Ashim Kumar Bagchi Vs Balaji Telefilms Limited

Copyright Infringement:From Script to Screen

Introduction: The case of Ashim Kumar Bagchi versus Balaji Telefilms Limited and Others revolves around allegations of copyright infringement and breach of confidence in the realm of cinematic storytelling. The plaintiff, an aspiring scriptwriter, claimed that his original literary work, a script initially titled "Kal Kisne Dekha" and later re-registered as "The Show Must Go On," was unlawfully copied by the defendants in producing the film "Dream Girl 2." This dispute highlights the delicate balance in intellectual property law between protecting original expressions and allowing creative freedom in common themes like gender disguise comedies. The Bombay High Court, in its commercial division, examined whether the plaintiff's script merited copyright protection and if the defendants' film constituted an infringement or misuse of confidential information. The judgment underscores the principles governing copyright in literary works, emphasizing that ideas, themes, and stock elements are not protectable, and sets a precedent for rigorous scrutiny in interim applications seeking injunctions against film exploitation.

Factual Background: The plaintiff, Ashim Kumar Bagchi, developed a script in 2007 centered on a gender swap comedy where a male protagonist disguises himself as a female actress to overcome financial hardships and break into the film industry. The script, registered with the Film Writers' Association under number 127297, featured a protagonist facing debts, encouraged by a friend to adopt a female persona, and navigating comedic situations involving a smitten producer without revealing his identity. The plaintiff shared the script's synopsis and concept with employees of Defendant No. 1 (Balaji Telefilms Ltd.) via emails in 2009 and 2013, and narrated it over a phone call to Defendant No. 4 (a comedy writer) in 2012, allegedly under conditions of confidence to explore production opportunities. These efforts did not materialize into a film. In 2023, Defendant No. 1 released "Dream Girl 2," a sequel to their 2019 film "Dream Girl," directed and co-written by Defendant No. 4 and Defendant No. 5. The film depicted a male lead disguising as a woman to earn money at a dance bar to meet his prospective father-in-law's financial ultimatum for marriage, leading to comedic entanglements. The plaintiff, upon viewing the trailer, issued a cease-and-desist notice on August 4, 2023, alleging infringement, to which the defendants responded by denying similarities and claiming the plaintiff's work infringed theirs. The defendants maintained that "Dream Girl 2" was independently developed from a synopsis registered by Defendant No. 5 in 2021, with agreements assigning rights to Defendant No. 1.

Procedural Background:The plaintiff filed a commercial intellectual property suit on August 18, 2023, seeking an injunction against the exploitation of "Dream Girl 2," scheduled for release on August 25, 2023. An interim application was moved for urgent relief based on the trailer, but the court, on August 22, 2023, declined to restrain the release without affording the defendants an opportunity to respond, noting the plaintiff's eleventh-hour approach despite prior knowledge of the release date. The film was subsequently released in theaters and exploited across mediums. Defendant No. 1 filed an affidavit in reply on August 31, 2023, followed by the plaintiff's rejoinder on October 10, 2023, and Defendant No. 1's sur-rejoinder on November 29, 2023. Defendant No. 5 also filed replies denying access and infringement. The matter was argued at length, reserved for orders on December 16, 2024, after parties filed written submissions, and pronounced on August 6, 2025. During proceedings, the court viewed the film and perused the script, while the plaintiff highlighted a prior suit by Defendant No. 5 against Defendants Nos. 1 and 4 over credits, which was settled by consent terms unrelated to the content dispute.

Core Dispute:At the heart of the dispute was whether "Dream Girl 2" infringed the plaintiff's copyright in his script by copying its expression, arrangement of scenes, character development, and comedic situations, or breached confidence by misusing information shared confidentially. The plaintiff argued that his script's originality lay in the detailed narrative of a debt-ridden protagonist adopting a female persona for film success, facing romantic and comedic perils, and that substantial similarities existed in themes, plots, and sequences. He contended access was established through shares with Defendants Nos. 1 and 4, and that Defendants Nos. 4 and 5 colluded, as evidenced by inconsistencies in their authorship claims and a blank annexure in their writer agreement. The defendants countered that no copyright subsisted in unoriginal elements like gender disguise or financial hardship themes, which were stock scenarios or scènes à faire, and that the works were dissimilar when viewed holistically—the plaintiff's script was Bollywood-centric, while their film focused on small-town romance and family dynamics without film industry involvement. They denied access, particularly for Defendant No. 5, and argued the plaintiff failed to precisely identify confidential information or prove misuse, rendering the claims untenable.

Discussion on Judgments:The parties extensively relied on precedents to support their positions on copyright infringement, breach of confidence, and costs. The plaintiff cited Daman Singh & Ors. Vs. State of Punjab & Ors., (1985) 2 SCC 670, at paragraph 13, to argue that pleadings not advanced in arguments need not be considered, emphasizing Defendant No. 4's non-appearance as acceptance of his case. He also referenced Akashaditya Vs. Ashutosh Gowarikar, 2016 SCC Online Bom 527, and Dashrath Rathod Vs. Foxstar, Order dated 21st March 2017 passed in NML/693/2017, to distinguish his case from those warranting costs, noting no suppression or insistence on ad-interim relief. Defendant No. 1 invoked R.G. Anand v. M/s. Delux Films & Ors., (1978) 4 SCC 118, at paragraph 46, as the foundational test for infringement, stressing no protection for ideas, themes, or plots unless substantial copying of expression occurs, and applied it to show dissimilarities negated piracy. Mansoob Haider Vs. Yashraj Films Pvt. Ltd. & Ors., [2014 SCC Online BOM 652], at paragraphs 18 to 30 and 38, was used to argue against monopoly over common themes like gender disguise. Shivani Tibrewala Vs. Rajat Mukherjee & Ors., AIR 2020 BOM 32, at paragraphs 21, 23, 26, and 28, supported rejecting dissected comparisons and focusing on unique story elements. Gaurav K. Dave Vs. MX Media & Entertainment Private Limited & Ors., MANU/MH/23/2022, at paragraphs 16, 17, 19, and 20, distinguished actionable from mere similarity. Amit R. Kalyanaraman Vs. Gurfateh Films, 2016 SCC ONLINE BOM 2367, at paragraphs 4 to 6, highlighted no infringement in sequel-like works with common flows. For breach of confidence, Defendant No. 1 relied on Zee Entertainment Enterprises Ltd. Vs. Gajendra Singh & Ors. (Beyond Dreams case), 2018 SCC OnLine Bom 427, at paragraphs 8, 9, and 11, requiring precise identification of confidential, original information not in public domain. Tarun Wadhwa v. Saregama India Ltd. & Anr., 2021 SCC OnLine Bom 13993, at paragraphs 14, 15, 20, 21, 25, 27, 28, 35, 37, and 40 to 44, emphasized fatal defects in vague pleadings. Dashrath B. Rathod v. Fox Star Studios India Pvt. Ltd. & Ors., (2018) 1 Mh.LJ. 474, at paragraphs 32 to 37, and Akashaditya Harishchandra Lama v. Ashutosh Gowarikar & Ors., 2016 SCC OnLine Bom 5207, at paragraph 71, justified costs in frivolous claims. Defendant No. 5 echoed these, adding DC Comics Vs. Mark Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013), at pages 12, 14, and 15, for unprotectable stock characters; Bikramjeet Singh Bhullar V. Yash Raj Films Pvt. Ltd. & Ors., 2023 SCC OnLine Del 8212, at paragraphs 36, 49, and 50, for no infringement despite access; and Inception Media LLP Vs. Star India Pvt. Ltd. & Anr., 2015 SCC OnLine Bom 5046, at paragraphs 25, 35, 39, 40, and 42, reinforcing the sequential test for confidence claims.

Reasoning and Analysis of the Judge: Justice R.I. Chagla meticulously analyzed the plaintiff's claims by first dissecting the pleadings, finding the script's alleged originality rested on unprotectable elements like gender disguise and financial woes, which were common themes evident from prior works such as "Mrs. Doubtfire." He rejected the plaintiff's dissected comparison tables as impermissible under settled law, viewing the works holistically to identify stark dissimilarities: the plaintiff's Mumbai-based Bollywood narrative versus the defendants' Mathura-set romantic comedy without film industry ties. Applying R.G. Anand's test, he concluded no actionable similarity existed, as commonalities flowed from unprotected idées or scènes à faire. On access, he deemed the plaintiff's evidence tenuous, with no cogent proof against Defendant No. 5, rendering it academic given the works' differences. For breach of confidence, he applied the Beyond Dreams framework as elaborated in Tarun Wadhwa and Inception Media, faulting the plaintiff for failing to precisely identify confidential, original information or prove misuse. He dismissed reliance on Defendant No. 5's prior credit suit as irrelevant, noting its settlement pertained only to attribution. Balancing equities, he highlighted the plaintiff's persistence despite viewing the film and procedural delays, justifying costs under the Commercial Courts Act for consuming court resources on a meritless claim.

