Raj Vardhan Patodia (HUF) vs. Registrar of Trade Marks

Fact of the Case:

The case involves an appeal by Raj Vardhan Patodia (HUF) against the Registrar of Trade Marks and another respondent. The appellant opposed trade mark application no. 3353986, but the opposition was deemed abandoned by the Registrar under Rule 45(2) of the Trade Marks Rules, 2017, for allegedly not filing evidence within two months of receiving the counter statement. The appellant claimed it had sent the evidence affidavit on time, supported by courier receipts, while the respondents argued non-delivery.

Procedural Background in Brief: 

The appellant filed opposition no. 1024552 against trade mark application no. 3353986. The Registrar served the counter statement on December 15, 2021, and later, on September 12, 2023, deemed the opposition abandoned for non-submission of evidence, despite a hearing on September 5, 2023. The appellant appealed under Section 91 of the Trade Marks Act, 1999, challenging this order, asserting the evidence was dispatched within the statutory period.

Provisions of law Referred in Case:

The court relied on statutory provisions: Rule 45 of the Trade Marks Rules, 2017, which mandates filing evidence within two months of receiving the counter statement, and Rule 14, which deems a document served if properly addressed and posted, requiring only proof of dispatch, not delivery.

Reasoning of Court:

The court found the Registrar’s order flawed, as it misinterpreted the appellant’s stance as denying service of the counter statement, whereas the appellant admitted receipt and claimed timely dispatch of evidence on February 1, 2022, within the two-month limit. Supported by a notarized affidavit, cover letter, and courier receipts, the court held that Rule 14 only requires proof of posting, not receipt, and the appellant met this standard. Principles of natural justice further supported considering the opposition on merits, as the evidence was sent during the COVID era, possibly lost in transit.

Decision:  

The court set aside the Registrar’s order of September 12, 2023, restored the opposition, directed the appellant to refile the evidence within one week, allowed the respondent to file its evidence, and cancelled the trade mark registration granted to respondent no. 2. The appeal was disposed of accordingly.

 

Case Title: Raj Vardhan Patodia Vs. Registrar of Trade Marks

Date of Order: March 18, 2025  

Case Number: C.A.(COMM.IPD-TM) 3/2024   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal

Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd

 Facts of the Case

The case involves a dispute between Unique Entrepreneurs and Finance Limited (plaintiffs) and Really Agritech Pvt Ltd. and another (defendants) over alleged trademark infringement and passing off. The plaintiffs, registered proprietors of the marks "Ralli," "Ralli Engine," "Ralli Sprayer," and "Ralli Agricultural Machines" under classes 7 and 8, claimed that the defendants’ use of a deceptively similar mark "Really" (device) in class 7 infringed their rights. The plaintiffs alleged they became aware of the defendants’ use of the "Really" mark in May 2024, prompting them to file a suit seeking urgent interim reliefs, including an injunction, without pursuing pre-institution mediation under Section 12A of the Commercial Courts Act, 2015. The defendants contested this, arguing that the plaintiffs had knowledge of the "Really" mark as early as December 2018 (via an exhibition) and March 2022 (via WhatsApp messages), accusing them of suppressing material facts to bypass mediation.

 Procedural Background in Brief

The plaintiffs filed the suit (IP-COM/31/2024) in the High Court at Calcutta, Original Side, and obtained dispensation from pre-institution mediation under Section 12A on 30 September 2024, citing the need for urgent relief. The defendants filed applications (GA-COM/2/2024 and GA-COM/3/2024) seeking revocation of this dispensation and rejection of the plaint, arguing misrepresentation by the plaintiffs. The court heard arguments from both sides, with the plaintiffs defending their urgency claim and the defendants relying on evidence of prior knowledge to challenge it.

Judgments Referred in Case with Complete Citation and Context:Yamini Manohar vs. T.K.D. Keerthi, (2024) 5 SCC 815  Context: Emphasized that courts must scrutinize claims of urgency under Section 12A to prevent circumvention of mandatory mediation, balancing plaintiffs’ rights with statutory intent.  Patil Automation (P) Ltd. vs. Rakheja Engineers (P) Ltd., (2022) 10 SCC 1 Context: Established Section 12A as mandatory, requiring rejection of suits filed without mediation unless urgent relief is genuinely contemplated.  Dr. Reddy’s Laboratories Ltd. vs. Smart Laboratories Pvt. Ltd., (2023) SCC OnLine Del 7276  Context: Held that urgency must be pleaded with supporting evidence, free of deception or suppression.  S.J.S. Business Enterprises (P) Ltd. vs. State of Bihar & Ors., (2004) 7 SCC 166  Context: Stressed that suppression of material facts disqualifies a litigant from relief, as it amounts to deceiving the court.  Mayar (H.K.) Ltd. & Ors. vs. Owners & Parties, Vessel M.V. Fortune Express & Ors., (2006) 3 SCC 100 Context: Reinforced that litigants must approach courts with clean hands, disclosing all material facts.  S.P. Chengalvaraya Naidu vs. Jagannath, (1994) 1 SCC 1  Context: Established that fraud unravels all, allowing courts to examine suppressed facts to detect fraud.  Chemco Plastic Industries Pvt. Ltd. vs. Chemco Plast, (2024) SCC OnLine Bom 1607  Context: Clarified that urgency must be assessed holistically, not solely based on time gaps.  Apollo Tyres Ltd. vs. Pioneer Trading Corporation & Anr., 2017 SCC OnLine Del 9825  Context: Distinguished by the court; held that non-disclosure of trivial facts does not equate to material suppression.

Reasoning of the Court:

Justice Ravi Krishan Kapur held that Section 12A mandates pre-institution mediation unless urgent interim relief is genuinely required, as per Patil Automation. The court found that the plaintiffs’ claim of discovering the "Really" mark in May 2024 was false, given evidence of their participation in the 2018 Kisan Mela exhibition (where rival goods were displayed) and WhatsApp messages from 2022 showing employee awareness of the defendants’ products. The court rejected the plaintiffs’ argument that employee knowledge was not attributable to them, deeming it unsubstantiated. It concluded that the plaintiffs suppressed material facts to fabricate urgency and bypass mediation, violating the principle of approaching the court with clean hands (S.J.S. Business Enterprises). While acknowledging that intellectual property suits often require urgent relief, the court emphasized that this does not exempt compliance with Section 12A when facts are misrepresented (Yamini Manohar). The five-month delay between alleged knowledge and filing was not decisive, but the suppression of prior knowledge was, leading to a finding of fraud on the court.

Decision:

The court revoked the dispensation granted on 30 September 2024, rejected the plaint in IP-COM/31/2024, vacated all interim orders, and allowed the defendants’ applications (GA-COM/2/2024 and GA-COM/3/2024). The plaintiffs’ suit and application for interim relief (GA-COM/1/2024) were dismissed. A subsequent request for a stay was denied.

Case Title: Unique Entrepreneurs and Finance Limited vs. Really Agritech Pvt Ltd. and Anr  

Date of Order: 20 March 2025  

Case Number: IP-COM/31/2024; 

Name of Court: High Court at Calcutta, 

Name of Hon’ble Judge: Justice Ravi Krishan Kapur

Interdigital Technology Corporation Vs Xiaomi Corporation

Patent Infringement and Anti Injunction Suit 

Introduction:

This case pertains to a patent infringement dispute involving Standard Essential Patents (SEPs) between InterDigital Technology Corporation and Xiaomi Corporation. The dispute centers on Xiaomi’s alleged unauthorized use of InterDigital’s SEPs related to 3G and 4G technologies in its cellular devices. The matter raises important legal issues concerning anti-suit and anti-enforcement injunctions, the global framework for FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, and the enforcement of patent rights in India.

Detailed Factual Background:

InterDigital Technology Corporation holds SEPs necessary for the implementation of standardized 3G and 4G telecommunications technologies. These SEPs are patents that must be used to comply with international standards for mobile communication and are thus indispensable for manufacturers like Xiaomi that produce standard-compliant devices. The plaintiff alleged that Xiaomi, without obtaining a FRAND license, used these SEPs in its products sold globally, including in India. InterDigital initiated a suit for infringement before the Delhi High Court seeking injunctive relief against Xiaomi. In response, Xiaomi initiated proceedings in Wuhan, China, seeking determination of a global FRAND royalty rate and obtained an anti-suit injunction restraining InterDigital from pursuing its Indian suit.

