Mahesh Gupta Vs The Registrar of Trademarks

Introduction

This case study explores the appeal filed by Mahesh Gupta against an order passed by the Registrar of Trademarks. The dispute concerns the cancellation of the registration of a trademark "SMART CHEF APPLIANCES" under Class 21. Registered under the Trade Marks Act, 1999, the appeal challenges the Registrar’s decision to rectify the Trade Marks Register by cancelling the said mark while the identical mark under Class 11 continues to subsist. The case navigates key principles in trademark law, specifically dealing with registration, objections under Sections 9(1)(a) and 9(1)(b), and the application of rectification proceedings under Section 57(4).

Factual Background

The appellant, Mahesh Gupta, filed applications for the registration of the mark “SMART CHEF APPLIANCES” under two classes—Class 11 and Class 21—on October 29, 2021. Following the examination process, the applications faced objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act. The appellant responded with submissions and appeared for hearings before the trademark examiner. Upon acceptance of the replies, the Registrar accepted the applications, and the marks were advertised in the Trade Marks Journal on January 29, 2024, with the registration certificates issued on June 17, 2024. Subsequently, the Registrar issued notices under Section 57(4) proposing rectification of the register, targeting the registration under Class 21 on grounds mirroring the earlier examination objections.

Procedural Background

Following the issuance of rectification notices, the appellant filed replies and participated in a virtual hearing. The Registrar, dissatisfied with the appellant’s submissions, passed an order on June 3, 2025, cancelling the registration for the mark under Class 21 and rectifying the register accordingly. Aggrieved by this cancellation, the appellant filed the present appeal under Section 91 of the Trade Marks Act, 1999. The appellant concurrently moved for a stay of the Registrar’s cancellation order, arguing that the mark under Class 11 remained on the register, highlighting inconsistent treatment. The Delhi High Court accepted the notice of appeal and granted interim relief by staying the operation of the impugned order pending the final hearing.

Core Dispute

The core dispute revolves around the legality and reasonableness of the Registrar’s order cancelling the trademark registration under Class 21 while allowing the identical mark under Class 11 to subsist on the register. The appellant challenges this differential treatment as arbitrary and violative of the principles of natural justice. Significant emphasis is placed on the application of Sections 9(1)(a) and 9(1)(b), which relate to absolute grounds for refusal of trademark registration such as lack of distinctiveness or deceptive similarity. The appellant also contests the Registrar’s apparent disregard of the anti-dissection rule, which prohibits dissecting a composite trademark to invalidate a part while protecting the whole.

Discussion on Judgments

The parties cited several relevant judgments to support their positions. The appellant relied on established case law affirming the principle that identical marks registered under different classes related to allied and cognate goods should be treated uniformly to prevent arbitrariness. The principle of anti-dissection cited by the appellant reflects judgments which hold that trademarks should be considered as a whole, rather than dissected into components for the purpose of refusal or cancellation. The respondent referenced precedents empowering the Registrar’s discretion under Section 57(4) for rectification and under Sections 9(1)(a) and 9(1)(b) for refusal on grounds of distinctiveness and resemblance. However, the detailed citations of these judgments and their factual contexts were not explicitly recorded in the order, implying that nuanced legal argumentation on judicial precedents was part of the submissions considered by the Court.

Reasoning and Analysis of the Judge

Justice Tejas Karia observed that the appellant had made a prima facie case warranting interim protection of the trademark under Class 21 pending final adjudication. The Court noted that the mark registered under Class 11 continued to legally subsist, which underscored the appellant’s argument about inconsistent treatment. It was reasoned that immediate cancellation of the Class 21 mark without uniform application of law could cause irreparable harm to the appellant, including exposure to third-party adoption and market confusion. The judge found no immediate prejudice to the Registrar if the operation of the cancellation order was stayed. Based on these considerations, the Court temporarily stayed the operation of the impugned order, balancing the interests of both parties pending resolution. This interim relief reflected a commitment to fairness and procedural justice without prejudging the merits.

The Court granted a stay on the operation of the Registrar’s order dated June 3, 2025, which cancelled the registration of the trademark “SMART CHEF APPLIANCES” under Class 21. The stay was granted on the grounds of the prima facie case made by the appellant, the subsistence of the identical mark under Class 11, and the potential harm that could arise from premature cancellation. The matter was posted for further hearing on September 26, 2025, to decide the substantive issues raised in the appeal.

This case reinforces the principle that trademark registrations under allied classes for identical marks should be subject to consistent and fair treatment by the Registrar of Trademarks. It highlights that cancellation orders must be reasoned with cogent justification, respecting natural justice and the anti-dissection rule. Further, the case affirms the scope of interim relief in trademark disputes to prevent undue harm pending final adjudication, balancing parties’ rights while the legal questions remain unresolved. The decision underscores the importance of procedural fairness in rectification proceedings under the Trade Marks Act, 1999.

Mahesh Gupta Vs The Registrar of Trademarks: August 19, 2025:C.A.(COMM.IPD-TM) 50/2025: Hon’ble Mr. Justice Tejas Karia

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.

Rajat Gupta Vs. Rupali Gupta

Rajat Gupta vs. Rupali Gupta 

Introduction

This case revolves around a reference made by a Single Judge of the Delhi High Court to a Division Bench concerning the applicability of contempt proceedings in matters involving mutual consent divorce under the Hindu Marriage Act, 1955. The reference arises from a batch of contempt petitions where one spouse alleged willful disobedience by the other in failing to adhere to undertakings to proceed with divorce by mutual consent. The court examined whether such failures attract contempt liability, considering the statutory framework that allows parties to reconsider their decision during the divorce process. The judgment clarifies the boundaries between enforcing settlements and respecting the legislative intent behind mutual consent provisions, emphasizing the protection of marital institutions while addressing breaches of court-accepted undertakings.

Factual Background

The reference stems from multiple contempt petitions filed before the Delhi High Court, where petitioners claimed that respondents had breached undertakings to file or appear in petitions for divorce by mutual consent. In most cases, the parties had entered into settlements, either in court through mediation or outside, agreeing to dissolve their marriage under Section 13B of the Hindu Marriage Act, 1955. These settlements often included considerations such as monetary payments, property transfers, or child custody arrangements. The undertakings were recorded in consent orders or joint statements accepted by the court. However, in several instances, one spouse refused to proceed with the first motion under Section 13B(1) or the second motion under Section 13B(2), leading to allegations of willful disobedience. The table provided in the judgment details 17 such cases, highlighting whether settlements were reached in or outside court, the stage of proceedings, and the petitioner's gender. Except for two cases without consideration, all involved undertakings against monetary or other benefits.

Procedural Background

The contempt petitions were initially heard by a Single Judge of the Delhi High Court, who noted conflicting views in prior judgments regarding contempt for failing to honor undertakings in mutual consent divorce proceedings. Doubting the correctness of certain Single Judge decisions in light of a Division Bench ruling, the judge framed four questions of law on January 9, 2017, and referred the matter to a larger bench. The Division Bench, comprising Justices Hima Kohli and Deepa Sharma, appointed an Amicus Curiae and heard arguments from counsels representing the parties. The bench analyzed statutory provisions, judicial precedents on contempt and waiver, and the public policy implications of marriage. After extensive deliberation, the reference was answered on May 15, 2018, providing clarity on the issues and guidelines for family courts.

Core Dispute

The central issue is whether a spouse can be held liable for contempt of court for failing to file or appear in mutual consent divorce proceedings despite an undertaking to do so, given the statutory right under Section 13B(2) to withdraw consent during the cooling-off period. The dispute balances the enforcement of court-accepted settlements against the legislative intent to allow reconsideration in divorce matters, which are rooted in public policy favoring the preservation of marriage. It also examines if such undertakings waive the right to rethink, the need for judicial guidelines in recording settlements, and the validity of prior judgments on similar issues.

