Ceat Limited vs Ramu Kushwha & Anr.

Protecting Well-Known Trademarks

Introduction: The case of Ceat Limited vs Ramu Kushwha, adjudicated by the High Court of Judicature at Bombay, delves into a significant intellectual property dispute involving trademark infringement, copyright violation, and passing off. The plaintiff, Ceat Limited, a prominent manufacturer of automotive tyres with a legacy dating back to 1924, sought to protect its well-known trademark "CEAT" and associated artistic works against the defendants, Ramu Kushwha and another, who allegedly used deceptively similar marks such as "CREATA," "CATE," and "CAT" for identical goods. This interim application, decided on August 12, 2025, builds upon an earlier ex-parte ad-interim relief granted in October 2023, addressing the defendants' objections on jurisdiction, non-infringement, and the maintainability of the passing off action. The judgment underscores the protection of established trademarks and the legal implications of using similar marks in the marketplace.

Factual Background:Ceat Limited traces its origins to 1924 when Ceat SpA was established in Italy, with Ceat Gomma SpA commencing the sale of pneumatic and solid tyres under the trademark "CEAT"—an acronym for the Italian phrase "Electric Cables and Allied Products of Turin"—since 1951. The plaintiff, incorporated in India in 1958 as Ceat Tyres of India Limited, began manufacturing and marketing tyres under a license from Ceat SpA in 1960. Through assignments in 1978 and 2010, Ceat Limited acquired full rights to the "CEAT" trademark globally, operating over 450 retail outlets across India. The company holds registrations for the "CEAT" word mark since 1961, label mark since 1987, and logo since 2020, with a turnover exceeding Rs. 11,088 crores and promotional expenses over Rs. 21,235 crores in 2022-2023. The defendants were found selling tyre tubes under marks "CREATA" and "CATE," later amended to include "CAT," using packaging deceptively similar to Ceat's artistic label, prompting this legal action.

Procedural Background:The plaintiff initiated Commercial IP Suit No. 311 of 2023, with Interim Application No. 4131 of 2025 filed to enforce and amend earlier reliefs. An ex-parte ad-interim order was granted on October 20, 2023, restraining the defendants from using the impugned marks, executed by the Court Receiver, which uncovered the additional mark "CAT." The defendants raised objections via a reply affidavit, challenging jurisdiction and alleging non-infringement. The plaintiff sought leave under Clause XIV of the Letters Patent to combine causes of action, which was granted. Arguments were heard, with the matter reserved on July 30, 2025, and the order pronounced on August 12, 2025, by Justice Sharmila U. Deshmukh.

Core Dispute:The central dispute revolves around whether the defendants' use of "CREATA," "CATE," and "CAT" constitutes infringement of the plaintiff's registered "CEAT" trademark and copyright in its artistic label, as well as passing off their goods as those of the plaintiff. Key issues include the territorial jurisdiction of the Bombay High Court, given the defendants' alleged lack of business in Mumbai, the defendants' contention that "CEAT" is a common English word or publici juris, and the distinction between the parties' products—tyres versus butyl tubes. The plaintiff asserts its well-known status and prior use, while the defendants argue no confusion arises due to different product categories and the absence of sales within the court's jurisdiction.

Discussion on Judgments:The parties and court relied on several precedents to frame their arguments. The plaintiff referenced N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, to assert that a well-known trademark's goodwill extends beyond registered goods, supporting its claim against the defendants' use of similar marks. The defendants did not cite specific judgments but implied reliance on cases like American Home Products Corporation v. Mac Laboratories Pvt. Ltd., AIR 1986 SC 137, in arguing that descriptive marks lack exclusivity, though this was not directly pleaded. The court drew on Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149, to establish that territorial jurisdiction under Section 134(2) of the Trade Marks Act, 1999, is valid where the plaintiff carries on business, reinforcing the court's authority. Additionally, the court considered Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, to affirm that passing off actions protect goodwill irrespective of product differences, supporting the plaintiff's case.

Reasoning and Analysis of the Judge:Justice Sharmila U. Deshmukh analyzed the plaintiff's established goodwill and reputation in the "CEAT" trademark, recognized as well-known by judicial orders and the Registrar of Trade Marks since 2020. The court found the defendants' marks "CREATA," "CATE," and "CAT" deceptively similar, likely causing confusion among consumers, despite the defendants' claim of selling butyl tubes versus the plaintiff's tyres. The judge rejected the defendants' jurisdictional challenge, affirming the court's authority under Section 134(2) of the Trade Marks Act, 1999, and Section 62(2) of the Copyright Act, 1957, due to the plaintiff's registered office in Mumbai. The argument that "CEAT" is a common word was dismissed, given its coined nature and the plaintiff's extensive use since 1951. The court also upheld the copyright infringement claim, noting the defendants' imitation of the plaintiff's artistic label packaging, and found the passing off action maintainable based on potential market confusion.

Final Decision: The court upheld the interim order dated October 20, 2023, and the amended relief concerning the "CAT" mark. It restrained the defendants, Ramu Kushwha and another, from using "CREATA," "CATE," "CAT," or any deceptively similar marks or artistic works infringing the plaintiff's "CEAT" trademark and copyright. The defendants' objections on jurisdiction and non-infringement were overruled, with the interim reliefs continuing pending final adjudication.

Law Settled in This Case:This judgment clarifies that a well-known trademark's protection extends to similar marks used for identical or related goods, irrespective of minor product category differences, under the Trade Marks Act, 1999. It reaffirms that territorial jurisdiction is established where the plaintiff carries on business, as per Section 134(2), and that coined marks, even if acronym-based, are entitled to exclusivity if supported by long-standing use and goodwill. The decision also establishes that imitation of artistic label packaging constitutes copyright infringement, and passing off actions are maintainable based on potential consumer confusion, reinforcing the sanctity of intellectual property rights.

Case Title: Ceat Limited vs Ramu Kushwha & Anr.

Date of Order: 12 August, 2025

Case Number: Commercial IP Suit No. 311 of 2023

Neutral Citation: 2025:BHC-OS:13264

Name of Court: High Court of  Bombay

Name of Hon'ble Judge: Sharmila U. Deshmukh

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

Reckitt Benckiser (India) Private Limited vs Sauss Home Products Private Limited

Prior User Rights of Trademark and Fabricated Evidence

Introduction: This judgment addresses a dispute in intellectual property law concerning the infringement of trademarks and copyrights related to a bird device mark used in laundry and cleaning products. The plaintiff, Reckitt Benckiser (India) Private Limited, sought protection for its 'Robin' bird device mark, claiming prior adoption and use since 1899 globally and 1942 in India, against the defendant, Sauss Home Products Private Limited, which asserted use since 1976. The High Court of Delhi examined issues of prior user rights, fabricated evidence, delay in filing, and territorial jurisdiction, ultimately granting an interim injunction in favor of the plaintiff while dismissing the defendant's plea for rejection of the plaint. The decision underscores the principles of passing off and the superiority of prior user rights over subsequent registrations, even in cases involving registered marks.

Factual Background: The plaintiff is an Indian subsidiary of the global Reckitt Group, engaged in fast-moving consumer goods including bleaching and cleaning preparations, with a turnover exceeding INR 8,000 crores in India and USD 17 billion globally. The Reckitt Group adopted the 'Robin' mark and bird device in 1899 for rice starch products, using it continuously worldwide and in India since 1942, securing multiple trademark and copyright registrations, including the subject device mark registered in 1998. The plaintiff demonstrated extensive sales and advertising, claiming goodwill in the mark. The defendant, incorporated in 2013, manufactures washing soaps and detergents, claiming adoption of a similar bird device mark since 1976 through a predecessor entity, with registrations from 2006 onward. The plaintiff learned of the defendant's use in 2017 via a trademark application, opposed it, and filed the suit in 2023 after discovering actual sales, alleging infringement and passing off. The defendant countered with claims of prior use, filing rectification petitions against the plaintiff's marks and a prior suit in Agra where an interim order was stayed.

Procedural Background: The suit was filed on 8 August 2023 seeking permanent injunction for trademark infringement, copyright violation, and passing off. An application under Order XXXIX Rules 1 and 2 CPC for interim injunction was filed, along with the defendant's application under Order VII Rules 10 and 11 CPC for rejection/return of the plaint on jurisdictional grounds. Summons were issued on 8 August 2023, with the defendant appearing on 18 October 2023. No ex parte injunction was granted initially. Pleadings were completed, and arguments were heard on 6 March 2025, 24 April 2025, and 13 May 2025, with judgment reserved on the latter date and pronounced on 14 August 2025. The court also referenced a parallel suit in Agra where the defendant's interim relief was dismissed on 25 February 2025.