Detailed Procedural Background:

InterDigital filed CS(COMM) 295/2020 before the Delhi High Court, alleging infringement of its SEPs and sought interim relief. On 23rd September 2020, Xiaomi obtained an anti-suit injunction from the Wuhan Intermediate People’s Court, restraining InterDigital from prosecuting its infringement suit in India. In turn, InterDigital approached the Delhi High Court seeking an anti-enforcement injunction to restrain Xiaomi from enforcing the Wuhan Court’s order in India. The Delhi High Court passed an interim order on 9th October 2020, and after hearing the parties, delivered its final ruling on 3rd May 2021.

Issues Involved in the Case:

Whether Xiaomi could enforce the anti-suit injunction granted by the Wuhan Court in India to restrain the ongoing Indian patent infringement proceedings?Whether InterDigital was entitled to an anti-enforcement injunction against Xiaomi to prevent enforcement of the Wuhan Court’s order?

Detailed Submission of Parties:

InterDigital argued that Xiaomi’s attempt to restrain Indian proceedings by invoking the Wuhan anti-suit injunction violated its fundamental right to legal redress in India and interfered with the Indian court’s jurisdiction over Indian patents. InterDigital emphasized that patent rights are territorial and that Indian courts alone have the authority to decide issues involving Indian patents. The Wuhan Court’s order, if enforced in India, would infringe Indian public policy and constitutional rights. Xiaomi contended that the matter was global and involved determination of FRAND royalty rates, which justified a centralized determination in the Wuhan proceedings. Xiaomi claimed that the anti-suit injunction was aimed at avoiding multiplicity of litigation and conflicting decisions across jurisdictions.

Discussion on SEP, FRAND, and Anti-Suit Injunction:

A Standard Essential Patent (SEP) is a patent that claims an invention which is necessary to comply with a technical standard, such as those for mobile communication protocols like 3G or 4G. Because of their essential nature, SEPs must be licensed to all implementers under FRAND terms to ensure fair access to the standardized technology while compensating patent holders.

FRAND refers to the obligation imposed on SEP holders to license their patents on Fair, Reasonable, and Non-Discriminatory terms. This ensures that SEP holders cannot abuse their market position by demanding exorbitant royalties or engaging in discriminatory licensing.

An anti-suit injunction is a judicial order that restrains a party from initiating or continuing legal proceedings in another jurisdiction. Conversely, an anti-enforcement injunction restrains the enforcement of such an anti-suit injunction in the domestic jurisdiction. These remedies are contentious as they touch upon the sovereignty of courts and the principle of comity, i.e., mutual respect between courts of different jurisdictions.

Detailed Discussion on Judgments along with Complete Citation and Context:

The Court referred to IPCom GmbH & Co KG v. Lenovo Technology (UK) Ltd. [2019] EWCA Civ 38, which highlighted the exceptional nature of anti-enforcement injunctions and their impact on foreign judicial orders. The Court also relied on Huawei v. Conversant Wireless Licensing S.A.R.L. [2020] UKSC 37, where the UK Supreme Court upheld jurisdiction to determine global FRAND royalty terms and emphasized that courts could proceed with FRAND cases despite parallel foreign proceedings. In Modi Entertainment Network v. WSG Cricket Pte Ltd., (2003) 4 SCC 341, the Supreme Court of India held that anti-suit injunctions can be granted when foreign proceedings are oppressive, vexatious, or interfere with the domestic forum’s jurisdiction. The Court cited Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803), to affirm the right of litigants to seek redress under Indian law and the importance of judicial review.

Detailed Reasoning and Analysis of Judge:

The Delhi High Court reasoned that patent rights are inherently territorial, and Indian courts have exclusive jurisdiction over the enforcement of Indian patents. The Court held that the enforcement of the Wuhan Court’s anti-suit injunction in India would infringe InterDigital’s constitutional rights under Articles 14 and 21 and undermine India’s public policy. The Court concluded that comity of courts cannot override a litigant’s right to access Indian courts, particularly in patent disputes governed by Indian law. The Court further reasoned that granting an anti-enforcement injunction was necessary to protect Indian sovereignty and judicial autonomy.

Final Decision:

The Delhi High Court granted an anti-enforcement injunction, restraining Xiaomi from enforcing the Wuhan Court’s anti-suit injunction in India. The Court held that Indian courts are competent to adjudicate disputes concerning Indian patents and no foreign court could restrict access to Indian legal remedies.

Law Settled in this Case:

The judgment establishes that Indian courts have exclusive jurisdiction over Indian patent disputes and that foreign anti-suit injunctions cannot restrict access to Indian courts. The case also affirms the enforceability of anti-enforcement injunctions to uphold Indian public policy and constitutional rights. Further, the judgment clarified that the principles of comity cannot override the territorial jurisdiction of Indian courts in patent matters.

Case Title: Interdigital Technology Corporation & Anr. vs Xiaomi Corporation & Ors.

Date of Order: 3rd May 2021

Case No.: CS(COMM) 295/2020

Neutral Citation: 2021 SCC OnLine Del 4671

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

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

Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks

Fact of the Case:

Raj Vardhan Patodia (HUF) filed an appeal under Section 91 of the Trade Marks Act, 1999 challenging the order dated 12th September 2023 passed by the Registrar of Trade Marks, whereby their opposition to the trade mark application no. 3353986 was deemed abandoned under Rule 45(2) of the Trade Marks Rules, 2017. The Registrar held that the opponent failed to file its evidence affidavit in support of opposition within two months from receipt of the counter statement. The appellant argued that the affidavit was duly sent within time but was misplaced during transit.

Procedural Background (in brief):

The appellant had filed an opposition against the respondent’s trademark application. The Registrar recorded that despite a hearing, the appellant did not justify why it failed to file evidence on time. Consequently, the opposition was treated as abandoned under Rule 45(2). The appellant filed this appeal claiming that the affidavit in support of opposition had indeed been sent on 1st and 2nd February 2022, along with courier receipts, but was lost in transit. The appellant also filed an affidavit before the Registrar explaining these circumstances, but the Registrar still passed the abandonment order.

Provision of law referred in case and context:

The Court relied on Rule 14 of the Trade Marks Rules, 2017, which specifies that service is deemed completed when documents are properly addressed and put into post, and that proving dispatch is sufficient. The Court did not rely on external case law but applied this statutory principle in favor of the appellant.

Reasoning of Court:

The Court noted that under Rule 14(3) of the Trade Marks Rules, it is sufficient to prove that the document was addressed correctly and dispatched. The appellant furnished courier receipts and an affidavit showing that the affidavit in support of opposition was sent on time to both the Trade Marks Registry and the respondent. The Court observed that the loss of the documents in transit was not attributable to the appellant. Further, the Court stressed that principles of natural justice required that the opposition be considered on merits, as the appellant had complied with the procedural requirements. Therefore, the abandonment order was unsustainable.

Decision:

The Court set aside the order dated 12th September 2023 passed by the Registrar of Trade Marks. The appellant's opposition was restored, and the Trade Marks Registry was directed to take the appellant's evidence affidavit on record. The respondent was directed to file its evidence in reply as per rules. The Court also ordered cancellation of the trademark registration granted to the respondent in application no. 3353986.

Case Title: Raj Vardhan Patodia (HUF) vs Registrar of Trade Marks & Anr.

Date of Order: 18th March 2025

Case Number: C.A.(COMM.IPD-TM) 3/2024

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Tapesh Pal Vs The State of West Bengal

Fact of the Case:

The petitioner, Mr. Tapesh Pal, filed a criminal revision petition seeking to quash criminal proceedings against him, including the charge sheet arising out of Amherst Street Police Station Case No. 311 dated 11.11.2019. The case was registered under Sections 420/120B of the IPC and Section 63 of the Copyright Act, 1957. The case stemmed from a complaint by Aman Preet, who alleged that counterfeit and infringing sports goods under the brands "SG" and "Nivia" were being sold by unauthorized dealers. During a raid, counterfeit products were recovered from a shop where Mr. Tapesh Pal was present.

