Centrient Pharmaceuticals Vs Dalas Biotech Limited

This case revolves around a patent infringement dispute in the pharmaceutical industry. The plaintiffs, Centrient Pharmaceuticals Netherlands B.V. and another entity, hold a patent numbered IN 247301. This patent covers a specific process for preparing Amoxicillin Trihydrate, which is a key ingredient used in antibiotics. The plaintiffs filed a commercial suit (CS(COMM) 218/2019) seeking a permanent injunction to stop the defendant, Dalas Biotech Limited, from using or infringing on this patented process. They claimed that the defendant was manufacturing Amoxicillin Trihydrate using a method that violated their patent rights.

The defendant filed a written statement denying the infringement. In paragraph 94 of this statement, they described their manufacturing process for Amoxicillin Trihydrate. However, the plaintiffs argued that this description was vague and full of ambiguities.

The plaintiffs application (I.A. 15057/2019) under Order XI Rule 2 of the Code of Civil Procedure (CPC), 1908, as amended by the Commercial Courts Act, 2016, read with Section 151 CPC.

The main dispute in this application was whether the court should force the defendant to answer the plaintiffs' interrogatories and disclose detailed information about their manufacturing process and regulatory filings.

The defendant opposed, saying the interrogatories were irrelevant to the suit, sought confidential business information, and were just a "fishing expedition" to gather evidence instead of proving the case through trial.

In essence, this was a battle over discovery rights: How much detail must the defendant reveal early in the case to defend against infringement claims, especially when it involves trade secrets and regulatory approvals?

• Burden under Section 104A(1)(b) Patents Act: Plaintiffs must prove infringement first (via product comparison). Their attempt here is to discover the defendant's "exclusive evidence" through fishing—e.g., demanding documents that reveal trade secrets.
• Interrogatories can't replace cross-examination. The "optionality" issues (enzyme, acids, pH) can be tested during trial by questioning the defendant's witnesses on credibility.

The court dismissed the application. It held that directing the defendant to answer the interrogatories would not serve justice, as it amounts to an impermissible roving inquiry. The issues can be resolved at trial through evidence and cross-examination. No merit in the application; it stands dismissed.

This decision emphasizes the limits of discovery in patent suits: Plaintiffs can't use interrogatories to force disclosure of confidential processes without strong proof of relevance, especially when trial mechanisms exist. It protects trade secrets while upholding the burden-shifting under the Patents Act.

Case Title: Centrient Pharmaceuticals Netherlands Vs Dalas Biotech Limited

Order Date: January 27, 2021

Case Number: CS(COMM) 218/2019

Neutral Citation: AIRONLINE 2021 DEL 68

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice V. Kameswar Rao

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

Arteform Designs Private Ltd. Vs. Abrol Engineering Company Pvt. Ltd

When Interrogatories Cross the Line

Factual Background: Arteform Designs Pvt. Ltd. (the plaintiff) entered into a turnkey contract with Abrol Engineering Co. Pvt. Ltd. (the defendant) for the construction of a residential house in Kapurthala, Punjab, for the defendant’s Managing Director.

Under this turnkey arrangement, Arteform was to construct and hand over a fully functional house at a fixed cost of ₹5,000 per square foot (plus taxes). According to the plaintiff, about 80–90% of the project was completed, but when the defendant stopped paying the running bills (RA bills), Arteform stopped further work and filed the present recovery suit.

The defendant, however, questioned the cost of construction and filed an application under Order XI Rule 1 of the Code of Civil Procedure (CPC), seeking the Court’s permission to serve interrogatories (a set of written questions to be answered on oath by the other party).

Core Dispute

The main issue before the Court was:Whether the defendant could compel the plaintiff to disclose details of procurement of goods, vendor names, GST numbers, bills, and payments related to the project by using interrogatories, even when the contract was for a fixed rate of ₹5,000 per square foot.

The Court dismissed the defendant’s applications under Order XI CPC.It held that the interrogatories sought were irrelevant to the dispute, amounted to a fishing inquiry, and could not override the admitted terms of the contract.

Order XI CPC is not meant for fishing inquiries or filling gaps in evidence.

Interrogatories must be directly connected to the issues framed in the suit, and their scope is narrower than cross-examination.

If dissatisfied with performance or quality, a party must file a counter-claim or separate suit, not misuse interrogatories.

Arteform Designs Private Ltd. Vs. Abrol Engineering Company Pvt. Ltd.:Case Number: CS(COMM) 142/2022:High Court of Delhi :Hon’ble Judge: Justice Jasmeet Singh:Order Date: 4 March 2024

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

Essel Sports Pvt. Ltd. Vs. Union of India

Interrogatories Cannot Replace Cross-Examination

Factual Background: Essel Sports Pvt. Ltd., the plaintiff, is the company behind the Indian Cricket League (ICL). The defendants include the Union of India and notably the Board of Control for Cricket in India (BCCI). The plaintiff alleged that BCCI engaged in unfair practices, intimidating and threatening players who were associated with the ICL, thereby damaging the plaintiff’s business interests. During the trial, the plaintiff produced six witnesses, including famous cricketers like Kapil Dev and Kiran More, who testified in support of the plaintiff. Their cross-examination concluded in 2009 and 2010 respectively. The plaintiff thereafter closed its evidence.

Later, BCCI (Defendant No. 5) filed an application under Order XI CPC (Civil Procedure Code) seeking permission to serve interrogatories (a set of written questions that must be answered on oath) to the plaintiff. The reason was that BCCI had received letters in 2012 from Kapil Dev and Kiran More stating they had disassociated themselves from Essel Sports and ICL, and allegedly implying their earlier testimonies may have been given under pressure.

Core Dispute:The dispute before the Court was whether, at such a late stage (after completion of plaintiff’s evidence and cross-examination), BCCI could still serve interrogatories on the plaintiff regarding these two witnesses and their disassociation from the company.

Submissions by the Parties:Defendant No. 5 (BCCI):Argued that Order XI CPC does not limit when interrogatories may be served.Claimed that the plaintiff concealed the fact that Kapil Dev and Kiran More had later disassociated from ICL.Asserted that the interrogatories were necessary for proper adjudication and relied on case laws like:Aluminium Corporation of India Ltd. v. Lakshmi Ratan Cotton Mills Co. Ltd. (AIR 1968 All 601).Smt. Sharda Dhir v. Ashok Kumar Makhija (99 (2002) DLT 350).Canara Bank v. Rajiv Tyagi (166 (2010) DLT 523)

Plaintiff (Essel Sports):Opposed the application as mala fide (bad faith) and an attempt to cover up deficiencies in BCCI’s earlier cross-examinations.Argued that the interrogatories were irrelevant, scandalous, and amounted to abuse of process.Stated that since the witnesses’ cross-examinations had been completed years earlier, their later disassociation letters were not relevant.Submitted that BCCI was trying to delay the trial and engage in a “roving inquiry.”

Court’s Reasoning:Justice Vipin Sanghi carefully analyzed the legal position and facts:

Timing of Interrogatories:Order XI CPC allows interrogatories but they must be relevant and timely.Interrogatories are meant to clarify issues or shorten litigation, not to substitute cross-examination.

Stage of the Case:Plaintiff’s witnesses had been cross-examined and discharged years before the letters surfaced.Evidence was closed, so there was no concealment by the plaintiff.If BCCI wanted to rely on the new letters, they could either produce Kapil Dev and Kiran More as their own witnesses or seek recall of those witnesses for further cross-examination.

Limitations of Interrogatories:Interrogatories cannot be used to reopen evidence or fix gaps in cross-examination.Rule 1 of Order XI clearly restricts interrogatories to matters directly related to issues in the suit.

Distinguishing Cited Cases:The precedents cited by BCCI involved situations where interrogatories were raised before or during trial, not after completion of evidence.Thus, those cases were not applicable here.

Fairness and Justice:Allowing interrogatories at this late stage would be unfair and contrary to natural justice.The Court observed that BCCI was trying to indirectly nullify the testimony of Kapil Dev and Kiran More through interrogatories instead of following the proper legal route.

Final Decision:The Court dismissed BCCI’s application as misconceived and unjustified. The Court held that interrogatories at this stage were not permissible. 

