UltraTech Cement Limited Vs Shiv Cement Co.

Case Title: UltraTech Cement Limited  Vs Shiv Cement Co.:28.04.2026:Commercial IP Suit No. 126 of 2016:2026:BHC-OS:11103:Arif S Doctor, H.J.

The Bombay High Court decreed a trademark infringement and passing off suit in favour of UltraTech Cement Limited, granting permanent injunction and imposing substantial costs against the Defendant for dishonest adoption of deceptively similar marks.

The Plaintiffs, proprietors of the well-known “UltraTech” trademarks in respect of cement and building materials, established extensive use since 2003, along with significant goodwill, reputation, and statutory protection, including recognition of UltraTech as a well-known trademark in India.

The dispute arose from the Defendant’s use of marks such as “UltraPlus”, “Ultra HiTouch”, and “Ultra Power” for identical goods, i.e., cement. The Court found that the impugned marks incorporated the dominant and essential feature “ULTRA”, which is the key distinguishing element of the Plaintiffs’ marks, and were visually, phonetically, and structurally deceptively similar.

Notably, the Defendant failed to appear or contest the proceedings, leading to the Plaintiffs’ evidence remaining unchallenged. The Court also noted seizure of infringing cement bags and observed that the Defendant’s conduct reflected mala fide intent to ride upon the Plaintiffs’ goodwill and mislead consumers, particularly in a sector impacting public safety.

Applying settled principles of deceptive similarity and trademark infringement, the Court held that use of the impugned marks would inevitably cause confusion and amount to infringement and passing off. The Court further emphasized that minor variations or additions do not dilute infringement where the essential feature of the mark is appropriated.

While declining full claimed damages due to lack of precise proof, the Court awarded ₹50 lakhs as costs along with reimbursement of litigation expenses, highlighting the Defendant’s dishonest conduct and failure to participate in proceedings.

Accordingly, a decree of permanent injunction was granted restraining the Defendant from using the impugned marks or any deceptively similar variations, along with directions for delivery and destruction of infringing materials.

Disclaimer:Do not treat this as a substitute for legal advice as it may contain subjective errors.

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

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**UltraTech Cement’s Victory Against “Ultra” Mark Infringement: Bombay High Court Decrees Suit in Favour of Well-Known Trademark Owner**

### Introduction

UltraTech Cement Limited, one of India’s leading cement manufacturers, successfully protected its famous “UltraTech” brand against a smaller player using similar sounding and looking marks like “UltraPlus Cement”, “Ultra HiTouch Cement”, and “UltraPower”. In a detailed ex-parte judgment, the Bombay High Court examined trademark infringement and passing off claims. The court found that the defendant’s marks were deceptively similar to the plaintiffs’ registered and well-known trademarks. This case highlights how courts safeguard established brands from copycats in the competitive building materials market, especially when the defendant remains absent and the adoption appears dishonest.

### Factual Background

UltraTech Cement Limited and its group company (collectively referred to as the plaintiffs) have built a strong reputation in the cement industry since the early 2000s. They own multiple registered trademarks featuring “UltraTech” and the prominent word “Ultra”. These marks appear on cement bags, packaging, and promotional materials. Over the years, through continuous use, heavy advertising, and massive sales, the “UltraTech” brand has become strongly associated with quality cement in the minds of consumers and traders. The plaintiffs even secured recognition of “UltraTech” as a well-known trademark in India.

The defendant, M/s. Shiv Cement Co., started using marks such as “Ultraplus Cement”, “Ultra HiTouch Cement bemisal Majbuti”, and “UltraPower” on its cement bags. These marks prominently featured the word “Ultra” combined with other terms, and the overall look, colour scheme, and get-up closely resembled the plaintiffs’ packaging. The plaintiffs discovered these products in the market around 2012 and later in 2016. They viewed the defendant’s actions as an attempt to ride on their hard-earned goodwill by creating confusion among buyers.

### Procedural Background

The plaintiffs filed a commercial intellectual property suit in the Bombay High Court seeking a permanent injunction against the defendant for trademark infringement and passing off. They also prayed for damages and delivery up of infringing materials for destruction.

Early in the proceedings, the court granted ex-parte ad-interim relief and appointed a Court Receiver. The Receiver visited the defendant’s premises and seized over a thousand cement bags bearing the impugned marks. Despite proper service of summons, the defendant never appeared in court, filed no written statement, and led no evidence. The suit proceeded as undefended. The plaintiffs filed their evidence through an affidavit of their senior manager, supported by trademark registrations, sales records, promotional materials, and court orders from earlier cases recognizing their rights. The matter was heard and reserved, leading to the final judgment.

### Dispute

The core dispute centered on whether the defendant’s use of marks containing “Ultra” (such as UltraPlus, Ultra HiTouch, and UltraPower) for cement amounted to infringement of the plaintiffs’ registered “UltraTech” trademarks and also constituted passing off. The plaintiffs argued that “Ultra” forms the essential and distinctive feature of their marks. They claimed the defendant’s marks were visually, structurally, and phonetically deceptively similar, likely to confuse ordinary consumers. They further alleged the defendant acted dishonestly to exploit their reputation, especially since the cement sold under the impugned marks was reportedly of substandard quality, posing risks in construction projects.

The defendant offered no defense, leaving the plaintiffs’ evidence unchallenged.

### Reasoning

The court carefully analyzed the evidence and legal principles. It noted the plaintiffs’ long and extensive use of the “UltraTech” marks since 2003, backed by sales figures, advertisements, and annual reports. This use had created immense goodwill, and the mark had acquired secondary meaning, exclusively pointing to the plaintiffs. The court also took note of “UltraTech” being listed as a well-known trademark.

On similarity, the judge applied the test of overall impression rather than side-by-side microscopic comparison. Marks are remembered by their salient features and general idea, especially by consumers of average intelligence with imperfect recollection. Here, the prominent “Ultra” element, combined with similar get-up, colour scheme, and use on identical goods (cement), created a strong likelihood of confusion and association. Minor additions like “Plus” or “HiTouch” did not sufficiently distinguish the marks.

The court rejected any narrow interpretation that would limit protection only to the full composite mark. It relied on earlier Bombay High Court decisions to hold that when a part of a registered mark (like “Ultra”) is distinctive, the proprietor can still claim protection against similar use. The defendant’s complete absence and failure to justify its adoption pointed to bad faith and mala fide intention to trade upon the plaintiffs’ reputation. Substandard quality of the defendant’s product further heightened public interest concerns.

### Judgements with Complete Citation and Their Context Discussed

The court drew significant support from its own earlier rulings involving the plaintiffs’ “UltraTech” marks and general principles of deceptive similarity.

It referred to *Hiralal Prabhudas v. Ganesh Trading Company & Ors* (AIR 1984 Bom 218). In that case, the Bombay High Court laid down important tests for deciding deceptive similarity: focus on the main idea or salient features of the marks; consider how marks are remembered by general impressions rather than photographic memory; overall similarity is key; view from the perspective of an average buyer with imperfect recollection; examine overall structure, phonetic similarity, and idea conveyed; and compare marks as wholes without microscopic differences. The court in the present case found these principles directly applicable, as the defendant’s marks shared the essential “Ultra” feature and created the same overall impression.

Another key precedent was *Ultra Tech Cement Ltd. v. Alaknanda Cement (P) Ltd.* (2011 SCC OnLine Bom 783), later confirmed by the Division Bench in *Alaknanda Cement (P) Ltd. v. Ultratech Cement Ltd.* (2011 SCC OnLine Bom 1487). In those proceedings, the court protected “UltraTech” even when challenges were raised under Section 17 of the Trade Marks Act regarding composite marks. The Division Bench clarified that registration of a composite mark does not prevent protection of its distinctive parts if those parts are not common to the trade and have acquired distinctiveness. Section 17 does not bar exclusivity where the element is distinctive and the registration itself shows no disclaimer. The present judgment found these observations fully applicable, reinforcing that “Ultra” as a prominent and distinctive feature deserved protection.