Final Decision:The court dismissed the interim application, refusing the injunction against exploiting "Dream Girl 2." It held no prima facie case for copyright infringement or breach of confidence, awarding costs of Rs. 2 lakhs (Rs. 1 lakh each to Defendants Nos. 1 and 5) payable by the plaintiff within four weeks.

Law Settled in This Case:This judgment reinforces that copyright protects expressions, not ideas, themes, plots, or stock elements like gender disguise comedies, and infringement requires substantial copying of protectable aspects, tested holistically rather than through dissected comparisons. It clarifies that breach of confidence claims demand precise identification of confidential, original information not in public domain, imparted under confidentiality, and proven unauthorized use—all elements being cumulative. In commercial IP suits, frivolous claims persisting post-release warrant costs to deter resource wastage, aligning with the Commercial Courts Act's regime.

Case Title: Ashim Kumar Bagchi Vs Balaji Telefilms Limited and Ors.

Date of Order: 06th August, 2025

Case Number: Comm IP Suit No. 322 of 2023

Name of Court: Bombay High Court 

Name of Hon'ble Judge: R.I. Chagla J.

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

Amit Bansal Vs CSH Power Himoinsa Private Limited

Amit Bansal Vs CSH Power Himoinsa Private Limited:14 September 2022:CM(M) 940/2022:2022 SCC OnLine Del 2950: Hon’ble Mr. Justice C. Hari Shankar

The respondent filed a commercial suit for recovery of money against Raj Power Projects, initially naming Tarun Sehgal as its proprietor. The written statement was, however, filed by Amit Bansal, the actual proprietor. The respondent thereafter amended the memo of parties to substitute Amit Bansal as proprietor and sought amendment of paragraph 3 of the plaint accordingly. The Commercial Court allowed the amendment, holding it did not alter the cause of action or nature of the suit. Amit Bansal challenged the order under Article 227 of the Constitution, arguing that the amendment was barred after commencement of trial, altered the cause of action, and was time-barred. The High Court held that the trial had not commenced when the amendment application was filed, that the change was a mere correction of the name of the proprietor without altering the cause of action, and that there was no prejudice to the petitioner. Finding the petition vexatious, the Court dismissed it with costs of Rs. 50,000 to be deposited with the Delhi High Court Legal Services Committee.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice 

Ajay Goyal Vs. Anil Verma

Ajay Goyal Vs. Anil Verma:31 January 2024:CS(COMM) 93/2024:High Court of Delhi:Hon’ble Mr. Justice Anish Dayal

The plaintiff, engaged in manufacturing and selling household products since 1981 and operating under the name ‘Food Agro International Inc.’ since 2014, claimed use of the trademark ‘SUFIYANA’ from 2014/2018 with significant promotional expenditure and turnover. In January 2024, the plaintiff discovered that the first defendant was selling products under the mark ‘SUFIYAMA’ with an identical trade dress for similar products, and that the second defendant was acting as a wholesaler for such goods. The plaintiff alleged that the defendants had adopted a deceptively similar mark and packaging, amounting to infringement and passing off, and sought urgent injunctive relief along with appointment of a local commissioner.

The suit was registered, summons were issued, and the Court found a prima facie case, granting an ex-parte ad interim injunction restraining the defendants from using the impugned mark or any deceptively similar mark. A Local Commissioner was appointed to visit the defendant’s premises, prepare an inventory, seize infringing goods and materials, and return them on superdari with undertakings. Directions were issued for assistance from local police, and timelines for execution and report submission were fixed. 

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice

Prina Chemical Works and Others Vs. Sukhdayal and Others

Introduction: The case of Prina Chemical Works and Others vs. Sukhdayal and Others stands as a pivotal judgment in the realm of intellectual property rights, particularly relating to the protection of unregistered trade names and business goodwill. The Madhya Pradesh High Court, in this case, delved into the doctrine of passing off and the extent to which a business can claim exclusive rights over a name that has not been formally registered as a trademark. This case addressed the fundamental question of whether long-standing use of a business name, coupled with customer recognition and goodwill, could afford the proprietor legal protection from imitators seeking to benefit from the established reputation of another.

Factual Background : The plaintiff, Sukhdayal, was the sole proprietor of a business operating under the name "Prina Chemical Works," established in the year 1953. He had engaged in the manufacture and sale of Ayurvedic medicinal products, most notably a topical formulation marketed under the name "Zalim Lotion." Over the years, the business gained significant reputation and goodwill, and the product became recognized among consumers for its medicinal qualities. The plaintiff had obtained the requisite license for drug manufacture under the prevailing pharmaceutical laws, thereby operating a legitimate and lawful business.

In 1961, a competing business emerged under identical nomenclature. The defendants, constituting a partnership firm based in Mandsaur, adopted the same business name—"Prina Chemical Works"—and began manufacturing similar Ayurvedic products. The labels and trade dress used by the defendants bore a striking resemblance to those of the plaintiff. This created confusion among customers, who began mistaking the defendants’ products for those manufactured by the plaintiff. The plaintiff asserted that this amounted to a deliberate attempt by the defendants to mislead the public and ride upon the goodwill he had built over several years.

Procedural Background: The dispute was initially adjudicated by the Trial Court, where the plaintiff sought a perpetual injunction restraining the defendants from using the trade name "Prina Chemical Works" and from marketing their products using any deceptive packaging or labels. The Trial Court found merit in the plaintiff's contentions and decreed in his favor, holding that the defendants had indeed attempted to capitalize on the plaintiff's reputation. The Trial Court issued a permanent injunction, thereby restraining the defendants from using the impugned business name and associated labels.

The defendants preferred an appeal before the District Judge, who reversed the findings of the Trial Court. The appellate court held that the plaintiff had not proved sufficient distinctiveness or exclusivity in his business name, and that the word "Prina" could not be monopolized. According to the District Judge, the use of a similar business name by the defendants did not amount to a legal wrong, especially in the absence of a registered trademark.

Aggrieved by this decision, the plaintiff filed a second appeal before the Madhya Pradesh High Court. The key issue before the High Court was whether the appellate court had erred in discarding the well-reasoned conclusions of the Trial Court and in denying relief to the plaintiff, despite apparent evidence of deceit and unfair competition.

Issues Involved: The case presented the High Court with several core legal issues. The first was whether the plaintiff, by virtue of long-term usage and market presence, had acquired an exclusive right over the business name "Prina Chemical Works" and the goodwill associated with it? The second issue was whether the use of an identical or deceptively similar business name by the defendants constituted passing off under Indian law? The third issue revolved around whether the plaintiff was entitled to a perpetual injunction restraining the defendants from using the impugned name and labels?

Submissions of the Parties: The plaintiff argued that he had been using the trade name "Prina Chemical Works" since 1953 and had built a significant reputation and customer base. His product, "Zalim Lotion," had gained wide recognition, and the name "Prina" had come to be associated with the quality and reliability of his formulations. According to the plaintiff, the defendants had no legitimate reason to adopt the same business name other than to mislead the public and profit from the reputation built by the plaintiff over nearly a decade. The plaintiff contended that the resemblance in product labeling and packaging was too close to be coincidental and was clearly designed to deceive consumers.

The defendants, in response, contended that "Prina" was a generic word and could not be claimed as exclusive by any one trader. They asserted that their adoption of the business name was independent and unconnected with the plaintiff's enterprise. The defendants argued that since the plaintiff did not have a registered trademark over the name "Prina," he could not restrain others from using the same. They also claimed that no consumer confusion had been proved and that their products were being sold in a different region and under different circumstances.

Discussion on Judgments and Case Law Cited: The High Court referred to several important precedents in arriving at its decision. Among the key judgments considered was Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, where the Supreme Court had held that in a passing off action, the mere possibility of confusion among consumers was sufficient to grant relief, even in the absence of fraudulent intent. The Court emphasized that the essence of passing off lies in deception, and not necessarily in dishonest conduct.

The case of Ewing v. Buttercup Margarine Co. Ltd., (1917) 2 Ch. 1, was also cited, where an English court restrained a new company from using a similar name as an older firm, observing that business names themselves carried goodwill and were entitled to legal protection. The principle laid down in this case was relied upon to support the argument that even in the absence of formal registration, a name that has acquired public recognition can be protected.