Procedural Background (in brief):

Following the complaint, an FIR was registered against unknown accused persons. After investigation, a charge sheet was filed against Mr. Tapesh Pal under Section 63 of the Copyright Act. The Magistrate took cognizance and issued process against him. The petitioner moved the High Court under Section 482 CrPC to quash the proceedings, arguing that he was not the shop owner and that the complaint was procedurally defective as it was filed in the complainant's individual capacity instead of by the authorized company.

Judgments referred in case with complete citation and context:

The petitioner relied on Mehmood Ul Rehman and Ors. v. Khazir Mohammad Tunda and Ors., (2015) 12 SCC 420, to argue that cognizance should not be taken mechanically and should be based on the Magistrate's application of mind to the complaint and material on record. The petitioner also cited Shankar Finance and Investments v. State of Andhra Pradesh and Ors., (2008) 8 SCC 536, to assert that delegation of power to lodge a complaint must follow legal formalities and cannot be loosely interpreted. Another case referred to was A.R. Antulay v. Ramdas Sriniwas Nayak and Ors., AIR 1984 SC 718, where the Court emphasized that statutory requirements must be strictly followed. The petitioner also relied on The State of Haryana v. Bhajan Lal, AIR 1992 SC 604, to argue that criminal proceedings can be quashed if they amount to an abuse of process. Further, Parbatbhai Aahir alias Parbatbhai Bhimsinhbhai Karmur and Ors. v. State of Gujarat and Anr., (2017) 9 SCC 641, was cited regarding the limited and cautious application of inherent powers under Section 482 CrPC. In response, the opposite party referred to Mita India Pvt. Ltd. v. Mahendra Jain, 2023 (3) SCALE 18, to submit that sub-delegation by a power of attorney holder is valid if permitted by specific authorization.

Reasoning of Court:

The Court found that counterfeit goods bearing "SG" and "Nivia" marks were recovered from the shop where the petitioner was present. The petitioner had failed to provide valid documentation or explanation regarding the possession of the counterfeit goods, nor could he establish through evidence that he was not responsible for managing the shop. The Court also noted that authorizations and documents regarding the delegation of power raised disputed facts that could only be determined during trial. The Court held that the petitioner’s contentions regarding the lack of proper complaint procedure and lack of his liability required factual adjudication through evidence, which could not be resolved at this stage. Further, the Investigating Officer’s findings and the seizure of infringing goods established a prima facie case under Section 63 of the Copyright Act against the petitioner.

Decision:

The High Court dismissed the Criminal Revisional application, holding that there was no abuse of process and that the matter should proceed to trial. The Court emphasized that the petitioner's innocence or involvement should be determined after evidence is led during trial.

Case Title: Mr. Tapesh Pal vs The State of West Bengal & Another

Date of Order: 12th March 2025

Case Number: CRR 2057 of 2021

Neutral Citation: Not specified in the document

Name of Court: High Court at Calcutta, Appellate Side

Name of Hon'ble Judge: Hon'ble Mr. Justice Ajay Kumar Gupta

Mannat Group of Hotels Private Limited Vs Mannat Dhaba

Fact of the Case:

Mannat Group of Hotels Private Limited and its managing director, Mr. Virender Singh Kadyan (plaintiffs), filed a suit seeking a permanent injunction against M/s Mannat Dhaba and others (defendants) for trademark infringement and passing off. The plaintiffs, who have been using the brand "MANNAT" since 2008 for their hotel and restaurant business, alleged that the defendants were operating restaurants under deceptively similar names such as "MANAT DHABA," "MANNATT DHABA," and others on the Delhi-Dehradun highway. The plaintiffs contended that the defendants were deliberately copying their marks and goodwill to mislead consumers into believing that their establishments were associated with the plaintiffs.

Procedural Background (in brief):

The suit was filed in December 2023, and the Court granted an ex-parte ad-interim injunction in favor of the plaintiffs on 4th January 2024. Despite service, the defendants did not file any written statement, leading to the closure of their right to file the same on 21st August 2024. The plaintiffs later submitted that defendants no. 2 and 3 had changed their branding, so no reliefs were pressed against them, and they were removed from the array of parties. Defendants no. 1 and 4 were proceeded ex-parte.

Judgments referred in case with complete citation and context:

The Court referred to Foodlink F and B Holdings India Private Limited v. Wow Momo Foods Private Limited, 2023 SCC OnLine Del 4719. In that judgment, the Court highlighted that the test for consumer confusion is based on the perspective of a customer of average intelligence and imperfect recollection. If such a consumer, after encountering both marks at different times, wonders whether they are connected, then "initial interest confusion" is established. This principle was applied here to show that the defendants’ use of deceptively similar marks was likely to mislead the public.

Reasoning of Court:

The Court noted that since defendants no. 1 and 4 did not file any written statement or affidavit of admission/denial, the plaintiffs' averments and documents were deemed admitted as per Rule 3 of the Delhi High Court (Original Side) Rules, 2018. The Court observed that the defendants had slavishly imitated the plaintiffs’ "MANNAT" marks and branding for identical services (restaurant operations), leading to a likelihood of confusion and misrepresentation to the public. The Court concluded that the defendants' actions amounted to clear trademark infringement and passing off, with mala fide intent to ride on the plaintiffs’ goodwill and reputation.

Decision:

The Court decreed a permanent injunction in favor of the plaintiffs and against defendants no. 1 and 4, restraining them from using the infringing marks or any deceptively similar branding. The plaintiffs did not press for other reliefs, and the pending applications were disposed of.

Case Title: Mannat Group of Hotels Private Limited Vs Mannat Dhaba 

Date of Order: 12th March 2025

Case Number: CS(COMM) 859/2023

Neutral Citation: Not specified in the document

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

The Indian Hotels Company Limited Vs Gaurav Roy Bhatt & Anr.

Fact of the Case:

The Indian Hotels Company Limited (plaintiff), part of the Tata Group and owner of the renowned TAJ brand, filed a suit against Gaurav Roy Bhatt & Anr. (defendants) for infringement of their TAJ trademarks, copyright, and passing off. The plaintiff has been operating under the TAJ marks since 1903, with its first hotel being The Taj Mahal Palace, Mumbai. The plaintiff has expanded its hospitality services across 13 countries and more than 130 locations globally. The plaintiff alleged that the defendants' activities were unauthorized and detrimental to the goodwill and reputation of the TAJ marks.

Procedural Background (in brief):

The suit was filed in 2023, and summons were issued on 10th October 2023. On the same date, the Court granted an ex-parte ad-interim injunction and appointed a Local Commissioner. The defendants appeared on 21st November 2023 and filed a written statement. On 24th January 2025, the defendants conceded and agreed to a decree of permanent injunction. Subsequently, the plaintiff pressed for a declaration of its TAJ marks as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act, 1999, which was not opposed by the defendants. The plaintiff filed supporting affidavits and led evidence, following which the Court proceeded to decide the issue.

Provision of law referred in case  and context:

The Court referred to and relied upon the statutory framework under Section 11(6) and 11(7) of the Trade Marks Act, 1999, which lists the factors to be considered in determining whether a mark qualifies as a well-known trademark. These provisions highlight the importance of a mark’s recognition among the public, its duration and geographical extent of use and promotion, its registrations, and its enforcement history. The Court also cited its previous judgment in The Indian Hotels Company Limited v. Grand Vivanta Vacations Private Limited, CS(COMM) 560/2022, where the plaintiff’s "VIVANTA" mark was declared a well-known trademark in relation to hotels.

Reasoning of Court:

The Court observed that the plaintiff had satisfied all the statutory factors outlined under Sections 11(6) and 11(7) of the Trade Marks Act. The Court noted that the TAJ marks had been in continuous and extensive use since 1903 and were widely recognized in India and internationally. The Court also relied on the plaintiff’s substantial presence in the hospitality industry with over 350 hotels globally, widespread advertising and promotions, significant revenue and brand recognition. The Court accepted the evidence showing that the TAJ marks had been awarded and recognized across multiple platforms, had a large social media following, and were associated with India’s heritage and culture. Additionally, the plaintiff had a successful record of enforcing its trademark rights against third parties in previous suits. On this basis, the Court concluded that the TAJ marks enjoy immense goodwill and reputation, thereby fulfilling the criteria for being declared as well-known marks under Indian trademark law.