Core Dispute: The primary issue was whether the defendant infringed the plaintiff's trademarks and copyrights in the 'Robin' bird device mark and passed off its goods as those of the plaintiff. Key sub-issues included determining prior user and adopter of the identical marks for similar goods, the validity of the defendant's prior use claims based on allegedly fabricated documents, the impact of delay in filing the suit, and the court's territorial jurisdiction under Section 20 CPC, given the plaintiff's Haryana office and sales in Delhi. The dispute highlighted the tension between registered rights and common law passing off principles, with the plaintiff asserting global heritage and the defendant claiming local prior adoption since 1976.

Discussion on Judgments: The parties and court referenced several precedents to support their positions on prior user rights, delay, and injunctions. The plaintiff relied on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, in the context of arguing that prior user rights prevail over subsequent registrations, emphasizing that passing off actions remain viable despite statutory registrations. Hindustan Pencils Private Limited v. India Stationery Products Co., AIR 1990 Delhi 19, was cited by the plaintiff to contend that mere delay does not bar interim relief if the defendant's adoption is dishonest, as the court must consider fraudulent intent over laches. Similarly, Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 90, was invoked by the plaintiff to reinforce that in trademark infringement suits, delay alone is insufficient to deny injunction, particularly where dishonesty is evident. The defendant did not cite additional judgments beyond challenging the plaintiff's claims, but the court applied these precedents to prioritize prior use and dismiss delay defenses.

Reasoning and Analysis of the Judge:Justice Amit Bansal analyzed the rival marks as nearly identical in shape, color, and layout, used for identical goods, likely causing confusion. Focusing on passing off under Section 27(2) of the Trade Marks Act, the judge prioritized prior user rights, finding the plaintiff's evidence from 1998-2000, including artist interviews and sales certificates, prima facie credible. The defendant's 1976 claim was rejected as fabricated, particularly the 'Sainik Newspaper' document from 1997 reporting post-1997 events, deeming it manufactured without needing further inquiry at interim stage. Other defendant documents referenced only 'Pooja' mark, not the bird device. Delay was dismissed as non-fatal given dishonest adoption, per established precedents. 

Final Decision: The court allowed the plaintiff's interim injunction application under Order XXXIX Rules 1 and 2 CPC, restraining the defendant from using the bird device mark or infringing the plaintiff's copyright until final adjudication. Observations were limited to the interim stage.

Law Settled in This Case: This decision reaffirms that prior user rights in passing off actions supersede subsequent trademark registrations, even if valid. It clarifies that fabricated evidence undermines prior use claims, and delay does not bar injunctions where adoption is dishonest. The judgment also settles that jurisdiction under Section 20 CPC extends to places of sale and online accessibility, emphasizing protection of goodwill in identical marks for similar goods.

Case Title: Reckitt Benckiser (India) Private Limited Vs Sauss Home Products Private Limited

Date of Order: 14th August, 2025

Case Number: CS(COMM) 539/2023

Neutral Citation: 2025:DHC:6856

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Amit Bansal

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

Mahesh Gupta vs Registrar Of Trademar

Retrospectivity of Procedural Amendments in Trademark Law

Introduction: This case revolves around a significant legal reference placed before a Division Bench of the High Court of Delhi concerning the applicability of procedural rules under the Trade Marks Rules, 2017 to ongoing trademark opposition proceedings that were initiated under the repealed Trade Marks Rules, 2002. The reference arose from doubts expressed by a learned Single Judge in the matter of SAP SE v. Swiss Auto Products & Anr. regarding the correctness of an earlier decision in Mahesh Gupta v. Registrar of Trademarks & Anr. The core issue pertains to whether changes introduced by the 2017 Rules, particularly those relating to timelines for filing evidence in support of oppositions or applications and the concept of deemed abandonment for non-compliance, should apply retrospectively. The Division Bench, comprising Justices Yashwant Varma and Dharmesh Sharma, examined the statutory framework, the impact of repeal provisions, and the nature of procedural amendments to resolve whether such rules alter the course of pre-existing proceedings. This judgment clarifies the interplay between old and new rules in trademark adjudication, emphasizing the preservation of actions taken under prior regimes.

Factual Background: The factual matrix involves two separate trademark disputes consolidated for reference. In the first, SAP SE sought registration of the mark "SAP" under Class 9 on December 6, 1999. The application was advertised in the Trade Mark Journal on January 1, 2007, and opposed by Swiss Auto Products on August 14, 2007. SAP SE received notice of the opposition on October 24, 2011, and filed its counter-statement on December 21, 2011. Swiss Auto Products filed evidence in support of opposition on October 19, 2013, after seeking extensions. SAP SE then requested extensions to file evidence in support of its application on January 9, 2014, February 12, 2014, March 11, 2014, and April 9, 2014, ultimately submitting it on May 9, 2014. The Registrar rejected SAP SE's evidence on June 12, 2019, citing non-compliance with timelines under the 2002 Rules. In the second dispute, Mahesh Gupta opposed the registration of the mark "JKENT" under Class 32 filed by the second respondent on April 28, 1998. Mahesh Gupta filed opposition on September 15, 2006, and the counter-statement was submitted on April 12, 2008. Evidence in support of opposition was filed by Mahesh Gupta on June 10, 2010, with an extension request, and fully submitted on September 25, 2010. The Registrar deemed the opposition abandoned on August 7, 2019, invoking the 2017 Rules.

Procedural Background: The proceedings in both matters commenced under the 2002 Rules. In SAP SE's case, the opposition process unfolded with filings and extensions sought prior to the 2017 Rules' enforcement on March 6, 2017. The Registrar's rejection order came post-2017, applying the old rules' strict timelines. SAP SE appealed to the High Court, where a Single Judge referred the matter to a larger bench on July 3, 2023, questioning retrospectivity. In Mahesh Gupta's case, similar delays occurred in evidence filing, and the Registrar applied the 2017 Rules to deem abandonment. Mahesh Gupta appealed, and a Single Judge in 2023 upheld the abandonment under the 2002 Rules, interpreting the repeal clause to preserve prior actions. 

Core Dispute: The central controversy hinges on the retrospective application of procedural provisions in the 2017 Rules to trademark oppositions initiated under the 2002 Rules. Specifically, the dispute focuses on Rules 45 and 46 of the 2017 Rules, which introduce deemed abandonment for failing to file evidence within prescribed timelines—two months for opposition evidence, extendable by one month, and similar for application evidence. The 2002 Rules (Rules 50 and 51) had stricter language with phrases like "not exceeding one month," leading to debates on whether they embodied deemed abandonment implicitly. The reference questions whether failure to file evidence under the 2002 Rules constitutes "anything done" saved by Rule 158 of the 2017 Rules, thus continuing under the old regime, or if the new rules' procedural nature mandates retrospectivity, potentially reviving abandoned proceedings. This raises broader issues of statutory interpretation, the effect of repeal without explicit savings for pending matters, and the balance between procedural efficiency and vested rights in ongoing litigations.

Discussion on Judgments: The parties and the court extensively referenced prior judicial precedents to argue their positions on retrospectivity and procedural rules. SAP SE relied on Garikapati Veeraya v. N. Subbiah Choudhry, AIR 1957 SC 540, to contend that procedural changes apply retrospectively unless they impair vested rights, asserting that the 2017 Rules relaxed timelines and should govern post-enforcement decisions. The first respondent in SAP SE's reference cited New India Assurance Co. Ltd. v. Shanti Misra, (1975) 2 SCC 840, in the context of procedural amendments not affecting accrued rights, arguing that the Registrar's discretion under the old rules was limited. Mahesh Gupta invoked Hitendra Vishnu Thakur v. State of Maharashtra, (1994) 4 SCC 602, to emphasize that procedural rules are retrospective only if they do not prejudice parties, highlighting the saving clause in Rule 158 as preserving 2002 proceedings. The second respondent in Mahesh Gupta's appeal referred to Commissioner of Income Tax v. Shah Sadiq & Sons, (1987) 3 SCC 516, to argue that repeal erases prior rules unless saved, but contended that "anything done" includes incomplete actions like evidence filing, thus applying old rules. The court discussed Wyeth Holdings Corporation v. Registrar of Trade Marks, 2009 (40) PTC 519 (Del), where a Division Bench interpreted Rule 50 of the 2002 Rules as not mandating abandonment if extensions were sought bona fide, but the present Bench distinguished it as contrary to statutory language. Additionally, the court analyzed Jose Paulo Coutinho v. Maria Luiza Valentina Pereira, (2019) 20 SCC 85, in the context of procedural retrospectivity not applying to substantive rights, reinforcing that deemed abandonment under 2002 Rules attains finality. The Single Judge's opinion in SAP SE v. Swiss Auto Products & Anr., 2023 SCC Online Del 1324, was critiqued for overlooking the saving clause's broad scope, while Mahesh Gupta v. Registrar of Trademarks & Anr., 2023:DHC:1623, was upheld as correctly applying the 2002 Rules to pre-2017 filings.

