"Division Bench Obiter: Guiding Light or Mere Suggestion for Single Judges?"

Introduction: The Role of Obiter Dictum in Indian Judicial Hierarchy:

The Indian legal system, like other common law jurisdictions, operates on the doctrine of precedent to ensure consistency and predictability in judicial decisions. At the core of this doctrine lies the distinction between ratio decidendi, the legal principle that forms the basis of a decision, and obiter dictum, statements made by judges that are incidental to the main issue and not essential to the outcome of the case. While the former holds the force of binding precedent, the latter carries no binding authority but may be persuasive in nature. 

In practice, however, determining whether a particular statement made by a higher bench is ratio or obiter can be contentious. This dilemma becomes especially significant when Single Judges are tasked with interpreting statements made by Division Benches. The Delhi High Court’s recent decision in Balar Marketing Pvt. Ltd. v. Lakha Ram Sharma, 2025:DHC:2322, by Hon’ble Single Judge, Delhi High Court, shed light on the question of whether a Single Judge is bound by an obiter dictum of a Division Bench of the same High Court. The case revolved around the application of Section 124 of the Trade Marks Act, 1999 in trademark infringement and passing off proceedings.

 

Factual Background and Procedural History:

The dispute between Balar Marketing Pvt. Ltd. (the petitioner) and Lakha Ram Sharma, the proprietor of Kundan Cable India (the respondent), centered on the use of the trademark "KUNDAN" and its variants, including "KUNDAN CAB" and "KUNDAN CABLE." Both parties operated in the electrical goods industry, and each claimed the exclusive right to the trademark based on prior adoption.The petitioner asserted that its predecessor had adopted the mark in 1975 and had continuously used it. The respondent, on the other hand, claimed to have adopted and used the mark earlier, leading to a series of protracted legal disputes. Multiple suits were filed between 1994 and 2006, including passing off and infringement actions. These suits were consolidated, and the case went through various procedural developments. 

In January 2025, the respondent sought a stay on all the suits under Section 124 of the Trade Marks Act, citing the pendency of rectification proceedings before the Madras High Court. The Trial Court granted a stay on all suits (except TM No. 931/2016) on January 18, 2025, relying on the Division Bench decision in Amrish Aggarwal Trading as Mahalaxmi Product v. Venus Home Appliances, 2024 SCC OnLine Del 3652. Aggrieved by this order, the petitioner filed a writ petition under Article 227 of the Constitution of India, seeking judicial review. The decision of the Delhi High Court in Balar Marketing is significant for its clarity in defining the limits of obiter dictum and its binding effect.

 Core Legal Issue:

The principal legal issue in this case was whether the Trial Court was justified in staying the passing off suits under Section 124 of the Trade Marks Act based on the observations made in Amrish Aggarwal DB? The subsidiary question was whether the remarks made by the Division Bench regarding the stay of passing off suits were obiter dictum or binding precedent?

Parties Contention:

The petitioner contended that the reference to passing off suits in paragraph 44 of Amrish Aggarwal DB  was a mere obiter dictum. The Division Bench in that case was primarily addressing procedural issues concerning the stay of infringement suits during the pendency of rectification proceedings, not passing off actions. The petitioner relied heavily on the judgment in Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del.) (DB), where the Division Bench had explicitly ruled that passing off suits are not subject to stay under Section 124. This principle, according to the petitioner, should not be disturbed by an incidental remark in Amrish Aggarwal.

The respondent, on the other hand, argued that even obiter dicta from a Division Bench of the High Court must be followed by a Single Judge to ensure judicial consistency. To support this view, the respondent cited cases such as Naseemunisa Begum v. Shaikh Abdul Rehman, 2002 (2) Mah L.J. 115 and Crocs Inc. USA v. Aqualite India Ltd., 2019 SCC OnLine Del 11957, in which it was held that even remarks made in passing by a Division Bench could be binding, especially when they did not contradict established law.

