Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries

Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries:Minor variation or modification of an existing method does not qualify as an invention

Case Title: Biswanath Prasad Radhey Shyam Vs. Hindustan Metal Industries

Date of Order: December 13, 1978

Case No.: Civil Appeal Nos. 1630-1631 of 1969

Neutral Citation: AIR 1982 SUPREME COURT 1444, 1979 ALL. L. J. 290, (1979) 2 SCR 757 (SC), 1979 (2) SCC 511, (1979) 1 SCWR 337

Name of Court: Supreme Court of India

Name of Judge: Hon'ble Justice Shri Sarkaria

Introduction:

This case deals with the fundamental principles of patent law, particularly the requirement of novelty and inventive step. The Supreme Court of India examined whether the method of manufacturing utensils patented by Hindustan Metal Industries was truly novel and involved an inventive step or was merely a modification of an existing method. The case serves as a significant precedent on the revocation of patents that lack originality and inventive merit.

Factual Background:

Both the appellant, Biswanath Prasad Radhey Shyam, and the respondent, Hindustan Metal Industries, were engaged in the business of manufacturing utensils in Mirzapur. In 1951, a partner of Hindustan Metal Industries claimed to have invented a method and device for manufacturing utensils that introduced improvements in safety, convenience, speed, and finish. The conventional method posed a risk as utensils would often fly off the headstock. The respondent filed for a patent, which was granted with effect from December 13, 1951. Subsequently, upon learning that the appellant was using the same method, Hindustan Metal Industries served a notice and later filed a suit for a permanent injunction against Biswanath Prasad Radhey Shyam to restrain them from infringing the patented method.

Detailed Description of Subject Matter of the Patent:

The patented invention related to "a method of mounting and holding metallic utensils on a lathe for turning before polishing" [It was a process Patent]. The primary components of the invention included a shaft or spindle carrying an adapter to hold the utensil, a pressure spindle that applied force to keep the utensil in place, and a bracket for support. The patent specifications described the method as a safer alternative to conventional techniques, which required using adhesives or direct chuck attachment that posed a risk of utensils detaching during the turning process.

Procedural Background:

Hindustan Metal Industries filed a suit for a permanent injunction and damages against the appellant for allegedly infringing its patented method. The appellant denied the claims and filed a counterclaim under Section 26 of the Indian Patent and Designs Act, 1911, seeking revocation of the patent on the grounds that the method lacked novelty and did not involve any inventive step. The case was transferred to the High Court, where a Single Judge dismissed the plaintiff’s suit and revoked the patent. On appeal, a Division Bench of the High Court reversed the decision and upheld the validity of the patent. The appellant then challenged the High Court’s decision before the Supreme Court.

Issues Involved in the Case:

The key issues before the Supreme Court were whether the patented method constituted a manner of new manufacture or improvement and whether it involved an inventive step in light of prior knowledge and practices?

Submission of Parties:

The appellant argued that the method patented by the respondent was neither a new manufacture nor an improvement but merely a minor modification of existing techniques. They contended that similar methods had been in use long before the patent date, and the respondent’s alleged invention did not involve any significant ingenuity or innovation.

The respondent countered that the method was novel as it introduced a safer and more efficient way of manufacturing utensils. They contended that the method was not publicly known before the date of the patent and involved an inventive step that justified the grant of the patent.

Discussion on Judgments and Citations:

The Supreme Court relied on several precedents to determine the validity of the patent. The Court referred to Rickman v. Thierry (1896) 14 Pat. Ca. 105, which emphasized that novelty in application alone is not sufficient; an invention must involve ingenuity in its mode of application. The Court also cited Blackey v. Latham (1888) 6 Pat. Ca. 184, where it was held that an invention must demonstrate a level of originality beyond common craftsmanship.

Additionally, the Court referred to Harwood v. Great Northern Railway Co. (1864-65) XI HLC 654, where it was established that a mere adaptation of an old contrivance without novelty or an inventive step does not warrant a patent. Another key case cited was Rado v. John Tye & Sons Ltd., 1967 RPC 297, which provided the test for obviousness—whether the alleged discovery lies outside the expected knowledge of a skilled craftsman.

The Detailed Analysis of Court:

The Supreme Court held that "for an invention to be patentable, it must satisfy two key criteria: it must be new, and it must involve an inventive step". The Court found that the respondent’s method was merely an application of an old technique with minor modifications.

The Court observed that prior to the patent, the technique of using a lathe with a headstock and tailstock for shaping utensils was already in common use. The addition of a pressure spindle, which was claimed as an innovation, was found to be a minor improvement rather than an invention. The Court also noted that the respondent’s own claims did not assert any significant novelty, as they stated that the pressure spindle could be either pointed or blunt, which indicated that no substantial innovation had been made.examined the definition of manufacture and held that "for a process or method to qualify as a manner of new manufacture, it must lead to a distinct and substantial improvement over existing methods". The respondent’s method failed this test as it was merely an adaptation of pre-existing techniques.

Regarding novelty, the Court reiterated that prior public knowledge or use of the patented method before the filing date of the patent negates its novelty. The evidence presented showed that similar manufacturing processes had been in use before the respondent’s patent, making the invention unpatentable.

On the issue of inventive step, the Court applied the test of whether a person skilled in the relevant field would consider the invention an obvious extension of prior knowledge. Since the patented method did not demonstrate ingenuity beyond the common skill of a craftsman, it lacked an inventive step.

The Court also provided guidance on how a patent specification should be interpreted. It emphasized that the correct way to construe a patent is to first read the description of the invention to understand its scope and purpose, and then examine the claims to determine the extent of the exclusive right being claimed. The patentee cannot claim more than what has been specifically described in the complete specification.

Final Decision:

The Supreme Court allowed the appeal, set aside the judgment of the High Court, and restored the order of the Single Judge revoking the patent. The Court held that the patented method did not involve an inventive step and was merely a workshop improvement that did not warrant the grant of a patent. Consequently, the patent was invalidated.

Law Settled in the Case:

A patent is granted only for an invention that demonstrates novelty and an inventive step. Minor variation or modification of an existing method does not qualify as an invention. A combination of old elements must result in a new product or a significant improvement to be patentable. Grant of a patent does not guarantee its validity; it can be challenged and revoked if it lacks novelty or an inventive step. The test for obviousness requires determining whether a skilled craftsman, without knowledge of the patented invention, would have arrived at the same solution. If the alleged invention was publicly known or used before the date of the patent, it lacks novelty and cannot be patented.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Disposafe Health & Life Limited & Ors. vs. Rajiv Nath & Anr.

Portmanteau words could be protected as trademarks

Case Title: Disposafe Health & Life Limited & Ors. vs. Rajiv Nath & Anr.

Date of Order: February 28, 2025

Case Number: FAO(OS)(COMM) 272/2018

Neutral Citation: 2025:DHC:1326:DB

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Prateek Jalan

Brief Facts of the Case:

The dispute pertains to trademark rights over the name “DISPOSAFE.” The appellants, Disposafe Health & Life Limited, claimed prior use of the trademark “DISPOSAFE” for disposable medical devices. They alleged that the respondents, Rajiv Nath & Anr., attempted to register and use the same mark, leading to confusion and dilution of their brand identity. The learned Single Judge initially refused to grant an injunction in favor of the appellants and instead granted an injunction against them, preventing them from using the "DISPOCANN" and other "DISPO" formative marks. The appellants challenged this decision before the Division Bench.

Brief Issues:

The primary issue was whether the appellants were entitled to an injunction against the respondents to restrain them from using the “DISPOSAFE” trademark. Another issue was whether the respondents had any legitimate claim over the mark or if their use constituted passing off.

Reasoning of the Court:

The Division Bench observed that the learned Single Judge failed to consider the appellants' claim for an injunction against the respondents while focusing on the respondents’ claim. The court found that the appellants had provided evidence of prior use of the “DISPOSAFE” trademark, including incorporation certificates, sales figures, invoices, and product packaging. The respondents, on the other hand, had not commenced marketing under the name "DISPOSAFE" and their claim of prior use was found to be weak. The court emphasized that portmanteau words could be protected as trademarks and that the respondents’ application for registration of “DISPOSAFE” indicated an acknowledgment of its distinctiveness.

