Law Settled in the Case: Non-filing of a Statement of Truth in petitions filed under Section 34 of the Arbitration and Conciliation Act, 1996, does not render the petition automatically "non-est" or invalid; rather, such omission is considered a curable procedural defect.
Pragati Construction Vs Union of India : 07.02.2025:OMP(COMM) 20/2024: 2025:DHC: 717:FB: Hon’ble MS. Justice Rekha Palli, Hon’ble Mr. Justice Navin Chawla, Hon’ble Mr. Justice Saurabh Banerjee: @Para 93
Rajiv Ghosh Vs. Satya Naryan Jaiswal:SLP (C) No. 9975 of 2025:07 April 2025:2025 INSC 467: Supreme Court of India
In April 2023, the petitioner discovered the respondent’s mark and sent legal notices asserting its prior rights. The respondent refused to comply, asserting that “JOLLY” is a common term and their adoption was honest. Subsequently, Shiv Textiles filed Commercial Trademark Suit No. 1 of 2023 in Bhavnagar seeking relief against alleged harassment and interference. Iconic IP challenged the maintainability of this suit and filed an application under Order VII Rule 11 CPC for rejection of the plaint, which was dismissed by the Bhavnagar District Court. Hence, the petitioner approached the Gujarat High Court under Article 227 of the Constitution.
Legal Issues:
Whether the plaint filed by the respondent disclosed any cause of action under Order VII Rule 11 CPC.Whether the Bhavnagar court had territorial jurisdiction based on the facts pleaded?Whether suppression of material facts by the plaintiff (respondent) justified rejection of the plaint?Whether the non-joinder of a necessary party (Hershey Company) rendered the suit legally untenable?
The Court distinguished the facts from those in Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, noting that in that case the defendants operated within India. In contrast, here, both the trademark and sales platform (Amazon USA) operated outside India. Without any evidence of purposeful targeting of Indian customers, no cause of action arose within Bhavnagar.
The Court also found that the respondent suppressed critical information, including prior knowledge of the petitioner’s registered trademarks in India and legal notices served upon them. This suppression of facts and non-disclosure of the petitioner’s prior rights was seen as an abuse of process.
Additionally, the Court accepted the petitioner’s argument that the suit was bad for non-joinder of Hershey Company, which had material rights under a licensing agreement and was a necessary party for complete adjudication.
Case Title: Ramway Foods Limited Vs Rajendra Sharma & Anr.:Date of Order: 7th May, 2025:Case Number: CS(COMM) 182/2023:Court: High Court of Delhi:Presiding Judge: Hon’ble Mr. Justice Amit Bansal
The plaintiff, M/s Ramway Foods Ltd., has been manufacturing and trading food products under the trademark “DOUBLE TAALA” since 2011. The mark is registered under Classes 29, 30, 31, and 44, and features a distinctive label and trade dress. The defendant, Rajendra Sharma, initially sold the plaintiff’s goods as a broker, but later began selling identical goods under deceptively similar marks like “DOUBLE TAALA CHAVI” and later “CHAVI TAALA”, using copied packaging, trade dress, and even elements specific to plaintiff’s batch code such as “RF”.
Upon learning of the infringement, the plaintiff issued a cease-and-desist notice in October 2022, but the defendant did not respond. Thereafter, the plaintiff filed the present suit seeking permanent injunction, damages, and other reliefs. The defendants failed to respond meaningfully in court, leading to their ex-parte proceedings.
Whether the defendants’ use of “DOUBLE TAALA CHAVI” and “CHAVI TAALA” infringed the plaintiff’s registered trademarks and copyrights?Whether the defendants’ actions amounted to passing off?Whether the plaintiff was entitled to a decree in the absence of a written statement from the defendants?
The Court found that the defendants had copied not only the plaintiff’s registered trademark but also various distinctive elements of its packaging and labeling, including batch-specific identifiers. The defendants were aware of the plaintiff's prior rights, having previously sold its goods. Their subsequent imitation was held to be dishonest and mala fide.
Due to their non-participation, the defendants were proceeded ex-parte and the Court deemed all averments of the plaint to be admitted under Order VIII Rule 10 CPC and Delhi High Court (Original Side) Rules, 2018.
The Court held that the plaintiff had successfully established both infringement and passing off. Further, relying on precedent (Inter Ikea Systems BV v. Imtiaz Ahamed), the Court held that non-participating defendants should not escape consequences and granted damages in addition to injunction.
The Court granted a permanent injunction restraining the defendants from using the marks/labels deceptively similar to the plaintiff’s “DOUBLE TAALA” marks. It also awarded ₹5,00,000 as damages and costs in favour of the plaintiff.
