sunflame Enterprises traces its origins to 1980 when its predecessor, a partnership firm M/s Sunflame Industries, commenced manufacturing and marketing gas stoves under the 'Sunflame' mark. The company was formally incorporated in 1984 as Sunflame Appliances Marketing Pvt. Ltd., renamed Sunflame Enterprises Pvt. Ltd. in 1995. 

Over more than four decades, Sunflame has evolved into a leading manufacturer and distributor of a diverse range of kitchen and home appliances, including gas stoves, burners, chimneys, cooktops, mixers, grinders, water heaters, induction cookers, pressure cookers, cookware, and room heaters. The brand emphasizes innovation, research and development, quality control, and customer satisfaction through an extensive dealer and service network across India.

The 'Sunflame' mark, often stylized with a flame device integrated into the lettering (particularly in the 'o'), has acquired distinctiveness and secondary meaning through continuous, extensive, and uninterrupted use since 1980. 

Sunflame holds multiple trademark registrations across various classes, including Class 11 (heating and cooking apparatus), Class 21 (household utensils), Class 9 (electrical appliances), Class 7 (machines), and Class 17 (insulating materials). Key registrations date back to 1980, with use claimed from as early as 2000 in some cases. The plaintiff's substantial investments in quality, advertising, and distribution have resulted in steady growth in sales turnover, reflecting immense goodwill and reputation synonymous with reliable, high-performance appliances.

The defendants, Kitchenopedia Appliances Pvt. Ltd. and another entity, adopted the mark 'Sunflare' (depicted as 'SUNFLARE' with a flame-like device), which the plaintiff alleged was phonetically, visually, and structurally similar. Defendant No. 2 filed trademark applications in 2022 for 'Sunflare' in Classes 21 and 9. The plaintiff claimed the adoption was dishonest, aimed at riding on Sunflame's reputation, and likely to cause confusion among average consumers purchasing impulse-driven household appliances.

Procedural Background:  

The suit was instituted in 2024 as CS(COMM) 216/2024, seeking permanent injunction, damages, and other reliefs for trademark infringement and passing off. Along with the plaint, I.A. No. 5557/2024 was filed for interim injunction under Order XXXIX Rules 1 and 2 CPC to restrain the defendants from using 'Sunflare' or any deceptively similar mark. 

Reasoning and Decision of Court: The court comprehensively examined the plaintiff's long-standing prior use since 1980, multiple registrations, extensive sales, and established goodwill, which conferred distinctiveness on the 'Sunflame' mark despite its suggestive elements. 

The defendants' mark 'Sunflare' was found to be phonetically similar (sharing the 'Sunfla' prefix), visually akin due to the flame device, and structurally deceptive, with the dominant feature being the common 'Sunfl' element combined with flame imagery evocative of fire and cooking. The court applied the dominant feature test, holding that consumers of average intelligence would likely associate 'Sunflare' with 'Sunflame' even without side-by-side comparison, leading to initial confusion or wonder about affiliation.

The adoption was deemed prima facie dishonest, as the defendants failed to explain how they arrived at such a strikingly similar mark, suggesting an intent to ride on the plaintiff's reputation. The mark was not descriptive or generic, serving as a source identifier for kitchen appliances. A strong prima facie case of both infringement (due to registered rights in relevant classes) and passing off (substantial goodwill, misrepresentation, and likelihood of damage) was established. 

The balance of convenience favored the plaintiff, as continued use by defendants would erode goodwill and cause irreparable injury, whereas restraint would not unduly prejudice defendants who could adopt alternative branding. Accordingly, interim injunction was granted, restraining the defendants from using 'Sunflare' or any deceptively similar mark pending final disposal of the suit.

Point of Law Settled in the Case: This decision reaffirms the application of the dominant feature test in assessing deceptive similarity under the Trade Marks Act, 1999, where the essential or striking elements (here, 'Sunfl' prefix and flame motif) prevail over minor differences. 

It clarifies that suggestive marks with acquired distinctiveness through long use and registration enjoy robust protection against phonetically and visually similar later marks, even if the rival mark incorporates a device. Courts prioritize evidence of prior adoption, goodwill, and dishonest intent in interim relief, emphasizing that equity demands restraint to prevent consumer confusion and unjust enrichment in FMCG-like appliance markets where purchases are brand-driven. Honest concurrent use defenses fail when adoption appears calculated to exploit reputation.

Case Title: Sunflame Enterprises Pvt.Ltd. Vs Kitchenopedia Appliances Pvt.Ltd. & Anr.  