The court further relied on Reddaway v. Banham, (1896) AC 199, to emphasize that even descriptive or non-distinctive words can acquire a secondary meaning and distinctiveness through prolonged use in commerce. The fact that "Prina" might be a common word was held to be irrelevant, as long as the public had come to associate it with the plaintiff's business.

Although decided after this case, the principle subsequently upheld in B.K. Engineering Co. v. Ubhi Enterprises, AIR 1985 Delhi 210, wherein it was ruled that delay does not disentitle the plaintiff from seeking relief in the presence of bad faith and deceptive conduct, was foreshadowed in the reasoning adopted by the court in this case.

Reasoning and Analysis by the Judge: The court noted that the primary consideration in cases of passing off is whether the public is likely to be misled into believing that the goods of one trader are those of another. He found that the plaintiff had been using the trade name "Prina Chemical Works" continuously and prominently since 1953, which had resulted in the creation of a valuable asset in the form of goodwill. The court found that the defendants had adopted the same name without offering any plausible explanation, which raised a strong presumption of mala fide intent.

The judge reasoned that the test of deception was satisfied in this case, especially considering the similarity in trade name, product packaging, and the nature of goods being sold. He held that the defendants' use of the name "Prina Chemical Works" was calculated to cause confusion and to lead purchasers to believe that they were buying the plaintiff’s products. The contention that "Prina" was a generic term was dismissed, as it had acquired a distinct identity through the plaintiff’s use over many years.

Court emphasized that trademark registration was not a prerequisite for seeking relief in a passing off action. What mattered was whether the plaintiff had acquired distinctiveness and market recognition. He concluded that the plaintiff was entitled to legal protection, and that injunctive relief was justified to prevent further damage to his reputation and business interests.

Final Decision: The High Court allowed the second appeal, thereby setting aside the judgment of the first appellate court. It restored the decree of the Trial Court and granted a perpetual injunction restraining the defendants from using the business name "Prina Chemical Works" or any similar name or label that could lead to confusion with the plaintiff’s products. The judgment reaffirmed the principle that businesses can protect their unregistered names under common law if they can show long-standing use, goodwill, and likelihood of confusion.

Law Settled in this Case: This case reaffirmed that the doctrine of passing off does not require the plaintiff to have a registered trademark. A trade name or product label that has acquired distinctiveness and consumer recognition through use is protectable under common law. Where a party attempts to use a similar name or packaging with the intent or effect of misleading consumers, the courts will intervene to prevent such deceptive practices. Even words that may be generic or descriptive can acquire distinctiveness when associated with a particular business over time. 

Prina Chemical Works and Others Vs. Sukhdayal and Others:3 November 1972:Second Appeal No. 1214 of 1968: High Court of Madhya Pradesh:  Hon’ble Mr. Justice Shiv Dayal Shrivastava

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

Rita Rikh Vs. Arvind Gautam

Case Title: Rita Rikh Vs. Arvind Gautam

Date of Order: 31.07.2025

Case Number: FAO (COMM) 141/2024

Neutral Citation: 2025:DHC:6354-DB

Name of Court: High Court of Delhi 

Name of Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

The appellant, alleging passing off of her unregistered trademark “Dr. Rikh’s Clinic”, filed a commercial suit and sought an interim injunction from the Commercial Court, Dwarka. The relief sought was to restrain the respondent from using the mark “Dr. Rikh’s Clinic”. The Commercial Court, by order dated 14.05.2024, granted the exact interim relief prayed for by the appellant.

Despite obtaining the full relief sought, the appellant filed the present appeal under the misconception that the injunction should also restrain the use of the word “Rikh” simpliciter. However, no such prayer was ever made in the original suit or interim application.

The Division Bench found the appeal to be entirely frivolous and unwarranted, emphasizing that the appellant had already obtained the precise relief she had asked for. Consequently, the Court dismissed the appeal, observing that it unnecessarily consumed judicial time, and though inclined, refrained from imposing costs.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Capital Foods Private Limited Vs Pitambari Products Private Limited

Case Title: Capital Foods Private Limited Vs Pitambari Products Private Limited

Date of Order: 28.07.2025

Case Number: CS(COMM) 754/2025

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Ms. Justice Manmeet Pritam Singh Arora

The plaintiff, Capital Foods Private Limited, a well-known FMCG company now acquired by Tata Consumer Products Ltd., filed a suit against the defendant, Pitambari Products Pvt. Ltd., for infringement and passing off of its registered trademark “SCHEZWAN CHUTNEY”. The plaintiff adopted the mark in 2012 and has extensively used and promoted it in India and abroad. The defendant was found to be selling similar food products bearing the identical mark “SCHEZWAN CHUTNEY”.

The plaintiff filed an application under Order XXXIX Rules 1 and 2 CPC seeking an ad-interim injunction, asserting that the defendant’s use of the impugned mark is a recent and unauthorized act, despite a legal notice sent on 04.06.2025. The defendant’s reply dated 23.06.2025 argued the mark was descriptive, which the plaintiff contended was untenable in light of a Division Bench order dated 25.01.2023 that held the plaintiff’s mark had acquired secondary significance.

Upon examining both parties’ products presented in court and comparing the packaging and marks, the Court found the defendant’s use of the mark to be identical and infringing. Noting the plaintiff’s prior use, registration, commercial success, and previously granted injunctions in similar cases, the Court held that a prima facie case was made out for protection.

Accordingly, the Court granted an ex-parte ad-interim injunction restraining the defendant from using the mark “SCHEZWAN CHUTNEY” or any deceptively similar mark. The injunction did not extend to the trade dress. The matter was listed for further proceedings.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Waterways Leisure Tourism Private Limited Vs. Mukesh Prasad Thapliyal and Others

Prior adoption and registration of a trademark confer exclusive rights under Section 28 of the Trade Marks Act, 1999

Introduction:  In the evolving landscape of intellectual property law in India, disputes over trademark infringement and passing off are increasingly prevalent, particularly in industries where brand identity plays a pivotal role in consumer perception. The case of Waterways Leisure Tourism Private Limited v. Mukesh Prasad Thapliyal and Others is a significant judicial pronouncement by the High Court of Delhi that addresses the conflict between two entities operating in the hospitality sector over the use of the trademark "Cordelia." This case study delves into the legal intricacies of the dispute, examining the arguments presented by both parties, the court's reasoning, and the broader implications for trademark law in India. 

Factual Background:Waterways Leisure Tourism Private Limited, the plaintiff, is a company engaged in providing luxury ocean cruise tourism services under the trademark "Cordelia Cruises." The plaintiff adopted this mark in November 2020 and secured its domain name, www.cordeliacruises.com, in December 2020. On January 4, 2021, the plaintiff applied for trademark registration for "Cordelia" in Classes 39, 41, and 43 under the Trade Marks Act, 1999, and subsequently obtained registration in these classes. The plaintiff demonstrated continuous use of the mark since 2021, achieving significant goodwill and recognition in the hospitality industry, evidenced by a turnover increase from Rs. 30.92 lakhs in 2020-2021 to Rs. 48.53 crores in 2022-2023, along with various industry awards.

The defendants, led by Mukesh Prasad Thapliyal, operate a land-based hotel in Rishikesh under the mark "Cordelia Inn," which they claim to have adopted in August 2022. They registered the domain name www.hotcordeliainn.com and applied for trademark registration for "Cordelia Inn" in Class 43 on August 4, 2022. The Trade Marks Registry raised an objection to the defendants' application on December 28, 2022, citing the plaintiff's registered mark. Despite a cease-and-desist notice issued by the plaintiff on August 22, 2024, the defendants continued using the mark, prompting the plaintiff to file a suit for trademark infringement and passing off, along with an application for an interim injunction.

Procedural Background

The case was filed before the High Court of Delhi as CS(COMM) 42/2025, with the plaintiff seeking an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to restrain the defendants from using the mark "Cordelia Inn" or any deceptively similar mark. The application, numbered I.A. 1268/2025, was heard by Justice Saurabh Banerjee, who reserved the judgment on July 11, 2025, and pronounced it on July 28, 2025. The plaintiff was represented by Ms. Kripa Pandit and others, while the defendants were represented by Ms. Kangana Roda and her team. Both parties presented extensive arguments, supported by documentary evidence and case law, to substantiate their claims regarding the use and proprietorship of the trademark "Cordelia."

