Mr. AR Rahman Vs. Ustaf Faiyaz Wasifuddin Dagar and Ors

Copyright Challenges in Traditional Compositions

Facts: The story of this legal battle starts with a famous musician named Ustad Faiyaz Wasifuddin Dagar, who is a Padma Shri awardee and a well-known singer in the Dagarvani style of Dhrupad, which is a type of old Indian classical music. He is the son of the late Ustad N. Faiyazuddin Dagar and the nephew of the late Ustad N. Zahiruddin Dagar, together known as the Junior Dagar Brothers. These brothers are said to have created a musical piece called Shiva Stuti . stad Faiyaz Wasifuddin Dagar claims that the rights to this music came to him through a spoken family agreement in 1994 among the heirs. He says he owns the copyright because of this agreement. He uses this music to teach his students but has not allowed anyone to use it for making money or public shows without his okay. He has given limited permissions to some music companies and schools only for learning and practice. 

Two of his students, Shivam Bharadwaj and Arman Ali Dehlvi, knew about Shiva Stuti from their lessons. According to Ustad Faiyaz Wasifuddin Dagar, these students went to A.R. Rahman, a famous music maker, and shared the music without his permission. Ustad Faiyaz Wasifuddin Dagar found out that parts of Shiva Stuti were used in a song called Veera Raja Veera in the Tamil movie Ponniyin Selvan – II.  

A.R. Rahman made the music for the film, produced by Madras Talkies and Lyca Productions, with the music rights held by Tips Industries. The song credits said it was based on Dagarvani Tradition Dhrupad, but did not name the Junior Dagar Brothers or Ustad Faiyaz Wasifuddin Dagar. Ustad Faiyaz Wasifuddin Dagar says the song copies key parts like the note patterns, rhythm, and the main essence of Shiva Stuti, even if shifted to a different key. He wrote a letter  to A.R. Rahman and the director Mani Ratnam about this, saying it broke the moral rights of the Junior Dagar Brothers and his copyright.  Ustad Faiyaz Wasifuddin Dagar sent a legal notice by email. Madras Talkies replied  denying all claims.

Procedural Details:Ustad Faiyaz Wasifuddin Dagar filed a lawsuit in the Delhi High Court, case number CS (COMM) 773 of 2023, asking for a permanent order to stop the use of Shiva Stuti without credit to the Junior Dagar Brothers and without his permission, plus damages and account of profits. Along with the suit, he filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, for temporary relief during the case. 

The single judge of the Delhi High Court, in judgment , partly allowed the temporary application. The judge ordered changing the song credits to name the Junior Dagar Brothers, made A.R. Rahman, Madras Talkies, and Lyca Productions deposit two crore rupees in court until the trial ends, and pay two lakh rupees in costs to Ustad Faiyaz Wasifuddin Dagar. A.R. Rahman appealed this.

Dispute:The main fight is about whether Shiva Stuti is an original music piece that Ustad Faiyaz Wasifuddin Dagar owns the copyright to, and if A.R. Rahman and others broke that copyright by using it in Veera Raja Veera without proper credit or permission. Ustad Faiyaz Wasifuddin Dagar says the Junior Dagar Brothers made it in the 1970s as a joint work, and he got the rights through a family deal. He claims the song copies protected parts like the special note sequences and rhythm, hurting the moral rights to be named as authors and his economic rights. A.R. Rahman says it's a traditional Dhrupad piece passed down orally, in the public domain, with no proof the brothers created it. He argues the shared parts are common to Raag Adana and not original enough for protection. The dispute also covers if the single judge was right to give temporary relief based on the evidence, or if he wrongly put the burden on the defendants to disprove ownership.

Reasoning :The division bench looked closely at two big questions: first, if the Junior Dagar Brothers were the authors of Shiva Stuti, and second, if it was original enough for copyright. On authorship, the court said under Section 2(d) of the Copyright Act, 1957, an author is the person who makes the work. Section 17 says the author is the first owner unless there's an agreement otherwise. The court noted that for music, authorship means creating the notes and structure, not just performing it. 

They discussed Eastern Book Company v. D.B. Modak, where the Supreme Court said originality needs skill and judgment, not just hard work, and authorship must be proven. In that case, the court said copying court judgments with small changes isn't original enough for copyright. Applying this, the bench said Ustad Faiyaz Wasifuddin Dagar's evidence,  and inlay card, only shows the brothers performed Shiva Stuti, not that they made it. The card lists them as performers, not composers. The family letter from 2023 and diary are weak because they're recent and not direct proof from the 1970s. The 1995 agreement with PAN Records is about publishing rights for the recording, not composing. The bench said the single judge wrongly assumed authorship because there was no contrary proof, shifting the burden wrongly. They cited Section 55(2) of the Copyright Act, 1957, which presumes the name on published copies is the author, but here no copies name the brothers as composers. 

They discussed R.G. Anand v. Delux Films, where the Supreme Court said no copyright in ideas, themes, or historical facts, only in how they're expressed, and similarities must be substantial. Here, the bench said common Raag elements aren't protectable. On originality, the court said under Section 13 of the Copyright Act, 1957, copyright is for original musical works. From Eastern Book Company again, originality means independent skill, judgment, and some creativity, more than just sweat of the brow. The bench said the single judge didn't properly check if Shiva Stuti added enough new to Raag Adana to be original. 

Decision:The bench said the single judge didn't do this filtration and wrongly found originality just because no contrary evidence. They cited Wander Ltd v. Antox India Pvt Ltd, , on when to give temporary relief: prima facie case, balance of convenience, and irreparable harm. Here, no prima facie case for authorship or originality. Also, Pernod Ricard (P) Ltd v. Karanveer Singh Chhabra, , on interim orders. The bench discussed State of Maharashtra v. M.N. Kaul, , saying presumptions come from facts, not other presumptions. Here, presuming authorship from performance is wrong. They mentioned Hazi Mohammad Ekramul Haq v. State of W.B.,  on expert evidence, but said the single judge used his own music knowledge without experts, which was okay if not challenged well, but here the conclusions were wrong. Overall, the bench said the single judge's reasoning had errors, like mixing performance with authorship and not proving originality properly. The division bench allowed the appeal, set aside the single judge's order of April 25, 2025, and said Ustad Faiyaz Wasifuddin Dagar didn't show a strong enough starting case for authorship or originality. They clarified this is only for the temporary stage, and the full trial can decide the merits. 

Case Title:Mr. AR Rahman Vs. Ustaf Faiyaz Wasifuddin Dagar and Ors

Order date: 24.09.2025

Case Number: FAO(OS) (COMM) 86/2025

Neutral Citation: 2025:DHC:8522

Name of Court: High Court of Delhi at New Delhi

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

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

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

Danone Asia Pacific Holdings Pte. Ltd. Vs. Syed Jawed Mohsin

Phonetic and Visual Similarity in Trademark rectification

Facts:Danone Asia Pacific Holdings Pte. Ltd., part of the globally known Danone Group, has a long history in the nutrition sector dating back to 1896. One of its most recognized products in India is PROTINEX, a nutritional protein supplement brand introduced in 1957. Over time, the ownership of this brand changed hands. It was first registered by Dumex Pvt. Ltd., later acquired by Pfizer Group in 1972, then taken over by Wockhardt Group in 2006, and finally assigned to the Danone Group through a deed of assignment. Along with the trademark, Danone also acquired the goodwill, associated intellectual property, and trade dress rights.

In September 2024, Danone discovered a product named PROTIFIX being marketed online through Alvo Life Science’s website and various e-commerce platforms. Subsequent investigation revealed that the product was being manufactured at the premises of Zyrath Health Care Pvt. Ltd. under the trademark “PROTIFIX.” The mark “PROTIFIX” was registered in Class 5 under Trademark No. 3592264.

Danone contended that “PROTIFIX” was deceptively similar to its well-known registered trademark “PROTINEX” and that the packaging and trade dress were also strikingly alike, creating confusion in the minds of consumers. The petition for rectification of the impugned mark was filed on the grounds of non-use and deceptive similarity.

The respondents argued that the petitioner could not claim exclusivity over the prefix “Proti” as it was common to the trade, and several companies in the nutrition market used it. They also claimed differences in the color scheme and layout of the packaging, asserting that no confusion would arise.

Procedural Background: Danone filed this rectification application before the Calcutta High Court under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the respondent’s mark.