Case Title: Hero Invest Corp Private Limited Vs Sehgal Auto House through its Proprietor Mr. Sunil Sehgal:Date of Order: April 22, 2025:Case Number: CS(COMM) 436/2022:Court: High Court of Delhi at New Delhi:Presiding Judge: Hon’ble Mr. Justice Saurabh Banerjee
The plaintiffs, Hero Invest Corp Pvt. Ltd. and Hero MotoCorp Ltd., owners of the registered trademark ‘HERO’ and the 'H' device logo, filed a suit against the defendant, Sehgal Auto House, for infringing their intellectual property rights. The defendant, a spare parts supplier, was found selling counterfeit automotive parts bearing the plaintiffs’ marks without authorization, invoices, or warranty, and at prices below genuine MRP. An ex-parte injunction was granted earlier, and a Local Commissioner seized 5,682 infringing items from the defendant’s premises.
Whether the defendant’s use of the trademark ‘HERO’ and ‘H’ device constituted trademark and copyright infringement?Whether the plaintiffs were entitled to a permanent injunction under Order XIII-A CPC based on undisputed facts?
The Court noted the extensive goodwill, market reputation, and financial records presented by the plaintiffs. The defendant did not deny the claims, had shut down his business, and paid a nominal settlement amount of ₹3,00,000. The counterfeit nature of the products was confirmed through unique product identifiers maintained by the plaintiffs. Since the defendant did not contest the local commissioner’s report or continue the infringing activity, the court found no triable issue.
The suit was decreed in favor of the plaintiffs. A permanent injunction was granted restraining the defendant and all associated persons from dealing in any goods or services bearing the mark ‘HERO’, the ‘H’ device, or any similar mark, thus upholding the plaintiffs’ trademark and copyright rights.
Case Title: Diamond Modular Pvt. Ltd. Vs. Vikash Kumar & Anr. Case No.: RFA(COMM) 166/2025 Date of Order: May 5, 2025 Neutral Citation: 2025:DHC:3619 Name of Court: High Court of Delhi at New Delhi Name of Judge: Hon’ble Justice C. Hari Shankar and Hon’ble Justice Ajay Digpaul
Diamond Modular Pvt. Ltd. (appellant) alleged that Vikash Kumar (respondent) was using the mark "DIAMOND GOLD" in relation to electrical goods, which infringed upon its registered trademarks "DIAMOND" registered in Classes 9 and 11. The appellant had built a reputation since 1975 in electrical goods, and its "DIAMOND" mark was well-known and registered since 1984. The respondent, without registration, used the mark "DIAMOND GOLD" for fans and other electrical goods starting July 2022.
The appellant filed CS (Comm) 444/2023 before the Commercial Court for a permanent injunction against the respondent's use of the mark "DIAMOND GOLD" and for other reliefs. The Commercial Court dismissed the suit on October 15, 2024. Aggrieved, the appellant filed the present appeal before the High Court.
Whether the respondent's use of "DIAMOND GOLD" constitutes infringement of the registered "DIAMOND" mark, and whether the trademarks are deceptively similar, causing confusion.
The High Court allowed the appeal, quashing the impugned order and directing the Commercial Court to decree in favor of the appellant. The court held that there was deceptive similarity between "DIAMOND" and "DIAMOND GOLD", and that the appellant had established prior registration and use rights. The court issued a permanent injunction restraining the respondent from using the mark "DIAMOND GOLD" or any deceptively similar mark.
Legal Issue: Can a defendant withdraw or amend an admission—express or implied—made in his written statement, particularly when such admission was made due to counsel's error or omission?
Reasoning: The court examined whether admissions are binding and when amendments are permissible. It noted that express admissions are typically final, but implied admissions, especially those made inadvertently, can be corrected through amendments. The court emphasized that amendments should be allowed to prevent injustice, unless they cause serious prejudice or alter the core case of the plaintiff.
Issues:
Conclusion: The court held that amendments allowing withdrawal of implied or mistaken admissions are permissible, provided they do not prejudice the other party. It emphasized that courts should exercise their discretion generously to prevent injustice but must balance fairness. The court directed a reconsideration of the matter allowing appropriate amendments, clarifying that mistakes, especially due to counsel’s error, should not be a bar to justice.
Vinay Jain Vs. Rakesh Jain & Others Case Number: FAO(OS) (COMM) 36/2025 Order Date: May 16, 2025 Court: High Court of Delhi Judges: Hon’ble Mr. Justice C. Hari Shankar, Hon’ble Mr. Justice Ajay Digpaul Neutral Citation: 2025:DHC:3990-DB
Vinay Jain challenged an order of the Single Judge (dated 10 September 2024) that directed the defendant to lead evidence first concerning certain documents in a commercial dispute. The appellate court, in its judgment dated 16 April 2025, reviewed this order while hearing the appeal.