Decision:

The Court passed a decree of permanent injunction against the defendants in terms of the plaintiff’s earlier reliefs and declared the TAJ marks as well-known trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

Case Title: The Indian Hotels Company Limited Vs Gaurav Roy Bhatt

Date of Order: 11th March 2025

Case Number: CS(COMM) 717/2023

Neutral Citation: 2025:DHC:1714

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

FMC Corporation Vs Hindustan Fertilizers

Factual Background:

FMC Corporation and its subsidiaries filed a suit against Hindustan Fertilizers Private Limited and another entity for trademark infringement and passing off concerning their registered trademark "CORAGEN." The plaintiffs, global leaders in agricultural sciences, had been using the mark since 2006 and had built significant goodwill. The defendants were found to be using the deceptively similar mark "CORAGIN" for the same class of products, causing confusion among consumers, particularly farmers. The plaintiffs discovered the infringing products being marketed on e-commerce platforms, leading to the present suit.

Procedural Background:

The suit was filed seeking a permanent injunction, and the court initially granted an ex-parte ad-interim injunction against the defendants. A local commissioner was appointed to seize infringing products, but the defendants' addresses were found incorrect. The court allowed substituted service through publication. As the defendants failed to appear, they were proceeded against ex-parte, and no written statement was filed, leading to the matter being decided based on the plaintiffs’ claims.

Provisions of Law Referred and Their Context:

The court applied provisions of the Trade Marks Act, 1999, to assess infringement and passing off. Order VI Rule 17 CPC was invoked for amendment of the plaint. Order VIII Rule 10 CPC allowed the suit to be decreed in the absence of a written statement. The Delhi High Court (Original Side) Rules, 2018, were referred to deem the plaintiffs' documents admitted due to non-denial by the defendants.

Reasoning of Court:

The court found that the defendants’ mark "CORAGIN" was deceptively similar to "CORAGEN" and that their packaging, color scheme, and design also mimicked the plaintiffs' branding. Given that the products were agricultural pesticides targeted at farmers, who may not carefully distinguish between similar-looking brands, the likelihood of confusion was high. The defendants’ continued unauthorized use of the plaintiffs’ mark without appearing in court indicated a lack of defense. The plaintiffs’ reputation and goodwill were at risk due to misrepresentation by the defendants.

Decision:

The court passed a decree of permanent injunction restraining the defendants from using "CORAGIN" and similar marks. The plaintiffs' claims were upheld under trademark infringement and passing off laws. The court noted that the defendants' failure to appear or contest the case further justified the reliefs sought. A decree sheet was ordered to be drawn up, and all pending applications were disposed of.

Case Title: FMC Corporation Vs. Hindustan Fertilizers Private Limited 

Date of Order: 11th March 2025

Case Number: CS(COMM) 652/2024

Neutral Citation: 2025:DHC:1704

Court: High Court of Delhi

Hon’ble Judge: Justice Amit Bansal

Milliken and Company Vs Controller of Patents and Designs

Fact of the Case:

Milliken and Company, the appellant, challenged the refusal of their Indian patent application (no. 6093/DELNP/2013) for "Additive Compositions and Thermoplastic Polymer Compositions Comprising the Same" by the Assistant Controller of Patents and Designs. The rejection was based on two grounds: lack of inventive step and insufficiency of disclosure. Milliken contended that the Assistant Controller failed to consider a crucial statement by Dr. Nathan A. Mehl, an expert and employee of the company, filed during the post-hearing submissions.

Procedural Background (in brief):

The patent application was filed in India in 2013 and went through various stages, including the issuance of the First Examination Report (FER) and a pre-grant opposition. In 2023, the Assistant Controller refused the patent application under Section 15 of the Patents Act, 1970. The appellant then filed this appeal under Section 117(A) of the Patents Act, arguing that procedural irregularity occurred due to non-consideration of Dr. Mehl’s statement, which addressed key objections. The matter was heard on 13th November 2024 and 11th March 2025.

Reasoning of Court:

The Court held that the appellant had submitted the expert statement of Dr. Nathan A. Mehl within the permissible time frame under Rule 28(7) of the Patent Rules, 2003. The Court rejected the respondent’s argument that Dr. Mehl’s status as an employee invalidated the independence or weight of his statement. The Court emphasized that industry experts, even if employees, are often competent to provide technical clarifications.

Additionally, the Court clarified that decisions of foreign patent offices, such as the European Patent Office’s rejection of Dr. Mehl’s statement, are not binding on Indian authorities. To support this view, the Court referred to the judgment in Communication Components Antenna Inc. v. Ace Technologies Corp. and Ors., 2019 SCC OnLine Del 9123, where it was held that foreign patent grants or rejections have only a persuasive value and cannot dictate the decision-making process of the Indian Patent Office. The Delhi High Court in that case had stated that claims in foreign jurisdictions could be referred to ensure that the invention is broadly the same and to avoid "evergreening" but cannot be treated as determinative for the Indian decision-making process.

Based on this, the Court concluded that the Assistant Controller should have independently evaluated Dr. Mehl’s statement.

Decision:

The Court remanded the matter back to the Assistant Controller of Patents and Designs for a fresh hearing and a de novo consideration of the patent application, specifically directing the Assistant Controller to assess Dr. Nathan A. Mehl’s statement on merits. A fresh speaking order was directed to be passed following the hearing.

Case Title: Milliken and Company vs Controller of Patents and Designs & Anr.

Date of Order: 11th March 2025

Case Number: C.A.(COMM.IPD-PAT) 15/2023

Neutral Citation: Not provided in the document

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Himalaya Global Holdings Ltd. Vs Rajasthan Aushdhalaya Pvt. Ltd

Factual Background:

Himalaya Global Holdings Ltd. and its subsidiary, leading herbal health product manufacturers, filed a suit against Rajasthan Aushdhalaya Private Limited for trademark infringement. The plaintiffs alleged that the defendants' marks "Liv-333" and its associated logo were deceptively similar to their registered trademarks "Liv.52" and "Himalaya." The plaintiffs' "Liv.52" brand has been in use since 1955 and enjoys significant goodwill in the market. Despite a cease-and-desist notice, the defendants continued using the allegedly infringing marks.

Procedural Background:

The suit was filed seeking a permanent injunction and other reliefs. The court granted an ex-parte ad-interim injunction restraining the defendants from using the disputed marks. The defendants failed to file a written statement within the prescribed period, leading to the closure of their right to do so. The plaintiffs sought judgment under Order VIII Rule 10 of the CPC due to the defendants’ failure to defend the suit.

Provisions of Law Referred and Their Context:

Order VIII Rule 10 of the CPC was invoked to pronounce judgment in the absence of a written statement. Sections of the Trade Marks Act, 1999, concerning trademark infringement and passing off were relied upon to establish the plaintiffs’ exclusive rights over "Liv.52." The court also considered Order XXXIX Rule 2A CPC regarding violation of its injunction order.

Judgments Referred with Citation and Context:

The court relied on Himalaya Drug Company v. S.B.L. Limited, 2012 SCC OnLine Del 5701, which restrained another entity from using "LIV" in a similar context, confirming that even a slight modification does not prevent infringement. Additionally, Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 was cited, emphasizing stricter protection for pharmaceutical trademarks due to public health concerns. The decision in Impresario Entertainment & Hospitality Pvt. Ltd. v. Mocha Blu Coffee Shop, 2018 SCC OnLine Del 12219 was referred to support decreeing cases where defendants fail to file a written statement.

Reasoning of Court:

The court found that "LIV" is the dominant part of the plaintiffs' mark, and the addition of "333" by the defendants did not sufficiently differentiate it. Given the strong consumer association with "Liv.52," the similarity was likely to cause confusion. The court noted that continued use of the infringing mark even after the injunction order demonstrated willful disobedience. It observed that trademark laws must be strictly enforced in cases of medicinal products to prevent confusion that could lead to adverse health consequences.

Decision:

The suit was decreed in favor of the plaintiffs. The defendants were permanently restrained from using "Liv-333" or any other mark deceptively similar to "Liv.52." The court awarded ₹10,91,567 as costs and ₹20 lakhs in damages, citing the need for deterrence. The decree was passed under Order VIII Rule 10 CPC due to the defendants’ failure to file a defense.

Case Title: Himalaya Global Holdings Ltd. Vs Rajasthan Aushdhalaya Private Ltd.