Decision:

The Division Bench allowed the appeal, set aside the order of the learned Single Judge, and granted an injunction restraining the respondents from using the trademark “DISPOSAFE” or any deceptively similar mark in relation to medical disposable devices until the disposal of the suit.

Law Point Settled:

An injunction can be granted in favor of a party that establishes prior use of a trademark, even if the mark consists of a combination of descriptive elements. Portmanteau words can be protected as trademarks if they acquire distinctiveness. A court must ensure that both parties' claims are fairly considered when granting or denying injunctions. A party that has not commenced marketing under a disputed trademark may not claim rights superior to an established user.

Adyar Gate Hotels Limited Vs. ITC Limited

Role of Delay in Grant of Ex Parte Ad Interim Injunction

Case Title: Adyar Gate Hotels Limited Vs. ITC Limited & Anr.

Date of Order: February 24, 2025

Case Number: FAO(OS) (COMM) 32/2025

Neutral Citation: 2025:DHC:1277:DB

Name of Court: High Court of Delhi at New Delhi

Name of Judges: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

Brief Facts of the Case:

The dispute arises from the use of the trademark “Dakshin” in the restaurant business. The appellant, Adyar Gate Hotels Limited, entered into an agreement in 1985 with ITC Limited, under which ITC operated a hotel under the name “Welcomgroup Park Sheraton.” The appellant claimed that it conceived and planned the “Dakshin” restaurant in 1989. However, after the agreement between the parties lapsed in 2015, ITC Limited filed a suit claiming exclusive rights over the “Dakshin” trademark, seeking to restrain Adyar Gate Hotels Limited from using the mark. The Single Judge passed an ex-parte ad-interim injunction in favor of ITC Limited, restraining the appellant from using the mark.

Brief Issues:

The first issue was whether the Single Judge was justified in granting an ex-parte ad-interim injunction without notice. The second issue was whether the appellant, having used the mark independently since 2015, had acquired rights to use it. The third issue was whether ITC Limited, as the registered owner of the “Dakshin” trademark, had an exclusive right over its use. The fourth issue was whether the territorial jurisdiction of Delhi courts was valid for this suit.

Reasoning of the Court:

The Division Bench observed that while a Single Judge has discretion to grant an ex-parte injunction, it must be exercised within the framework of Order XXXIX Rule 3 of the CPC, which requires that notice should generally be given unless delay would defeat the object of the injunction. The court noted that the appellant had been using the mark since 2015, including in collaboration with a competitor of ITC. It also observed that ITC had not previously challenged this usage. Additionally, the appellant had its own trademark registration, which ITC had not challenged. Furthermore, the appellant did not receive proper notice of the suit, which ITC had only sent via email, leading to an unfair ex-parte order.

The court found that the Single Judge failed to consider these crucial factors before issuing an ex-parte injunction and that the order was unjustified under the circumstances.

Decision:

The Division Bench set aside the ex-parte ad-interim injunction issued by the Single Judge and directed the appellant to file its response within one week. The court instructed that the interim injunction application be heard on its merits after due process.

Law Point Settled:

Ex-parte ad-interim injunctions should be granted only in exceptional cases where delay would defeat justice, as per Order XXXIX Rule 3 CPC. A party that has been using a trademark for a significant period should be given an opportunity to present its case before being restrained. The burden lies on the plaintiff (ITC) to justify the urgency for an ex-parte injunction rather than proceeding directly with such relief. Proper service and notice must be ensured before obtaining an injunction.

Christian Louboutin SAS Vs. Abubaker

Christian Louboutin SAS Vs. Abubaker :Where a Single Judge or Division Bench finds prior rulings incorrect, it must refer the matter to a larger Bench

Case Title: Christian Louboutin SAS vs. Abubaker & Ors.

Date of Order: April 11, 2019

Case No.: RFA (OS)(COMM) 13/2018 & CM 29064/2018

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon'ble Justice S. Muralidhar and Justice I.S. Mehta

Introduction:

This case highlights an important legal principle concerning judicial discipline and the necessity for consistency in judicial rulings. 

The Division Bench of the Delhi High Court, while adjudicating upon a trademark infringement dispute, emphasized that a court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement. 

The case arose when a Single Judge dismissed a trademark infringement suit at the initial stage without issuing summons, despite prior co-ordinate bench rulings that recognized the validity of the plaintiff's trademark. The appellate court set aside the order, reaffirming that judicial consistency must be maintained, and any deviation from settled law requires reference to a larger bench.

Factual Background:

Christian Louboutin SAS, a French company, owns the "RED SOLE" trademark, which is internationally recognized. The plaintiff's trademark is registered under Class 25, covering shoes (except orthopedic footwear), with the limitation that it applies to the specific shade of red (Pantone No. 18.1663TP) on the outsole of the shoe. The plaintiff conducted a market survey in April 2018 and discovered that the defendants were selling ladies' shoes with a similar red sole, thereby infringing upon its trademark. A private investigator's report indicated that the defendants were engaged in counterfeiting activities. The plaintiff argued that its trademark had trans-border reputation and was widely known in India even before its formal launch in the country.

Procedural Background:

The plaintiff filed a commercial suit (CS (COMM) No. 890 of 2018) seeking a permanent injunction against the defendants for trademark infringement, passing off, unfair competition, dilution, and tarnishment. The plaintiff also filed an interim injunction application under Order XXXIX Rules 1 and 2 CPC to restrain the defendants from manufacturing and selling footwear bearing the "RED SOLE" trademark. A separate application was filed for appointing a Local Commissioner to visit the defendants' premises and seize the infringing goods. The Single Judge, after hearing the plaintiff, reserved orders and subsequently dismissed the suit on May 25, 2018, without issuing summons to the defendants.

Issues Involved in the Case:

Whether a commercial suit seeking a permanent injunction against trademark infringement can be dismissed at the first hearing under Order XII Rule 6 CPC. Whether the learned Single Judge was justified in holding that a single color cannot be registered as a trademark. Whether the learned Single Judge was correct in disagreeing with prior co-ordinate bench judgments without referring the matter to a larger bench.

Submission of Parties:

The plaintiff, Christian Louboutin SAS, argued that the "RED SOLE" trademark is a registered device mark with distinctive character and acquired reputation. The defendants' sale of red-soled shoes constitutes infringement, passing off, and unfair competition. The Single Judge erred in dismissing the suit without issuing summons, violating principles of natural justice. The earlier judgments in Deere & Company v. Malkit Singh and Christian Louboutin SAS v. Pawan Kumar upheld the protection of single-color trademarks.

The defendants, Abubaker & Ors., contended that a single color cannot be registered as a trademark under the Trade Marks Act, 1999. Section 30(2)(a) of the Act allows the use of a registered trademark in a descriptive manner. The plaintiff cannot claim exclusivity over the red color in footwear. The dismissal of the suit was justified since no valid cause of action was made out.

Discussion on Judgments and Citations:

The Single Judge dismissed the suit relying on Section 2(m) and 2(zb) of the Trade Marks Act, holding that a single color does not qualify as a trademark. The judgment of the Single Judge was inconsistent with Deere & Company v. Malkit Singh (April 23, 2018), which upheld single color trademark protection, and Christian Louboutin SAS v. Pawan Kumar (December 12, 2017), which recognized "RED SOLE" as a well-known trademark. The Single Judge referred to Padma Sundara Rao v. State of Tamil Nadu (2002) 3 SCC 533 and N. Bhargavan Pillai v. State of Kerala (2004) 13 SCC 217 but failed to consider the legal presumption in favor of registered trademarks. The Division Bench held that the learned Single Judge should have referred the matter to a larger bench instead of disregarding binding precedent.

Reasoning and Analysis of the Judge:

A commercial suit for trademark infringement cannot be dismissed under Order XII Rule 6 CPC at the first hearing without the defendants entering appearance. The plaintiff's registered trademark enjoys a presumption of validity under Section 31 of the Trade Marks Act, 1999. Section 30(2)(a) provides a defense to infringement, but it must be raised by the defendants and cannot be used by the court suo moto. The earlier judgments in favor of single-color trademarks should have been followed or referred to a larger bench for reconsideration. Dismissing a suit without issuing summons was improper and contrary to the principles of natural justice. A court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement.