The court also noted prior orders where various courts had restrained third parties from using similar infringing marks, further strengthening the plaintiffs’ reputation and well-known status.

### Final Decision of Court

The Bombay High Court decreed the suit in favour of the plaintiffs. It granted a perpetual injunction restraining the defendant, its agents, and anyone claiming under it from using the impugned marks or any deceptively similar marks containing “Ultra” (alone or in combination) in relation to cement or building materials. The defendant was also ordered to deliver up all infringing bags, packaging, and materials for destruction.

On monetary relief, the court awarded costs of Rs. 50 lakhs to the plaintiffs, considering the defendant’s dishonest conduct, absence from proceedings, and the commercial nature of the suit. It further directed payment of Rs. 16,48,006 towards the plaintiffs’ actual expenses incurred in investigation and litigation. In case of non-payment within eight weeks, interest at 8% per annum would apply. The Court Receiver was discharged upon the plaintiffs’ undertaking to bear its costs.

### Point of Law Settled in the Case

This judgment reinforces that in trademark disputes, courts will protect the essential and distinctive features of a registered mark, even within a composite mark, particularly when that feature has acquired strong distinctiveness and secondary meaning. It underscores the importance of overall similarity test, consumer perspective with imperfect recollection, and the role of get-up and trade dress in assessing confusion. Dishonest adoption, especially by a non-appearing defendant in a well-known mark case, invites not only injunction but also substantial costs as a deterrent. The decision affirms that substandard goods sold under infringing marks raise serious public interest issues in sectors like construction. It also highlights the evidentiary value of well-known trademark status and unchallenged plaintiff evidence in ex-parte proceedings.

**Case Detail**  

**Title:** UltraTech Cement Limited & Anr. Versus M/s. Shiv Cement Co.  

**Date of Order:** 28th April 2026  

**Case Number:** Commercial IP Suit No. 126 of 2016  

**Neutral Citation:** 2026:BHC-OS:11103 (as appearing on the judgment)  

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

**Name of Hon'ble Judge:** Arif S. Doctor, J.

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

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

**Suggested Titles for Legal Journal:** UltraTech Cement Trademark Infringement Suit Decreed by Bombay High Court, Protection of Prominent Features in Composite Marks, Well-Known Trademark Safeguarded Against Deceptive Similarity in Cement Industry

**Suitable Tags:** trademark infringement, passing off, deceptive similarity, well known trademark, Bombay High Court, UltraTech Cement, ex parte decree, commercial courts act, intellectual property, cement industry dispute

**Headnote of Article:** Bombay High Court grants permanent injunction and costs in favour of UltraTech Cement against defendant’s use of deceptively similar “Ultra” prefixed marks for cement, reiterating tests for deceptive similarity and protection of distinctive elements of registered well-known trademarks in undefended proceedings.

Multani Pharmaceuticals Limited Vs Mayuri Bhupal Bhamare

Case Title: Multani Pharmaceuticals Limited Vs Mayuri Bhupal Bhamare:28.04.2026:CS(COMM) 934/2024:2026:DHC:3575:Hon'ble Judge Jyoti Singh

The Delhi High Court decreed a trademark infringement and passing off suit in favour of the Plaintiff, Multani Pharmaceuticals Limited, while also declaring its mark “MULTANI” as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

The Plaintiff, a longstanding Ayurvedic pharmaceutical company with origins dating back to 1905, established extensive use, goodwill, and reputation in the mark MULTANI, supported by decades of commercial use, multiple trademark registrations across classes and jurisdictions, substantial sales turnover, and wide promotional activities.

The dispute arose from the Defendant’s use and application for a deceptively similar mark in relation to identical products such as skin care, hair care, and cosmetic goods. The Court had earlier granted an ex parte ad interim injunction restraining such use. Subsequently, the parties entered into a settlement agreement, which was accepted by the Court and formed part of the decree.

Despite settlement of infringement claims, the Court proceeded to adjudicate the Plaintiff’s prayer for declaration of MULTANI as a well-known trademark. Applying the statutory factors under Sections 11(6) and 11(7) of the Act, the Court considered the mark’s long duration of use (over 80 years), extensive geographical presence, significant promotional efforts, widespread recognition across consumer segments, and consistent enforcement against infringers.

The Court noted that the mark enjoys substantial recognition in India and internationally, is widely available across pharmacies and e-commerce platforms, and has been endorsed through extensive advertising, including celebrity endorsements. It further observed that the Plaintiff’s WHO-GMP certification and large-scale operations reinforced the credibility and distinctiveness of the mark.

Accordingly, the Court held that MULTANI satisfies the criteria for a well-known trademark in relation to Ayurvedic pharmaceutical products and granted a decree declaring it as such, thereby affording it enhanced protection under trademark law.

Disclaimer:Do not treat this as a substitute for legal advice as it may contain subjective errors.

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

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Legrand France Vs. Bhawani Singh

Case Title: Legrand France Vs. Bhawani Singh:13.04.2026:C.O. (COMM.IPD-TM) 197/2024:2026:DHC:3519:Hon'ble Judge Jyoti Singh

The Delhi High Court, in a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, ordered cancellation of the trademark “MLOGRAND” (Reg. No. 4182910, Class 09), holding it liable for removal on grounds of non-use and deceptive similarity with the well-known mark “LEGRAND”.

The Petitioners, part of the Legrand Group, established longstanding global and Indian use, registration, and reputation in the mark LEGRAND for electrical and allied goods. The Court noted that the impugned mark MLOGRAND was registered on a “proposed to be used” basis and that the Respondent failed to demonstrate any bona fide commercial use since registration in 2019. In the absence of any rebuttal, the plea of non-use was deemed admitted.

On merits, the Court held that MLOGRAND is phonetically, structurally, and visually similar to LEGRAND. The addition of the prefix “M” and substitution of the vowel “E” with “O” were found insufficient to distinguish the marks. The Court emphasized that the dominant element “GRAND” was wholly appropriated, leading to a likelihood of confusion, especially considering identical goods, trade channels, and consumer base.

The Respondent’s conduct, including filing a similar device mark (later abandoned upon opposition), was also viewed as indicative of mala fide intent and trademark trafficking. Accordingly, the Court allowed the petition and directed the Registrar of Trade Marks to remove the impugned mark from the Register within two months, reinforcing the principle of maintaining the purity of the Register.

Disclaimer:Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By:Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

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Himalaya Global Holdings Ltd. Vs. AB Allcare Herbal

Case Title: Himalaya Global Holdings Ltd. & Anr. Vs. MS AB Allcare Herbal & Ors.:07.04.2026:CS(COMM) 675/2024:2026:DHC:3078: Hon'ble Judge Jyoti Singh

This decision concerns a trademark infringement and passing off action instituted by the Plaintiffs, proprietors of the well-known trademark Liv.52 and the HIMALAYA trade dress, against the Defendants’ use of the impugned mark Liv-40 and a deceptively similar packaging. The Plaintiffs contended that Liv.52 is a registered trademark in Class 05 with substantial goodwill and reputation, supported by extensive sales, advertising, and prior judicial recognition. It was argued that the Defendants’ mark Liv-40, used for identical medicinal products relating to liver care, is deceptively similar and likely to cause confusion, particularly in light of the stricter standard applicable to medicinal products as laid down in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.. The Plaintiffs also alleged imitation of their distinctive trade dress, including the colour combination of green, orange, and white, along with the leaf device forming part of the HIMALAYA branding. Procedurally, the Court noted that Defendants No. 1–4 failed to file their written statement within the prescribed period and were proceeded ex parte. Defendant No. 5 consented to a decree of injunction, subject to waiver of costs.