The Court observed that the directions did not comply with proper legal standards under Order XVIII, which governs the order of parties' evidence. It clarified that the order was a case management decision and not one issued under specific provisions that empower the court to decide the sequence of evidence. Additionally, the Court noted that the new submissions, not included in the pleadings or arguments during the original hearing, could not be entertained in the review petition, which is mainly intended to correct errors of law or fact in the original judgment.
The Court dismissed the review petition, upheld the appellate judgment, and set aside the Single Judge’s order, emphasizing that the parties should proceed to lead evidence in accordance with the law.
Case Title: Vinay Pictures Vs Good Hope Case Number: CS(COMM) 475/2025 Order Date: 14th May 2025 Court: Delhi High Court, Commercial Division Judge: Hon'ble Mr. Justice Amit Bansal
Vinay Pictures, owner of the copyrighted film "Andaz Apna Apna," filed a suit against multiple defendants for infringing its intellectual property rights. The defendants allegedly uploaded, streamed, and distributed content related to the film online, including merchandise featuring film characters, dialogues, and scenes, in violation of the plaintiff's rights. They are also accused of using AI-generated content and virtual stickers to exploit the film’s IP commercially, thereby causing irreparable harm and economic loss.
Whether the defendants’ actions constitute infringement of the plaintiff’s copyright, trademarks, and related rights, and whether interim relief in the form of an injunction should be granted to prevent ongoing and future infringement?
The Court observed that the plaintiff demonstrated a prima facie case of rights violation, with clear evidence of unauthorized online activities that cause irreparable harm. Given the widespread nature of the infringement and the potential for dilution and tarnishment of the film’s IP, the Court found that urgent interim relief was justified. The Court noted the difficulty in controlling such infringements across diverse platforms and technologies, especially with AI involvement.
The Court granted ex parte ad interim injunctions restraining the defendants, including their agents and affiliates, from hosting, streaming, creating derivative content, or selling merchandise based on the film.
Dr. Vinod Bhaskar Rao Joshi, the petitioner, operates a physiotherapy and pain clinic under the trademark “Pushkar Pain Clinic Evam Physiotherapy Center.” The petitioner alleges that an individual named Trivendra Kumar Kaushik is illegally running a physiotherapy center under the guise of medical practice, claiming to possess a degree in Bachelor of Physiotherapy (BPT) from an unverified and possibly fraudulent institution. This person is accused of misrepresenting, infringing the petitioner’s registered trademark, and providing illegal medical services.
The petitioner had submitted a complaint to the relevant licensing authority under Madhya Pradesh law, seeking cancellation of the license issued to the unauthorized person and action under applicable statutes. Despite this, no action has been taken to revoke or scrutinize the license, leading the petitioner to approach the court for intervention.
The petitioner filed a writ petition under Article 226 of the Constitution of India, seeking:
A mandamus to direct the Respondent No.2 (the licensing authority) to decide and act upon the pending complaint.
Cancellation of the unauthorized person’s license if investigations reveal misconduct.
Disclosure of investigation findings and records related to the complaint.
The respondent (state authority) raised preliminary objections, asserting the petitioner’s status as a complainant, not an adversarial litigant, and citing landmark case law (notably Ravi Yashwant Bhoir v. District Collector) that restricts the locus standi of complainants in such matters.
The court examined submissions from both sides, referencing precedents that clarify the limitations on a complainant’s capacity, emphasizing that the petitioner cannot act as an adversarial litigant seeking issuance of a writ of mandamus directly to resolve a licensing or criminal matter.
The Hon’ble Court observed that:
Therefore, the court dismissed the petition, holding that the petitioner’s request for direct judicial intervention in license cancellation or investigation is not maintainable through the writ petition.
Viiv Healthcare Company & Anr. vs. Deputy Controller of Patents & Designs and Others:Court: High Court at Calcutta : Judge: Hon’ble Justice Ravi Krishan Kapur: Case Number: IA No. GA-COM/1/2025 (Appeal No. IPDPTA/1/2025):Order Date: 14 May 2025
ViiV Healthcare filed a patent application in India for HIV medications including Dolutegravir and Cabotegravir. The application faced opposition from NATCO Pharma and other parties. The Patent Office initially rejected the application, citing issues related to inventive step and disclosure. During proceedings, parties settled, with NATCO withdrawing opposition under a settlement agreement, permitting ViiV to manufacture Dolutegravir but not Cabotegravir until 2026. Subsequently, the Deputy Controller issued a rejection order, dismissing ViiV’s patent application, which ViiV challenged in the High Court.