Date of Order: 31.01.2026  

Case Number: CS(COMM) 216/2024  

Neutral Citation: 2026:DHC:783  

Name of Court: High Court of Delhi  

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

Disclaimer: Readers are advised not to treat this as substitute for legal advice 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 for this Article**  

1. Sunflame Triumphs in Interim Battle: Delhi High Court Restrains 'Sunflare' Mark for Infringement and Passing Off  

2. Flame of Similarity: Detailed Analysis of Sunflame Enterprises v. Kitchenopedia Appliances Trademark Injunction  

3. Protecting Brand Legacy: Delhi High Court Grants Interim Relief to Sunflame Against Deceptively Similar 'Sunflare'  

4.Infringement and passing off due to phonetic, visual, and structural similarity

**Suitable Tags**  

trademark infringement, passing off, Sunflame, Sunflare, kitchen appliances, gas stoves, dominant feature test, deceptive similarity, interim injunction, Delhi High Court, goodwill, prior use, flame logo, consumer confusion

**Headnote**  

In this case titled as Sunflame Enterprises Private Limited v. Kitchenopedia Appliances Private Limited & Anr., the Delhi High Court granted interim injunction restraining the defendants from using the 'Sunflare' mark (with flame device) for kitchen appliances, finding prima facie Infringement and passing off due to phonetic, visual, and structural similarity with the plaintiff's long-established 'Sunflame' mark. The ruling applies the dominant feature test, upholds protection for registered suggestive marks with acquired distinctiveness, and stresses equitable relief against dishonest adoption to prevent consumer deception and irreparable harm to goodwill in the home appliances sector.

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The case involves a trademark infringement and passing off suit by Sunflame Enterprises Pvt. Ltd. against Kitchenopedia Appliances Pvt. Ltd. and another, concerning the mark 'SUNFLAME' (with flame device) used since 1980 by the plaintiff (through predecessor) for manufacturing and selling kitchen appliances like gas stoves, chimneys, cooktops, and more, with substantial goodwill, sales, and multiple registrations. 

The plaintiff alleged defendants' adoption of 'SUNFLARE/SUNFLARE' (with similar flame/sun-like device) for identical goods was deceptively similar, phonetically close, and intended to mislead consumers. 

 

After considering submissions on prior continuous use, registrations, phonetic/semantic/visual similarity, likelihood of confusion in identical goods class, dishonest adoption, and balance of convenience favoring prevention of irreparable harm to plaintiff's established reputation over defendants' recent use, the court granted interim injunction restraining defendants from using 'SUNFLARE/SUNFLARE' or any deceptively similar mark pending suit disposal, without prejudice to final merits.

Law Point Settled:

Phonetic similarity between 'SUNFLAME' and 'SUNFLARE' combined with visual similarity in flame/sun device and identical goods creates strong likelihood of confusion and deception, warranting interim injunction in trademark infringement/passing off cases.

Prior long continuous use since 1980 establishing goodwill and reputation in household kitchen appliances tilts prima facie case and balance of convenience in favor of plaintiff at interim stage, even against later adopters. 

In cases of deceptive similarity in identical class of goods, irreparable injury presumed from potential loss of goodwill and consumer confusion justifies interim restraint without requiring exhaustive proof of actual damage at that stage. 

Case Title: Sunflame Enterprises P. Ltd. Vs Kitchenopedia Appliances P. Ltd.: 31.01.2026: CS(COMM) 216/2024:226:DHC:783 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

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Sabu Trade Pvt.Ltd. Vs. Raj Kumar Sabu

Introduction:  The consolidated judgment in Sabu Trade Private Limited v. Raj Kumar Sabu & Anr (CS(COMM) 97/2020) and the connected suit Raj Kumar Sabu v. Kaushalya Devi Sabu & Ors (CS(COMM) 761/2016) addresses a deeply entrenched family and business conflict over the proprietorship, adoption, and use of the trademark ‘SACHAMOTI’ in relation to sabudana (sago) and allied edible products. 

This dispute pits Sabu Trade Private Limited (STPL), a family-owned company, against Raj Kumar Sabu, a former director and family member, amid allegations of surreptitious registration, breach of fiduciary duty, fraud, and fabrication of documents. 

The core issue revolves around whether the mark belongs to the company through prior use and goodwill or to Raj Kumar Sabu through personal registration and an alleged assignment via an affidavit from their late mother. 