The Division Bench specifically emphasized that the doctrine of stare decisis requires lower and co-ordinate benches to adhere to settled legal principles unless referred to a larger bench. The court cited Mahadeolal Kanodia v. Administrator General of West Bengal AIR 1960 SC 936, which mandates that where a Single Judge or Division Bench finds prior rulings incorrect, it must refer the matter to a larger bench rather than overriding established precedents. 

In this case, the Single Judge failed to follow the legal precedents laid down in earlier judgments, leading to a miscarriage of justice and necessitating intervention by the appellate court.

Final Decision:

The Division Bench set aside the order of the Single Judge. The suit (CS (COMM) No. 890 of 2018) was restored for reconsideration. The case was remanded to the learned Single Judge for adjudication after issuing summons to the defendants. The court clarified that it had not expressed any opinion on the merits of the case and directed the matter to be heard afresh.

Law Settled in the Case:

A commercial suit for trademark infringement cannot be dismissed under Order XII Rule 6 CPC at the first hearing without the defendants entering appearance. The presumption of validity of a registered trademark under Section 31 of the Trade Marks Act must be given due consideration. 

A court cannot disregard binding precedents from co-ordinate benches and must refer matters to a larger bench in case of disagreement. Section 30(2)(a) of the Trade Marks Act is a defense that must be raised by the defendants, not invoked suo moto by the court. 

Dismissing a suit without issuing summons violates principles of natural justice and is contrary to procedural law.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Zee Entertainment Enterprises Ltd. Vs. Saregama India Ltd.

Case Title: Zee Entertainment Enterprises Ltd. Vs. Saregama India Ltd.

Date of Order: 28th February, 2025

Case Number: CS(COMM) 1674/2016

Neutral Citation:2025:DHC:1316

Court Name: Delhi High Court

Hon'ble Judge: Justice Amit Bansal

Brief Facts of the Case:

The plaintiff, Zee Entertainment Enterprises Ltd., filed a suit seeking a permanent injunction restraining the defendant, Saregama India Ltd., from infringing its copyright in sound recordings incorporated in 29 cinematograph films. The plaintiff attempted to introduce additional documents and an additional affidavit of evidence after eight years of litigation, seeking to lead secondary evidence for proving its ownership of the disputed works.

Issues Before the Court:

Whether the plaintiff should be granted leave under Order XI Rule 1(5) of the CPC to place additional documents on record at such a belated stage. Whether the plaintiff had made out a case for leading secondary evidence under Sections 65 and 66 of the Indian Evidence Act, 1872. Whether the plaintiff’s delay in filing these documents prejudiced the defendant's case.

Court’s Reasoning:

The plaintiff was aware since 2017 that it only had copies of the documents, not the originals. The need to lead secondary evidence arose in March 2019, when key documents were de-exhibited. Despite this, the plaintiff waited until November 2024 to send letters requesting the original documents and then filed an application to introduce them. The court found this delay inexcusable and held that the plaintiff had failed to exercise due diligence.

Under Section 65 of the Indian Evidence Act, a party seeking to lead secondary evidence must prove why the originals are unavailable. The plaintiff did not establish that the originals were lost or destroyed. The court referred to Jai Prakash Aggarwal v. State & Ors., where it was held that secondary evidence cannot be permitted unless a proper foundation is laid.

The plaintiff's application was seen as an attempt to improve its case by introducing new evidence at the last moment. The delay had already prolonged the trial since 2016, which was against the Commercial Courts Act, 2015, which mandates expeditious disposal. The court cited Nitin Gupta v. Texmaco Infrastructure & Holding Ltd., emphasizing the need to enforce strict timelines in commercial suits.

Decision:

The application was dismissed with costs of ₹25,000, payable by the plaintiff to the defendant within two weeks. The court refused to allow the plaintiff to place additional documents on record or introduce an additional affidavit of evidence. 

Law Point Settled:

Strict compliance with Order XI Rule 1(5) CPC in commercial suits—parties cannot introduce additional documents at a belated stage without valid justification. Secondary evidence under Sections 65 and 66 of the Indian Evidence Act requires a clear foundation proving the loss or unavailability of the originals. Delays in commercial litigation that are caused by a party's lack of diligence will not be condoned, as they violate the objective of the Commercial Courts Act, 2015, to ensure speedy disposal of cases.

National Insurance Co. Ltd Vs Pranay Sethi

National Insurance Co. Ltd Vs Pranay Sethi: In case of conflicting judgments by Benches of equal strength, the earlier decision must be followed.

Case Title: National Insurance Co. Ltd Vs Pranay Sethi

Date of Order: 31 October 2017

Case No.: Special Leave Petition (Civil) No. 25590 of 2014

Neutral Citation: AIR 2017 SUPREME COURT 5157

Name of Court: Supreme Court of India

Name of Judge: Dipak Misra, Ashok Bhushan, D.Y. Chandrachud, A.M. Khanwilkar, A.K. Sikri, H.J.

Introduction:

The case of National Insurance Co. Ltd vs Pranay Sethi is a landmark judgment in motor accident compensation claims under the Motor Vehicles Act, 1988. It addresses the computation of compensation, particularly regarding future prospects, selection of multipliers, and compensation under conventional heads. The judgment provides much-needed clarity and uniformity in awarding just compensation.

Factual Background:

The case arose from a motor vehicle accident leading to the death of an individual. The claimants, being the legal heirs of the deceased, sought compensation under Section 166 of the Motor Vehicles Act, 1988. The controversy revolved around the determination of future prospects for the deceased, particularly when the deceased was self-employed or on a fixed salary. The issue was whether a certain percentage should be added to the actual income to account for future earnings growth.

Procedural Background:

The claimants initially filed for compensation before the Motor Accidents Claims Tribunal (MACT), which awarded compensation based on previous Supreme Court decisions. The insurance company challenged this before the High Court, which upheld the Tribunal's award. Dissatisfied with the decision, the insurance company appealed to the Supreme Court, leading to the present case.

Issues Involved in the Case:

Whether the multiplier specified in the Second Schedule of the Motor Vehicles Act should be strictly applied in all cases. Whether future prospects should be considered while determining the multiplicand in motor accident compensation claims. Whether self-employed individuals or those with a fixed salary should be granted an addition to their income for future prospects. The quantum of compensation under conventional heads such as loss of estate, loss of consortium, and funeral expenses. How conflicting judgments on the issue of future prospects should be resolved. Whether, in the case of conflicting opinions, the earlier judgment must be followed.

Submission of Parties:

The petitioner, National Insurance Co. Ltd, argued that the claimants were not entitled to any future prospects if the deceased was self-employed or on a fixed salary. They contended that any addition would lead to speculation and over-compensation. The respondents, legal heirs of Pranay Sethi, contended that future prospects should be included to ensure just compensation, as the deceased would have likely earned more in the future. They argued that denying future prospects to self-employed persons was discriminatory.

Discussion on Judgments Cited:

Sarla Verma v. Delhi Transport Corporation (2009) 6 SCC 121 laid down guidelines for selecting the multiplier based on the age of the deceased. Reshma Kumari v. Madan Mohan (2013) 9 SCC 65 emphasized the application of a structured formula for compensation. Rajesh v. Rajbir Singh (2013) 9 SCC 54 allowed for future prospects in all cases, including self-employed persons. Santosh Devi v. National Insurance Co. Ltd (2012) 6 SCC 421 suggested that even self-employed persons may have increased earnings over time. Trilok Chandra v. State of U.P. (1996) 4 SCC 362 addressed issues in the Second Schedule of the Motor Vehicles Act regarding multipliers.

How the Court Dealt with Conflicting Judgments?

The Supreme Court acknowledged the conflict between the rulings in Sarla Verma, Reshma Kumari, Rajesh, and Santosh Devi regarding the issue of future prospects. It clarified that Sarla Verma and Reshma Kumari were binding precedents and that the decision in Rajesh had erred in expanding future prospects indiscriminately. The Court held that future prospects should be standardized, with specific percentages assigned based on the age of the deceased. It resolved the conflicting judgments by setting uniform guidelines and emphasizing judicial discipline, ensuring consistency in future motor accident compensation cases.