Reasoning and Analysis of the Judge: The Division Bench meticulously dissected the trademark statutory framework, beginning with the evolution from the 1959 Rules to the 2002 and 2017 regimes. Justice Yashwant Varma, authoring the judgment, analyzed Rule 158 of the 2017 Rules, which repeals the 2002 Rules "without prejudice to anything done under such rules," interpreting "anything done" expansively to include all steps in ongoing proceedings, such as filing oppositions and evidence, thereby shielding them from new rules. The Bench reasoned that procedural changes, while generally retrospective, do not apply if they disrupt vested positions or finalities achieved under prior laws, drawing a distinction from pure procedural amendments like court fees. Examining the phrase "not exceeding one month" in Rules 50 and 51 of the 2002 Rules, the court held it imposes an inflexible cap, implying deemed abandonment for non-compliance, akin to the explicit provision in the 2017 Rules. The analysis rejected the SAP SE Single Judge's view that the 2017 Rules reverted to the flexible 1959 regime, noting that the 2002 Rules introduced rigidity to expedite resolutions, and repeal does not revive abandoned rights unless expressly provided. The Bench critiqued the notion that post-2017 decisions must apply new rules, emphasizing that the right to file evidence lapses irrevocably under the old timelines, unaffected by later enactments. Balancing efficiency in trademark adjudication with fairness, the court concluded that applying 2017 Rules retrospectively would undermine the legislative intent of the 2002 Rules and lead to chaos in pending matters.

Final Decision: The Division Bench answered the reference questions in the negative, holding that procedural rules under the 2017 Rules do not apply retrospectively to proceedings initiated under the 2002 Rules. Failure to file evidence under the 2002 Rules constitutes "anything done" saved by Rule 158, continuing to be governed by the old rules. Consequently, in SAP SE's appeal, the Registrar's rejection of evidence was upheld under the 2002 Rules, and the appeal was dismissed. In Mahesh Gupta's LPA, the Single Judge's order deeming opposition abandoned was affirmed, though corrected to apply the 2002 Rules instead of 2017, and the appeal was dismissed.

Law Settled in This Case: This judgment settles that the Trade Marks Rules, 2017 do not retrospectively govern procedural aspects like evidence filing timelines in oppositions initiated under the 2002 Rules, due to the saving clause in Rule 158 preserving prior actions. It clarifies that the phrase "not exceeding one month" in the 2002 Rules mandates strict compliance, leading to deemed abandonment, which attains irrevocability and cannot be revived by subsequent rules. The decision reinforces that procedural amendments apply retrospectively only if they do not impair finalities or vested positions under repealed laws, providing clarity for trademark registries in handling legacy proceedings.

Case Title: Mahesh Gupta vs Registrar Of Trademarks & Anr.

Date of Order: 13 March, 2024

Case Number: LPA 429/2023 

Neutral Citation: 2024:DHC:2053-DB

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma

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

Infosys Limited vs Southern Infosys Limited

Trademark Remedies and Corporate Law Conflicts

Introduction: The case of Infosys Limited versus Southern Infosys Limited represents a significant development in the intersection of trademark law and corporate governance under the Companies Act, 2013. It addresses the obligations of a company compelled by a court to change its name due to trademark infringement and whether such a company must continue to display its former name in compliance with statutory provisions. The dispute arose from the plaintiff's contention that the defendant, despite changing its name following an injunction, improperly relied on Section 12 of the Companies Act to retain references to its previous name, potentially perpetuating confusion in the market. This order, issued by the Delhi High Court, clarifies the limits of statutory requirements in the context of judicially mandated name changes, emphasizing the primacy of preventing deceptive similarity over routine corporate disclosure norms. By drawing on precedents, the court reinforces the distinct treatment of involuntary name changes driven by infringement remedies, highlighting the balance between public disclosure and the protection of intellectual property rights.

Factual Background: Infosys Limited, a well-established information technology company, initiated legal action against Southern Infosys Limited, alleging that the defendant's corporate name infringed upon its registered trademark "Infosys" by creating deceptive similarity and confusion among consumers. The plaintiff argued that the use of "Infosys" in the defendant's name amounted to passing off and trademark violation, leading to a suit for injunction and damages. On May 27, 2024, the Delhi High Court granted a permanent injunction, restraining the defendant from using the name "Southern Infosys Limited" and directing it to change its corporate name. This judgment was subsequently upheld by a Division Bench of the same court. In response, the defendant changed its name but filed a compliance affidavit on July 5, 2025, stating that it would continue to reflect its previous name in certain communications, invoking Section 12 of the Companies Act, 2013, which requires companies undergoing name changes to display both old and new names for a specified period. The plaintiff, dissatisfied with this approach, contended that such display defeated the purpose of the injunction by allowing ongoing association with the infringing name.

Procedural Background:  The suit was filed before the Delhi High Court as CS(COMM) 257/2024, accompanied by an interim application I.A. 6053/2025. The initial judgment on May 27, 2024, decreed in favor of the plaintiff, imposing a permanent injunction and mandating the name change. Following the defendant's compliance affidavit of July 5, 2025, the plaintiff raised objections during a hearing on August 1, 2025. The court heard arguments from both sides, with the plaintiff referencing a prior coordinate bench order to support its position. The defendant, appearing through video conference, initially defended its stance but conceded upon review of the cited precedent. The court issued directions for further compliance and scheduled subsequent listings before the Joint Registrar on September 10, 2025, and before the court on December 11, 2025, to monitor adherence and potentially dispose of the suit.

Core Dispute: The central issue revolved around the applicability of Section 12(3) of the Companies Act, 2013, which mandates that a company changing its name must, for two years, mention its former name alongside the new one in all business letters, billheads, and other official publications. The plaintiff argued that this provision should not apply when the name change is court-ordered due to trademark infringement, as it would undermine the injunction by permitting continued reference to the prohibited name, thereby risking ongoing confusion and deception. The defendant countered that statutory compliance under Section 12 necessitated displaying the old name, viewing the change as akin to a voluntary rectification. This raised broader questions about the interplay between corporate law obligations and judicial remedies in intellectual property disputes, specifically whether court-directed changes fall under the same disclosure regime as voluntary or administratively mandated alterations.

Discussion on Judgments: The plaintiff relied heavily on the order dated February 23, 2024, in Sanofi & Anr. v. Zanofi Pharmaceutical Pvt. Ltd., CS (COMM) 881/2023, where a coordinate bench of the Delhi High Court addressed an identical issue in a trademark infringement suit. In that case, the court examined Sections 12 and 16 of the Companies Act, 2013, and held that when a name change is directed by a court to rectify infringement, the proviso to Section 12(3) requiring display of the former name does not apply, as it would contradict the goal of eliminating deceptive similarity. The Sanofi order emphasized that Section 16 empowers the Central Government or courts to mandate changes in cases of resemblance to existing trademarks, without the accompanying disclosure obligation intended for voluntary changes. Within this context, the Sanofi judgment cited M/s Montari Overseas Ltd. v. Montari Industries Ltd., 1995 SSC OnLine Del 864, a Division Bench decision of the Delhi High Court, which dealt with analogous provisions under Sections 20 and 22 of the Companies Act, 1956. In Montari, the court clarified that common law remedies for passing off operate independently of statutory rectification mechanisms, allowing courts to grant injunctions against undesirable names without being limited by corporate law provisions, and affirmed that judicial directions for name changes do not trigger the same disclosure requirements as administrative processes. Additionally, the Sanofi order referenced K.G. Khosla Compressors Ltd. v. Khosla Extraktions Ltd., AIR 1986 Delhi 184, where the Delhi High Court held that civil courts retain jurisdiction to issue injunctions restraining the use of confusingly similar corporate names, even in the presence of statutory avenues under the Companies Act, as the remedies under common law and statute function in distinct fields—the former enabling broad injunctive relief to prevent confusion, while the latter focuses on administrative rectification.

Reasoning and Analysis of the Judge:  The judge, Hon'ble Ms. Justice Manmeet Pritam Singh Arora, meticulously analyzed the plaintiff's grievance by aligning it with the principles established in the Sanofi order, which she found directly applicable due to the identical factual matrix involving a court-mandated name change for trademark infringement. She noted that Section 16 of the Companies Act, 2013, provides for rectification of a company's name when it resembles a registered trademark, granting the Central Government or courts the authority to direct changes without the proviso in Section 12(3) mandating display of the former name, as such display would perpetuate the very confusion the injunction seeks to eliminate. Drawing from the Sanofi reasoning, the judge underscored that voluntary name changes under Section 12 aim to ensure public disclosure and continuity, whereas judicial interventions under infringement suits prioritize rectification of illegal use, rendering the disclosure proviso inapplicable and out of context. She further endorsed the precedents cited in Sanofi, observing that the Montari decision illustrates the independence of common law actions from statutory frameworks, allowing courts to impose name changes without ancillary obligations that could hinder the remedy's effectiveness. Similarly, the Khosla case reinforced her view that civil courts' jurisdiction in passing off actions extends beyond corporate law limits, enabling tailored relief to prevent deception. In applying this to the present facts, the judge rejected the defendant's reliance on Section 12, concluding that permitting display of the injuncted name would defeat the purpose of the May 27, 2024, judgment, which had been upheld on appeal, and emphasized the need for complete disassociation to protect the plaintiff's trademark rights.