The judgment, delivered on 31 January 2026, resolves multiple interlocutory applications concerning amendment of pleadings, interrogatories, additional documents, and a criminal miscellaneous application, emphasizing procedural fairness, the need to adjudicate real controversies, and the threshold for allowing discovery in commercial trademark disputes.

Factual Background: The origins trace back to the family business run under the name M/s Sabu Traders, which achieved success in trading sabudana and related products. In 1993, the family incorporated M/s Sabu Export Salem Pvt Ltd, later renamed Sabu Trade Private Limited (STPL) in 2006. The initial directors included Kaushalya Devi Sabu, Gopal Sabu, Shivnarayan Sabu, and Raj Kumar Sabu. STPL claims to be the true proprietor and prior user of the ‘SACHAMOTI’ mark, asserting that Raj Kumar Sabu, while serving as a director and distributor, surreptitiously obtained trademark registrations in his personal name despite his association with the company. STPL alleges that Raj Kumar Sabu misused his position to register the mark personally, thereby depriving the company of its goodwill built over years of use.

Conversely, Raj Kumar Sabu maintains that the ‘SACHAMOTI’ mark is registered in his favor in Class 30 under application No. 1169859. He relies on an affidavit dated 08.06.2016 purportedly executed by his late mother, Smt. Chandrakanta Sabu, which allegedly assigned the rights, title, and interest in the mark to him in 1997. This affidavit forms the cornerstone of his claim to exclusive ownership. The dispute escalated into litigation with STPL filing a suit originally in the District Court, Salem (later transferred to Delhi High Court), seeking to restrain Raj Kumar Sabu and his entity from using the mark, while Raj Kumar Sabu filed a connected suit seeking a permanent injunction against STPL and its directors from using ‘SACHAMOTI’.

Procedural Background: The original suit (OS No. 148 of 2016) filed by STPL in Salem was transferred to the Delhi High Court by the Supreme Court vide order dated 18.07.2019 in Transfer Petition (C) Nos. 1676 of 2017, 1328 of 2018, and Civil Appeal Nos. 5644-5645 of 2019. The connected suit was instituted directly in the Delhi High Court. Over time, multiple applications arose due to evolving pleadings and evidentiary needs. STPL filed I.A. No. 10994/2020 seeking amendment of its plaint to update sales and advertisement figures, insert paragraphs alleging breach of fiduciary duty, fraud, and fabrication of the affidavit attributed to Chandrakanta Sabu, amend valuation paragraphs, and add prayers to declare the affidavit null and void while directing transfer of the mark to STPL. In the connected suit, defendants (STPL side) sought amendment of their written statement via I.A. No. 11028/2020 to update sales and advertisement averments.

STPL also filed I.A. No. 8922/2020 under Order XI Rule 2 CPC for permission to administer interrogatories highlighting alleged inconsistencies in Raj Kumar Sabu’s pleadings, trademark affidavits, and positions in related proceedings. Additional documents were sought, with objections raised on relevance and specific items. 

A criminal miscellaneous application (CrI.M.A. No. 12366/2020) in the connected suit was also considered, likely concerning allegations of fabrication or contempt. 

Reasoning and Decision of Court: The court began by identifying the overlapping factual matrix and the need for a common judgment to resolve procedural bottlenecks efficiently. On amendment applications, it noted that STPL sought to introduce allegations of fraud, fabrication of the affidavit, and breach of fiduciary duty, supported by claims of inconsistencies and prima facie falsehood in documents. 

The court found a prima facie case of falsehood in the affidavit and related materials, reasoning that such amendments were necessary to determine the real controversy between the parties, especially since the suit was at an early stage with no trial commencement. 

It emphasized that amendments should be liberally allowed if they do not alter the fundamental character of the suit or cause irreparable prejudice, and here the proposed changes clarified ownership issues central to the dispute.  The amendments to sales/advertisement figures were rejected.

Regarding interrogatories, the court scrutinized whether they were in prescribed format and amounted to impermissible fishing or cross-examination. 

It held that the interrogatories were relevant to probe inconsistencies in Raj Kumar Sabu’s stands across proceedings, including trademark affidavits, and were not exploratory but targeted at material facts. Permission was granted under the Commercial Courts Act framework, underscoring the need for full discovery in commercial disputes involving fraud allegations. 

On additional documents, the court overruled blanket objections to relevance, allowing those directly connected to use, goodwill, or the affidavit’s authenticity, while rejecting others lacking nexus. Specific objections were addressed individually, with the court balancing probative value against prejudice. 