Earlier, in December 2024, Danone had filed a separate infringement suit in the Delhi High Court against the respondents and other parties. The Delhi court granted an interim injunction against some defendants, and the suit was amicably resolved with defendants 1 to 7. However, with respect to defendants 8 to 10, which included the present respondent, the suit was still pending and contested.

In the present rectification proceedings, the court examined whether the registration of “PROTIFIX” was liable to be removed from the Trade Marks Register.

The Core Dispute: The dispute revolved around two connected questions. First, whether the mark “PROTIFIX” had been genuinely used by the respondent, since non-use for a continuous period of five years and three months makes a registered mark vulnerable to cancellation under Section 47(1)(b) of the Trade Marks Act, 1999. Second, whether the mark was deceptively similar to Danone’s “PROTINEX” in a way that was likely to cause confusion among consumers, thereby violating Sections 29 and 57 of the Act.

Detailed Judicial Reasoning: On the issue of non-use, the court found that the respondents failed to produce credible proof showing actual and genuine use of the mark “PROTIFIX.” The invoices and licenses relied upon did not clearly establish that the respondent was trading under the impugned mark. Rather, the documents suggested that a third party, Jay Bharat Pharmaceuticals, was involved in the sale of the product. The court referred to Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, where it was held that unless non-use is justified by special circumstances, the mark is liable to be removed.

On the issue of inconsistent statements, the court highlighted contradictions in the respondent’s affidavit filed before the Calcutta High Court and the written statement filed before the Delhi High Court. While in one proceeding the respondent claimed personal use through Jay Bharat Pharmaceuticals, in the other proceeding they argued that different defendants independently adopted the mark in good faith. This inconsistency undermined their credibility and showed lack of bona fides.

On the issue of deceptive similarity, the court noted that when the two products—PROTINEX and PROTIFIX—were compared side by side, the similarities were obvious. The essential portion of the petitioner’s mark “PROTI” had been carried over, and the slight variation in the suffix “NEX” and “FIX” was not enough to prevent confusion.

The court relied on several landmark cases. In Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618, the Supreme Court had observed that the test of deceptive similarity must be applied from the perspective of an ordinary purchaser, who does not have the sharp observation of Sherlock Holmes. In Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the court emphasized that resemblance must be judged on overall similarity in sight, sound, and impression, keeping in mind the nature of the goods and the consumers.

The court also referred to Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, where it was held that the presence of similar prefixes or suffixes in the market does not automatically negate confusion unless extensive evidence of common use is shown. In the present case, the respondents failed to produce evidence of widespread use of the prefix “Proti” by other traders.

Similarly, in Fedders Lloyd Corporation Ltd. v. Fedders Corporation, ILR (2005) 1 Delhi 478, the Delhi High Court reiterated that marks must be compared as a whole, not dissected into parts. Applying this principle, Justice Kapur held that the overall impression of “PROTIFIX” was confusingly similar to “PROTINEX.”

The court further noted that the trade dress, including color combination and packaging style, was also deceptively similar, increasing the likelihood of consumer confusion. Since both products were in the same category of goods—nutritional protein supplements—the likelihood of deception was very high.

Final Decision:  The Calcutta High Court concluded that the registration of “PROTIFIX” was wrongful. It held that the mark was not genuinely used by the respondent, and even otherwise, it was deceptively similar to Danone’s well-known mark “PROTINEX.” The adoption of the mark was found to be dishonest and in bad faith.The court directed that the registration of “PROTIFIX” under Trademark No. 3592264 in Class 5 be cancelled and removed from the Register of Trade Marks. The rectification petition was thus allowed in favour of Danone Asia Pacific Holdings Pte. Ltd.

Case Title: Danone Asia Pacific Holdings Pte. Ltd. Vs. Syed Jawed Mohsin & Another

Case Number:IPDATM/5/2024

Date of Order:24 September 2025

Court:High Court at Calcutta

Hon’ble Judge:Justice Ravi Krishan Kapur

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

Nokia Technologies Oy Vs. Asustek Computer Inc.

Judicial Approach to Confidentiality club in Patent Suits

Facts: Nokia Technologies Oy (Plaintiff) initiated three connected suits against Asustek Computer Inc, Acer Inc, and Hisense Group Holdings, alleging infringement of two patents, IN 424507 and IN 338105. The defendants manufacture electronic products and were accused of using Nokia's patented technology without authorization. To substantiate its claims and to comply with court procedure, Nokia also proposed to file comparable licensing agreements signed with third parties, many containing sensitive commercial information.

Procedural Detail: The core dispute in these suits related to the creation and functioning of a “Confidentiality Club” to safeguard the confidential nature of licensing agreements Nokia wished to file. Nokia applied under Rule 11 of the Delhi High Court Rules Governing Patent Suits, 2022, read with Chapter VII, Rule 17 of the Delhi High Court (Original Side) Rules, 2018. The application argued for ten conditions for such a club, but significant opposition developed regarding four key conditions: who should be members (specifically, whether in-house representatives of the defendants could be included), redaction of confidential information before sharing, and rules around disclosure and access.

Dispute: Nokia requested that only external counsels, consultants, and experts (not in-house employees of the defendants) be part of the Confidentiality Club. The rationale was protecting not just Nokia’s confidential information but also those of its licensees who may be commercial competitors to the defendants. Nokia allowed that in-house representatives could participate, but only under a “limited-licensing restriction”: for two years, those who accessed particular agreements could not negotiate with the relevant third party unless that party specifically consented. This mirrored certain international practices, especially under the Unified Patent Court, Munich.

Defendants objected, stating that such restrictions were arbitrary and omitted under both Indian procedural rules and in past practice. It was argued that restricting key personnel risks prejudice and competitive disadvantage, particularly when the pool of employees dealing with licensing was small. Defendants also contended that the order cited by Nokia was a “consent order” and did not set binding precedent. They further argued that confidentiality could be maintained without such limitations and pointed out that in similar past cases, defendants themselves chose their in-house representatives.

Detailed Reasoning: The court noticed that the inclusion of defendants’ in-house representatives within a Confidentiality Club has been settled by previous judgments (InterDigital vs. Xiaomi, 2020:DHC:3598; InterDigital VC Holdings Inc v. Oppo Mobile, 2024:DHC:1338; Nokia Technology Oy v. Lenovo Group Ltd, order dated 24.02.2020). Courts routinely permit in-house representatives as members in SEP (Standard Essential Patent) suits when confidentiality concerns are properly safeguarded. The judge noted that parties were already following similar practices in parallel proceedings abroad, and trying to impose additional restrictions in India, inconsistent with positions taken elsewhere, was not justified.

On the proposal to limit licensing activities (the “two-year embargo”), the court held that such restriction was neither practical nor warranted. Instead, the court imposed an obligation for full and prior disclosure: if an in-house representative was privy to a licensing agreement in the capacity of the Confidentiality Club, they must disclose this to any third-party licensee before negotiating. Thereafter, negotiation is possible only at the licensee’s discretion. This balanced transparency and protected licensees without inactivity or prejudice to the defendants.

Regarding the redaction of confidential material, the court followed the precedent from InterDigital v. Xiaomi and Koninklijke Philips v. Vivo Mobile (2020:DHC:3598; 2023 order). Redaction is permitted only for genuinely confidential details agreed to remain undisclosed between Nokia and its licensees, and only if such information is not relevant to determining royalty rates (FRAND terms—Fair, Reasonable & Non-Discriminatory). Non-redacted versions of documents should be available for inspection by the counsels within the Confidentiality Club, but not by in-house representatives, unless directed otherwise by the court.

Decision: The court issued clear directions: Confidentiality Club is to have the same in-house representatives as those already members in Munich proceedings, ensuring consistency and avoiding unnecessary dissemination of confidential data.  The proposed two-year licensing restriction on in-house representatives is not accepted; rather, full and prior disclosure obligations are imposed. Redaction of information is permitted, but only for data confidential by agreement and irrelevant to FRAND assessment, with inspection rights limited for in-house representatives. Nokia must disclose all comparable licence agreements without discretion, ensuring fairness in evaluating licensing terms (FRAND compliance). Other proposed conditions not objected to (such as process for sealed covers, affidavits, experts, etc.) were accepted. The applications are disposed with these terms, and the connected matters are listed for further court orders.

Case Title: Nokia Technologies Oy Vs. Asustek Computer Inc & Ors.