Date of Order: 25.02.2025 

Case Number: CS(COMM) 433/2024

Neutral Citation:2025:DHC:1670

Hon’ble Judge: Justice Mini Pushkarna

Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd

One Registered Proprietor of Design against another registered Proprietor of Design

Introduction:

This case concerns a design infringement dispute where Indo Asahi Glass Co. Ltd., the plaintiff, alleged that Jai Mala Roller Glass Ltd., the defendant, infringed its registered design titled "KONOHA" under the Designs Act, 1911. Indo Asahi sought interim relief by way of injunction and other remedies to restrain the defendant from using the allegedly infringing design "DHOOP CHAON" on its glass sheets.

Detailed Factual Background:

Indo Asahi Glass Co. Ltd. is engaged in manufacturing, selling, and dealing with various glass products, including figured glass. The plaintiff is the registered proprietor of a design called "KONOHA" under Registration No. 158266 in Class IV from April 24, 1987. The registration was renewed for a further period from October 31, 1991. Indo Asahi has been using this design extensively since 1987 and claimed substantial goodwill and reputation in the market.

In December 1992, Indo Asahi discovered that Jai Mala Roller Glass Ltd. had allegedly started manufacturing glass sheets with a design similar or deceptively similar to "KONOHA," which the defendant marketed under the name "DHOOP CHAON." Indo Asahi contended that the defendant’s design was visually similar and amounted to an infringement of its registered design, causing business losses. Indo Asahi sought damages of Rs. 6,00,000 along with an injunction.

Detailed Procedural Background:

The plaintiff filed the suit for injunction and damages. During the pendency of the suit, Indo Asahi moved an interlocutory application seeking an interim injunction to restrain the defendant from further using the allegedly infringing design. The defendant opposed the application and also filed a petition (CO 2 of 1993) under Section 51-A of the Designs Act, 1911 for cancellation of the plaintiff’s registered design, arguing that the design lacked originality.

Issues Involved in the Case:

The primary issue was whether the plaintiff was entitled to interim relief despite the pending cancellation petition filed by the defendant challenging the validity of the plaintiff’s registered design? The case also addressed whether the defendant’s use of "DHOOP CHAON" infringed Indo Asahi's registered "KONOHA" design.

Detailed Submission of Parties:

The plaintiff asserted that it was the lawful registered proprietor of the "KONOHA" design and that the defendant’s "DHOOP CHAON" design was deceptively similar, causing confusion and loss to its business. Indo Asahi contended that the registration was valid and enforceable and that the defendant started using the impugned design after 1993, well after the plaintiff’s registration.

The defendant argued that the plaintiff suppressed material facts by not disclosing that the design originated from a Tokyo-based company. It further submitted that the design was neither new nor original, as similar designs had been previously published and used internationally, including by German company Dornbusch GMBH, from whom the defendant allegedly sourced its design.The defendant also claimed that a cancellation petition under Section 51-A had been filed, and until the cancellation was adjudicated, the plaintiff should not be granted interim relief.

Detailed Discussion on Judgments along with their Complete Citation and Context:

The defendant relied on M/s. Nikitasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136, to argue that an injunction should not be granted where the design's validity is disputed and a cancellation petition is pending.The plaintiff cited M/s. Western Engineering Co. v. M/s. America Lock Co., (1973) II Delhi 177, where it was held that infringement must be judged by the eye alone, and minor variations in design do not negate infringement if the two designs are visually similar under normal usage.The court also referred to V.D. Ltd. v. Boston Deep Sea Fishing & Ice Co. Ltd., 52 RPC 303, which discussed what constitutes prior publication and held that private communication or circulation of catalogues does not amount to public disclosure unless there is effective publication accessible to the public.The defendant invoked M/s. Tobu Enterprises Pvt. Ltd. v. M/s. Megha Enterprises, 1983 PTC 359, where it was held that when both parties have registered designs, no injunction should be granted merely based on prior registration.

Detailed Reasoning and Analysis of Judge:

Justice P. K. Bahri analyzed the evidence and arguments, noting that Indo Asahi's design had been registered since 1987, was renewed, and had been used continuously, giving it market recognition. The defendant had only recently started using the allegedly infringing design in 1993.While acknowledging that the defendant's cancellation petition under Section 51-A raised valid issues about prior publication, the court noted that no conclusive evidence was provided to prove that the design had been published or used in India prior to the plaintiff's registration. The court emphasized that mere receipt of a catalogue from a German company did not establish public availability of the design in India.The judge observed that although the two designs appeared substantially similar, given that both parties held registered designs and relying on the precedent from Tobu Enterprises (1983), Indo Asahi was not entitled to interim injunctive relief until the dispute over validity was resolved.The judge, however, directed the defendant to maintain proper accounts of sales made under the impugned design and to file quarterly reports with the court to safeguard the plaintiff’s potential right to claim damages if successful at trial.

Final Decision:

The court declined to grant the temporary injunction sought by Indo Asahi. However, it directed Jai Mala Roller Glass Ltd. to maintain accurate records of sales involving the impugned design and to file quarterly statements in court until the suit’s final disposal.

Law Settled in this Case:

The judgment reaffirmed that where both parties hold registered designs, interim injunctions may not be granted solely on the basis of prior registration. The court also emphasized that alleged prior publication must be substantiated with clear evidence of public disclosure in India. The ruling balances protection of registered rights with the need to prevent unjustified restraints on business activities pending final adjudication.

Case Title: Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd. and Another

Date of Order: 19 December 1994

Citation: 1995(33)DRJ317

Name of Court: High Court of Delhi

Name of Judge: Justice P. K. Bahri

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

Hindustan Lever Limited Vs Lalit Wadhwa

A patentee can sue another patentee for Patent infringement

Introduction:

The present case concerns a patent infringement dispute between Hindustan Lever Limited (HLL) and the defendants Mr. Lalit Wadhwa and Eureka Forbes Ltd. (Defendant No. 2). The plaintiff alleged that the defendants infringed its patent concerning a gravity-fed water purification system and sought remedies including permanent injunction, rendition of accounts, and damages. The case also involved the question of whether one patentee can sue another patentee for infringement, jurisdictional challenges, and whether a company officer could be impleaded in the suit.

Detailed Factual Background:

HLL claimed to be engaged in manufacturing various consumer products and had developed a gravity-fed water purification system in 2002, which ensured high microbiological purity in drinking water. HLL filed an Indian patent application No. 539/MUM/2003 in June 2002, leading to the grant of patent No. 198316 on January 9, 2006. The plaintiff alleged that Defendant No. 2, Eureka Forbes Ltd., launched a competing water purification system under the brand name "Forbes Aquasure" around September 2004, which allegedly infringed the substance of HLL’s patent.

The plaintiff also alleged that Defendant No. 3 (non-party to this application) had filed for its patent on March 29, 2004, which was subsequently granted. However, HLL argued that the defendant's product still infringed its earlier patented invention.

Detailed Procedural Background:

The plaintiff filed a suit for patent infringement before the Delhi High Court seeking reliefs under Sections 48 and 108 of the Patents Act, 1970. The defendants responded by filing two interlocutory applications: one under Order 7 Rule 11 CPC for rejection of the plaint on the grounds of lack of cause of action, territorial jurisdiction, and absence of proper authorization; and another under Order 1 Rule 10 CPC seeking deletion of Defendant No. 1, Mr. Lalit Wadhwa, on the ground that he was neither a necessary nor a proper party.

Issues Involved in the Case

The key issues were whether a patentee can sue another patentee for patent infringement?

Detailed Submission of Parties:

The defendants contended that the suit should be dismissed for non-disclosure of a cause of action since one patentee cannot sue another for infringement. They also argued that the plaintiff had no sales in Delhi, thereby ousting the territorial jurisdiction of the Delhi High Court. Further, they submitted that Defendant No. 1, Mr. Lalit Wadhwa, was impleaded only to create jurisdiction and to obtain an interim injunction without proper notice to the defendants.

The plaintiff argued that a patentee's right is exclusionary, enabling it to prevent even another patentee from infringing its patent. It contended that Section 48 of the Patents Act grants a right to stop others from making, using, or selling the patented product regardless of their patent status. The plaintiff further asserted that infringement occurred in Delhi as the impugned product was sold there, giving the Court territorial jurisdiction. As to Defendant No. 1, the plaintiff invoked Section 124 of the Patents Act, which imposes liability on persons in charge of the company at the time of infringement.