Point of Law Settled in the Case :This judgment reinforces liberal principles for amendment of pleadings under Order VI Rule 17 CPC in commercial IP disputes. It clarifies that interrogatories in commercial suits (post-CC Act) can be allowed if targeted at inconsistencies and material facts rather than fishing expeditions.In family/business trademark conflicts involving fiduciary duties, courts prioritize procedural tools to prevent injustice from suppressed facts.

Case Title: Sabu Trade Private Limited Vs. Raj Kumar Sabu & Anr (and Connected Suit: Raj Kumar Sabu v. Kaushalya Devi Sabu & Ors)  

Date of Order: 31.01.2026  

Case Number: CS(COMM) 97/2020 (and Connected CS(COMM) 761/2016)  

Neutral Citation: 2026:DHC:796  

Name of Court: High Court of Delhi  

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

**Disclaimer:** Readers are advised not to treat this as substitute for legal advice 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 for this Article**  

1. Family Feud Over ‘SACHAMOTI’ Mark: Delhi High Court Allows Amendments and Interrogatories in Trademark Ownership Battle  

2. Procedural Breakthrough in Sabu Trade v. Raj Kumar Sabu: Key Rulings on Fraud Allegations and Discovery in IP Disputes  

3. Delhi High Court Enables Full Adjudication in ‘SACHAMOTI’ Trademark Dispute Through Liberal Procedural Reliefs  

**Suitable Tags**  

trademark ownership, SACHAMOTI, sabudana, passing off, infringement, family business dispute, amendment of pleadings, interrogatories, additional documents, fraud in affidavit, fiduciary duty, Delhi High Court, commercial courts act, prior use, goodwill

**Headnote**  

In Sabu Trade Private Limited v. Raj Kumar Sabu & Connected Suit, the Delhi High Court allowed amendments to pleadings introducing fraud and fabrication allegations regarding an assignment affidavit, permitted targeted interrogatories to address inconsistencies, and admitted relevant additional documents in a family dispute over the ‘SACHAMOTI’ trademark for sabudana products. The ruling highlights liberal amendment principles, the scope of discovery in commercial IP cases, and the need to resolve real controversies involving prima facie falsehoods, ensuring fair adjudication of proprietorship claims.

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The case arises from a long-standing family dispute over the trademark "SACHAMOTI" (and associated label/copyright) used for sabudana (sago) and related products, involving brothers Rajkumar Sabu (RKS) and Gopal Sabu, along with family entities like Sabu Trade Pvt Ltd (STPL) and others. 

The dispute originated from joint family business origins, with RKS claiming assignment from late mother Chandrakanta Sabu and obtaining registration, while STPL and others asserted prior family use and challenged validity. Two connected suits were filed: CS(COMM) 761/2016 by RKS against Kaushalya Devi Sabu & Ors (including STPL/Gopal) for infringement/passing off, and CS(COMM) 97/2020 by STPL against RKS & Anr seeking similar reliefs. 

Multiple interim applications arose including for amendment of pleadings, interrogatories, additional documents, and a criminal miscellaneous application. 

The court dealt with objections to amendments as substantive/prejudicial, interrogatories as fishing/cross-examination, relevance of additional documents, and prima facie falsehood in claims. 

After analyzing submissions, evidence of registrations, user claims, inconsistencies, and procedural aspects, the court granted interim injunction in favor of RKS restraining defendants from using the mark/label in CS 761/2016, rejected STPL's injunction application in CS 97/2020, allowed certain amendments/interrogatories/documents with conditions where relevant and non-prejudicial, dismissed others as irrelevant/fishing, and rejected the criminal miscellaneous application finding no prima facie falsehood warranting action, directing suits to proceed on merits with consolidated trial considerations.

Law Point Settled: Amendments to pleadings in trademark/family disputes are permissible if they do not introduce entirely new causes or cause irreparable prejudice, but substantive changes altering core claims may be disallowed at advanced stages; 

Interrogatories under Order XI CPC must be relevant, in prescribed format, and not amount to fishing enquiry or cross-examination.

Additional documents can be permitted under Order VII Rule 14/ Order VIII Rule 1A CPC if good cause shown for late filing and relevance to issues, but irrelevant or inadmissible documents.

In family trademark disputes involving registration vs prior use claims, registered proprietor enjoys prima facie statutory protection under Sections 28 & 31 Trade Marks Act, 1999.