How the Court Returned the Finding That in Case of Conflicting Opinions, the Earlier Judgment Must Be Followed:

The Supreme Court emphasized the principle of judicial discipline and adherence to precedent. It ruled that in cases of conflicting judgments by Benches of equal strength, the earlier judgment must be followed. The Court cited State of Bihar v. Kalika Kuer (2003) 5 SCC 448, which held that an earlier decision cannot be ignored by a later Bench of the same strength unless overruled by a larger Bench. The Court reaffirmed that the decisions in Sarla Verma and Reshma Kumari had already laid down settled law, and Rajesh had incorrectly deviated from these principles. Hence, Sarla Verma and Reshma Kumari were followed as binding precedents, ensuring consistency in judicial rulings.

Reasoning and Analysis of the Judge:

The Supreme Court clarified that future prospects should be considered even for self-employed individuals. The Court held that income should be increased by 40% if the deceased was below 40 years, 25% if between 40 and 50 years, and 10% if between 50 and 60 years. A structured approach was recommended to ensure uniformity in awarding compensation. The Court ruled that loss of estate, loss of consortium, and funeral expenses should be awarded at Rs. 15,000, Rs. 40,000, and Rs. 15,000 respectively, with a 10% increase every three years.

Final Decision:

The Supreme Court affirmed the inclusion of future prospects in compensation calculations and provided a structured framework for computing just compensation. It established specific percentages for different age groups and revised the compensation under conventional heads.

Key Takeaways and Law Settled:

Future prospects must be considered for both salaried and self-employed individuals. Standardized future prospects additions: 40% for those below 40 years, 25% for those between 40-50 years, and 10% for those between 50-60 years. Standardized deductions for personal and living expenses must follow Sarla Verma guidelines. Compensation under conventional heads must be periodically revised, increasing by 10% every three years. The age of the deceased is the basis for applying the multiplier. In case of conflicting judgments by Benches of equal strength, the earlier decision must be followed. The decision ensures uniformity and fairness in compensation awarded under the Motor Vehicles Act.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

UPL Limited Vs. Astec Life Sciences Limited

Case Title:UPL Limited Vs. Astec Life Sciences Limited & Anr

Date of Order:20th February 2025

Case Number:IPDPTA/2/2024

Name of the Court:High Court at Calcutta

Name of the Hon’ble Judge:Hon’ble Justice Shri Ravi Krishan Kapur

Brief Facts:

UPL Limited filed an appeal against an order dated 9th March 2024, which had allowed a pre-grant opposition under Section 25(1) of the Patents Act, 1970.

The appellant (UPL Limited) contended that the impugned order suffered from gross violations of natural justice and fairness.

The primary allegation was that the order verbatim reproduced portions of the Note of Submissions filed by the private respondent, including typographical errors and page numbers, suggesting a lack of independent application of mind by the adjudicatory authority.

Issue:

The issue before the court was whether the impugned order was legally sustainable or if it should be set aside for violation of due process.

.

Reasoning of the Court:

Violation of Natural Justice:The court noted that the impugned order was passed without proper reasoning and failed to demonstrate independent application of mind. The order merely replicated the submissions of the respondent, including errors, which rendered it a "travesty of justice."

Role of the Controller under the Patents Act:

The court emphasized that decisions under Sections 14, 15, and 25(1) of the Patents Act must be made with due consideration.The Controller must properly explain objections and allow applicants an opportunity to respond. The First Examination Report (FER) and Second Examination Report (SER) should be communicated clearly to the applicant.

Requirement of Reasoned Orders:

Orders must contain reasons and justify conclusions rather than merely reproducing submissions.Mechanical reproduction of submissions without critical analysis is a violation of natural justice and due process.

Decision of the Court:

The impugned order was set aside as it was found to be unsustainable in law.The matter was remanded to a different officer for fresh adjudication within eight weeks from the date of communication of the order.The court clarified that it had not adjudicated on the merits of the case and left all points open for the Controller to decide.

Law Point Settled in this case:

Patent opposition proceedings must adhere to the principles of natural justice.Orders under the Patents Act must be reasoned and reflect independent application of mind.A mechanical reproduction of submissions, without critical evaluation, renders an order legally unsustainable.The adjudicatory process in patent matters must be fair, transparent, and conducted within the prescribed timelines.

Saranya Parthiban Vs. Registrar of Trade Marks

Case Title: Saranya Parthiban Vs. Registrar of Trade Marks

Date of Order: 27.02.2025

Case Number: C.M.A. (TM) No.4 of 2024

Name of Court: High Court of Judicature at Madras

Hon’ble Judge: Mr. Justice Senthilkumar Ramamoorthy

Brief Facts & Issue:

The appellant, Saranya Parthiban, applied for registration of the word mark "RAW SKINN" under Class 3 for various cosmetic and skincare products.

The application (No. 5150499) was filed on 27.09.2021, asserting use since 17.08.2021.

The Registrar of Trade Marks rejected the application on 19.12.2023, citing Section 9(1)(b) of the Trade Marks Act, 1999, stating that the mark was descriptive and merely designated the characteristics of the goods.

The appellant argued that the mark was arbitrary or suggestive, not descriptive, and relied on tax invoices to show usage.

The respondent contended that "RAW SKINN" was intended for products used on human skin and was therefore descriptive.

Reasoning:

The High Court examined whether the mark "RAW SKINN" was descriptive or suggestive.

It noted that no conflicting mark was cited in the examination report.

The court held that trademark classification must be done in context with the goods it applies to.

While the mark was not purely arbitrary, the court found that it was suggestive rather than descriptive.

The Registrar’s order lacked proper reasoning, as it did not discuss or address the appellant’s contentions and supporting judgments.

Decision:

The impugned order dated 19.12.2023 was set aside.

The court directed that the trademark application proceed to advertisement.

It clarified that this decision would not bind any future opponents who might challenge the application.

Law Point Held:

A trademark cannot be rejected as descriptive without a detailed reasoning process considering its placement in the distinctiveness spectrum.

The suggestive nature of a mark, as opposed to descriptiveness, allows it to proceed for advertisement.

Failure to discuss applicant's contentions and provide a reasoned order can lead to judicial interference and setting aside of the rejection.

This case reinforces the principle that mere perception of descriptiveness is insufficient to reject a trademark; the Registrar must provide a well-reasoned order.

Navya Network Inc. Vs. Controller of Patents

Navya Network Inc. Vs. Controller of Patents:Mere refinement of known methods, such as ranking and scoring treatment options, does not establish an inventive step.

Case Title: Navya Network Inc. v. Controller of Patents

Date of Order: 27.02.2025

Case No.: CMA (PT) No.13 of 2024

Neutral Citation: 2025:MHC:538

Name of Court: High Court of Judicature at Madras

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

Introduction:

This case involves an appeal by Navya Network Inc. against the rejection of its patent application for an invention titled "Treatment Related Quantitative Decision Engine." The appeal was filed under Section 117A of the Patents Act, 1970, challenging the rejection order passed by the Controller of Patents and Designs on 13th March 2023. The key legal issues revolved around the assessment of novelty, inventive step, and exclusions under Section 3(k) of the Patents Act.

Factual Background:

Navya Network Inc. filed an Indian patent application (No.951/CHENP/2013) for a system and method aimed at facilitating medical treatment decisions through a computer-based quantitative decision engine. The invention involved patient data analysis, expert feedback incorporation, and ranking treatment options using scoring mechanisms.

The First Examination Report (FER) dated 21.11.2019 raised objections on multiple grounds, including lack of novelty, absence of inventive step, exclusion under Section 3(k) (computer programs and business methods), and lack of clarity under Section 10(5) of the Patents Act. The appellant submitted responses and amendments, leading to a final rejection in March 2023.

Procedural Background>

FER Issued (21.11.2019): Initial objections citing lack of novelty and inventive step. Response to FER (21.08.2020): Submission of amended claims addressing concerns. Hearing Notice (13.12.2021): Request for further clarifications from the appellant. Written Submissions (22.02.2022): Submission of 28 amended claims. Final Rejection (13.03.2023): Rejection on the grounds of lack of inventive step and ineligibility under Section 3(k). Appeal to High Court: Challenge to the rejection, leading to this judgment.