Core Dispute:The central issue in this case revolves around whether the defendants' use of the mark "Cordelia Inn" constitutes trademark infringement and passing off in relation to the plaintiff's registered mark "Cordelia Cruises." The plaintiff argued that the defendants' mark is deceptively similar, likely to cause consumer confusion, and an attempt to capitalize on the plaintiff's goodwill, given the prior adoption, registration, and extensive use of the "Cordelia" mark. The defendants countered that their mark was adopted in good faith, that "Cordelia" is a generic term, and that their land-based hotel services in Rishikesh are distinct from the plaintiff's cruise services, thus negating any likelihood of confusion. The court was tasked with determining the validity of these claims, the scope of protection for the plaintiff's registered mark, and the balance of convenience for granting an interim injunction.

Discussion on Judgments:Both parties relied on several judicial precedents to bolster their arguments, each cited to address specific aspects of trademark law. The plaintiff placed reliance on Somany Ceramics Limited v. Shri Ganesh Electric Co. & Others (2022 SCC OnLine Del 3270), emphasizing the principle that prior use and registration confer exclusive rights to a trademark holder, supporting their claim of being the prior adopter and registrant of the "Cordelia" mark. The plaintiff further argued that the defendants' continued use post a cease-and-desist notice demonstrated mala fide intent.

The defendants cited multiple cases to argue against the plaintiff's claims. In Dalpat Kumar v. Prahlad Singh (1992 Supp (2) SCC 722), they highlighted that the plaintiff must establish a prima facie case and actual harm, which they claimed was absent. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965 AIR SC 980) was referenced to argue that the plaintiff’s mark, being a device mark, does not confer exclusive rights over the word "Cordelia." Registrar of Trade Marks v. Ashok Chandra Rakhit (1955 AIR SC 558) was cited to support the contention that "Cordelia" is a generic term, not exclusively proprietary. Other cases included Institute of Directors v. Worlddecorp Technology & Business Solution Pvt. Ltd., Anirdhara Pharmacy v. Satyadeo Gupta, M/s. Nandhini Deluxe v. M/s. Karnataka Cooperative Milk Producers Federation Ltd., Sanjha Chulha v. Sanjha Chulha & Ors., Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobacco Co. Ltd., Mitaso Electronics v. Sujata Home Appliances Pvt. Ltd. & Anr., RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Limited & Anr., and Schering Corporation v. Alkem Laboratories Ltd., all of which were used to argue that the plaintiff failed to demonstrate a likelihood of confusion or harm, and that the defendants' services were sufficiently distinct.

The court also referred to additional precedents in its analysis. Automatic Electric Ltd. v. R.K. Dhawan (1999 PTC 81) was cited to reject the defendants' claim that "Cordelia" is generic, emphasizing that a party seeking proprietary rights over a mark cannot simultaneously claim it is generic. United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. & Ors. (2012 SCC OnLine Del 2942), referencing Registrar of Trade Marks v. Ashok Chandra Rakhit, clarified that a registered label mark includes protection for the word contained therein. Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (1970 (2) SCC 727), KSB Aktiengesellschaft & Ors. v. KSB Global Limited (2011 (45) PTC 103 (Del)), Cotton Ltd. v. Mohammed Rafi & Ors. (2011 (46) PTC 468 (Del)), Subhash Chand Bansal v. Khad7’s and Ors. (2011 (46) PTC 468 (Del)), MAX Healthcare Institute Ltd. v. Sahurdya Health Care Pvt. Ltd., and Pluto Travels India Private Limited v. PTW Holidays Private Limited were cited to establish that adding prefixes or suffixes does not distinguish a mark sufficiently to avoid infringement, particularly when the core element ("Cordelia") remains prominent.

Reasoning and Analysis of the Judge: Justice Saurabh Banerjee’s reasoning focused on several key aspects of trademark law. The court acknowledged the plaintiff’s prior adoption and registration of the "Cordelia" mark in November 2020 and January 2021, respectively, supported by documentary evidence such as WHOIS records, invoices, and a Chartered Accountant’s certificate. This established the plaintiff as the prior user and registrant, conferring exclusive rights under Section 28 of the Trade Marks Act, 1999. The court rejected the defendants’ claim of prior adoption, noting their application for "Cordelia Inn" was on a "proposed to be used" basis in August 2022, post-dating the plaintiff’s use.

The court found that both parties operate within the hospitality industry under Class 43, which encompasses services for food, drink, and temporary accommodation, including cruise ships and hotels. The shared trade channels, such as online platforms like Goibibo and TripAdvisor, and the common consumer base heightened the likelihood of confusion. The court dismissed the defendants’ argument that "Cordelia" is generic, citing Automatic Electric Ltd. v. R.K. Dhawan, which held that a party claiming proprietary rights cannot simultaneously assert a mark’s generic nature. The court further relied on United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. to affirm that a registered label mark protects the word contained therein, thus extending protection to "Cordelia."

The visual and phonetic similarity between "Cordelia Cruises" and "Cordelia Inn," particularly the retention of the prominent element "Cordelia," was deemed likely to confuse consumers with imperfect recollection. The court rejected the defendants’ argument that their land-based hotel services were distinct from the plaintiff’s cruise services, noting that both fall within the hospitality sector and cater to similar customers. The defendants’ use of palm tree imagery, unrelated to their services, was seen as an attempt to mislead consumers into associating their services with the plaintiff’s maritime brand. The court also found the defendants’ continued use after the cease-and-desist notice indicative of mala fide intent.

Applying the triple test for interim injunctions—prima facie case, balance of convenience, and irreparable harm—the court concluded that the plaintiff satisfied all criteria. The plaintiff’s established goodwill, the likelihood of confusion, and the potential for irreparable harm tilted the balance in their favor. The defendants’ cited cases, such as Vishnudas and Nandhini Deluxe, were deemed inapplicable due to the specific facts of the case, particularly the shared industry and consumer base.

Final Decision: On July 28, 2025, the High Court of Delhi granted the interim injunction sought by the plaintiff. The defendants were restrained from using, marketing, or advertising the mark "Cordelia Inn" or any deceptively similar mark through any medium, including online platforms and social media. They were further directed to remove all references to "Cordelia" from third-party websites and to block, suspend, and transfer the domain name https://hotelcordeliainn.com and associated email to the plaintiff. The application was allowed, and the case was listed for further proceedings on September 23, 2025, before the Joint Registrar for admission-denial and marking of exhibits.

Law Settled in This Case: This case reinforces several principles of trademark law in India. It affirms that prior adoption and registration of a trademark confer exclusive rights under Section 28 of the Trade Marks Act, 1999, enabling the proprietor to seek relief against infringement and passing off. The judgment clarifies that protection extends to the prominent word within a registered label mark, rejecting claims of genericness when the defendant seeks proprietary rights over the same term. It also establishes that services within the same class (e.g., Class 43) and industry (hospitality), even if delivered in different settings (cruise vs. hotel), are sufficiently allied to create a likelihood of confusion, particularly when marketed through common channels. The case underscores that minor additions, such as prefixes or suffixes, do not sufficiently distinguish a mark to avoid infringement. Finally, it emphasizes the court’s willingness to grant interim injunctions to protect registered trademarks when a prima facie case, balance of convenience, and risk of irreparable harm are established.

Case Title: Waterways Leisure Tourism Private Limited Vs. Mukesh Prasad Thapliyal and Others

Date of Order: July 28, 2025

Case Number: CS(COMM) 42/2025

Neutral Citation: 2025:DHC:6127

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Justice Saurabh Banerjee

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

Travel Blue Products India Pvt. Ltd. and Anr. v. Miniso Life Style Pvt. Ltd

Aesthetic Appeal Versus Functional Utility and Infringement of Design

Introduction:  The case of Travel Blue Products India Pvt. Ltd. Vs. Miniso Life Style Pvt. Ltd. presents a detailed exploration of the legal thresholds that govern protection under the Designs Act, 2000 and the tort of passing off. The plaintiffs, Travel Blue Products India Pvt. Ltd. and its parent company Travel Blue Limited, brought this action before the Bombay High Court alleging that the defendants, Miniso Life Style Pvt. Ltd. and Miniso Hong Kong Ltd., had engaged in piracy of a registered design and passed off their travel neck pillows as those of the plaintiffs. This case turned on whether the plaintiffs’ registered design, being aesthetic in nature, was entitled to statutory protection and whether the defendants’ products amounted to an obvious imitation, thereby infringing the design and creating a likelihood of consumer confusion. 

Factual Background: Travel Blue Limited, a UK-based company, is the original creator and manufacturer of a unique travel accessory known as the "Tranquility Neck Pillow." Its Indian subsidiary, Travel Blue Products India Pvt. Ltd., markets and sells these products through both online and offline channels. The Tranquility Pillow was designed in 2015 and registered as a design in India on 24 July 2017, with a reciprocity claim from 19 October 2015. The registration number assigned was 281315, and the protection was extended until 2030. This design has also been registered in jurisdictions such as the European Union, China, the United States, and Australia.