Detailed Discussion on Judgments along with their Citations and Context:

The plaintiff cited "Patents for Chemicals, Pharmaceuticals, and Biotechnology" by Philip W. Grubb, where it is explained that patents grant exclusionary rights, i.e., they do not allow patentees to practice the invention if doing so would infringe another patent.The plaintiff relied on Alert India v. Naveen Plastics & Anr., 1997 PTC (17) 15, which held that a prior proprietor of a design copyright has a preferential right over a subsequent registrant.The defendants relied on Tobu Enterprises Pvt. Ltd. v. Megha Enterprises, 1983 PTC 359, Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd. and Anr., 1995 (33) DRJ 317 (Del), and S.S. Products of India v. Star Plast, 2001 (21) PTC 835 (Del), to argue that courts have refused interim injunctions where the defendant also holds a design registration.The plaintiff countered these citations by distinguishing that those decisions were under the Designs Act, 1911 and not under the Patents Act, 1970, and relied on Pfizer Products Inc. v. Rajesh Chopra, (2006) 32 PTC 301 (Del), L.G. Corporation v. Intermarket Electroplasters Pvt. Ltd., (2006) 32 PTC 429 (Del), and S. Oliver Bernd Freier GmbH & Co. K.G. v. Karni Enterprises, (2006) 33 PTC 574 (Del), to argue that sale within Delhi constituted part of the cause of action.

Detailed Reasoning and Analysis of Judge:

The Court held that a patentee’s right is indeed exclusionary, as clarified by Philip W. Grubb. Section 48 grants a right to prevent third parties from infringing the patented product irrespective of the defendant’s patent status. The Court rejected the argument that a suit for patent infringement is not maintainable against another patentee, clarifying that Section 107 allows the defendant to raise any grounds for revocation under Section 64 as a defense, but this does not bar the suit itself.On jurisdiction, the Court held that the cause of action arose in Delhi as the impugned product was admittedly being sold there, satisfying the requirement under Section 20(c) of the CPC. As for impleadment of Defendant No. 1, the Court found that Section 124, which imposes penal liability on persons in charge of a company, did not apply in civil infringement cases. Since no specific role was attributed to Mr. Wadhwa in the alleged infringement, the Court held that he was neither a necessary nor a proper party.

Final Decision:

The Court dismissed the defendant’s application under Order 7 Rule 11 CPC and held that the suit disclosed a valid cause of action, was maintainable, and the Delhi High Court had territorial jurisdiction. However, the Court allowed the application under Order 1 Rule 10 CPC and deleted Defendant No. 1, Mr. Lalit Wadhwa, from the array of parties.

Law Settled in this Case:

The Court affirmed that a patentee can sue another patentee for infringement, as patents confer exclusionary rights. The judgment clarified that the existence of a defendant’s patent does not immunize it from infringement actions. Further, it held that sales in a jurisdiction provide sufficient cause of action for territorial jurisdiction.

Case Title: Hindustan Lever Limited Vs Mr. Lalit Wadhwa and Another

Date of Order: 10 August 2007

Case No.: CS(OS) No. 1707/2006

Neutral Citation: (2007) 35 PTC 377

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Justice Vipin Sanghi

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

Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Introduction:

This case relates to a dispute between Havells India Limited and Panasonic Life Solutions India Pvt. Ltd. over allegations of design infringement and passing off. Havells India Limited, the plaintiff, alleged that Panasonic infringed its registered designs for ceiling fans under its ENTICER and ENTICER ART series and simultaneously passed off its goods as those of Havells. The case explores the interplay between statutory design rights and common law remedies of passing off.

Detailed Factual Background:

Havells India Limited is the registered proprietor of several ceiling fan designs, including its ENTICER, ENTICER ART, and ENTICER ART-NS STONE series. These designs feature unique attributes such as minimalistic rectangular ornamentation with metallic borders on the fan blades, chamfered edges, and concave curves towards the motor, among other distinctive features. The plaintiff has invested significantly in the marketing and promotion of these designs, with cumulative sales of approximately Rs. 527.48 Crores and a promotion budget of Rs. 12.91 Crores for 2020-21.

In March 2022, Havells discovered that Panasonic was about to launch its VENICE PRIME series of ceiling fans, which allegedly copied the essential and distinctive features of the ENTICER series. The Plaintiff argued that Panasonic's VENICE PRIME fans were visually similar and likely to confuse customers, leading to an action for both infringement of design rights and passing off.

Detailed Procedural Background

The plaintiff filed CS(COMM) 261/2022 before the Delhi High Court, seeking an injunction against Panasonic from manufacturing, marketing, or selling ceiling fans that were identical or deceptively similar to Havells’ registered designs. The case also involved an application under Order XXXIX Rules 1 and 2 CPC for interim relief. Panasonic challenged the maintainability of the composite suit on the grounds that infringement of registered design and passing off claims could not be pursued together. Panasonic further alleged that Havells’ designs lacked novelty and were liable to be cancelled.

Issues Involved in the Case:Whether a composite suit for infringement of registered design and passing off is maintainable?Whether Havells' claims for statutory design infringement and common law passing off are mutually destructive?

Detailed Submissions of Parties:

The plaintiff contended that the VENICE PRIME fans by Panasonic copied the essential features of the ENTICER and ENTICER ART series, amounting to infringement under the Designs Act, 2000, and passing off. It asserted that under settled law, particularly the decision in Mohan Lal v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980, a registered design owner could simultaneously claim relief for passing off.

Panasonic argued that the plaintiff could not pursue both claims in one suit, relying on Carlsberg Breweries A/S v. Som Distilleries, 2018 SCC OnLine Del 12912, and Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del). Panasonic also argued that Havells' designs lacked novelty, citing prior art and third-party publications to suggest that the registered designs were common in the trade.

Detailed Discussion on Judgments Cited by Parties; Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980: This Full Bench decision held that an action for passing off could be pursued along with a design infringement claim, provided the passing off claim extended beyond the registered design into the overall trade dress. Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912: The Five-Judge Bench ruled that a composite suit for design infringement and passing off is maintainable under Order II Rule 3 CPC. However, it also reaffirmed that a design per se used as a trademark could render the design registration vulnerable.  Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del): This judgment interpreted Carlsberg to suggest that a passing off claim could not coexist with a design infringement action. However, the Single Judge in the present case noted that this view was not binding as it conflicted with Carlsberg's Full Bench decision. RB Health (US) LLC & Ors. v. Dabur India Ltd., 2020 (84) PTC 492 (Del): This case reiterated the "classical trinity" test for passing off – goodwill, misrepresentation, and damage. Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65: The Supreme Court recognized that even in the absence of malice, a likelihood of confusion suffices for a passing off action.Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565: This Bombay High Court judgment held that distinct get-up and trade dress are protectable under common law.

Detailed Reasoning and Analysis of Judge:The Court held that a registered design holder could bring simultaneous claims for design infringement and passing off, provided the passing off action was based on the overall trade dress and not restricted to the registered design per se. The Court observed that both statutory infringement and passing off protect different commercial interests – the former safeguards design novelty, while the latter prevents customer confusion due to misrepresentation.  The Court found that Havells' claims were not mutually destructive but were alternative claims permissible under civil procedure rules. On the issue of novelty, the Court rejected Panasonic’s argument that marble patterns are common and cited estoppel principles because Panasonic itself had applied for a similar design registration. The Court also rejected the claim that Havells suppressed material facts regarding pending cancellation proceedings, noting that no official cancellation notice had been received from the Controller of Designs.  Applying the "classical trinity" test, the Court held that Havells had a strong prima facie case based on its established goodwill and reputation, the likelihood of deception due to Panasonic's VENICE PRIME series, and the potential damage to Havells' business.

Final Decision:

The Court granted an interim injunction restraining Panasonic and its associates from manufacturing, marketing, or selling ceiling fans under the VENICE PRIME series or any other fans that were deceptively similar to Havells' ENTICER ART series during the pendency of the suit.