Order Date: 22nd September, 2025

Case Numbers: CSCOMM 643/2025, 

Neutral Citation: 2025:DHC:8511

Name of Court: High Court of Delhi, New Delhi

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

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

Pankaj Plastic Industries Private Limited Vs Anita Anu

Case Title

Pankaj Plastic Industries Private Limited Vs Anita Anu

Case Number

APDT/16/2025 with IP-COM/28/2024 and IA NO: GA-COM/1/2025

Neutral Citation

2025:CALHC:APDT:16 (As per format of neutral citations, reflecting the year, Court, and appeal number)

Court

High Court at Calcutta, Commercial Appellate Division, Original Side

Bench

Hon’ble Justice Arijit Banerjee

Hon’ble Justice Rai Chattopadhyay

Date of Decision

24 September 2025

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Facts

Pankaj Plastic Industries Private Limited, the appellant, is a company engaged in the manufacture and sale of plastic pipes, machines, and related tools. Over the years, it has registered and used several trademarks such as “Pankaj Flex,” “Pankaj Flexy,” and “Pankaj.” The company also secured copyright registration for its artistic packaging and trade dress.

The respondent, Anita Anu, started marketing and selling similar products under the trademark “Poly-Punkaj.” According to the appellant, this mark was deceptively similar to their registered marks and likely to cause confusion in the minds of consumers. The appellant also alleged that the respondent copied the artistic trade dress, including color combinations and packaging.

The respondent’s mark “Poly-Punkaj” was registered in December 2023. Soon after, the appellant filed for rectification in January 2024 to remove the respondent’s mark from the Trade Marks Register.

The appellant filed a commercial suit in September 2024 before the Calcutta High Court, seeking injunction against the respondent for infringement and passing off. Along with the suit, the appellant requested the court to dispense with pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, arguing that urgent relief was necessary and mediation would be futile.

Initially, the Single Judge granted this dispensation, accepted the suit, and even passed an ex parte ad interim injunction in October 2024 restraining the respondent from using the mark “Poly-Punkaj.” However, the respondent later filed an application seeking revocation of the leave granted under Section 12A. The Single Judge allowed this plea, dismissed the suit, and vacated the injunction in May 2025.

The present appeal arose from that dismissal.

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Procedural Background

1. In September 2024, the Single Judge granted leave under Clause 12 of the Letters Patent, Order II Rule 2 CPC, and dispensed with pre-suit mediation under Section 12A of the Commercial Courts Act.

2. In October 2024, an ex parte ad interim injunction was granted restraining the respondent from using the impugned mark “Poly-Punkaj.”

3. In May 2025, on an application by the respondent, the Single Judge revoked the earlier leave under Section 12A, dismissed the suit, and vacated the injunction.

4. The appellant challenged this May 2025 order before the Division Bench.

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The Core Dispute

The central dispute was not about trademark infringement itself, but about whether the appellant was entitled to bypass the mandatory requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

The appellant argued that because intellectual property matters involve urgent interim relief, mediation should not be required. The respondent, however, argued that since the appellant had knowledge of the alleged infringement as early as January 2024 but filed the suit only in September 2024, there was no urgency, and thus Section 12A could not be dispensed with.

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Detailed Reasoning and Judicial Discussion

Appellant’s Arguments

The appellant, through Senior Counsel Debnath Ghosh, argued that:

Section 12A of the Commercial Courts Act has an exception where urgent interim relief is required. Intellectual property cases, by their very nature, involve urgent intervention since even one infringing act causes irreparable harm. Reliance was placed on Kohinoor Seed Fields India Pvt. Ltd. v. Veda Seed Sciences Pvt. Ltd., MANU/TL/1081/2024 (DB).

Every act of infringement or passing off is a continuing wrong and gives rise to a fresh cause of action, as recognized by the Supreme Court in Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co., (1997) 1 SCC 99.

Delay in filing the suit should not automatically mean that urgency is absent. Courts in several cases, such as Chemco Plastic Industries Pvt. Ltd. v. Chemco Plast, 2024 SCC OnLine Bom 1607, granted urgent interim relief even after several years of delay.

Courts must take a holistic approach rather than looking only at time gaps, as emphasized in Unique Entrepreneurs and Finance Ltd. v. Really Agritech Pvt. Ltd., 2025 SCC OnLine Cal 2426.

The appellant’s perception of urgency should be respected, and the court should not second-guess it.

Respondent’s Arguments

The respondent, represented by Advocate Soumya Ray Chowdhury, argued that:

Section 12A is mandatory, as held by the Supreme Court in Patil Automation Pvt. Ltd. v. Rakheja Engineers Pvt. Ltd., (2022) 10 SCC 1.

The appellant admittedly became aware of the respondent’s registration in January 2024 but filed the suit only in September 2024, a gap of nine months. This delay itself showed that there was no real urgency.

In SRMB Srijan Pvt. Ltd. v. B.S. Sponge Pvt. Ltd., MANU/WB/1666/2023, the Calcutta High Court had refused dispensation of Section 12A where plaintiffs delayed in filing. That decision was later upheld by a Division Bench.

The appellant’s argument that mediation would be futile cannot justify bypassing Section 12A. Otherwise, every plaintiff could escape mediation by merely alleging futility.

Courts cannot go beyond the pleadings. The plaint did not clearly explain why urgent relief was required after such delay.

Division Bench’s Analysis

The Division Bench carefully analyzed both positions. It emphasized that:

Section 12A of the Commercial Courts Act is a statutory mandate, and its purpose is to encourage mediation and reduce unnecessary litigation burdens.

Exceptions for urgent relief must be applied strictly. Otherwise, the provision would become meaningless. Reliance was placed on Union of India v. Deoki Nandan Aggarwal, 1992 Supp (1) SCC 323 for the principle that courts cannot interpret statutes in a way that makes provisions nugatory.

The Supreme Court in Yamini Manohar v. T.K.D. Keerthi, (2024) 5 SCC 815 had warned that urgency cannot be artificially created to bypass Section 12A.

While it is true that infringement gives recurring cause of action, this cannot automatically mean that urgency exists. Plaintiffs must act with diligence.

In this case, the appellant waited nine months after acquiring knowledge. The plaint gave no proper explanation for this delay, except claiming that mediation would be an idle formality. The court held that this argument cannot be accepted because it would allow every plaintiff to sidestep Section 12A.

The court observed that the appellant’s conduct showed no real urgency, and thus the Single Judge was correct in revoking the earlier dispensation.

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Final Decision

The Division Bench dismissed the appeal and upheld the order of the Single Judge. It held that:

1. The dispensation under Section 12A was wrongly granted and rightly revoked.

2. The suit stood dismissed, not on merits, but only because of non-compliance with Section 12A of the Commercial Courts Act, 2015.

3. The appellant is free to file a fresh suit after following the statutory requirement of pre-institution mediation.

No order as to costs was passed. The court also clarified that the appellant may apply for refund of court fees if it decides to file a fresh suit.

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Suggested Titles for Publication

1. Pre-Suit Mediation under Section 12A: Calcutta High Court Reinforces the Mandate in Pankaj Plastic v. Anita Anu

2. Trademark Disputes and Section 12A: When Delay Defeats Urgency

3. Urgency and Mediation: A Study of Calcutta High Court’s Ruling in Pankaj Plastic v. Anita Anu

4. Dispensation of Section 12A in IP Disputes: Limits and Judicial Scrutiny

5. Balancing Urgency with Statutory Mandate: Lessons from Pankaj Plastic Industries v. Anita Anu

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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

Image Developer and Another Vs. Kamla Landmarc Real Estate Holding Private Limited