Case Title:Essel Sports Pvt. Ltd. Vs. Union of India

Date of Order:26.08.2013

Case No.: CS (OS) 1566 OF 2007

Name of Court:Delhi High Court

Name of Hon'ble Judge: Shri Vipin Sanghi

Law Settled by the Case:Interrogatories under Order XI CPC cannot be used as a substitute for cross-examination. They must be relevant to issues framed in the suit and cannot be raised at any arbitrary stage. After witnesses are cross-examined and discharged, interrogatories cannot be served to indirectly challenge or discredit their testimony. If fresh facts arise later, the correct remedy is to either recall the witnesses (with court’s permission) or produce them as one’s own witnesses, not to misuse interrogatories.

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

Castrol Limited Vs . Sanjay Sonavane

Castrol Limited Vs . Sanjay Sonavane:CS(COMM) 855/2025:High Court of Delhi:19.08.2025: Hon'ble Judge Justice Tejas Karia

Castrol Limited, a global leader in engine oils and lubricants, sells products in India under its well-known trademarks and packaging. Castrol uses marks like “3X,” “3X PROTECTION,” “3XCLEAN,” and “3 IN 1 FORMULA.” The Defendants, however, claimed exclusive rights over their own “3P” mark and alleged copyright infringement. They threatened Castrol and its distributors with legal proceedings, published a public notice warning the public, and even caused police seizure of Castrol’s genuine products, leading to an FIR against Castrol’s Indian subsidiary and its distributor.

The dispute was whether Castrol’s use of “3X” related marks infringed the Defendants’ “3P” marks or copyright. Castrol argued that the threats were false and unjustified under Section 142 of the Trade Marks Act, 1999 and Section 60 of the Copyright Act, 1957, and sought an injunction against such groundless threats.

The Court held that Castrol’s “3X” marks were completely different from the Defendants’ “3P” marks, and the Defendants could not claim monopoly over the number “3.” The seizure and public notice amounted to groundless threats. The Court found a prima facie case in Castrol’s favour and restrained the Defendants from issuing any further threats or legal actions against Castrol, its Indian subsidiary, or distributors regarding use of the “3X” marks until the next hearing.

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

Exphar S A & Anr. Vs. Essphar Private Limited

Exphar S.A. Vs. Essphar Private Limited:CS(COMM) 891/2025High Court of Delhi:26.08.2025:Hon’ble Judge: Justice Tejas Karia

Exphar S.A., a Belgium-based pharmaceutical company, has been using the coined trade name and mark “EXPHAR” since 1981 and selling in India since 1991. It holds trademark registrations in India and internationally. Essphar Pvt. Ltd. adopted the mark “ESSPHAR”, which looked and sounded very similar to “EXPHAR,” used the same red, black, and white color scheme, the red plus (+) sign, and even sold medicines through online platforms like Apollo Pharmacy. Exphar alleged that this imitation was dishonest and risky in the pharmaceutical field where confusion can be dangerous.

Exphar claimed infringement under the Trade Marks Act, 1999 and violation of copyright under the Copyright Act, 1957, arguing that Essphar’s mark was deceptively similar to its own and caused confusion. Essphar opposed, arguing that the Delhi High Court lacked jurisdiction since Exphar was a foreign company and sales were only exports, not within India.

The Court noted that Exphar had sales in India and under Section 56 of the Trade Marks Act, even exports from India count as “use” of the mark in India. The Court found the two marks—“EXPHAR” and “ESSPHAR”—to be visually, phonetically, and structurally similar. Since pharmaceuticals are sensitive products, such similarity could cause serious harm to patients and irreparable damage to Exphar’s goodwill.

Therefore, the Court granted an ad-interim injunction, restraining Essphar from using “ESSPHAR” or any similar mark, and directed removal of its listings from Apollo Pharmacy, JustDial, IndiaMart, PharmaCompass, Tata nexarc, CB Insights, and LinkedIn.

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

Basant Goel Vs. Som Prakash Sethi

Court’s Approach to New Facts Introduced in Rebuttal Affidavits

Facts of the Case  :This case revolves around a civil dispute involving Basant Goel (Plaintiff) and Som Prakash Sethi & Others (Defendants) related to an Agreement to Sell dated 27 June 2021. The core issue is whether the terms of this agreement were modified later, and if any party failed to perform their obligations under it.

During the case proceedings, an important piece of evidence came into focus—a WhatsApp chat dated 21 September 2021 between the parties. The Plaintiff filed a rebuttal affidavit after the completion of evidence by both parties. This late filing included fresh explanations concerning the WhatsApp chat and a specific meeting dated 20 September 2021, where threats were allegedly made, and discussions about forfeiture of earnest money took place.

The Defendants objected strongly to this late evidence, claiming that the Plaintiff tried to introduce facts beyond the original pleadings and delayed dealing with the WhatsApp chat despite knowing about it since the start.

Dispute  :The main dispute was whether the Plaintiff should be allowed to file and rely upon the rebuttal affidavit that introduces new evidence (the 20 September meeting and explanation of the 21 September WhatsApp chat) at such an advanced stage of the trial, given these facts were not mentioned in the original plaint or in the Plaintiff’s initial evidence affidavit.

The Defendants argued that:  - The WhatsApp chat had been in Plaintiff’s knowledge from the beginning since it was filed with the Defendants’ written statement.  - Plaintiff had a full opportunity during their evidence and cross-examination phases to deal with the chat but did not.  - The Plaintiff's filing of the rebuttal affidavit after evidence had closed was an improper attempt to fill gaps and address shortcomings in the earlier evidence.  - The Plaintiff’s case should be confined to the original pleadings, which did not mention this meeting or the WhatsApp discussion explicitly.

The Plaintiff argued that:  - The onus (burden) to prove modification of the agreement lies on the Defendants (Issue No. c), thus Plaintiff had reserved the right to file rebuttal evidence.  - The Plaintiff’s initial evidence affidavit was filed as "Affirmative Evidence," indicating intent to reserve rebuttal.  - A formal separate application for filing rebuttal evidence is not necessary under Order XVIII Rule 3 of the Civil Procedure Code (CPC) 1908.  - The WhatsApp chat had been referred to indirectly and was part of the defense, needing explanation in light of the Defendants’ evidence.  

- The pleadings should be read with a liberal approach, not overly technical, and facts relevant to the dispute should not be excluded on technicalities.

Reasoning by the Court  The Court carefully reviewed the facts and the applicable law. The following points are crucial:

Pleadings and Evidence:The Court examined the plaint (the formal statement of claims) and found it absent of any reference to the WhatsApp chat dated 21 September 2021 or the meeting on 20 September 2021. This meant the Plaintiff was introducing new facts very late.

Opportunity to Deal With Evidence:Though the WhatsApp chat was produced by Defendants with their written statement, the Plaintiff had ample opportunity to address and explain this chat during the evidence phase but chose not to do so. This included cross-examination of a Defendant's witness where the chat was discussed.

Rebuttal Evidence Rules:Order XVIII Rule 3 CPC allows rebuttal evidence to be led without prior leave of the court but must be strictly confined to rebutting the evidence of the other side and not to introduce new facts. The Court observed that the Plaintiff’s rebuttal affidavit introduced entirely new facts (like the meeting and alleged threats) not pleaded earlier.

Liberal Construction of Pleadings:While the Court acknowledged that pleadings should be liberally construed and not interpreted narrowly, this principle does not allow a party to bring in new facts beyond original pleadings at a late stage to gain tactical advantage.

No Sufficient Cause Provided:   The Plaintiff did not provide satisfactory reasons for the delay or for not including these facts earlier. It appeared to the Court that the Plaintiff was trying to patch up defects noticed in the earlier evidence.

Cross Examination and Opportunity: The Plaintiff argued no questions were asked during cross-examination about the WhatsApp chat, but the Court found this was incorrect. Questions related to this chat had indeed been put to both Plaintiff and Defendant witnesses.

Decision  :The Court rejected the Plaintiff’s attempt to file the rebuttal affidavit containing new facts related to the WhatsApp chat and the meeting of 20 September 2021. The Plaintiff failed to show sufficient cause to allow such evidence at the advanced stage of the case.

 Key Legal Provisions Discussed  :Order XVIII Rule 3, Civil Procedure Code 1908: Related to the filing of rebuttal evidence after afffirmative evidence, allowing it only to contradict the evidence already led, and not to introduce new facts. 

Crux of the case:The Plaintiff tried to introduce new claims and explanations through rebuttal evidence at the very late stage of the trial, namely to explain a WhatsApp chat and a meeting where threats were made. However, these claims were not mentioned in the original complaint or the initial evidence. The documents were already with Plaintiff early on, so they had many chances to talk about it but chose not to. The Court held that allowing this late evidence would be unfair and against proper legal procedure. Therefore, the Court did not allow the late rebuttal affidavit and insisted the case proceed to final hearing based on the evidence already admitted.