The plaintiffs claimed that the Tranquility Pillow achieved substantial market recognition, with the Indian entity reporting sales figures exceeding ₹70 lakhs in the financial year 2024-2025 and considerable investments in promotion. The plaintiffs also alleged that the product enjoyed a distinctive reputation through wide publicity and customer recognition in India.

The defendants, including Miniso Life Style Pvt. Ltd. and its Hong Kong-based affiliate, were alleged to have introduced a travel neck pillow in the Indian market that copied not only the design but also the distinctive colors used by the plaintiffs, such as gray, blue, purple, and pink. The plaintiffs alleged that the impugned products were an obvious imitation of their registered design and filed the present suit for design piracy and passing off.

Procedural Background: The plaintiffs initially approached the Bombay High Court seeking interim relief, which was granted by an ad-interim order dated 24 September 2024. This restrained the defendants from manufacturing, selling, or advertising the impugned product. In response, the defendants entered appearance and filed an affidavit-in-reply challenging the maintainability of the claim. While at first there was some dispute over whether the defendants needed to file a formal application under Order XXXIX Rule 4 of the Civil Procedure Code, both parties eventually agreed to treat the interim application as final. The Court reserved judgment after the final hearing on 24 June 2025 and delivered its decision on 31 July 2025.

Core Dispute:  The principal question before the Court was whether the defendants had infringed the plaintiffs’ registered design and thereby committed piracy as defined under Section 22 of the Designs Act, 2000. The dispute also encompassed whether the defendants’ conduct amounted to passing off. Central to the resolution of these questions were the issues of whether the plaintiffs' design was validly registered and entitled to protection, or whether it was disqualified due to being primarily functional or lacking novelty in light of prior art. The Court was also called upon to consider whether there had been suppression of material facts by the plaintiffs in the proceedings for interim relief.

Discussion on Judgments: The plaintiffs supported their claim by relying on several precedents. Paramount among them was the decision in Whirlpool of India Ltd. v. Videocon Industries Ltd., where the Bombay High Court had held that if a particular function could be achieved through numerous different forms, then the defence of functionality must fail. This proposition was critical to support the plaintiffs’ contention that their design, though partially functional, had sufficient aesthetic appeal to qualify for registration. The plaintiffs also cited Videocon Industries Ltd. v. Whirlpool of India Ltd., Sirona Hygiene Pvt. Ltd. v. Amazon Seller Services Pvt. Ltd., and Faber-Castell Aktiengesellschaft v. Pikpen Pvt. Ltd., all of which emphasized the necessity of visual appeal and the distinctiveness of design for establishing design infringement. In Parle Products Pvt. Ltd. v. DS Innovative Products LLP and Frito-Lay North America Inc. v. Balaji Wafers Pvt. Ltd., the courts reiterated the standard of deception and misrepresentation in passing off claims. The plaintiffs drew further support from Asian Rubber Industries v. Jasco Rubbers, Faber-Castell Aktiengesellschaft v. Cello Pens Pvt. Ltd., and Selvel Industries v. Om Plast (India), which upheld protection for designs that, although functionally relevant, possessed distinct aesthetic appeal.

In defence, the defendants referred to the Supreme Court’s recent pronouncement in Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., to argue that the test of “only option” had been replaced by the “dominant purpose of functional utility” test. They further relied on Smithkline Beecham Plc v. Hindustan Lever Ltd., where the Delhi High Court held that a toothbrush's S-shape was primarily functional. The defendants cited ITC Ltd. v. Controller of Patents and Designs to underscore that the functional aspects of a product should not be protected under design law. Additional references included Indiana Gratings Pvt. Ltd. v. Anand Udyog Fabricators Pvt. Ltd., Atomberg Technologies Pvt. Ltd. v. Luker Electric Technologies Pvt. Ltd., and Empire Industries Ltd. v. Union of India, all of which reiterated the exclusion of purely functional features from the ambit of design protection.

Reasoning and Analysis of the Judge: Justice Sharmila U. Deshmukh began her analysis by emphasizing the definition of “design” under Section 2(d) of the Designs Act, 2000. The definition mandates that a design must have features that appeal to and are judged solely by the eye, and that it must not be a mere mechanical device. The Court noted that while some features of the Tranquility Pillow might serve a functional purpose, the overall shape and configuration were aesthetically appealing and could not be considered purely functional.

The Court found that the defendants had accepted in their own affidavit that the plaintiffs’ product had visual appeal. Therefore, they could not subsequently argue that the design was unregistrable due to functionality. The pocket attached to the pillow, claimed by the defendants to be the core element, was held to be a mechanical appendage and not a contributor to visual distinctiveness. Moreover, the registration certificate specifically stated that the novelty resided in the shape and configuration of the neck pillow, and not in the mechanical function of the pocket.

The Court dismissed the argument that the design was not novel due to prior art. The materials produced by the defendants failed to establish that any similar design had been published in India or any foreign jurisdiction prior to the plaintiffs’ design. The illustrations annexed by the defendants were either from international jurisdictions without proper publication records or were not visually or configurationally similar to the plaintiffs' product.

Justice Deshmukh affirmed the continuing applicability of the “only option” test as laid down in Whirlpool v. Videocon, holding that the Supreme Court in Cryogas had not overturned this principle but rather contextualized it in the realm of copyright law. She held that as long as the same functional result could be achieved through a number of other visual designs, and as long as the design under scrutiny had eye appeal, it was registrable. Applying these principles, the Court concluded that the plaintiffs’ design was validly registered and entitled to protection under the Designs Act.

On the issue of passing off, the Court observed that the plaintiffs had established goodwill through consistent sales and marketing since 2015. The defendants’ product bore such close resemblance that a consumer could be easily deceived into thinking it originated from the plaintiffs. Since the neck pillow was typically displayed without packaging, the similarity in shape, color, and configuration was deemed likely to cause confusion.

Final Decision: The Court granted interim relief to the plaintiffs. The defendants were restrained from manufacturing, advertising, or selling any product that constituted an obvious imitation of the plaintiffs' registered design. They were also directed to remove online listings of the impugned products. The Court held that the plaintiffs had made out a prima facie case of both design infringement and passing off. The balance of convenience lay with the plaintiffs, and irreparable harm would result if the defendants were allowed to continue their activities.

Law Settled in This Case: This judgment reaffirms that a design which has both functional and aesthetic components can qualify for protection under the Designs Act, 2000, as long as the aesthetic appeal is discernible and not dictated solely by function. The “only option” test continues to apply in design infringement cases, even after the Supreme Court’s decision in Cryogas. The Court clarified that international registrations without evidence of prior publication or visual similarity cannot serve as grounds for cancellation of an Indian registered design. Further, the judgment reinforced that even in the absence of identical replication, a product that creates a similar visual impression may amount to passing off if there is likelihood of consumer deception.

Case Title: Travel Blue Products India Pvt. Ltd. and Anr. v. Miniso Life Style Pvt. Ltd. and Anr.

Date of Order: 31st July, 2025

Case Number: Interim Application (L) No. 28407 of 2024 in Commercial IPR Suit (L) No. 28275 of 2024

Neutral Citation: 2025:BHC-OS:12294

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Ms. Justice Sharmila U. Deshmukh

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

Tablets (India) Limited Vs The Registrar of Trademarks

Deemed Abandonment under Rule 45 of Trademarks Rules

Introduction: This legal case study examines a trademark opposition dispute between Tablets (India) Limited and M/s. Spey Medicals Private Limited, adjudicated by the High Court of Delhi. The core legal issues pertain to procedural compliance under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, particularly in regard to the timelines for filing and serving counter-statements, submission of evidence, and the consequence of failing to take appropriate steps within the statutory deadlines. The case reflects upon the tension between procedural technicalities and substantive rights and sets a precedent on whether failure to submit evidence or intimate non-submission can lead to automatic abandonment of opposition proceedings.

Factual Background: The Appellant, Tablets (India) Limited, is a company engaged in the business of manufacturing and marketing pharmaceutical and medical preparations. It claims proprietorship over the trademark “CEOF” registered under Class 5 of the Trade Marks Act, which covers medicinal and pharmaceutical products. According to the Appellant, it has been using the mark “CEOF” continuously since December 2011 and the mark has acquired substantial goodwill and recognition in the relevant market. The mark “CEOF” is stated to be exclusively associated with the Appellant.