Contextual Interpretation of Amrish Aggarwal DB Case:

The Hon’ble Single first examined the context of the Amrish Aggarwal case. The Division Bench in that case was primarily concerned with procedural issues arising out of the abolition of the Intellectual Property Appellate Board (IPAB) and whether rectification proceedings triggered a stay under Section 124 of the Trade Marks Act. The primary issue in Amrish Aggarwal DB  was not related to passing off suits, but rather the procedural question of whether infringement actions could be stayed during the pendency of rectification proceedings. The Division Bench’s reference to passing off suits was made incidentally in paragraph 44, without any extensive legal reasoning or argumentation. Therefore, Justice Bansal concluded that the remark was not part of the ratio decidendi and should be treated as obiter dictum.

No Express Overruling of Binding Precedent (Puma Stationer):

The Hon’ble Single Judge, Delhi High Court noted that the Division Bench in Amrish Aggarwal had relied on Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., 2010 (43) PTC 479 (Del.) (DB), which had clearly held that passing off actions are not subject to stay under Section 124. The Division Bench in Amrish Aggarwal did not overrule or even address this binding precedent, further supporting the conclusion that the reference to passing off suits was incidental and lacked any binding authority.

Application of Supreme Court Precedents on Obiter Dictum:

The court drew upon established Supreme Court principles that clarify the nature and scope of obiter dictum. In Mohinder Singh Gill v. Chief Election Commissioner, (1978) 1 SCC 405, the Supreme Court held that only the ratio decidendi of a judgment is binding, and obiter dictum, or incidental remarks, are not enforceable in subsequent cases. Similarly, in State of Orissa v. Sudhansu Sekhar Misra, AIR 1968 SC 647, the Supreme Court emphasized that casual observations or statements made without a thorough examination of the issue do not form part of the binding law.

The Hon’ble Single Judge also referred to the case of Gudri v. Ram Kishun, AIR 1984 All 100, where it was held that even stray or inadvertent remarks made by a Full Bench, if inconsistent with settled law, do not bind lower courts. This case further reinforced the position that obiter dictum, even when expressed by larger benches, cannot override established legal principles.

 Lack of Detailed Legal Reasoning in Amrish Aggarwal on Passing Off

The Division Bench in Amrish Aggarwal made no reference to key statutory provisions such as Section 27(2) of the Trade Marks Act, which expressly preserves common law rights in passing off actions, independent of the statutory registration status. Moreover, the Division Bench did not cite or discuss previous case law that dealt directly with the application of Section 124 to passing off claims. The lack of legal reasoning and analysis led Justice Bansal to conclude that the reference to passing off suits was inadvertent and non-binding.

 Distinction from Other Cases Cited by the Respondent:

Justice Bansal distinguished the cases relied upon by the respondent, such as Naseemunisa Begum v. Shaikh Abdul Rehman and Crocs Inc. USA v. Aqualite India Ltd., where the observations made by the higher benches were integral to the judicial reasoning and central to the legal issues at hand. In contrast, the reference to passing off in Amrish Aggarwal was not framed as an issue for determination and did not involve a detailed examination of the law.

 Decision and Legal Principle Clarified:

In light of the above analysis, the Court held that the Trial Court had misapplied the judgment in Amrish Aggarwal by staying the passing off suits. Paragraph 44 of the judgment was not part of the ratio decidendi, and as such, the Single Judge was not bound to follow it. The court emphasized that a Single Judge is not bound by an obiter dictum of a Division Bench of the same High Court, particularly when it contradicts established precedent and lacks legal reasoning. Accordingly, the Court set aside the stay order dated January 18, 2025, and directed that all the pending suits—TM Nos. 968/2016, 971/2016, 1030/2016, and 932/2016—proceed to trial along with TM No. 931/2016.

Author’s Comment: A Call for Doctrinal Coherence and Resolution by Larger Bench:

This decision reaffirms a crucial tenet of the doctrine of precedent: that only the ratio decidendi of a judgment possesses binding force, whereas obiter dicta, even if emanating from a Division Bench, lack precedential authority if they are unreasoned or conflict with established legal principles. This judgment emphasizes the necessity of maintaining doctrinal clarity to prevent the misapplication of incidental judicial remarks as binding law. This ruling serves to uphold the autonomy of common law rights—particularly the right of passing off—while also delimiting the scope of Section 124 of the Trade Marks Act, 1999, which concerns the stay of infringement suits pending rectification proceedings.