Case Title: Basant Goel Vs. Som Prakash Sethi

Case Number: CS(COMM) 557/2022

Court: High Court of Delhi

Hon’ble Judge: Justice Manmeet Pritam Singh Arora

Order Date: 27.08.2025

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

Cyril Bath Company Vs. Controller of Patents and Designs

Cyril Bath Company Vs. Controller of Patents and Designs :IPDPTA/8/2025: High Court at Calcutta: Justice Ravi Krishan Kapur:01.09.2025

Dispute: Cyril Bath Company had filed a divisional patent application in India (Application No. 1376/KOLNP/2013). The Controller of Patents rejected the divisional application, holding that modification of claims in a PCT national phase application is not allowed under the Patents Act and Rules. The Controller concluded that such modification could only be sought through amendment, not by filing a divisional application.

Reasons (Court’s Discussion): The Court observed that the Controller’s order was defective because it only quoted provisions (like Sections 10, 11, 16, etc. of the Patents Act) but gave no reasoning. Under law, an order must satisfy the tests of “why” and “what”—the reasoning must explain why the conclusion has been reached. Without reasons, the order becomes unsustainable.

The Court also noted that the Controller had wrongly relied on the Delhi High Court decision in Boehringer Ingelheim without considering the later judgment in Syngenta Ltd. v. Controller of Patents (2023), which had clarified the law.

Decision:The High Court set aside the Controller’s order and remanded the matter back to the Controller of Patents to decide the divisional application afresh in accordance with law, within three months. The Court made it clear that it had not given any opinion on the merits of the divisional application itself.

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)

Hero Ecotech Limited and Another Vs. Hero Cycles Limited

Interplay of Statutory Requirements and Private Agreements in Trademark Infringement Disputes

Facts of the Case:This legal dispute involves several companies and family members from the Munjal business family, centered on the use and ownership of the trademark “HERO” in the manufacturing and marketing of bicycles and related products. The Munjal family business was once unified but diversified over the years into different segments. To manage this complexity and avoid conflicts, the four branches of the Munjal family entered into a Family Settlement Agreement (FSA) and a Trademark and Name Agreement (TMA) in 2010. These agreements clearly divided trademark rights and business domains among the four groups. Specifically, the use of the “HERO” trademark for bicycles was assigned exclusively to one family group (F-4 Family Group), while other groups were allocated different trademark rights related to other products or geographic regions.

Despite these agreements, disputes arose when Hero Ecotech Limited (F-1 Family Group) and associated entities started using the name "HERO ECOTECH" on bicycle products marketed by their group company under the brand name "KROSS." The plaintiffs (Hero Cycles Limited and others, representing the F-4 Family Group) alleged this was in violation of the FSA and TMA, amounts to infringement of the “HERO” trademark in relation to bicycles, and constitutes passing off. The plaintiffs had obtained interim injunctions in earlier proceedings prohibiting the defendants from using the “HERO” mark in bicycle manufacture and sales.

Dispute:The core dispute is whether the defendants violated the injunction and family agreements by using the "HERO ECOTECH" name on bicycle products, which the plaintiffs allege is trademark infringement and amounts to contempt of court. The defendants argued that “HERO ECOTECH LIMITED” was only used as a legal manufacturer’s name on packaging as required by law, not as a trademark or brand. They also contended that the trial court erred in initiating contempt proceedings without following proper procedural requirements, such as instituting a miscellaneous judicial case and permitting evidence.

Legal Provisions Involved: Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC): Prescribes the procedure and consequences for disobedience of any injunction granted by the court, including attachment of property and imprisonment for contempt.

Section 141 of the CPC: Requires the procedure for miscellaneous proceedings to follow the suit trial procedure as far as possible.

Rule 459 (a) (xii) of the Civil Court Rules of Patna High Court: Requires miscellaneous judicial cases such as those under Order XXXIX Rule 2A to be instituted separately.

Trade Marks Act, 1999: Governs protection of registered trademarks against infringement and passing off.

Legal Metrology Act, 2009 and Legal Metrology (Packaged Commodities) Rules, 2011: Mandates specification of manufacturer’s name and address on product packaging.

Reasoning by the High Court:

Procedural Shortcomings: The Court first observed that the trial court had prematurely ordered initiating contempt proceedings without first instituting a separate miscellaneous judicial case as mandated by Rule 459 (a) (xii) of the Civil Court Rules. Further, Section 141 of the CPC requires following suit procedures for evidence and document production in such proceedings, which the trial court bypassed.

Premature Contempt Finding: The court noted that the trial court recorded a prima facie finding of contempt against the defendants before leading evidence or adjudicating the issues, which violates principles of fair play and procedural fairness. The label of “contempt” was inappropriate since the proceedings under Order XXXIX Rule 2A are meant to assess if there has been disobedience or breach of injunction, a question requiring evidence.

Interpretation of Family Agreements: The Court observed that neither the Family Settlement Agreement nor the Trademark and Name Agreement explicitly prohibited the defendants from using their corporate or manufacturer names on products or packaging.

Finality of Supreme Court Orders: The defendants had unsuccessfully challenged earlier injunctions in various courts and the Supreme Court had restored injunctions against the defendants from using the “HERO” mark in bicycle manufacturing and sales. However, the matter of whether the defendants used the mark as a trademark or merely stated their corporate name remained open for further inquiry.

Scope of High Court’s Supervisory Jurisdiction: The High Court, exercising its supervisory power under Article 227 of the Constitution, declined to assume appellate functions or enter into merits and fact-finding. It focused solely on legality and procedural propriety of the trial court’s order.

Decision: The High Court held that the trial court’s order dated 07-09-2019 initiating contempt proceedings against the defendants was an erroneous exercise of jurisdiction for the following reasons:

Failure to institute a separate miscellaneous judicial case as per Rule 459 (a) (xii).Premature recording of contempt finding without evidence and without proper procedure.Inappropriate use of “contempt” label where the question was about breach of injunction warranting inquiry.Failure to consider statutory mandate of Legal Metrology Act on manufacturer name disclosure.Procedural irregularities that go to root of jurisdiction.The Court accordingly set aside the trial court’s impugned order and allowed the civil miscellaneous petition. It also reminded the trial court to expedite disposal of the underlying trademark suit.

Case Title: Hero Ecotech Limited and Another Vs. Hero Cycles Limited and Others

Order Date: 03-09-2025

Case Number: Civil Mis No.1711 of 2019

Name of Court: High Court of Patna

Name of Hon'ble Judge: Honourable Mr. Justice Arun Kumar Jha

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

Mangalam Organics Ltd Vs N Ranga Rao And Sons Pvt Ltd

When Courts Won't Go Behind Trademark Registration

Facts:The case involves Mangalam Organics Ltd (the Plaintiff), a company dealing in camphor-based products, suing N Ranga Rao And Sons Pvt Ltd (the Defendant), another company in the fragrance and sanitary products industry, for trademark infringement and passing off. The Plaintiff claimed it created the trademark "CAMPURE" (and its stylized logo) around March 2017 for camphor-related items like deodorants, air fresheners, soaps, hair products, and sanitary toiletries where camphor is the key ingredient. The Plaintiff registered this mark in Classes 3, 4, and 5 under the Trade Marks Act, 1999, with registrations dating back to 2017, and these remain valid. 

In 2014, the Plaintiff launched a unique cone-shaped camphor product under its "MANGALAM" brand, wrapped in non-woven fabric, and started using "CAMPURE" for this in 2017. In December 2022, the Plaintiff learned the Defendant might launch a similar cone-shaped product and sent a cease-and-desist notice. The Defendant replied, denying any trademark issues and noting the Plaintiff's cone shape wasn't uniquely registered. No such product appeared from the Defendant at that time.

In July 2024, while checking trademark records, the Plaintiff discovered the Defendant's registration for "AIR KARPURE" (No. 4732154, dated November 4, 2020, in Class 5, on a proposed-to-be-used basis) and similar device marks. The Defendant's website (www.karpure.in) showed use of "AIR KARPURE" (with "AIR" in small font and "KARPURE" prominent) for camphor products like air fresheners, pouches, tablets, mosquito repellents, and personal care items. The Plaintiff filed for rectification/cancellation of the Defendant's mark on August 1, 2024, and the Defendant countered in January 2025, claiming adoption in 2020 and use since 2022.