On merits, the Court held that the impugned mark Liv-40 is deceptively similar to the Plaintiffs’ registered trademark Liv.52, particularly as both marks are used for identical pharmaceutical goods. The likelihood of confusion was found to be high, given the similarity in marks, nature of goods, and common trade channels. The Court also upheld the Plaintiffs’ claim of passing off, observing that the Defendants had imitated the Plaintiffs’ trade dress to encash upon their established goodwill.

Accordingly, the Court decreed the suit in favour of the Plaintiffs, granting a permanent injunction restraining the Defendants from using the impugned mark and trade dress. The Plaintiffs, however, gave up their claims for damages and rendition of accounts, and costs were not pressed against certain Defendants.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

Goldmedal Electricals Pvt. Ltd. Vs. Vikram Kumar Jain

Case Note: Goldmedal Electricals Pvt. Ltd. Vs. Vikram Kumar Jain & Ors., FAO (COMM) 141/2025, Delhi High Court (Order dated 23 May 2025)

The present appeal before the Delhi High Court arose from the dismissal of an application for interim injunction by the Commercial Court, Saket, on the ground of lack of territorial jurisdiction. The appellant, M/s Goldmedal Electricals Pvt. Ltd., instituted a commercial suit alleging infringement of its registered trademarks “GOLDMEDAL” and associated device marks, along with passing off by the respondents, who were engaged in the sale of electrical goods bearing identical/deceptively similar marks.

The Commercial Court had declined interim relief under Order XXXIX Rules 1 and 2 CPC, primarily holding that the plaintiff failed to establish territorial jurisdiction, observing that listings on platforms such as IndiaMART and JustDial were merely advertisements and that no conclusive evidence of sale within its jurisdiction had been produced.

Setting aside this approach, the High Court held that the findings of the Commercial Court were both factually and legally unsustainable. The Court emphasized the evolved jurisprudence on territorial jurisdiction in the context of e-commerce, relying on precedents such as World Wrestling Entertainment Inc. v. Reshma Collections and Tata Sons Pvt. Ltd. v. Hakunamatata Tata Founders. It reiterated that the availability of interactive websites enabling commercial transactions within a jurisdiction is sufficient to confer territorial jurisdiction, even in the absence of proof of completed sales. The Court clarified that modern commercial realities necessitate recognition of “virtual presence” as equivalent to physical business operations.

On merits, the Court found a strong prima facie case of trademark infringement and passing off, noting that the respondents had blatantly copied the appellant’s registered marks for identical goods. The Court further underscored the heightened public interest involved, as counterfeit electrical products could pose risks to consumer safety.

Relying on settled principles laid down in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia and Laxmikant V. Patel v. Chetanbhai Shah, the Court held that in clear cases of infringement, immediate injunctive relief is warranted. Consequently, an ad interim injunction was granted restraining the respondents from using the impugned marks in any manner, whether in physical or online marketplaces. Directions were also issued for takedown of infringing listings from e-commerce platforms.

Additionally, the Court appointed Local Commissioners to visit multiple premises of the respondents in Vijayawada for the purpose of search, seizure, and inventory of infringing goods, along with ancillary materials used for counterfeiting. Detailed procedural safeguards were prescribed for execution of the commission.

The judgment reinforces the expanded scope of territorial jurisdiction in the digital era and reiterates the strict approach of courts in cases of blatant trademark counterfeiting, particularly where public safety concerns are implicated.

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Disclaimer: Do not treat this as a substitute for legal advice as it may contain subjective errors.

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

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Expanding Territorial Jurisdiction in the Age of E-Commerce:

Introduction:

The Delhi High Court was called upon to examine the correctness of a Commercial Court’s refusal to grant interim relief on the ground of lack of territorial jurisdiction. The case assumes importance not merely for its treatment of trademark infringement and passing off, but more crucially for its recognition of how online marketplaces and digital interfaces reshape traditional concepts of jurisdiction. The Delhi High Court held that accessibility and interactivity of e-commerce platforms are sufficient to confer territorial jurisdiction in trademark infringement cases, even in the absence of proof of actual sales within the jurisdiction. The Court further reaffirmed that in cases of clear counterfeiting and passing off, immediate interim injunction and appointment of Local Commissioners are warranted to prevent consumer deception and protect public interest.

Factual Background

The appellant, a well-known manufacturer and seller of electrical goods, claimed rights in the registered trademark “GOLDMEDAL” along with several associated label marks. The grievance of the appellant was that the respondents were engaged in manufacturing and selling electrical products bearing marks identical or deceptively similar to the appellant’s trademarks. These goods were alleged to be counterfeit in nature and were being circulated not only through physical markets but also across various online platforms. The appellant asserted that such use amounted to infringement of its statutory trademark rights and also constituted passing off, as consumers were likely to be misled into believing that the respondents’ goods originated from the appellant.

An important aspect of the appellant’s case was that the infringing products were available on widely accessible online platforms. It was contended that these platforms enabled interaction and purchase by consumers across different regions, including within the territorial jurisdiction of the Delhi courts. The appellant also expressed concern about the potential harm caused by counterfeit electrical goods, which could pose safety risks to unsuspecting consumers.

Procedural Background

The appellant instituted a commercial suit before the Commercial District Court, Delhi seeking injunction and other reliefs. Alongside the suit, an application for interim injunction and appointment of a Local Commissioner was filed to prevent further circulation of the infringing goods and to secure evidence. However, the Commercial District Court , Delhi declined to grant interim relief. The primary reason for such refusal was the perceived absence of territorial jurisdiction. The court observed that the defendants were based outside Delhi and that there was insufficient material to show that any actual sale had taken place within its jurisdiction. It further viewed online listings on platforms such as IndiaMART and JustDial as mere advertisements rather than concrete evidence of commercial transactions.Aggrieved by this refusal, the appellant approached the Delhi High Court by way of an appeal.

Dispute

The central issue before the High Court was whether the Commercial Court was justified in rejecting the application for interim relief on the ground of lack of territorial jurisdiction. This, in turn, raised a broader question regarding the extent to which online availability of goods and digital platforms can confer jurisdiction upon courts. A related issue concerned whether a strong prima facie case of trademark infringement and passing off was made out, warranting immediate injunctive relief.

Reasoning

The High Court undertook a careful examination of the evolving nature of commerce in the digital era. It rejected the narrow view adopted by the Commercial Court that online listings were merely advertisements. The Court observed that modern e-commerce platforms are not passive spaces but active marketplaces where buyers and sellers interact, negotiate, and conclude transactions. The presence of such platforms effectively enables a seller to carry on business across multiple jurisdictions simultaneously.

The Court emphasized that the traditional requirement of proving an actual completed sale within a jurisdiction is no longer indispensable in the context of online commerce. Instead, the ability of consumers within a jurisdiction to access a website, interact with the seller, and potentially enter into transactions is sufficient to establish a part of the cause of action. This approach reflects a shift from a rigid territorial understanding to a more flexible and realistic appreciation of virtual commercial activity.

On the merits of the case, the Court found that the respondents had adopted marks that were virtually identical to those of the appellant. Given that the goods in question were identical, the likelihood of confusion was considered extremely high. The Court also highlighted the element of public interest, noting that counterfeit electrical goods could have serious safety implications.

Judgments and Their Context

The Court relied on the decision in World Wrestling Entertainment Inc. v. Reshma Collections (2014) 60 PTC 452 , where it was recognized that transactions conducted through websites can give rise to jurisdiction in places where the website is accessed and where customers interact with it. This judgment laid the foundation for acknowledging the concept of a “virtual shop,” equating online commercial presence with physical business operations.