 However, a critical unresolved issue lingers at the intersection of judicial interpretation and precedential conflict. In the earlier Division Bench decision of Puma Stationer Pvt. Ltd. v. Hindustan Pencils Ltd., the Court stayed the trademark infringement suit under Section 124 but permitted the passing off action to continue. Contrastingly, in the subsequent Amrish Aggarwal v. Venus Home Appliances Pvt. Ltd. (DB), the Division Bench—after noting the petitioner’s reliance on Puma (see para 34)—expressly rejected that reasoning (see para 53) and held (at paras 2 and 44) that both infringement and passing off claims must await the outcome of rectification proceedings.

 This divergence reveals an apparent conflict between two Division Bench decisions. In such cases, as established in Christian Louboutin v. Abu Baker, 2019 (78) PTC 262 (Del) (DB), paras 32 and 35, when two coordinate Bench decisions conflict, the matter should be referred to a larger Bench for authoritative resolution. The Balar Marketing judgment, however, sidesteps this necessity by characterizing the relevant observations in Amrish Aggarwal as obiter, thereby preserving the Puma precedent.This interpretive strategy is complicated further by the earlier Single Judge decision in Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad & Anr. [2018:DHC:53] @Para 23,24, where the Court concluded that Puma’s observations regarding the continuation of passing off actions did not constitute binding precedent.

The judgment reasoned that since the Division Bench in Puma did not fully adjudicate the issue with reasoned analysis, its observations were not authoritative. This leads to a paradox: in Abbott, the Single Judge declined to treat Puma as binding, while in Balar, a subsequent Single Judge relied on Puma while dismissing Amrish Aggarwal as mere obiter. In both instances, the judges attempted to reconcile conflicting DB judgments through the lens of ratio vs obiter, yet arrived at opposing conclusions regarding which precedent to follow.

 The resulting jurisprudential inconsistency underscores the urgent need for clarity. When two Division Bench judgments express diametrically opposed views on the procedural bifurcation of infringement and passing off under Section 124, reliance on interpretive discretion at the Single Judge level only perpetuates confusion. A definitive pronouncement by a Larger Bench is essential to restore uniformity and doctrinal stability. Until such clarity is provided, judicial uncertainty will persist, potentially undermining the predictability and coherence that the doctrine of precedent is designed to secure.

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

Mr. David Davidar Vs Ms. Sivasundari Bose

**Delhi High Court Dismisses Copyright Infringement Claim in Literary Works Dispute Between Authors**

In a detailed judgment delivered on **30 April 2026**, the Delhi High Court resolved a long-standing copyright dispute between noted author and publisher **Mr. David Davidar** and author **Ms. Sivasundari Bose**.

Mr. David Davidar’s acclaimed novel *The House of the Blue Mangoes* (published in 2002), a multi-generational family saga set in South India, was alleged by Ms. Sivasundari Bose to have been substantially copied from her unpublished manuscript *Golden Stag* (also known as *I Hunt for the Golden Stag*). She claimed that her manuscript was submitted to Penguin India, where Mr. David Davidar was a senior executive, and that he had access to it, leading to infringement of her copyright. She also sought accounts of profits.

Mr. David Davidar denied any access to or knowledge of the manuscript and filed a suit seeking restraint against groundless threats and defamatory statements accusing him of plagiarism, along with damages.

After a full trial and detailed comparison of both works, **Hon’ble Mr. Justice Tejas Karia** held that while both books shared a common regional and historical backdrop of South India, the similarities were largely confined to unprotected ideas, themes, stock situations, cultural elements, and “scenes a faire” typical of the genre of multi-generational family sagas. The Court found no substantial copying of original expression or protectable literary features.

The Court observed that copyright does not extend to ideas, historical facts, or commonplace tropes, relying on the well-settled principle laid down by the Supreme Court in *R.G. Anand v. Delux Films*. It further noted insufficient proof of access to the full manuscript by Mr. David Davidar. Consequently, Ms. Sivasundari Bose’s suit was dismissed. In the connected suit, relief was granted to Mr. David Davidar against baseless threats and defamatory allegations.

