Provivi, Inc. Vs The Controller of Patents and Designs

Provivi, Inc. filed Indian National Phase patent application no. 201817018490 (derived from PCT/US2016/062852) for a micro-organism producing insect pheromones and related compounds. After FER issuance on 20.05.2022 and reply filed on 19.07.2022, a hearing notice dated 03.05.2023 was allegedly issued but not received by the petitioner or its agent; no one appeared at the scheduled hearing on 19.05.2023. 

The Assistant Controller passed a non-speaking refusal order on 30.05.2023 under Section 15 mainly on lack of inventive step citing D3–D5, without discussing petitioner’s reply or analyzing how prior art renders the invention obvious. Petitioner became aware of refusal only later in July 2023, repeatedly followed up, and was informed in October 2024 that e-mails were delivered per office records. 

The High Court set aside the impugned order finding violation of natural justice (non-receipt of hearing notice and no fresh opportunity given) and lack of reasoned/speaking order (failure to consider reply to FER, absence of proper inventive step analysis per three-element test), and remanded the matter for de novo consideration by the Controller after issuing fresh hearing notice to a confirmed e-mail/address.

Crisp bullet points of law:

- Passing a reasoned and speaking order is an integral part of the principle of audi alteram partem; the Controller must grant an opportunity of being heard and record reasons after considering the applicant’s reply/submissions on merits before refusing a patent application.  

  

While rejecting a patent application for lack of inventive step under Section 2(1)(ja), the Controller must mandatorily consider and discuss three elements: (i) the invention disclosed in the prior art, (ii) the invention disclosed in the application under consideration, and (iii) the manner in which the subject invention would be obvious to a person skilled in the art; a bare conclusion without such analysis is impermissible.  

  

- Even if office records show successful delivery of hearing notice, principles of natural justice require that the applicant be afforded at least one effective opportunity of hearing before refusal, particularly when non-appearance is disputed and no reasoned consideration of reply to FER is given.  

  

Case Title: Provivi, Inc. Vs The Controller of Patents and Designs:30.01.2026:W.P.(C)-IPD 43/2025: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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Coral Drugs Private Limited Vs The Assistant Controller of Patents

Coral Drugs Private Limited filed patent application no. 201717022856 for a process of preparing 16,17-acetals of pregnane derivatives. After pre-grant opposition by respondent no.2 and examination, the Assistant Controller rejected the application on 23.03.2023 solely on the ground of lack of inventive step under Section 2(1)(ja) read with Section 25(1)(b) of the Patents Act, 1970. 

Aggrieved, the appellant filed the present appeal. During hearing, the appellant agreed to amend claims by deleting claims 2 and 3 (which had broadened the scope of independent claim 1). The amended claims (Annexure-A) were placed on record, and both respondents (Patent Office and opponent) had no objection to their acceptance. 

The Court held that deletion of claims 2 & 3 merely narrows the scope without introducing new matter or contravening Section 59, relying on the principle laid down in Fresenius Medical Care case, and remanded the matter for de novo consideration by a different Controller on the amended claims.

Crisp bullet points of law settled in the case:

Deletion of dependent claims that broaden the scope of the independent claim, resulting in narrowing of the overall claim scope, does not contravene Section 59 of the Patents Act, 1970 and is permissible.  

  (Ref: Paras 8, 11, 12, 14)

Proposed auxiliary/amended claims that are in the nature of narrowing/disclaimer, do not broaden the scope of earlier filed claims, and whose subject matter is disclosed in the specification, comply with Sections 58(1) and 59 of the Patents Act, 1970.  (Ref: Paras 13–14; )

Case Details:Coral Drugs Private Limited Vs The Assistant Controller of Patents:29.01.2026: C.A.(COMM.IPD-PAT) 20/2023: : Hon’ble Mr. Justice Tushar Rao Gedela

**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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Neway Industries Pvt. Ltd. Vs. Mold-Tek Packaging Limited

Introduction: The Delhi High Court in a detailed Division Bench judgment delivered on 28 January 2026, addressed cross-appeals arising from an interim injunction order in a patent infringement suit concerning tamper-evident and leak-proof packaging systems for containers, particularly pails and lids. The Court upheld the injunction against Neway Industries Pvt. Ltd. for alleged infringement of Mold-Tek Packaging Limited's patent IN 401417 while setting aside the vacation of injunction for patent IN 298724, thereby restoring interim protection for both patents pending trial. This ruling emphasizes the high threshold for defendants to credibly challenge patent validity at the interim stage and reinforces the application of infringement tests like pith-and-marrow and doctrine of equivalents in prima facie assessments.