The Defendant, established in 1948 as a family business and incorporated in 2014, has well-known marks like "CYCLE" (recognized by courts) and uses taglines emphasizing "purity" (e.g., "Purity of Prayers"). It claimed "KARPURE" combines "Karpura" (Sanskrit for camphor) and "Pure," adopted honestly in 2020. The Defendant has registrations in Classes 5 and 11, with sales of Rs. 479 lakhs in 2024-25 under the mark. It argued no infringement suit lies against a registered proprietor and accused the Plaintiff of concealing an opposition to its own "CAMPURE" registration by a third party (Lifestar Pharma for "CALAPURE"), where the Plaintiff had argued no monopoly over "PURE" and settled by restricting goods. The Defendant also claimed dissimilarity in marks and delay in the Plaintiff's suit.

In reply, the Plaintiff argued the Court could question the Defendant's registration at the interim stage due to fraud (e.g., wrong class), similarity in marks as wholes, no estoppel from prior opposition (as "CALAPURE" was dissimilar), no delay (2022 notice was only for cone shape), and jurisdiction as products are sold online in Bombay.

Dispute:The main dispute was whether the Defendant's "AIR KARPURE"/"KARPURE" marks infringed the Plaintiff's "CAMPURE" mark or amounted to passing off. The Plaintiff sought an interim injunction to stop the Defendant from using similar marks, logos, or domain names. 

Key issues:- Similarity: Were the marks visually, phonetically, structurally, or conceptually similar enough to cause confusion? - Validity of Defendant's Registration: Could the Court go behind the registration at the interim stage and find it invalid (e.g., ex facie illegal or fraudulent under Sections 9 and 11 of the Trade Marks Act, 1999)?- Infringement: Under Section 29 of the Trade Marks Act, 1999, does use by a registered proprietor constitute infringement?- Passing Off: Did the Plaintiff prove goodwill/reputation by 2022, misrepresentation by the Defendant, and likely damage?- Suppression: Did the Plaintiff hide facts about its own prior opposition, leading to estoppel or denial of relief?- Delay/Laches/Acquiescence: Was the suit delayed after the 2022 notice?- Jurisdiction: Did the Bombay High Court have jurisdiction for passing off, given online sales?

The Plaintiff argued phonetic similarity ("CAMPURE" vs "KARPURE"), copied capital "P," similar goods/channels, prior use since 2017, and fraud in Defendant's Class 11 registration (for apparatus, but used for soaps). The Defendant countered with dissimilarity, honest adoption from Sanskrit and "pure" theme, no monopoly on "PURE," valid registrations, no infringement against registered proprietors (Sections 28(3) and 30(2)(e)), suppression by Plaintiff, and no goodwill shown for 2022.

Detailed Reasoning: The Court began by noting this was an interim application for injunction in a trademark infringement and passing off suit. It summarized facts and submissions from both sides, citing various precedents.

On maintainability against a registered proprietor: Since both parties are registered, no infringement remedy lies (citing Corona Remedies Pvt Ltd vs Franco-Indian Pharmaceuticals Pvt Ltd and S Syed Moideen vs Sulochana Bai). The pleadings showed the Plaintiff relied on "deceptive similarity" from Section 29, but this doesn't apply between registered proprietors.

On validity of Defendant's registration: The Plaintiff challenged it under Sections 9(2)(a) (absolute grounds, e.g., deceptive marks) and 11 (relative grounds, e.g., similarity to earlier mark causing confusion). The Court noted registration confers exclusive rights if valid (Section 28), but between identical/similar registered marks, no exclusive right against each other (Section 28(3)) and no infringement (Section 30(2)(e)). Citing Lupin Ltd vs Johnson and Johnson (Full Bench), the Court can question validity at interim stage only in exceptional cases where registration is ex facie illegal, fraudulent, or shocks the conscience—not just an arguable case. The burden is heavy on the challenger.

Comparing marks: The Court reproduced rival marks and found no ex facie illegality. Plaintiff's "CAMPURE" (block letters, tall "P" in elongated shape) vs Defendant's "KARPURE" (cursive, flower "K," contiguous "P"). Visual, structural, and artwork differences (e.g., no slurring "r" to "m"); phonetic dissimilarity; no confusion likely among educated consumers for these products. Defendant's registration passed Sections 9/11 scrutiny (no opposition from Plaintiff). No fraud shown—Class 5 overlaps with Class 3 for fresheners/deodorizers; classifications are administrative (citing Allied Auto Accessories Ltd vs Allied Motors Pvt Ltd). Honest adoption from "Karpura" +"Pure" (Defendant's theme). Precedents like Pidilite cases (exact copying) didn't apply here.

On suppression: Plaintiff hid opposition to its "CAMPURE" by third party ("CALAPURE"), where it argued no monopoly on "PURE" and settled by restricting goods. This is material; non-disclosure disentitles discretionary relief (citing Phonepe Pvt Ltd vs Resilient Innovations Pvt Ltd).

On passing off: Relevant date is Defendant's adoption (2022). Plaintiff must prove goodwill/reputation by then, misrepresentation, and damage. Sales figures/ad expenses were for all camphor products since 2014, not specifically under "CAMPURE" for 2022—no standalone proof of distinctive reputation. No specific pleading on which Defendant products pass off as Plaintiff's (cone shape excluded). Packaging dissimilar (colors, look); no misrepresentation or confusion (citing Ruston & Hornsby Ltd vs Zamindara Engineering Co; no delay defense as mere delay insufficient without acquiescence).

On other points: No delay/laches (2022 notice was for cone shape); jurisdiction exists due to online sales in Bombay. But overall, no prima facie case for injunction.

Decision:The Court dismissed the interim application, refusing the injunction. The Plaintiff failed to prove ex facie invalidity of Defendant's registration or passing off. The Defendant can continue using its registered mark. 

Case Title: Mangalam Organics Ltd Vs N Ranga Rao And Sons Pvt Ltd

Order Date:September 3, 2025

Case Number:Commercial IP Suit No. 194 of 2025

Neutral Citation:2025:BHC-OS:14413

Name of Court:High Court of Judicature at Bombay

Name of Hon'ble Judge:Sharmila U. Deshmukh, 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

Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai

Section 29 (4) of Trademarks Act 1999 applies only to dissimilar goods and not relevant to identical services

Introduction

In the realm of intellectual property, where brands battle for supremacy, Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others emerges as a landmark showdown before the Supreme Court of India. Decided on January 19, 2022, this case pits a global hospitality giant against a local hotel operator over the use of the trademark "RENAISSANCE." The dispute encapsulates the tension between statutory trademark rights and claims of honest use, weaving a narrative of legal precision, commercial identity, and judicial interpretation. The Supreme Court’s ruling not only resolves a contentious infringement claim but also illuminates the contours of the Trade Marks Act, 1999, offering a masterclass in statutory application and trademark protection in India’s evolving commercial landscape.

Detailed Factual Background

Renaissance Hotel Holdings Inc., a Delaware-based corporation, stands as a titan in the global hospitality industry, operating under the trademark "RENAISSANCE" since 1981. This mark, registered in India under Class 16 (Registration No. 610567) for printed materials and Class 42 (Registration No. 1241271) for hotel and related services, has adorned its hotels, spas, and merchandise worldwide, including establishments in Mumbai and Goa since 1990. With an annual advertising budget of US$14 million and a domain name (www.renaissancehotels.com), the appellant asserts a formidable trans-border reputation, claiming "RENAISSANCE" as a distinctive symbol of its luxury hospitality empire.

The respondents, led by B. Vijaya Sai, operate two modest hotels in Bangalore (Kadugodi) and Puttaparthi under the name "SAI RENAISSANCE." Devotees of Sri Shirdi Sai Baba and Sri Puttaparthi Sai Baba, they adopted this name in 2001, believing the latter to be a reincarnation of the former—thus, "renaissance" symbolizing rebirth. Their hotels cater primarily to Sai Baba devotees, offering vegetarian fare sans alcohol, a stark contrast to the appellant’s five-star offerings. The respondents’ use of "SAI RENAISSANCE" came to the appellant’s attention in 2008 via the website www.sairenaissance.com, prompting an investigation that revealed alleged copying of signage, business cards, and the "RENAISSANCE" mark, suggesting an unauthorized affiliation.