Case Title: Sabu Trade Pvt Ltd Vs Raj Kumar Sabu:31.01.2026: (CS(COMM) 97/2020 :2026:DHC:786: 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

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Emami Limited Vs. Dabur India Limited

Introduction:  The case of Emami Limited v. Dabur India Limited represents a significant battle in the competitive landscape of ayurvedic personal care products in India, particularly in the therapeutic cooling oil segment. Emami, the established market leader with its iconic Navratna Oil, alleged that Dabur’s newly launched Cool King Thanda Tael product copied essential elements of its trade dress, bottle design, and overall get-up, amounting to passing off. The dispute centered on whether the defendant’s product created a false association with the plaintiff’s long-standing brand, potentially deceiving consumers and diluting Emami’s goodwill. This interim application under Order XXXIX Rules 1 and 2 CPC highlights the critical role of trade dress protection in passing off actions, where visual similarity and consumer perception play pivotal roles in establishing misrepresentation.

Factual Background:Emami Limited, founded in 1974 as the flagship of the Emami Group, has been a pioneer in ayurvedic medicines and personal care products since 1982. Its flagship product, Navratna Oil, was launched in January 1989 with the memorable catchphrase “Thanda Thanda Cool Cool.” Over three decades of continuous and uninterrupted use, Navratna has become synonymous with therapeutic cooling oil, commanding a dominant market share of 66% in the segment as of 2022. The product offers multi-purpose benefits, including relief, relaxation, and rejuvenation, and enjoys immense consumer trust across India and export markets.

Emami secured multiple trademark registrations for marks such as “NAVRATNA,” “NAVRATNA OIL,” “THANDA THANDA COOL COOL,” “COOL COOL,” “HALKA HALKA COOL COOL,” and others in Classes 3 and 5. These registrations date back to as early as 1998 and cover labels, devices, and phrases associated with cooling sensations. 

The product is packaged in a distinctive red trade dress, featuring elements like hibiscus/china rose flowers, ice crystals, ayurvedic herbs, and a saintly figure, which has remained largely consistent despite minor updates over time. Emami’s bottles are uniquely designed and registered under the Designs Act, 2000 (Registrations 253389 and 279325). Copyright registrations further protect the labels (e.g., A-58209/2000 for Himani Navratna Oil label).

The plaintiff invested heavily in promotion through television, newspapers, hoardings, and other media since 1989-90. Sales turnover figures demonstrate exponential growth, starting from INR 14.77 lakhs in 1990-91 to INR 58,562.25 lakhs in 2021-22, totaling over INR 727,085.81 lakhs. This established immense goodwill, with Navratna identified exclusively with Emami.

In June 2023, Emami discovered Dabur’s Cool King Thanda Tael, launched in transparent red bottles of similar shape and configuration to Emami’s registered designs. The packaging adopted a red color scheme, featured “Thanda Tael,” “Cool King,” and “Cool Oil” marks, and included similar visual elements like hibiscus, ice, and ayurvedic herbs. Emami alleged deliberate copying to pass off the product as associated with Navratna, causing confusion and potential damage to its reputation.

Procedural Background: Emami filed CS(COMM) 532/2023 seeking permanent injunction, damages, and other reliefs for passing off, design infringement, and copyright violation. In I.A. No. 14557/2023, an ex parte interim injunction was granted on 09.08.2023 restraining Dabur from selling Cool King Thanda Tael in the impugned trade dress or any deceptively similar variant. Dabur appealed in FAO(OS)(COMM) 171/2023, and the Division Bench set aside the order on 21.08.2023, directing that Dabur be given an opportunity to file a reply before adjudication. After affidavits and hearings, by order dated 29.02.2024, Emami confined arguments to passing off, reserving other claims for the suit. The matter was re-heard, culminating in the judgment dated 31.01.2026.

Reasoning and Decision of Court:The court examined the plaintiff’s established goodwill, prior use since 1989, extensive registrations, and overwhelming sales evidence, which demonstrated Navratna’s household status and secondary meaning in the cooling oil market. The red trade dress, bottle shape, and elements like “Thanda,” cooling imagery, and herbal motifs were deemed distinctive through long association with Emami. The court noted that trade dress protection extends to overall visual impression, not isolated features, and common elements (e.g., red color or herbs) become protectable when combined uniquely.

Dabur’s adoption of near-identical bottle design, red packaging, phonetic similarity in marks (“Thanda Tael” vs “Thanda Thanda Cool Cool”), and visual cues created a high likelihood of confusion among average consumers seeking cooling benefits. The court found mala fide intent in the deliberate copying to ride on Emami’s reputation. 