Mandatory Pre-Institution Mediation in Commercial Suits

Facts: This case centers on a dispute over a real estate development project in Mumbai involving multiple parties, including developers, individuals, and housing societies. The story begins with a development agreement signed on May 7, 1995, between the Gorai Road Ashtavinayak Nagar Co-op. Hsg. Societies Union Ltd., which is a federation of housing societies, and Sailee Developers Pvt. Ltd. The agreement was for redeveloping a property, where Sailee Developers was supposed to provide new flats to the existing members of the societies and use the remaining development potential for its own profit. On June 24, 1997, a few more societies joined the federation, meaning their members also became entitled to flats under the agreement. Years later, on June 29, 2006, Segment Developers Pvt. Ltd., along with Sailee Developers and some other people, formed a partnership firm called Image Developer to handle the development rights of this property. Then, on March 15, 2010, a deed of assignment was executed, transferring these development rights from Image Developer and Segment Developers to Kamla Landmarc Real Estate Holding Private Limited and four individuals: Jitendra Ramesh Jain, Jinendra Ramesh Jain, Dilipkumar Jain, and Vikaskumar C. Jain. The deal was for a total consideration of Rs. 44.87 crores, to be paid in installments, along with other obligations like allotting flats to the society members. Everything seemed fine until December 5, 2023, when Kamla Landmarc and the four individuals assigned their rights over the property to Moral Mercantile LLP, without fully meeting their obligations under the 2010 assignment, such as paying the full amount or allotting the flats. The plaintiffs, Image Developer and Segment Developers, say they first learned about this new assignment in January 2024 when they visited the site and saw Moral Mercantile's name displayed there. They then got a copy of the 2023 agreement from the sub-registrar's office. Claiming this was a breach, the plaintiffs sent a termination notice on January 19, 2024, to Kamla Landmarc and the individuals, ending the 2010 assignment due to non-payment and failure to allot flats. The recipients replied on March 1, 2024, disputing the termination. Worried that further steps might create third-party rights, the plaintiffs sent notices on October 21, 2024, under the Maharashtra Co-operative Societies Act and the Maharashtra Housing and Area Development Act to the federation and the Maharashtra Housing & Area Development Authority, asking them not to grant any permissions for development by the other parties. The plaintiffs claim the defendants owe them Rs. 7.21 crores plus interest, totaling over Rs. 28 crores as of October 2024. They say the 2023 assignment is illegal and void because it violated the terms of the 2010 deal, and Moral Mercantile knew about the breaches. The plaintiffs also argue that the defendants are trying to raise finance or assign rights further, which could complicate things more. On the other side, Kamla Landmarc and the two Jains who filed the application say the suit is invalid because the plaintiffs did not follow the required pre-suit mediation process and that it's also time-barred since the last payment was due in 2017. They argue there was no real urgency for skipping mediation, pointing to the long delays in acting.

Procedural Details: The main suit was filed on November 30, 2024, in the Bombay High Court's commercial division as a commercial suit because it involves a commercial dispute over development rights and agreements. Along with the suit, the plaintiffs filed an interim application seeking temporary relief to stop the defendants from dealing with the property or creating third-party rights. In response, on an unspecified date but before the hearing, Kamla Landmarc Real Estate Holding Private Limited, Jitendra Ramesh Jain, and Jinendra Ramesh Jain filed their own interim application asking the court to reject the entire plaint under the rules of civil procedure, claiming it violated the law on pre-suit mediation and was filed too late. 

The plaintiffs' side argued there was urgency due to the risk of third-party rights being created. The defendants' side said there was no such urgency, given the timelines. The matter was heard through video conferencing, as is common. The judge reserved the order on September 16, 2025, after listening to everyone, and pronounced it on September 19, 2025. No full trial with evidence or witnesses happened yet; this was just deciding the preliminary application to reject the suit. The court did not decide on the merits of the main claims or the limitation issue, focusing only on the mediation requirement.

Dispute: The core fight here was not about the main claims of breach of contract or validity of the termination but about whether the suit could even proceed. The defendants argued that the plaint should be thrown out right away because the plaintiffs skipped a mandatory step: pre-institution mediation under the Commercial Courts Act. This law requires parties in commercial disputes to try mediation before filing a suit, unless there's a need for urgent temporary relief. The plaintiffs said their case fit the exception because they feared the defendants would create third-party rights, making it urgent to get a court order stopping that. The defendants countered that there was no real urgency, pointing to the 10-month delay from discovering the issue in January 2024 to filing in November 2024, and then not even pushing for immediate relief after filing. They said the plaintiffs' claims of urgency were just empty words without facts to back them up. In the background, there was also a claim that the suit was barred by time limits, but the court did not rule on that since it rejected the suit on the mediation ground.

Detailed Reasoning: The judge started by explaining the purpose of Section 12A of the Commercial Courts Act, 2015. This section says that in commercial suits, you cannot file unless you first try mediation, but there's an exception if the suit involves urgent interim relief. The mediation must be done within three months, extendable by two more with agreement, and this time does not count for limitation periods. The idea is to settle disputes quickly without court time, especially in business matters where keeping relationships intact matters. The judge said compliance is mandatory, and the exception for urgency must be genuine. To check if the exception applies, the court looks at the plaintiffs' belief in needing urgent relief, but it must be based on solid facts, not just words. The judge looked at the plaint's paragraphs where the plaintiffs tried to justify skipping mediation. In paragraph 36, they talked about discovering the issue in January 2024 and said the suit was within time limits, but the judge said this was about limitation, not urgency for mediation. In paragraphs 39 and 40, they said defendants might create third-party rights, so urgent relief was needed, but the judge called these bald statements without details or proof. Plus, the termination notice already mentioned the 2023 assignment, so they knew earlier. The judge pointed out the 10-month delay from January to filing in November 2024, and then not moving the court urgently until January 2025, showing no real rush. Even after filing, they did not seek ex-parte relief. The judge said this conduct shows the urgency claim was not bona fide. On the plaintiffs' alternative argument that it's a continuous breach like an unpaid seller's charge under Section 55 of the Transfer of Property Act, 1882, the judge said that's for merits or limitation, not for skipping mediation. Such continuous cause arguments work in intellectual property cases, but not here. The judge discussed several judgments to support this. In Patil Automation Private Limited vs. Rakheja Engineers Private Limited, (2022) 10 SCC 1, the Supreme Court said Section 12A is mandatory, and suits without mediation must be rejected unless urgency is shown. The court stressed looking at the plaint to see if urgency is contemplated. In Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815, the Supreme Court explained that urgency means the relief cannot wait for mediation without causing irreparable harm. It's the plaintiff's view, but the court checks if it's genuine based on facts, cause of action, and conduct. Mere words are not enough. In Exclusive Capital Limited vs. Clover Media Private Limited & Ors., 2025 SCC OnLine Del 5221, the Delhi High Court gave a detailed analysis, saying "contemplates urgent interim relief" means the plaintiff must show real exigency through specific facts. The court must scrutinize to prevent abuse, like adding fake urgency to skip mediation. Urgency is not just any interim relief but something immediate and irreparable. The judge quoted long parts from this case, agreeing that courts act as gatekeepers to check if the urgency ticket is valid. Other cases like Ekta Housing Private Limited vs. Shraddha Shelters Private Limited, 2024 SCC OnLine Bom 3538, and Future Corporate Resources Private Limited vs. Edelweiss Special Opportunities Fund, 2022 SCC OnLine Bom 3744, were cited for similar points on strict compliance. The judge said these apply here, as the plaintiffs' pleadings lack foundation for urgency. The plaintiffs' reliance on Exclusive Capital actually supports the defendants, as it stresses scrutiny. The judge did not need to decide limitation since the suit was rejected on mediation grounds.

Decision: The court allowed the defendants' application and rejected the plaint under Order VII Rule 11(d) of the Code of Civil Procedure, 1908, because the plaintiffs did not comply with the mandatory pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, and failed to show genuine urgency for the exception. As a result, the main suit and the plaintiffs' interim application were disposed of without deciding on the merits or the limitation issue. The plaintiffs can file a fresh suit after mediation, where other arguments can be raised.

Case Title: Image Developer and Another Vs. Kamla Landmarc Real Estate Holding Private Limited and Others 

Order date: September 19, 2025 

Case Number: Commercial Suit (L) No.39332 of 2024 

Neutral Citation: 2025:BHC-OS:15574 

Name of Court: High Court of Judicature at Bombay Name of Hon'ble Judge: Jitendra Jain, 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

SML Limited Vs. Safex Chemicals (India) Ltd

Allied Goods and Trade Mark Protection

Facts: This case involves a company called SML Limited, which used to be known as Sulphur Mills Limited, claiming that another company, Safex Chemicals (India) Ltd, was wrongly using a trade name very similar to its own. SML Limited makes products like fertilizers and plant nutrients, and it registered the name "TRACKON" for these items back in 2019, after applying in 2018. It also registered "TRACKON GOLD" in 2021. The company changed its name to SML Limited in 2022 and updated the registrations to show this change. SML Limited says it started using "TRACKON" in 2018 and has been selling products under this name ever since, building up sales and reputation over the years. In late 2024, SML Limited found out that Safex Chemicals had applied to register "TRACKON" for pesticides and insecticides, claiming they started using it in 2020. SML Limited opposed that registration right away. When they checked the market again in early 2025, they found Safex Chemicals selling an insecticide under "TRACKON". 