The Court found that the Deputy Controller had misinterpreted the order from the High Court, which clarified that only NATCO's objections would be disposed of without considering expert evidence, not that all expert evidence relied upon by ViiV was to be ignored. The Court held that this misinterpretation rendered the rejection order "ex facie perverse" and legally unsustainable.
Additionally, the Court observed that the process was marred by extraordinary delays contravening statutory timelines, further undermining procedural fairness. The Court emphasized the fundamental importance of considering expert evidence in patent law and found that ignoring such evidence violated principles of natural justice and legal standards.
The Court set aside the impugned order and remanded the case for fresh decision-making by a different Controller or Hearing Officer, who would consider all evidence and objections properly and fairly. The Court underscored the importance of adhering to legal and procedural norms to ensure justice in patent proceedings.
Andreas Gutzeit Vs. Controller General of Patents Case No.: IPDPTA/7/2024 Date of Order: 15th May 2025 Court: High Court at Calcutta Judge: Hon’ble Justice Ravi Krishan Kapur
Mr. Andreas Gutzeit, an applicant for a patent titled “Blood Flow Control System and Method for In-vivo Imaging,” filed his application in India in 2016. The original claims primarily covered a method involving specific steps for medical imaging using respiratory resistance devices. During prosecution, the applicant amended his claims, converting method claims into system/device claims, intending to cover a broader scope. The Indian Patent Office (IPO) rejected these amendments, citing Section 59 of the Patents Act, which restricts amendments that expand the scope of the original claims. The applicant challenged the rejection in the Calcutta High Court.
Can amendments that convert method claims into system/device claims, supported by the original disclosure, be deemed invalid under Section 59 for broadening the scope of the patent?
The Court reviewed principles of patent law concerning amendments, emphasizing that amendments should not extend the original scope. Narrowing claims or clarifying them is permissible, but widening claims that introduce new matter or claims outside the original disclosure is not. It clarified that if amendments are within the original disclosure, converting a method claim to a system claim does not inherently constitute broadening.The Court criticized the IPO’s rejection for not adequately assessing whether the amendments stayed within the original disclosure. It emphasized the need for a case-specific examination of amendments.
The Court found the IPO’s rejection unwarranted, holding that the amendments did not violate Section 59. It set aside the rejection order and remanded the case to the Patent Office for re-evaluation, requiring a proper assessment of whether the amended claims remained within the scope of the original disclosure.
Case Title: Puja Agarwal Vs. Pravesh Narula Date of Order: 5th May 2025 Case No.: CS (COMM) No. 2732/2021 :2025:DHC:3800:Court: High Court of Delhi Judge: Hon'ble Mr. Justice Amit Bansal
The plaintiff, Puja Agarwal, initially filed a suit primarily for copyright infringement. During the pendency of the suit, the plaintiff obtained registration of a trademark (no. 4242962) for the mark “RD SPECIAL” on goods in Class 25. Subsequently, the plaintiff sought to amend the plaint to incorporate a claim for trademark infringement and passing off, which was initially absent.
The defendant challenged the amendment, arguing that it changed the fundamental nature of the original suit. The Court allowed the amendment, noting that the suit was still at an early stage and issues had not yet been framed. The Court observed that the law encourages amendments to avoid multiplicity of litigation, provided it serves the cause of justice. The Court, however, did not delve into the merits of the case at this juncture.
Whether the proposed amendment which introduces a claim for trademark infringement and changes the scope of the original suit from solely copyright infringement to include trademark infringement, should be permitted at this stage.
The Court allowed the amendment, emphasizing that the suit was still at an early stage, and permitting amendments aligns with principles discouraging multiplicity of litigation. The Court clarified that it was not deciding on the merits but was ensuring that justice is served by allowing the amended pleadings.
Case Title: Inder Raj Sahni Vs Neha Herbal Case No.:C.O. (COMM/IPD-TM) 355/2021 and CS (COMM) 207/2023 and Date of Order: March 22, 2023 Neutral Citation: 2025:DHC:4037 Court: Delhi High Court Judge: Hon'ble Mr. Justice Sanjeev Narula
The dispute centers on the use of the trademark "NEHA" in the personal care industry.
The Plaintiffs, Neha Herbals Pvt. Ltd., represented by Vikas Gupta, have been using the mark "NEHA" since 1992, primarily in relation to henna (Mehandi) powders, cones, and herbal hair products. They hold a valid registration for "NEHA" under Registration No. 1198061 in Class 3, covering goods like henna, herbal powders, and hair dyes, with use dating back to 2012.