Final Decision: The court directed the defendant to display only its new name across all goods, services, promotional material, physical or online media, and in all other respects, explicitly prohibiting any reference to its previous name. 

Law Settled in This Case: This case establishes that when a court directs a company to change its name as a remedy for trademark infringement or passing off, the proviso to Section 12(3) of the Companies Act, 2013, requiring the display of the former name for two years, does not apply. Instead, the company must fully cease referencing the old name to align with the injunction's objective of eliminating confusion and deception. It affirms the distinction between voluntary or administrative name changes, which trigger disclosure obligations for public transparency, and judicially mandated changes, which operate in a separate field prioritizing intellectual property protection over routine corporate formalities. By endorsing the principles from coordinate and prior benches, the decision clarifies that common law remedies under trademark law supersede conflicting statutory provisions in infringement contexts, ensuring that courts can grant effective relief without unintended perpetuation of the infringing conduct.

Case Title: Infosys Limited Vs Southern Infosys Limited

Date of Order: 1 August, 2025

Case Number: CS(COMM) 257/2024 

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon'ble Ms. Justice Manmeet Pritam Singh Arora

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

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

Kylin Sanitary Technology (XIAMEN) Company Limited vs. Union of India & Ors

Strict Adherence to Patent Timelines

Introduction: This case study examines a significant judgment from the High Court at Calcutta concerning the abandonment of a patent application due to non-compliance with statutory timelines under the Patents Act, 1970. The petitioner, a foreign entity, challenged the rejection of its patent application as abandoned, invoking the writ jurisdiction under Article 226 of the Constitution of India. The court delved into the mandatory nature of procedural deadlines in patent prosecution, the impact of external factors like the COVID-19 pandemic, and the limits of judicial discretion in such matters. This analysis highlights the tension between equitable considerations and strict adherence to legislative intent in intellectual property law, underscoring the importance of diligence in pursuing patent rights.

Factual Background: The petitioner, Kylin Sanitary Technology (XIAMEN) Company Limited, a company incorporated under the laws of China, filed a patent application in India bearing number 202034009705 on March 6, 2020. As a foreign entity, it engaged the services of an Indian patent attorney to handle the proceedings. A request for examination was submitted on April 18, 2020. The First Examination Report was issued by the patent office on August 16, 2021, outlining objections that needed to be addressed. The statutory period of six months for responding to these objections and putting the application in order for grant expired on February 16, 2022. An additional three-month extension period, as provided under the rules, also lapsed without any action from the petitioner. It was only on December 1, 2022, that the petitioner communicated with its Indian patent agent through an international attorney, attributing prior delays to the COVID-19 pandemic and alleged negligence by the Indian agent. On December 29, 2022, the application was deemed abandoned. The petitioner first raised a grievance with the Controller on May 23, 2023, via a representation, which led to further proceedings culminating in the impugned order of June 24, 2024, rejecting the application as abandoned.

Procedural Background: The patent application process began with the filing on March 6, 2020, followed by a request for examination on April 18, 2020. After the issuance of the First Examination Report on August 16, 2021, no response was filed within the prescribed six-month period or the subsequent three-month extension. The application was treated as abandoned on December 29, 2022. The petitioner submitted a representation to the Controller on May 23, 2023, seeking revival. This prompted a prior writ petition before the High Court, which directed the respondents to consider the representation. Pursuant to this direction, the Deputy Controller of Patents and Designs passed the impugned order on June 24, 2024, upholding the abandonment under section 21(1) of the Patents Act, 1970, read with Rule 24B of the Patents Rules, 2003. Lacking an appellate remedy against such an order, the petitioner filed the present writ petition under Article 226, arguing that the abandonment was unjustified due to external circumstances and agent negligence.

Core Dispute: The central issue revolved around whether the patent application could be deemed abandoned for failure to comply with the mandatory timelines under section 21(1) of the Patents Act, 1970, and Rule 24B of the Patents Rules, 2003, despite the petitioner's claims of no intentional delay, the impact of the COVID-19 pandemic, and negligence attributable to its Indian patent agent. The petitioner contended that the abandonment was erroneous, as any delay was unintentional and excusable, emphasizing the absence of mala fide intent and relying on equitable principles. In contrast, the respondents asserted that the timelines were mandatory and non-negotiable, with no provision for relaxation beyond the stipulated extensions, and that the petitioner's inaction constituted deliberate neglect, rendering the application unsustainable.

Discussion on Judgments: The petitioner relied on European Union Vs. Union of India reported in 2022 SCC OnLine Del 1793, where a Coordinate Bench of the Delhi High Court held that abandonment could not be inferred if there was no intention to abandon, particularly when the applicant had taken active steps to pursue the application, and any mistake was excusable under the facts of that case. This citation was used to argue that the petitioner's delays, stemming from the pandemic and agent negligence, did not reflect deliberate inaction and should warrant setting aside the abandonment order. On the other hand, the respondents cited Nippon Steel Corporation Vs. Union of India (2011) SCC OnLine Del 669, in which the Delhi High Court emphasized the mandatory nature of time limits under the Patents Act and Rules, stating that such limits could not be relaxed by courts under Article 226, as they reflect legislative intent for time-bound patent prosecution; this was invoked to support the sustainability of the impugned order due to the petitioner's violation of fixed timelines. Additionally, the respondents referred to Carlos Alberto Perez Lafuente Vs. Union of India reported in (2019) SCC OnLine Del 7404, where similar views were expressed, reinforcing that failure to comply with stipulated periods results in mandatory abandonment, without room for procedural leniency; this judgment was used to highlight the inordinate and unexplained delay in the present case, justifying the treatment of the application as abandoned.

Reasoning and Analysis of the Judge: The judge began by outlining the relevant provisions, including sections 11B and 21 of the Patents Act, 1970, and Rules 24B(5) and (6) of the Patents Rules, 2003, which establish a structured, time-bound mechanism for patent prosecution, deeming applications abandoned upon non-compliance. Emphasizing that these timelines are mandatory rather than directory, the judge noted that courts cannot read in relaxations absent express legislative provisions, as this would undermine the Act's objective of efficient processing. The judge distinguished the petitioner's cited case by pointing out that in European Union Vs. Union of India, active pursuit and excusable error were evident, unlike here where the petitioner exhibited indolence, with no timely response or extension request filed. Aligning with the respondents' precedents, the judge affirmed that fixed timelines must be strictly adhered to, and the writ court's discretionary power under Article 226 cannot circumvent statutory rigors. The excuse of COVID-19 was dismissed as insufficient, given the extended periods already accounting for such disruptions, and the first communication occurring well after deadlines. The judge invoked the doctrine of laches, stating that equity aids the vigilant, not the indolent, and found no basis for discretion in the petitioner's favor due to lackadaisical conduct.

Final Decision:The writ petition was dismissed without any order as to costs, upholding the impugned order deeming the patent application abandoned.

Law Settled in This Case:This judgment reinforces that timelines under section 21(1) of the Patents Act, 1970, and Rule 24B of the Patents Rules, 2003, for responding to examination reports and putting applications in order for grant are mandatory and non-relaxable by courts, even under writ jurisdiction, absent exceptional circumstances demonstrating active pursuit without intentional delay. It clarifies that external factors like the COVID-19 pandemic or agent negligence do not automatically excuse non-compliance if not addressed within stipulated periods, emphasizing diligence and the doctrine of laches in patent prosecution.

Case Title: Kylin Sanitary Technology (XIAMEN) Company Limited Vs. Union of India & Ors., 

Date of Order: August 11, 2025, 

Case Number: WPA-IPD No.1 of 2024

Neutral Citation: Not available, 

Name of Court: High Court at Calcutta, 

Name of Judge: Ravi Krishan Kapur, 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

Pernod Ricard India Private Limited Vs Karanveer Singh Chhabra

Publici Juris and Laudatory Terms: Non-Monopolizability in Trademark Law

Introduction: This case delves into the intricate principles of trademark law, particularly focusing on deceptive similarity, the anti-dissection rule, and the dominant feature test in the context of composite marks. The appellants, Pernod Ricard India Private Limited and Pernod Ricard USA LLC, alleged that the respondent's use of the mark "London Pride" for whisky infringed their registered trademarks "Blenders Pride" and "Imperial Blue" and amounted to passing off. The Supreme Court examined whether the marks created a likelihood of confusion among consumers, emphasizing the need for holistic comparison and the perspective of an average consumer with imperfect recollection. Ultimately, the Court held that no deceptive similarity existed, reinforcing that common or laudatory terms like "Pride" cannot be monopolized without acquired distinctiveness.