Issues Involved in the Case:

Whether the invention lacked novelty and an inventive step under Section 2(1)(j) and 2(1)(ja) of the Patents Act? Whether the invention was excluded under Section 3(k) as a computer program per se or a business method? Whether the rejection properly evaluated the role of expert input in the claimed system?

Appellant's Submissions:

The claims should not be rejected solely because they involve computer-executable instructions. The invention provides a technical effect by improving decision-making in medical treatment, which goes beyond a mere algorithm. The exclusion under Section 3(k) applies only if there is no technical effect; the present invention enhances the efficiency of treatment selection. Prior art references (D1, D2, and D3) cited by the Controller of Patents do not disclose or make obvious the claimed invention. The rejection was flawed in its identification of the Person Skilled in the Art (PSITA), as it should have included a medical expert. The Delhi High Court precedents in Microsoft Technology Licensing v. Assistant Controller of Patents and Designs and Open TV Inc. v. The Controller of Patents and Designs support the argument that technical improvements should be patentable.

Respondent's Submissions:

The invention lacks an inventive step as it merely combines known techniques from prior arts (D1, D2, and D3). The claimed method consists of known steps: collecting patient data, selecting treatment options, and ranking them, which are obvious extensions of prior arts. The addition of expert ranking does not confer a technical advance over existing technologies. The invention falls under the exclusion of Section 3(k) as a business method and computer program.

Discussion on Judgments Cited:

Microsoft Technology Licensing v. Assistant Controller of Patents and Designs (2023 SCC OnLine Del 2772): The Delhi High Court held that claims cannot be rejected solely because they involve algorithms if they result in a technical effect. This case was cited by the appellant to argue that its invention produces a technical effect in medical decision-making.

Open TV Inc. v. Controller of Patents and Designs (2023:DHC:3305): The court clarified that an invention is excluded as a business method only if it primarily facilitates business administration. The appellant used this to argue that their system improves medical decisions, not business operations.

Priya Randolph v. Deputy Controller of Patents (2023:MHC:5450): The Madras High Court in this case ruled that mere involvement of a computer does not make an invention ineligible under Section 3(k). The appellant relied on this case to assert that their invention was more than a mere computer program.

Reasoning and Analysis of Judge:

The court examined whether the claimed invention was obvious in light of prior arts (D1, D2, and D3). Prior art D3 disclosed similar treatment recommendation systems with patient interaction. Prior art D2 introduced ranking and scoring mechanisms for treatment options. Prior art D1 described hierarchical ranking of treatment choices based on patient preferences. Since all essential features of the claimed invention were already known, the combination was deemed obvious to a PSITA. The alleged improvement (expert grading) was not considered a technical advancement. The court concluded that the invention lacked an inventive step under Section 2(1)(ja) and dismissed the appeal without examining Section 3(k).

Final Decision:

The appeal was dismissed, and the rejection of the patent application was upheld. No costs were imposed.

Law Settled in this Case:

An invention must demonstrate a significant technical advance over prior arts to be patentable under Section 2(1)(ja). Mere refinement of known methods, such as ranking and scoring treatment options, does not establish an inventive step. A PSITA in medical and software fields would find a combination of known techniques obvious. The assessment of inventive step requires careful comparison with prior arts rather than reliance on technical effect arguments. If all features of a claimed invention are disclosed or suggested by prior arts, it lacks patentability.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

K. Laxmanan vs. Thekkayil Padmini

K. Laxmanan vs. Thekkayil Padmini & Ors.:Non-filing of a replication does not amount to admission of the written statement’s averments

Case Title: K. Laxmanan vs. Thekkayil Padmini & Ors.

Date of Order: 3rd December, 2008

Case Number: Civil Appeal No. (Arising out of SLP(C) No. 21251 of 2006)

Neutral Citation: AIR 2009 SUPREME COURT 951, (2009) 1 SCC 354

Name of Court: Supreme Court of India

Name of Judges: Hon'ble Justices Mukundakam Sharma and Justice Tarun Chatterjee

Introduction:

The case of K. Laxmanan vs. Thekkayil Padmini & Ors., decided by the Supreme Court of India on 3rd December 2008, primarily dealt with issues concerning the proof of a Will and a Gift Deed in an inheritance dispute. It also addressed a significant legal question: whether the non-filing of a replication amounts to an admission of the averments made in a written statement.

The dispute arose when the respondent-plaintiff, one of the daughters of the deceased, filed a suit seeking partition of the properties left behind by her father. The appellant, the son of the deceased, claimed exclusive ownership of certain properties on the basis of a Gift Deed and a Will executed in his favor. The case progressed through multiple judicial forums, ultimately leading to a Supreme Court ruling that reinforced established principles of civil procedure and evidence law, particularly in relation to pleadings, burden of proof, and the validity of testamentary documents.

Factual Background:

The case involved the estate of Chathu, who passed away in 1975, leaving behind three daughters and a son, K. Laxmanan (the appellant). The respondent, one of Chathu’s daughters, filed a suit for partition, claiming that all legal heirs were entitled to an equal one-fourth share of the properties left behind by their father.

The appellant contested this claim, arguing that several properties were not subject to partition as they had been transferred to him exclusively through a Gift Deed (Ext. B2) and a Will (Ext. B3), both executed by Chathu on 26th April 1974. According to the appellant, the Gift Deed conferred ownership of items 4 and 5 in the suit property upon him, while the Will bequeathed items 6 to 8 and 10 to 12 to him. He also contended that the properties described as items 1 to 3 and 13 to 14 were assigned to him through other documents, namely Ext. B1 and Ext. B4.

The plaintiff/respondent challenged the authenticity of both the Will and the Gift Deed, alleging that they were surrounded by suspicious circumstances and had not been properly executed. The respondent did not file a formal replication specifically denying the claims made in the written statement but contested the validity of these documents in the course of legal proceedings.

Procedural Background:

The case was initially heard by the Trial Court, which ruled in favor of the appellant. It held that the Gift Deed and the Will had been properly proved and concluded that only item No. 9 in the suit schedule was available for partition. The court found that the appellant had exclusive rights over the remaining properties.

The First Appellate Court, however, reversed this decision, holding that the Gift Deed and the Will were not duly proved and were, therefore, invalid. It ruled that all the properties in question (except for items 1 to 3 and 13 to 14, which were assigned through other valid documents) were available for partition.

The Kerala High Court, in Second Appeal, upheld the findings of the First Appellate Court, reinforcing that the appellant had failed to discharge his burden of proving the execution and validity of the disputed documents. The court also rejected the contention that the non-filing of a replication amounted to an admission of the appellant’s claims.

The matter was then brought before the Supreme Court of India.

Issues Involved in the Case:

Whether the non-filing of a replication by the plaintiff amounts to an admission of the written statement’s averments, particularly regarding the validity of the Will and Gift Deed?

Whether the Will (Ext. B3) was validly executed and could be relied upon by the appellant.

Whether the Gift Deed (Ext. B2) was duly proved in accordance with law and whether its execution could be considered legally sound.

Whether the burden of proof lay on the appellant to establish the authenticity of the disputed documents.

Detailed Submission of Parties:

The appellant argued that the plaintiff had not specifically denied the execution of the Gift Deed and Will in a replication, and as a result, the claims made in the written statement should be deemed admitted. He relied on Section 68 of the Indian Evidence Act, 1872, which mandates proof of attested documents, and contended that this requirement applied only to Wills and not to Gift Deeds. The appellant also asserted that the execution of the Gift Deed was impliedly admitted since the respondent had not explicitly denied it in her pleadings.

The respondent, on the other hand, argued that mere non-filing of a replication does not constitute an admission of the written statement’s claims. She submitted that the validity of the Will and Gift Deed had been specifically disputed in affidavits filed during interlocutory proceedings and that evidence had been led on these issues in the trial. The respondent also emphasized that the appellant had failed to prove the due execution and attestation of the Will as required under Section 68 of the Evidence Act.

Discussion on Judgments:

The Supreme Court referred to several landmark cases on the law of pleadings and the proof of documents.