SML Limited bought a sample of it in April 2025 from a shop in Haryana. They noticed that this product was not even listed on Safex Chemicals' own website but was on third-party sites like IndiaMart. SML Limited pointed out that this was not the first time they had issues with Safex Chemicals, as there was an earlier case about another name "PEARL" where Safex Chemicals agreed to stop using it. SML Limited believes Safex Chemicals is a repeat offender, having faced court orders in other cases too. On the other side, Safex Chemicals says it has been around since 1991, selling over 120 agrochemical products. It claims it came up with "TRACKON" in 2020 honestly, after checking the market, and has been using it ever since without any problems. It argues its products are different—pesticides, not fertilizers—and the packaging, colors, and prices are not the same, so no one would mix them up. Safex Chemicals also questions SML Limited's old invoices, saying they look fake because they show the new company name on papers from before the name change. SML Limited explained that this happened because of their computer system, which updates old invoices with the new template when reprinted, and they provided proof like GST numbers and ledgers to back this up. Safex Chemicals also says SML Limited knew about them since 2024 but waited too long to sue, and that SML Limited once told the trade mark office that a similar name "TRICON" was not confusing, so they should not complain now.

Procedural Details: The case started when SML Limited filed a lawsuit in the Bombay High Court in April 2025, asking for a court order to stop Safex Chemicals from using "TRACKON". This was under the court's commercial division for intellectual property matters. Along with the main suit, SML Limited filed an interim application, which is a request for a temporary stop order while the full case is decided. The court heard arguments from both sides through video calls. Lawyers for SML Limited showed registration papers, sales records, and proof of buying the rival product. Safex Chemicals filed a reply in May 2025, denying everything and providing its own sales figures from 2022 onward. Both sides exchanged more papers, like rejoinders, to respond to each other's points. The judge reserved the decision on August 12, 2025, after hearing everyone, and gave the final order on September 22, 2025. No trial with witnesses has happened yet; this is just about the temporary relief.

Dispute:The main fight is over whether Safex Chemicals is breaking the law by using "TRACKON" for its pesticides when SML Limited already has it registered for fertilizers. SML Limited says this is infringement because the names are exactly the same, and even though the products are in different official categories (Class 1 for fertilizers and Class 5 for pesticides), they are related enough in farming that people might think they come from the same company. This could confuse farmers who buy both kinds of products from the same shops. SML Limited also says Safex Chemicals is trying to pass off its goods as theirs to cash in on their reputation. Safex Chemicals fights back by saying the products are totally different—one helps plants grow, the other kills bugs—so no confusion. They point to different packaging, like colors and shapes, and much higher prices for their item. They accuse SML Limited of hiding facts, like what they said about "TRICON" before, and of delaying the lawsuit. They claim they honestly came up with the name and have been using it for years without issues. The court had to decide if SML Limited proved enough at this early stage to get a temporary ban on Safex Chemicals using the name.

Detailed Reasoning: The judge started by agreeing that the names "TRACKON" and "TRACKON GOLD" are exactly the same as what Safex Chemicals is using, so they look, sound, and mean the same thing. SML Limited registered first, in 2019 and 2021, while Safex Chemicals applied later in 2023, claiming use from 2020. The law here is the Trade Marks Act, 1999. Section 29 says a registered name is infringed if someone else uses the same or similar name for similar or related goods, and it might confuse people or make them think the products are connected. 

The judge explained that even if goods are in different classes, like fertilizers in Class 1 and pesticides in Class 5, the classes are just for office work and not the final word. What matters is if the products are allied or cognate, meaning related or from the same family. To check this, the court used tests from old cases. In Corn Products Refining Co. vs. Shangrila Food Products Ltd., AIR 1960 SC 142, the Supreme Court said cognate goods have a trade connection, like glucose and biscuits because both are food-related. In Allied Auto Accessories Ltd. vs. Allied Motors Pvt. Ltd., 2002 SCC OnLine Bom 1138, a Bombay High Court judge said classification lists are just guides, not rules, and you look at real-world similarities. The judge also used factors from British Sugar Plc vs. James Robertson & Sons Ltd., [1996] R.P.C. 281, an English case often followed in India: look at how the products are used, who buys them, their physical nature, sales channels, where they are placed in stores, and if they compete. 

In Indchemie Health Specialities (P) Ltd vs. Intas Pharmaceuticals Ltd., 2017 SCC OnLine Bom 10127, a Bombay High Court division bench said you check nature, uses, and trade channels, and all three don't have to match perfectly. Applying these, the judge found fertilizers and pesticides are both agrochemicals for better crops—one adds nutrients, the other fights pests—so they are complementary. Farmers buy both from the same shops, so same users and channels. Even though physically different, they are related enough for infringement under Section 29(2). On confusion, the judge said since the names are identical and SML Limited has sales over Rs. 6 crore from 2018-2025, people might associate Safex Chemicals' product with SML Limited, especially farmers who aren't experts. This satisfies the "likelihood of association" in the law. The judge discussed Ruston & Hornsby Ltd. vs. Zamindara Engineering Co., (1969) 2 SCC 727, where the Supreme Court said infringement is about the mark itself, not packaging, and injunction should follow if proved. On defenses, Safex Chemicals said SML Limited's old invoices are fake because they show the new name. But SML Limited explained it's due to software that updates templates, and proved it with GST numbers, ledgers, and original filings. The judge said this is enough for now; full proof comes later. 

On prior use under Section 34, Safex Chemicals claimed 2020, but SML Limited started in 2018 and registered in 2019, so no defense. On hiding facts, SML Limited once said "TRICON" wasn't similar, but that's different from "TRACKON", so no suppression. On delay, the judge cited Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia, (2004) 3 SCC 90, where the Supreme Court said delay alone isn't enough to deny injunction in infringement, especially if fraudulent. Here, SML Limited acted in 2025 after finding the product, and no positive encouragement from them. In Jagdish Gopal Kamath vs. Lime & Chilli Hospitality Services, 2015 SCC OnLine Bom 531, the Bombay High Court said delay without acquiescence isn't a defense. On honest concurrent use under Section 12, the judge said it's for registration, not a defense in court, and anyway, uses aren't concurrent since SML Limited was first. The judge looked at Safex Chemicals' cases like Mandali Ranganna vs. T. Ramachandra, (2008) 11 SCC 1, on conduct, but said SML Limited's conduct is fine. S. P. Chengalvaraya Naidu vs. Jagannath, (1994) 1 SCC 1, and Chandra Shashi vs. Anil Kumar Verma, (1995) 1 SCC 421, on fraud, but no fraud here. Rubaljit Singh vs. M/s. Kanz Overseas, CS(OS) No. 213 of 2009 dated 20.11.2009 (Delhi High Court), on fabricated docs, but not here. Phonepe Pvt Ltd vs. Resilient Innovations Pvt. Ltd., 2023 SCC OnLine Bom 764, on changing stands, but marks here are identical, no shift. Unichem Laboratories Ltd vs. Ipca Laboratories, 2011 SCC OnLine Bom 2114, similar, not applicable. Wander Ltd vs. Antox India P. Ltd., 1990 (Supp) SCC 727, on tests for injunction, applied here. Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Limited, (2018) 9 SCC 183, on different goods, but here goods are related. AMPM Designs vs. Intellectual Property Appellate Board, 2021 SCC OnLine Bom 14029, on different goods with prior use, but no prior use here. Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, on deceptive similarity in passing off, noted but infringement is separate. Star Bazaar Pvt. Ltd. vs. Trent Ltd., 2010 SCC OnLine Del 4764, on concurrent use, but not here. For passing off, the judge cited Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories, 1964 SCC OnLine SC 14, saying passing off needs goodwill, misrepresentation, damage, and is different from infringement—packaging matters more. Here, different packaging means no misrepresentation, so no passing off.

Decision: The court granted a temporary injunction stopping Safex Chemicals from using "TRACKON" because it infringes SML Limited's registered mark. But it did not grant one for passing off, as the different packaging means no one is likely being tricked into thinking the products are the same. The case will go to full trial later.

Case Title: SML Limited Vs. Safex Chemicals (India) Ltd

Order date: September 22, 2025

Case Number: Commercial IP Suit No. 432 of 2025

Neutral Citation: 2025:BHC-OS:16030

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

Shoranur Metal Industries LLP & Another Vs. The Metal Industries Limited

Unpacking Descriptive Trade Marks

Facts: The story of this case begins with a company called The Metal Industries Limited, which is owned by the government of Kerala. This company has been around for about 94 years, starting way back, and its main office is in Shoranur. They make things like tools for farming, such as sickles, spades, shovels, pickaxes, axes, saws, cutleries, and mammatties. Their products are sold under the brand name Tusker, which comes with a special emblem. Over the years, this company built a good name for itself, and people know it well, especially in the area. They even registered their company name, Metal Industries, as a trade mark under the law that protects such names, specifically Section 27 of the Trade Marks Act, 1999. Because it's based in Shoranur, folks often call it Shoranur Metal Industries informally.