Factual Background:The appellants are engaged in the manufacture and distribution of wines, liquors, and spirits, selling whisky under the brands "Blenders Pride" and "Imperial Blue", both registered trademarks. They also hold registration for "Seagram's", their house mark used internationally. The trademark "Blenders Pride" was adopted in 1973 and launched in India in 1995, achieving annual turnover exceeding INR 1,700 crores. "Imperial Blue" was launched in 1997, with turnover exceeding INR 2,700 crores. In May 2019, the appellants discovered the respondent marketing whisky under "London Pride" with packaging deceptively similar to theirs, using Seagram's embossed bottles. The respondent, Karanveer Singh Chhabra trading as JK Enterprises, is a proprietary concern manufacturing and selling liquor under "London Pride" in Madhya Pradesh, with a pending trademark application.

Procedural Background: The appellants filed Commercial Suit No. 3/2020 before the Commercial Court, Indore, seeking permanent injunction against trademark infringement, passing off, and other reliefs, along with an interim application under Order XXXIX Rules 1 & 2 CPC. The Commercial Court rejected the interim application on November 26, 2020, finding no deceptive similarity. The appellants appealed to the Madhya Pradesh High Court, which dismissed the appeal on November 3, 2023, upholding the Commercial Court's order. Aggrieved, the appellants filed SLP (C) No. 28489/2023 before the Supreme Court.

Core Dispute:The core issue was whether the respondent's mark "London Pride" and its packaging were deceptively similar to the appellants' registered trademarks "Blenders Pride", "Imperial Blue", and "Seagram's", amounting to infringement under Sections 28 and 29 of the Trade Marks Act, 1999, or passing off. The appellants argued phonetic, visual, and structural similarity, dishonest adoption, and likelihood of confusion. The respondent contended the marks were distinct, "Pride" was generic and publici juris, and no confusion was likely among discerning consumers of premium whisky.

Discussion on Judgments: The appellants relied on several precedents to argue deceptive similarity and the need for holistic comparison. In Ruston & Hornsby Ltd v. Zamindara Engineering Co (1969 (2) SCC 727), cited to emphasize phonetic and visual deceptive similarity where essential features are copied. James Chadwick & Bros Ltd v. National Sewing Thread Co Ltd (OCJ Appeal No. 95 of 1950), referred for principles on confusion from similar marks on related goods. Sky Enterprise Pvt Ltd v. Abaad Masala & Co (2020 SCC OnLine Bom 750), used against generic defenses for distinctive marks. Neon Laboratories Ltd v. Medical Technologies Ltd (2016 (2) SCC 672), invoked for the first-user rule and presumption of confusion. Ultra Tech Cement Ltd v. Alaknanda Cement Pvt Ltd (2011 SCC OnLine Bom 783), cited to argue suffixes do not negate infringement if core is similar. Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services (2015 SCC OnLine Bom 531), referred to counter common-to-trade claims without proof of extensive use. Lupin Ltd v. Eris Lifesciences Pvt Ltd (2015 SCC OnLine Bom 6807), emphasized limiting validity challenges unless ex facie fraudulent. The respondent countered with judgments on composite marks and generic terms. Phonepe Pvt Ltd v. EZY Services (2021 SCC OnLine Del 2635) and Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt Ltd (2020 SCC OnLine Del 2766), cited against dissection and for whole-mark comparison. Paramjeet Singh Nande v. Paramount Toys & Ors (Order in OOCJ Interim Application (L) No. 35055 of 2023 dated June 10, 2025), supported non-solicitation limits. Gufic Ltd v. Clinique Laboratories LLC (FAO (OS) 222/2009 dated July 9, 2010, Delhi High Court), stressed holistic comparison. Ayushakti Ayurved Pvt Ltd v. Hindustan Lever Ltd (2003 (5) Bom CR 523), argued inseparable parts must be pronounced together. Marico Ltd v. Agro Tech Foods Ltd (2010 SCC OnLine Del 3806), defended non-monopolizable generic words. Honda Motor Co Ltd v. Kewal Brothers (1999 SCC OnLine Cal 536), set the relevant date for passing off as defendant's adoption. Sun Pharmaceuticals Industries Ltd v. Emcure Pharmaceuticals Ltd (2012 (2) MhLJ 936) and G.M. Sheik v. Raja Biri Pvt Ltd (FAO No. 94 of 2022 dated August 31, 2022, Kerala High Court), reinforced whole-mark consideration and extensive use for common-to-trade defenses. The Supreme Court discussed these and other precedents like Coca-Cola Co of Canada Ltd v. Pepsi-Cola Co of Canada Ltd (1942 SCC OnLine PC 7), Corn Products Refining Co v. Shangrila Food Products Ltd (AIR 1960 SC 142), Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980), Parle Products Pvt Ltd v. JP & Co (1972 (1) SCC 618), Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd (AIR 2001 SC 1952), Khoday Distilleries Ltd v. Scotch Whisky Association (2008 (10) SCC 723), Wander Ltd v. Antox India Pvt Ltd (1990 Supp SCC 727), Anand Prasad Agarwalla v. Tarkeshwar Prasad (2001 (5) SCC 568), and Bajaj Auto Ltd v. TVS Motor Co Ltd (2009 (9) SCC 797), in the context of deceptive similarity, anti-dissection, dominant features, generic terms, imperfect recollection, and injunction principles.

Reasoning and Analysis of the Judge: Justice R Mahadevan, writing for the Bench, analyzed the case through statutory provisions and judicial precedents, emphasizing holistic comparison of marks from an average consumer's perspective with imperfect recollection. The Court rejected dissection, finding no deceptive similarity in names, colours, or trade dress. "Pride" was held publici juris, laudatory, and non-monopolizable without secondary meaning. Dominant features like "Blenders" and "London" distinguished the marks. Post-sale confusion doctrine was noted but deemed inapplicable to private consumption goods. Appellate interference was limited absent jurisdictional error. The Court found no prima facie case, irreparable harm, or balance favoring injunction, upholding lower courts' concurrent findings.

Final Decision: The Supreme Court dismissed the appeal, upholding the High Court's judgment denying interim injunction. The Commercial Court was directed to dispose of the suit within four months, uninfluenced by interlocutory observations.

Law Settled in This Case: This case reaffirms that deceptive similarity requires holistic comparison of marks as wholes, from an average consumer's imperfect recollection perspective. Generic or laudatory terms like "Pride" are publici juris and non-monopolizable without acquired secondary meaning. Dominant features aid analysis but do not override overall impression. Post-sale confusion is inapplicable to privately consumed goods. Appellate review of interim orders is limited absent jurisdictional error. Infringement and passing off necessitate likelihood of confusion; mere common elements are insufficient.

Case Title: Pernod Ricard India Private Limited & Another Vs Karanveer Singh Chhabra,
Date of Order: August 14, 2025,
Case Number: Civil Appeal No. 10638 of 2025,
Neutral Citation: 2025 INSC 981,
Name of Court: Supreme Court of India, 
Name of Hon'ble Judge: J.B. Pardiwala and R. Mahadevan, 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

Arochem Ratlam Pvt. Ltd. & Anr. Vs Arom Alchemists Private Limited

Essential Features and Composite Marks

Introduction :This case involves a dispute over trademark infringement and passing off in the perfumery industry, where the plaintiffs, Arochem Ratlam Pvt Ltd and another, sought to protect their trademarks "AROCHEM" and "AROME" against the defendants, Arom Alchemists Private Limited and others. The plaintiffs claimed that the defendants' use of "AROM ALCHEMISTS" was deceptively similar to their marks, leading to confusion among consumers. The court examined the phonetic and visual similarities, the honesty of adoption, and the goodwill associated with the marks, ultimately granting partial interim relief to the plaintiffs while denying others. 

Factual Background: The plaintiffs and defendants are both engaged in manufacturing, marketing, selling, and distributing perfumery products, including perfumes and fragrances. The first plaintiff originated as a partnership firm called Arochem Industries in 1969, using the mark "AROCHEM" since September 1, 1969. This mark was registered in Class 3 in 1996 and assigned to the first plaintiff in 2013. The plaintiffs hold about 93 registrations for "AROCHEM" and its variants. In March 2021, the plaintiffs began using "AROME" while retaining "AROCHEM" as a key feature, and registered "AROME" on March 8, 2021, along with variants like "AROME BLUE ISLAND," "AROME WORLD," "AROME SCENT ART," and "AROME THE LEGEND." To demonstrate goodwill, the plaintiffs provided combined sales figures certified by a chartered accountant, showing Rs. 872,30,499 in sales for 2022-23, with advertisement expenses of Rs. 16,11,644 and promotional expenses of Rs. 3,09,226. The defendants incorporated on January 3, 2023, and adopted "AROM ALCHEMISTS," claiming it as a misspelling of "AROMA" combined with "ALCHEMISTS," meaning a person studying alchemy. The second defendant was an ex-employee of the second plaintiff from November 2017 to May 2018. The defendants applied for registration of "AROM" on May 12, 2023, on a proposed-to-be-used basis, but faced objections under Section 11 citing the plaintiffs' marks. The plaintiffs issued a cease-and-desist notice on December 18, 2023, to which the defendants responded by denying infringement and filing a rectification application against "AROME" on December 23, 2023. The plaintiffs alleged the defendants advertised in the same magazines, participated in the same exhibitions, induced their employees, and caused confusion among customers who mistook the defendants' products for theirs.