Detailed Procedural Background

The appellant initiated legal action in 2009, filing O.S. No. 3 of 2009 before the Principal District Judge, Bangalore Rural District, seeking a permanent injunction, delivery of infringing materials, and damages of Rs. 3,50,000. On June 21, 2012, the trial court partly decreed the suit, granting an injunction against the respondents’ use of "SAI RENAISSANCE" or any mark incorporating "RENAISSANCE" in Classes 16 and 42, but denying damages and delivery-up claims. The respondents appealed to the High Court of Karnataka in Regular First Appeal No. 1462 of 2012. On April 12, 2019, a Single Judge reversed the trial court’s decree, dismissing the suit on grounds of no trans-border reputation, honest use by the respondents, and no likelihood of confusion due to differing customer bases. Aggrieved, the appellant escalated the matter to the Supreme Court via Civil Appeal No. 404 of 2022, arising from SLP(C) No. 21428 of 2019, culminating in the January 19, 2022, judgment by a three-judge bench.

Issues Involved in the Case

The case revolves around several critical issues. First, whether the respondents’ use of "SAI RENAISSANCE" infringes the appellant’s registered trademark "RENAISSANCE" under Sections 29(2)(c), 29(3), 29(5), or 29(9) of the Trade Marks Act, 1999. Second, whether the High Court erred in applying Section 29(4) (for dissimilar goods/services) instead of provisions for identical marks and services. Third, whether the respondents’ use qualifies as honest concurrent use under Section 30, shielding them from infringement. Fourth, whether the appellant’s delay in filing the suit constitutes acquiescence, barring relief. Finally, whether "RENAISSANCE"’s generic nature or the respondents’ addition of "SAI" negates infringement.

Detailed Submission of Parties

The appellant, represented by Senior Counsel K.V. Viswanathan, argued that the respondents’ use of "SAI RENAISSANCE" infringed its registered mark under multiple provisions of Section 29. Under Section 29(2)(c), the identical mark and services (hotels) triggered a statutory presumption of confusion per Section 29(3). Section 29(5) was invoked as the respondents used "RENAISSANCE" in their trade name, a direct infringement. Section 29(9) applied due to phonetic and visual similarity. Viswanathan contended that the High Court misapplied Section 29(4), which requires reputation and detriment only for dissimilar goods, irrelevant here given the identical services. Citing precedents, he argued that in infringement cases, confusion need not be proven when marks are identical, and the prefix "SAI" did not mitigate the violation.

The respondents, represented by B.C. Sitarama Rao, countered that the suit was untenable due to delay and the appellant’s lack of legal personhood. They portrayed "RENAISSANCE" as a generic dictionary term, incapable of exclusive appropriation, and justified "SAI RENAISSANCE" as an honest tribute to Sai Baba’s reincarnation, used since 2001 without appellant awareness until 2009. They highlighted distinct customer bases—devotees versus luxury travelers—and differing services (vegetarian versus full-service), negating confusion. Claiming honest concurrent use under Section 12 and protection under Section 30, they relied on precedents to argue that their use neither exploited nor harmed the appellant’s mark.

Detailed Discussion on Judgments Cited by Parties and Their Context

The appellant cited Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], where the Supreme Court upheld an injunction against a similar mark in the same trade, emphasizing protection of goodwill. In Ruston & Hornsby Limited v. Zamindara Engineering Co. [(1969) 2 SCC 727], the Court ruled that in infringement cases, identical mark use warrants an injunction without proving confusion, distinguishing it from passing off. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [[1965] 1 SCR 737] reinforced that close similarity in marks negates the need for further evidence in infringement actions. Midas Hygiene Industries (P) Limited v. Sudhir Bhatia [(2004) 3 SCC 90] underscored that injunctions typically follow infringement, irrespective of delay unless adoption is dishonest.

The respondents relied on Khoday Distilleries Limited v. Scotch Whisky Association [(2008) 10 SCC 723], which addressed acquiescence in rectification proceedings, not infringement, rendering it inapposite. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Limited [(2018) 9 SCC 183] distinguished dissimilar marks and goods (milk versus restaurants), unlike the identical services here. Corn Products Refining Co. v. Shangrila Food Products Limited [[1960] 1 SCR 968] and Neon Laboratories Limited v. Medical Technologies Limited [(2016) 2 SCC 672] dealt with distinct contexts (opposition and interim injunctions), offering limited relevance.

Detailed Reasoning and Analysis of Judge

Justice B.R. Gavai, authoring the Supreme Court’s opinion, meticulously dissected the High Court’s errors. The Court traced the evolution of trademark law from the 1940 Act to the 1999 Act, emphasizing the latter’s intent to harmonize global trade practices and prohibit unauthorized use of registered marks in trade names. Under Section 29(2)(c), the identical mark "RENAISSANCE" and identical services (hotels) triggered a presumption of confusion under Section 29(3), rendering further proof unnecessary. Section 29(5) applied as "RENAISSANCE" formed part of the respondents’ trade name, and Section 29(9) covered phonetic and visual similarity, amplifying the infringement.

The High Court’s reliance on Section 29(4) was deemed a misstep, as it pertains to dissimilar goods/services and requires reputation and detriment—irrelevant here given the identical services. The Court criticized the High Court’s focus on customer classes and confusion, citing Ruston & Hornsby to affirm that infringement hinges on mark use, not deception likelihood. The respondents’ Section 30 defense failed, as honest use required both fair practice and no detriment, conditions unmet given the unauthorized adoption. Textual and contextual interpretation, per Reserve Bank of India v. Peerless [(1987) 1 SCC 424], and holistic statutory reading, per Balasinor Nagrik Cooperative Bank [(1987) 1 SCC 606], underscored the High Court’s fragmented approach, ignoring legislative intent.

Final Decision

The Supreme Court allowed the appeal, quashing the High Court’s judgment of April 12, 2019, and reinstating the trial court’s decree of June 21, 2012. The respondents were restrained from using "SAI RENAISSANCE" or any mark incorporating "RENAISSANCE" in Classes 16 and 42, affirming the appellant’s exclusive rights.

Law Settled in This Case

The judgment clarifies that under Section 29(2)(c) and (3), identical marks and goods/services presume confusion, mandating injunctions without further evidence. Section 29(5) prohibits use of a registered mark in trade names, and Section 29(9) extends protection to phonetic/visual similarity. Section 29(4) applies only to dissimilar goods, requiring reputation and detriment, not relevant to identical services. Section 30’s honest use defense demands both fair practice and no detriment, a conjunctive test. The ruling reinforces statutory primacy in infringement actions, distinguishing them from passing off’s common law roots.

Case Title: Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai and Others
Date of Order: January 19, 2022
Case No.: Civil Appeal No. 404 of 2022 [Arising out of SLP(C) No. 21428 of 2019]
Name of Court: Supreme Court of India
Name of Judges: Justice L. Nageswara Rao, Justice B.R. Gavai, Justice B.V. Nagarathna

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

Maryam Bee Versus Shuibham Jain and Ors

Impleadment of Third Parties in Specific Performance Suits

The case titled Maryam Bee versus Shuibham Jain and Ors., with Case Number FAO(OS) (COMM) 199/2024 : 2025:DHC:7318-DB High Court of Delhi at New Delhi on 26 August 2025 by Hon'ble Mr. Justice Anil Ksheterpal and Hon'ble Mr. Justice Harish Vaidyanathan Shankar.

Detailed Summary of the Case

Facts

The underlying dispute originates from a commercial suit for specific performance of an Agreement to Sell (ATS) dated 27 December 2022, concerning a property admeasuring 82.5 square yards, bearing Municipal No. 1806 (Mezzanine Floor to Second Floor with roof rights), Ward No. 4, Chandni Chowk, Dariba Kalan, New Delhi, 110006 (referred to as the "suit property"). The plaintiffs in the original suit (Respondent Nos. 1 to 3 herein, namely Shuibham Jain and others) filed CS (Comm) No. 590/2023 against the appellant, Maryam Bee, seeking specific performance of the ATS. According to the plaintiffs, the ATS was executed for a total sale consideration of Rs. 7,00,00,000 (Rupees Seven Crores Only), and they had made partial payments, but the appellant failed to execute the sale deed in their favor, necessitating the suit.

The appellant (Maryam Bee), however, contended that the total sale consideration was actually Rs. 9,00,00,000 (Rupees Nine Crores Only), as an additional ATS for Rs. 2,00,00,000 (Rupees Two Crores Only) was executed on the same date (27 December 2022). She claimed that the plaintiffs' failure to pay the full amount prevented her from executing the sale deed.