Now, enter the other side: Shoranur Metal Industries LLP, a newer firm started in 2019, also in the same area, just about three kilometers away. This firm is run by Krishnakumar as the main partner, and they too make iron and steel tools for farming, similar to what the older company does. Their products go by the brand name K.Kumar Tools. In 2020, the older company noticed that the new firm's name was causing mix-ups among people. Customers and traders started thinking the new firm was part of or the same as the old one because both used Metal Industries in their names. The old company sent a legal notice asking the new firm to stop using that name, but the new firm replied saying they weren't doing anything wrong. That's when the old company decided to go to court, filing a lawsuit asking for a court order to stop the new firm from using Metal Industries in their name, to remove it from all their papers and ads, and even for some money as damages, about Rs.1,00,000. They said this was breaking the rules under Sections 134 and 135 of the Trade Marks Act.

The new firm fought back, saying their business wasn't exactly the same. They claimed their tools are made specially for customers' needs, unlike the old company's standard products. They argued that words like Metal Industries are just common words describing what they do, and lots of companies across India use similar names. So, no one can own those words exclusively. They also said the old company isn't really known as Shoranur Metal Industries officially, and there's no real confusion or harm.

Procedural Details: The lawsuit started as Original Suit No.1 of 2023 in the District Court at Palakkad. The old company was the plaintiff, and the new firm and its partner were the defendants. The court looked at the claims and set up six main questions to decide, like whether there was copying of the name, if it caused confusion, and if the old company deserved protection.

Both sides presented evidence. The old company had a witness (PW1) and showed documents like their registration papers (Exts.A1 to A15). The new firm had their own witness (DW1) and documents (Exts.B1 to B4). After hearing everything, the District Court sided with the old company. It gave a permanent order stopping the new firm from using Metal Industries in their business name and ordered them to remove it from all communications, ads, newspapers, social media, and so on. The new firm wasn't happy with this and appealed to the High Court of Kerala.

The appeal was filed as Regular First Appeal No.287 of 2024. The High Court heard arguments from both lawyers: Harikumar G. for the new firm (appellants) and Saji Varghese T.G. for the old company (respondents). The case was heard on August 26, 2025, and the judgment came on September 18, 2025. The judge looked at three main points: Did the new firm copy the registered name? Could they use a defense under the law? And was there something called passing off, where one business pretends to be another?

Dispute: The main fight was about whether the new firm could use the name Shoranur Metal Industries when the old company had registered Metal Industries as their trade mark. The old company said this was straight-up copying, or infringement, because their name was protected by law, and the new name was too similar, causing people to get confused and think the new firm was connected to them. They wanted the court to stop it and make the new firm change their name.

The new firm said no, because words like metal and industries are just everyday words that describe the kind of business—they're generic or descriptive. Under the law, you can't own such common words exclusively unless they've become super special over time, like gaining a second meaning that points only to your business. They also said there's no real harm or confusion since their actual product brands are different: Tusker for the old company and K.Kumar Tools for them. Plus, the name Metal Industries isn't even on the products themselves.

Another part of the dispute was about passing off. Even if not directly copying a registered mark, if the new firm was tricking people into thinking their stuff came from the old company, that could be stopped. But the new firm said there's no proof of any damage or real trickery.

Detailed Reasoning: The judge started by explaining what the law says about trade marks. A trade mark is like a special sign or name that tells people where a product comes from. It's protected so no one else can use something too similar and confuse customers. The old company had registered Metal Industries, so under Section 29 of the Trade Marks Act, 1999, if someone uses a similar name for similar goods, that's infringement, and the owner can stop it.

But there's a catch in Section 30(2)(a), which says a registered mark isn't infringed if the use just describes the kind, quality, or other features of the goods, like their type or where they're from. The new firm leaned on this, saying metal and industries are just describing a business that deals with metal products. The judge agreed, calling these words generic—common terms anyone can use—or descriptive, meaning they explain what the business does.

To back this up, the judge looked at several past court decisions. First, there's Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and others, decided by the Supreme Court in 2006, reported as (2006) 8 SCC 726. In that case, the court explained that a trade mark connects goods to their maker and builds trust in quality. If registered, others can't use it without permission, or it's infringement. But the court also said usually there's only one owner for a mark, and if two people use it, it can confuse people and even be like cheating the public. However, in our case, the judge noted that the old company didn't show their name had become uniquely tied to them beyond the common words.

Next, the judge discussed a Delhi High Court case: Pornsricharoenpun Co. Ltd. and Ors. v. L'Oreal India Private Limited and Ors., from 2022, with the citation MANU/DE/4515/2022. Here, the fight was over Low Absorb for hair products. The court said courts can check if a registered mark is valid even during early stages of a case, based on what the other side says in their defense. Some marks can't be distinctive, like common words. A descriptive mark—one that just describes the product—needs to gain a special second meaning to be protected. If it's just English words combined, like Low Absorb Technology, the owner has to live with some confusion risk. No one can own common words exclusively. The judge in our case used this to say the new firm could challenge the registration, and since Metal Industries is descriptive, like saying what the business is about, it doesn't give exclusive rights. The Delhi court also said this defense works under Sections 30 and 35 of the Trade Marks Act, even against a registered mark.

In the same Pornsricharoenpun case, the court looked at Hair Spa. The appellant used Hair Spa for cosmetics, but the defendants were using it too. The court said Hair Spa isn't made-up; it's just hair and spa put together, describing hair treatment. It's generic, lacking the uniqueness needed for protection. In paragraph 21, the court explained that such common expressions describe the product and can't identify one source only. Applying this, our judge said Metal Industries is similar—just common words for a metal business.

Another Supreme Court case mentioned was Skyline Education Institute (India) Private Ltd. v. S.L. Vaswani and Another, from 2010, reported as AIR 2010 SC 3221. There, skyline was used for schools. The court said skyline is a generic word in English and trade, used by many companies. In paragraph 18, it noted over 100 companies in India and others abroad use it, so no one can claim it exclusively. Our judge used this to show common words like metal industries are shared.

Then there's Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd. & Ors., a 2023 Delhi High Court case, 2023 SCC OnLine Delhi 7841. The plaintiff registered Institute of Directors for conferences. Defendants used Directors Institute. In paragraph 32, the court said registering common English words like that means accepting others might use similar ones. No monopoly on ordinary combinations. This supported the idea that Metal Industries can't block others.

Yatra Online Limited v. Mach Conferences and Events Limited, another 2025 Delhi case, 2025 SCC OnLine Delhi 5610, dealt with Yatra, meaning travel in Hindi. The plaintiff claimed it as dominant in their mark, but the court said generic descriptive words like that never gain distinctiveness on their own. In paragraph 53, it said words from everyday language can't be owned. Yatra is common, so no monopoly. Our judge applied this to say Metal Industries is descriptive and common.

The old company cited T.V. Venugopal v. Ushodaya Enterprises Ltd. and another, a 2011 Supreme Court case, (2011) 4 SCC 85. There, Eenadu, a descriptive word, gained a second meaning over time, becoming tied to the company's newspaper and TV in Andhra Pradesh. In paragraph 19, the court protected it because of that special reputation. But in our case, the judge said the old company didn't prove Metal Industries had such a second meaning—it's just common words without that extra layer.

On passing off, which is when someone misleads people into thinking their goods are someone else's, even without registration. The plaint didn't say passing off directly, but had hints like confusion and intent to trick. The judge cited Anwar Mohammad Khan v. Sri. Taj Mohammad Khan, 2006 (3) AWC 2166, where the court said if the core claims show passing off elements, the words don't matter. Elements are: goodwill, misrepresentation, and damage.

The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, listed factors for deceptive similarity, like mark nature, resemblance, goods type, customer class. In Mahavir Rice, Pulse Mills Bareja v. Jaikrishnan Trading Company, Miroli and Others, 2009 (4) KLT 593, paragraph 12, the court said passing off needs proof of reputation, deception likelihood, and damage. Also cited Laxmikant V. Patel v. Chetanbhai Shah (2002) and Heinz Italia v. Dabur India Ltd. (2007).