Procedural Background> The plaintiffs filed a commercial IP suit for trademark infringement and passing off in the Bombay High Court, along with an interim application seeking temporary injunctions. The suit was lodged as Commercial IP Suit (Lodging) No. 32272 of 2024, and the interim application as Interim Application (Lodging) No. 32451 of 2024. 

Core Dispute: The central issue revolved around whether the defendants' mark "AROM ALCHEMISTS" infringed the plaintiffs' registered trademarks "AROCHEM" and "AROME" under Sections 28 and 29 of the Trade Marks Act, 1999, and amounted to passing off. The plaintiffs argued phonetic and deceptive similarity, especially with "AROME," claiming the defendants highlighted "AROM" while downplaying "ALCHEMISTS," leading to confusion. They emphasized prior use, registrations, and dishonest adoption by an ex-employee. The defendants contended that "AROM" was a generic misspelling of "AROMA," used as part of a composite mark, and denied standalone use of "AROM." They challenged the plaintiffs' goodwill for passing off, argued no monopoly over descriptive words, and claimed honest adoption. Additional disputes included the domain name "aromapl.com" and inducement of employees.

Discussion on Judgments: The plaintiffs relied on several judgments to support their claims of infringement and deceptive similarity. In Ruston & Hornsby Ltd vs. The Zamindara Engineering Co (1969 (2) SCC 727), cited to emphasize that deceptive similarity should be assessed phonetically and visually, and that infringement occurs if the essential features are copied. James Chadwick & Bros., Ltd Vs. The National Sewing Thread Co., Ltd. (OCJ App No. 95 of 1950) was referred to for principles on likelihood of confusion from similar marks in related goods. Sky Enterprise Private Ltd vs. Abaad Masala & Co. (2020 SCC Online BOM 750) was used to argue against the use of generic defenses when marks are distinctive. Neon Laboratories Limited vs. Medical Technologies Limited ((2016) 2 SCC 672) supported the first-user rule and presumption of confusion for identical goods. Ultra Tech Cement Limited vs. Alaknanda Cement Pvt Ltd (2011 SCC Online Bom 783) was invoked to highlight that suffixes do not negate infringement if core marks are similar. Jagdish Gopal Kamath vs. Lime & Chilli Hospitality services (2015 SCC Online Bom 531) was cited to counter claims of marks being common to trade, requiring proof of extensive use. Lupin Limited vs. Eris Lifesciences Pvt. Ltd (2015 SCC Online Bom 6807) was emphasized to limit challenges to registration validity unless ex-facie fraudulent. The defendants countered with judgments focusing on composite marks and generic terms. Phonepe Private Limited vs. EZY Services (2021 SCC Online Del 2635) and Delhivery Private Limited vs. Treasure Vase Ventures Pvt. Ltd. (2020 SCC Online Del 2766) were cited to argue against dissecting marks and for considering them as wholes. Paramjeet Singh Nande vs. Paramount Toys & Ors. (Order in OOJC Interim Application (L) No. 35055 of 2023 dated 10th June, 2025) supported non-solicitation limits. M/s Gufic Ltd vs. Clinique Laboratories, LLC (Order of Delhi High Court in FAO (OS) 222/2009 dated 9th July, 2010) was used to stress holistic comparison without dissection. Ayushakti Ayurved Pvt Ltd vs. Hindustan Lever Limited (2003 (5) Bom. C. R. 523) argued that inseparable parts of marks must be pronounced together. Marico Limited vs. Agro Tech Foods Limited (2010 SCC Online Del 3806) defended generic words as non-monopolizable. Honda Motor Company Limited vs. Kewal Brothers (1999 SCC Online Cal 536) set the relevant date for passing off as the defendant's adoption. Sun Pharmaceuticals Industries Ltd vs. Emcure Pharmaceuticals Ltd. (2012(2) Mh.L.J) and G. M. Sheik vs. M/s. Raja Biri Private Ltd (Order of Kerala High Court in FAO No. 94 of 2022 dated 31st August, 2022) reinforced considering marks wholly and proving extensive use for common-to-trade defenses.

Reasoning and Analysis of the Judge: Justice Sharmila U. Deshmukh analyzed the case by first confirming the plaintiffs' registrations and prior use, noting "AROCHEM" since 1969 and "AROME" since 2021. She compared the marks, finding phonetic similarity between "AROME" and "AROM," with the latter subsuming the former despite the addition of "ALCHEMISTS." The judge rejected the defendants' claim that "AROM" was a generic misspelling of "AROMA," as "AROME" differed phonetically and was not a dictionary word. She emphasized that marks must be compared as wholes but focused on essential features, citing precedents like Ruston & Hornsby for deceptive resemblance. The examination report citing conflicts and the defendants' ex-employee status indicated dishonest adoption, dismissing honest use claims. For infringement, she applied Section 29, presuming confusion due to identical goods and similarity. However, for passing off, she found insufficient evidence of goodwill, as sales figures were combined and invoices limited, failing to show public association by 2023. The judge vacated the employee inducement injunction, as it fell outside Section 135 reliefs. Acquiescence was rejected, as mere delay without encouragement does not bar relief.

Final Decision :The court allowed the interim application , granting an injunction restraining the defendants from using "AROM" or similar marks infringing "AROME," but excluding references to "AROCHEM" and the domain name portion. 

Law Settled in This Case: This case reaffirms that trademark infringement under Section 29 requires deceptive similarity in essential features, assessed phonetically and visually, with presumption of confusion for identical goods. It clarifies that additions like suffixes do not negate infringement if the core mark is copied, and generic defenses fail if marks are distinctive. For passing off, prior continuous use and substantial goodwill must be proven as of the defendant's adoption date, with combined sales figures insufficient. Challenges to registration validity are limited unless ex-facie fraudulent. Reliefs in infringement suits are confined to Section 135, excluding non-IP issues like employee inducement. Acquiescence demands positive encouragement, not mere delay.

Case Title: Arochem Ratlam Pvt. Ltd. & Anr. Vs Arom Alchemists Private Limited & Ors., 

Date of Order: August 12, 2025, 

Case Number: Commercial IP Suit (Lodging) No. 32272 of 2024, 

Neutral Citation: 2025:BHC-OS:13265, 

Name of Court: High Court of  Bombay

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

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

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

Arcee Electronics Vs Arceeika

Cause of Action and Jurisdiction in IP Cases

Introduction: The dispute in Arcee Electronics v. M/s. Arceeika & Ors. revolves around the territorial jurisdiction of the Bombay High Court in an action for trademark infringement and passing off under the Trade Marks Act, 1999. The plaintiff, a long-established electronics retail chain, sought to protect its registered trademark “ARCEE” against alleged infringing use by the defendants under the name “ARCEEIKA.” While the plaintiff argued that the Court had jurisdiction under Section 134(2) of the Trade Marks Act, 1999 and Section 20 of the Code of Civil Procedure, 1908, the defendants challenged the jurisdiction and sought return of the plaint under Order VII Rule 10 CPC. The case thus turned on whether the plaintiff carried on business within the Court’s territorial limits or whether any part of the cause of action had arisen there.

Factual Background:The plaintiff, Arcee Electronics, is a partnership firm engaged in the sale of electronic goods through an extensive network of showrooms in Navi Mumbai and Raigad District. The firm, incorporated in 1986, was initially managed by its founder, Mr. Premnath Sharma, and over the years built a reputation for its “ARCEE” mark, which has been in use for nearly four decades. By the time of the suit, the plaintiff operated 23 showrooms, one head office, and one warehouse in Navi Mumbai and Raigad.

In August 2024, the defendants allegedly opened a showroom under the name “ARCEEIKA,” adopting a similar colour scheme, font, and typeface, which the plaintiff contended was intended to trade upon its business model and goodwill. The defendants, like the plaintiff, were engaged in selling electronic goods. The plaintiff claimed that such acts amounted to infringement of its registered trademark and passing off, prompting the filing of the present suit.

Procedural Background:The defendants filed an interim application under Order VII Rule 10 CPC seeking return of the plaint on the ground that the Bombay High Court lacked territorial jurisdiction. Defendant No. 2 argued that the plaintiff neither had a place of business within the Court’s jurisdiction nor had any part of the cause of action arisen there.

The plaintiff countered by asserting jurisdiction based on two grounds: first, that it carried on business in Mumbai city by selling and delivering goods to customers there; and second, that the defendants also carried on business in Mumbai and had delivered infringing goods to customers within the city. In support, the plaintiff relied on certain invoices showing sales to customers with Mumbai addresses.