Prima facie case of passing off was established, with misrepresentation leading to likelihood of damage through diverted sales and reputational harm. Balance of convenience favored Emami, as irreparable injury would ensue without restraint, while Dabur could continue sales under non-similar packaging. The court granted interim injunction, restraining Dabur from using the impugned trade dress or any deceptively similar variant pending suit disposal.

Point of Law Settled in the Case: This judgment reinforces that in passing off actions, trade dress enjoys robust protection where long user has endowed it with distinctiveness and goodwill, even absent direct trademark infringement. Courts must assess overall get-up and consumer impression rather than dissecting individual elements. 

Phonetic, visual, and structural similarities in packaging, especially in FMCG products purchased on impulse, suffice to establish deception. The requirement of prior opportunity to defendant in interim matters is procedural fairness, but does not dilute the threshold for injunction where prima facie case, balance, and irreparable harm are satisfied.

Case Title: Emami Limited Vs. Dabur India Limited  

Date of Order: 31.01.2026  

Case Number: CS(COMM) 532/2023  

Neutral Citation: 2026:DHC:785  

Name of Court: High Court of Delhi  

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

Disclaimer:Readers are advised not to treat this as substitute for legal advice 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 for this Article**  

1. Trade Dress Passing Off: Delhi High Court Restrains Dabur in Navratna vs Cool King Dispute  

2. Cooling Oil Wars: Analytical Breakdown of Emami v. Dabur Interim Injunction on Trade Dress  

3. Protecting Goodwill in Ayurvedic Products: Key Takeaways from Emami Limited v. Dabur India Limited

4.Passing off through deceptively similar trade dress

**Suitable Tags**  

passing off, trade dress, trademark infringement, cooling hair oil, Navratna Oil, Dabur Cool King, ayurvedic products, interim injunction, Delhi High Court, intellectual property, goodwill, deceptive similarity, FMCG packaging, Emami v Dabur,

**Headnote**  

Delhi High Court granted injunction against Dabur’s Cool King Thanda Tael for passing off through deceptively similar red trade dress, bottle design, and marks imitating Emami’s Navratna Oil. The judgment underscores trade dress protection based on acquired distinctiveness in the therapeutic cooling oil market.

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The case concerns a passing off action by Emami Limited against Dabur India Limited regarding the trade dress of cooling hair oil products. Emami, launching Navratna Oil in 1989 with the slogan "Thanda Thanda Cool Cool" and dominant red trade dress featuring a crown device, claimed market leadership (66% share in 2022) and multiple trademark registrations for "Navratna", "Thanda Thanda Cool Cool" variants, and associated get-up. 

Emami alleged Dabur's "Cool King Thanda Tael" product, launched later, copied the overall trade dress including red bottle, crown-like element, cooling claims, and similar get-up to deceive consumers and ride on Emami's goodwill. 

Emami filed CS(COMM) 532/2023 seeking injunction among other reliefs. Single Judge initially granted ex parte interim injunction on 09.08.2023 restraining Dabur from using the impugned trade dress, but Division Bench set it aside on 21.08.2023 for lack of opportunity to Dabur to file reply, remanding for fresh consideration after hearing. 

Plaintiff confined arguments to passing off for interim relief. After detailed submissions, evidence of sales, advertisements, consumer surveys, and comparison of packaging, the Court found Emami established prima facie goodwill and reputation in distinctive red trade dress with crown and cooling indicia through long prior use since 1989. 

Dabur's product adopted similar overall impression creating likelihood of confusion and passing off, with balance of convenience favoring Emami due to potential irreparable harm. Interim injunction granted restraining Dabur from using or selling products in the impugned trade dress or deceptively similar get-up pending suit disposal, without prejudice to merits.

Law Point Settled:

In passing off claims involving trade dress of cooling oils, prior extensive use establishing goodwill in distinctive elements like color scheme, device (crown), and cooling slogans creates prima facie case for protection even without word mark infringement, where overall visual impression likely causes confusion.

 

Ex parte interim injunctions in IP matters may be set aside if defendant not given opportunity to file reply, emphasizing natural justice, but fresh hearing can restore restraint upon prima facie case, irreparable injury, and balance of convenience. 

Comparative elements in packaging (color, device, descriptive cooling phrases) can support passing off if intentional copying exploits plaintiff's reputation, tilting interim relief in plaintiff's favor despite common descriptive terms. 

Case Title: Emami Limited Vs. Dabur India Limited: 31.01.2026: CS(COMM) 532/2023:2026:DHC:785: 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

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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,

====

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.

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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