Further reliance was placed on Tata Sons Pvt. Ltd. v. Hakunamatata Tata Founders (2022) 92 PTC 635, which clarified that even the mere accessibility of a website in a particular jurisdiction could be sufficient to establish targeting, especially in cases involving trademark infringement. The Court in that case observed that aggressive targeting is not necessary and that the possibility of consumer confusion within a jurisdiction is a relevant consideration.

The High Court also invoked the principles laid down by the Supreme Court in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia 2004 (3) SCC 90, which underscores that in cases of clear infringement, courts should not hesitate to grant injunctions. Similarly, Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65 was cited to reiterate that protection against passing off is essential to preserve business goodwill and prevent deception.

These precedents collectively guided the Court in adopting a liberal and purposive interpretation of jurisdiction and in recognizing the necessity of immediate judicial intervention in cases of blatant infringement.

Final Decision

The High Court set aside the findings of the Commercial Court on territorial jurisdiction and held that the appellant had successfully established a prima facie case. It granted an ad interim injunction restraining the respondents from using the impugned trademarks in any manner, whether in physical markets or on online platforms. The respondents were also directed to take down infringing listings from e-commerce websites.

In addition, the Court appointed Local Commissioners to visit the premises of the respondents, seize infringing goods, and prepare inventories. This measure was intended to prevent further circulation of counterfeit products and to preserve evidence for trial.

Point of Law Settled

The judgment settles an important principle that in the context of e-commerce, territorial jurisdiction cannot be confined to traditional notions of physical presence or completed transactions. The accessibility of an interactive website and the possibility of commercial interaction within a jurisdiction are sufficient to confer jurisdiction. The decision also reinforces that in cases of clear trademark infringement, particularly involving counterfeit goods, courts must act swiftly to grant injunctive relief, keeping in mind both proprietary rights and public interest.

Case Title: Goldmedal Electricals Pvt. Ltd. Vs. Vikram Kumar Jain & Ors.
Date of Order: 23 May 2025
Case Number: FAO (COMM) 141/2025
Court: Delhi High Court
Bench: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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

Headnote

The Delhi High Court held that accessibility and interactivity of e-commerce platforms are sufficient to confer territorial jurisdiction in trademark infringement cases, even in the absence of proof of actual sales within the jurisdiction. The Court further reaffirmed that in cases of clear counterfeiting and passing off, immediate interim injunction and appointment of Local Commissioners are warranted to prevent consumer deception and protect public interest.

Sanofi Vs. Intas Pharmaceuticals

Sanofi Vs. Intas Pharmaceuticals: 28.04.2026:CS(COMM) 120/2016:2026:DHC:3574:Amit Bansal 

Introduction:

The present suit before the Delhi High Court concerned an action for trademark infringement and passing off filed by Sanofi against Intas Pharmaceuticals in respect of the anti-thrombosis drug marketed under the mark PLAVIX. The defendant was using the mark CLAVIX for an identical pharmaceutical preparation containing the same active ingredient, Clopidogrel.

Factual Background:

Sanofi asserted statutory as well as common law rights in the mark PLAVIX, claiming prior adoption (1995), global reputation, and registration in India. It was contended that CLAVIX was deceptively similar, differing only by the substitution of the letter “P” with “C”, and was likely to cause confusion, particularly in the pharmaceutical sector where a stricter standard applies.The defendant, on the other hand, argued prior use since 2001, independent derivation of the mark, and dissimilarity based on the first letter and overall trade dress. It also invoked the defence under Section 34 of the Trade Marks Act, 1999.

Reasoning:

The marks PLAVIX and CLAVIX are phonetically, structurally, and visually similar, and the difference of a single letter is insufficient to obviate confusion, especially in medicinal products. Relying on established jurisprudence including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Court emphasized that a stricter test applies in pharmaceutical trademark disputes due to potential public health consequences.

The Court further found that the defendant’s explanation for adoption of the mark CLAVIX was unconvincing and an afterthought, and that no due diligence or trademark search had been conducted prior to adoption. This led to a finding of dishonest adoption.

On the issue of prior use, the Court held that the defendant failed to satisfy the requirements of Section 34, as the plaintiff’s registration dated back to 1995/1998. Mere prior use since 2001 could not defeat statutory rights, particularly in the absence of bona fide adoption.

Accordingly, the Court concluded that the defendant’s use of CLAVIX amounted to trademark infringement under Section 29 , and granted relief in favour of the plaintiff.

Key Legal Principles

The judgment reiterates that:

In pharmaceutical trademarks, even minor similarities can lead to actionable confusion.

Registration confers strong statutory rights, and prior use defence must strictly satisfy Section 34.

Dishonest adoption disentitles a defendant from equitable defenses.

In infringement actions, similarity of marks alone may suffice, irrespective of differences in packaging or trade dress.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

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Defense under Section 34 is not meant to shield acts tainted with bad faith

Introduction:

In the world of medicines, even a small similarity in brand names can create confusion that might affect patient safety. The Delhi High Court recently addressed this concern in a long-running dispute between two pharmaceutical companies. The case involved a well-known heart medicine sold under the name PLAVIX by the French company Sanofi and a similar product marketed as CLAVIX by Intas Pharmaceuticals. The court had to decide whether using a nearly identical name for the same type of drug amounted to trademark infringement and passing off. This judgment highlights how courts carefully examine brand names for medicines to protect both business rights and public health.

Factual Background:

Sanofi is a global pharmaceutical company known for developing and selling various medicines, including an important anti-thrombosis drug that helps prevent heart attacks and strokes. This drug is sold under the trademark PLAVIX, a specially created word that does not directly describe the medicine or its use. Sanofi had registered this mark in India and built significant reputation through sales and promotion over many years. The company launched the product in the Indian market in early 2003.

Intas Pharmaceuticals, an Indian company based in Ahmedabad, began selling a similar medicine containing the same active ingredient under the name CLAVIX. Intas claimed it had started using this name around 2001 and developed its own goodwill in the market. According to Intas, the name CLAVIX was derived from parts of the drug's scientific name and its medical purpose. The two products were identical in their therapeutic use and were sold through the same channels, mainly through prescriptions to doctors and pharmacies. Sanofi became aware of Intas's use of CLAVIX in the mid-2000s and eventually filed a lawsuit claiming that the similar name was likely to confuse doctors, pharmacists, and patients, leading them to mistake one product for the other.

Procedural Background:

The lawsuit began as a claim for passing off in 2008. Later, after Sanofi's word mark PLAVIX received formal registration, the company amended its pleadings to also include a claim for trademark infringement. The case went through several procedural steps, including applications for adding documents, recording evidence before a local commissioner, and addressing changes in the plaintiff's company name from Sanofi Aventis to Sanofi.

Both sides presented witnesses and evidence regarding their adoption of the marks, sales, advertising, and reasons for choosing the names. The matter was heard over multiple dates spanning several years, with arguments focusing on the similarity of the marks, the special rules that apply to pharmaceutical products, and whether Intas had honestly adopted its mark or was trying to ride on Sanofi's reputation. The evidence recording concluded in 2018, and final arguments were completed in March 2026 before the judgment was delivered.

Reasoning:

The court examined whether the marks PLAVIX and CLAVIX were deceptively similar. It noted that PLAVIX is a coined word with no direct meaning, making it highly distinctive and deserving of strong protection. The only difference between the two names was the first letter P versus C. When viewed as a whole, the names looked and sounded very much alike, especially to a person with average memory who might not recall the exact spelling.

The court emphasized that medicines require extra caution because any mix-up can harm health. It referred to the well-known principle that in pharmaceutical cases, courts must apply a stricter test for confusion. Even though both drugs required a doctor's prescription, the possibility of mistakes in reading handwriting, verbal communication, or dispensing errors could not be ignored, particularly in a country with diverse languages and literacy levels.

The judge also considered Intas's explanation for creating the name CLAVIX. The court found this reasoning unconvincing and appeared to be an afterthought rather than a genuine and honest choice made independently. Intas had not conducted proper searches before adopting the mark, and it was already selling the same drug under other names, which raised questions about the real motive behind choosing a name so close to PLAVIX.