In Shashi Kumar Banerjee v. Subodh Kumar Banerjee [AIR 1964 SC 529] and Pushpavathi v. Chandraraja Kadamba [(1973) 3 SCC 291], the court had previously held that a Will must be proved with clear and cogent evidence, particularly when suspicious circumstances exist. The Supreme Court reiterated this principle, stating that the onus was on the appellant to remove suspicions surrounding the execution of the Will.

In Rosammal Issetheenammal Fernandez v. Joosa Mariyan Fernandez [(2000) 7 SCC 189], the court had ruled that if the execution of a document is specifically denied, the burden of proof remains on the party relying on the document. The Supreme Court applied this ruling, holding that the burden was on the appellant to prove the validity of both the Will and the Gift Deed.

Reasoning and Analysis of Judge:

The Supreme Court held that non-filing of a replication does not amount to an admission of the written statement’s contents. Pleadings under the Civil Procedure Code consist of a plaint and a written statement, and a replication is not mandatory unless specifically directed by the court.

Non-filing of a replication does not amount to admission of the written statement’s averments. 

A Will must be proved with clear evidence, especially when surrounded by suspicious circumstances. Section 68 of the Evidence Act mandates examination of an attesting witness to prove a document’s execution. The burden of proof lies on the propounder of a disputed document to establish its genuineness. A registered Gift Deed does not automatically become valid unless properly proved in court.

The court further observed that since the execution of the Will and Gift Deed was actively contested during trial and evidence was led on these issues, the appellant’s claim that they should be deemed admitted due to non-filing of a replication was without merit.

Regarding the validity of the Will, the court found that the attesting witnesses were not examined, and there were inconsistencies in the signatures of the testator. The suspicious circumstances surrounding the Will had not been adequately addressed by the appellant.

As for the Gift Deed, the Supreme Court ruled that under Section 68 of the Evidence Act, it must be proved by at least one attesting witness if execution is specifically denied. Since no attesting witness had been examined, the Gift Deed was not legally proved.

Final Decision:

The Supreme Court dismissed the appeal, affirming the findings of the Kerala High Court and the First Appellate Court. It held that the Will and Gift Deed were not duly proved and that the properties were, therefore, available for partition. The ruling clarified that mere non-filing of a replication does not result in an admission of the written statement's claims.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Atlas Cycle Industries Ltd. Vs Hind Cycles Limited

Atlas Cycle Industries Ltd. Vs Hind Cycles Limited:Proof of actual deception is unnecessary in an infringement claim; likelihood of confusion is sufficient

Case Title: Atlas Cycle Industries Ltd. vs Hind Cycles Limited

Date of Order:April 28, 1972

Case No.:Regular First Appeal No. 18 of 1959

Citation:ILR 1973 Delhi 393

Name of Court:Delhi High Court

Name of Judge:Justice T.V.R. Tatachari

Introduction:

The case revolves around a trademark dispute between Atlas Cycle Industries Ltd. and Hind Cycles Limited concerning the use of the word STAR in their respective trademarks. Atlas Cycle, which had acquired the registered trademark EASTERN STAR, alleged that Hind Cycles' use of the trademark ROYAL STAR amounted to infringement and passing off. The case provides an important precedent on the principles of deceptive similarity, consumer perception, and the protection of prior trademark rights.

Factual Background:

Atlas Cycle Industries Ltd. was incorporated in 1950 and acquired rights over the trademark EASTERN STAR from its predecessor Janki Dass & Co., which had been importing bicycles into India under this mark since 1938. Janki Dass & Co. had secured registration for both the monogram and the word mark EASTERN STAR in 1943. Upon Atlas’s incorporation, all rights to these trademarks were assigned to it, and the company continued using the marks extensively.

By 1956, Atlas had achieved significant sales, manufacturing approximately one lakh bicycles per year. Due to the popularity of EASTERN STAR bicycles, customers began referring to them as STAR CYCLES. Various parties attempted to use similar marks like BLUE STAR, ROYAL STAR, STAR BICYCLE, ARABIAN STAR, and WESTERN STAR, against whom Atlas successfully obtained injunctions.

In 1959, Atlas learned that Hind Cycles was using ROYAL STAR for its bicycles and had applied for its registration under Application No. 177777. Atlas filed an opposition before the Trade Marks Registry, Bombay, and subsequently initiated a suit against Hind Cycles, seeking an injunction against the use of ROYAL STAR, cancellation of its application, damages, and delivery of infringing goods.

Procedural Background:

The case was first heard by the District Judge, Delhi, who dismissed Atlas’s suit on November 27, 1961. The trial court ruled that ROYAL STAR was not deceptively similar to EASTERN STAR and that Atlas had failed to prove actual consumer deception. The trial court also observed that Atlas could not claim exclusive rights over the word STAR alone, as its trademark was a combination of EASTERN and STAR.

Atlas challenged this decision in the Delhi High Court by filing Regular First Appeal No. 18 of 1959.

Issues Involved in the Case:

Whether Atlas Cycle Industries Ltd. was the proprietor of the registered trademarks EASTERN STAR and its monogram.

Whether Hind Cycles' use of the trademark ROYAL STAR constituted an infringement of Atlas's registered trademark.

Whether Hind Cycles had passed off its goods as those of Atlas Cycle Industries Ltd.

Whether Atlas was entitled to an injunction, damages, and cancellation of Hind Cycles’ trademark application.

Submission of Parties:

Atlas argued that the use of ROYAL STAR was deceptively similar to EASTERN STAR, especially since consumers already referred to EASTERN STAR bicycles as STAR CYCLES. The phonetic and structural similarities between the two marks were likely to confuse consumers. Atlas also emphasized that its extensive prior use gave it exclusive rights over the word STAR in the context of bicycles.

Hind Cycles contended that EASTERN STAR and ROYAL STAR were distinct, as the words EASTERN and ROYAL created clear differentiation. It argued that Atlas could not monopolize the word STAR, which was common in the trade and used by multiple manufacturers. Hind Cycles also pointed out that the trial court correctly held that no actual confusion had been proven.

Discussion on Judgments Cited and Their Context:

The court referred to several landmark cases on trademark infringement and passing off.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 – The Supreme Court distinguished between infringement and passing off, holding that in an infringement action, it is enough to show similarity between the marks; proof of actual deception is unnecessary. This principle was applied in the present case.

Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 – This case emphasized that in determining deceptive similarity, the perception of an average consumer with imperfect recollection is crucial. The Delhi High Court applied this principle to assess whether ROYAL STAR was likely to confuse consumers who recognized EASTERN STAR bicycles as STAR CYCLES.

Coca-Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd., AIR 1942 PC 402 – This case discussed phonetic similarity in trademarks. The Delhi High Court referred to it while analyzing the structural and phonetic resemblance between EASTERN STAR and ROYAL STAR.

Modi Sugar Mills Ltd. v. Tata Oil Mills Co. Ltd., AIR 1943 Lahore 196 – This case established that the test for confusion is whether an ordinary purchaser exercising ordinary caution would likely be deceived. The Delhi High Court applied this test in evaluating the likelihood of confusion.

James Chadwick & Bros. Ltd. v. National Sewing Thread Co. Ltd., AIR 1951 Bom 147 – The Bombay High Court held that the essential feature of a trademark must be considered when assessing deceptive similarity. The Delhi High Court adopted this reasoning to conclude that STAR was the dominant feature in both marks.

Reasoning and Analysis of Judge:

The High Court overturned the trial court’s ruling, emphasizing that the words EASTERN STAR and ROYAL STAR must be considered in their entirety. However, the presence of STAR as a common dominant feature created a likelihood of confusion.

The court observed that an average consumer with imperfect recollection was likely to associate ROYAL STAR with EASTERN STAR, particularly given that EASTERN STAR bicycles were already recognized as STAR CYCLES. The phonetic similarity of both marks ending in STAR increased the potential for deception.

The High Court also considered the commercial reality that Atlas had built a reputation over two decades, during which no other cycle manufacturer had used a STAR mark until Hind Cycles introduced ROYAL STAR. This reinforced the likelihood that consumers would assume a connection between the two brands.