Our judge said for passing off, you need harm or likely harm. In Mariyas Soaps and Chemicals v. M/s Wipro Enterprises Limited, 2023 (4) KHC 473, even with similar marks, no injunction without damage proof. In paragraph 18, it stressed the "classical trinity": goodwill, misrepresentation, damage.

In Delmon Diagnostics and Research Center v. Doctors Diagnostics and Research Center, 2015 (3) KHC 14, paragraph 6, goodwill, misrepresentation leading to belief goods are plaintiff's, and damage. In Shakti Ceramics v. Supreme Ceramics, 2011 KHC 2924, deceptive similarity alone isn't enough; need reputation, goodwill, and loss.

The old company cited Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1, where interim stop was given for Glucose-D similar to Glucon-D, but our judge noted it was temporary, not final.

Overall, the judge said no proof of damage here. Brands are different (Tusker vs. K.Kumar Tools), name not on products, no second meaning for Metal Industries. So no infringement or passing off.

Decision: The High Court allowed the appeal, canceling the District Court's orders. No injunction against the new firm; they can keep using Shoranur Metal Industries. The original suit was dismissed. Both sides pay their own costs.

Case Title : Shoranur Metal Industries LLP & Another Vs. The Metal Industries Limited & Another

Order Date: 18th September 2025

Case Number: RFA No. 287 of 2024

Neutral Citation: 2025:KER:69913

Name of Court: High Court of Kerala at Ernakulam

Name of Hon'ble Judge: The Honourable Mr. Justice C. Pratheep Kumar

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

Kaira District Cooperative Milk Producers Union Ltd. Vs. The Registrar of Trade Marks

Actual Service of Notice in Trademark Oppositions

Facts of the Case: The dispute arose when the appellant, Kaira District Cooperative Milk Producers Union Ltd., popularly known for its brand association with dairy products, filed an opposition against the trademark application of Respondent No. 2. The Respondent No. 2 had applied for registration of the mark "DOODH" under Class 30. The appellant filed Opposition No. 1298974 challenging this application on various grounds, asserting that the registration of such a mark would adversely affect its business interests and was liable to be refused under the Trade Marks Act, 1999.

The Registrar of Trade Marks, however, by order dated 24 April 2025, dismissed the opposition on the ground that the appellant had failed to file its evidence affidavit in support of the opposition within the stipulated period of time. This dismissal prompted the appellant to file the present appeal before the High Court of Delhi challenging the Registrar’s decision.

The central factual controversy revolved around whether the appellant had indeed filed the affidavit of evidence within the statutory period prescribed under Rule 45(1) of the Trade Marks Rules, 2017, which allows a period of two months from the date of service of notice to submit evidence.

Procedural Background: The opposition was filed on 10 April 2024. Subsequently, a notice dated 11 September 2024 was prepared by the Registrar’s office requiring the appellant to file its evidence. This notice was served upon the appellant only via email on 15 September 2024. As per Rule 45(1) of the Trade Marks Rules, the limitation period for filing evidence commenced from the date of service, i.e., 15 September 2024. Thus, the two-month period would expire on 15 November 2024.

The appellant filed its affidavit of evidence before the Registrar on 14 November 2024 and also supplied a copy to Respondent No. 2 on 13 November 2024. In addition, the evidence was dispatched through speed post on 11 November 2024. Despite this timely filing, the Registrar dismissed the opposition by treating the filing as delayed, apparently computing the limitation from the date of the letter (11 September 2024) instead of the actual date of service (15 September 2024).

This error formed the basis of the appeal before the Delhi High Court.

The Core Dispute: The principal dispute was whether the appellant had complied with the statutory requirement of filing evidence within two months from the date of service of notice under Rule 45(1) of the Trade Marks Rules, 2017.

The appellant argued that the limitation must run from the date of actual service of notice, not from the date printed on the Registrar’s letter. Therefore, since the service was effected on 15 September 2024 and the affidavit of evidence was filed on 14 November 2024, it was clearly within the statutory time.

On the other hand, the Registrar had mistakenly concluded that the evidence affidavit was filed beyond time, while Respondent No. 2 contended that though technically served within time, this situation caused prejudice since Respondent No. 2 had already been granted registration.

Detailed Reasoning and Analysis: The High Court examined the submissions of all parties, particularly the written statement of the Registrar of Trade Marks. It was fairly conceded by the Registrar that the notice was indeed served only on 15 September 2024 via email and not earlier.

This concession was critical, as Rule 45(1) of the Trade Marks Rules, 2017, explicitly states that the period of two months for filing evidence begins from the date of receipt of notice. The Court observed that service of notice is a foundational step in limitation law. Citing the general legal principle that limitation runs from the date of actual service and not the date of the letter, the Court held that the appellant had acted within the prescribed period.

The Court emphasized that the Registrar’s finding that the evidence was filed belatedly was contrary to the record and violative of Rule 45(1). The Court also stressed that any contrary interpretation would amount to depriving a party of its statutory right to oppose a trademark merely on account of a procedural misunderstanding.

Furthermore, the Court carefully balanced equities. While setting aside the Registrar’s order, the Court recognized the concern of Respondent No. 2, who had been granted registration in the meantime. To address this, the Court directed the Registrar to decide the opposition afresh within a period of two months, strictly without adjournments, thereby protecting the rights of both parties.

The Court also directed that the relief sought in prayer clause (d) for cancellation of Respondent No. 2’s registration be allowed and the trademark registry be updated accordingly within two weeks. However, the Court clarified that nothing in its order should be read as an opinion on the merits of the opposition itself, which would have to be independently adjudicated by the Registrar.

Decision: The Delhi High Court allowed the appeal filed by Kaira District Cooperative Milk Producers Union Ltd. and set aside the impugned order dated 24 April 2025 passed by the Registrar of Trade Marks. The Court held that the appellant had filed its evidence affidavit within the prescribed period under Rule 45(1) of the Trade Marks Rules, 2017.

The Court remanded the matter to the Registrar of Trade Marks with directions to conduct a time-bound hearing and adjudicate the opposition on its merits within two months. The registration already granted to Respondent No. 2 was ordered to be updated in the records to reflect the correct legal position. Importantly, the Court clarified that its order should not prejudice the Registrar’s independent decision on the merits of the opposition.

Case Title: Kaira District Cooperative Milk Producers Union Ltd. Vs. The Registrar of Trade Marks & Anr.

Case Number: C.A. (COMM.IPD-TM) 46/2025 

Date of Decision: 19 September 2025

Court: High Court of Delhi at New Delhi

Coram: Hon’ble Ms. Justice Manmeet Pritam Singh Arora

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

Woltop India Pvt. Ltd. Vs. Union of India

Territorial Jurisdiction in Trademark Rectification

Introduction: The petition sought a writ of mandamus directing the respondents to transfer rectification petitions pending before the Registrar of Trade Marks, Ahmedabad, to the Intellectual Property Division of the Madras High Court for consolidation and expeditious disposal alongside an existing civil suit.

Facts: The facts reveal that the petitioner had instituted civil suit C.S.(Comm.Div.) No. 199 of 2023 for alleged trademark infringement and passing off. Pending before the Ahmedabad Registrar were rectification petitions numbered 272370 and 272372 concerning trade mark registrations in classes 27 and 35. The petitioner requested transfer of these rectification petitions to the IPD of the Madras High Court for consolidation with the civil suit, contending that this was necessary to avoid multiplicity, delays, and conflicting judgments. Despite the petitioner’s letter dated 30.05.2024 invoking Section 125(2) of the Trade Marks Act, 1999, requesting transfer, no action was taken. Subsequently, these writ petitions were filed under Article 226 of the Constitution of India.

Procedure: Procedurally, the maintainability of the writ petitions was questioned. The petitioner argued that consolidation was fair and necessary under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023, and that neither Article 139A of the Constitution nor Section 25 of the Code of Civil Procedure applied to prevent this remedy. Counsel emphasized that the High Court’s power under Article 226 to issue writs extends where a cause of action arises within jurisdiction, regardless of the physical location of the authority to be directed.

In opposition, the respondents, particularly the fifth party, contended that jurisdiction rested with the High Court having appellate jurisdiction over the relevant Registrar’s office per Rule 4 of the Trade Marks Rules, 2017. They submitted that the writ petitions could have been filed in the Gujarat High Court where the Registrar of Trade Marks, Ahmedabad exercises authority. They denied any stay application in the civil suit and stated no impediment existed to its continued prosecution. The respondents invoked statutory provisions and procedural rules, emphasizing that only the High Court geographically competent over the Registry office can entertain rectification matters. They cautioned against judicial overreach under Article 226 when a statutory tribunal with specified jurisdiction exists.