Respondent No. 1, M/s. Spey Medicals Private Limited, subsequently filed an application for registration of the trademark “CEOFSPEY” under the same Class 5. The Appellant contended that the impugned trademark merely reproduces its prefix “CEOF” and adds the word “SPEY”, which does not add any distinctive character, and therefore the impugned trademark is deceptively similar to its own. The Appellant perceived this act as an attempt to ride on its goodwill and reputation.

Procedural Background: The application for registration of “CEOFSPEY” was advertised in Trade Marks Journal No. 1768 on 24 October 2016. The Appellant filed its notice of opposition under Section 21(1) of the Trade Marks Act on 8 November 2016 before the Registrar of Trade Marks (Respondent No. 2). Pursuant to the opposition, the Registrar issued a statutory notice dated 22 June 2017, directing the Applicant (Respondent No. 1) to file its counter-statement within two months.

According to the Appellant, Respondent No. 1 filed its counter-statement only on 30 August 2017, beyond the statutory period of two months. Moreover, the Appellant alleged that the counter-statement was never served upon it by the Registrar, as mandated under Section 21(3) of the Act. As a result, the Appellant claimed it remained unaware of the counter-statement and was therefore deprived of the opportunity to file evidence under Rule 45.

Subsequently, on 19 April 2018, the Registrar issued a notice of hearing fixed for 4 May 2018. Upon receiving this notice, the Appellant became aware of the counter-statement’s existence and filed written arguments on 30 April 2018. In its written submissions, the Appellant urged the Registrar to consider its arguments, pointing out that it had been unable to file evidence due to non-service of the counter-statement. However, the Registrar passed an order on 22 May 2018 treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, on the ground that the Appellant had failed to file evidence within the prescribed time. This impugned order was challenged by the Appellant before the High Court of Delhi.

Core Dispute: The appeal raised four principal legal questions. First, whether the counter-statement filed by Respondent No. 1 was within the prescribed time limit of two months as per Section 21(2) of the Act. Second, whether the counter-statement was properly served upon the Appellant as mandated under Section 21(3). Third, whether the filing of evidence under Section 21(4) and Rule 45 was mandatory, and what the consequence of non-compliance would be. Fourth, whether the Registrar was obligated to consider the Appellant’s written arguments under Rule 50(5) despite the absence of evidence.

Discussion on Judgments: The case referred to and relied upon several judicial decisions that elucidate the interpretation of procedural provisions under trademark law.

The Respondent referred to the judgment in Sun Pharma Laboratories Ltd. versus Dabur India Ltd. and Another, 2024 SCC OnLine DEL 813, wherein the Delhi High Court stressed the importance of maintaining strict timelines in opposition proceedings. The Court held that allowing extensions or flexible interpretations would frustrate the object of the Act and enable parties to indefinitely delay trademark registration.

The Court also considered the judgment in Surinder Corporation, U.S.A. versus Hindustan Lever Limited and Another, 2007 SCC OnLine Del 1018, which established that procedural timelines under Rule 50 (of the earlier Trade Mark Rules, 2002) are mandatory and not directory. The judgment observed that the Registrar does not have the discretion to condone delay or extend statutory periods unless explicitly empowered by the Act.

Further, in Mahesh Gupta versus Registrar of Trademarks and Another, 2023 SCC OnLine Del 1324, the Delhi High Court reaffirmed that strict compliance with Rules 45 and 50 is necessary and non-observance results in procedural consequences such as deemed abandonment or dismissal.

These precedents collectively laid down that the timelines prescribed in trademark opposition proceedings are of mandatory character and must be enforced strictly.

Reasoning and Analysis of the Judge: Justice Tejas Karia, after hearing both sides, addressed each of the four legal issues systematically.

On the question of whether the counter-statement was filed within time, the Court noted that while the counter-statement was dated 30 August 2017, there was no proof to show when the statutory notice issued on 22 June 2017 was actually received by Respondent No. 1. Given that the counter-statement was filed eight days after the two-month window from the date of notice, and lacking conclusive evidence regarding date of service, the Court assumed that the notice may have taken time in delivery. Therefore, the Court refrained from holding that the counter-statement was filed beyond time. The objection regarding delay was accordingly rejected.

On the second issue, regarding service of the counter-statement, the Court referred to Annexures R1 and R2, particularly an email dated 18 December 2017 and an internal note of the Registry, both evidencing that the counter-statement had been served upon the Appellant. The Appellant failed to deny or rebut this evidence, and the Court held that service had been validly effected.

On the third and more substantive issue—whether filing of evidence was mandatory—the Court explained that while Section 21(4) of the Act uses the word “may”, thereby indicating discretion, this discretion is subject to Rule 45(1) of the Trade Marks Rules. Rule 45 provides two clear alternatives: either the opponent must file evidence within two months from service of counter-statement, or inform the Registrar and the applicant in writing that it chooses not to file evidence and will rely on its opposition contentions. If neither of these actions is taken, Rule 45(2) provides that the opposition shall be deemed to have been abandoned.

The Court clarified that though submission of evidence may be optional, communication of the opponent’s intention—either to file evidence or to rely on existing contentions—is mandatory. In the present case, the Appellant had taken neither step and was thus subject to deemed abandonment under Rule 45(2).

Regarding the fourth issue, the Court considered whether the Registrar was obligated to take into account the written arguments filed by the Appellant under Rule 50(5). The Court held that Rule 50 applies only when evidence has been filed and the stage of hearing has been reached after closure of evidence. In the absence of evidence or a declaration not to file evidence, the proceeding does not reach the stage of Rule 50. Consequently, the Registrar was not obliged to consider the written arguments filed unilaterally by the Appellant.

Final Decision: The Delhi High Court upheld the order passed by the Registrar of Trade Marks and dismissed the appeal. The Court found that the Appellant had failed to comply with Rule 45(1) by not filing evidence or formally stating its decision not to do so. Therefore, as per Rule 45(2), the opposition was deemed to have been abandoned. Furthermore, the Court ruled that the Registrar was under no obligation to consider the Appellant’s written arguments since the procedural stage for hearing had not been validly reached. There was no procedural infirmity in the Registrar’s action. The Court declined to interfere with the impugned order and did not impose costs.

Law Settled in This Case: The judgment affirms and reinforces the strict procedural framework governing opposition proceedings under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The law settled in this case is that:Where a party fails to file evidence in support of opposition or to communicate its decision not to do so within the stipulated two-month period under Rule 45(1), the opposition is automatically deemed to have been abandoned under Rule 45(2), without requiring any further adjudication or discretion from the Registrar.The provision under Rule 50(5), which requires the Registrar to consider written arguments, applies only after the closure of evidence under Rule 50(1). In the absence of any validly filed evidence or intimation under Rule 45(1), the proceeding does not progress to the Rule 50 stage, and therefore the Registrar is not bound to consider any written arguments filed unilaterally.This decision establishes that while parties may choose not to file evidence, they are statutorily obligated to communicate that choice within time. Procedural non-compliance results in substantive consequences.

Case Title: Tablets (India) Limited Vs Spey Medicals Private Limited and another

Date of Order: 31 July 2025

Case Number: C.A.(COMM.IPD-TM) 76/2022

Neutral Citation: 2025:DHC:6268

Name of Court: High Court of Delhi

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

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

Suman Devi and Another Vs. Rakesh Kumar Sharma

Territorial Jurisdiction in Online Trademark Disputes

Introduction: The case of Suman Devi and Another v. Rakesh Kumar Sharma, adjudicated by the High Court of Delhi, represents a significant judicial examination of trademark infringement and passing off in the context of commercial disputes involving scientific and laboratory instruments. Heard under First Appeal from Order (FAO) (Commercial) 189/2025, this case involves an appeal against an interlocutory order issued by the Commercial Court, which granted  injunction restraining the appellants from using a mark deceptively similar to the respondent’s registered trademark “LABTRONICS.” The case delves into issues of trademark similarity, territorial jurisdiction, and the scope of appellate interference in interlocutory orders. 

Factual Background:Rakesh Kumar Sharma, the respondent, instituted a suit (CS (Comm) 410/2025) before the Commercial Court, alleging that Suman Devi and another (the appellants) were infringing his registered trademark “LABTRONICS” and passing off their goods as his. The respondent claimed to have coined and adopted the “LABTRONICS” mark in 2001 for scientific and laboratory instruments, including spectrophotometers, digital flame photometers, titrimeters, polarimeters, and microscopes. He held a valid and subsisting registration for the word mark “LABTRONICS” in Class 9, effective from 5 March 2010, though a device mark registration for “LABTRONICS” had expired due to non-renewal. The appellants, one of whom was a former employee of the respondent, were using the mark “LABTRON INSTRUMENTS” for identical goods, prompting allegations of deliberate infringement and passing off. The respondent argued that the appellants’ mark was deceptively similar, likely to confuse consumers, and capitalized on his established goodwill. The appellants contended that there was no phonetic or visual similarity between the marks and challenged the territorial jurisdiction of the Commercial Court, asserting that the respondent’s business activities did not extend to Delhi.

Procedural Background: The dispute originated in CS (Comm) 410/2025, where the respondent sought an injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC) to restrain the appellants from using the mark “LABTRON INSTRUMENTS” or any deceptively similar mark. On 2 June 2025, the Commercial Court granted an ex-parte ad-interim injunction, finding a prima facie case of trademark infringement and passing off, and appointed local commissioners to seize and inventory goods bearing the infringing mark at the appellants’ premises. Aggrieved, the appellants filed an appeal under Section 13 of the Commercial Courts Act read with Order XLIII of the CPC before the High Court of Delhi, challenging the injunction on grounds of lack of deceptive similarity and improper territorial jurisdiction. The appeal was heard by a Division Bench comprising Justice C. Hari Shankar and Justice Om Prakash Shukla, with Ms. Ishtha Singh representing the appellants and Mr. Amit Tiwari representing the respondent. The court delivered its oral judgment on 25 July 2025, affirming the Commercial Court’s order.

Core Dispute: The primary issues in this appeal were twofold: whether the appellants’ mark “LABTRON INSTRUMENTS” was deceptively similar to the respondent’s registered trademark “LABTRONICS,” constituting infringement under Section 29 of the Trade Marks Act, 1999, and passing off; and whether the Commercial Court in Delhi had territorial jurisdiction to entertain the suit. The appellants argued that the marks were distinct, with “LABTRON INSTRUMENTS” differing significantly due to the additional word “INSTRUMENTS” and the absence of the suffix “ICS.” They further contended that the respondent’s business activities did not extend to Delhi, rendering the suit jurisdictionally defective. The respondent countered that the marks were phonetically and visually similar, especially given the appellants’ prior association with his business, and that his online sales and distribution network in Delhi established jurisdiction. The court was tasked with assessing the prima facie case for injunction and the propriety of the Commercial Court’s exercise of discretion, while also considering the scope of appellate interference in interlocutory orders.

Discussion on Judgments:The High Court relied on several key precedents to address the issues of trademark infringement and territorial jurisdiction. In Banyan Tree Holdings (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3690, a Division Bench of the Delhi High Court initially set a stringent test for jurisdiction in online transactions, requiring purposeful availment of the jurisdiction through targeted website activity. This was cited by the appellants to challenge jurisdiction, arguing that the respondent’s online presence did not specifically target Delhi. However, the court noted that this test was modified by subsequent decisions. In World Wrestling Entertainment v. Reshma Collection, (2014) 6 SCC 429, the Supreme Court held that an interactive website accessible in a jurisdiction, where transactions are confirmed and payments made, establishes a cause of action, as the plaintiff’s offer is accepted within that jurisdiction. Similarly, Tata Sons Pvt. Ltd. v. Hakunamatata, 2016 SCC OnLine Del 3750, affirmed that a website’s accessibility and the plaintiff’s business activities, such as sales through distributors, suffice to confer jurisdiction, even without specific targeting. These cases were referenced to uphold the Commercial Court’s jurisdiction, given the respondent’s averments of selling goods through interactive websites and distributors in Delhi.

For trademark infringement, the court cited Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90, where the Supreme Court held that a finding of trademark infringement mandates an injunction, even on the first day of hearing, and delay is not a bar to such relief. In Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, the Supreme Court emphasized that in passing-off cases, courts must grant injunctions promptly to prevent consumer confusion and protect the plaintiff’s goodwill. These judgments were invoked to support the Commercial Court’s decision to issue an ex-parte injunction, as the prima facie case of infringement and passing off was established. Additionally, Wander Ltd. v. Antox India Pvt. Ltd., 1990 Supp SCC 727, was cited to delineate the scope of appellate interference, clarifying that an appellate court should not disturb a trial court’s discretionary order unless it is arbitrary, capricious, or contrary to settled legal principles. The appellants’ reliance on Section 34 of the Trade Marks Act, which protects prior continuous use, was not addressed in detail, as no evidence of such use was presented at the interlocutory stage.

Reasoning and Analysis of the Judge:Justice C. Hari Shankar, delivering the judgment for the Division Bench, meticulously analyzed the issues of deceptive similarity and territorial jurisdiction. On the question of trademark infringement, the court found that “LABTRONICS” and “LABTRON INSTRUMENTS” were deceptively similar, differing only in the suffix “ICS” and the descriptive word “INSTRUMENTS.” The court reasoned that “LABTRONICS” was a coined, inventive word, not a common English term, entitling it to heightened protection. The phonetic and visual similarity, coupled with the appellants’ use of the mark for identical goods, satisfied the criteria for infringement under Section 29(2)(b) of the Trade Marks Act, which covers marks similar to a registered trademark used for identical goods, likely to cause confusion or association. The court emphasized that the prior employment of Appellant 2 with the respondent suggested a conscious adoption of a similar mark to exploit the respondent’s goodwill, reinforcing the prima facie case of infringement and passing off. The Commercial Court’s findings were upheld, as they were based on a comparative analysis of the marks and supporting documents, including photographs, trademark certificates, and social media advertisements.

On territorial jurisdiction, the court rejected the appellants’ challenge, relying on the respondent’s averments that he conducted business in Delhi through distributors and interactive websites accessible within the jurisdiction. The court noted that World Wrestling Entertainment and Tata Sons had relaxed the Banyan Tree test, holding that a plaintiff’s online sales and distribution activities in a jurisdiction suffice to establish a cause of action under Section 20 of the CPC and Section 134 of the Trade Marks Act. The respondent’s business operations in Delhi, including sales through dealers and online platforms, justified the Commercial Court’s jurisdiction. The court further clarified that Section 134 provides an additional forum for trademark suits where the plaintiff resides or carries on business, alleviating the rigors of Section 20 CPC, as elucidated in Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161.

Regarding appellate interference, the court applied the principles from Wander Ltd., finding that the Commercial Court’s order was neither arbitrary nor perverse. The prima facie case, balance of convenience, and potential for irreparable harm favored the respondent, justifying the injunction. The court also addressed the appointment of local commissioners, finding it a reasonable measure to protect the respondent’s rights pending trial. However, it clarified that its observations were prima facie and would not bind the Commercial Court during the final adjudication.

Final Decision:On 25 July 2025, the High Court of Delhi dismissed the appeal in FAO (COMM) 189/2025, upholding the Commercial Court’s order dated 2 June 2025. The court affirmed the interim injunction restraining the appellants from using the mark “LABTRON” or any deceptively similar mark for scientific and laboratory instruments, as well as the appointment of local commissioners to seize infringing goods. The court found no grounds to interfere with the Commercial Court’s exercise of discretion, as it was based on a sound prima facie assessment of trademark infringement and passing off, supported by the respondent’s valid trademark registration and business activities in Delhi.

Law Settled in This Case:This case reaffirms several key principles in trademark law and civil procedure. It clarifies that a coined, inventive trademark like “LABTRONICS” enjoys heightened protection, and marks differing only in minor elements (e.g., suffixes or descriptive words) may be deemed deceptively similar under Section 29(2)(b) of the Trade Marks Act, particularly when used for identical goods. The judgment underscores that prior employment relationships can support inferences of intentional infringement, strengthening claims of passing off. On territorial jurisdiction, the case confirms that a plaintiff’s business activities through distributors and interactive websites accessible in a jurisdiction establish a cause of action under Section 20 CPC and Section 134 of the Trade Marks Act, aligning with the liberalized tests in World Wrestling Entertainment and Tata Sons. The decision also reiterates that appellate courts should exercise restraint in interfering with interlocutory injunctions unless the trial court’s discretion is arbitrary or contrary to law, as per Wander Ltd. Finally, it affirms that injunctions are mandatory in cases of clear trademark infringement, as per Midas Hygiene, and prompt relief is warranted in passing-off cases to prevent consumer confusion, as held in Laxmikant Patel.