Core Dispute

The core issue was whether the Bombay High Court, on its Original Side, had territorial jurisdiction to entertain the suit for trademark infringement and passing off, in light of Section 134(2) of the Trade Marks Act, 1999 and Section 20 of the Code of Civil Procedure, 1908. Specifically, the question was whether the plaintiff could establish that it carried on business within Mumbai city or that any part of the cause of action had arisen there.

Discussion on Judgments:The defendants relied on the judgment in Manugraph India Limited v. Simarq Technologies Pvt. Ltd. & Ors., 2016 SCC OnLine Bom 5334, wherein it was held that a plaintiff cannot file a suit in a jurisdiction where it neither carries on business nor where any part of the cause of action has arisen.

The Court also referred to the Supreme Court’s decision in Indian Performing Rights Society Ltd. v. Sanjay Dalia & Anr., (2015) 10 SCC 161. In that case, the Supreme Court held that Section 134 of the Trade Marks Act and Section 62 of the Copyright Act provide an additional forum to the plaintiff, enabling it to sue where it resides or carries on business. However, this privilege cannot be abused to drag a defendant to a remote jurisdiction unconnected to the dispute. The Court clarified that if the plaintiff carries on business and the cause of action arises in the same place, the suit must be filed there, and not in another jurisdiction where the plaintiff merely has a subordinate office.

The principles from Sanjay Dalia were adopted in Manugraph India, where it was further explained that while a plaintiff may sue where it resides or carries on business under Section 134(2), or where the cause of action arises under Section 20 CPC, the choice is limited. It cannot file suit in an unrelated location merely because of a satellite office.

Reasoning and Analysis of the Judge:Justice Sandeep V. Marne observed that the plaint itself was devoid of any averment asserting that the plaintiff had a place of business within Mumbai city. The plaintiff’s pleadings clearly established that all its showrooms, head office, and warehouse were situated in Navi Mumbai and Raigad District.

The invoices relied upon by the plaintiff were found insufficient to confer jurisdiction. The Court noted that the place of sale, not the place of delivery, determines the plaintiff’s place of business for the purposes of Section 134(2). Mere delivery of goods to a customer’s address in Mumbai did not amount to carrying on business there. Similarly, the defendants’ alleged sales to Mumbai customers did not amount to infringing acts committed within the Court’s jurisdiction, as the purchases took place in Navi Mumbai showrooms.

Applying Sanjay Dalia, the Court held that Section 134(2) did not help the plaintiff, as it did not carry on business in Mumbai city. Section 20 CPC was also inapplicable because no part of the cause of action had arisen within the territorial limits of the Bombay High Court’s Original Side.

Final Decision: The Court concluded that it lacked territorial jurisdiction to entertain the suit. It ordered that the plaint be returned under Order VII Rule 10 CPC for presentation before a court having proper jurisdiction. 

Law Settled in This Case: This decision reaffirms that under Section 134(2) of the Trade Marks Act, 1999, jurisdiction is conferred only upon a court within whose territorial limits the plaintiff actually and voluntarily resides or carries on business. Mere delivery of goods to customers in a jurisdiction does not amount to carrying on business there. Additionally, Section 20 CPC can provide jurisdiction where part of the cause of action arises, but the cause must be supported by specific pleadings in the plaint. The ruling reiterates that Sanjay Dalia prohibits misuse of jurisdictional provisions to drag defendants to courts in remote or unrelated locations.

Case Title:Arcee Electronics Vs Arceeika & Ors.

Date of Order: 11 August 2025

Case Number: Commercial IP Suit (L) No.19290 of 2024 

Neutral Citation: 2025:BHC-OS:13402

Name of Court: High Court of Bombay

Name of Judge: Hon’ble Mr. Justice Sandeep V. Marne

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

Mankind Pharma Limited Vs. Zhejiang Yige Enterprise Management Group Co. Ltd

Case Title: Mankind Pharma Limited Vs. Zhejiang Yige Enterprise Management Group Co. Ltd. Case No.: C.A.(COMM.IPD-TM) 2/2024 Date of Order: May 14, 2025 Neutral Citation: [2025:DHC:3706] Name of Court: High Court of Delhi, New Delhi Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Facts:

Mankind Pharma Limited, a well-established pharmaceutical company, owns the registered trademark "FLORA" in India since 2007, with use dating back to 1995, for pharmaceutical products in Class 5. Zhejiang Yige Enterprise Management Group applied in 2019 to register the mark "FLORASIS" in Class 5 for sanitary goods, with an intent for proposed use. The appellant opposed this application on the grounds of prior use, registration, and likelihood of confusion due to the similarity of marks.

Procedural Details:

• Mankind Pharma filed opposition proceedings against Zhejiang Yige's application for "FLORASIS."
• The Deputy Registrar of Trade Marks dismissed the opposition, allowing the registration of "FLORASIS."
• Mankind Pharma appealed to the High Court under Section 91 of the Trade Marks Act, 1999.
• The Court examined the evidence, legal principles, and submissions of the parties.

Issues:

• Whether the mark "FLORASIS" is deceptively similar and likely to cause confusion with the registered trademark "FLORA."
• Whether the registration of "FLORASIS" should be granted, considering prior user, registration, and reputation of "FLORA."
• Whether the addition of the suffix "SIS" and the use of mandarin characters distinguish the marks sufficiently.

Decision:

The Court held that "FLORASIS" is visually, phonetically, and structurally similar to "FLORA." The Court found that the registration of "FLORASIS" was likely to cause confusion among the public, especially given the prior use and registration of "FLORA," which has acquired goodwill. The Court set aside the impugned order, directed the Registrar to remove the entry corresponding to "FLORASIS," and upheld the opposition.

Khemka Food Products Pvt. Ltd. Vs. I.S.D.S. Private Limited and Others

Overriding Effect of Commercial Courts Act on Trademark Infringement Suits

Introduction: This case involves a commercial appeal filed before the High Court of Jharkhand at Ranchi, challenging an order that returned a plaint in a trademark infringement suit due to purported lack of jurisdiction. The appellant, a company engaged in the production and sale of wheat flour under the trademark "Grihasti Bhog," sought to enforce its rights against the respondents who were allegedly using an identical mark. The core issue revolved around the interplay between the jurisdictional provisions of the Trademarks Act, 1999, and the Commercial Courts Act, 2015, particularly in determining whether a Civil Judge (Senior Division) designated as a Commercial Court had the authority to entertain such a suit. The High Court's decision clarified the overriding effect of the Commercial Courts Act and emphasized the legislative intent to expedite commercial disputes through specialized courts at various levels. This judgment underscores the importance of harmonizing statutory provisions to ensure accessible and efficient resolution of intellectual property disputes in commercial contexts.

Factual Background:  The appellant, M/s Khemka Food Products Pvt. Ltd., traces its origins to a small flour mill established in 1970 under the name "Grihasti Atta Chakki" by the father of its director. Over time, the business expanded, leading to the company's incorporation in 1999 and the commencement of wheat flour production in 2001 after obtaining necessary permissions. The company adopted the trademark "Grihasti Bhog," which gained distinctiveness through long and continuous use, building goodwill and reputation. Applications for trademark registration were filed in 2005, 2012, and 2014, but were abandoned due to unavoidable circumstances. In February 2023, the appellant discovered that the respondents, I.S.D.S. Private Limited and its directors, were selling wheat flour under the identical mark "Grihasti Bhog." This prompted the appellant to issue a cease and desist notice on March 10, 2023, which the respondents replied to on April 6, 2023. The appellant then pursued pre-institution mediation under Section 12A of the Commercial Courts Act, 2015, before the District Legal Services Authority in Jamshedpur in April 2023, but the respondents refused to participate, resulting in a non-starter report.

Procedural Background: Following the failed mediation, the appellant instituted Commercial Suit No. 11 of 2023 on August 14, 2023, before the Civil Judge (Senior Division)-I-cum-Commercial Court at Jamshedpur, seeking relief for trademark infringement and passing off under Section 134 of the Trademarks Act, 1999. The suit was valued at Rs. 5,05,000/-. The respondents appeared on March 6, 2024, and filed their written statement, claiming use of the mark since 2022 without raising any jurisdictional objection at that stage. On June 15, 2024, the respondents filed an application under Order VII Rule 10 read with Section 151 of the Code of Civil Procedure, 1908, arguing that the Commercial Court lacked jurisdiction under Section 134 of the Trademarks Act, 1999, and that the plaint should be returned. The appellant opposed this application. The Commercial Court allowed the respondents' application on July 29, 2024, directing the return of the plaint for presentation before a court with jurisdiction. Aggrieved, the appellant filed the present Commercial Appeal No. 14 of 2024 before the High Court of Jharkhand, which was reserved on July 30, 2024, and pronounced on August 8, 2024.