During the pendency of this suit, Respondent No. 4 (the brother-in-law of the appellant) filed an application under Order I Rule 10 of the Code of Civil Procedure, 1908 (CPC), being I.A. No. 23592/2023, seeking to be impleaded as a party to the suit. Respondent No. 4 claimed to be a co-owner of the suit property to the extent of 50%, along with his brother Abdul Malik (the appellant's husband). He asserted that the appellant's ownership claim was based on two Gift Deeds dated 23 August 1981 executed by Late Smt. Zubeda Khatoon and Late Sh. Sheikh Abdul Sattar Sahib (the appellant's mother-in-law and father-in-law, respectively). In contrast, Respondent No. 4 argued that the property was co-shared between him and Abdul Malik.

On 7 May 2024, the learned Single Judge of the Delhi High Court allowed this impleadment application, observing that Respondent No. 4 appeared to have some interest in the property, and excluding him could lead to multiplicity of litigation and conflicting rulings. Aggrieved by this order (specifically the portion allowing impleadment), the appellant filed the present appeal under Order XLIII Rule 1 CPC read with Section 10 of the Delhi High Court Act, 1966 (DHC Act). The appeal was reserved on 6 August 2025 and pronounced on 26 August 2025.

Notably, the plaintiffs (Respondent Nos. 1 to 3) opposed the impleadment in the original application and supported the appellant's claim of sole ownership in the appeal. They had separately challenged another portion of the impugned order (regarding a deposit direction) in FAO(OS)(COMM) 167/2024, which was dismissed on 6 August 2024, rendering the impleadment final as against them.

Dispute

The primary dispute in this appeal revolves around the maintainability and propriety of impleading Respondent No. 4 as a defendant in a suit for specific performance of the ATS. The appellant argued that:

• A third party or stranger to the contract cannot be impleaded in a specific performance suit merely to avoid multiplicity of suits, as it would impermissibly enlarge the scope of the suit from enforcing a contract to determining title and possession.
• Respondent Nos. 1 to 3, as dominus litis (masters of the suit), opposed the impleadment, and their stance should be respected.
• The impleadment converts the suit into one for title, which is not permissible.

In opposition, Respondent No. 4 contended:

• The impugned order is not appealable under Order XLIII Rule 1 CPC, and Section 10 of the DHC Act cannot be invoked due to Section 13(2) of the Commercial Courts Act, 2015 (CCA). He relied on cases like Kandla Export Corpn. v. OCI Corpn. (2018) 14 SCC 715, M.V. Polaris Galaxy v. Banque Cantonale De Geneve (2024) 5 SCC 750, Trex India Pvt. Ltd. v. CDE Asia Limited 2023 SCC OnLine Del 2388, and Alka Traders v. Cosco India Ltd. 2020 SCC OnLine Del 3694.
• Impleadment in specific performance suits depends on facts and circumstances, and no rigid rule prohibits it. He cited Sumtibai v. Paras Finance Co. (2007) 10 SCC 82 and Rajesh Kumar Arora v. Smt. Shila 2016 SCC OnLine Del 1277.
• The impugned order had attained finality against the plaintiffs, as their separate appeal was dismissed.

A preliminary objection was raised on the appeal's maintainability under the CCA and CPC provisions.

Reasoning

The Division Bench of the Delhi High Court, comprising Justices Anil Ksheterpal and Harish Vaidyanathan Shankar, first addressed the preliminary objection on maintainability. They distinguished the relied-upon cases (Kandla Export, M.V. Polaris Galaxy, Trex India, and Alka Traders), noting that those dealt with arbitration appeals, admiralty suits, rejection of plaints, or ex parte proceedings, which were inapplicable here. Instead, relying on Gurmauj Saran Baluja v. Mrs. Joyce C. Salim 1988 SCC OnLine Del 295 and Supreme Court precedents like Shah Babulal Khimji v. Jayaben D. Kania (1981) 4 SCC 8 and Jugal Kishore Paliwal v. S. Sat Jit Singh (1984) 1 SCC 358, the Bench held that the impugned order qualifies as a "judgment" under Section 10(1) of the DHC Act. It affects substantive rights (e.g., enlarging the suit's scope and forcing a de novo trial), making the appeal maintainable even if not expressly listed under Order XLIII CPC.

On merits, the Bench analyzed Order I Rule 10(2) CPC, which allows impleadment only if a party's presence is necessary for complete adjudication of the issues involved. They emphasized that suits for specific performance are contract-centric, adjudicating enforceability between contracting parties, and result in judgments in personam (not in rem). Citing the Supreme Court's seminal ruling in Kasturi v. Iyyamperumal (2005) 6 SCC 733, the Bench reiterated that impleading a third party claiming adverse title enlarges the suit into one for title/possession, which is impermissible. The two tests from Kasturi for a "necessary party" were applied: (i) right to relief against them in the controversy, and (ii) inability to pass an effective decree without them. A "proper party" requires their presence for effective adjudication.

The Bench distinguished Sumtibai (supra), where impleadment was allowed due to prima facie semblance of title via a registered sale deed involving the defendant's legal representatives (LRs), noting it was fact-specific and not a blanket exception. Similarly, Rajesh Kumar Arora was deemed inapplicable, as it involved multiple applications, pending inter se suits among parties, and the appeal on impleadment was dismissed without merit analysis.

The Bench concluded that Respondent No. 4, as a stranger to the ATS, failed the tests under Order I Rule 10 CPC. His impleadment would introduce collateral title issues, contrary to precedents like Anil Kumar Singh v. Shivnath Mishra (1995) 3 SCC 147, Vijay Pratap v. Sambhu Saran Sinha (1996) 10 SCC 53, and Bharat Karsondas Thakkar v. Kiran Construction Company (2008) 13 SCC 658. The learned Single Judge's reasoning (potential interest and multiplicity avoidance) was flawed, as it overlooked the suit's limited scope. Even assuming Respondent No. 4's prima facie interest, it did not make him necessary or proper for adjudicating the contract's enforceability.

Decision

The appeal was allowed, and the impugned order dated 7 May 2024 (allowing I.A. No. 23592/2023) was set aside, thereby reversing the impleadment of Respondent No. 4 as Defendant No. 2 in CS (Comm) No. 590/2023. Respondent No. 4 was granted liberty to pursue his claims via an independent suit before a competent court. The appeal and pending applications were disposed of accordingly, with no other submissions noted from the parties.

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 Title for This Article

": Delhi High Court Sets Aside Order Allowing Co-Ownership Claim in Contract Dispute"

Karim Hotels Pvt. Ltd. Vs. AL Kareem

Balancing Prior Use and Honest Concurrent Adoption in Trade Mark Rectification

Facts: Karim Hotels Pvt. Ltd., a Delhi-based restaurant company, claimed to have used the trademark “KARIM/KARIM’S/KAREEM” since 1913 for their non-vegetarian restaurant business, mainly in Delhi and the NCR, with plans to expand. Incorporated in 1987, they held multiple trademark registrations and provided media articles (Rediff.com 2005, New York Times 2012) and financial records (2003–2021) to prove their reputation.

The first respondent, Al Kareem, a Hyderabad-based hotel, used the trademark “AL KAREEM” (registered under No. 3385555 in Class 43 for restaurant services). They claimed use since 1965, supported by an affidavit from Abdul Hameed Khan, a 1996 Mutton Supply Contract, a 1996 receipt, a 2016 Zomato toolkit, and 2018 FSSAI licenses. Their 2016 trademark application was initially “proposed-to-be-used,” but a 2017 reply claimed use since 2001.

Karim Hotels sought to remove “AL KAREEM” from the Trade Marks Register under Sections 47, 57, and 125 of the Trade Marks Act, 1999, arguing it was too similar to their mark and wrongly registered. Al Kareem countered that their mark was distinct, used honestly in Telangana, and caused no harm to Karim Hotels.

Dispute: The main issue was whether “AL KAREEM” should be removed from the register due to deceptive similarity with “KARIM” or improper registration. Karim Hotels claimed prior use and national rights, while Al Kareem argued honest concurrent use and geographic separation.

Person Aggrieved (Sections 47 and 57):Sections 47 and 57 allow a “person aggrieved” to seek trademark removal or rectification if harmed by the mark’s presence. Arguments: Al Kareem argued Karim Hotels wasn’t aggrieved, as their businesses were in different regions (Delhi vs. Telangana), citing Toshiba (2009). Karim Hotels claimed pan-India trademark rights. Court’s Reasoning: Citing Hardie Trading (2003), the court broadly interpreted “person aggrieved.” Since both were in the restaurant business and Karim Hotels held registered marks, they qualified as aggrieved due to potential rights restrictions.