Differences in packaging, colour, or price were noted but given limited weight in the infringement claim. Once the core names were found deceptively similar, added features in the overall get-up could not fully save the situation in an infringement action. The court clarified the legal position regarding device marks and word marks, holding that the prominent word element in a registered label mark deserves protection.

The Court also observed that the defendant cannot assert the benefit of prior user in terms of Section 34 of the Act, as such protection is available only to a bona fide adopter and user of the mark.  A party who has adopted a mark with knowledge of the plaintiff’s prior rights, or with an intention to ride upon the goodwill and reputation attached thereto, cannot seek refuge under the doctrine of prior use. The statutory defence under Section 34 is not meant to shield acts tainted with bad faith or to legitimise an attempt to cause confusion or deception in the market. Consequently, the defendant is disentitled from claiming any protection on the ground of prior user, and the said plea is liable to be rejected.

Judgements with Complete Citation and Their Context Discussed:

The court relied on several important precedents to guide its decision. A central reference was the Supreme Court case Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC OnLine SC 578. In that matter, the Supreme Court stressed that disputes involving medicinal products demand a stricter approach because confusion between drugs can have serious, even life-threatening, consequences. The judgment explained that unlike ordinary consumer goods, medicines are not everyday items, and factors like illiteracy, linguistic diversity, and pressure situations in hospitals make the risk of error higher. This principle was applied directly here to evaluate the likelihood of confusion between PLAVIX and CLAVIX.

Another key authority was Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories (1964) SCC OnLine SC 14 where the Supreme Court explained the difference between trademark infringement and passing off actions. It clarified that in infringement cases, if the essential features of the registered mark are copied, differences in get-up or packaging may not matter much, unlike in pure passing off claims.

The court also discussed Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (1959) SCC OnLine SC 11, which laid down that marks must be compared as a whole from the perspective of an ordinary buyer with imperfect recollection. Other cases cited helped distinguish situations where common elements derived from generic or scientific names were involved, showing why those precedents did not help Intas in this instance.

Recent Delhi High Court decisions were referred to on issues such as the protection of essential word features in composite or device marks and the limited role of manufacturer names or additional elements when the marks themselves are confusingly similar.

Final Decision of the Court

After carefully weighing all arguments and evidence, the Delhi High Court decided the case in favour of Sanofi. It held that Intas's use of the mark CLAVIX constituted trademark infringement of Sanofi's PLAVIX mark. However relief of passing off was declined as Plaintiff failed to prove any goodwill and reputation in India . The court found the marks deceptively similar and likely to cause confusion among the trade and public, particularly in the sensitive field of pharmaceuticals. Consequently, the court granted a permanent injunction restraining Intas from manufacturing, selling, or offering for sale any medicinal preparations under the mark CLAVIX or any other deceptively similar mark. Other reliefs, including directions regarding delivery up of materials and consideration of damages or accounts of profits along with costs, followed in line with the findings on the issues framed.

Point of Law Settled in the Case:

This judgment reinforces that in trademark disputes involving pharmaceutical products, courts will apply a stricter standard while assessing deceptive similarity. Even a minor change, such as replacing one letter in a coined mark for identical drugs, can amount to infringement if it creates a likelihood of confusion. The decision also clarifies that packaging differences or the prescription-only nature of drugs do not automatically eliminate the risk of confusion in India’s context. It further settles that the essential word element in a registered device mark receives protection, and explanations for adopting similar names are scrutinized closely for honesty and independence. The defendant is not entitled to the benefit of prior user under Section 34 of the Act, as the adoption of the impugned mark is found to be dishonest and thus vitiates any claim of bona fide use. Overall, it strengthens the protection available to established pharma trademarks against close imitations that could endanger public health.

Case Title: Sanofi Vs. Intas Pharmaceuticals Ltd. & Anr.

Date of Order: 28th April, 2026

Case Number: CS(COMM) 120/2016

Neutral Citation: 2026:DHC:3574

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

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

Headnote of the Article

Delhi High Court grants permanent injunction in favour of Sanofi restraining Intas from using the deceptively similar trademark CLAVIX for anti-thrombotic medicine, reiterating stricter scrutiny for pharmaceutical trademarks to prevent public confusion and potential health risks.

Title Suggestions:

Delhi High Court Protects PLAVIX Trademark: Intas Restrained from Using Deceptively Similar CLAVIX Mark in Major Pharmaceutical Dispute

Single Letter Difference Proves Costly: Sanofi Wins Trademark Infringement Battle Against Intas Over Heart Drug Marks

Stricter Scrutiny for Pharma Trademarks: Delhi High Court Reiterates Cadila Principles in Sanofi vs Intas Judgment

PLAVIX vs CLAVIX: Delhi High Court Holds Close Similarity in Drug Names Amounts to Infringement and Passing Off

Suitable Tags:

IPUpdate,TrademarkInfringement,PharmaIP,DelhiHighCourt,SanofiVsIntas,DeceptiveSimilarity,

CadilaPrinciple,IndianTrademarkLaw,IPCaselaw,AdvocateAjayAmitabhSuman,IPAdjutor

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Flipkart India Private Limited Vs Marc Enterprises Pvt. Ltd.

Flipkart India Private Limited Vs Marc Enterprises Pvt. Ltd.:24.04.2026:FAO-IPD 46 of 2021:DHC:Hon'ble Justice Shri Tejas Karia 

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Brief Facts

The present order arises out of an application filed by the appellant (Flipkart India Pvt. Ltd.) under Sections 151 and 152 of the Code of Civil Procedure, 1908, seeking clarification/modification of a judgment dated 10.04.2026. The appellant contended that the Court had incorrectly recorded its submission regarding the grant of time—asserting that the request was for time to avail legal remedies, and not merely for compliance with the interim injunction.

The respondent (Marc Enterprises Pvt. Ltd.) opposed the application, submitting that the judgment accurately recorded the submissions made in open court and that no clerical or accidental error existed warranting correction.

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Issues

1. Whether the alleged incorrect recording of submissions constitutes a clerical or accidental error under Section 152 CPC.
2. Scope and limits of the Court’s power to modify or clarify judgments post-pronouncement.

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Key Findings

• The Court held that the submissions recorded in the original judgment were accurate and reflected the proceedings in open court.
• It reiterated that Section 152 CPC is limited to correcting clerical or arithmetical mistakes or accidental slips, and cannot be invoked to alter substantive findings.
• Relying on Dwaraka Das v. State of M.P., the Court emphasized that once a judgment is pronounced, the Court becomes functus officio, and cannot modify its terms except for minor corrections.
• The Court clarified that substantive grievances must be addressed through appeal or review, not through an application under Section 152 CPC.

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Decision

The Delhi High Court dismissed the application, holding that no clerical or accidental error was made out. However, it observed that the recorded statement would not prevent the appellant from availing appropriate legal remedies in accordance with law.

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Significance

This order reinforces the narrow scope of Section 152 CPC, emphasizing that it cannot be used as a tool to revisit or alter judicial findings. It also reiterates the doctrine of functus officio, limiting post-judgment intervention by courts and preserving the sanctity and finality of judicial orders.

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Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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#IPUpdate #IPCaselaw #IPLaw #IPRNews #Trademark #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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Limits of Judicial Correction: Scope of Section 152 CPC

Introduction: 

Courts pronounce judgments after hearing arguments, and sometimes parties feel that what was said in open court or recorded in the order needs a small correction. But how far can a court go in changing its own recorded words after the judgment is out? This case highlights the narrow limits of such corrections under Indian law. It shows that once a judgment is delivered, the court cannot easily rewrite what happened during proceedings, especially if it touches the heart of what was argued. The dispute arose in a trademark battle between e-commerce giant Flipkart and a smaller company called Marc Enterprises, but this particular order focused only on a follow-up request for clarification rather than the trademark itself.