Examination by Court: The Court examined applicable provisions from the Trade Marks Act, particularly Sections 47 and 57 relating to rectification powers, which had been amended by the Tribunals Reforms Act, 2021, replacing the erstwhile Appellate Board with the High Court. The Court noted the deliberate use of the definite article ‘the’ before ‘High Court’ in these Sections, signaling Parliament’s intent to confer jurisdiction on a specific High Court exercising appellate jurisdiction over a defined Registrar’s office. The Court contrasted this with the use of the indefinite article ‘a’ in other contexts.

The Court underscored Rule 4 of the Trade Marks Rules, 2017, designating the territorial jurisdiction of trademark registry offices, and confirmed that since the registered proprietor’s principal place of business was in Surat, Gujarat, the appropriate Registry was Ahmedabad. Hence, statutory jurisdiction over rectification petitions necessarily lay with the Gujarat High Court and itsTrademark Registry.

The Court reviewed jurisprudence including Adiuvo Diagnostics Private Limited v University Health Network (2024 SCC OnLine Mad 185), which held the appropriate Patent Office does not restrict writ jurisdiction, but distinguished this from statutory jurisdiction conferred in the TM Act for rectification matters. The Court clarified that jurisdiction under Sections 47 and 57 cannot be assumed by any High Court besides the one with territorial appellate jurisdiction, to avoid jurisdictional chaos and conflicting decisions, as multiple petitions for the same rectification could arise everywhere.

Further, the Court rejected the petitioner’s reliance on Rule 14(1) of the Madras High Court IPD Rules as conferring power to consolidate these proceedings beyond supervisory jurisdiction. It noted that commercial courts including district courts have jurisdiction for suits concerning trademarks, and consolidation across district and high court proceedings is not envisaged. The Court pointed out Section 124 of the TM Act prescribes stays of suits pending resolution of rectification petitions, thereby preventing conflict without needing transfer or consolidation in different fora.

The Court cited a contrary view held by a single judge in Nippon Paint Holdings Co. Ltd. v Suraj Sharma (MANU/TN/1388/2024) and the Delhi High Court in Dr. Reddy’s Laboratories Ltd v Fast Cure Pharma, but as this order was stayed by the Supreme Court, the Court declined to endorse it, reaffirming the territorial nexus principle for High Court jurisdiction.

Decision: The Court held that the Madras High Court did not have jurisdiction under Sections 47 and 57 of the TM Act to entertain the rectification petitions pending before the Ahmedabad Registrar. It stated that the writ petitions were discretionary remedies not suited to override statutory jurisdiction and procedural availability of remedies before the Gujarat High Court. The Court declined to grant the requested transfer or consolidation but left open the option to approach the Gujarat High Court for expeditious disposal of the rectification petitions. The writ petitions were thus dismissed without costs.

This judgment clarifies territorial jurisdiction and separation of powers under the TM Act and underscores the delicate balance between constitutional writ powers and statutory administrative adjudication. It emphasizes the need to respect jurisdictional boundaries based on territorial connections of trademark registrations to reduce litigation confusion, preserve orderly administration of justice, and avoid conflicting rulings.

Case Title: Woltop India Pvt. Ltd. Vs. Union of India and Others  

Order Date: 20th February 2025  

Case Number: W.P.(IPD) Nos. 30 & 32 of 2024  

Neutral Citation: 2025:MHC:485  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: The Honourable 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

Fox and Mandal and Another Vs. Somabrata Mandal and Others

The Role of Court Discretion in Consolidating IP Proceedings

Facts:The case primarily deals with an application for consolidation and analogous hearing of three related proceedings pending before the Intellectual Property Rights Division of the Court. The petitioner sought to consolidate these proceedings for effective and consistent determination of disputes concerning ownership and use of the mark.

Procedural Background: The petitioner moved for consolidation of the suit (IP-COM 6 of 2025) with a writ petition (WPO-IPD 1 of 2025) and another commercial suit (IP-COM 31 of 2025), all concerning rival claims to rights in the trademark "Fox & Mandal." The claimed reliefs included quashing of impugned communications by the Registrar of Trade Marks, removal of registrations, stay on implementation of certain registrations, injunctions preventing unauthorized use of the mark, and monetary damages.

Petitioner's contention: The facts reveal that the petitioner claimed ownership of the trademark "Fox & Mandal," arguing that all three proceedings raise common issues such as goodwill associated with the mark, possibility of confusion among consumers due to concurrent use, exclusive ownership disputes, and questions of whether one party can restrain another from using the mark. The petitioner cited judicial precedents including Prem Lala Nahata & Ors. vs. Chandi Prasad Sikaria (2007) 2 SCC 551 and Chittivalasa Jute Mills vs. Jaypee Rewa Cement (2004) 3 SCC 85 to support the request for consolidation based on common questions of law and facts.

Respondent's contention: The respondents, who are the plaintiffs in the suit opposing consolidation, contended that the application was an abuse of process filed to delay proceedings. They argued that the suit before the Court was for passing off and that the defendants had failed to file their Written Statement within the mandatory 120-day period, indicating their intention to stall the case. They further noted that the request for consolidation had been rejected repeatedly at different stages. They submitted that the different proceedings were at incomparable stages procedurally and that consolidation would thus be improper. They relied on case law including Monohar Lal vs. Ugrasen (2010) 11 SCC 557, Ananda Swarup Agarwal & Anr. vs. State of West Bengal AIR 2000 Cal 222, and Jai Singh vs. Union of India (1977) 1 SCC 1 in support of their stance.

Relevant Provision: The Court examined the provisions under the Code of Civil Procedure, 1908, amended by the Commercial Courts Act, 2015, which permit consolidation of proceedings as part of Case Management Hearing (Order IV A), and the court’s inherent power under Section 151 CPC. It also referred to Rule 18(b) of the Intellectual Property Rights Rules, 2023 applicable in the Calcutta High Court.

The Observation: The Court observed that while the power to consolidate is discretionary and may be applied to avoid conflicting decisions or duplication of effort when there are common issues of fact or law, the stage of the proceedings is a critical factor. The suit in IP-COM 6 of 2025 was well advanced with the plaintiff having completed opening arguments in a summary judgment application, while the other suits were at much earlier or dormant stages — the writ petition had been pending without trial, and the suit IP-COM 31 of 2025 had not seen service of the summons even after two years.

The Court emphasized that a diligent party should not be delayed or prejudiced because of the indolence of the opposing party. The issues in the writ petition and other suits had no material bearing on the main disputes in the suit before the Court, which was a suit for passing off. The need for speedy disposal of commercial disputes as mandated by the Commercial Courts Act was explicitly noted, cautioning against delaying tactics through consolidation applications.

The Court further noted that the principal purpose of consolidation is to address strong common links in cause of action, injury, or relief claims, and to save time and costs. However, it may be refused where it could cause delay or embarrassment to the trial process. The Court found no strong common link warranting consolidation and held that the stage of the various proceedings was incompatible for consolidation.

Issues in Suit and Issues in Writ: Relying on precedents such as Dyna Chem vs. Jaipal Das Punjabi (2021) 4 MPLJ 406 and Supriya Roy & Anr. vs. Bijaya Bose 2018 (2) CHN 372, the Court confirmed that the issues in the writ petition were unrelated to the present suit. The Court also distinguished the petitioner’s reliance on Prem Lala Nahata and Chittivalasa Jute Mills cases as factually inapposite.

Decision: Accordingly, the Court dismissed the application for consolidation as ill-motivated and misconceived but made no order as to costs. The judgment reinforces principles that while courts have wide discretion to consolidate cases with similar facts or issues, procedural stages and the interest of justice, including the avoidance of undue delay, are paramount considerations in exercising that discretion.

The decision crystalizes how courts balance procedural efficiency, litigants’ rights to expeditious trial, and the avoidance of multiplicity of proceedings in intellectual property disputes. It also highlights judicial vigilance against abuse of court process under pretexts such as consolidation for delaying the progress of substantive issues like passing off.

Case Title: Fox and Mandal and Another Vs. Somabrata Mandal and Others  

Order Date: 22nd September 2025  

Case Number:  IP-COM/6/2025  

Name of Court: High Court of Calcutta

Name of Hon'ble Judge: Justice Ravi Krishan Kapur

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