Factual Background: This decision from the Delhi High Court in cross-appeals under FAO(COMM) 235/2025 and 241/2025 clarifies the evidentiary burden on defendants seeking to defend patent infringement suits by raising invalidity grounds under Sections 64 and 107 of the Patents Act, 1970, at the interim injunction stage under Order XXXIX Rules 1 and 2 CPC. Mold-Tek Packaging Ltd., holder of two granted Indian patents for innovative tamper-evident closure systems used in plastic pails and containers for food and industrial storage, alleged infringement by Neway Industries Pvt. Ltd.'s competing products. 

The Commercial Court had partially confirmed and partially vacated the initial ad-interim injunction, prompting appeals from both sides. The Division Bench examined infringement mappings, prior art challenges, and equitable considerations, ultimately tilting the balance in favor of preserving status quo through injunctions for both patents while remanding certain validity aspects for deeper trial scrutiny. The judgment underscores that registered patents enjoy a presumption of validity, and defendants must discharge a substantial prima facie burden to rebut infringement or establish invalidity to defeat interim relief, particularly when claim charts and technical comparisons reveal substantial embodiment of essential inventive features.

The Suit Patent:  Mold-Tek Packaging Limited holds Indian Patent No. IN 401417 titled “Tamper-Evident Leak Proof Pail Closure System” and Indian Patent No. IN 298724 titled “A Tamper Proof Lid Having Spout for Containers and Process for Its Manufacture”, both granted and subsisting. These patents cover specialized plastic closure systems featuring tamper-evident bands, peel-off rings, gaskets, and integrated spouts designed to ensure leak-proof sealing, tamper detection, and ease of use in pails and containers for food, chemicals, and other goods. Mold-Tek alleged that Neway Industries Pvt. Ltd. was manufacturing, selling, and offering products that directly embodied the essential features of these patented inventions without license, thereby infringing Mold-Tek's exclusive rights under Section 48 of the Patents Act, 1970. Neway denied infringement, asserting that its products differed in construction and functionality, and further contended that both patents were invalid on grounds of lack of novelty, obviousness, and anticipation by prior art (including foreign patents and an Indian application IN 288127), availing defenses under Section 107.

Procedural Background: Mold-Tek instituted Commercial Suit CS(Comm) 01/2024 before the District Judge (Commercial Court)-01, Patiala House Courts, Delhi, seeking permanent injunction, damages, and other reliefs for patent infringement. Accompanying the suit was an interim injunction application under Order XXXIX Rules 1 and 2 CPC. On 8 January 2024, an ex-parte ad-interim injunction was granted restraining Neway from infringing both patents.

Neway applied under Order XXXIX Rule 4 CPC for vacation of the injunction. After hearing both sides, the learned Commercial Court, by impugned order dated 20 August 2025, confirmed the injunction qua IN 401417 (finding prima facie infringement and insufficient credible invalidity challenge) but vacated it qua IN 298724 (on grounds of arguable invalidity or non-infringement). Aggrieved, Neway appealed against the confirmation for IN 401417 (FAO(COMM) 235/2025), while Mold-Tek appealed against the vacation for IN 298724 (FAO(COMM) 241/2025), along with connected miscellaneous applications.

Reasoning and Decision of Court: For IN 401417, the Court upheld the Commercial Court's finding of prima facie infringement, noting that Neway's product embodied every essential integer of the claimed dual-lock tamper-evident closure system, including the anti-clockwise peel-off ring and gasket arrangement, satisfying the pith-and-marrow doctrine and doctrine of equivalents. On invalidity, the Bench held that Neway failed to discharge its burden under Sections 64/107 by not providing any claim-to-claim comparative analysis or mapping with cited prior art.

Mere general references to foreign patents without technical dissection were insufficient to create a credible challenge at the interim stage. The presumption of validity attached to granted patents prevailed, and the defendant's unsubstantiated assertions did not tilt the balance against injunction. For IN 298724, the Court found the Commercial Court's vacation erroneous, as Mold-Tek had made out a prima facie case of infringement through detailed claim charts showing substantial embodiment of the tamper-proof lid with integrated spout features. The Bench criticized the lower court's reliance on arguable prior art without requiring the defendant to prima facie substantiate invalidity through cogent evidence. Overall, setting aside the impugned order to the extent it vacated relief for IN 298724, the High Court restored interim injunctions for both patents pending suit disposal, remanded the invalidity issues for fresh detailed consideration at trial, and directed expeditious trial. The appeals were disposed accordingly, with costs.