Discussion on Judgments

The parties cited several judgments to support their positions on contempt, waiver, and mutual consent divorce. Sureshta Devi vs. Om Prakash, (1991) 2 SCC 25, was referred to emphasize that mutual consent must continue until the decree is passed, allowing unilateral withdrawal at any stage before the final order, as it underscores the ongoing nature of consent in Section 13B proceedings. Smruti Pahariya vs. Sanjay Pahariya, (2009) 13 SCC 338, was discussed in the context of mutual consent being a jurisdictional fact, requiring the court to verify its genuineness at the second motion stage, reinforcing that consent cannot be presumed from initial filings. Anil Kumar Jain vs. Maya Jain, (2009) 10 SCC 415, was cited to highlight that irretrievable breakdown is not available to lower courts, and consent must subsist throughout, supporting the argument against compelling divorce. Hitesh Bhatnagar vs. Deepa Bhatnagar, AIR 2011 SC 1637, was used to argue that decree requires complete satisfaction of free consent, allowing withdrawal unless proven otherwise. Rajesh R. Nair vs. Meera Babu, AIR 2014 Kerala 44, was referenced to contend that courts cannot probe the bona fides of consent withdrawal, as it is an unqualified right under Section 13B(2). Prakash Alumal Kalandari vs. Jahnavi Prakash Kalandari, AIR 2011 BOM 119, was invoked to suggest that unilateral withdrawal after acting on consent terms may not be permitted if detrimental to the other party. Ishita Kunal Sangani vs. Kunal Sudhir Sangani, 2014 (6) ABR 767, was mentioned but noted as quashed by the Supreme Court. Rama Narang vs. Ramesh Narang and Anr., 2006(11) SCC 114, was cited to argue that breach of a consent decree amounts to contempt, as it combines contract and judicial command. Ashok Paper Kamgar Union vs. Dharam Godha and Ors., 2003(11) SCC 1, was referred to define willful disobedience in civil contempt, emphasizing intent and feasibility. Kanwar Singh Saini vs. High Court of Delhi, (2012) 4 SCC 307, was used to distinguish contempt from execution in post-decree breaches. Krishna Bahadur vs. Purna Theatre and Ors., (2004) 8 SCC 229, was discussed for the principle that statutory rights can be waived if no public interest is involved. Hirabai Bharucha vs. Pirojshah Bharucha, AIR (32) 1945 Bombay 537, was cited to illustrate maintenance as a public policy matter that cannot be waived. Jyoti vs. Darshan Nirmal Jain, AIR 2013 Gujarat 2018, was referenced to stress marriage's public policy dimension, requiring efforts to sustain it. Nagendrappa Natikar vs. Neelamma, 2014(14) SCC 452, was used to argue that maintenance rights cannot be waived due to social welfare considerations. Angle Infrastructure Pvt. Ltd. vs. Ashok Manchanda & Ors., 2016(156) DRJ 290(DB), was invoked to explain enforcement of mediated settlements under Section 89 CPC. Afcons Infrastructure Ltd. vs. Cherian Varkey Construction Company Private Limited, (2010) 8 SCC 24, was cited for ADR mechanisms and their execution. Dr. Keshaorao Krishnaji Londhe vs. Mrs. Nisha Londhe, AIR 1984 BOMBAY 413, was referred to trace the evolution from fault theory in divorce laws. Shri Lachoo Mal vs. Radhey Shyam, 1971(1) SCC 619, was used to validate waivers without statutory prohibition. Rajiv Chhikara vs. Sandhya Mathur, 2017 (161) DRJ 80 (DB), was cited to treat resiling from settlements as cruelty. Amardeep Singh vs. Harveen Kaur, (2017) 8 SCC 746, was discussed for waiving the cooling-off period in irretrievable breakdowns. Supreme Court Bar Association vs. Union of India & Anr., (1998) 4 SCC 409, was referred to affirm inherent contempt powers. T. Sudhakar Prasad vs. Govt. of A.P. and Ors., (2001) 1 SCC 516, was cited to confirm contempt powers' constitutional basis. S. Balasubramaniyam v. P. Janakaraju & Anr., 2004 (5) Kar. LJ 338, was invoked for breach of undertaking as contempt. Inderjit Kaur vs. Rajinder Singh, 18 (1980) DLT 197, was used to consider changed circumstances in dropping contempt. Ashish Ranjan vs. Anupma Tandon, (2010) 14 SCC 274, was cited for agreements defeating statutes not attracting contempt. Rajesh vs. Mrs. Bhavna, 2008(6) Mh.L.J. 853, was referred to prevent mala fide withdrawals. D.N. Taneja vs. Bhajan Lal, (1988) 3 SCC 26, was discussed to limit the petitioner's role in contempt to informer. Shailesh Dhairyawan vs. Mohan Balkrishna Lulla, (2016) 3 SCC 619, was cited to affirm consent orders' enforceability. Pramod Gupta vs. State of U.P., (1990) Supp SCC 60, was used for waiving interest rights.

Reasoning and Analysis of the Judge

The Division Bench meticulously analyzed the statutory framework of Section 13B of the Hindu Marriage Act, 1955, emphasizing that mutual consent must persist from the first motion to the decree's passage, allowing unilateral withdrawal during the cooling-off period to reflect the provision's intent of enabling reconsideration. The judges distinguished contempt jurisdiction, noting it operates independently and can address breaches of undertakings in settlements, but cannot compel consent for divorce, as that would contravene the statute's public policy favoring marriage preservation. They clarified that while undertakings to file motions cannot waive the right to rethink under Section 13B(2), breaches of other settlement terms, like financial obligations, may attract contempt if willful and detrimental. The bench reconciled prior judgments, affirming that contempt powers are inherent but must align with statutory limits, and provided guidelines for recording settlements to ensure clarity and enforceability, balancing judicial authority with legislative intent.

Final Decision

The Division Bench answered the referred questions, holding that while a party cannot be compelled to consent to mutual divorce despite undertakings, breaches of settlements may constitute civil contempt if willful. The judgments in Avneesh Sood and Shikha Bhatia were upheld as good law, not conflicting with Dinesh Gulati, which was case-specific. Guidelines were issued for courts to follow in recording settlements.

Law Settled in This Case

This judgment settles that mutual consent under Section 13B must continue until the decree, allowing withdrawal without contempt for non-consent, but permitting contempt for other settlement breaches if willful. It affirms no waiver of the reconsideration right under Section 13B(2), as it involves public policy. Courts must record settlements with clear terms, undertakings, and consequences, enforceable via contempt sparingly. Prior Single Judge decisions align with this, and guidelines ensure equitable handling of mutual consent divorces.

 Rajat Gupta Vs. Rupali Gupta :15.05.2018: Cont.Cas(C) 772/2013,  High Court of Delhi: Justice Hima Kohli and Justice Deepa Sharma

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.

YMI Ghar Soaps Private Limited Vs. Ashok Kumar Trading as Bendist Export Hamare Ghar Ka Soaps

Case Title: YMI Ghar Soaps Private Limited Vs. Ashok Kumar 

Date of Order: 19 August 2025

Case Number: CS(COMM) 849/2025

Name of Court: High Court of Delhi

Name of Judge: Ms. Justice Manmeet Pritam Singh Arora

The plaintiff, YMI Ghar Soaps Private Limited, approached the court seeking protection against infringement and passing off of its trademark ‘GHAR SOAPS’ and related packaging by unknown, unscrupulous entities listing counterfeit products on various e-commerce platforms. The plaintiff started its business in 2019, incorporated the company in 2024, and claimed substantial sales and brand goodwill. It alleged that defendants were selling counterfeit soaps with similar packaging and trademarks, and were unfairly benefiting from ‘latching on’ to the plaintiff’s listings, resulting in consumer confusion and bad reviews negatively impacting the real brand.

The suit involved applications for leave to file documents, exemption from pre-litigation mediation, and exemption from advance service upon certain defendants, all of which were granted. The court directed several e-commerce platforms to provide information about sellers and to block infringing listings after the plaintiff amended the memo of parties.

The dispute centered on trademark and copyright infringement by John Doe defendants and the failure of e-commerce platforms to provide effective and lasting remedies against such listings. The plaintiff also pointed out that certain defendants misused commercial platform schemes to gain visibility and cause unfair competition and deception.

The court found that the plaintiff’s mark ‘GHAR SOAPS’ had acquired reputation and goodwill, and observed significant confusion for consumers due to counterfeit products with deceptively similar packaging on various platforms. It granted ex-parte interim injunction restraining defendants from using the plaintiff’s trademark, trade dress, or copyright works in any manner, and directed e-commerce platforms to block and remove fraudulent listings and take swift remedial action on plaintiffs’ requests. For one defendant, the court issued a limited direction to disconnect listings that misleadingly appeared alongside the plaintiff’s products.