Section 47: Non-Use: Legal Provision: Section 47 allows removal for non-use in the five years and three months before the petition. Arguments: Karim Hotels questioned Al Kareem’s use since 1965, noting inconsistencies in their claims. Al Kareem provided documents showing use. Court’s Reasoning: Al Kareem’s 1996 contract, receipt, 2016 Zomato toolkit, and 2018 licenses proved use, defeating the Section 47 claim.

Section 57: Wrongful Registration: Legal Provision: Section 57 allows rectification for wrongful or confusing registrations. Arguments: Karim Hotels claimed use since 1913 and argued “AL KAREEM” was deceptively similar, citing S. Syed Mohideen (2016). Al Kareem claimed honest use since 1965, supported by evidence, and geographic limitation, citing London-Rubber (1963) and Section 12.Court’s Reasoning: Karim Hotels’ 1913 claim lacked evidence linking them to earlier users. Al Kareem’s evidence of use since 1996 was sufficient, and their geographic limitation reduced confusion. The Petitioner failed to prove deceptive similarity or wrongful registration.

Section 12: Honest Concurrent Use:Legal Provision: Section 12 allows registration of similar marks if used honestly and concurrently. Court’s View: Al Kareem’s honest use in Telangana supported retaining their mark. Decision: The mark remains on the Register but with an express geographical limitation: This protects the respondent under Sections 12 and 35 while addressing the petitioner's concerns about dilution.

Case Title:  Karim Hotels Pvt. Ltd. Vs. AL Kareem and The Registrar of Trade Marks;

Order Date: 29-07-2025;

Case Number: (T)OP(TM) No. 406 of 2023;

Neutral Citation: 2025:MHC:1859;

Name of Court: High Court of Judicature at Madras;

Judge: The Hon'ble Mr. Justice Senthilkumar Ramamoorthy

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

Anugraha Castings & Anr. Vs. Anugraha Valve Castings Limited

Plea of Prima facie invalidity under Section 124 of Trademarks Act 1999

Introduction:  This case is a legal battle between two companies in Coimbatore, India, both using the word "Anugraha" in their business names. Anugraha Castings, a partnership firm, and Anugraha Valve Castings Limited, a company, clashed over who has the right to use "Anugraha" as a trademark. The dispute reached the Madras High Court when Anugraha Castings challenged the Commercial Court’s decision on which issues should be considered in a related lawsuit. This summary explains the facts, the dispute, the court’s reasoning, and the final decision in simple language, while keeping all legal provisions intact, to help law students and junior lawyers understand the case.

Background: Anugraha Valve Castings Limited (the respondent) claimed they started using the word "Anugraha" as a trademark in 2003. They registered it as a trademark (Registration No. 5117934) on 04.09.2021 for use in Classes 6 (metals and alloys), 7 (machines and machine tools), and 40 (material treatment), which are related to the alloys and casting industry.

The respondent sent a cease-and-desist notice to Anugraha Castings in 2021, asking them to stop using "Anugraha" in their business, claiming it violated their trademark rights. However, they did not file a lawsuit until 2025, when they filed a commercial suit (C.O.S.No.2 of 2025) in the Commercial Court, Coimbatore. The suit asked for court orders to stop Anugraha Castings from using "Anugraha" and to enforce the respondent’s trademark rights.

Anugraha Castings, as defendants in the suit, argued that the respondent’s trademark was invalid because "Anugraha" is a common word used in seven languages and not a unique term created by the respondent. They also claimed the respondent lied to the Trademark Registry by saying "Anugraha" was a coined (made-up) word.

Anugraha Castings filed a Civil Revision Petition under Article 227 of the Indian Constitution in the Madras High Court. They asked the court to order the Commercial Court to include nine specific issues (numbered 4 to 12 in their draft) in the lawsuit. On 09.06.2025, the Commercial Court framed some issues for the lawsuit after hearing both sides but did not include all the issues proposed by Anugraha Castings, especially those challenging the validity of the respondent’s trademark. This led Anugraha Castings to file the revision petition in the High Court.

The Dispute: The main issue was whether the Commercial Court made a mistake by not including all of Anugraha Castings’ proposed issues, particularly those questioning the validity of the respondent’s trademark. Anugraha Castings argued that "Anugraha" is a common word, not unique to the respondent, and that the respondent misled the Trademark Registry to get the registration. They wanted the Commercial Court to frame issues that would allow them to challenge the trademark’s validity and possibly seek its cancellation (rectification). The respondent, however, argued that their trademark was validly registered, that "Anugraha" was not a common term in their industry, and that Anugraha Castings’ challenge was weak and too late.

The case involves key provisions of the Trade Marks Act, 1999, which governs trademarks in India:

Section 124: This section outlines what happens when a trademark’s validity is challenged in a lawsuit.

If a rectification (cancellation) process is already underway with the Trademark Registry or High Court, the lawsuit must be paused until that process is complete.

If no rectification process is ongoing, and the court believes there’s a strong initial (prima facie) case that the trademark is invalid, the court must frame an issue about the invalidity and give the challenger three months to file for rectification.

Section 31(1): A registered trademark is assumed valid unless successfully challenged within the legal time limit.

Section 17(2)(b): This allows someone to use a trademark in good faith if it’s a common term in the trade, without infringing on another’s rights.

Article 227 of the Constitution of India: This gives High Courts the power to oversee lower courts and correct serious errors, which Anugraha Castings used to challenge the Commercial Court’s decision.

Patel Field Marshal Agencies vs. P.M. Diesel Limited (2018) 2 SCC 112: This Supreme Court case was cited by the petitioners. It states that trademark validity issues must be decided by the Trademark Tribunal, not a civil court, but only if the court finds a strong initial case for invalidity.

Detailed Reasoning: The court agreed that Section 124 allows a defendant to challenge a trademark’s validity, but only if they present a strong and believable case (prima facie tenable). The petitioners’ main argument was that "Anugraha" is a common word in seven languages. However, the court said this didn’t matter unless "Anugraha" was a common term in the alloys and casting industry (Classes 6, 7, and 40). The petitioners provided no evidence that it was common in this industry. The respondent’s explanation—that "Anugraha" was coined from the founder’s and his wife’s names and matched their company name—seemed reasonable and believable at this stage. The court concluded there was no strong case to question the trademark’s validity, so the Commercial Court was right not to frame an issue about invalidity.

Section 124 and Prima Facie Requirement:The court clarified that Section 124 doesn’t require framing an issue for every claim of invalidity. The claim must be strong enough to justify pausing the lawsuit and allowing a rectification challenge.  The court referred to the Supreme Court’s ruling in Patel Field Marshal Agencies, which said that only credible claims of invalidity should lead to framing an issue, to avoid delays from weak or frivolous claims. Since the petitioners’ claim about "Anugraha" being a common word lacked evidence in the context of the industry, it didn’t meet the threshold for framing an issue.

Decision:The court refused to frame an issue on the invalidity of the respondent’s trademark, finding no strong or believable case to support it. The court upheld the Commercial Court’s decision not to include this issue, as the petitioners failed to show that "Anugraha" was a common term in the alloys and casting industry. There were no orders for costs, and the related Civil Miscellaneous Petition was closed.

Conclusion: This case shows how courts handle trademark disputes, especially when one party questions the validity of another’s trademark. The Madras High Court balanced the need to protect valid trademarks with ensuring a fair trial by allowing some of the petitioners’ issues but rejecting their weak challenge to the trademark’s validity. For law students and junior lawyers, this case teaches the importance of presenting strong evidence when challenging a trademark, the role of statutory time limits, and how courts decide which issues to include in a lawsuit. It also highlights the practical application of Section 124 of the Trade Marks Act in commercial disputes.

Case Title: Anugraha Castings & Anr. Vs. Anugraha Valve Castings Limited
Order Date: 22.08.2025
Case Number: CRP.No.2480 of 2025 
Name of Court: The High Court of Judicature at Madras
Name of Judge: The Hon'ble Mr. Justice P.B. Balaji

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

Amgen Inc vs The Assistant Controller of Patents

Obviousness, Synergy, and Enablement in Biologic Formulations

Fact:Amgen, a U.S.-based company that makes medicines from natural substances like proteins, created a medicine called romiplostim, sold as Nplate. This medicine mimics a natural body signal (a hormone called thrombopoietin, or TPO) that tells your body to produce platelets—tiny components in your blood that help stop bleeding by forming clots. It’s vital for people with a condition called immune thrombocytopenic purpura (ITP), where the body mistakenly attacks its own platelets, causing low counts and bleeding risks.