Point of Law Settled in the Case: In patent infringement suits, while defendants may raise invalidity grounds under Section 64 as a defense per Section 107 at any stage including interim injunction proceedings, the burden lies heavily on the defendant to prima facie demonstrate credible invalidity through detailed comparative claim analysis, mapping, and technical evidence vis-à-vis cited prior art; mere general allegations, references to foreign patents without dissection, or lack of claim-to-claim charting are insufficient to rebut the presumption of validity of granted patents or defeat interim injunction where prima facie infringement is otherwise established under Section 48. At the interim stage, courts must apply infringement tests such as pith-and-marrow and doctrine of equivalents by comparing essential claim features with the defendant's product, and equitable relief under Order XXXIX Rules 1 and 2 CPC favors preserving status quo through injunction when balance of convenience and irreparable injury (dilution of patent monopoly, market share loss) tilt towards the patentee.

CaseTitle: Neway Industries Pvt. Ltd. Vs. Mold-Tek Packaging Limited 

Date of Order: 28 January 2026  

Case Number: FAO(COMM) 235/2025 

Neutral Citation: 2026:DHC:702-DB   

Name of Court: High Court of Delhi  

Name of Hon'ble Judges: Hon'ble Justice Shri C. Hari Shankar & Hon'ble Justice Shri 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 for this Article**  

- Delhi High Court Restores Interim Injunctions in Mold-Tek v. Neway Patent Dispute: Burden on Defendant to Prove Invalidity at Prima Facie Stage  

- Tamper-Evident Packaging Patents: Delhi HC Upholds Injunction for IN 401417, Revives for IN 298724 in Neway Industries Appeal  

- Patent Interim Relief: Delhi High Court Clarifies High Threshold for Invalidity Challenge in Infringement Suits  

- Mold-Tek Prevails in Cross-Appeals – Delhi HC Reinforces Presumption of Patent Validity at Interim Stage  

**Suggested Tags**  

PatentInfringement, Interim Injunction, DelhiHighCourt , TamperEvidentClosure, MoldTek,  NewayIndustries, PatentsAct1970, Section48, Section107, Section64, PithAndMarrow,  DoctrineOfEquivalents, IPR , IntellectualProperty, CommercialCourt , IPLitigation,   

**Headnote**  

Delhi High Court Division Bench upholds interim injunction against Neway Industries for infringement of Mold-Tek's patent IN 401417 (Tamper-Evident Leak Proof Pail Closure System) and sets aside vacation of injunction for IN 298724 (Tamper Proof Lid with Spout), holding prima facie infringement established under Section 48 Patents Act via pith-and-marrow/equivalents tests; defendant failed to discharge burden under Sections 64/107 to credibly challenge validity through detailed prior art mapping at interim stage, preserving patentee's monopoly pending trial with invalidity issues remanded for fresh consideration.

====

Mold-Tek Packaging Ltd holds Indian patents IN 401417 (tamper-evident leak-proof pail closure system) and IN 298724 (tamper-proof lid with spout for containers). It filed a commercial suit (CS Comm 01/2024) alleging that Neway Industries Pvt Ltd was infringing both patents by manufacturing and selling similar products. An ex-parte ad-interim injunction was granted on 08.01.2024. Neway applied under Order XXXIX Rule 4 for vacation. The Commercial Court, vide impugned order dated 20.08.2025, confirmed the injunction qua IN 401417 finding prima facie infringement and no credible invalidity challenge, but vacated the injunction qua IN 298724 holding the patent prima facie generic, lacking novelty and inventive step due to prior patent IN 207276 and market products. 

Both parties filed FAO appeals. The Division Bench upheld the injunction in respect of IN 401417 (dismissing Neway’s appeal FAO 235/2025) as Neway failed to provide product-to-claim mapping or credible prior art comparison (especially vis-à-vis IN 288127) and failed to discharge onus on invalidity. For IN 298724, the Bench upheld the finding of prima facie infringement but set aside the invalidity findings for lack of proper claim comparison with cited prior art, remanded the validity issue afresh to the Commercial Court, revived the original ex-parte injunction of 08.01.2024 till fresh decision, and directed both parties to appear on 17.02.2026 for expeditious hearing.