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.

PI Investment Advisory LLP & Anr. Vs. Registrant of Premjiex.com

Case Title: PI Investment Advisory LLP & Anr. Vs. Registrant of Premjiex.com & Ors.

Date of Order: 18 August 2025

Case Number: CS(COMM) 846/2025

Name of Court: High Court of Delhi

Name of Judge: Ms. Justice Manmeet Pritam Singh Arora

The plaintiffs, PI Investment Advisory LLP and its group entity, filed this suit seeking protection of their registered trademarks and copyrighted content from misuse and fraudulent impersonation. They alleged that defendants, including the registrant of "Premjiex.com" and unknown persons, were running fake websites, mobile apps, and social media campaigns using the plaintiffs’ marks, name, and management photos to solicit investments and defraud the public. The plaintiffs maintained an official website and highlighted their strict policy of not soliciting public investments via social media or apps. The suit identified specific fake domains and applications, details of deceptive WhatsApp groups, and listed bank accounts used for fraudulent activities.

The suit came before the court with applications for court fee exemption, leave to file additional documents, exemption from pre-litigation mediation, and exemption from advance notice to certain defendants. The court disposed of these applications, granted registrations, and issued summons to various defendants by permissible modes while making directions for service and pleadings.

The dispute centers on the plaintiffs’ allegation of unauthorized use of their trademarks "PREMJI INVEST" and related branding for fraudulent financial activities online, as well as passing off and copyright infringement.

The court found a prima facie case in favor of the plaintiffs and granted ex-parte ad-interim injunction, restraining the defendants and unknown entities from any form of infringement or passing off of the plaintiffs’ IP. The court directed the domain registrar to suspend the infringing domains and reveal registrant details, ordered government departments and Google LLC to block access to the fake website and apps, instructed Meta and WhatsApp to remove fraudulent posts and groups, and directed banks to freeze related accounts. The dynamic injunction allows swift blocking of any new infringing websites or applications discovered subsequently.

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.

Maschio Gaspardo S.P.A Vs Maschio Crop Protection Llp

Case Title: Maschio Gaspardo S.P.A Vs Maschio Crop Protection LLP

Date of Order: 14.08.2025

Case Number: CS(COMM) 842/2025

Name of Court: High Court of Delhi

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

The Plaintiff, an internationally recognized agricultural equipment manufacturer with longstanding use and registration of the “MASCHIO” trademark (including stylized variants), found in October 2024 that the Defendant, Maschio Crop Protection LLP, was using the mark “MASCHIO” and its variants for similar agricultural goods in India. The Plaintiff’s mark, originating from the founder’s family name, has been used since 1964 globally, and since 1998 in India through its subsidiary, with significant sales and social media presence (para 23–23.5). Upon investigation, the Plaintiff discovered the Defendant’s use of the “MASCHIO” mark (along with “ITALIAN”) on products and e-commerce platforms, which the Plaintiff contended was an act of deliberate imitation likely to confuse consumers and dilute the brand’s goodwill (para 23.6–23.19).

Procedurally, the Plaintiff sought exemption from pre-institution mediation and original document filing, which the Court granted. Applications for leave to file additional documents were also allowed. The plaint was ordered to be registered, and summons issued for service (para 2–21).

The core dispute concerned the allegation of infringement of the Plaintiff's registered “MASCHIO” trademark, passing off, and unfair trade practices by the Defendant using identical or deceptively similar marks in the same industry sector, potentially misleading the public about association with the Plaintiff (para 12, 23.11–23.17, 28).

The Court, finding a prima facie case, balance of convenience in Plaintiff's favour, and irreparable harm to Plaintiff if not protected, granted an ad-interim ex-parte injunction restraining the Defendant and affiliates from using “MASCHIO,” “MASCHIO ITALIAN,” or any deceptively similar marks or names in relation to goods/services identical or similar to the Plaintiff’s, until the next hearing (para 29–30).

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.

ITC Limited Vs Interstellar Testing Centre Pvt. Ltd.

 ITC Limited Vs Interstellar Testing Centre Pvt. Ltd.:21.08.2025:IP-COM/42/2024 :High Court at Calcutta :Hon’ble Justice Ravi Krishan Kapur

The suit concerns ITC Limited’s claim for infringement and passing off against Interstellar Testing Centre Pvt. Ltd., objecting to the latter’s use of the “ITC LABS” mark and the domain www.itclabs.com. ITC Limited alleged urgent interim relief was necessary and obtained exemption from pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. Upon challenge, it emerged that Interstellar Testing Centre Pvt. Ltd. had used “ITC LABS” for over thirty years, well before 2022, and ITC Limited had prior dealings with it, contradicting claims of recent discovery and urgency in the plaint. The court found that material facts were suppressed and the urgency was artificially created. Based on binding precedents, especially Dhanbad Fuels v. Union of India, as the suit was instituted before 20.08.2022, the court ordered a stay of proceedings, directing both parties to undergo compulsory mediation as per Section 12A within three months from the date of order.

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.

Chacha Saree Bazar Pvt. Ltd. Vs Chacha Cloth House

Chacha Saree Bazar Pvt. Ltd. & Anr. Vs Chacha Cloth House:19 August 2025: FAO (COMM) 217/2025: Hon'ble Justice C. Hari Shankar and Justice Om Prakash Shukla

The appellants, Chacha Saree Bazar Pvt. Ltd., are registered proprietors of several trademarks containing the word "CHACHA" and are engaged in trading sarees, textiles, clothing, and related goods. The respondents, operating as Chacha Cloth House, do not have trademark registration. The appellants claimed that the respondents’ use of “CHACHA,” “CHACHA CLOTH HOUSE,” and related marks constituted infringement of their registered trademarks. The appellants initially succeeded in obtaining an ex parte ad interim injunction in their favour from the Commercial Court. However, the Commercial Court later vacated the injunction and dismissed the appellant's application for interim relief, reasoning that "CHACHA" is a generic word over which no monopoly could be claimed unless it had acquired a secondary meaning exclusively linked to the appellants in the minds of consumers (Paras 17, 18). On appeal, the High Court noted the substance of the appellant’s argument that the genericness of a mark must be assessed in the context of the relevant goods, and found the submission merited consideration. Consequently, the High Court stayed the operation of the Commercial Court’s order and restored the earlier ad interim injunction in favour of the appellants, pending the next hearing.

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.

Bikaner Sweets Corner Vs. Balaji Corner

Bikaner Sweets Corner Vs. Balaji Corner & Ors.: 19.08.2025: CS(COMM) 835/2025:Hon'ble Justice Manmeet Pritam Singh Arora

The plaintiff, Bikaner Sweets Corner, claimed long-standing use and goodwill of the trademark/tradename ‘BIKANER SWEET CORNER’ at Paharganj since 2006, building upon their predecessor's business from 1982, and alleged that the defendants opened an adjoining outlet with identical name, external appearance, layout, signage, and packaging, thereby seeking to pass off their goods and services as those of the plaintiff and exploit plaintiff's reputation. The defendants justified their use based on a trademark assignment deed from Defendant No. 3, who claimed to be the prior user with applications dating to 2004 and some invoices, but failed to show uninterrupted commercial use of the mark in the relevant locality.

The court, considering statutory records, photographs, and evidence of goodwill and continuous use since 2006, held that the plaintiff was the prior and honest user of the mark ‘BIKANER SWEET CORNER’ in Paharganj, and found the defendants’ adoption and use to be non-bona fide, amounting to passing off and misrepresentation likely to cause confusion among consumers. An interim injunction was granted restraining the defendants from using the impugned mark and requiring the removal of infringing signboards and packaging, with directions for further pleadings and compliance.

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.

Glaxo Group Limited Vs. Aubade Healthcare Private Limited

Glaxo Group Limited Vs. Aubade Healthcare Private Limited and Anr.: 14.08.2025: CS(COMM) 841/2025: Hon'ble Justice Manmeet Pritam Singh Arora

The plaintiff, Glaxo Group Limited, filed a suit seeking a permanent injunction to restrain the defendants from infringing its registered trademark ZENTEL and from passing off, along with claims for rendition of accounts and other reliefs. The matter relates to the plaintiff’s long-standing use and registration of the invented coined trademark ZENTEL for an antiparasitic pharmaceutical product launched globally in 1982 and in India since 1986, and alleges that the defendants adopted the visually and phonetically similar mark RENTEL for a medicinal product for hypertension, leading to potential consumer confusion and public health risks. The plaintiff discovered the defendants’ trademark application for RENTEL, issued a cease-and-desist notice, and indicated readiness for an amicable solution, but the defendants claimed bona fide adoption and denied similarity.