Case Title: Suman Devi and Another Vs. Rakesh Kumar Sharma

Date of Order: 25 July 2025

Case Number: FAO (COMM) 189/2025

Neutral Citation: 2025:DHC:6149-DB

Name of Court: High Court of Delhi

Name of Judges: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Om Prakash Shukla

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

Sri Raghunath Ananda Rokhade Vs. The State of Karnataka

Quashing Criminal Proceedings for Non-Compliance of Section 115(4) of the Trade Marks Act 1999

Introduction: The case of Sri Raghunath Ananda Rokhade v. The State of Karnataka, adjudicated by the High Court of Karnataka at Dharwad, represents a pivotal judicial examination of procedural compliance in intellectual property-related criminal proceedings. Heard under Criminal Petition No. 102679 of 2025, this case involves a petition filed under Section 482 of the Code of Criminal Procedure (Cr.P.C.), corresponding to Section 528 of the Bharatiya Nagarik Suraksha Sanhita (BNSS), 2023, seeking to quash a charge sheet and related proceedings against the petitioner for alleged offences under Section 420 of the Indian Penal Code (IPC) and Sections 65 and 68 of the Copyright Act, 1957. The core issue revolves around the misapplication of the Copyright Act instead of the Trade Marks Act, 1999, and the procedural irregularity of a police search conducted without requisite authority. 

Factual Background: Sri Raghunath Ananda Rokhade, a 56-year-old businessman from Pune, Maharashtra, was named as accused number 5 in a criminal case initiated by the Kudachi Police in Raibag, Belagavi District, Karnataka. The allegations stemmed from the petitioner’s alleged involvement in selling counterfeit goods, specifically 900 shirts, 200 pants, 30 T-shirts bearing the label "Allen Solly," 20 shirts of "Van Heusen," 40 shirts of "Peter England," and 30 shirts of "Louis Philippe." These actions were claimed to have caused a financial loss of Rs. 13,50,000 to the respective brand owners. The Kudachi Police filed a charge sheet in C.C. No. 1502/2021, accusing the petitioner of offences under Section 420 of the IPC for cheating and Sections 65 and 68 of the Copyright Act, 1957, for knowingly infringing copyright and possessing infringing copies. The petitioner contended that the allegations pertained to trademark infringement under the Trade Marks Act, 1999, rather than copyright infringement, and that the police investigation, including a search and seizure conducted by a Sub-Inspector, violated the mandatory procedural requirements of Section 115(4) of the Trade Marks Act, which mandates that such actions be performed by an officer not below the rank of Deputy Superintendent of Police (DSP) with the Registrar’s opinion.

Procedural Background: The petitioner filed a criminal petition under Section 482 of the Cr.P.C. (Section 528 of BNSS, 2023) before the High Court of Karnataka, Dharwad Bench, seeking to quash the charge sheet and proceedings in C.C. No. 1502/2021 pending before the Civil Judge and JMFC Court, Raibag. The petition was argued on the grounds that the charges under the Copyright Act were inapplicable, as the allegations related to trademark infringement, and that the investigation was procedurally flawed due to non-compliance with Section 115(4) of the Trade Marks Act. The case was heard by Justice Venkatesh Naik T, with Shri Ramachandra A. Mali representing the petitioner and Smt. Kirtilata R. Patil, the High Court Government Pleader, representing the State. The court delivered its oral order on 24 July 2025, relying on prior precedents to address the legal issues raised.

Core Dispute: The central issue in this case is whether the charge sheet and proceedings in C.C. No. 1502/2021 should be quashed due to the misapplication of the Copyright Act, 1957, instead of the Trade Marks Act, 1999, and the procedural irregularity of a search and seizure conducted by a Sub-Inspector, contrary to the requirement under Section 115(4) of the Trade Marks Act. The petitioner argued that the allegations of selling counterfeit branded goods constituted offences under Sections 103 and 104 of the Trade Marks Act, which address the application of false trademarks and the sale of goods with such marks, rather than copyright infringement under Sections 65 and 68 of the Copyright Act. Additionally, the petitioner contended that the investigation was vitiated because the search and seizure were conducted by an officer below the rank of DSP without obtaining the Registrar’s opinion, rendering the proceedings unlawful. The State did not dispute that the allegations aligned with trademark offences and conceded that the procedural requirements were not met. The dispute thus hinged on the correct legal framework for the alleged offences and the validity of the investigation process.

Discussion on Judgments: The petitioner relied on two prior decisions of coordinate benches of the Karnataka High Court to support his case. In Criminal Petition No. 2080/2023, disposed of on 19 June 2024, the court addressed a similar issue, holding that a complaint registered without prior permission under Section 115(4) of the Trade Marks Act, which requires a DSP or equivalent officer to conduct searches and seizures with the Registrar’s opinion, was contrary to law and liable to be quashed. Similarly, in Criminal Petition No. 6096/2016, disposed of on 28 February 2019, the court quashed an FIR and proceedings in C.C. No. 15917/2016, finding that allegations of selling counterfeit branded goods (including Allen Solly, Van Heusen, Peter England, and Louis Philippe products) constituted offences under Section 104 of the Trade Marks Act, not under Sections 51 and 63 of the Copyright Act. The court in that case noted that the search and seizure by a Sub-Inspector violated Section 115(4), and the absence of consumer complaints negated the applicability of Section 420 of the IPC for cheating. These judgments were cited to argue that the present case involved identical issues of misapplied legal provisions and procedural non-compliance, warranting quashing of the proceedings.

Reasoning and Analysis of the Judge: Justice Venkatesh Naik T delivered a concise yet robust oral order, focusing on the legal and procedural flaws in the prosecution’s case. The court first addressed the applicability of the Copyright Act, noting that Section 13(1) limits copyright protection to original literary, dramatic, musical, artistic works, cinematograph films, and sound recordings. The allegations against the petitioner involved selling goods with counterfeit brand labels, which did not involve claiming copyright or producing works under the Copyright Act but rather implicated false trademark use under Section 104 of the Trade Marks Act, 1999, which prescribes penalties for selling goods with false trademarks or descriptions. The court found that the prosecution’s reliance on Sections 65 and 68 of the Copyright Act was misplaced, as the facts did not satisfy the ingredients of copyright infringement, such as reproducing or distributing protected works.

The court then examined the procedural issue under Section 115(4) of the Trade Marks Act, which mandates that searches and seizures for trademark offences be conducted by a police officer not below the rank of DSP, with the Registrar’s opinion. The search in this case, conducted by a Sub-Inspector, violated this requirement, rendering the investigation and subsequent charge sheet legally invalid. The court also noted the absence of complaints from consumers or affected parties to support the charge of cheating under Section 420 of the IPC, further undermining the prosecution’s case. Relying on the precedents in Criminal Petition No. 2080/2023 and Criminal Petition No. 6096/2016, the court concluded that the proceedings were vitiated by both the incorrect application of the Copyright Act and the failure to comply with the Trade Marks Act’s procedural mandates, justifying the quashing of the charge sheet and proceedings.

Final Decision: On 24 July 2025, the High Court of Karnataka at Dharwad allowed Criminal Petition No. 102679 of 2025, quashing the charge sheet and entire proceedings in C.C. No. 1502/2021 pending before the Civil Judge and JMFC Court, Raibag, insofar as they related to the petitioner, Sri Raghunath Ananda Rokhade. The court held that the charges under Section 420 of the IPC and Sections 65 and 68 of the Copyright Act, 1957, were inapplicable, and the investigation was procedurally flawed due to non-compliance with Section 115(4) of the Trade Marks Act, 1999.

Law Settled in This Case: This case reinforces the distinction between trademark and copyright offences, clarifying that allegations of selling counterfeit goods with false brand labels fall under Sections 103 and 104 of the Trade Marks Act, 1999, rather than the Copyright Act, 1957, unless the accused is claiming or infringing copyright in original works. It underscores the mandatory procedural requirement under Section 115(4) of the Trade Marks Act, which restricts search and seizure operations for trademark offences to police officers of DSP rank or above, with the Registrar’s opinion, and holds that non-compliance vitiates the investigation and subsequent proceedings. The judgment also affirms that the absence of consumer complaints or evidence of deceit negates the applicability of Section 420 of the IPC in such cases. By quashing the proceedings under Section 482 of the Cr.P.C. (Section 528 of BNSS), the case highlights the court’s inherent power to prevent abuse of process when charges are misapplied or investigations are procedurally defective, ensuring fair administration of justice in intellectual property disputes.

Case Title: Sri Raghunath Ananda Rokhade Vs. The State of Karnataka 

Date of Order: 24 July 2025 

Case Number: Criminal Petition No. 102679 of 2025 

Neutral Citation: 2025:KHC-D:9134 

Name of Court: High Court of Karnataka, Dharwad Bench 

Name of Judge: Hon’ble Mr. Justice Venkatesh Naik T

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