Factual Background

The underlying dispute involved Flipkart using the mark "MARQ" for its private label products, particularly electrical appliances. Marc Enterprises, which had been using and registering marks like "MARC" for similar goods for many years, claimed that Flipkart's mark was deceptively similar and would confuse customers. The trial court had granted an interim injunction stopping Flipkart from using "MARQ". Flipkart challenged this injunction before the Delhi High Court in an appeal. The High Court heard the matter and dismissed the appeal on April 10, 2026, upholding the injunction against Flipkart. Immediately after the judgment was pronounced in open court, there was some discussion about giving Flipkart time to comply with the order.

Procedural Background

After the main judgment dismissing the appeal, Flipkart filed an application under Section 152 read with Section 151 of the Code of Civil Procedure. In this application, Flipkart claimed that the judgment had incorrectly recorded the submission made by its senior counsel right after the pronouncement. According to Flipkart, the counsel had asked for time to explore and avail legal remedies against the judgment. Flipkart wanted the court to modify paragraph 26 of the judgment and grant four weeks specifically for pursuing further legal options. Marc Enterprises strongly opposed this, arguing that the judgment accurately captured what was said in open court and that no change was needed or allowed.The matter came up before the same judge who had delivered the main judgment. Both sides presented their views on what exactly had transpired in court on the day of pronouncement.

Reasoning

The court carefully examined the application and the arguments from both sides. It noted that the paragraphs in question recorded the submissions made by the parties immediately after the judgment was pronounced. The judge observed that these recordings matched what had actually happened in open court. Changing them would amount to altering the court's own understanding of the proceedings, which goes beyond a simple clerical fix.

The court emphasized that Section 152 of the CPC is meant only for correcting genuine clerical or arithmetical mistakes or accidental slips or omissions. It is not a tool to revisit or rewrite substantive parts of the judgment or the record of arguments that reflect the actual events. Once a judgment is delivered, the court generally becomes functus officio, meaning it has finished its role in that matter and cannot make changes that affect the merits or the recorded position of the parties.

The respondent cited important Supreme Court decisions to support this view. In Dwaraka Das v. State of M.P. and Another, the Supreme Court explained that Section 152 allows only ministerial corrections of accidental errors and does not permit the court to pass fresh judicial orders or correct omissions that go to the root of the case. Any such deeper error should be addressed through appeal or review, not through this provision. Similarly, the judgment in State of Maharashtra and Others v. Saeed Sohail Sheikh and Others helped clarify that ministerial acts under these sections involve no independent judgment or discretion — they are routine corrections without changing the substance.

The court rejected the idea that the recorded submission could be treated as a mere accidental slip. It held that the judgment faithfully reflected the events in court. At the same time, to address any concern, the court added a protective observation: the recorded statement by Flipkart's counsel would not prevent the company from pursuing whatever legal remedies are available under law. All rights and contentions of both parties were kept open.

The judge made it clear that this observation was added out of abundant caution and did not amount to any modification of the original judgment. It caused no prejudice to Marc Enterprises because no counsel's statement can legally bar a party from exercising its lawful rights.

Judgements with Complete Citation and Their Context Discussed

The court relied on two key Supreme Court precedents to explain the limited scope of Section 152 CPC.

In Dwaraka Das v. State of M.P. and Another, (1999) 3 SCC 500, the Supreme Court dealt with a situation where a party sought correction regarding interest in a contract dispute. The Court clarified that Section 152 is restricted to fixing clerical mistakes or accidental omissions by the court in its ministerial capacity. It does not allow reopening or varying the terms of a judgment after it has been passed. The court becomes functus officio and cannot correct errors that touch the merits of the case. Such issues must be handled through proper appeal or review. This ruling was cited to show that Flipkart's request went beyond a simple clerical fix and could not be entertained.

In State of Maharashtra and Others v. Saeed Sohail Sheikh and Others, (2012) 13 SCC 192, the Supreme Court discussed the meaning of "ministerial" acts and duties. It explained that these involve routine tasks carried out without exercising personal discretion or judgment — simply following instructions or rules. This helped the court distinguish between minor corrections and any attempt to reinterpret or rewrite what happened in open court.

These judgments were discussed in detail to underline that courts must not use Section 152 or the inherent powers under Section 151 to alter the substance of what was recorded or decided.

Final Decision of the Court

The Delhi High Court dismissed the clarification application filed by Flipkart. It held that no case was made out for any modification under Section 152 or Section 151 CPC because the judgment correctly recorded the proceedings. The application was disposed of accordingly. However, the court added a clarifying observation that the recorded statement would not hinder Flipkart from availing any available legal remedies, and all rights of both parties remained open.

Point of Law Settled in the Case

This order reinforces a clear principle: after a judgment is pronounced, the court has very limited power to make changes. Section 152 CPC can only be used for genuine clerical or arithmetical mistakes or accidental slips that do not affect the merits or the accurate record of what occurred in court. Parties cannot use this provision to rewrite the history of submissions made in open court or to seek substantive alterations. The court becomes functus officio and any deeper grievance must be addressed through appeal or other proper legal channels. At the same time, a mere recorded submission by counsel does not bind a party from pursuing lawful remedies.

Case Title: Flipkart India Private Limited Vs Marc Enterprises Pvt Ltd

Date of Order: 24.04.2026

Case Number: FAO-IPD 46/2021

Name of Court: High Court of 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

Headnote of Article

Headnote: Delhi High Court dismisses Flipkart’s application seeking clarification/modification of recorded submissions in a trademark injunction appeal under Section 152 CPC, reiterating that post-judgment corrections are limited to clerical or accidental slips and do not permit rewriting the record of open court proceedings; protective observation made that recorded statement will not bar availing legal remedies.

Johnson Paints Co. Vs. Johnson Paints Private Limited

Johnson Paints Co. Vs. Johnson Paints Private Limited:24.04.2026:Commercial Appeal No. 2 of 2025:PatnaHC:Rajeev Ranjan Prasad and Praveen Kumar, H.JJ.

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Brief Facts

The dispute concerns competing claims over the trademark “JOHNSON” used in relation to paints and allied products. The appellant, Johnson Paints Co., claimed prior adoption and continuous use of the mark since 1987, asserting goodwill and reputation built over decades. The respondent, Johnson Paints Pvt. Ltd., relied on a chain of assignment deeds dating back to 1990 and subsequent trademark registrations to justify its use.

The appellant filed a suit for permanent injunction alleging passing off, along with an application for interim injunction. The Commercial Court rejected the injunction application on the ground that the appellant failed to establish a prima facie case of prior use and goodwill. The present appeal challenged that refusal.

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Issues

1. Whether the appellant established a prima facie case of prior user of the trademark “JOHNSON”.
2. Whether the refusal of interim injunction by the Commercial Court was justified.
3. Applicability of the “first user rule” in passing off vis-à-vis competing claims and assignments.

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Key Findings

• The High Court reiterated that prior use is the foundation of a passing off action under Section 27 of the Trade Marks Act, 1999.
• Upon examining invoices, tax records, and contemporaneous documents, the Court found prima facie evidence supporting the appellant’s use since 1987–88.
• The respondent’s reliance on assignment deeds was viewed with skepticism due to serious inconsistencies, lack of supporting evidence, and absence of registration or proof of use by assignors.
• The Court emphasized that registration does not override prior user rights, reaffirming the principle laid down in Neon Laboratories Ltd. v. Medical Technologies Ltd..
• It was observed that the Commercial Court failed to adequately consider relevant documents and misapplied the principles governing interim injunctions.