Procedurally, the court granted various procedural exemptions and directions for the plaint and documents, recognised the need for urgent interim relief waiving pre-litigation mediation, and registered the plaint. Observing the similarity between the marks and the non-prescription status of both products, the court found a prima facie case for the plaintiff and, considering balance of convenience and potential for irreparable harm, granted an ex-parte ad-interim injunction restraining the defendants from using the mark RENTEL or any deceptively similar mark for pharmaceutical products till the next date of hearing.

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.

Elsevier Ltd. and Ors. Vs. Alexandra Elbakyan

Elsevier Ltd. and Ors. Vs. Alexandra Elbakyan and Ors. is a copyright infringement case filed in the High Court of Delhi at New Delhi. The case, numbered CS(COMM) 572/2020, involves multiple interim applications including I.A. 12668/2020, I.A. 197/2021, I.A. 590/2021, and others, with the order dated 19.08.2025 delivered by Hon'ble Ms. Justice Manmeet Pritam Singh Arora. 

Facts include Elsevier Ltd. and other plaintiffs alleging that defendant Alexandra Elbakyan, a Russian national, operates the website Sci-Hub, which infringes their copyrights by storing and distributing scientific articles. Elbakyan gave an undertaking on 24.12.2020 to not upload new plaintiff articles, later breached by adding post-2022 articles on Sci-Hub and a new sister site, Sci-Net, funded by cryptocurrency donations.

Procedurally, the case saw multiple hearings and applications, with the defendant’s counsel seeking discharge and intervenors in I.A. 590/2021 requesting to be heard without impleadment. The court noted the defendant’s lack of instructions and her email acknowledging the breach.

The core dispute centers on whether Sci-Hub and Sci-Net’s actions violate the defendant’s undertaking and court orders, constituting copyright infringement and contempt, with plaintiffs seeking to block these websites.

The decision found Elbakyan prima facie guilty of contempt for breaching the 24.12.2020 undertaking by uploading copyrighted material on Sci-Hub and Sci-Net. The court directed the Department of Telecommunications (DoT) and Ministry of Electronics and IT (MeitY) to issue blocking orders within 72 hours for Sci-Hub (www.sci-hub.ru and mirrors) and Sci-Net (www.sci-net.xyz), to be implemented by ISPs within 24 hours, continuing until further orders, with the next hearing set for 01.12.2025.

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.

Sanjit Singh Salwan & Ors. Vs. Sardar Inderjeet Singh Salwan

Introduction

This case involves a dispute between parties claiming to be trustees of the Guru Tegh Bahadur Charitable Trust, focusing primarily on the question of whether a plea of estoppel can prevent a party from raising a challenge to a settlement or award when the party’s previous conduct induced the other to act to its detriment. The case navigates the complex interplay of arbitration law, injunction suits, estoppel doctrines, and court jurisdiction, particularly concerning the arbitrability of disputes involving charitable trusts.

Factual Background

The appellants and respondents were both involved in managing the Guru Tegh Bahadur Charitable Trust and had disputes concerning its administration, including allegations of interference in the management of a school run by the Trust. The respondents filed a suit for perpetual injunction to restrain the appellants from entering the school premises and interfering with its functioning. The appellants challenged the suit’s maintainability under Section 92 of the Code of Civil Procedure (CPC), contending that the suit was barred. During the appeals process, parties decided to resolve their disputes through arbitration by appointing a sole arbitrator who, after hearings, passed an award with directions for managing the Trust’s affairs.

Procedural Background

Following the sole arbitrator’s award on December 30, 2022, both parties filed a joint application seeking disposal of the pending appeal in view of the award, which was accepted, and a consent decree incorporating the award was passed by the District Court on January 27, 2023. This decree was unchallenged and remained operative. Subsequently, the appellants sought to enforce the award and consent decree by filing execution proceedings in November 2023 but withdrew these to file an application under Section 9 of the Arbitration and Conciliation Act, 1996, seeking interim measures. The Commercial Court rejected this application, holding the dispute non-arbitrable under Section 92 of the CPC and declaring the arbitral award null and void. The High Court affirmed this decision, leading the appellants to approach the Supreme Court.

Core Dispute

The core legal issue centers on whether the respondents, who initially accepted the arbitration award and consent decree, could later challenge the award’s validity on the basis of non-arbitrability under Section 92 of the CPC. Relatedly, the question arose whether the appellants were entitled to enforcement of the consent decree and protection under the doctrine of estoppel, given that the respondents’ conduct induced the appellants to act to their detriment.

Discussion on Judgments

The appellants relied heavily on precedent establishing that a party cannot approbate and reprobate—that is, cannot accept the benefits of a judgment, decree, or contract and later repudiate it to the detriment of the other party. Important case law cited by the appellants included Suzuki Parasrampuria Suitings Pvt. Ltd. v. Official Liquidator of Mahendra Petrochemicals Ltd., (2018) 10 SCC 707; Joint Action Committee of Air Line Pilots’ Association of India v. Director General of Civil Aviation, (2011) 5 SCC 435; Mumbai International Airport Pvt. Ltd. v. Golden Chariot Airport, (2010) 10 SCC 422; and Karam Kapahi v. Lal Chand Public Charitable Trust, (2010) 4 SCC 753. These decisions underscored that a litigant’s conduct in accepting an award or decree can estop them from later asserting its invalidity.

Conversely, the respondents argued that under Section 92 CPC, disputes concerning the management of a trust are non-arbitrable; thus, the arbitrator lacked jurisdiction, rendering the award a nullity. This position, supported by rulings such as Vimal Kishor Shah v. Jayesh Dinesh Shah, (2016) 8 SCC 788 and Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd., (2011) 5 SCC 532, was upheld by both the Commercial Court and the High Court.

The Supreme Court also relied on older foundational principles such as those enshrined in Dhiyan Singh v. Jugal Kishore, AIR 1952 SC 145, to articulate how estoppel by conduct applies even if an award may be invalid in law when parties accept and act upon that award, changing their position to their detriment. The Court additionally cited Mumbai International Airport Pvt. Ltd. v. Golden Chariot Airport to emphasize that a party cannot adopt inconsistent legal positions to prolong litigation or gain unfair advantage.

Reasoning and Analysis of the Judge

The Supreme Court recognized that the respondents had expressly contended in earlier pleadings that their suit was maintainable and not barred by Section 92 of the CPC. They joined the arbitration process and accepted the arbitral award, prompting the disposal of the respondents' appeal by the District Court via a consent decree incorporating the award terms. The Court ruled that the respondents' later contention of non-arbitrability and invalidity of the award amounted to approbation and reprobation, which is impermissible.

The Court emphasized that the appellants acted on the consent decree to their detriment, such as by withdrawing FIRs and remitting substantial amounts per the award terms. Consequently, the principle of estoppel operated to preclude the respondents from challenging the decree's validity. The Court deemed it unjust to allow a party to accept benefits under a decree or award and later repudiate the same to thwart enforcement.

Furthermore, the Court acknowledged that the question of arbitrability was deemed by the lower courts without due regard to the principle of estoppel by conduct. Therefore, the Supreme Court restored the appellants' right to revive execution proceedings on the consent decree and ordered that the matter be dealt with on merit in accordance with law.

The Supreme Court allowed the civil appeal filed by the appellants and set aside the orders of the Commercial Court and the High Court that had held the arbitration award null and void and denied interim measures. The appellants were permitted to revive the execution proceedings filed earlier and to enforce the consent decree. The Court held that the respondents were estopped by their own conduct from denying the award’s enforceability, and justice required that the appellants not be left remediless. The parties were left to bear their own costs.