The court further rejected Hind Cycles' argument that STAR was common in the trade, noting that Atlas had taken successful legal action against other parties attempting to use similar marks.

Final Decision:

The High Court allowed the appeal and set aside the trial court’s decision. It granted a permanent injunction restraining Hind Cycles from using ROYAL STAR for bicycles and from proceeding with its trademark application. Atlas was also awarded costs.

Law Settled in This Case:

The dominant feature of a trademark plays a crucial role in determining deceptive similarity.

Phonetic and structural resemblance between marks must be assessed from the perspective of an average consumer with imperfect recollection.

Prior use and consumer association with a trademark strengthen the case for infringement.

The presence of a common element in trademarks (such as STAR) does not necessarily dilute exclusivity if one party has established prior and extensive use.

Proof of actual deception is unnecessary in an infringement claim; likelihood of confusion is sufficient.

Trademark protection extends to how a mark is perceived in the market, including informal references by consumers.

This case remains a significant precedent in Indian trademark law, reinforcing the principles of deceptive similarity and consumer perception in infringement disputes.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation. 

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

Moonshine Technology Private Limited Vs. Ashok Kumar & Ors

Case Title: Moonshine Technology Private Limited Vs. Ashok Kumar & Ors.

Date of Order: 14.02.2025

Case No.: CS(COMM) 124/2025

Court: Delhi High Court

Judge: Hon'ble Ms. Justice Mini Pushkarna

Facts

The plaintiff, Moonshine Technology Private Limited, a key player in the Indian gaming industry, filed a suit against multiple defendants, including unknown persons operating under the name "Ashok Kumar" and domain name registrants (DNRs). The plaintiff alleged that the defendants had registered infringing domain names that closely resembled its well-known “BAAZI” brand and were using these domains to promote illegal gambling and betting services. The plaintiff further contended that such activities amounted to trademark infringement, passing off, and unfair trade practices, causing irreparable harm to its reputation and business. The suit sought a perpetual and mandatory injunction, along with damages.

Issues

The key issues before the Court were whether the unauthorized use of the plaintiff’s trademark “BAAZI” by the defendants in domain names and online platforms constituted trademark infringement and unfair competition. Another issue was whether an injunction should be granted to prevent the defendants from continuing their infringing activities. Additionally, the Court had to consider whether domain name registrants (DNRs) should be held responsible for allowing the registration and use of such infringing domain names.

Reasoning

The Court found that the plaintiff had made out a strong prima facie case of trademark infringement. It observed that the defendants were misleading consumers by using deceptively similar domain names and engaging in illegal gambling activities, thereby tarnishing the plaintiff’s goodwill. The Court also noted that the DNRs played a significant role in enabling such infringing activities by registering and managing these domain names while offering privacy protection to registrants.

The Court considered the relevance of government advisories issued by the Ministry of Information and Broadcasting and other regulatory bodies. Specifically, the advisory dated 21.03.2024 warned against endorsements and advertisements of illegal offshore betting and gambling platforms. The advisory emphasized that intermediaries, including domain name registrants and online platforms, must ensure compliance with Indian laws and refrain from promoting such activities. Despite these advisories, the defendants continued to misuse the "BAAZI" trademark to deceive customers and promote illegal gambling services, making judicial intervention necessary. The Court emphasized that such actions violated established legal norms and public policy, necessitating strict action against the infringers.

Decision

The Court granted an ex parte ad-interim injunction, restraining defendant nos. 1 to 5 from using, modifying, or transferring the infringing domain names. It directed defendant nos. 6 to 8 (DNRs) to suspend access to the infringing domains and disclose the registrants’ details within one week. The Court also acknowledged the importance of enforcing government advisories to curb the proliferation of illegal gambling platforms. The case was scheduled for the next hearing on 28.07.2025.

Ozone Spa Pvt. Ltd. Vs. Mr. Arvind

Case Title:Ozone Spa Pvt. Ltd. Vs. Mr. Arvind & Ors.

Date of Order: 11th February 2025

Case No.: CS(COMM) 875/2022

Neutral Citation: 2025:DHC:1213

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Ozone Spa Pvt. Ltd. filed a suit against Mr. Arvind and others seeking a permanent injunction to restrain them from infringing its registered trademarks, engaging in unfair competition, and misrepresenting their services using deceptively similar marks. The plaintiff has been operating under the trademarks "OZONE," "O3," and "ozO3ne" since 2001 and has several trademark and copyright registrations for these marks. The plaintiff operates luxury health clubs, gyms, and spas across multiple cities in India and has gained significant goodwill and reputation. In October 2022, the plaintiff discovered that the defendants were operating gyms and fitness centers under the infringing mark "O3 Gym & Fitness Centre," which closely resembled the plaintiff’s brand. The plaintiff claimed that the defendants' use of identical and deceptively similar marks for similar services misled consumers and diluted its brand.

Issue

The key issue before the court was whether the defendants' use of the mark "O3" for gym and fitness services constituted trademark infringement and passing off. The court had to determine whether the defendants' marks were deceptively similar to the plaintiff’s registered marks and whether such use was likely to cause confusion among consumers.

Reasoning and Analysis of the Judge

The court found that the plaintiff had been using the "OZONE" and "O3" marks continuously since 2001 and had acquired significant goodwill in the health and fitness industry. The defendants’ marks were visually and phonetically similar, and they operated in the same industry, targeting similar consumers. The court observed that the defendants' branding, layout, and signage closely resembled the plaintiff’s marks, leading to a likelihood of confusion. The defendants initially denied infringement but later undertook to discontinue the use of the "O3" mark and rebranded as "A3." The court held that the defendants had intentionally adopted the impugned marks to benefit from the plaintiff’s reputation. Reports from Local Commissioners confirmed the unauthorized use of the infringing marks and the presence of infringing materials at the defendants’ premises.

Decision of the Judge

The court granted a permanent injunction restraining the defendants from using the "O3" mark or any deceptively similar mark in relation to gym, fitness, and spa services. The court also awarded damages of ₹10 lakh against Defendant No. 1 and ₹5 lakh against Defendant No. 4, to be paid within three months, failing which interest at 6% per annum would apply. The court directed the drawing up of a decree and disposed of the suit.

Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Case Title:Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Date of Order: 3rd February 2025

Case No.: C.O. (COMM.IPD-TM) 121/2024

Neutral Citation: 2025:DHC:838

Name of Court: High Court of Delhi

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

Fact

Oracle America, Inc. filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the trademark registered under No. 5420304 in Class 41 in the name of Mr. Sandeep Khandelwal. Oracle, a global technology company operating in over 175 countries, has been using the mark "JAVA" since 1996 for computer software and related services. The mark "JAVA" is widely recognized and has been registered in India and multiple countries. Oracle also owns the domain www.java.com, operational since 1996. The petitioner discovered that the respondent had obtained registration for a deceptively similar mark incorporating "JAVA" for education and training services. Oracle opposed this registration, arguing that it was likely to confuse consumers and unfairly benefit from Oracle’s established reputation. Despite receiving notice, the respondent failed to appear or file a reply, leading to an ex-parte decision.

Issue

The main issue before the court was whether the respondent’s trademark registration was liable to be canceled due to its similarity with Oracle’s well-established "JAVA" trademarks. The court had to determine if the mark was deceptively similar, lacked distinctiveness, and was registered in bad faith to exploit the petitioner’s goodwill.

Reasoning and Analysis of the Judge

The court found that Oracle was the prior adopter and registered proprietor of the "JAVA" mark, with registrations dating back to 1995. The judge noted that the respondent’s mark entirely subsumed "JAVA" and was used for identical services in Class 41, making it highly likely to cause confusion. The court held that the registration of the impugned mark violated Sections 9, 11, and 18 of the Trade Marks Act, as it was neither distinctive nor capable of distinguishing the respondent’s services from those of Oracle. Citing precedents, the court emphasized that merely adding minor variations to a well-known mark does not eliminate the risk of confusion. The court concluded that the respondent had dishonestly adopted the mark to mislead consumers and benefit from Oracle’s longstanding reputation.