The Defendant, Mr. Inder Raj Sahni of M/s Sahni Cosmetics, claims to have adopted and used "NEHA" earlier for face creams and cosmetic products. He has also filed multiple applications for registration of the same mark, but these applications have been refused or abandoned, and he does not hold a valid registration.
The Plaintiffs initially obtained registration for the mark but lost it due to non-renewal; they allege long-standing use and prior rights over the mark "NEHA".
The Defendant began selling "NEHA" branded face creams in 2012, asserting prior use and challenging the Plaintiffs' rights based on earlier adoption.
The Plaintiffs filed a suit for infringement and passing off alleging that the Defendant's use of "NEHA" for face creams infringed their registered trademark and prior use rights.
The Defendant moved to cancel the Plaintiffs’ registration and raised defenses based on prior common law rights and prior use.
The suit and cancellation petitions were initially with the Intellectual Property Appellate Board (IPAB) and later transferred to the Delhi High Court following procedural changes.
The Court consolidated the suit and cancellation proceedings, recorded evidence, and heard final arguments.
Based on the evidence, the Court examined whether the Plaintiffs had superior rights due to prior use and registration, and whether the Defendant’s use amounted to infringement or passing off.
The Court held that:
The Plaintiffs have demonstrated prior use of the mark "NEHA" in relation to herbal powders, hair dyes, and henna products since 1992, supported by registration and continuous use.
The Defendant’s use of "NEHA" for face creams, although after the Plaintiffs’ use, does not amount to infringement because the goods are different (herbal products vs. cosmetics/creams), and the likelihood of confusion among the consumers is less due to the different nature of products.
The Plaintiffs’ registration was active and effective, covering related herbal and hair products, but did not extend explicitly to the cosmetic creams category.
The Plaintiffs’ goodwill was confined mainly to mehandi and herbal products and not established across broader cosmetics. Thus, the pass-off claim for "NEHA" in the cosmetics category fails.
Considering priority rights under the Trade Marks Act, the Defendant’s prior use of "NEHA" for face creams, although not registered, does not amount to infringement or passing off, given the distinct product lines and consumer perceptions.
The injunctions sought by the Plaintiffs were not granted, and the Defendant’s use of "NEHA" in relation to face creams was found to be lawful.
The suit for infringement and passing off was accordingly decided against the Plaintiffs.
The cancellation petitions filed by the Defendant regarding the registration were also decided in favor of the Defendant, with the Court concluding no prior user rights of the Plaintiffs extended to the cosmetic category.
The Court dismissed the suit of infringement and passing off filed by Neha Herbals Pvt. Ltd., holding that there was no infringement of the registered rights nor passing off actions proved, especially in the broader cosmetic categories. The Defendant’s prior use in face creams was recognized, and the evidence indicated that consumer confusion was unlikely.
The appeal arises from a civil suit filed by Rahul Bansal (plaintiff) against Vishal Gupta and others (defendants) before the District Court (Commercial Court) in Tis Hazari, Delhi. The core dispute concerns using the trademark/label "OM AMAR SHAKTI" / "SARKAR OM AMAR SHAKTI" by the defendants in the edible oil business. The plaintiff claims prior rights over the mark "MATA AMAR SHAKTI" and asserts that the defendants' use of a deceptively similar mark was infringing their trademark rights, which could cause consumer confusion and dilution of their goodwill.
The plaintiff's trademark, however, was not registered, though they held a copyright for the label. The defendants argued that the plaintiff's reliance on unregistered rights and the absence of registration undermined the injunction sought.
The defendant filed an application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code (CPC) seeking to restrain the plaintiff from using the mark "MATA AMAR SHAKTI." The Commercial Court granted an ad interim injunction against the defendants, prohibiting them from using the mark "OM AMAR SHAKTI / SARKAR OM AMAR SHAKTI" on edible oils or related products.
The defendants, feeling aggrieved by the order, appealed and challenged the injunction, arguing that the injunction was improperly granted as the plaintiff's mark was not registered and that the order was based on a flawed understanding of trademark law.
The Delhi High Court, upon hearing the appeal, found that the trial court's decision was flawed legally and remitted the case for re-consideration at the trial level, emphasizing legal clarifications related to passing off and the scope of unregistered trademarks.
The main legal issues addressed were:Whether an injunction can be granted based on unregistered trademark rights (passing off) and the sufficiency of such rights to prevent use of similar marks?Whether the trial court erred in granting injunction solely based on the belief that the respondent’s mark was prior and deceptively similar, without sufficient proof of reputation or goodwill?