Law Settled in this Case:

A composite suit for infringement of a registered design and passing off is maintainable, and such claims are not inherently mutually destructive. The decision reaffirmed the legal position laid down by the Full Bench in Carlsberg and Mohan Lal that a passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Case Title: Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Date of Order: 31 May 2022

Case No.: CS(COMM) 261/2022

Neutral Citation: 2022 SCC OnLine Del 1863

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Justice Jyoti Singh

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

PepsiCo Inc.Vs. Parle Agro Private Limited

Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination 

Introduction:

This case involves a trademark infringement suit between two global FMCG giants, PepsiCo Inc. and Parle Agro Private Limited, relating to the tagline "For The Bold." The case primarily focuses on the alleged infringement of PepsiCo's registered trademark by Parle Agro’s use of the phrase in relation to its beverage product "B Fizz". PepsiCo seeks a permanent injunction restraining Parle Agro from using the allegedly infringing tagline, claiming exclusive rights over the registered trademark “For The Bold” under Class 30. Parle, in turn, challenges the validity of PepsiCo’s trademark registration, contending that the tagline is descriptive and lacks distinctiveness.

Factual Background:

PepsiCo is the registered proprietor of the trademark "For The Bold" under Class 30, which includes snack foods like tortilla chips. PepsiCo introduced this tagline globally in 2013 with its DORITOS range and began using it in India in 2015. The tagline is heavily associated with PepsiCo’s DORITOS brand, emphasizing bold flavors and adventurous experiences. PepsiCo claims substantial sales and advertisement expenditure for DORITOS in India, with significant market recognition and goodwill attached to the “For The Bold” mark.

In October 2020, Parle Agro launched its product "B Fizz," a malt-flavored fruit juice-based beverage. PepsiCo discovered that Parle’s marketing prominently used the tagline "Be The Fizz! For The Bold!" on its products and advertising campaigns. PepsiCo alleges that the tagline is deceptively similar to its registered mark and amounts to infringement under Section 29 of the Trade Marks Act, 1999.

Procedural Background:

PepsiCo filed CS (COMM) 268/2021 before the Delhi High Court, seeking a permanent injunction against Parle Agro and an interlocutory injunction through IA 7170/2021 under Order XXXIX Rules 1 and 2 of the CPC. In response, Parle Agro filed IA 9591/2021 under Section 124(1)(a)(ii) of the Trade Marks Act, seeking leave to initiate rectification proceedings challenging the validity of PepsiCo’s trademark registration.

Issues Involved in the Case:

Whether Section 124 requires only prima facie plea of invalidity of registered Trademark or a detailed examination of plea of invalidity of registered Trademark?

Submission of Parties:

PepsiCo argued that its tagline "For The Bold" has acquired distinctiveness and goodwill due to its long and consistent use on DORITOS products. The mark is arbitrary in relation to tortilla chips and deserves the highest protection. It also argued that Parle’s use of “For The Bold” in its advertising campaign and product packaging creates a false association with PepsiCo and constitutes trademark infringement and passing off.

Parle Agro contended that "For The Bold" is a descriptive phrase and not inherently distinctive. It argued that PepsiCo does not use "For The Bold" as a primary identifier of its goods, as other slogans such as "Snack Boldly" and "Bold Crunch" have also been used. Parle claimed that PepsiCo’s mark falls under Sections 9(1)(a), 9(1)(b), and 9(1)(c) and lacks distinctiveness. Parle further contended that their beverage and PepsiCo’s tortilla chips fall in different classes (Class 32 vs. Class 30) and there is no likelihood of confusion.

Discussion on Judgments Cited by Parties:

Parle cited Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, for the proposition that balance of convenience is critical when deciding interim injunctions, especially when the defendant’s product has been in the market for a considerable time. Parle relied on Marico Ltd. v. Agro Tech Foods Ltd., 174 (2010) DLT 279 (DB), to argue that courts can assess the validity of the plaintiff’s mark even at the interlocutory stage. Parle also referred to Nestlé India Ltd. v. Mood Hospitality Pvt Ltd., 168 (2010) DLT 663 (DB), to assert that trademarks must be compared as wholes without dissecting them. Stokely Van Camp v. Heinz India Pvt Ltd., 171 (2010) DLT 16 and Stokely Van Camp v. Heinz India Pvt Ltd., MANU/DE/3132/2010, were cited to contend that words like "bold" have descriptive characteristics and are widely used in common parlance. PepsiCo cited Bata India Ltd v. Chawla Boot House, 2019 SCC OnLine Del 8147, to argue that even suggestive marks are entitled to registration and protection under the Trade Marks Act. PepsiCo emphasized Section 31, which provides that registration is prima facie evidence of validity. PepsiCo also invoked the triple identity test from earlier jurisprudence to show that Parle’s tagline subsumes PepsiCo’s mark, creating a likelihood of confusion.

Reasoning and Analysis of the Judge:

The Court noted that Section 31 grants presumption of validity to registered trademarks, but such presumption is rebuttable. Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination. The Court held that Parle’s challenge to the validity of PepsiCo’s trademark under Section 9(1)(a) to (c) was prima facie tenable. The Court found that Parle had pleaded that the mark was descriptive, lacked distinctiveness, and had become customary in trade, thus satisfying the threshold of "prima facie tenability" under Section 124(1)(ii).The Judge observed that the tagline "For The Bold" was explained by PepsiCo as describing the bold flavors and adventurous spirit of DORITOS chips, potentially indicating its descriptive nature.The Court also agreed that the difference in trade channels and product classes (beverages vs. snacks) between Parle’s and PepsiCo’s products raised a genuine question regarding the likelihood of confusion.The Judge held that the Court could not conclusively decide the issue of distinctiveness or descriptiveness without a full trial, but the pleadings were sufficient to allow Parle to file rectification proceedings.The Court rejected PepsiCo’s argument that Parle could not proceed with rectification without leave of Court, noting that Parle had already filed rectification proceedings (C.O. (COMM IPD TM) 5/2021) independently.

Final Decision:

The Court allowed IA 9591/2021 filed by Parle under Section 124(1)(a)(ii) and directed that the trial of CS (COMM) 268/2021 be stayed pending the outcome of Parle’s rectification petition before the IPD (Intellectual Property Division) of the Delhi High Court. The Court deferred any decision on PepsiCo’s interlocutory injunction (IA 7170/2021) under Order XXXIX Rules 1 and 2 CPC, allowing Parle to proceed with its rectification challenge.

Law Settled in This Case:

Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination .This case reiterates that while registration grants prima facie validity under Section 31 of the Trade Marks Act, defendants can raise a prima facie tenable plea under Section 124(1)(a)(ii) to challenge the validity of the mark. It clarifies that descriptive marks or phrases that lack distinctiveness or have become customary in trade may face successful rectification challenges under Section 9(1)(a)-(c) of the Trade Marks Act.The judgment also reinforces that interlocutory injunctions under Order XXXIX require the Court to balance equities, particularly where rectification proceedings are pending.

Case title: PepsiCo Inc. & Anr. vs. Parle Agro Private Limited

Date of order: 18 September 2023

Case No.: CS(COMM) 268/2021

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

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

Dr. Smita Naram Vs Registrar of Trademarks

Fact of the Case:

Dr. Smita Naram filed an opposition against the trademark application for the mark "AYURSHAKTI" filed by respondent no.3 in 1996. The opposition was dismissed by the Trademark Registry under Rule 56(4) of the Trademark Rules, 2002 for alleged non-prosecution, following claims that the appellant failed to attend scheduled hearings. The appellant, however, contended that she never received the hearing notices and challenged the dismissal.

Procedural Background in Brief:

The appellant filed the opposition on 8th October 2003 and submitted her evidence by affidavit on 5th July 2004. After a gap, hearing notices were issued by the Registry in 2015 and 2016. The appellant filed RTI applications seeking dispatch details of the counter-statement and hearing notices. While the Registry claimed notices were dispatched, the appellant submitted RTI responses from the Post Office indicating non-receipt. Despite the appellant seeking adjournments, the opposition was dismissed by the Registry on 5th April 2016 for non-appearance.

Reasoning of Court:

The Court observed that the appellant had actively pursued the opposition since 2003, making it unlikely that she would abandon the matter at the hearing stage. Further, the Court noted discrepancies based on the appellant’s RTI responses, suggesting that hearing notices may not have been received. Given that the trademark application was still pending due to other oppositions, the Court held that it would be just and fair to restore the appellant’s opposition.