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Legal Principles

• First User Rule Prevails: Prior use outweighs subsequent registration.
• Passing Off Independent of Registration: Common law rights survive statutory registration.
• Interim Injunction Test: Courts must assess prima facie case, balance of convenience, irreparable harm, and likelihood of confusion.

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Decision

The High Court found that the appellant had made out a prima facie case of prior use, and that the respondent’s claim based on assignment deeds lacked credibility at this stage. The refusal of interim injunction was held to be unsustainable, warranting interference.

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Significance

This judgment reinforces the dominance of the “prior user” doctrine in Indian trademark law, especially in passing off actions. It also underscores judicial caution in accepting assignment-based claims without clear proof of continuity and legitimacy, and reiterates that registration alone cannot defeat established goodwill.

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Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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#IPUpdate #IPCaselaw #IPLaw #Trademark #PassingOff #IndianIPUpdate

Shruti Sharma Vs. The Registrar of Trade Marks

Shruti Sharma Vs. The Registrar of Trade Marks:22.04.2026:C.A.(COMM.IPD-TM) 21/2026:DHC:Jyoti Singh, H.J.

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Brief Facts

The appellant challenged the refusal of her trademark application for “AROMA SPHERE” in Class 35, relating to retail and marketing of fragrance-based products. The Registrar had rejected the application under Section 11 of the Trade Marks Act, 1999 on the ground of deceptive similarity with an earlier mark “AROMASPHERE”.

The appellant contended that the refusal was erroneous as the cited mark pertained to distinct and unrelated services, and that the Registrar failed to consider her prior and actual use supported by evidence.

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Issues

1. Whether similarity of marks alone is sufficient to refuse registration under Section 11.
2. Whether dissimilarity of goods/services must be considered while assessing likelihood of confusion.
3. Whether the Registrar erred in overlooking evidence of actual prior use.

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Key Findings

• The Court held that mere similarity of marks is not decisive; similarity or identity of goods/services is an equally critical factor.
• It was emphasized that the Registrar must examine whether the competing goods/services are similar or related, as mandated under Section 11 and Rule 33 of the Trade Marks Rules, 2017.
• The Court found that the Registrar failed to consider the appellant’s submission that the cited mark covered business marketing services, whereas the applied mark related to retail and sale of fragrance products.
• The Registrar also erred in treating the application as filed on a “proposed to be used” basis, despite evidence of actual use since 31.03.2023 being on record.
• The Court reiterated that no monopoly can be claimed over an entire class of goods/services merely by registration of a mark in that class.

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Decision

The Delhi High Court set aside the refusal order and remanded the matter to the Registrar for fresh consideration, directing a reasoned decision after giving the appellant an opportunity of hearing.

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Significance

This judgment reinforces that trademark examination must go beyond phonetic or visual similarity and must include a holistic assessment of nature of goods/services and likelihood of confusion. It also highlights the importance of properly evaluating user evidence, preventing mechanical refusals by the Registry.

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Disclaimer

Do not treat this as a substitute for legal advice as it may contain subjective errors.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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#IPUpdate #IPCaselaw #IPLaw #Trademark #IPIndiaupdate #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

Ganesh Consumer Products Ltd. Vs Assistant Registrar of Trademarks

Madras High Court Upholds Registration of ‘GANESHA’ Trademark for Gram Flour on Ground of Honest Concurrent Use and Territorial Limitations

Ganesh Consumer Products Ltd. Vs  Assistant Registrar of Trademarks :15.04.2026:CMA (TM)No.21 of 2025:2026:MHC:1519:MadHC:Hon’ble Mr. Justice Senthilkumar Ramamoorthy

In a notable trademark appeal concerning rival claims over marks containing the word “GANESHA” for gram flour (Class 30), the Madras High Court dismissed the challenge filed by Ganesh Consumer Products Ltd. and upheld the registration of the device mark “SPECIAL GANESHA BRAND” (with pictorial elements) granted to the partners of Shankar Industries, Karnataka.

Brief Facts

The appellant, Ganesh Consumer Products Ltd., opposed the registration of Trademark Application No. 1831646 filed by K.R. Nagendra and K.N. Shobha (partners of Shankar Industries) for a label mark featuring “SPECIAL GANESHA BRAND” and device elements in respect of gram flour. The opposition was rejected by the Registrar of Trade Marks, Chennai, vide order dated 11.09.2024, leading to registration of the mark as No. 1831646. The appellant preferred the present Civil Miscellaneous Appeal under Section 91 of the Trade Marks Act, 1999, seeking to set aside the Registrar’s order and cancel the registration.

The appellant claimed prior use and registration of several “GANESH”/“GANESHA” marks and argued that the impugned mark was deceptively similar. The respondents relied on their long-standing use, an earlier registration of a similar mark (No. 460314) since the 1980s, and evidence of turnover and advertisement expenses supported by a Chartered Accountant’s certificate.

Key Issues and Court’s Analysis

The Court examined the evidence of use adduced by both sides. It noted that the respondents had an earlier registered mark containing “SPECIAL GANESHA BRAND” with a pictorial device of Lord Ganesha, registered with effect from 1986 on a user claim from 1978. A rectification petition filed by the appellant against that registration was withdrawn without leave to re-file.

The respondents also placed on record a Chartered Accountant’s certificate showing turnover and advertisement expenses for the “GANESHA” mark in respect of gram flour from 1995-96 onwards. Though the appellant raised objections regarding the evidentiary value of the certificate (absence of underlying documents and affidavit), the Court held that the Registrar of Trade Marks does not conduct a full trial and the strict rules of the Evidence Act are not binding. The certificate specifically linked the figures to the mark and goods in question and was thus acceptable as evidence of use. Invoices and other documents further supported the respondents’ claim.

The appellant’s evidence showed use since 1992, which was subsequent to the respondents’ claimed and registered use. Additional documents sought to be filed by the appellant at the appellate stage, including old advertisements from 1936, were not admitted as they fell outside the pleadings.

Crucially, the Court observed that both the impugned registration and the respondents’ earlier registration carried a territorial limitation restricting use to the State of Karnataka only. Many of the appellant’s registrations were similarly limited to West Bengal. This territorial restriction provided an additional ground for invoking Section 12 of the Trade Marks Act, 1999, which permits registration in cases of honest concurrent use or other special circumstances.

The Court held that the respondents were entitled to the benefit of Section 12 on account of their prior registration, established use, and the territorial limitations. In view of this finding, it was unnecessary to examine the issue of deceptive similarity between the rival marks in detail. Even if the additional documents were considered, no case was made out to interfere with the Registrar’s order.

Final Decision

The Madras High Court dismissed the appeal (CMA (TM) No.21 of 2025) and the connected miscellaneous petition without costs. The registration of Trademark No. 1831646 in favour of the respondents was upheld.

This judgment highlights the importance of territorial limitations in trademark registrations, the evidentiary flexibility before the Registrar, and the protective scope of Section 12 for honest concurrent users, particularly where marks incorporate common or religious elements like the name of a deity and operate in geographically limited markets.

Disclaimer: This is a brief write-up based on the judgment for reporting purposes only and does not constitute legal advice. It may contain subjective summarization.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor

[Patent and Trademark Attorney], High Court of Delhi

#IPUpdate #IPCaselaw #TrademarkLaw #HonestConcurrentUse #Section12TradeMarksAct #MadrasHighCourt #GANESHA trademark #IndianIPLaw #IPIndiaupdate #AdvocateAjayAmitabhSuman #IPAdjutor

Suggested Title for Legal Journal:

“Madras High Court Upholds ‘GANESHA’ Trademark Registration Emphasising Honest Concurrent Use and Territorial Limitations under Section 12 of Trade Marks Act”

Tags: #Trademark #HonestConcurrentUse #Section12 #MadrasHighCourt #DeityName #TerritorialLimitation #GramFlour #IPCaselaw #TradeMarksAct1999 #RegistrarOfTradeMarks

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**Madras High Court Upholds Trademark Registration on Grounds of Honest Concurrent Use and Territorial Limitations**

### Introduction

Trademark disputes often arise when two businesses want to use similar names or labels for their products, especially when the name has a common or religious connection. In one such case involving marks with the word “GANESHA” for gram flour, the Madras High Court delivered an important ruling that balances the rights of long-time users while considering practical limitations on where the goods are sold. The judgment shows how courts look at real-world use of trademarks, old registrations, and special situations that allow similar marks to coexist peacefully in different areas. This decision offers valuable guidance to businesses on how prior use, honest adoption, and geographic restrictions can protect a trademark registration even when another party claims earlier rights.

### Factual Background

The dispute centred on a label mark featuring the words “SPECIAL GANESHA BRAND” along with pictorial elements, used for pure gram flour. One side was Ganesh Consumer Products Ltd., a company based in West Bengal that claimed rights over several marks containing the word “GANESH” or “GANESHA” for food products like atta and flour. The other side consisted of partners of Shankar Industries from Arsikere in Karnataka, who had been selling gram flour under their GANESHA brand for many years.

The Karnataka firm had obtained an earlier trademark registration for a similar label that included a picture of Lord Ganesha. They later applied for registration of the impugned mark without the deity image but with the same brand name. The West Bengal company opposed this application, arguing that their own marks were similar and that allowing the new registration would create confusion among customers. They claimed to have been using their GANESH marks for a long time and had several registrations in their favour or in the name of their predecessors.

The Karnataka partners defended their position by pointing to their established business in gram flour, supported by sales records, advertisement expenses certified by chartered accountants, and their existing registration. They maintained that their use was honest and had continued for decades without any major issues.

### Procedural Background

The West Bengal company filed a formal opposition before the Trade Marks Registry in Chennai against the application by the Karnataka firm. After considering evidence and arguments from both sides, the Assistant Registrar of Trade Marks rejected the opposition and allowed the registration of the mark in Class 30 for gram flour. Feeling aggrieved, the West Bengal company approached the Madras High Court through a civil miscellaneous appeal under the relevant provisions of the Trade Marks Act. They also filed an application to place additional old documents on record, such as newspaper advertisements and assignment deeds.

Both parties were represented by experienced counsel who presented detailed arguments. The appellant stressed the similarity of the marks and their own prior use, while the respondents highlighted their long-standing registration, continuous business activity, and the limited geographic scope of their operations.

### Reasoning

The Court carefully reviewed the evidence presented by both parties regarding the use of their respective marks. It noted that the respondents had secured an earlier trademark registration for a very similar label mark many years ago, claiming use dating back even further. Although the appellant had challenged that earlier registration through a rectification petition, the challenge was later withdrawn without permission to file it again, which weakened their position.

The respondents produced a certificate from chartered accountants showing their sales turnover and advertisement spending specifically linked to the GANESHA mark for gram flour over many years. The Court accepted this as valid evidence of use, observing that trademark proceedings before the Registrar are not strict court trials and that rigid rules of evidence do not always apply in the same way. The appellant’s own evidence of use began later than the respondents’ claimed and registered use.

A key factor in the Court’s thinking was the territorial limitation attached to both the respondents’ registrations and many of the appellant’s marks. The respondents’ marks were restricted to goods sold only within Karnataka, while the appellant’s registrations were often limited to West Bengal. This geographic separation reduced the chance of actual confusion or conflict in the market.

The Court explained that the law allows registration of similar marks in appropriate cases when there is honest concurrent use or other special circumstances that make it fair to do so. Here, the respondents’ long prior registration, continuous honest business activity in their region, and the territorial limits created such special circumstances. Because of this, the Court found it unnecessary to deeply analyse whether the marks looked deceptively similar. Even if the additional documents the appellant wanted to introduce were considered, they did not change the overall picture, as many related to periods or connections not properly pleaded earlier.

### Judgements with Complete Citation and Their Context Discussed

The Madras High Court delivered its judgment on 15 April 2026 in the matter of CMA (TM) No.21 of 2025 and connected CMP No.32352 of 2025, cited as **2026:MHC:1519**, authored by Hon’ble Mr. Justice Senthilkumar Ramamoorthy.

In its reasoning, the Court discussed the scope of Section 12 of the Trade Marks Act, 1999. This provision empowers the Registrar to permit registration of identical or similar marks by more than one proprietor when there is honest concurrent use or other special circumstances that justify it. The judgment placed this section in the context of balancing competing interests in the marketplace, particularly where parties operate in different regions and have built their businesses honestly over time.

The Court also referred to the limited nature of proceedings before the Trade Marks Registry, noting that it does not function like a full civil trial and that the Evidence Act is not strictly binding. This context helped justify reliance on the chartered accountants’ certificate as proof of use, even without supporting affidavits or all underlying invoices for every year.

Additionally, the judgment touched upon the effect of an earlier registration and the withdrawal of a rectification petition without leave, explaining how these procedural steps impact later challenges. The territorial limitations on registrations were highlighted as creating “special circumstances” under Section 12, allowing similar marks to coexist without causing widespread confusion.

### Final Decision of Court

After weighing all aspects, the Madras High Court found no reason to interfere with the Registrar’s order that had allowed the registration. The appeal was dismissed in its entirety, and the connected miscellaneous petition for additional documents was closed. No order was passed as to costs. The registration of the impugned “SPECIAL GANESHA BRAND” mark in favour of the partners of Shankar Industries was thus upheld.

### Point of Law Settled in the Case

This judgment settles an important practical point in trademark law: When two parties use similar marks containing common elements like the name of a deity, and their registrations or business activities are confined to different geographic areas, the law can permit both to coexist under the principle of honest concurrent use or special circumstances. A prior registration, even if challenged and later withdrawn from contest, combined with evidence of continuous honest use and territorial restrictions, can provide strong protection against later opposition. The decision also clarifies that trademark registries have flexibility in accepting evidence of use and that courts will not readily disturb such decisions when special circumstances exist.

### Case Details

**Title:** Ganesh Consumer Products Ltd. Vs Assistant Registrar of Trademarks and G.I. & Ors.  

**Date of Order:** 15.04.2026  

**Case Number:** CMA (TM) No.21 of 2025 and CMP No.32352 of 2025  

**Neutral Citation:** 2026:MHC:1519  

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

**Name of Hon'ble Judge:** Hon’ble Mr. Justice Senthilkumar Ramamoorthy

**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 the Article

1. Madras High Court Upholds ‘GANESHA’ Trademark Registration Based on Honest Concurrent Use and Territorial Limits  

2. Territorial Restrictions and Prior Registration Save Similar Trademark in Gram Flour Dispute: Madras HC Ruling  

3. Section 12 of Trade Marks Act Comes to Rescue in Honest Concurrent Use Case: Madras High Court Decision  

4. Madras HC Emphasises Special Circumstances Allowing Coexistence of Similar Trademarks in Different Regions

### Suggested Tags

#TrademarkLaw #HonestConcurrentUse #Section12TradeMarksAct #MadrasHighCourt #GANESHA trademark #TerritorialLimitation #IPCaselaw #TradeMarksAct1999 #IndianIPLaw #TrademarkRegistration #IPUpdate #DeityNameTrademark #AdvocateAjayAmitabhSuman

### Headnote of Article

**Headnote:** In a trademark appeal concerning rival “GANESHA” marks for gram flour, the Madras High Court upheld the registration granted to the Karnataka-based respondents by invoking Section 12 of the Trade Marks Act, 1999. The Court held that honest concurrent use, an earlier similar registration, continuous business activity, and territorial limitations restricting sales to Karnataka constituted special circumstances justifying the coexistence of similar marks. The appeal by the West Bengal company was dismissed, reinforcing that geographic separation and prior honest use can protect registrations even when marks share common elements.