Decision of the Judge

The court allowed the rectification petition and directed the Trade Marks Registry to remove the respondent’s registered mark from the Register of Trade Marks. The court ruled that the impugned mark was deceptively similar to Oracle’s trademarks and had been registered in contravention of trademark laws. The Trade Marks Registry was instructed to ensure compliance by forwarding a copy of the order for implementation.

Mankind Pharma Vs. Lemford Biotech Pvt. Ltd.

Case Title:Mankind Pharma Vs. Lemford Biotech Pvt. Ltd.

Date of Order: 18th February 2025

Case No.: C.O. (COMM.IPD-TM) 350/2022

Neutral Citation: 2025:DHC:1232

Name of Court: High Court of Delhi

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

Fact

Mankind Pharma filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the trademark "LENOKIND" registered by Lemford Biotech Pvt. Ltd. in Class 5 for pharmaceutical products. Mankind Pharma, incorporated in 1991, claimed prior rights over the word "KIND," forming part of its extensive family of trademarks, including "MANKIND." The company asserted that it had built immense goodwill over the years and had multiple trademark registrations in India and other countries, establishing "KIND" as a distinctive identifier of its brand. The petitioner alleged that the respondent’s registration of "LENOKIND" was deceptive and likely to cause confusion among consumers. Despite receiving court notices, the respondent failed to file a reply or appear in court, leading to an ex-parte decision.

Issue

The main issue before the court was whether the registration of "LENOKIND" by Lemford Biotech Pvt. Ltd. infringed upon the petitioner’s established rights over the "KIND" family of trademarks and whether the mark should be removed from the Register of Trade Marks under Section 57 of the Trade Marks Act, 1999.

Reasoning and Analysis of the Judge

The court noted that Mankind Pharma had been using "MANKIND" and the "KIND" family of marks since 1986, well before the respondent’s claimed use of "LENOKIND" in 2017. The court emphasized that the word "KIND" had acquired a secondary meaning exclusively associated with the petitioner due to its continuous and extensive use in the pharmaceutical industry. Referring to a previous decision in Mankind Pharma Ltd. v. Cadila Pharmaceuticals Ltd., the court reiterated that a well-established family of marks enjoys broader protection, and merely altering the prefix while retaining "KIND" does not negate the likelihood of confusion. The judge concluded that the respondent’s use of "LENOKIND" was intended to trade upon the goodwill of Mankind Pharma and mislead consumers into believing an association between the two companies.

Decision of the Judge

The court allowed the rectification petition and directed the Trade Mark Registry to remove the registration of "LENOKIND" (Trademark No. 4225327) from the Register of Trade Marks. The court held that the respondent had dishonestly adopted the mark to benefit from the reputation of the petitioner’s brand, and its continued presence on the register was in violation of trademark laws. 

Eveready Industries India Ltd. Vs. United Timber Works

Case Title:Eveready Industries India Ltd. Vs. United Timber Works

Date of Order: 21st February 2025

Case No.: CS(COMM) 152/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Eveready Industries India Ltd. filed a suit against United Timber Works and others, seeking a permanent injunction for trademark infringement, passing off, unfair trade practices, rendition of accounts, and damages. The plaintiff, a well-known brand in India since 1905, has been using the "EVEREADY" trademark for batteries, flashlights, and other goods. It alleged that the defendants had unlawfully used the "EVEREADY" mark for plywood products and had filed trademark applications for deceptively similar marks. The plaintiff discovered the defendants’ infringing activities in February 2025 through their website, which prominently displayed the mark "EVEREADY." The plaintiff claimed that such usage misled consumers and diluted the goodwill of its well-established brand.

Issue

The primary issue before the court was whether the defendants’ use of the "EVEREADY" mark for plywood products amounted to trademark infringement and passing off. The court had to determine whether the defendants’ actions created consumer confusion, unfairly exploited the plaintiff’s goodwill, and violated the plaintiff’s statutory and common law rights.

Reasoning and Analysis of the Judge

The court observed that Eveready’s trademark had been in continuous use for over a century and had been declared a well-known mark by the Intellectual Property Appellate Board in 2020. The judge noted that the defendants had no legitimate explanation for adopting an identical mark and were likely attempting to mislead consumers. The court found that the balance of convenience lay in favor of the plaintiff and that the plaintiff would suffer irreparable harm if the defendants were allowed to continue using the "EVEREADY" mark. The defendants’ actions constituted a clear case of trademark infringement and passing off.

Decision of the Judge

The court granted an ex-parte ad-interim injunction in favor of Eveready Industries, restraining the defendants from using the "EVEREADY" mark or any deceptively similar mark for their products. The court clarified that the defendants were free to conduct business under any other name that was not identical or confusingly similar to the plaintiff’s trademark. The matter was scheduled for further proceedings, and the defendants were directed to file their responses.

Darzi India LLP Vs. Kafil Ahmed

Darzi India LLP Vs. Kafil Ahmed

Date of Order: 20th February 2025

Case No.: CS(COMM) 151/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Fact

Darzi India LLP filed a suit against Kafil Ahmed for trademark infringement, passing off, dilution, and unfair competition. The plaintiff has been using the trademark "DARZI" since 1981 and has secured multiple trademark registrations for the mark. The plaintiff claimed that the defendant was using the infringing marks "Kafil The Darzi" and "kafilthedarzi@gmail.com," which incorporated the plaintiff’s registered mark. The plaintiff alleged that the defendant’s use of an identical and deceptively similar mark misled consumers and unfairly exploited the goodwill associated with the "DARZI" brand. The plaintiff initially issued a cease-and-desist letter, offering a resolution where the defendant could use the mark "KAFIL DARZI" but not "THE DARZI."

Issue

The primary issue before the court was whether the defendant’s use of the phrase "Kafil The Darzi" constituted trademark infringement and passing off. The plaintiff contended that the defendant's adoption of the impugned mark was intentional and aimed at benefiting from the established reputation of "DARZI." The court had to determine if the defendant’s usage led to consumer confusion and unfair competition.

Decision

The court found that the plaintiff’s mark "DARZI" had acquired significant goodwill over decades, and the defendant’s use of a confusingly similar mark created a likelihood of deception. The defendant agreed to modify its mark and delete the word "THE" while retaining "KAFIL DARZI." The court decreed in favor of the plaintiff and directed the defendant to make necessary changes to its mark and associated branding within eight weeks. The defendant was prohibited from using "DARZI" as a standalone mark, ensuring the plaintiff’s exclusive rights over it. The suit was disposed of accordingly.

Abbott Healthcare Pvt. Ltd. Vs. Vinsac Pharma

Case Title:Abbott Healthcare Pvt. Ltd. Vs. Vinsac Pharma

Date of Order: 17th February 2025

Case No.: CS(COMM) 336/2020

Neutral Citation: 2025:DHC:1264

Name of Court: High Court of Delhi

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

Brief Facts:

Abbott Healthcare Pvt. Ltd., a subsidiary of Abbott Laboratories, filed a suit against Vinsac Pharma for trademark and copyright infringement. The plaintiff alleged that the defendants were manufacturing and selling chewable Vitamin C tablets under the mark "LIMEECEE," which was deceptively similar to Abbott’s registered trademark "LIMCEE." The plaintiff claimed exclusive rights over the name and packaging, asserting that the defendants were passing off their products by copying the mark and packaging design.

Issues:

The primary issue before the court was whether the defendants’ use of the mark "LIMEECEE" and its similar packaging constituted trademark infringement, copyright infringement, and passing off.

Reasoning and Analysis of the Judge:

The court found that the plaintiff had been using the mark "LIMCEE" since 1977 and had obtained trademark registration for it in 2001. The packaging was also protected under copyright law. The defendants, by adopting a structurally and phonetically similar mark with a similar color scheme, attempted to ride on the goodwill of the plaintiff’s product. The court noted that such deceptive similarity posed a significant risk to public health, especially as the product was medicinal. The defendants failed to provide any plausible explanation for adopting the infringing mark and packaging.

Decision of the Judge:

The court granted a permanent injunction against the defendants, restraining them from manufacturing, selling, or advertising products under the mark "LIMEECEE." Additionally, the court awarded damages of ₹2,00,000 in favor of the plaintiff and directed the defendants to remove online listings of the infringing product. The plaintiff was also allowed to file a bill of costs for litigation expenses.