**Case Details:**  

**Title:** Mr. David Davidar Vs Ms. Sivasundari Bose 

**Date of Judgment:** 30 April 2026  

**Court:** High Court of Delhi  

**Judge:** Hon’ble Mr. Justice Tejas Karia  

**Case Nos.:** CS(COMM) 706/2018 & CS(COMM) 581/2024

**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 #Copyright #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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**Literary Copyright Clash: Delhi High Court Rejects Plagiarism Allegations in David Davidar – Sivasundari Bose Dispute**

### Introduction

In a significant ruling on literary copyright and defamation, the Delhi High Court resolved a long-standing dispute between two authors over claims that one novel copied substantial parts from an unpublished manuscript. Mr. David Davidar, a renowned novelist and former publisher, faced accusations from Ms. Sivasundari Bose that his acclaimed book *The House of the Blue Mangoes* was derived from her manuscript *Golden Stag* (initially titled *I Hunt for the Golden Stag*). The court examined whether similarities in themes, characters, settings, and expressions amounted to copyright infringement or mere coincidence in a shared cultural and historical backdrop. It also addressed counter-claims of groundless threats and defamation. The judgment underscores the thin line between protected original expression and unprotected ideas in creative writing.

### Factual Background

Mr. David Davidar is a well-known Indian author and the founding publisher of Penguin Books in India. His novel *The House of the Blue Mangoes*, published in 2002, is a multi-generational family saga set in South India, spanning from the late 19th century to 1947. It draws on historical events, social changes, and family dynamics in a fictional village, with characters partly inspired by aspects of his own family history, though presented as entirely fictional.

Ms. Sivasundari Bose authored an unpublished manuscript titled *Golden Stag*, which also explored South Indian life across generations, focusing on Tamil Nadu’s social fabric before and after independence. She claimed to have submitted sample pages and later a full manuscript (on floppy disk) to Penguin India in the 1990s and early 2000s, where Mr. David Davidar served as a senior executive. She alleged that after rejection or non-response, Mr. David Davidar accessed her work and substantially copied its plot, characters, scenes, descriptions, and cultural elements into his published book. She discovered the alleged similarities shortly after his book’s release and later published her own work.

Mr. David Davidar denied any knowledge of or access to her manuscript. He maintained that his book was independently conceived and written over many years, beginning in the late 1980s, with multiple drafts completed well before her submissions. He argued that any overlaps stemmed from common historical facts, regional customs, stock literary devices common to family sagas, and shared cultural milieu, none of which are protectable by copyright.

### Procedural Background

Mr. David Davidar filed the first suit seeking to restrain Ms. Sivasundari Bose from issuing baseless threats of copyright infringement, making defamatory statements, and claiming damages. Ms. Sivasundari Bose filed a separate suit seeking a declaration that Mr. David Davidar’s book infringed her copyright, along with accounts of profits and other reliefs. The two suits were consolidated for trial. Issues were framed covering copyright infringement, access to the manuscript, breach of trust, limitation, defamation, and entitlement to injunctions or damages. Both sides led evidence, including witness testimonies and cross-examinations. The matter was heard at length before the court delivered its detailed judgment.

### Dispute

The central dispute revolved around whether Mr. David Davidar had access to Ms. Sivasundari Bose’s manuscript and whether his novel copied protected elements of her work in a substantial manner. Ms. Sivasundari Bose pointed to numerous alleged similarities in scenes, character roles, descriptions of local customs, festivals, landscapes, family dynamics, and specific phrases or imagery. She argued these could not be coincidental, especially given the timing and her submissions to the publisher he headed.

Mr. David Davidar countered that no direct access existed, as unsolicited manuscripts were handled by junior editors, and only sample pages were submitted in one instance. He emphasized fundamental differences in plot structure, depth of historical treatment, character development, narrative style, and overall expression. He viewed her claims as motivated by resentment over manuscript rejections and an attempt to gain publicity or monetary benefit by targeting a successful author. He further alleged her accusations and public statements damaged his reputation as a writer, amounting to defamation.

### Reasoning

The court meticulously compared the two works and found that while both dealt with similar regional and historical settings in South India, the similarities were largely at the level of ideas, themes, stock situations, and common cultural elements rather than original expression. Copyright law protects the specific way an author expresses ideas—not the ideas, historical facts, or genre conventions themselves. Many overlapping elements were “scenes a faire” — inevitable or commonplace in stories set in that time and place — such as descriptions of festivals, family hierarchies, local customs, or natural landscapes.