Decision:

The Court set aside the impugned order dated 5th April 2016 and restored the appellant’s opposition. The Trademark Registry was directed to issue a fresh hearing notice and decide the opposition on merits.

Case Details:

Case Title: Dr. Smita Naram Vs Registrar of Trademarks and Ors

Date of Order: 5th March 2025

Case Number: C.A.(COMM.IPD-TM) 106/2022

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

YC Electric Vehicle Vs Bhuvneesh Kapoor

Fact of the Case:

YC Electric Vehicle, India’s leading e-rickshaw manufacturer and registered proprietor of the marks "YATRI" and "YC," discovered that Bhuvneesh Kapoor (proprietor of Two Friends Auto Electric Co.) was using marks such as "SAHYATRI" and "YATRI" on e-rickshaws and product listings on platforms like IndiaMart. The plaintiff alleged that this use was confusingly similar to its trademarks and amounted to trademark infringement, passing off, and copyright violation.

Procedural Background in Brief:

The plaintiff filed a suit seeking a permanent injunction along with ancillary reliefs. The Delhi High Court granted exemption from pre-institution mediation and other procedural exemptions. The defendant was duly served via email and social media-linked contacts but remained unrepresented. The plaintiff presented evidence of prior use, trademark registration, and instances of the defendant's deceptive use of similar marks.

Reasoning of Court:

The Court found that the plaintiff was the prior and continuous user of the "YATRI" and "YC" marks since 2014, with strong goodwill and nationwide recognition in the e-rickshaw industry. The defendant’s marks "SAHYATRI" and "YATRI" were found to be deceptively similar and likely to cause confusion among the relevant class of consumers, particularly considering the low literacy and awareness levels of the target market. The Court also observed the mala fide intent of the defendant, who had directly targeted the plaintiff’s distribution network.

Decision:

The Court granted an ex parte ad-interim injunction restraining the defendant, its affiliates, and agents from using the impugned marks "YATRI," "SAHYATRI," or any mark deceptively similar to the plaintiff's "YATRI" and "YC" trademarks. The defendant was also restrained from using these marks as trade names, domain names, or in any other commercial capacity.

Case Details:

Case Title: YC Electric Vehicle vs Bhuvneesh Kapoor Proprietor of Two Friends Auto Electric Co.

Date of Order: 5th March 2025

Case Number: CS(COMM) 200/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Mini Pushkarna

Panasonic Holdings Corporation Vs Ashok Kumar

Fact of the Case:

Panasonic Holdings Corporation (Japan) and its Indian subsidiary, Panasonic Life Solutions India Pvt. Ltd., filed a suit against Ashok Kumar and others for infringing their registered trademark "ANCHOR" and associated device marks. The plaintiffs alleged that the defendants were manufacturing and selling counterfeit electrical packaging materials and products, including electric wires, bearing the plaintiffs' well-known mark "ANCHOR" and copying their trade dress, leading to consumer deception and reputational damage.

Procedural Background in Brief:

The plaintiffs filed a commercial suit seeking a permanent injunction, damages, and ancillary reliefs. The Delhi High Court granted an ex parte injunction on 14th February 2025 and appointed three Local Commissioners to seize the infringing goods from the defendants' premises. The plaintiffs were exempted from providing advance notice to the defendants to prevent the removal of counterfeit goods. Summons were issued to the defendants, and the matter was listed for further hearing.

Reasoning of Court:

The Court noted that the plaintiffs had established strong statutory and common law rights over the "ANCHOR" mark, widely used in India since 1996 and associated with high sales turnover and brand recognition. The Court found that the defendants' packaging and use of the mark "ANCHOR" were deceptively similar to the plaintiffs' mark and trade dress, likely to cause confusion among consumers. Additionally, the Court considered public safety concerns, as counterfeit electrical products could result in hazards such as short circuits or fires. The balance of convenience favored the plaintiffs.

Decision:

The Court passed an ex parte ad-interim injunction restraining the defendants from manufacturing, selling, or dealing in products or packaging bearing the plaintiffs’ "ANCHOR" mark or any deceptively similar variant. The Court also appointed Local Commissioners to seize infringing goods from the defendants' premises, authorized them to take inventories and photograph the seized stock, and directed police assistance for the enforcement of the commission.

Case Details:

Case Title: Panasonic Holdings Corporation Vs Ashok Kumar 

Date of Order: 14th February 2025

Case Number: CS(COMM) 126/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Mondal Brothers Enterprises Pvt. Ltd.Vs The Registrar of Trade Marks

Fact of the Case:

Mondal Brothers Enterprises Private Limited, involved in manufacturing tarpaulin, vermi beds, wagon covers, and similar goods, acquired exclusive rights over the trademark "TARPEX" through a Deed of Assignment dated 1st September 2020. The petitioner discovered that respondent no. 3 had registered the mark "TARFLEX Tarp" (Device of Stars) in Class 22, which was deceptively similar to the petitioner’s prior registered mark "TARPEX". The petitioner argued that both marks were phonetically and structurally similar, leading to consumer confusion in the same line of business.

Procedural Background in Brief:

The petitioner filed an application under Sections 47, 57, and 125 of the Trademarks Act, 1999, seeking rectification and cancellation of the impugned mark registered in favor of respondent no. 3. Despite repeated service, respondent no. 3 failed to appear or file any written response. The Registrar of Trade Marks (respondent no.1) did not contest the petition.

Reasoning of Court:

The Court found that Mondal Brothers was the prior adopter and continuous user of the mark "TARPEX" since 2010. The impugned mark "TARFLEX" was found to be phonetically and structurally similar to "TARPEX", creating a likelihood of confusion. The Court noted that respondent no. 3 could not demonstrate any bona fide reason for adopting a similar mark and that the impugned mark lacked distinctive character, violating Sections 9(2) and other provisions of the Trademarks Act. The Court concluded that the impugned registration eroded the goodwill and exclusivity associated with the petitioner’s mark.

Decision:

The Court allowed the petition and ordered the rectification and cancellation of the trademark registration granted in favor of respondent no. 3. 

Case Details:

Case Title: Mondal Brothers Enterprises Private Limited Vs The Registrar of Trade Marks 

Date of Order: 6th March 2025

Case Number: IPDATM/1/2023

Neutral Citation: Not provided

Name of Court: High Court at Calcutta 

Name of Hon'ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur

Cabcon India Limited Vs Godha Cabcon and Insulation Limited

Fact of the Case:

Cabcon India Limited, a long-standing manufacturer and seller of aluminium conductors, cables, and related products, discovered that Godha Cabcon and Insulation Limited had adopted the mark "CABCON" as part of its corporate name and domain name. The plaintiff, who has been using the "CABCON" mark since 1991 and holds valid trademark registrations for the same, claimed that the defendant’s use of "CABCON" and "GODHA CABCON" in the same line of business was likely to cause confusion, amounting to infringement and passing off.

Procedural Background in Brief:

The plaintiff issued a cease-and-desist notice on 30th October 2023, but the defendant did not respond. Subsequently, Cabcon India Limited filed a suit seeking injunction and related reliefs. On 11th March 2024, an ad-interim order was granted by the Court restraining the defendant from using the mark "CABCON" and allowing only the use of "GODHA" without "CABCON." This interim order was later confirmed. Despite service of summons, the defendant failed to appear or file a written statement, prompting the plaintiff to seek a decree under Order VIII Rule 10 CPC.

Reasoning of Court:

The Court observed that the plaintiff was the prior and continuous user of the "CABCON" mark and had established goodwill and reputation in the industry. The defendant’s adoption of an identical and deceptively similar mark for identical goods (conductors and cables) created a high likelihood of confusion among consumers. The Court found that the defendant's conduct, including the use of the disputed mark in its domain name, indicated dishonest intent. Citing precedents on trademark infringement and passing off, the Court found no factual dispute requiring trial.

Decision:

The Court decreed the suit in favor of the plaintiff. A permanent injunction was granted restraining the defendant from using the mark "CABCON" or any deceptively similar variation thereof. The Court also held that the defendant could only use the mark "GODHA" independently.

Case Details:

Case Title: Cabcon India Limited Vs Godha Cabcon and Insulation Limited

Date of Order: 5th March 2025

Case Number: IP-COM/45/2024

Neutral Citation: Not provided

Name of Court: High Court at Calcutta 

Name of Hon'ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur