ITC Limited Vs. The Controller of Patents

Introduction:  The case of ITC Limited Vs. The Controller of Patents, Designs & Trademark represents a significant clash between intellectual property rights and public health considerations in India. At its core, the dispute revolves around the rejection of a patent application for a novel nicotine aerosol delivery device, which ITC Limited claimed was distinct from electronic nicotine delivery systems (ENDS) like e-cigarettes. The Calcutta High Court, in its judgment, grappled with issues of procedural fairness, statutory interpretation, and the balance between innovation and public policy. This case study delves into the intricate details of the case, analyzing the factual and procedural background, the arguments presented, the judicial reasoning, and the broader implications for patent law in India.

Detailed Factual Background:  ITC Limited, a prominent Indian conglomerate, filed a patent application (Indian Patent Application No. 685/KOL/2015) on June 10, 2015, for an invention titled "A Device and Method for Generating and Delivery of a Nicotine Aerosol to a User." The device was described as a non-electronic system comprising a tube with two components: one containing an aerosol-generating substance (nicotine or alkaloids) and another holding an aerosol-promoting substance (pyruvic acid). These components were arranged in a parallel configuration, and upon inhalation, a chemical reaction between the substances produced a nicotine salt-based aerosol for delivery to the user. ITC emphasized that the device did not rely on electrical or electronic heating mechanisms, distinguishing it from e-cigarettes or ENDS.

The Controller of Patents and Designs, Kolkata, rejected the application on June 26, 2023, under Section 15 of the Patents Act, 1970, citing Section 3(b), which prohibits inventions whose primary or intended use is contrary to public order, morality, or causes serious prejudice to human, animal, or plant life, health, or the environment. The Controller’s decision referenced various statutes, an Indian Council of Medical Research (ICMR) White Paper, and other documents, including a newspaper article, to argue that the device posed health risks akin to e-cigarettes. ITC challenged this rejection in the Calcutta High Court, alleging procedural irregularities and misapplication of the law.

Detailed Procedural Background: The procedural journey of the case began with ITC’s patent application in 2015. The Controller issued a First Examination Report (FER), which did not cite documents supporting an objection under Section 3(b). Subsequently, a hearing notice dated May 1, 2023, introduced new documents, including an online newspaper article and references to the ICMR White Paper on ENDS dated May 29, 2019. ITC participated in a hearing on May 30, 2023, and submitted a reply on June 14, 2023. However, the Assistant Controller’s order on June 26, 2023, relied on additional documents and statutes not previously disclosed, including the Prohibition of Electronic Cigarettes Act, 2019, and various environmental and drug-related laws.

ITC appealed the rejection under Section 117A of the Patents Act, 1970, before the Calcutta High Court’s Commercial Division. The appeal, heard by Justice Krishna Rao, concluded on April 8, 2025, with the judgment delivered on April 30, 2025. ITC argued that the Controller’s reliance on undisclosed documents violated principles of natural justice, while the Controller defended the rejection, asserting that the device’s nicotine content exceeded permissible limits and posed public health risks.

The case raised several critical issues:  First, whether the Controller’s reliance on documents not disclosed to ITC during the examination process violated principles of natural justice? Second, whether the invention fell within the scope of Section 3(b) of the Patents Act, 1970, as an invention causing serious prejudice to human health? Third, whether the Controller’s classification of the device as an e-cigarette or ENDS was justified, given ITC’s claim of a non-electronic chemical reaction-based mechanism?

ITC Limited’s Submissions:  ITC argued that the device was a novel, non-electronic invention that generated nicotine aerosol through a chemical reaction, not electrical heating, distinguishing it from e-cigarettes or ENDS. It emphasized the device’s parallel configuration of nicotine (60-90 microliters) and pyruvic acid (120-140 microliters), delivering 0-15 micrograms of nicotine per puff, which he claimed was within safe limits. It contended that the Controller’s reliance on Section 3(b) was misplaced, as the provision required proof of “serious prejudice” tied to the invention’s primary or intended use, not speculative health risks.

It highlighted procedural lapses, arguing that the Controller introduced new documents, including the ICMR White Paper and various statutes, without providing ITC an opportunity to respond, violating natural justice. He cited Ssangyong Engineering and Construction Company Limited vs. National Highways Authority of India (2019 SCC OnLine SC 677), where the Supreme Court set aside an arbitral award for relying on undisclosed evidence, as analogous to the Controller’s actions.

It further argued that the Controller’s reliance on the Prohibition of Electronic Cigarettes Act, 2019, was erroneous, as the device was not an e-cigarette. He referenced a presentation by Shri DPS Parmar, former Deputy Controller, which excluded tobacco-related inventions from Section 3(b) examples, and cited Balsinor Nagrik Co-op. Bank Ltd. vs. Babubhai S. Pandya (AIR 1987 SC 849) to argue that statutory provisions must be read holistically. He also invoked Article 27(2) of the TRIPS Agreement and Article 4quarter of the Paris Convention, asserting that patentability should not be denied merely due to domestic sales restrictions. Finally, he cited Manganese Ore (India) Ltd. vs. Regional Asstt. CST ((1976) 4 SCC 124) to argue that the Controller’s inconsistent treatment of tobacco-related patents was arbitrary.

Controller’s Submissions: Controller argued that the device fell under Nicotine Replacement Therapy (NRT), which was not approved under the Drugs and Cosmetics Act, 1940, for the claimed nicotine levels (60-90 mg per tube). Chakraborty asserted that nicotine, even in therapeutic use, posed health risks, particularly to the lungs and cardiovascular system, and cited the ICMR White Paper to link ENDS, vapes, and NRT to nicotine addiction and lung diseases. He argued that the device’s aerosol delivery mechanism was akin to e-cigarettes, falling under Section 3(b) due to its potential to promote addiction.

He defended the procedural fairness, noting that ITC received a hearing notice on May 1, 2023, attended the hearing, and submitted a reply. He claimed the relied-upon documents were publicly available on government websites, and the ICMR White Paper was referenced in the hearing notice. He cited Article 47 of the Constitution, which mandates the State to improve public health, to justify the rejection. He also relied on Basawaraj and Another vs. Special Land Acquisition Officer ((2013) 14 SCC 81) and Fuljit Kaur vs. State of Punjab and Others ((2010) 11 SCC 455) to argue that prior erroneous grants of patents did not confer a right to similar relief.

Detailed Discussion on Judgments Cited by Parties: 

Ssangyong Engineering and Construction Company Limited vs. National Highways Authority of India (2019 SCC OnLine SC 677):  ITC cited this case to argue that the Controller’s reliance on undisclosed documents violated natural justice. The Supreme Court held that an arbitral tribunal’s use of government guidelines not in evidence prejudiced the appellant’s ability to present its case, warranting the award’s annulment under Section 34(2)(a)(iii) of the Arbitration and Conciliation Act, 1996. The Calcutta High Court found this precedent persuasive, noting that ITC was similarly denied an opportunity to address the Controller’s cited statutes and documents.

Balsinor Nagrik Co-op. Bank Ltd. vs. Babubhai S. Pandya (AIR 1987 SC 849):  ITC relied on this case to argue that Section 3(b)’s “serious prejudice” must be read with “primary or intended use.” The Supreme Court emphasized holistic statutory interpretation, which ITC used to contend that the Controller misapplied Section 3(b) by focusing on potential health effects rather than the device’s intended purpose. The High Court indirectly endorsed this by questioning the Controller’s broad application of Section 3(b).

Manganese Ore (India) Ltd. vs. Regional Asstt. CST ((1976) 4 SCC 124): ITC cited this case to highlight the Controller’s arbitrary rejection, given prior grants of tobacco-related patents. The Supreme Court held that administrative actions must be consistent to avoid arbitrariness under Article 14. The High Court acknowledged this argument but focused primarily on procedural fairness.

Basawaraj and Another vs. Special Land Acquisition Officer ((2013) 14 SCC 81): The Controller cited this case to argue that prior erroneous patent grants did not entitle ITC to similar relief. The Supreme Court clarified that Article 14 does not perpetuate illegality. The High Court did not directly engage with this precedent, prioritizing procedural issues.

Fuljit Kaur vs. State of Punjab and Others ((2010) 11 SCC 455): The Controller used this case to reinforce that mistaken relief in other cases does not confer legal rights. The Supreme Court held that equality under Article 14 cannot justify extending erroneous decisions. The High Court’s focus on natural justice rendered this argument secondary.

Detailed Reasoning and Analysis of Judge: Court’s reasoning centered on procedural fairness and the misapplication of Section 3(b). The Court found that the Controller’s reliance on undisclosed documents, including the ICMR White Paper, various statutes, and a newspaper article, violated natural justice. Citing Ssangyong Engineering, the Court held that ITC was prejudiced by its inability to address these materials, which were not referenced in the FER or hearing notice. The Court noted that the Controller’s claim of public availability did not excuse the failure to provide ITC an opportunity to respond.

On the substantive issue, the Court scrutinized the Controller’s classification of the device as an e-cigarette or ENDS. It highlighted ITC’s claim that the device used a chemical reaction, not electrical heating, and noted that the Controller’s reliance on the Prohibition of Electronic Cigarettes Act, 2019, was not raised in the hearing notice, denying ITC a chance to rebut. The Court also examined Section 3(b), referencing Shri DPS Parmar’s presentation, which excluded tobacco-related inventions from typical Section 3(b) exclusions like gambling machines or biological warfare devices. This suggested that the Controller’s application of “serious prejudice” was overly broad.

The Court further considered international obligations under Article 27(2) of the TRIPS Agreement and Article 4 quarter of the Paris Convention, which discourage patent denials based solely on domestic sales restrictions. It also noted Section 83(d) and (e) of the Patents Act, which distinguish patent grants from commercial exploitation, reinforcing that patentability should not hinge on public health policy alone. While acknowledging the Controller’s public health concerns under Article 47, the Court prioritized procedural fairness and remanded the case for fresh consideration.

Final Decision: The Calcutta High Court allowed ITC’s appeal (IPDPTA No. 121 of 2023) on April 30, 2025, setting aside the Controller’s order dated June 26, 2023. The matter was remanded to the Controller for fresh consideration within six months by a different officer, with instructions to decide without influence from the Court’s observations.

Law Settled in the Case:  The case clarified that patent examination processes must adhere to principles of natural justice, requiring controllers to disclose all relied-upon documents to applicants for a fair opportunity to respond. It also underscored that Section 3(b) of the Patents Act, 1970, should be applied narrowly, focusing on an invention’s primary or intended use, not speculative health risks. The judgment reinforced that patent grants are distinct from commercial exploitation, aligning with TRIPS and Paris Convention principles, and highlighted the need for consistent application of patent law to avoid arbitrariness.

Case Title:ITC Limited Vs. The Controller of Patents: Date of Order:April 30, 2025: Case No.IPDPTA No. 121 of 2023: Name of Court:High Court at Calcutta: Name of Hon'ble Judge:Justice Krishna Rao

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

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

Annikki GmbH Vs Assistant Controller of Patents and Designs

Combining processes from multiple prior arts does not constitute a “known process” under Section 3 d of Patent Act unless previously integrated

Introduction: In the intricate world of intellectual property, patent disputes often hinge on the delicate balance between innovation and prior art. The case of Annikki GmbH v. Assistant Controller of Patents and Designs, adjudicated by the Madras High Court, exemplifies this tension. Annikki GmbH, an Austrian company, sought to overturn the rejection of its patent application for a novel non-fermentative process to produce xylitol from lignocellulosic material. The appeal, filed under Section 117-A of the Patents Act, 1970, challenged the Assistant Controller’s order dated 10.12.2019, which dismissed the application on grounds of lacking novelty, inventive step, and falling under the exclusionary provisions of Section 3(d). This case study delves into the factual and procedural intricacies, the legal issues at play, the arguments of the parties, the judicial reasoning, and the broader implications of the court’s decision, offering a comprehensive analysis of a pivotal moment in patent law adjudication.

Detailed Factual Background:Annikki GmbH, based in Graz, Austria, filed Indian Patent Application No. 467/CHENP/2012, titled “Process for the Production of Carbohydrate Cleavage Products from a Lignocellulosic Material.” The invention proposed a non-fermentative method to produce xylitol, a valuable sugar alcohol, from lignocellulosic material. Unlike traditional fermentative processes, Annikki’s method emphasized high selectivity in lignin degradation, reduced enzyme costs, and limited energy expenditure. The process utilized alcohol and treated lignin as a valuable byproduct rather than a mere energy source for fermentation, marking a significant departure from conventional techniques. 

The complete specification highlighted these advantages, particularly on internal pages 5 and 7, underscoring the technical and economic benefits of the invention. However, the Assistant Controller of Patents and Designs rejected the application, citing prior art documents (D1 to D6) that allegedly rendered the invention obvious and lacking inventive step. The rejection also invoked Section 3(d) of the Patents Act, claiming the process was a mere combination of known processes without enhanced efficacy.

Detailed Procedural Background:The procedural journey of the patent application began with the issuance of the First Examination Report (FER) on 30.11.2017, which raised objections based on lack of novelty and inventive step, referencing prior art documents D1 to D6. Annikki responded on 28.05.2018, submitting amended claims to address the objections. A hearing notice dated 31.05.2018 maintained the FER’s objections, leading to a hearing on 13.07.2018. Post-hearing, Annikki filed written submissions on 09.08.2018. Despite these efforts, the Assistant Controller issued the impugned order on 10.12.2019, rejecting the application. 

The order relied heavily on prior art D5, which was interpreted as disclosing a non-fermentative process, and combined elements from D1 to D4 to argue that the invention lacked inventiveness and was barred under Section 3(d). Aggrieved, Annikki filed a Transferred Civil Miscellaneous Appeal (T)CMA(PT) No. 70 of 2023 before the Madras High Court, seeking to quash the order and secure the grant of the patent.

Issues Involved in the Case:The case presented several critical legal issues for adjudication. First, did the Assistant Controller err in concluding that the invention lacked novelty and inventive step based on prior art documents D1 to D6? Second, was the rejection under Section 3(d) of the Patents Act, which excludes the mere use of a known process unless it results in a new product or employs a new reactant, legally sustainable?  Third, did the Assistant Controller adequately consider Annikki’s responses to the FER and the hearing submissions, or were the reasons in the impugned order inconsistent with prior objections?   Finally, did the non-fermentative nature of Annikki’s process constitute a technical advancement over the cited prior art, warranting patent protection? These issues required a meticulous examination of the prior art, the statutory framework, and the procedural fairness of the patent examination process.

Detailed Submission of Parties:Annikki’s  presented a robust defense of the invention’s patentability. They argued that the invention’s non-fermentative process for xylitol production was novel and inventive, as it avoided fermentation, reduced enzyme costs, and enhanced lignin utilization. Referencing the complete specification, they highlighted the process’s high selectivity and energy efficiency. Addressing prior art D5, they contended that the Assistant Controller misconstrued it as non-fermentative, pointing to Figure 3 and column 7 of D5, which clearly described a fermentative process. For D1, titled “Selective Solvent Delignification for Fermentation Enhancement,” they noted its explicit reliance on fermentation, with lignin used as an energy source, as evidenced by Table 3. D2 was dismissed as irrelevant due to its alkali treatment, distinct from Annikki’s method. D3 was argued to operate at significantly higher temperatures, and D4 was criticized for involving fermentation in its fourth step. Annikki further alleged procedural lapses, asserting that the Assistant Controller ignored their FER response and raised new objections in the impugned order without prior notice. They supported their claim of technical advancement with a declaration from Mr. Mag. Ortwin Ertl, the co-inventor and CEO, which included experimental data not previously submitted due to the absence of specific objections.

Detailed Discussion on Judgments and Citations: The court’s analysis referenced one key precedent, Novozymes v. Assistant Controller of Patents & Designs (2023:MHC:4261), to interpret Section 3(d) of the Patents Act. In Novozymes, the Madras High Court elucidated that Section 3(d) comprises three limbs, with the third limb excluding the “mere use of a known process” unless it results in a new product or employs a new reactant. The court applied this interpretation to scrutinize the Assistant Controller’s reliance on Section 3(d). Annikki’s  cited Novozymes to argue that combining processes from multiple prior arts (D1 to D5) did not constitute a “known process” under Section 3(d), as the exclusion applies only to a single known process. 

Detailed Reasoning and Analysis of Judge:The Court meticulously dissected the Assistant Controller’s order, identifying multiple errors in law and fact. On Section 3(d), the court found the Assistant Controller’s conclusion unsustainable. The impugned order’s assertion that Annikki’s process was a mere combination of known processes from D1 to D5 was flawed, as Section 3(d)’s third limb applies to a single known process. The court reasoned that combining distinct processes from multiple prior arts did not qualify as a “known process” unless previously integrated, rendering the objection legally invalid. This analysis leaned heavily on the Novozymes precedent, which clarified the scope of Section 3(d)’s exclusions.Regarding the inventive step, the court scrutinized the Assistant Controller’s reliance on D5, which was erroneously interpreted as disclosing a non-fermentative process. The court examined paragraph 3 of column 7 and Figure 3 of D5, confirming that D5 involved fermentation, contrary to the impugned order’s findings. This misinterpretation undermined the objection of obviousness. The court also criticized the Assistant Controller’s reliance on “common general knowledge” to assert that enzyme-based xylose degradation was obvious, noting the absence of cited sources or materials to substantiate this claim. For D2, the court found the Assistant Controller’s conclusion that it was analogous art illogical, given its focus on ethanol production rather than xylitol, and the lack of explanation for its relevance.The court further addressed procedural irregularities, noting that the Assistant Controller failed to consider Annikki’s FER response and introduced new objections in the impugned order without prior notice. This lack of fairness necessitated judicial intervention. Annikki’s submission of Mr. Ertl’s declaration, which included experimental data supporting the non-fermentative process’s technical advantages, was deemed significant. Since this evidence was not presented earlier due to the absence of specific objections, the court found it an additional reason for remanding the matter.

Final Decision:The Madras High Court set aside the impugned order dated 10.12.2019 and remanded the matter to the Patent Office for reconsideration. The court stipulated that a different officer, not the one who issued the original order, should conduct the review to avoid bias. The Patent Office was directed to provide Annikki a reasonable opportunity to present its case and issue a reasoned decision within four months. The court refrained from opining on the patent application’s merits, ensuring an impartial re-evaluation. The appeal was disposed of without costs.

Law Settled in This Case:This case clarified the application of Section 3(d) of the Patents Act, particularly its third limb, which excludes the “mere use of a known process.” The court established that combining processes from multiple prior arts does not constitute a “known process” under Section 3(d) unless previously integrated, preventing overbroad rejections of patent applications. It also underscored the importance of procedural fairness in patent examinations, requiring controllers to consider applicants’ responses and provide consistent objections. Additionally, the judgment reinforced the need for evidence-based conclusions when asserting obviousness or relying on common general knowledge, setting a higher standard for patent office determinations.

Case Title: Annikki GmbH Vs Assistant Controller of Patents and Designs: Date of Order: 24.04.2025: Case No.: (T)CMA(PT) No. 70 of 2023 (OA/19/2020/PT/CHN): Name of Court: High Court Madras: Name of Judge: Senthilkumar Ramamoorthy J.

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

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

Surya Food and Agro Limited Vs. Om Traders

Unveiling the Clash of Jurisprudence: Adversarial Vs. Inquisitorial 

Introduction: The Indian legal system, rooted in the common law tradition, operates predominantly on an adversarial model where the court acts as a neutral arbiter, adjudicating disputes based on the evidence and arguments presented by the parties. However, the case of Surya Food and Agro Limited v. Om Traders, adjudicated by the Delhi High Court, brings to the forefront a critical tension between adversarial and inquisitorial approaches to jurisprudence. This case, centered on allegations of copyright infringement and passing off concerning the packaging of biscuit products, highlights the procedural intricacies of commercial disputes and the judiciary’s role in ensuring fairness. The court’s decision to set aside a summary judgment rendered by a Single Judge underscores the importance of adhering to adversarial principles, particularly in the context of commercial litigation governed by the Commercial Courts Act, 2015. This article delves into the factual and procedural nuances of the case, the legal issues at play, the parties’ submissions, the judicial reasoning, and the broader implications for the interplay between adversarial and inquisitorial jurisprudence.

Detailed Factual Background: Surya Food and Agro Limited, a company incorporated in 1992, is a prominent manufacturer of cookies, cakes, confectioneries, juices, and beverages, owning several trademarks, including “Butter Bite,” “Italiano,” and “Butter Delite.” The dispute revolves around its product “Butter Delite,” launched in October 2015 with distinctive packaging claimed to be an artistic work under the Copyright Act, 1957. This packaging was designed by Mr. Sachin More of Oberoi IBC India Pvt. Ltd. in August 2015 and assigned to Surya Food via a deed dated 10 August 2015. The packaging was later registered under the Copyright Act (Registration No. A-132116 of 2019) and as a trademark (Registration No. 4329956 in Class 30). Surya Food asserted that the packaging’s trade dress, characterized by its red color scheme and layout, had become synonymous with “Butter Delite” due to extensive use and sales, evidenced by annual figures: INR 7.18 crores (2015-16), INR 53.12 crores (2016-17), INR 120.07 crores (2017-18), and INR 83.40 crores (up to 30 November 2018).

In December 2018, Surya Food discovered that Om Traders, a retailer, was selling biscuits under the brand “Butter Krunch,” manufactured by Raja Udyog Private Limited, in packaging allegedly similar to “Butter Delite.” Surya Food claimed that the respondents had copied the artwork, color scheme, and placement of elements, constituting copyright infringement and passing off. The company argued that the similarities in packaging could deceive consumers, leveraging the goodwill of “Butter Delite.” The respondents, however, maintained that their packaging was distinct and that the elements cited by Surya Food were generic to the biscuit industry.

Detailed Procedural Background: Surya Food filed a suit, CS(COMM) 10/2019, before the Delhi High Court, seeking a permanent injunction, damages, and rendition of accounts against Om Traders and Raja Udyog. On 7 January 2019, summons were issued, but Surya Food’s request for an ex parte interim injunction was denied. On 26 February 2019, Raja Udyog appeared, seeking time to file a written statement and respond to Surya Food’s application for interim relief under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC). Om Traders did not appear, and on 25 March 2019, the Single Judge proceeded ex parte against them. The following day, 26 March 2019, the Single Judge heard arguments, ostensibly on the interim relief application, but clarified that the suit could be disposed of based on pleadings and admitted documents unless evidence was deemed necessary. Without framing issues or allowing evidence, the Single Judge dismissed the suit, finding the packaging of “Butter Delite” generic and not entitled to protection.

Aggrieved, Surya Food filed an intra-court appeal, RFA(OS)(COMM) 28/2019, challenging the procedural propriety of the Single Judge’s summary disposal. The Division Bench, comprising Justices Vibhu Bakhru and Amit Mahajan, examined whether the Single Judge’s approach adhered to the procedural mandates of the CPC, particularly Order XIII-A, and the Delhi High Court (Original Side) Rules, 2018.

Issues Involved in the Case: The case raised several critical issues. First, whether the Single Judge was justified in rendering a summary judgment without an application under Order XIII-A of the CPC, which governs summary judgments in commercial disputes? Second, whether the Single Judge’s reliance on personal impressions and unpleaded facts violated adversarial principles? Third, whether the provisions of Chapter X-A of the 2018 Rules, allowing suo motu summary judgments, conflicted with Order XIII-A of the CPC. Fourth, whether the packaging of “Butter Delite” was distinctive or generic, warranting protection against infringement and passing off. The core issue, however, was the balance between adversarial and inquisitorial approaches, as the Single Judge’s proactive findings suggested an inquisitorial stance, bypassing the parties’ pleaded case.

Detailed Submission of Parties: Surya Food argued that the Single Judge erred in dismissing the suit without framing issues or permitting evidence, contravening the adversarial framework mandated by the CPC. They contended that Order XIII-A requires a formal application for summary judgment, with a structured procedure ensuring both parties’ participation, including 30 days’ notice and the opportunity to file a reply. Surya Food emphasized that the Single Judge’s findings—such as the packaging being generic or biscuits targeting children—were based on impressions, not evidence or pleadings. They highlighted their substantial sales and registered intellectual property rights, asserting that the similarities in packaging warranted a trial to assess deceptive similarity and consumer confusion.

The respondents argued that the Single Judge’s decision was within the court’s jurisdiction under Chapter X-A of the 2018 Rules, which permits suo motu summary judgments. They contended that the packaging of “Butter Krunch” was distinct, bearing the prominent “Raja” trademark, unlike Surya Food’s “Priya Gold.” They argued that the red color and rectangular shape were common in the biscuit industry, negating claims of distinctiveness. The respondents further submitted that the case management hearing under Order XV-A allowed the court to dispose of the suit summarily, aligning with the Commercial Courts Act’s objective of expeditious resolution.

Detailed Discussion on Judgments and Citations: The Division Bench extensively analyzed the Single Judge’s approach, referencing several precedents to underscore the procedural and jurisprudential issues. The Single Judge had relied on foreign judgments to support the finding that the packaging was generic. In The Paddington Corporation v. Attiki Importers & Distributors, Inc., 996 F.2d 577 (2d Cir. 1993), the U.S. Second Circuit held that trade dress common to an industry is generic and not inherently distinctive. Similarly, in Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993 (2d Cir. 1997), the court reiterated that industry-standard packaging lacks protectable distinctiveness. The Single Judge also cited Keebler Company v. Nabisco Brands, Inc., 1992 U.S. Dist. LEXIS 6826, noting that similar colors are common in the cookie market, making exclusive claims over a color untenable. Additionally, Colgate Palmolive Company Limited v. Patel & Anr., 2005 SCC OnLine Del 1439, was referenced to assert that no party can claim a monopoly over a color.

The Division Bench, however, focused on procedural propriety, drawing heavily from Bright Enterprises Private Limited & Anr. v. MJ Bizcraft LLP & Anr., 2017 SCC OnLine Del 6394. This case emphasized that Order XIII-A mandates a formal application and adherence to a prescribed procedure, including notice and opportunity for response, to ensure fairness. The court in Bright Enterprises held that summary judgments are exceptional and require scrupulous compliance with procedural safeguards to avoid injustice. The Division Bench also cited HPL (India) Ltd. & Ors. v. QRG Enterprises & Anr., 2017 SCC OnLine Del 6955, and Indian Style Wrestling Association of India & Anr. v. Wrestling Federation of India, 2019 SCC OnLine Del 9902, to affirm that the Commercial Courts Act prevails over conflicting High Court rules, reinforcing the primacy of Order XIII-A.

The respondents’ reliance on Chapter X-A of the 2018 Rules was countered by the Division Bench’s reference to G.P. Stewart v. Brojendra Kishore Roy Choudhury, 1939 SCC OnLine Cal 116, which clarified that repugnancy between laws need not be direct but can arise when one provision nullifies another’s effect. The court found that Rule 1 of Chapter X-A, allowing suo motu summary judgments, conflicted with Order XIII-A’s requirement of a party-initiated application, undermining the adversarial process.

Detailed Reasoning and Analysis of Judge: The Division Bench, in a judgment meticulously dissected the Single Judge’s approach, highlighting its deviation from adversarial norms. The court noted that the Single Judge’s decision to dispose of the suit summarily, without an application under Order XIII-A, violated the procedural framework established by the Commercial Courts Act. Order XIII-A, inserted via Section 16 of the Act, enables summary judgments only upon a party’s application, with clear stipulations for notice, reply, and evidence. The Single Judge’s failure to follow this procedure, coupled with the absence of framed issues or evidence, rendered the judgment procedurally infirm.

The court further criticized the Single Judge’s reliance on personal recollections, such as the red packaging of “Britannia Tiger Biscuits” and “Britannia Vita Marie Gold,” which were not part of the record. This approach, the Division Bench held, transformed the court into a witness, violating the adversarial principle that judges adjudicate based on pleaded facts and evidence. The Single Judge’s findings that the packaging was generic, that biscuits target children, and that red is a common color were speculative, lacking evidentiary support or alignment with the respondents’ defense.

On the conflict between Chapter X-A of the 2018 Rules and Order XIII-A, the court reasoned that the Commercial Courts Act, as a special enactment, prevails over High Court rules. Section 16(3) explicitly states that CPC provisions amended by the Act override conflicting High Court rules. The court rejected the respondents’ argument that Chapter X-A’s suo motu power could coexist with Order XIII-A, noting that the latter’s structured procedure ensures natural justice, which a suo motu judgment bypasses. The absence of a comparable procedure in Chapter X-A further underscored the conflict, as it left parties without adequate opportunity to contest the court’s initiative.

The Division Bench also addressed the substantive merits briefly, noting that Surya Food’s claims of deceptive similarity and consumer confusion warranted a trial. The packaging’s color scheme, size, and element placement raised triable issues, which the Single Judge prematurely dismissed by deeming them generic. The court emphasized that such findings required evidence, particularly given the respondents’ denial of similarity and the ex parte status of Om Traders.

Final Decision: The Division Bench allowed the appeal, set aside the Single Judge’s judgment dated 26 March 2019, and restored the suit, CS(COMM) 10/2019, to its position as of that date. The Registry was directed to list the suit before the concerned Roster Bench on 30 January 2023 for further proceedings, ensuring adherence to adversarial procedures, including issue framing and evidence.

Law Settled in This Case: This case settles significant procedural and jurisprudential principles in commercial litigation. It establishes that courts cannot render suo motu summary judgments in commercial disputes under Order XIII-A of the CPC, which requires a party-initiated application and strict procedural compliance. The decision reinforces the primacy of the Commercial Courts Act over conflicting High Court rules, particularly Chapter X-A of the 2018 Rules. It underscores the adversarial nature of civil proceedings, prohibiting judges from relying on personal impressions or unpleaded facts. The case also highlights the necessity of a trial when triable issues, such as deceptive similarity in trade dress, are raised, ensuring parties’ rights to present evidence and contest claims.

Case Title: Surya Food and Agro Limited Vs. Om Traders and Anr.: Date of Order: 20 January 2023: Case No.: RFA(OS)(COMM) 28/2019 : Neutral Citation: 2023/DHC/000445: Name of Court: High Court of Delhi: Name of Hon'ble Judges: Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Amit Mahajan

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

Ustad Faiyaz Wasifuddin Dagar Vs A.R. Rahman

Introduction: The case of Ustad Faiyaz Wasifuddin Dagar versus A.R. Rahman and others, adjudicated by the High Court of Delhi, represents a significant exploration of copyright law in the context of Hindustani classical music. This legal battle centers on the alleged infringement of a Dhrupad composition, "Shiva Stuti," by the song "Veera Raja Veera" in the film Ponniyin Selvan - 2. The plaintiff, a torchbearer of the Dagarvani Gharana, sought recognition of the moral and copyright rights of the Junior Dagar Brothers, claiming their original work was unlawfully used. This case study delves into the intricate details of the dispute, analyzing the factual background, procedural developments, legal issues, arguments, judicial reasoning, and the final decision, while highlighting the broader implications for copyright protection in traditional music.

Detailed Factual Background: Ustad Faiyaz Wasifuddin Dagar, the plaintiff, is a distinguished Dhrupad vocalist and a scion of the Dagarvani Gharana, a lineage spanning 20 generations of Hindustani classical musicians. He is the son of Late Ustad N. Faiyazuddin Dagar and nephew of Late Ustad Zahiruddin Dagar, collectively known as the Junior Dagar Brothers. The suit composition, "Shiva Stuti," is a Dhrupad piece composed in Raga Adana and Sultaal (a 10-beat rhythmic cycle), paying homage to Lord Shiva. The plaintiff asserts that this composition, created by the Junior Dagar Brothers in the 1970s, is an original work entitled to copyright protection. It was performed internationally, notably at the Royal Tropical Institute in Amsterdam in 1978, and later featured in the album Shiva Mahadeva by the Dagar Brothers, released by PAN Records.

The defendants include A.R. Rahman (Defendant No. 1), a globally acclaimed music composer who scored the music for Ponniyin Selvan - 2 (PS-2), where the impugned song "Veera Raja Veera" appears. Madras Talkies (Defendant No. 2) and Lyca Productions Private Limited (Defendant No. 3) are co-producers of the film, directed by Mani Ratnam. Tips Industries Limited (Defendant No. 4) holds the rights to the film’s audio and audio-visual content. Defendants No. 5 and 6, Shivam Bharadwaj and Arman Ali Dehlvi, are singers of the impugned song and former disciples of the plaintiff. The plaintiff alleges that Defendants No. 5 and 6 shared "Shiva Stuti" with A.R. Rahman without authorization, leading to its incorporation into "Veera Raja Veera."

The controversy surfaced when the audio of "Veera Raja Veera" was released on March 28, 2023, followed by its audio-visual version on YouTube on April 8, 2023. The song was credited as a "Composition based on a Dagarvani Tradition Dhrupad," but initially omitted specific reference to "Shiva Stuti" or the Junior Dagar Brothers. The plaintiff, upon discovering this, contacted A.R. Rahman on April 13, 2023, alleging infringement of the moral and copyright rights in "Shiva Stuti." Despite assurances from Rahman, no resolution was reached, prompting a legal notice on April 20, 2023. Madras Talkies responded on April 24, 2023, denying the plaintiff’s claims. The film PS-2 was released in theaters on April 28, 2023, and subsequently on Amazon Prime, intensifying the dispute. The plaintiff filed the suit seeking injunctions and recognition of the Junior Dagar Brothers’ authorship, alongside an interim application (I.A. 21148/2023) for immediate relief.

Detailed Procedural Background: The suit, registered as CS(COMM) 773/2023, was first listed before the High Court of Delhi on October 20, 2023. The court issued summons to the defendants and notice in the interim application, I.A. 21148/2023. During this hearing, the plaintiff’s counsel, relying on a notation chart, argued that while the lyrics of "Veera Raja Veera" differed, its taal and musical composition mirrored "Shiva Stuti" in Raga Adana. The court played both compositions in open court and issued ad-interim directions, requiring A.R. Rahman to produce the raw recording of "Veera Raja Veera" and correct a typographical error in the YouTube credits (from "Dargavani" to "Dagarvani") within 48 hours.

On November 10, 2023, the court rejected an intervention application by Pandit Abhishek Kumar Mishra, deeming it irrelevant to the dispute. On March 5, 2024, the court proposed expediting the suit’s final adjudication with limited witness evidence, subject to a monetary deposit, but the parties did not agree, and the interim application proceedings continued. The court permitted the parties to submit audio and audio-visual recordings of the compositions and related works. Extensive hearings followed, with arguments concluding on February 6, 2025. The judgment, reserved on that date, was pronounced on April 25, 2025, addressing the interim relief sought by the plaintiff.

Issues Involved in the Case: The court framed three primary issues for consideration in the interim application:  Originality of the Suit Composition: Whether "Shiva Stuti" is an original musical work of the Junior Dagar Brothers, entitled to copyright protection? Infringement by the Impugned Song: Whether "Veera Raja Veera" infringes the plaintiff’s copyright in "Shiva Stuti."?

Plaintiff’s Submissions: The plaintiff emphasized the Dagarvani Gharana’s legacy and the plaintiff’s credentials as a Padma Shri awardee. They argued that "Shiva Stuti," composed by the Junior Dagar Brothers in the 1970s, is an original work, as evidenced by its performance in Amsterdam and inclusion in the Shiva Mahadeva album. The plaintiff asserted that the composition’s unique arrangement of swaras (notes) in Raga Adana, combined with its taal and syncopation, distinguished it as a protectable musical work under Section 2(p) of the Copyright Act, 1957.

The plaintiff contended that "Veera Raja Veera" replicated the musical structure of "Shiva Stuti," particularly in its asthayi (main section), as demonstrated by a notation chart comparing the two works. While acknowledging that Raga Adana and the Dagarvani style are not copyrightable, the plaintiff argued that the specific arrangement of notes, their dragging, and transitions between Aroha and Avroha constituted original expression. The plaintiff cited Ram Sampath v. Rajesh Roshan (2008 SCC OnLine Bom 370) to argue that even copying a small but vital part of a composition constitutes infringement, and Sulamangalam R. Jayalakshmi v. Meta Musicals (2000 SCC OnLine Mad 381) to emphasize protection against unauthorized use.

The plaintiff further alleged that Defendants No. 5 and 6, as his disciples, shared "Shiva Stuti" with A.R. Rahman without permission, and Rahman’s acknowledgment of Dagarvani inspiration was insufficient without crediting the Junior Dagar Brothers. The plaintiff sought interim relief, including a mandatory injunction to remove the infringing portion, a monetary deposit, or proper credit acknowledgment, arguing that ongoing dissemination of the song on various platforms necessitated urgent protection of moral and copyright rights.

Defendants’ Submissions A.R. Rahman’s counsel argued that the plaintiff failed to prove the originality of "Shiva Stuti." He contended that Dhrupad, rooted in the Samaveda and governed by strict compositional rules, leaves minimal room for copyrightable elements. The suit composition, being in Raga Adana, adhered to traditional patterns, and the plaintiff did not specify which elements were original. Sibal cited Raga Parichay by Harishchandra Shrivastava to show that the swaras in "Shiva Stuti" were standard to Raga Adana, also appearing in other ragas like Darbari Kanada and Jaunpuri, and in Amir Khusro’s 13th-century composition "Yaar-e-man Biya Biya."

The defendants argued that "Shiva Stuti" was a traditional composition, as evidenced by similar renditions by other artists, including the Gundecha Brothers and Pandit Uday Bhawalkar, none of whom were covered by the plaintiff’s alleged family settlement. They challenged the plaintiff’s shifting stance on ownership, from sole owner to co-owner, and the lack of evidence supporting the Junior Dagar Brothers’ authorship. On infringement, the defendants asserted that "Veera Raja Veera" was an original work blending Western and Indian musical elements, distinct from "Shiva Stuti." They relied on Marcus Gray v. Katheryn Elizabeth Hudson (28 F.4th 87, 9th Cir. 2022) to argue that commonplace musical elements are not copyrightable, and Apple Computer Inc. v. Microsoft Corporation (35 F.3d 1435, 9th Cir. 1994) and R.G. Anand v. Delux Films ((1978) 4 SCC 118) to caution against monopolizing traditional music.

The defendants distinguished the plaintiff’s cited cases, noting that in Sulamangalam R. Jayalakshmi, the defendant used the plaintiff’s photographs, and in Ram Sampath, the plaintiff’s authorship was undisputed and supported by expert evidence, unlike the present case. They argued that granting relief would stifle creativity in Hindustani and Carnatic music, and the plaintiff’s delay in filing the suit after the film’s release weakened the case for interim relief.

Other Defendants’ Submissions: Counsel for Defendants No. 2 and 3  expressed willingness for amicable resolution but maintained that the composition was provided by A.R. Rahman, and they relied on his assertions of originality. Defendant No. 4 (Tips Industries) echoed the lack of originality in "Shiva Stuti," arguing that the Dagarvani style was not copyrightable. Defendants No. 5 and 6, the singers, did not make distinct submissions, but their role as the plaintiff’s disciples was noted as facilitating access to the suit composition.

Intervenor’s Submission:  The intervenor, Pandit Abhishek Kumar Mishra, sought to assist the court but was denied intervention, as the suit was not a public interest litigation. The court permitted written submissions on legal issues, though these did not significantly influence the judgment.

The parties relied on several judicial precedents to bolster their arguments, each applied in specific contexts:

Ram Sampath v. Rajesh Roshan (2008 SCC OnLine Bom 370): Cited by the plaintiff, this Bombay High Court decision addressed the infringement of a musical work where a six-second portion was copied and repeated multiple times. The court held that copying a small but essential part, the “catch part” or “hook,” constitutes actionable infringement, emphasizing that “what is worth copying is worth protecting.” The plaintiff used this to argue that the core of "Shiva Stuti" was replicated in "Veera Raja Veera." The defendants distinguished it, noting that the plaintiff’s authorship was undisputed in Ram Sampath, and expert evidence supported the claim, unlike the present case.

Sulamangalam R. Jayalakshmi v. Meta Musicals (2000 SCC OnLine Mad 381): The plaintiff cited this Madras High Court case, where the defendant’s unauthorized use of the plaintiff’s musical work and photographs was restrained. The court protected the plaintiff’s rights, reinforcing copyright in musical works. The plaintiff argued that similar protection applied to "Shiva Stuti." The defendants countered that the case involved clear misuse (version recording and photographs), unlike the present dispute over a composition’s originality.

Marcus Gray v. Katheryn Elizabeth Hudson (28 F.4th 87, 9th Cir. 2022): Cited by the defendants, this U.S. Ninth Circuit case applied the “scène à faire” doctrine, holding that commonplace musical elements (e.g., basic note sequences) are not copyrightable. The defendants used this to argue that "Shiva Stuti"’s swaras were standard to Raga Adana, precluding copyright. The court, however, found this less applicable, noting differences between Western and Indian classical music composition.

Apple Computer Inc. v. Microsoft Corporation (35 F.3d 1435, 9th Cir. 1994): The defendants cited this U.S. case to caution against granting copyright monopolies over common elements, arguing that protecting "Shiva Stuti" would restrict creativity in Dhrupad music. The court acknowledged the principle but prioritized the specific arrangement’s originality.

R.G. Anand v. Delux Films ((1978) 4 SCC 118): This Supreme Court of India case, cited by the defendants, established that copyright protects original expression, not ideas or common themes. The defendants argued that "Shiva Stuti" lacked originality due to its reliance on traditional Dhrupad structures. The court, however, focused on the unique arrangement of swaras as protectable expression.

Suresh Jindal v. Rizsoli Corriere Della Sera Prodzioni T.V. Spa (1991 Supp (2) SCC 3): Cited by the court (not the parties), this Supreme Court case recognized the importance of crediting creative contributions, granting interim relief for acknowledgment despite the film’s foreign exhibition. The court applied this to justify directing credit for the Junior Dagar Brothers.

Neha Bhasin v. Anand Raaj Anand ((2006) 132 DLT 196): Referenced by the court, this Delhi High Court case upheld a singer’s right to be credited as the lead female singer, relying on Suresh Jindal. It supported the plaintiff’s claim for moral rights recognition.

Fox Star Studios v. Aparna Bhat (2020 SCC OnLine Del 36): Cited by the court, this Delhi High Court case granted interim relief for crediting a plaintiff’s contribution to a film, emphasizing moral rights. It reinforced the court’s decision to mandate acknowledgment.

Francis Day and Hunter Ltd v. Bron ((1963) Ch 587): Cited by the court, this UK case established that the “ear, not eye” is the primary judge in music copyright disputes, prioritizing aural impact for lay listeners. It guided the court’s infringement analysis.

Bridgeport Music, Inc. v. Dimension Films (410 F.3d 792, 6th Cir. 2005): Cited by the court, this U.S. case held that even a brief sample (e.g., three notes) can infringe if identifiable, supporting the finding that "Veera Raja Veera"’s similarity to "Shiva Stuti" constituted infringement.

Trek Leasing, Inc. v. United States (66 Fed. Cl. 8, 2005): Cited by the court, this U.S. case noted that using a work as a model or inspiration indicates copying, bolstering the finding that Rahman’s acknowledgment of Dagarvani inspiration suggested reliance on "Shiva Stuti."

Detailed Reasoning and Analysis of Judge: This judgment meticulously analyzed the issues, balancing the nuances of Indian classical music with copyright law principles. The court first addressed the originality of "Shiva Stuti." Recognizing the challenges of applying copyright to Indian classical music, the court noted that Dhrupad’s strict rules limit creative freedom compared to genres like Thumri. However, it held that the specific arrangement of swaras, their dragging, and transitions between Aroha and Avroha in "Shiva Stuti" constituted original expression. The court found prima facie evidence of the Junior Dagar Brothers’ authorship, supported by the 1978 Amsterdam performance and the Shiva Mahadeva album. The plaintiff’s claim of copyright transfer via an oral family settlement was deemed credible at the interim stage.

On infringement, the court rejected the defendants’ argument that similarities arose from Raga Adana’s discipline, noting that "Veera Raja Veera" was not based on Raga Adana but incorporated Western music elements. The court applied the tests of “comprehensive non-literal similarity” and “fragmented literal similarity,” finding that the asthayi of "Veera Raja Veera" was identical to "Shiva Stuti" in swaras, bhava (emotion), and aural impact. The notation chart and the defendants’ own comparison with Amir Khusro’s composition inadvertently highlighted this identity. The court emphasized the “ear, not eye” principle from Francis Day v. Bron, holding that a lay listener would perceive the works as similar, satisfying the infringement test from Ram Sampath and Bridgeport Music.

The court distinguished foreign precedents like Marcus Gray, noting that Hindustani classical music’s aural effect, rather than written notes, determines similarity. The deliberate selection of "Shiva Stuti" by Rahman, facilitated by the plaintiff’s disciples, further supported the finding of copying. The court dismissed the defendants’ reliance on other artists’ renditions, as these were authorized performances by Dagarvani disciples, not commercial exploitations challenging the plaintiff’s copyright.

Regarding relief, the court considered the film’s release and widespread dissemination, finding that restraining the song would disrupt an acclaimed production. Instead, it prioritized moral rights, drawing on Suresh Jindal, Neha Bhasin, and Fox Star Studios. The court held that crediting the Junior Dagar Brothers was a just remedy, as monetary damages could not compensate for the loss of recognition. The balance of convenience favored the plaintiff, as delayed acknowledgment would render the relief infructuous, causing irreparable harm to the original composers’ legacy.

Final Decision:  The court allowed the interim application (I.A. 21148/2023) with the following directions:  On all OTT and online platforms, the credit slide for "Veera Raja Veera" must be updated from “Composition based on a Dagarvani Tradition Dhrupad” to “Composition based on Shiva Stuti by Late Ustad N. Faiyazuddin Dagar and Late Ustad Zahiruddin Dagar.”  Defendants No. 1 to 3 (A.R. Rahman, Madras Talkies, and Lyca Productions) must deposit Rs. 2 crores in a Fixed Deposit with the Registrar General, subject to the suit’s final outcome.  Costs of Rs. 2 lakhs were awarded to the plaintiff, payable by Defendants No. 1 to 3 within four weeks.  The court clarified that these findings would not bind the suit’s final adjudication.

Law Settled in This Case:  This case establishes several key principles in Indian copyright law, particularly for classical music:

Originality in Traditional Music: Specific arrangements of swaras, even within the constraints of a raga, can constitute original musical works eligible for copyright protection, provided they reflect unique creative expression.Infringement Test for Music: The “ear, not eye” principle governs infringement in musical works, prioritizing aural similarity for lay listeners over technical note comparisons. Even a small but vital part of a composition, if copied, constitutes infringement.Moral Rights Recognition: Moral rights, including the right to paternity, are enforceable through interim relief, such as mandatory credit acknowledgment, especially when monetary damages are inadequate.

Case Title: Ustad Faiyaz Wasifuddin Dagar Vs A.R. Rahman: Date of Order: 25 April, 2025: Case No.: CS(COMM) 773/2023: Neutral Citation: 2025:DHC:2907: Court: High Court of Delhi: Judge: Hon'ble Ms. Justice Prathiba M. 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

Levi Strauss & Co. Vs. Rajesh Agarwal

Introduction: Decided by the High Court of Delhi on January 3, 2018, this case addresses critical issues of trademark infringement, passing off, and the evidentiary value of a Local Commissioner's report. The dispute centers around the unauthorized use of the globally renowned "LEVI'S" trademark by a small-scale merchant in Hyderabad, highlighting the tension between established brand owners and local traders. This case study delves into the factual and procedural intricacies, the legal issues at play, the arguments presented, the judicial reasoning, and the broader implications of the decision for trademark law in India.

Detailed Factual Background:  Levi Strauss & Co., a globally recognized apparel company, has been using the "LEVI'S" and "LEVI STRAUSS" trademarks since 1850, particularly for its iconic jeans. The company is the registered proprietor of these trademarks in India, with registrations in Class 25 for apparel, as evidenced by trademark registration numbers 352692, 382357B, 290954, 350738, 317649B, and 270875B. The plaintiff claimed that its brand is synonymous with quality and enjoys significant goodwill, supported by substantial sales and advertising expenditures, including over Rs. 25 crores in sales and Rs. 4.7 crores in advertising in India in the year prior to the suit's filing in 2001.

The defendant, Rajesh Agarwal, operated a small retail shop in Hyderabad, where he was found selling apparel bearing logos and devices identical to those of Levi Strauss. The plaintiff alleged that these products infringed their registered trademarks and constituted passing off by misleading consumers into believing they were purchasing genuine Levi's products. The infringing goods were discovered during an inspection by a court-appointed Local Commissioner, who seized 57 pairs of jeans bearing the infringing marks. The defendant's actions prompted Levi Strauss to file a suit for permanent injunction, damages, and other reliefs to protect its intellectual property rights.

Detailed Procedural Background: The suit was initially filed in 2001 before the original side of the Delhi High Court, seeking a permanent injunction to restrain trademark infringement, copyright violation, and passing off. On October 3, 2001, the court granted an ex-parte ad-interim injunction in favor of Levi Strauss and appointed a Local Commissioner to inspect the defendant's premises in Hyderabad. The Commissioner conducted the inspection on October 6, 2001, and filed a detailed report on October 12, 2001, confirming the presence of infringing goods. The seized items were handed over to the defendant on superdari.

The defendant initially appeared in the suit and filed a written statement but subsequently stopped participating, leading to ex-parte proceedings against him on two occasions. Due to an increase in the pecuniary jurisdiction of the district courts, the case was transferred to the Additional District Judge, who dismissed the suit on November 28, 2006. The trial court cited two primary reasons for dismissal: the plaintiff's failure to examine the Local Commissioner as a witness and the absence of evidence showing an assignment of trademarks to Levi's Strauss India Pvt. Ltd., the plaintiff's Indian affiliate.

Aggrieved by the dismissal, Levi Strauss filed an appeal (RFA 127/2007) before the Delhi High Court. The respondent could not be served despite repeated attempts, leading the court to order service by publication in the Indian Express, Hyderabad edition, on May 28, 2007. The publication was completed, but the respondent did not appear. The appeal was admitted on October 23, 2007, and the interim injunction from 2001 was continued. The matter was finally heard on January 3, 2018, with no appearance from the respondent.

Issues Involved in the Case:  The case presented several critical legal issues for adjudication: Whether the trial court erred in dismissing the suit on the ground that the Local Commissioner was not examined, despite the Commissioner's report being part of the record?

Appellant's Submissions:

Appellant argued that the trial court's dismissal was fundamentally flawed. On the issue of the Local Commissioner's report, they relied on Order 26 Rule 10(2) of the Code of Civil Procedure (CPC), which stipulates that a Commissioner's report and the evidence collected form part of the suit's record and are admissible without the Commissioner's examination. They cited two judgments to bolster this position: Misrilal Ramratan & Ors. v. A.S. Shaik Fathimal & Ors. (1995 Supp (4) SCC 600) and Harbhajan Singh v. Smt. Shakuntala Devi Sharma & Anr. (AIR 1976 Delhi 175). These cases establish that a Commissioner's report cannot be rejected merely because the Commissioner was not examined, especially when no party challenges its contents.

Regarding the assignment issue, the appellant contended that Levi Strauss & Co., as the registered proprietor of the trademarks, was not required to assign its marks to its Indian subsidiary. The plaintiff and its affiliates, including Levi's Strauss India Pvt. Ltd., operated as a single economic entity, a concept supported by the Delhi High Court's decision in George V. Records, SARL v. Kiran Jogani & Anr. (2004 (28) PTC 347 (Del)). The counsel emphasized that the trademarks were owned by Levi Strauss globally, and their use by affiliates under license or permission did not necessitate a formal assignment. Evidence of sales (over Rs. 25 crores) and advertising (Rs. 4.7 crores) in India, certified by a Chartered Accountant (Exhibit PW1/4), and advertisements in prominent magazines like Filmfare and Elle (Exhibits PW1/6) demonstrated the extensive use and reputation of the marks in India.  The appellant further argued that the Local Commissioner's report, which documented 57 pairs of jeans with infringing marks, conclusively proved infringement and passing off. The scanned copies of the infringing labels showed identical copying of the plaintiff's trademarks, violating their proprietary rights and misleading consumers.

Detailed Discussion on Judgments Cited by Parties and Their Context:  The appellant relied on three key judgments to support their arguments, each addressing specific aspects of the case:

Misrilal Ramratan & Ors. v. A.S. Shaik Fathimal & Ors. (1995 Supp (4) SCC 600): This Supreme Court decision was cited to argue that a Local Commissioner's report is part of the suit's record and cannot be rejected merely because the Commissioner was not examined. The court held that the report is admissible evidence, and non-examination is not a valid ground for dismissal unless a party raises specific objections. In the context of this case, the judgment was directly relevant, as the respondent did not challenge the Commissioner's report, and the trial court's insistence on examination was erroneous.

Harbhajan Singh v. Smt. Shakuntala Devi Sharma & Anr. (AIR 1976 Delhi 175): This Delhi High Court ruling reinforced the principle that a Commissioner's report is evidence under Order 26 Rule 10(2) of the CPC. The court clarified that examination of the Commissioner is not mandatory unless required for clarification or challenged by a party. The appellant used this precedent to argue that the trial court's dismissal for non-examination was contrary to established law, given the respondent's reliance on the report without objection.

George V. Records, SARL v. Kiran Jogani & Anr. (2004 (28) PTC 347 (Del)): This Delhi High Court decision was pivotal in addressing the assignment issue. The court recognized the concept of a "single economic entity," where a parent company and its subsidiaries or affiliates are treated as one for trademark protection purposes. The appellant argued that Levi Strauss & Co., as the registered proprietor, did not need to assign its marks to its Indian subsidiary, as the subsidiary's use was under the parent's authority. This precedent supported the plaintiff's claim that their global business structure did not undermine their trademark rights in India.The respondent did not cite any specific judgments in his written statement, relying instead on factual assertions about his status as a petty merchant and the nature of the seized goods.

Detailed Reasoning and Analysis of Judge: The court delivered a comprehensive judgment that systematically addressed the trial court's errors and upheld the plaintiff's trademark rights. The reasoning focused on three main aspects: the evidentiary value of the Local Commissioner's report, the assignment issue, and the substantive issue of infringement and passing off.

Evidentiary Value of the Local Commissioner's Report:  The judge found the trial court's dismissal for non-examination of the Local Commissioner to be legally untenable. Citing Order 26 Rule 10(2) of the CPC, the court noted that a Commissioner's report and accompanying evidence are part of the suit's record and admissible without the Commissioner's testimony. The Supreme Court's ruling in Misrilal Ramratan clarified that rejecting a report for non-examination is a "specious plea" unless specific objections are raised. Similarly, the Delhi High Court's decision in Harbhajan Singh affirmed that examination is not compulsory, particularly when the report is unchallenged.

In this case, the respondent's written statement relied on the Commissioner's report to argue that no manufacturing unit existed and the goods were not for sale, without disputing the report's authenticity or contents. The judge emphasized that the respondent's failure to challenge the report obviated the need for examination. The Local Commissioner's detailed report, filed on October 12, 2001, documented 57 pairs of jeans with infringing marks, supported by scanned copies of the labels. The court held that the trial court's insistence on examination was erroneous and contrary to settled law.

Assignment and Single Economic Entity:  The trial court's second ground for dismissal—lack of evidence of assignment to Levi's Strauss India Pvt. Ltd.—was equally flawed. The judge accepted the appellant's argument that Levi Strauss & Co., as the registered proprietor of the trademarks, did not need to assign its marks to its Indian subsidiary. The court relied on the Delhi High Court's decision in George V. Records, which recognized that a parent company and its affiliates operate as a single economic entity for trademark purposes. The plaintiff provided evidence of trademark registrations (Exhibit PW1/9) in its name, confirming its proprietary rights.

The judge further noted that the sales and advertising figures (Exhibits PW1/4, PW1/5, PW1/6) submitted by the plaintiff, though pertaining to the Indian subsidiary, were relevant to establish the marksVestive use and reputation of the trademarks in India. The court held that requiring an assignment to the subsidiary was unnecessary, as the subsidiary's activities were under the plaintiff's authority. The concept of a single economic entity ensured that the plaintiff's global business structure did not prejudice its trademark rights, aligning with the fundamental purpose of trademarks as source identifiers.

Infringement and Passing Off:  The court found that the respondent's use of identical logos and labels constituted a "classic case of identical copying." The scanned copies of the infringing labels showed misuse of the plaintiff's name and accompanying devices, violating their registered trademarks and constituting passing off. The judge emphasized that the trust consumers place in a brand transcends the entities selling the products locally, reinforcing the need to protect trademarks as source identifiers.

Final Decision:  The High Court set aside the trial court's judgment dated November 28, 2006, and decreed the suit in favor of Levi Strauss. The plaintiff was granted a permanent injunction restraining the respondent from infringing the "LEVI'S" and "LEVI STRAUSS" trademarks, as prayed in clauses (i), (ii), and (iii) of the plaint. The appellant did not press the claim for damages. The court awarded costs of Rs. 14,750, comprising Rs. 7,400 in suit court fees and Rs. 7,350 in appeal court fees, reflecting the modest scale of the infringement (57 pairs of jeans). The appeal was allowed, and all miscellaneous applications were disposed of as infructuous.

Law Settled in This Case: This case settled several important principles in Indian trademark law:

A Local Commissioner's report is admissible evidence under Order 26 Rule 10(2) of the CPC and does not require the Commissioner's examination unless specifically challenged by a party.A parent company and its subsidiaries or affiliates are treated as a single economic entity for trademark protection, eliminating the need for formal assignments to local entities when the parent is the registered proprietor.The use of identical logos and labels constitutes trademark infringement and passing off, particularly when it misleads consumers about the source of the goods.

Case Title: Levi Strauss & Co. Vs. Rajesh Agarwal

Date of Order: January 3, 2018

Case No.: RFA 127/2007

Neutral Citation: 2018:DHC:34

Name of Court: High Court of Delhi

Name of Judge: Justice Prathiba M. 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

Agriboard International Vs Deputy Controller of Patents

Introduction: The case of Agriboard International LLC vs Deputy Controller of Patents and Designs, decided by the Delhi High Court on March 31, 2022, stands as a landmark in Indian patent law, highlighting the critical need for reasoned and transparent decision-making in the adjudication of patent applications. This appeal, filed under Section 117A of the Patents Act, 1970, challenged the Deputy Controller’s order rejecting the appellant’s patent application for an “Efficient Method and Apparatus for Producing Compressed Structural Fiberboard” on the grounds of lacking inventive step. The Delhi High Court’s decision to set aside the cryptic order and remand the matter for fresh consideration underscores the judiciary’s commitment to ensuring that patent offices adhere to principles of natural justice and provide detailed justifications for rejections. This case sets a robust precedent for the analytical rigor required in assessing inventive step, particularly in the context of technical advancements in industrial processes.

Detailed Factual Background:  Agriboard International LLC, a U.S.-based company, filed a patent application in India (No. 202014010848) on March 13, 2020, for an invention titled “Efficient Method and Apparatus for Producing Compressed Structural Fiberboard.” This application claimed priority from a U.S. patent application (No. 16/353,624) filed on March 14, 2019. The invention involved a method and apparatus for producing compressed structural fiberboard from agricultural fibrous matter, such as rice straw, using a novel extruder mechanism. The core innovation lay in the use of electric linear actuators to drive a cyclic ram, replacing conventional mechanical systems like drive flywheels and crankshafts, which offered greater control, energy efficiency, reduced maintenance, and enhanced safety.

The Indian Patent Office (IPO) issued a First Examination Report (FER) on July 21, 2020, raising objections on novelty under Section 2(1)(j) and inventive step under Section 2(1)(ja) of the Patents Act, 1970. The FER cited three prior art documents—D1 (US5945132A), D2 (US20090188642A1), and D3 (CN102026785B)—claiming that claims 1-15 were anticipated and obvious. D1, also filed by Agriboard Industries Inc. and granted in 1999, described a similar process for producing fiberboard but used a conventional mechanical extruder with a reciprocating ram driven by a connecting rod, crank, and flywheel.

Agriboard responded to the FER on February 21, 2021, distinguishing the invention from D1 by highlighting the shift from mechanical to electric linear actuators, which provided technical advantages. The response emphasized the invention’s specification, particularly paragraph 45, which detailed the linear actuators’ efficiency and control mechanisms. After a hearing and submission of written arguments on April 30, 2021, the Deputy Controller issued an order on June 16, 2021, rejecting the application under Section 2(1)(ja) for lack of inventive step, primarily relying on D1. The order also noted an unresolved objection regarding notarization of the power of attorney (PA).

Detailed Procedural Background: The procedural timeline began with the filing of the Indian patent application on March 13, 2020, following the U.S. priority application. The IPO’s examination process commenced upon Agriboard’s request, leading to the FER on July 21, 2020. Agriboard’s response on February 21, 2021, addressed the objections, and a hearing was held, followed by written submissions on April 30, 2021. The Deputy Controller’s rejection order on June 16, 2021, prompted Agriboard to file an appeal under Section 117A(2) of the Patents Act, registered as C.A. (COMM. IPD-PAT) 4/2022, before the Delhi High Court.

Agriboard also filed an application (I.A. 161/2022) to condone a 100-day delay in filing the appeal, which was granted based on the Supreme Court’s order in Suo Moto Writ Petition (C) No. 3 of 2020, extending limitation periods due to the COVID-19 pandemic. The appeal was heard by Justice Prathiba M. Singh, with Agriboard represented by Mr. Vineet Rohilla, Mr. Rohit Rangi, and Mr. Debashish Banerjee, and the IPO by Mr. Harish V. Shankar, Central Government Standing Counsel, along with Ms. S. Bushara Kazim and Mr. Srish Kumar Mishra. The court delivered its oral judgment on March 31, 2022, with the corrected order released on April 4, 2022.

Issues Involved in the Case

The court addressed the following key issues in adjudicating the appeal: Whether the Deputy Controller’s order rejecting the patent application for lack of inventive step was sufficiently reasoned and compliant with principles of natural justice. Whether the Controller adequately considered Agriboard’s submissions distinguishing the invention from the prior art, particularly D1. Whether the shift from a mechanical to an electric linear actuator constituted a mere workshop modification or a patentable inventive step. Whether the impugned order’s reliance on D1, without addressing D2, D3, or the International Search Report (ISR), rendered it deficient. Whether the matter should be remanded for fresh consideration, and if so, what scope should be allowed for considering additional prior art.

Appellant’s (Agriboard’s) Submissions: Agriboard argued that the Deputy Controller’s order was cryptic and lacked reasoning, violating the principle of audi alteram partem. The order merely reproduced the FER’s objections on D1 without addressing Agriboard’s response, which distinguished the invention’s electric linear actuators from D1’s mechanical system. Referring to figure 9 and paragraph 45 of the specification, Agriboard emphasized that the invention’s extruder used linear actuators controlled by motion control software, offering superior efficiency, lower energy use, and reduced maintenance compared to D1’s flywheel-driven ram. The appellant contended that this represented a significant technical advance, not a routine modification.

Agriboard cited the U.S. Patent Office’s allowance of the priority application, which considered D1 and found the electric actuators non-obvious due to a “significant change in the operating principle of the ram.” The appellant relied on Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, (2010) 4 SCC 785, to argue that reasoned orders are essential for fairness. Agriboard urged the court to set aside the order and remand the matter, asserting that the Controller failed to analyze how D1 rendered the invention obvious to a person skilled in the art.

Respondent’s (IPO’s) Submissions: The IPO defended the rejection, arguing that the order’s reasoning, though brief, was sufficient, as it extracted D1’s relevant disclosures. The IPO contended that the shift from D1’s mechanical extruder to electric linear actuators was a “workshop modification,” lacking inventive step. The IPO noted that D1 was Agriboard’s own patent, granted in 1999 and set to expire in 2019, suggesting the new application was an attempt to extend the earlier patent’s term. The IPO cited US20100307349A1 to argue that electric linear actuators were widely used in pressing apparatuses over the 20-year period, rendering the invention obvious.

The IPO also highlighted the International Search Report (ISR) from the Patent Cooperation Treaty (PCT) Office, which found the claims lacking inventive step under Article 33(3). The IPO argued that the Controller’s conclusion was justified, and the court should not interfere with the technical assessment of obviousness.

Detailed Discussion on Judgments Cited by Parties: The parties, primarily Agriboard, relied on judicial precedents to frame their arguments:

Assistant Commissioner, Commercial Tax Department v. Shukla and Brothers, (2010) 4 SCC 785 (Supreme Court of India): Cited by Agriboard, this case emphasized that reasoned orders are integral to the principle of audi alteram partem. The Supreme Court held that authorities must provide a fair procedure, apply their mind, and dispose of matters with a speaking order, ensuring transparency. The Delhi High Court applied this principle, finding the Deputy Controller’s order deficient for lacking analysis of Agriboard’s response to D1.

Manohar v. State of Maharashtra & Ors., AIR 2013 SC 681 (Supreme Court of India): Referenced by the court in its analysis, this Supreme Court decision reiterated that application of mind and reasoned decision-making are core elements of natural justice. The court used this precedent to underscore the Patent Office’s obligation to provide detailed justifications when rejecting patent applications.

The IPO cited US20100307349A1 (a U.S. patent document, not a judgment)** to argue that electric linear actuators were common, but this was not considered in the impugned order, limiting its relevance. The ISR, while mentioned, was also not part of the Controller’s reasoning, and the court declined to opine on it or other uncited prior art (e.g., Sullivan et al., US6143220; Pittman et al., US8052842; DE102006004779 A1) referenced in the U.S. examiner’s analysis.

Detailed Reasoning and Analysis of Judge: The court examined the invention’s specification, particularly figure 1 (depicting the apparatus’s cells) and figure 9 (detailing the extruder’s linear actuators), alongside paragraph 45, which highlighted the technical advantages of electric linear actuators over D1’s mechanical system. The court noted that the actuators’ linear motion, controlled by software, reduced energy, maintenance, and safety risks, distinguishing the invention from D1’s flywheel-driven ram.

The court found the Deputy Controller’s order “completely lacking in reasoning,” as it merely reproduced the FER’s objections on D1 without engaging with Agriboard’s response. The order failed to discuss how D1’s disclosures rendered the invention obvious or why Agriboard’s distinctions were inadequate. The court emphasized that Section 2(1)(ja) defines “inventive step” as a feature involving technical advance or economic significance that is not obvious to a person skilled in the art. To reject an application, The Controller must analyze three elements: the prior art’s disclosure, the invention’s disclosure, and the obviousness to a skilled person. The absence of this analysis rendered the order arbitrary.

The court drew support from the U.S. Patent Office’s analysis, which found the electric actuators non-obvious over D1 due to a significant change in the ram’s operating principle. While not binding, this bolstered Agriboard’s claim of inventiveness. The court rejected the IPO’s argument that the shift to electric actuators was a workshop modification, noting that the Controller’s order lacked such reasoning and failed to consider the specification’s technical advancements.

Citing Shukla and Brothers and Manohar, the court underscored that reasoned orders are essential to ensure fairness, particularly in patent rejections affecting applicants’ rights. The court declined to opine on D2, D3, or the ISR, as they were not addressed in the impugned order, but permitted the IPO to consider these upon remand. The court clarified that its observations on D1 were not binding on the Controller, ensuring a fresh and unbiased reconsideration.

Final Decision: The Delhi High Court allowed the appeal (C.A. (COMM. IPD-PAT) 4/2022), setting aside the Deputy Controller’s order dated June 16, 2021, and remanding the matter to the Indian Patent Office for fresh consideration within four months. The IPO was permitted to consider D1, other prior art (D2, D3), and the ISR, ensuring a comprehensive evaluation. 

Law Settled in This Case: This case established several pivotal principles in Indian patent law, particularly for inventive step assessments:

Requirement of Reasoned Orders: Patent rejections, especially for lack of inventive step, must be supported by a speaking order analyzing the prior art, the invention, and the obviousness to a person skilled in the art, as mandated by Section 2(1)(ja) and natural justice principles. 

Three-Element Analysis for Inventive Step: Controllers must evaluate the prior art’s disclosure, the invention’s features, and the reasoning for obviousness, unless the lack of inventiveness is patently clear. 

Engagement with Applicant’s Submissions: The Patent Office must address applicants’ responses to prior art objections to ensure procedural fairness and avoid arbitrary decisions. Scope of Remand: Courts may remand matters for fresh consideration, allowing the IPO to consider additional prior art not addressed in the original order, while ensuring impartiality. 

Judicial Oversight: Courts will intervene when patent rejections lack reasoning, reinforcing transparency and accountability in intellectual property administration.

Case Title: Agriboard International LLC Vs Deputy Controller of Patents and Designs

Date of Order: March 31, 2022

Case No.: C.A. (COMM. IPD-PAT) 4/2022

Neutral Citation: 2022 SCC OnLine Del 940

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Prathiba M. 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

Hulm Entertainment Pvt Ltd Vs SBM Gaming Network Private Limited

This case involves Hulm Entertainment Pvt Ltd challenging an order by the Delhi High Court that refused to consider their application for an interim injunction against SBM Gaming Network Private Limited. 

Hulm Entertainment desired to prevent SBM Gaming from engaging in certain gaming activities that Hulm claimed infringed upon its rights, and sought immediate relief before SBM could respond to the allegations. 

The key issue revolved around whether the court could grant an ex parte or ad interim injunction without providing the opposing party a prior opportunity to be heard.

The Delhi High Court observed that, according to the ruling in Dabur India Ltd. v. Emami Ltd., courts should generally avoid granting ad interim or ex parte relief if the defendant has not been given a chance to respond, especially when the defendant’s product or activity has been in the market for some time. 

The Court cited Dabur India to emphasize the importance of fairness and the necessity of recording reasons before granting such relief, advocating for providing parties with a preliminary opportunity to oppose the injunction unless exceptional circumstances justify otherwise.

The Court analyzed whether the principles outlined in Dabur India restrict courts from granting urgent relief when circumstances demand it. The Court clarified that Dabur India does not prohibit such relief, provided that the circumstances justify it. 

It emphasized that the main focus should be on whether the case warrants immediate action and whether the applicant has established sufficient grounds for urgent relief, rather than rigidly following a rule that prior notice is always necessary.

Ultimately, the Court remanded the matter back to the single judge to reconsider the application for interim relief after ensuring that the principles of fairness and adequate opportunity to respond were maintained. The Court cautioned that grant or denial of such relief should be made based on the facts and merits of the case, balancing the interests of the parties and the public.

Hulm Entertainment Pvt Ltd Vs SBM Gaming Network Private Limited
Date of Order: October 11, 2023
Case No.: FAO (COMM) 209/202
Judge: Hon'ble Justice Yashwant Varma and Hon'ble Justice Dharmesh Sharma

Sulphur Mills Limited Vs Dharmaj Crop Guard Limited

This case involves a patent infringement dispute between Sulphur Mills Limited (Plaintiff) and Dharmaj Crop Guard Limited (Defendant) before the Delhi High Court. Sulphur Mills Limited filed a suit claiming that the Defendant was infringing on its patent related to a sulphur-based formulation. 

The proceedings encompass multiple procedural steps including the filing of written statements, counterclaims, and interim relief applications. 

The Defendant initially sought condonation of delay in filing its written statement, which the Court condoned, allowing the case to proceed smoothly. The Court directed the parties to submit affidavits, file counterclaims, and undertake undertakings related to the withdrawal of opposition filings before the Patent Office.

Important aspects was this Defendant was not allowed to pursue post grant notice of opposition and cointer claim simultaneously. The Defendant's counter claim was entertained subject to withdrawal of post grant notice of opposition. 

Case Title: Sulphur Mills Limited Vs Dharmaj Crop Guard Limited

Date of Order: December 20, 2018

Case Number: CS (COMM) 1225/2018

Court Name: Delhi High Court

Judge Name: Justice Prathiba M. Singh