The court noted the absence of convincing proof of access. Evidence showed that only limited sample pages reached Penguin India, not the full manuscript on Mr. David Davidar’s desk in a manner that would enable wholesale copying. His book’s development timeline, supported by drafts, interviews, and editing records, predated or ran parallel to her submissions in a way that made systematic copying implausible. Minor phrase similarities were either coincidental, drawn from public domain material, or expressed differently in context and treatment.

On defamation, the court found that unsubstantiated public accusations of plagiarism against a prominent literary figure, especially when pursued aggressively despite weak evidence, could harm reputation. However, the primary focus remained on the copyright claim, which failed due to lack of substantial copying of protectable expression. The delay in raising formal claims also weakened Ms. Sivasundari Bose’s position on limitation grounds.

### Judgements with Complete Citation and Their Context Discussed

The court relied on established Indian precedents to distinguish between unprotected ideas and protected expression. It referred to the landmark Supreme Court decision in *R.G. Anand v. M/s Delux Films and Others* ((1978) 4 SCC 118). In that case, the Supreme Court clarified that there is no copyright in an idea, theme, plot, or historical facts. Protection arises only if there is substantial similarity in the mode of expression, viewed from the perspective of an average reader. The court in the present matter applied this test and found no such substantial copying.

It also discussed principles from *Mansoob Haider v. Yashraj Films* ((2014) 59 PTC 292) and *Shivani Tibrewala v. Rajat Mukerjee and Ors.* ((2020) 81 PTC 329), which stress the importance of proving access to the original work before inferring copying, particularly raising the evidentiary burden when access is not clearly established.

Additional references included cases on defamation and reputation harm in literary contexts, reinforcing that false accusations of plagiarism can injure an author’s professional standing.

### Final Decision of Court

The Delhi High Court dismissed Ms. Sivasundari Bose’s suit claiming copyright infringement, breach of trust, and related reliefs. It found no infringement and held that her claims were not substantiated. In Mr. David Davidar’s suit, the court granted relief restraining groundless threats and defamatory statements, while also awarding damages for the harm caused to his reputation. The judgment clarified that the two works, though sharing a broad cultural canvas, remained distinct creative expressions.

### Point of Law Settled in the Case

This decision reinforces that copyright in literary works protects original expression and not underlying ideas, historical settings, cultural themes, or commonplace tropes common to a genre or region. Mere similarities in stock elements or “scenes a faire” do not constitute infringement. It also highlights the critical role of proving access to the allegedly infringed work and the dangers of unsubstantiated plagiarism claims that may themselves invite liability for defamation. For aspiring authors and publishers, it serves as a reminder that independent creation in shared cultural spaces is protected, while malicious or reckless accusations can lead to legal consequences. The ruling promotes a balanced approach that encourages creativity without stifling it through overbroad claims.

**Case Detail**  

**Title:** MR. DAVID DAVIDAR versus MS. SIVASUNDARI BOSE & Connected Suit (SIVASUNDARI BOSE & ANR. versus DAVID DAVIDAR)  

**Date of Order:** 30th April 2026  

**Case Number:** CS(COMM) 706/2018 & CS(COMM) 581/2024  

**Neutral Citation:** 2026:DHC:13666 (as reflected in court records)  

**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

**Suggested Titles for Legal Journal:** Delhi High Court Dismisses Copyright Infringement Claim in Literary Works Dispute, Idea versus Expression in Copyright Law Clarified in Author Plagiarism Suit, Protection Against Groundless Plagiarism Allegations Upheld by Delhi High Court

**Suitable Tags:** copyright infringement, literary works, idea expression dichotomy, defamation in authorship, Delhi High Court, plagiarism allegations, multi generational saga, access to manuscript, RG Anand principle

**Headnote of Article:** Delhi High Court rejects copyright infringement and breach of trust claims by author alleging her unpublished manuscript was copied into a published family saga novel, holding that similarities in themes, settings and stock elements do not amount to infringement absent substantial copying of original expression, while granting relief against groundless threats and defamation.

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

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

**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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