This case firmly establishes the application of the doctrine of estoppel by conduct and election in arbitration and civil litigation contexts, particularly when one party accepts a consent decree or arbitral award and induces the other party to act to its detriment. It confirms that a party who approbates a legal instrument cannot later reprobate the same to undermine its enforcement. Importantly, the Court clarified that objections concerning arbitrability under Section 92 CPC, though serious, cannot be invoked to defeat an award once consented to and acted upon by the parties. The judgment underscores that the finality and enforceability of arbitration awards and consent decrees are to be respected in the interest of justice and fairness, preventing litigious gamesmanship.

 Sanjit Singh Salwan & Ors. Vs. Sardar Inderjeet Singh Salwan & Ors.:: August 14, 2025:SLP (Civil) No. 29398 of 2024: 2025 INSC 988: Supreme Court of India: Augustine George Masih and Justice Atul S. Chandurkar

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.

Metpalli Lasum Bai (since dead) and Others Vs. Metapalli Muthaiah

Introduction

This legal dispute centers on rival claims over a chunk of land measuring 4 acres and 16 guntas, located in village Dasnapur. The parties involved are the legal representatives of the late Metpalli Rajanna and others, with plaintiff Lasum Bai (the second wife of Rajanna) on one side and defendant Muthaiah (Rajanna’s son from his first marriage) on the other. The case raises intricate issues concerning the rights to joint family property, the validity of a will, and the effect of oral family arrangements in partition disputes.

Factual Background

The original landowner, Metpalli Ramanna, died intestate before 1949. His legal heir, Metpalli Rajanna, who died in 1983, had two marriages. Rajanna’s first marriage to Narsamma produced two children — Muthaiah and Rajamma. After Narsamma’s death, Rajanna married Lasum Bai, who bore no children. Thereafter, Rajanna made registered will dated 24th July 1974 that distributed his properties among Lasum Bai, Muthaiah, and Rajamma. Specifically, Lasum Bai was granted certain lands including part of Sy. No. 28 of Dasnapur village (6 acres 16 guntas out of 12 acres 32 guntas), one third portions of Sy. Nos. 6 & 9 in Mavala village, and other properties. Muthaiah and Rajamma also received defined shares.

Plaintiff Lasum Bai sold two acres from her share in a registered sale deed dated 27th August 1987 and later entered into an agreement to sell the remaining 4 acres 16 guntas to Janardhan Reddy. Defendant Muthaiah filed an injunction suit against her preventing sale, aiming to challenge her right over the land. The District Munsif granted injunction in favor of Muthaiah but did not examine title, prompting Lasum Bai to file a declaratory suit.

Procedural Background

Lasum Bai instituted Original Suit No. 2 of 1991 for declaration of title and possession over her share of properties under the will. Muthaiah contested the claim, asserting the properties were joint ancestral properties and that he inherited full rights as sole coparcener after Rajanna’s death. The trial court decreed the suit favoring Lasum Bai declaring her owner and granting permanent injunction against Muthaiah and Rajamma dated 15th November 1994.

Muthaiah and Rajamma appealed before the Andhra Pradesh High Court, which in a judgment dated 23rd January 2014 partly allowed the appeal, holding Muthaiah entitled to 3/4 share and Lasum Bai to 1/4 share only, stripping her of injunction rights over the entire property. Lasum Bai and legal representatives of Janardhan Reddy appealed to the Supreme Court.

Core Dispute

The dispute pivots on whether Lasum Bai’s claim by virtue of the registered will and the oral family settlement resulting in partition of joint family properties is valid and enforceable against Muthaiah’s claim to the whole ancestral property as coparcener. It also concerns the effect of sales made by Lasum Bai and the validity of the injunction suit initially granted in favor of Muthaiah.

Discussion on Judgments

The trial court upheld the validity of the 1974 registered will and oral family arrangement, noting Muthaiah’s admission of the will and possession of properties by Lasum Bai. The court held that Rajanna, foreseeing family disputes, made an amicable division whereby Lasum Bai received a definite share. The judgment granted her title and injunction protecting her possession.

The Andhra Pradesh High Court overturned this to an extent, holding the properties were ancestral and joint family properties inherited by Muthaiah as sole coparcener, limiting Lasum Bai’s share to one-fourth and denying a full injunction. The High Court discredited the oral family settlement for being unregistered and considered the will lacking sanctity as Rajanna was not the sole owner.

The Supreme Court, upon review, restored the trial court’s decision, reasoning that the will is a registered document with a presumption of validity and was admitted by Muthaiah. The family arrangement and possession further confirmed the distribution. The Supreme Court rejected the High Court’s view that the will lacked sanctity and noted that the will afforded Muthaiah a major share, negating manipulation claims. The Supreme Court also recognized that Muthaiah had not challenged the registered sale deed of two acres earlier, hence estopped from questioning Lasum Bai’s rights.

Reasoning and Analysis of the Judge

The Supreme Court critically analyzed the evidence, including Muthaiah's own testimony admitting the signatures on the will and the possession status aligning with the family settlement. The court held that a registered will carries legal sanctity and presumption of authenticity. The judge emphasized that absence of challenge to the will’s validity and admissions weakened Muthaiah’s case against it.

The judge also noted that the oral family settlement was corroborated by possession and conduct of parties, fulfilling criteria for acceptance. The division under the will was seen as a fair and intended partition to avoid disputes. The fact that the major share was left to Muthaiah further weakened allegations of forgery or manipulation.

The plaintiff’s prior sale deed of part of her share, unchallenged by Muthaiah, was treated as acquiescence. This estoppel factored in the court’s refusal to unsettle plaintiff’s title.

Final Decision

The Supreme Court allowed Civil Appeal No. 5921 of 2015 filed by plaintiff Lasum Bai and legal representatives of Janardhan Reddy, reinstating the trial court’s decree declaring Lasum Bai’s title and the validity of her possession and sales. The court dismissed Civil Appeal No. 5922 of 2015 filed by defendant Muthaiah’s representatives. The High Court’s judgment partially setting aside the trial court’s decree was reversed, and the registered will and family arrangement were upheld as valid effective instruments of partition.

Law Settled in This Case

This case reiterates that a duly registered will partitioning joint family property and creating definite shares among coparceners enjoys presumption of validity and legal sanctity. Oral family arrangements supported by possession and conduct may be admitted to prove partition if not contradicted by valid documents. A party admitting signatures on a will and not challenging earlier sales is estopped from disputing ownership later. The case affirms the importance of registered wills in overriding the presumptions of joint family ownership and confirms that actual partition recognized by all parties can displace presumed ancestral coparcenary rights.

Case Details

Case Title: Metpalli Lasum Bai (since dead) and Others Vs. Metapalli Muthaiah (D) by LRs

Date of Order: July 21, 2025

Case Number: Civil Appeal Nos. 5921 and 5922 of 2015

Neutral Citation: 2025 INSC 879

Name of Court: Supreme Court of India

Name of Judge: Justices Vikram Nath and Sandeep Mehta

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

Suggested Titles for Publication in Law Journal:

1. "Sanctity of Registered Wills and Partition in Hindu Undivided Family Property: Insights from Metpalli Lasum Bai v. Metapalli Muthaiah"

2. "Oral Family Settlements and Property Rights: A Supreme Court Analysis on Joint Family Property Partition"

3. "The Interplay of Will, Possession, and Estoppel in Family Property Disputes: A Case Study"

4. "Registered Will as Evidence of Partition: Revisiting Property Rights in Hindu Joint Families"

5. "Partition Disputes in Hindu Joint Families: Legal Lessons from Metpalli Lasum Bai v. Metapalli Muthaiah"

Lenskart Solutions Limited v. Mr. Chetan Govind Vhand

Lenskart Solutions Limited filed a commercial suit against Mr. Chetan Govind Vhand alleging trademark infringement through the defendant's use of a deceptively similar mark in business operations, seeking injunction and other reliefs. The procedural background involves the plaintiff filing multiple interim applications for exemptions and permissions at the outset of the suit, including for filing additional documents, waiving pre-institution mediation due to urgency, exempting advance service to the defendant to prevent concealment of infringing activities, and extending time for court fees payment. The core dispute centers on the alleged infringement of the plaintiff's trademark rights, with concerns over the defendant potentially disposing of or hiding evidence of such infringement. The court granted all requested exemptions and permissions, allowing the suit to proceed with urgent ex-parte considerations, exemption from mediation citing the need for immediate interim relief as per Supreme Court precedent, permission to file additional documents, waiver of advance notice to the defendant, and a two-week extension for court fees. 

Case Title Lenskart Solutions Limited v. Mr. Chetan Govind Vhand Date of Order August 8, 2025 Case Number CS(COMM) 814/2025 Name of Court High Court of Delhi at New Delhi Name of Judge Honble Mr. Justice Tejas Karia.

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.

Rajkumar Sabu Vs. Sabu Trade Private Ltd.

### Introduction

This case delves into the procedural intricacies of trademark registration under Indian law, examining the scope for third-party intervention prior to the advertisement of a trademark application. It highlights the boundaries of the Registrar of Trade Marks' discretion in handling interlocutory petitions alleging fabrication of user claims and underscores the statutory framework that prioritizes post-advertisement oppositions over pre-emptive challenges. The judgment clarifies the absence of a mandatory hearing for objectors at the examination stage, reinforcing the structured process outlined in the Trade Marks Act, 1999, to ensure efficiency while protecting applicants' rights. By dismissing the writ petition, the court emphasizes balancing procedural fairness with statutory compliance, offering guidance on when and how third parties can effectively contest trademark applications without disrupting the registration pipeline.

### Factual Background

The first respondent, Sabu Trade Private Ltd., submitted a trademark application for the word mark "SACHAMOTI" on January 22, 2020, claiming usage by itself or its predecessor-in-title since April 1, 1984, in classes 30, 35, and 39. An examination report was issued by the Registrar on February 18, 2020, to which the applicant responded the following day. The petitioner, Rajkumar Sabu, lodged an interlocutory petition on July 20, 2021, asserting that the claimed user date was based on fabricated documents, urging the Registrar not to proceed with the application or advertise it in the Trade Marks Journal, and requesting a hearing. Despite paying the requisite fee of Rs. 2,700, no response was received to this petition. The application was accepted on February 25, 2025, and advertised in Trade Marks Journal Number 2199 on March 10, 2025. Seeking clarity, the petitioner filed a request under the Right to Information Act, 2005, on April 21, 2025, specifically asking for the document supporting the user date of April 1, 1984, but the reply on June 4, 2025, merely stated that all available documents were uploaded on the IP India portal, providing no substantive details.

### Procedural Background

The petitioner invoked Article 226 of the Constitution of India by filing a writ petition for certiorari to quash the acceptance report dated February 25, 2025, and the advertisement in the Trade Marks Journal dated March 10, 2025. The petition contended that the Registrar failed to consider the interlocutory petition and provide a hearing, violating principles of natural justice and the powers under Section 19 of the Trade Marks Act, 1999. The matter was heard before a single judge, with arguments from the petitioner's counsel emphasizing the need for pre-advertisement scrutiny, the first respondent's counsel defending the statutory procedure and the availability of opposition post-advertisement, and the second respondent represented by a Deputy Solicitor General. No interim relief was sought or granted in the connected miscellaneous petition, and the court proceeded to decide the writ on merits after considering the statutory provisions and rules.

### Core Dispute

The central issue revolved around whether the Registrar of Trade Marks was obligated to consider the petitioner's interlocutory petition alleging fabrication of the user claim and to afford a hearing before accepting and advertising the trademark application. The petitioner argued that the Registrar's failure to act on the petition and exercise powers under Section 19 to withdraw acceptance amounted to a miscarriage of justice, especially given the payment of fees and the RTI response's inadequacy. In contrast, the first respondent maintained that no provision under the Trade Marks Act, 1999, or Rules, 2017, permitted pre-advertisement oppositions or hearings for third parties, asserting that the statutory scheme confined challenges to post-advertisement oppositions under Section 21, and that the interlocutory petition lacked a legal basis.

### Discussion on Judgments

No judgments were cited by the parties or referenced by the court in the course of this case. The analysis was confined to a direct interpretation of the relevant statutory provisions under the Trade Marks Act, 1999, including Sections 18, 19, and 21, and the Trade Marks Rules, 2017, particularly Rules 10, 11, 33, and Entry 15 of Schedule I, without reliance on prior judicial precedents to contextualize or support the arguments or decision.

The judge meticulously dissected Chapter III of the Trade Marks Act, 1999, focusing on the procedure for registration. He noted that Section 18(4) and (5) require reasons only for refusal or conditional acceptance, implying no such obligation for unconditional acceptance, as evidenced by the brief order waiving objections based on submitted documents. Regarding the interlocutory petition, the judge held it lacked statutory foundation, as Entry 15 of Schedule I pertains to fees for specific applications like reviews or uncontemplated matters, but any petition must invoke a substantive provision from the Act or Rules. He clarified that while Rule 33 allows examination and re-examination by the Registrar, it does not envision third-party oppositions at that stage, which are expressly reserved for post-advertisement under Section 21 and Rules 42-51. Although acknowledging the Registrar's power under Section 19 to withdraw acceptance pre-registration, the judge reasoned this does not confer a right on third parties to be heard, as the provision is silent on such entitlements. He suggested procedural improvements, like mandating citation of provisions in interlocutory applications and enabling rejections for non-maintainability, to enhance transparency. Balancing equities, the judge found no prejudice to the petitioner, who had already lodged an opposition under Section 21, while quashing the acceptance would cause irreparable harm to the applicant, thus justifying non-interference.

The writ petition was dismissed without any order as to costs, upholding the acceptance report and advertisement. The connected miscellaneous petition was closed accordingly, with the court observing that the petitioner's remedy lies in the ongoing opposition proceedings before the Registrar.

This case establishes that third parties have no inherent right to intervene or be heard at the pre-advertisement stage of trademark registration unless explicitly provided under the Trade Marks Act, 1999, or Rules, 2017. It clarifies that interlocutory petitions challenging applications must be grounded in specific statutory provisions to be maintainable, and the Registrar's power to withdraw acceptance under Section 19 does not mandate hearings for objectors. The judgment reinforces that oppositions are confined to the post-advertisement phase under Section 21, promoting procedural efficiency while suggesting enhancements for handling miscellaneous applications to ensure fairness and accountability.

Rajkumar Sabu Vs. Sabu Trade Private Ltd.: August 19, 2025 : W.P.(IPD)No.34 of 2025  : 2025:MHC:2069  : Senthilkumar Ramamoorthy, J.

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.

Cadila Healthcare Ltd. Vs. Diat Foods (India)

### Introduction

This case revolves around the contentious use of the phrase "SUGAR FREE" in the context of trademark law, specifically in an action for passing off. It highlights the delicate balance courts must strike between protecting a plaintiff's established brand identity and allowing competitors to use descriptive terms in a fair manner. The dispute pits a pharmaceutical giant known for its artificial sweeteners against a food manufacturer introducing sugar-free products, raising questions about distinctiveness, descriptiveness, and the potential for consumer confusion. The judgment underscores the evolving jurisprudence on generic expressions in trademarks, emphasizing interim relief under the Code of Civil Procedure to maintain equilibrium pending full trial. By examining prior precedents involving the same plaintiff, the court navigates the line between proprietary rights and honest commercial use, offering insights into how courts assess visual prominence in packaging to prevent deception.

### Factual Background

The appellant, Cadila Healthcare Ltd., introduced a low-calorie table-top sweetener under the mark "SUGAR FREE" in 1988, which contained Aspartame and had only 2% of the calories of natural sugar. The product achieved significant market success, with sales amounting to around Rs. 216.40 crores from 1988 onwards, and trademark registration applications were pending. The appellant claimed that "SUGAR FREE" had become synonymous with its products among consumers. The respondent, Diat Foods (India), launched "Sugar Free Cookies" sweetened with Splenda, a competing artificial sweetener. On the respondent's packaging, "SUGAR FREE" was displayed in large, bright red fonts, making it highly prominent, while "Cookies" appeared in smaller, pale brown fonts, and phrases like "SUGARLESS Bliss" and "Sweetened with Splenda" were less emphasized. The respondent had applied for registration of "SUGARLESS" and/or "SUGARLESS Bliss" as its trademark. The appellant alleged that this packaging misled consumers into associating the cookies with its "SUGAR FREE" brand, diluting its mark and constituting passing off.

### Procedural Background

The appellant filed a suit for permanent injunction, damages, rendition of accounts, and delivery up, alleging passing off of its "SUGAR FREE" mark. Along with the suit, an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, was filed seeking interim injunction. On February 5, 2008, the court granted an ex parte ad interim injunction restraining the respondent from using "SUGAR FREE" or any deceptively similar mark. The respondent contested the application, leading to the impugned order dated July 9, 2008, by a Single Judge, who dismissed the interim injunction with costs of Rs. 50,000, finding sufficient added matter in the respondent's packaging to distinguish it. Aggrieved, the appellant filed the present appeal (FAO (OS) No. 385 of 2008) before the Division Bench of the Delhi High Court. The appeal focused on modifying the interim arrangement, with the respondent proposing a revised packaging during hearings. The Division Bench heard arguments on the descriptive use of "SUGAR FREE" and pronounced judgment on September 29, 2010.

### Core Dispute

At the heart of the dispute was whether the respondent's prominent use of "SUGAR FREE" on its cookie packaging amounted to passing off the appellant's established mark, or if it was merely descriptive of the product's sugar-free nature. The appellant argued that "SUGAR FREE" had acquired secondary meaning and distinctiveness through extensive use and sales, entitling it to protection against dilution. It contended that the respondent's packaging, by emphasizing "SUGAR FREE" over its own marks like "SUGARLESS Bliss" and "Splenda," created confusion, suggesting a connection to the appellant's sweetener products. The respondent defended its use as descriptive and bona fide, pointing to its application for "SUGARLESS Bliss" and the use of a competitor's sweetener, Splenda. The court had to determine an interim balance: whether to restrain the use entirely, allow it without restrictions, or impose conditions on font size and prominence to prevent deception while permitting fair competition.

### Discussion on Judgments

The court extensively discussed prior judgments involving the appellant's "SUGAR FREE" mark to guide its decision. In Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.), a Single Judge examined the use of "SUGAR FREE" on Amul's "Pro Biotic Frozen Dessert" packaging, where it was alleged to be used as part of the trade mark rather than descriptively. The judge found prima facie distinctiveness in "SUGAR FREE" for the appellant's sweeteners but allowed descriptive use by the defendant, restraining only the overwhelming prominence that could confuse consumers into thinking the appellant's sweetener was an ingredient. This was referred to in the context of assessing whether absolute restraint on "SUGAR FREE" was warranted or if conditional use sufficed. The appeal against this, Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.), was analyzed in detail, where the Division Bench held that "SUGAR FREE" was not a coined word but a combination of common English terms, incapable of inherent distinctiveness across all food products. It affirmed the Single Judge's restriction on font size to ensure descriptive use without indicating a connection to the appellant, cited here to support interim restrictions on prominence rather than outright prohibition. In Cadila Health Care Ltd. v. Dabur India Ltd., 2008 (38) PTC 617 (Del.) (DB), the Division Bench addressed "SUGAR FREE" on Dabur's "Chyawanprash" packaging, finding no passing off as it was in smaller fonts compared to the main mark and prominently displayed the defendant's trade mark, referenced to illustrate that equal or lesser prominence avoids confusion. Similarly, Cadila Health Care Ltd. v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2008 (4) RAJ 611, involved "SUGAR FREE" on another "Chyawanprash" product, where the Bench concluded the use was descriptive and not perceived as the appellant's product due to matching font sizes with other descriptors, used in the present case to emphasize that prominence determines deceptive similarity. Finally, Goenka Institute of Education & Research v. Anjani Kumar Goenka, 2009 AIR (Del) 139, was drawn upon for its analysis of Section 12 of the Trade Marks Act, 1999, on honest concurrent use, where the court imposed conditions to prevent public confusion even in descriptive contexts, applied here to justify court-imposed limitations on font and prominence akin to registrar powers.

### Reasoning and Analysis of the Judge

The Division Bench, comprising Sanjay Kishan Kaul and Valmiki J. Mehta, JJ., reasoned that "SUGAR FREE" is a generic expression combining common words, not inherently distinctive across all products, but had acquired secondary meaning limited to the appellant's artificial sweeteners. Drawing from prior cases, the judges noted that absolute restraint was inappropriate for descriptive use, but unrestricted prominence could deceive consumers into associating the respondent's cookies with the appellant's brand, especially since Splenda, a competitor, was used. They analyzed the packaging visuals, finding the original and proposed modified cartons gave undue emphasis to "SUGAR FREE," overshadowing "SUGARLESS Bliss" and "Sweetened with Splenda," indicating dishonest intent rather than pure descriptiveness. Invoking the principle of balancing equities under Order 39 Rules 1 and 2, the court emphasized maintaining status quo pending trial, where public interest in avoiding confusion is paramount. Analogizing to honest concurrent use under Section 12 of the Trade Marks Act, they held that courts can impose conditions like equal prominence to ensure the expression conveys sans sugar without implying a brand connection. The judges rejected the respondent's unwillingness to equalize prominence, concluding that extra emphasis on "SUGAR FREE" conveyed a false association, warranting modification of the impugned order to prevent deception while allowing use.

### Final Decision

The appeal was allowed to a limited extent, modifying the impugned order. The court held there would be no restraint on the respondent using "SUGAR FREE," but it must not be used with greater prominence or larger font size than "SUGARLESS Bliss" and "Sweetened with Splenda." The grant of Rs. 50,000 costs in the impugned judgment was set aside. The respondent was granted 30 days to exhaust existing packaging stock. The court clarified that its observations were for interim purposes only and would not influence the final trial.

### Law Settled in This Case

This case reinforces that generic expressions like "SUGAR FREE" cannot be monopolized absolutely but may acquire limited secondary meaning, entitling protection against passing off if used deceptively. It settles that in interim proceedings under Order 39 Rules 1 and 2 of the Code of Civil Procedure, courts can impose conditions on font size and prominence in packaging to balance proprietary rights with fair descriptive use, preventing consumer confusion. Drawing from Section 12 of the Trade Marks Act, 1999, it establishes that even in passing off actions, analogous powers allow restrictions to ensure honest use without deception, particularly when prominence suggests a false brand connection.

### Case Details

Case Title: Cadila Healthcare Ltd. Vs. Diat Foods (India)  

Date of Order: September 29, 2010  

Case Number: FAO (OS) No. 385 of 2008  

Neutral Citation: 2010 SCC OnLine Del 3445  

Name of Court: High Court of Delhi  

Name of Judge: Sanjay Kishan Kaul and Valmiki J. Mehta, JJ.

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.

Right of equality in the eyes of law

Right of equality in the eyes of law

Introduction: Equality, in its absolute sense, is an impossible target to achieve. By birth, every one is unequal. What one can achieve in a society is relative equality, i.e., equal opportunity to grow. The state should also take care of free will and intention of individuals while enacting laws and punishment measures to achieve relative equality while regulating liberty and guaranteeing rights to every individual.

Inequality is a product of nature, inherent and unavoidable, while equality is a human construct, an ideal forged through societal efforts and institutions. From the moment of birth, individuals are differentiated by genetics, environment, family background, physical abilities, and intellectual capacities. These natural disparities mean that absolute equality—where all people possess identical outcomes, resources, and statuses—remains a utopian fantasy. Instead, societies must strive for relative equality, which focuses on providing equal opportunities for personal and collective growth. This approach acknowledges human diversity while empowering the state to intervene thoughtfully, regulating liberties and safeguarding rights in a way that respects individual free will, intentions, and capabilities.

In this framework, the state acts as a mediator, not an equalizer of outcomes, but a guarantor of fair starting points. By considering the unique motivations and potentials of individuals, the state can craft policies that mitigate natural inequalities without erasing them. This balance is essential because unchecked liberty can exacerbate disparities, while overregulation can stifle human agency. The result is a society where opportunities are accessible to all, fostering growth rather than uniformity.

Natural Inequalities: The Foundation of Human Diversity:At the core of this discussion is the recognition that inequality is woven into the fabric of existence. Nature does not distribute talents, health, or circumstances evenly. Consider the historical example of Dara Shikoh and Aurangzeb, brothers born to the Mughal emperor Shah Jahan in the 17th century. Despite sharing the same royal lineage, upbringing, and privileges, they embodied starkly different qualities. Dara Shikoh was a scholar and philosopher, known for his liberal views, tolerance toward other religions, and efforts to translate Hindu texts like the Upanishads into Persian, promoting syncretism and intellectual harmony. In contrast, Aurangzeb was austere, devoutly orthodox in his Islamic faith, and pragmatic in his pursuit of power, often employing strict governance and military strategies. Their differences in temperament, ideology, and capabilities led to a brutal war of succession, where Aurangzeb emerged victorious and executed Dara. This fraternal rivalry illustrates how even siblings, raised in identical environments, can diverge profoundly due to innate dispositions and free will. Such natural variations underscore that absolute equality is unattainable; attempting to force it would require suppressing individuality, which is antithetical to human flourishing.

In modern society, these innate differences manifest in myriad ways: one person may excel in mathematics due to genetic predispositions, while another thrives in artistic endeavors. Socioeconomic factors compound these, with children born into poverty facing barriers that their affluent peers do not. Free will further complicates the equation—individuals choose paths based on personal intentions, values, and motivations, leading to diverse outcomes. The state cannot homogenize these traits without resorting to authoritarian control, which history shows leads to oppression rather than equity.

Counterarguments to Absolute Equality: Expanding the Critique:While the ideal of absolute equality appeals to notions of justice and fairness, it faces robust counterarguments that highlight its impracticality and potential harms. Proponents of absolute equality often argue that societal structures alone create disparities, and thus, through radical redistribution and uniform policies, equality can be engineered. However, this view overlooks several critical flaws:

Biological and Genetic Realities as Inescapable Barriers:Counter to the nurture-over-nature argument, scientific evidence demonstrates that genetics play a significant role in traits like intelligence, physical prowess, and even personality. For instance, twin studies show that identical twins raised apart often exhibit similar abilities and preferences, suggesting heritability. Imposing absolute equality would require interventions like genetic engineering or forced resource allocation, which raise ethical dilemmas about consent and human rights. Such measures could lead to a dystopian society where individual uniqueness is sacrificed, stifling innovation and personal fulfillment. The Dara-Aurangzeb example reinforces this: their differing qualities were not merely products of environment but intrinsic, and no state policy could have made them identical without destroying their essences.

The Fallacy of Equal Outcomes Undermining Merit and Motivation:Advocates for absolute equality might claim that equal outcomes motivate collective progress, but this ignores human psychology. Free will drives individuals to pursue goals based on personal intentions, and removing incentives for excellence—such as rewards for innovation or hard work—can lead to stagnation. Historical experiments, like communist regimes attempting classless societies, often resulted in reduced productivity and widespread discontent because they disregarded individual capabilities and motivations. Instead of fostering equality, these systems created new hierarchies based on political loyalty, proving that absolute equality erodes liberty and breeds inefficiency.

Cultural and Social Diversity as Assets, Not Obstacles:A common pro-equality argument posits that uniformity promotes harmony, but counterarguments emphasize that diversity enriches societies. Cultural, ethnic, and ideological differences, like those between Dara's pluralism and Aurangzeb's orthodoxy, spark creativity and debate. Forcing absolute equality could homogenize cultures, leading to cultural erosion and loss of heritage. Moreover, in pluralistic societies, equal outcomes often require suppressing minority voices or traditions, which contradicts the very inclusivity equality seeks.

Economic Impracticality and Unintended Consequences:Economically, absolute equality demands infinite resources for redistribution, which is impossible in finite systems. Counterarguments highlight how such pursuits lead to inflation, black markets, or economic collapse, as seen in Venezuela's attempts at wealth equalization. By ignoring individual intentions—such as entrepreneurial drive—these policies discourage investment and growth, ultimately harming the vulnerable they aim to help.

These counterarguments collectively dismantle the feasibility of absolute equality, advocating instead for relative equality as a pragmatic alternative.

The State's Role in Achieving Relative Equality: Regulating Liberty with Nuance:Given the impossibility of absolute equality, the state must focus on relative equality by guaranteeing equal opportunities. This involves regulating liberties—ensuring they do not infringe on others' rights—while accounting for free will, intentions, and capabilities. Liberty, as the freedom to act according to one's will, is inherently controlled by state-enacted laws. These laws, in turn, manage rights to create an environment where everyone has an equal opportunity to grow. However, the current mechanisms for regulating rights often remain oblivious to individual backgrounds, capabilities, free will, intentions, and traits. The state typically defines a set of crimes and prescribes uniform punishments, overlooking the nuanced human elements that make each case unique. This one-size-fits-all approach can inadvertently perpetuate inequalities rather than mitigate them, as it fails to tailor interventions to the individual's context.

Laws Tailored to Individual Contexts:Enacting laws that consider intent prevents blanket punishments that ignore nuances. For example, in criminal justice, distinguishing between manslaughter (unintentional) and murder (malicious) respects free will and promotes fairness. This approach equalizes opportunities by rehabilitating rather than alienating offenders, particularly those from disadvantaged backgrounds. Yet, even here, the system often falls short by not delving deeper into personal histories. Laws should evolve to incorporate comprehensive assessments of an individual's background, such as socioeconomic factors, psychological profiles, and life experiences, ensuring that the regulation of liberty aligns with the goal of fostering growth for all.

Punishment Measures Sensitive to Capabilities and Individual Traits:Proportional punishments, adjusted for socioeconomic factors, avoid perpetuating inequality. Harsh sentences for minor offenses in impoverished communities deepen cycles of poverty, while leniency for the elite erodes trust. By incorporating restorative justice, the state can address root causes, enhancing opportunities for all. However, the prevailing crime-oriented punishment model—where the state provides one standardized penalty for a defined crime—neglects individual free will and traits. This is akin to a doctor treating two patients suffering from the same disease with identical medicine, disregarding their unique capabilities, allergies, or overall health profiles. In reality, effective medical treatment is personalized: one patient might require a milder dosage due to age or comorbidities, while another needs a stronger regimen based on their resilience and history.

Similarly, in the justice system, two persons guilty of the same crime should not be subjected to the same punishment. Consider a respectful, first-time offender in society—perhaps a community leader who commits theft out of desperation during a personal crisis—versus a habitual offender with a long record of similar acts driven by entrenched patterns of behavior. For the former, a rehabilitative approach like community service or counseling might suffice, respecting their free will and intention to reform, while promoting their growth and reintegration. For the latter, stricter measures, such as incarceration combined with intensive therapy, could be necessary to protect society and address deeper traits. Punishment should thus shift from being purely crime-oriented to individual-oriented, evaluating factors like background, capabilities, free will, and intentions. This nuanced regulation ensures that the state's control over liberty and rights truly provides equal opportunities for personal development, preventing the system from blindly amplifying natural inequalities.

Policies Promoting Equal Opportunity:Affirmative actions, like scholarships for underprivileged students, regulate economic liberties (e.g., taxing the wealthy) to fund programs that bridge capability gaps. These must respect free will by offering choices, not mandates, ensuring individuals can pursue paths aligned with their intentions. Extending this, policies should include individualized support systems, such as personalized education plans or vocational training that account for diverse traits and motivations, further emphasizing the state's role in controlled liberty for equitable growth.

However, the state must guard against overreach. Excessive regulation could suppress free will, leading to resentment or underground resistance, as seen in prohibition-era policies.

Addressing Potential Conflicts: Balancing Liberty, Rights, and Equality:Conflicts arise when regulating liberty for equality. For instance, wealth taxes limit economic freedom but fund social programs, creating equal opportunities. To mitigate trade-offs, the state should:

- Prioritize transparency in lawmaking to build trust.

- Incorporate feedback mechanisms respecting diverse intentions.

- Use data on capabilities to tailor interventions without stereotyping.

- Reform punishment paradigms to emphasize individual-oriented justice, ensuring that regulations on rights do not ignore personal contexts, as highlighted in the doctor-patient analogy.

By addressing these conflicts with a focus on nuance, the state can avoid the pitfalls of uniform mechanisms that overlook human diversity.

Embracing Relative Equality for a Just Society:In a world of natural inequalities, absolute equality is a mirage that distracts from achievable goals. By focusing on relative equality—equal opportunities regulated with respect for free will, intentions, and capabilities—the state can foster a balanced society. Drawing from examples like Dara and Aurangzeb, we see that diversity is strength, not weakness. Through nuanced laws and punishments that control liberty while tailoring rights to individual traits—moving beyond crime-oriented to individual-oriented approaches—the state regulates liberty, guarantees rights, and enables all to grow, transforming inherent differences into collective progress. This human construct of equality, though imperfect, honors nature's variety while advancing justice.

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