The High Court set aside the impugned order and remanded the matter for a de novo hearing before the Commercial Court. The Court emphasized that:
Legal Significance: This case clarifies the scope of injunctive relief in passing off actions involving unregistered trademarks, emphasizing a requirement for proof of reputation and consumer confusion. It highlights that trademark rights obtained through registration are generally stronger and easier to enforce, but unregistered marks can also be protected if reputation and deception are established sufficiently.
Case Title: Inder Raj Sahni Vs. Neha Herbals Pvt. Ltd. & Others Case Number: C.O. (COMM.IPD-TM) 355/2021 Date of Order: 19.05.2025 Neutral Citation: 2025:DHC:4037 Name of Court: Delhi High Court Name of Judge: Hon’ble Justice Sanjeev Narula
Facts:
The dispute concerns the use of the trademark "NEHA" by two entities—Plaintiff Neha Herbals Pvt. Ltd., which has used "NEHA" since 1992 in connection with herbal Mehandi and related products, and Defendant Sahni Cosmetics, which uses "NEHA" for cosmetic products, including creams. The plaintiff claims prior use and registration rights, asserting that the defendant’s use is infringing and causing confusion. The defendant, however, does not hold any trademark registration for "NEHA" and has had applications refused or abandoned.
The court found that:
Hence, the suit was decided against the plaintiff on the merits of infringement and passing off.
Case Title: Dura-Line India Pvt Ltd Vs Jain Irrigation Systems Ltd.Court: High Court of DelhiJudgment Date: 19th May 2025Case Number: CS(COMM) 245/2017 Order Date: 19th May 2025Neutral Citation: 2025:DHC:4036 Judge: Hon’ble Mr. Justice Sanjeev Narula
Fact
Dura-Line India Pvt Ltd (Plaintiff) filed a lawsuit against Jain Irrigation Systems Ltd (Defendant) alleging infringement of Indian Patent No. IN 199722 and Design Registration No. 192665. The patent relates to a non-metallic pipe with a co-extruded tracer cable embedded on its outer surface, enabling precise underground detection of leaks. Dura-Line contended that Jain’s products, marketed as “Jain Insta Tracer Pipes,” incorporate the essential features of their patented invention, infringing upon their rights. Jain Irrigation challenged the validity of the patent, claiming it lacked novelty and inventive step.
Case Title: Romil Gupta Trading As Sohan Lal Gupta Vs Registrar of Trademarks Case No.: C.A.(COMM.IPD-TM) 1/2023 Date of Order: 14 May 2025 Court: High Court of Delhi Judge: Hon’ble Mr. Justice Amit Bansal Neutral Citation:2025:DHC:3697
Romil Gupta, the appellant, is engaged in manufacturing and trading self-tapping metal screws and claims to have used the trademark in question since 2013. The appellant initially filed a trademark application on 30 October 2018 with a user claim from 27 February 2013. A clerical error occurred, whereby the application was made for an incorrect mark ("applied mark") instead of the intended "subject mark." The appellant filed an application on 13 December 2018 seeking correction of this clerical mistake to reflect the actual "subject mark."
Whether the Registrar of Trademarks properly followed the procedures under the Trade Marks Act, and whether the cancellation of the trademark based on alleged "substantial alteration" was justified, especially considering the clerical error and the processes followed.
The Court set aside the impugned order of cancellation, holding that:
The order cancelling the registration was set aside, and the registration in favor of Romil Gupta was reinstated. The Court clarified that pending rectification proceedings or civil suits do not automatically impact the validity of proceedings under Section 57(4).
The case of Al Hamd Tradenation v. Phonographic Performance Limited is a significant copyright dispute adjudicated by the High Court of Delhi, addressing the issue of compulsory licensing under Section 31 of the Copyright Act, 1957. The petitioner, Al Hamd Tradenation, sought a compulsory license to use the respondent’s sound recordings for a corporate event, alleging that the respondent, Phonographic Performance Limited (PPL), demanded unreasonable and prohibitive license fees, effectively amounting to a refusal to license. The case delves into the balance between the copyright owner’s rights and the public’s interest in accessing copyrighted works, raising critical questions about the applicability of compulsory licensing provisions, the reasonableness of tariff structures, and the legal status of PPL as a licensing entity. The judgment, delivered on May 13, 2025, by Justice Mini Pushkarna, underscores the court’s authority to intervene when copyright owners impose arbitrary fees, reinforcing the statutory objective of ensuring equitable access to copyrighted works.
Al Hamd Tradenation, a Delhi-based event organizer, planned a corporate event for 50 persons on July 14, 2024, at Hotel Lutyens in Delhi. During the booking process, the hotel informed the petitioner that a license from PPL was required to play music at the event, with a quoted license fee of ₹49,500 for events hosting 1–150 persons. Upon checking PPL’s website, the petitioner noted that the fee had increased to ₹55,440, effective April 29, 2024. Deeming the fee excessive for a 50-person event, the petitioner, on July 2, 2024, offered PPL ₹16,500 (one-third of the original ₹49,500 fee), arguing that the reduced amount was proportionate to the event’s scale. PPL rejected this offer on the same day, prompting the petitioner to reiterate its proposal on July 3, 2024. Meanwhile, on July 9, 2024, PPL filed a copyright infringement suit (CS(COMM) 564/2024) against the petitioner, alleging unauthorized use of its sound recordings. Aggrieved by PPL’s high fees, which the petitioner deemed unreasonable, Al Hamd Tradenation filed the present petition seeking a compulsory license and determination of fair license rates.
PPL, a company claiming ownership of public performance rights in its repertoire of sound recordings through assignments, maintained that its tariff was reasonable and publicly available, applied uniformly to over 9,100 entities that had obtained 32,000 licenses since April 2023. The petitioner argued that PPL’s fee structure, which charged the same amount for 1–150 attendees and did not account for the number of songs or event duration, was arbitrary and constituted a de facto refusal to license, justifying a compulsory license under the Copyright Act.
The petitioner filed the petition (C.O.(COMM.IPD-CR) 8/2024) under Section 31 of the Copyright Act, 1957, read with Rule 6 of the Copyright Rules, 2013, before the Delhi High Court, accompanied by applications I.A. 33181/2024 and I.A. 33182/2024. The petition sought a compulsory license to use PPL’s sound recordings and a court-determined reasonable license fee. The matter was heard by Justice Mini Pushkarna, with arguments presented by Mr. Aditya Ganju for the petitioner and Mr. Chander M. Lall, Senior Advocate, for the respondent. During the proceedings, the court noted a related legal development: PPL’s licensing authority had been challenged in Phonographic Performance Limited v. Azure Hospitality Private Limited (CS(COMM) 714/2022). In that case, a Single Judge had upheld PPL’s right to issue licenses on March 3, 2025, but the Division Bench, in Azure Hospitality Private Limited v. Phonographic Performance Limited (FAO(OS) (COMM) 41/2025, decided April 15, 2025), ruled that PPL, not being a registered copyright society, could not issue licenses independently and must operate through Recorded Music Performance Limited (RMPL), a registered copyright society. This ruling was stayed by the Supreme Court on April 21, 2025, in Phonographic Performance Limited v. Azure Hospitality Private Limited (SLP(C) No. 10977/2025), pending a hearing on July 21, 2025. The court clarified that its judgment would be subject to the Supreme Court’s final decision. The judgment was reserved and pronounced on May 13, 2025, directing the parties to file affidavits to determine compensation and listing the matter for further directions on May 29, 2025.
Respondent’s Submissions (PPL): PPL defended its tariff as reasonable and uniformly applied, noting that over 9,100 entities had obtained licenses since April 2023. PPL argued that it had not withheld its repertoire, which was freely licensed to various establishments, and that the petitioner’s refusal to pay the published tariff did not justify a compulsory license. PPL contended that Section 31(1)(a) applies only when a work is withheld, not when a licensee disputes the fee. As the petitioner was not a broadcaster, PPL argued that Section 31(1)(b), which addresses unreasonable terms for broadcasts, was inapplicable, and the court’s role under Section 31(1)(a) was limited to addressing outright refusal, not assessing fee reasonableness. PPL further asserted that the right to perform in public under Section 31(1)(a) applies to literary, dramatic, and musical works, not sound recordings, which are limited to broadcasting under Section 31(1)(b). Citing Pune Video Theaters Association v. Cinemaster, PPL argued that its repertoire was publicly available, negating the petitioner’s claim. Finally, PPL maintained that its status as a copyright owner through assignments entitled it to set its own rates, subject to market acceptance.
Entertainment Network (India) Limited v. Super Cassette Industries Limited, (2008) 13 SCC 30: Cited by the petitioner, this Supreme Court judgment elaborates on compulsory licensing under Section 31. The court emphasized balancing the copyright owner’s rights with public access, holding that unreasonable terms or arbitrary demands by the owner amount to a refusal to license, triggering compulsory licensing provisions. The judgment clarified that monopoly practices are discouraged, and copyrighted works, once public, must be available on reasonable terms. In the present case, the petitioner relied on this to argue that PPL’s high fees constituted a de facto refusal, justifying a compulsory license.
Anand Bhushan and Others v. Union of India, 2018 SCC OnLine Del 9316: Cited by the court, this Delhi High Court Division Bench decision addressed tariff reasonableness under Section 33A. The court held that the Commercial Court, when reviewing a tariff scheme, can consider prevailing royalty standards for similar commercial exploitations. The petitioner indirectly benefited from this precedent, as the court used it to justify examining PPL’s tariff against RMPL’s standards, finding PPL’s structure unreasonable.
Pune Video Theaters Association v. Cinemaster, 2001 SCC OnLine CB 1: Cited by PPL, this Copyright Board decision involved video parlors exhibiting films. The Board found no withholding, as the films were publicly available, and the petitioner failed to identify withheld works. PPL argued that its repertoire was similarly accessible, negating the need for a compulsory license. The court distinguished this case, noting that the Supreme Court’s ruling in Entertainment Network established that unreasonable terms constitute refusal, rendering Pune Video inapplicable.
Phonographic Performance Limited v. Azure Hospitality Private Limited, CS(COMM) 714/2022, decided March 3, 2025: Referenced by the court, this Single Judge decision upheld PPL’s right to issue licenses based on assigned public performance rights. However, it was overturned by the Division Bench in Azure Hospitality Private Limited v. Phonographic Performance Limited, FAO(OS) (COMM) 41/2025, 2025 SCC OnLine Del 2407, which held that PPL, not being a registered copyright society, could not issue licenses independently and must align with RMPL’s tariff. The Supreme Court’s stay in Phonographic Performance Limited v. Azure Hospitality Private Limited, SLP(C) No. 10977/2025, order dated April 21, 2025, suspended the Division Bench’s directions, leaving PPL’s licensing authority unresolved. The court noted this context but proceeded, subject to the Supreme Court’s final ruling.
Copinger and Skone James on Copyright (19th Edition, 2025, Para 32-02, Pg. 1147, Vol. II): Cited by the court, this treatise explains compulsory licenses as mechanisms allowing use of copyrighted works without owner consent, subject to payment. It distinguishes compulsory licenses, where rates are negotiated, from statutory licenses with fixed rates. The court used this to underscore that compulsory licenses ensure public access while compensating owners, supporting its authority to intervene in PPL’s tariff.
Justice Mini Pushkarna’s reasoning focused on the statutory framework of the Copyright Act, the balance between copyright owners and public interest, and the specific circumstances of PPL’s tariff. The court began by addressing PPL’s licensing authority, noting the Division Bench’s ruling in Azure Hospitality that PPL, as a non-registered copyright society, must operate through RMPL. However, the Supreme Court’s stay of that ruling allowed the court to proceed, with a caveat that its directions were subject to the Supreme Court’s final decision.
On the merits, the court analyzed Section 31(1)(a), which allows compulsory licenses when a copyright owner refuses to republish or allow public performance, withholding the work from the public. The court rejected PPL’s contention that Section 31(1)(a) excludes sound recordings or limits the court’s role to outright refusal. Citing Entertainment Network, the court held that unreasonable terms constitute a refusal, as they effectively withhold the work. The court found PPL’s tariff unreasonable, as it charged ₹55,440 uniformly for 1–150 attendees, regardless of event specifics, contrasting this with RMPL’s nuanced tariff, which varied by venue and duration. The court noted that PPL’s structure did not account for the petitioner’s 50-person event, rendering the fee disproportionate.
The court clarified that “work” under Section 2(y) includes sound recordings, and “publication” under Section 3 encompasses public communication, including performance (Section 2(ff)). Thus, public performance of sound recordings falls under Section 31(1)(a), contrary to PPL’s argument that it is limited to literary, dramatic, and musical works. The court dismissed Pune Video Theaters as inapplicable, given the Supreme Court’s broader interpretation of refusal. The court also invoked Section 33A and Anand Bhushan to justify examining tariff reasonableness against prevailing standards, finding PPL’s fees arbitrary and monopolistic.
The court emphasized that the Copyright Act discourages monopolies and ensures public access on fair terms. Rule 8 of the Copyright Rules allowed the court to determine compensation based on prevailing royalty standards, reinforcing its authority to grant a compulsory license. The court concluded that PPL’s market dominance could not justify an arbitrary licensing regime, and the petitioner’s request for a compulsory license was meritorious.
The court held that the petitioner was entitled to a compulsory license due to PPL’s unreasonable tariff. To determine compensation, terms, and conditions, the court directed both parties to file affidavits of evidence within eight weeks. The matter was listed for further directions before the Roster Bench on May 29, 2025, with the judgment subject to the Supreme Court’s ruling in Phonographic Performance Limited v. Azure Hospitality Private Limited.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