Crisp bullet points of law settled:

In patent infringement proceedings, when invalidity is raised as a defence under Section 107 read with Section 64 of the Patents Act, 1970, the onus to make out a credible prima facie challenge to validity lies on the defendant once the plaintiff establishes prima facie infringement. (Para 19)

Product-to-claim mapping is an indispensable element in a patent infringement suit (except where impossible); absence of such mapping seriously undermines the case that the defendant’s product is “that product” covered by the granted claim. (Para 13.9–13.10, relying on Zydus Lifesciences Ltd v E.R. Squibb & Sons LLC, MANU/DE/0186/2026)

Arguments not pressed or not captured in written submissions before the trial court (even if pleaded) are ordinarily not permitted to be raised for the first time in appeal. (Para 13.5)

Finding of lack of novelty / obviousness / generic nature cannot negate the existence of infringement; infringement and validity are separate inquiries and must not be conflated. (Para 18.2–18.3)

When an appellate court sets aside an order that had vacated an earlier ex-parte ad-interim injunction, the earlier ad-interim injunction revives ipso facto; the principle of merger does not prevent such revival. (Para 21–24)

Case Title:Neway Industries Pvt. Ltd. Vs. Mold-Tek Packaging Limited :28.01.2026:FAO (COMM) 235/2025: 2026:DHC:702-DB: Hon’ble Mr. Justice C. Hari Shankar & 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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Trackon Couriers Private Limited Vs B. N. Srinivas

Introduction:**  

This case exemplifies the robust protection afforded to registered composite/label trademarks under the Trade Marks Act, 1999, particularly when a dominant word element forms the essential and leading feature of the mark. The Bombay High Court, through Justice Arif S. Doctor, addressed a classic scenario of alleged infringement and passing off arising from a former business associate's attempt to independently adopt and register a nearly identical mark for identical services. The decision underscores that registration of a composite mark confers statutory exclusivity over its prominent verbal components, especially when such components have acquired distinctiveness and goodwill through long-standing use. It also highlights how courts scrutinize claims of prior or independent use, particularly when contradicted by documentary evidence of permissive use and subsequent undertakings to cease. The ruling reinforces principles of honest adoption, balance of convenience, and irreparable injury in interim relief applications in commercial IP disputes.

**Factual Background**  

Trackon Couriers Private Limited, the plaintiff, has been operating in domestic courier services, international shipping, e-commerce logistics, and supply chain management since 2002. It coined and adopted the term "TRACKON" as a key element of its branding. The plaintiff secured valid and subsisting registrations for composite label marks in Class 39, including "Trackon Couriers" (applied 2004, user claim 2002), "Trackon Couriers Pvt Limited" (applied 2018), and "SURE SAFE SWIFT" (applied 2021), all featuring "TRACKON" prominently alongside a stylized "T" in Devanagari script. These marks enjoyed extensive use, substantial advertising investments, high turnover (exceeding INR 404 crores in 2023-2024), and presence across media, websites, and social platforms, establishing significant goodwill and reputation.  

In 2016, the plaintiff appointed the defendant as a business associate to promote its services in Andhra Pradesh and Telangana, authorizing use of "M/S. TRACKON COURIERS & CARGO SERVICES" under specific terms via a letter dated May 5, 2016. The defendant and his wife formed a partnership under that name and used "TRACKON" permissively from 2016 to 2023. In October 2023, the plaintiff demanded cessation of "TRACKON" use and name change. Correspondence from October 28 to November 6, 2023, including emails and meeting minutes, showed the defendant's agreement to comply.  

However, in September 2024, the plaintiff discovered the defendant's new partnership "TRACK ON EXPRESS LOGISTICS" and trademark application for "TRACK-ON EXPRESS" on a proposed-to-be-used basis. A cease-and-desist notice followed on September 16, 2024, and termination of association on September 19, 2024. The defendant claimed prior independent use since 1998 via an alleged sole proprietorship later converted to partnership, but provided no supporting evidence.

**Procedural Background**  

The plaintiff instituted a commercial IP suit before the Bombay High Court, seeking permanent injunction against infringement and passing off, along with other reliefs. Simultaneously, it filed the present interim application under Order XXXIX Rules 1 and 2 CPC for temporary injunction pending suit disposal. The matter was heard by Justice Arif S. Doctor, reserved on December 19, 2025, and pronounced on January 22, 2026. The defendant opposed on grounds including lack of territorial jurisdiction, prior use, and equitable defenses like acquiescence, while alleging suppression of documents by the plaintiff.

**Reasoning and Decision of Court**  

The Court rejected the defendant's jurisdictional objection, finding the suit maintainable under Section 134 of the Trade Marks Act, 1999, as cause of action arose partly within its jurisdiction through the plaintiff's widespread operations and the defendant's activities impacting the plaintiff's reputation.  

On merits, the Court held that "TRACKON" constituted the prominent, essential, and leading feature of the plaintiff's registered composite/label marks. Unauthorized use of this word, even in variations like "TRACK-ON EXPRESS", amounted to infringement under Section 29(9) of the Act, as spoken or visual representation of such dominant element infringes the registered mark. The Court relied on precedents affirming protection for essential features of composite marks, even absent separate word mark registration.  

The defendant's claim of prior use since 1998 was disbelieved due to lack of evidence; the 2024 trademark application on proposed-to-be-used basis contradicted prior use assertions. The 2016 letter evidenced only permissive use as an associate "on behalf of" the plaintiff, not independent rights. Email correspondence unequivocally showed the defendant's agreement to cease use and change name, rendering subsequent adoption dishonest and lacking bona fides. No acquiescence or suppression was established, as the plaintiff acted promptly upon discovering resumed use.  

The Court found prima facie infringement and passing off, given identical services, deceptive similarity, likelihood of confusion, and the plaintiff's established goodwill. Balance of convenience favored the plaintiff, with irreparable injury from dilution of reputation if relief denied, while the defendant faced no legitimate prejudice having agreed to discontinue. Interim injunction was granted restraining the defendant from using "TRACK-ON", "TRACKON", or deceptively similar marks/names, with costs awarded. The order was stayed for four weeks to enable appeal.

**Point of Law Settled in the Case**  

A word that forms a prominent, essential, and leading feature of a registered composite or label mark attracts statutory protection under Section 29(9) of the Trade Marks Act, 1999, such that its unauthorized spoken or visual use constitutes infringement, particularly when the word has acquired goodwill and public association with the registered proprietor, even without separate word mark registration. Permissive or licensed use as a business associate does not confer independent proprietary rights, and subsequent adoption after undertaking to cease use is dishonest, disentitling equitable defenses in interim relief.

**Case Detail**  

- **Title**: Trackon Couriers Private Limited Vs B. N. Srinivas  

- **Date of Order**: 22nd January 2026  

- **Case Number**: Interim Application (L) No. 35022 of 2024 in Commercial IP Suit No. 11 of 2025  

- **Neutral Citation**: 2026:BHC:OS:2082  

- **Name of Court**: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)  

- **Name of Hon'ble Judge**: Justice Arif S. Doctor  

**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 for this Article**  

- Bombay High Court Reinforces Protection for Dominant Word Elements in Composite Trademarks: Trackon Couriers Case Analysis  

- TRACKON Triumph: How Bombay HC Granted Interim Injunction Against Deceptively Similar "TRACK-ON" Mark  

- Dominant Feature Doctrine Upheld: Interim Relief in Trackon Couriers v. B.N. Srinivas Trademark Dispute  

- From Permissive Use to Infringement: Bombay High Court's Key Ruling on TRACKON Trademark  

**Suggested Tags**  

#TrademarkInfringement #CompositeMarks #BombayHighCourt #TRACKON #InterimInjunction #PassingOff #Section29TradeMarksAct #IntellectualProperty #TradeMarkLaw #ArifSDoctor #CourierServices #PriorUse #GoodwillAndReputation #IPLitigation #CommercialDivision  

**Headnote**  

Bombay High Court grants interim injunction restraining defendant from using "TRACK-ON EXPRESS" or similar marks, holding that "TRACKON" as prominent essential feature of plaintiff's registered composite marks is infringed under Section 29(9) of Trade Marks Act, 1999; defendant's claim of prior use disbelieved, adoption found dishonest post-undertaking to cease, establishing prima facie case of infringement and passing off with balance of convenience favoring plaintiff.

=====

**Very Brief and Compact Summary**  

Trackon Couriers Private Limited, using the coined mark "TRACKON" since 2002 with registered composite label marks in Class 39 and substantial goodwill from extensive use, high turnover, and advertising, appointed defendant B.N. Srinivas as business associate in 2016 for Andhra Pradesh and Telangana, permitting use of "TRACKON COURIERS & CARGO SERVICES". 

The defendant used the name permissively until 2023, when plaintiff demanded cessation and name change; correspondence from October-November 2023 showed defendant's agreement to comply. In 2024, plaintiff discovered defendant's new firm "TRACK ON EXPRESS LOGISTICS" and trademark application for "TRACK-ON EXPRESS" on proposed-to-be-used basis, leading to cease-and-desist and termination notices. 

Plaintiff filed commercial IP suit and interim application for injunction against infringement and passing off. The Bombay High Court rejected defendant's jurisdictional objection and prior-use claim (unsupported and contradicted by proposed-use application and lack of evidence), found "TRACKON" the prominent essential feature of plaintiff's registered composite marks entitled to protection under Section 29(9), held defendant's adoption dishonest post-undertaking to cease, established prima facie infringement and passing off due to identical services and deceptive similarity, and granted interim injunction restraining use of "TRACK-ON", "TRACKON" or confusingly similar marks/names pending suit, with costs, but stayed for four weeks.

Crisp Points of Law Settled:

  

- Registration of a composite/label mark confers statutory exclusivity over its prominent, essential and leading word feature even without separate word-mark registration; unauthorized use of such dominant word (spoken or visual) constitutes infringement under Section 29(9) of the Trade Marks Act, 1999, especially when the word has acquired goodwill and public association with the proprietor. (Paras 12–14)  

Permissive/licensed use as business associate does not create independent proprietary rights in the mark; subsequent adoption after express undertaking to cease use and change name is dishonest and lacking bona fides, disentitling equitable defences in interim relief. (Paras 18–25)  

Case Title: Trackon Couriers Private Limited Vs B. N. Srinivas:22.01.2026:Commercial IP Suit No. 11 of 2025:2026:BHC:OS:2082: Hon'ble Justice Arif S. Doctor  

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  

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjuto

Narayan Tea Company Vs Raj Laxmi Tea Company

The Rajasthan High Court dismissed the appeal filed by M/s Narayan Tea Company against the temporary injunction granted by the Commercial Court, Bikaner, restraining it from using the trademark "SHREE RAJLAXMI" or deceptively similar packaging for tea, pending suit disposal. The respondent, M/s Raj Laxmi Tea Company, a prior registered proprietor (since 2008) and user of "RAJLAXMI" for tea with distinctive packaging, sued for infringement alleging deceptive similarity in mark and label causing confusion. 

The appellant denied infringement, claimed distinct packaging, no confusion, familial ties in tea business, and lack of evidence of respondent's goodwill. The trial court granted injunction, finding prima facie infringement. On appeal, the appellant conceded respondent's prior use. The Division Bench upheld the injunction, holding that "RAJLAXMI" is the dominant feature of both marks, the prefix "SHREE" (a common honorific/laudatory term) does not sufficiently distinguish them visually, phonetically or conceptually, creating likelihood of confusion among average consumers for identical FMCG product tea, and allowing use would permit trading on respondent's goodwill; public interest in preventing deception also weighed in favour of injunction.

Law settled in the case:

In comparing trademarks for infringement, courts must assess overall commercial impression, essential/dominant features, and likelihood of confusion/deception in the mind of an average consumer with imperfect recollection. (Para 8)

Addition of a common honorific/laudatory prefix like "SHREE" to a dominant word like "RAJLAXMI" does not materially alter visual, phonetic or conceptual identity or serve to distinguish source, often perceived as variant/extension/association rather than independent origin. (Para 9)

For identical goods like tea (FMCG purchased frequently with ordinary care), even minor similarity suffices to cause confusion as to source/affiliation; subsequent adoption of substantially identical essential features is likely to deceive and trade on prior user's goodwill. (Para 10-11)

Public interest is paramount in trademark infringement adjudication, as confusion affects consumers and general public beyond disputing parties. (Para 12)

Case Title:Narayan Tea Company Vs Raj Laxmi Tea Company :20/01/2026:D.B. Civil Misc. Appeal No. 3149/2024 : [2026:RJ-JD-3302-DB]: Hon'ble Mr. Justice Arun Monga and Hon'ble Mr. Justice Yogendra Kumar Purohit  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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.

=====

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

=====

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.

=====

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

=====

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.

====

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

======

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.

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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

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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.

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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

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