Medicines like romiplostim, made from living sources, are delicate. They can break down or clump together if not handled carefully, much like milk curdling outside the fridge. To solve this, Amgen developed a way to freeze-dry the medicine (a process called lyophilization), turning it into a stable powder that’s easier to store, ship, and mix with water for use later.

Amgen applied for a patent in India on 9 September 2008, under application number 5857/CHENP/2008, titled “Lyophilized Therapeutic Peptibody Formulations.” They described a specific dry mix: the main medicine (romiplostim, structured as Formula V in their papers) showing the mix stays stable, doesn’t clump, and that the additives work together better than alone.

Amgen asked the Indian Patent Office to review their application. On 20 July 2013, the office issued a First Examination Report (FER), raising objections under Sections 3(d), 3(e), and 2(1)(ja) of the Patents Act, 1970. These rules block patents for things like reusing known methods, simple mixes without special effects, or ideas that aren’t creative enough compared to existing documents (called prior arts D1-D6). Amgen responded, narrowing their claims to focus on Formula V, which covered 52 slight variations of the main medicine part.

Then, Intas Pharmaceuticals Limited, an Indian company, objected on 18 July 2016, under Sections 25(1)(e) (obviousness), 25(1)(f) (not an invention), and 25(1)(g) (incomplete explanation). After hearings, the Assistant Controller rejected the application on 31 March 2023, citing the same rules: Section 2(1)(ja) (not creative), Section 3(d) (reusing known methods), Section 3(e) (simple mix), and Section 10(4) (not fully explained). They pointed to prior arts and said there was no proof of real improvement.

Amgen appealed to the Madras High Court under Section 117A of the Patents Act, 1970, which allows challenging patent rejections.

The Core Dispute:

The core issue was whether Amgen’s dry medicine mix qualified as a patentable invention under the Indian Patents Act, 1970. Patents are granted only for ideas that are new, involve a creative step, and can be used industrially, but certain rules block patents for specific cases. The court had to answer four key questions:

1. Section 3(d): Did Amgen’s method for making the dry mix just reuse an old, known process without adding anything new?
2. Section 3(e): Was the mix just a simple blend of known ingredients that don’t work together in a special way to create a better result?
3. Section 2(1)(ja): Would an average expert in medicine-making (called a person skilled in the art, or PSITA) find this mix obvious by looking at old documents (prior arts D1-D5)?
4. Section 10(4): Did Amgen explain their idea fully and clearly in their application, especially since it could apply to 52 variations, but they only tested one?

Amgen argued their mix was unique for their medicine, their tests showed the ingredients teamed up to prevent spoiling and clumping, picking the right additives and amounts was a creative challenge, and their explanation was enough with one example representing the group. The opponents (the Patent Office and Intas) countered that it was obvious by combining old documents, just a simple mix, and not fully explained for all variations.

The Court’s Careful Reasoning: 

The Hon'ble judge beganexplaining in simple terms how medicines from living sources are fragile, need injections (not pills), and why choosing additives is like solving a puzzle—each medicine needs its own perfect recipe. Let’s dive into how the court handled each legal issue, keeping the law’s language intact.

1. Rejection under Section 3(d): Mere Use of a Known substabce

Section 3(d) of the Patents Act, 1970, says you can’t patent “the mere use of a known substabce” unless it creates a new product or uses a new ingredient. The Assistant Controller rejected claim 9 (the method for preparing and drying the mix with specific additives and amounts), saying it was just using the old freeze-drying process, pointing to prior art D4 (which mentioned the medicine) and general knowledge.

The court examined claim 9 and disagreed. It found no prior art showed exactly how to dry this specific medicine with these additives in these amounts. Prior art D4 mentioned freeze-drying vaguely, saying compositions “may be in dried powder, such as lyophilized form,” but gave no steps or details. Prior art D5 described drying a different substance but had no method steps. The court concluded that claim 9’s process, with its specific additives and amounts, wasn’t just reusing a known method—it added something new. Thus, the rejection under Section 3(d) was not sustainable.

2. Rejection under Section 3(e): Mere Admixture Without Synergy

Section 3(e) blocks patents for “a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof.” This means a mix where the parts just do their usual jobs, adding up normally, isn’t patentable. The mix must show synergy—where the whole is better than the sum of the parts, like ingredients in a cake that create a unique flavor together.

The Assistant Controller said Amgen’s mix was a simple blend because they didn’t provide data comparing the mix before and after drying to prove better stability. The court rejected this, saying Section 3(e) doesn’t always require before-and-after drying data. The goal is to show the ingredients interact to produce a result greater than their individual effects. Amgen’s tests (Tables 39-41) did this:

• Table 39: Showed that using at least 1.5% sucrose (a stabilizer) reduced chemical breakdown at high temperatures, while less sucrose led to more spoiling. High amounts of another additive (mannitol) alone didn’t help.
• Tables 40 and 41: Showed that adding polysorbate-20 (a clumping preventer) kept clumping under 0.1%, compared to much higher clumping without it. Tests used different medicine amounts (0.5 mg/mL and 0.3 mg/mL), but this didn’t matter for proving the additive’s teamwork.

The Controller argued the different amounts made the data weak, but the court said the tests’ purpose was to show synergy (polysorbate-20’s effect on clumping), not to compare amounts. Unlike prior art D3, which aimed to increase substance concentration, Amgen’s goal was stability, so before-and-after drying data wasn’t needed. The court found clear synergy, setting aside the Section 3(e) rejection.

3. Lack of Inventive Step under Section 2(1)(ja)

Section 2(1)(ja) requires an “inventive step”—a feature that makes the invention not obvious to a person skilled in the art (PSITA), defined as an average medicine-making expert with common knowledge but no extraordinary creativity. The Controller said the mix was obvious based on prior arts D1-D5 (D6 and D7 weren’t used in the appeal).

The court played the role of the PSITA and analyzed each prior art:

• D1-D3: D1 (Amgen’s work on a different binder) didn’t mention this medicine or drying. D2 (Amgen’s modified proteins) discussed combining parts for longer life but not drying. D3 focused on drying to increase concentration, not stability, so a PSITA wouldn’t apply it here. These didn’t make the mix obvious alone or together.
• D4: Amgen’s own document on the same medicine (including the exact structure, SEQ ID 1017) for ITP treatment. It mentioned dry forms and additives like sucrose but vaguely, without specific drying steps, additive types, or amounts. A PSITA couldn’t reach Amgen’s mix from D4 or D1-D4.
• D5: Described drying a different substance (IL-12, for cancer) with similar additives: 2% sucrose, 4.15% mannitol, 0.02% polysorbate-20, and a buffer at pH 5.6. The Controller suggested combining D4 and D5, but the court disagreed. The substances were different (IL-12 is a paired helper for cancer; romiplostim is a fused piece for platelets). D4 didn’t suggest looking at D5. Scientific literature showed 6-16 options for each additive type, making selection a complex puzzle with thousands of combinations. No standard recipe exists, and a common clumping preventer (polysorbate-80) differed from Amgen’s choice (polysorbate-20).

The court concluded that choosing these additives and exact amounts for this medicine wasn’t obvious—it took creative work. The Section 2(1)(ja) rejection was unsustainable.

4. Insufficiency under Section 10(4)

Section 10(4) requires a patent application to fully and clearly describe the invention, including the best method known, so others can recreate it. Amgen’s Formula V covered 52 variations of the medicine’s core part, but tests (Tables 39-41) only showed one (SEQ ID 1017). The court noted that these variations differ in structure, affecting how they behave. Without guidance for the other 51, the application didn’t fully enable them. However, the tested variation (and its close family, SEQ ID 1012-1017) was well-explained. The court partly upheld this objection, narrowing the patent to cover only the tested variation (SEQ ID NO. 459).

The Final Decision: 

The Madras High Court allowed Amgen’s appeal under Section 117A, setting aside the Assistant Controller’s rejection order dated 31 March 2023. The patent application was sent back for approval, but with amendment. This ruling is a milestone for medicine patents in India. It shows that courts will protect creative solutions in complex fields like biologics if they demonstrate real teamwork between ingredients and aren’t obvious combinations of old ideas. However, inventors must fully explain their work, especially for broad claims with many variations.

Case Title:Amgen Inc. Vs. The Assistant Controller of Patents and Designs 

Date of order: 22.08.2025

Case Number:CMA (PT) No.28 of 2023

Neutral Citation 2025:MHC:2096, 

Name of Court:High Court of Judicature at Madras

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

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