Core Dispute: The central issue in this appeal was whether the Civil Judge (Senior Division)-I, designated as a Commercial Court under the Commercial Courts Act, 2015, possessed the jurisdiction to entertain a suit for trademark infringement under Section 134 of the Trademarks Act, 1999, especially when the suit's value was Rs. 5,05,000/- and fell within the pecuniary limits specified by state notifications. The respondents contended that Section 134 restricted such suits to "District Courts," interpreted as courts presided over by District Judges or higher, thereby excluding the Civil Judge (Senior Division). In contrast, the appellant argued that the Commercial Courts Act, 2015, had an overriding effect, allowing Commercial Courts at the Civil Judge (Senior Division) level to handle commercial disputes, including intellectual property matters, as defined under Section 2(1)(c)(xvii). The dispute highlighted the tension between traditional jurisdictional hierarchies under civil laws and the specialized framework introduced by the Commercial Courts Act to facilitate speedy resolution of commercial cases.

Discussion on Judgments:  In the proceedings before the High Court, neither the parties nor the bench explicitly cited any prior judicial precedents or case law from other courts. The arguments primarily revolved around statutory interpretations of the Trademarks Act, 1999, the Commercial Courts Act, 2015, the Code of Civil Procedure, 1908, and the Bengal, Agra and Assam Civil Courts Act, 1887, without reference to specific judgments. The appellant emphasized the overriding nature of the Commercial Courts Act under Section 21, but did not invoke any case citations to support this. Similarly, the respondents relied on a literal reading of Section 134 of the Trademarks Act, 1999, asserting that it mandated jurisdiction only with District Judges, yet no judicial authorities were referenced in their submissions or the lower court's order. The High Court's analysis drew upon the Statement of Objects and Reasons of the Commercial Courts Act, 2015, and its 2018 amendments, as well as the 188th and 253rd Reports of the Law Commission of India, which were mentioned in the context of justifying the need for independent mechanisms for resolving commercial disputes to enhance investor confidence. These reports were referred to underscore the legislative intent to expand access to commercial courts for disputes of lower value, but they do not constitute judgments. The absence of cited case law in the record suggests that the decision was grounded solely in statutory construction and legislative history, without reliance on precedential authority.

Reasoning and Analysis of the Judge: The High Court, in its reasoning, meticulously examined the legislative framework to resolve the jurisdictional conflict. It noted that the Commercial Courts Act, 2015, was enacted to provide for speedy resolution of commercial disputes, including those involving intellectual property rights under Section 2(1)(c)(xvii). The court highlighted the 2018 amendments, which reduced the specified value of disputes from Rs. 1 crore to Rs. 3 lakhs, aiming to make justice accessible at lower judicial levels. Emphasizing Section 3 of the Commercial Courts Act, which empowers state governments, in consultation with high courts, to constitute Commercial Courts at the district level or below, the bench observed that Jharkhand had issued notifications designating Civil Judges (Senior Division) as Commercial Courts for disputes valued between Rs. 3 lakhs and Rs. 1 crore, as per Notification No. 206/J dated February 8, 2021. The court critiqued the lower court's narrow interpretation of "District Court" under Section 134 of the Trademarks Act, 1999, as equating to "District Judge," clarifying that the term encompasses courts within the district hierarchy, including those below the District Judge when designated for specific purposes. It invoked the overriding effect of the Commercial Courts Act under Section 21, which prevails over conflicting provisions in other laws, and referenced the parliamentary debates and Law Commission Reports to affirm the intent to decentralize commercial adjudication. The analysis underscored that allowing appeals from Civil Judge-level Commercial Courts to District Judge-level Appellate Courts aligns with the Act's objective of efficiency, rejecting the respondents' contention as contrary to this scheme. The bench also stressed deference to high court notifications constituting such courts, concluding that the lower court erred in returning the plaint.

Final Decision: The High Court allowed the appeal, quashing and setting aside the order dated July 29, 2024, passed by the Civil Judge (Senior Division)-I in Commercial Suit No. 11 of 2023. The suit was restored to its original number, and the trial court was directed to proceed with adjudication in accordance with law. The parties were instructed to appear before the lower court on August 18, 2025.

Law Settled in This Case: This case settles that suits for trademark infringement, when qualifying as commercial disputes under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015, can be entertained by Commercial Courts constituted at the Civil Judge (Senior Division) level, provided they fall within the pecuniary jurisdiction specified by state notifications issued in consultation with the high court. It establishes the overriding effect of the Commercial Courts Act over Section 134 of the Trademarks Act, 1999, interpreting "District Court" broadly to include designated subordinate courts. The decision reinforces the legislative intent to expedite commercial resolutions by expanding access to lower-level specialized courts, ensuring that jurisdictional hierarchies under traditional civil laws yield to the specialized framework for commercial matters.

Case Title: Khemka Food Products Pvt. Ltd. Vs. I.S.D.S. Private Limited and Others

Date of Order: August 8, 2025

Case Number: Commercial Appeal No. 14 of 2024

Neutral Citation: 2025:JHHC:22504-DB

Name of Court: High Court of Jharkhand at Ranchi

Name of Judge: Tarlok Singh Chauhan, Chief Justice, and Sujit Narayan Prasad, Judge

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

Sabmiller India Ltd. Vs Jagpin Breweries Ltd

Infringement and Passing Off Involving Numerals: Haywards 5000 Vs Cox 5001

Introduction: This case involves a trademark infringement and passing off dispute in the beer industry, where the plaintiff sought to protect its well-established brand "HAYWARDS 5000" against the defendant's use of "COX 5001." The Bombay High Court examined the deceptive similarity between the marks, focusing on the numeral "5000" as an essential feature, and addressed issues like disclaimers, prior user, and suppression of facts. Decided in 2014, the judgment reinforces principles of trademark law, particularly regarding the protectability of numerals in composite marks and the limited role of disclaimers. It highlights the court's approach to granting interim injunctions in cases of registered trademarks, emphasizing prima facie case, balance of convenience, and irreparable harm.

Factual Background: The plaintiff, Sabmiller India Ltd., is the proprietor of the trademarks "HAYWARDS 5000" (registered under No. 436744 in Class 32 since 1983) and "FIVE THOUSAND" (registered under No. 1521743 in Class 32), both for beer. The plaintiff and its predecessors have continuously used "HAYWARDS 5000" prominently on labels, achieving significant sales and promotional expenses, establishing goodwill. The defendant, Jagpin Breweries Ltd., began using "COX 5001" on beer labels, which the plaintiff discovered in September 2011. Prior litigation between the parties included a 2006 suit where the court restrained the defendant from using "COX 5000," and a 2011 Madras High Court order against the defendant for infringing the plaintiff's bottle design. The defendant challenged the plaintiff's registration before the Intellectual Property Appellate Board but lost, and no appeal was filed. The plaintiff alleged that "COX 5001" was deceptively similar, misleading consumers and trading on its reputation.

Procedural Background: The plaintiff filed Suit No. 56 of 2012 in the Bombay High Court for infringement and passing off, along with Notice of Motion No. 92 of 2012 seeking interim injunctions. On January 13, 2012, the court granted an ex parte ad interim injunction restraining the defendant from using "COX 5001." The defendant sought vacation, but the court confirmed the injunction on February 7, 2012. The defendant's appeal (No. 189 of 2012) was dismissed on August 28, 2012. In February 2013, the court granted leave to combine passing off with infringement claims. The notice of motion was heard, with arguments on deceptive similarity, disclaimers, suppression, and delay, leading to the final order on February 6, 2014.

Core Dispute: The primary issue was whether the defendant's "COX 5001" infringed the plaintiff's registered trademarks "HAYWARDS 5000" and "FIVE THOUSAND" and amounted to passing off, given the prominence of the numeral "5000." The plaintiff argued deceptive similarity in visual, phonetic, and structural aspects, claiming exclusive rights without disclaimer on "5000." The defendant contended that "5000" was descriptive, disclaimed, common to trade, and that the plaintiff suppressed facts, delayed action, and abandoned the mark. Additional disputes included jurisdiction (later withdrawn), balance of convenience, and whether prior litigation barred the suit.

Discussion on Judgments: The plaintiff relied on De Cordova v. Vick Chemical Co. (1951) 68 RPC 103 to argue that rival marks must be compared as a whole, focusing on essential features like the numeral "5000." Reckitt & Colman of India Ltd. v. Wockhardt Limited (unreported, Bombay High Court, Appeal No. 1180 of 1981, decided July 8, 1992) was cited in the context of holistic comparison of marks to establish deceptive similarity. Shaw Wallace & Co. Ltd. v. Mohan Rocky Spring Water Breweries Ltd. (2006) 3 Bom CR 252 was referenced to support that "5000" is distinctive and not disclaimed, as the Registrar specifies disclaimers for numerals explicitly. Laxmikant V. Patel v. Chetanbhat Shah (2002) 3 SCC 65 was invoked to outline the elements of passing off—reputation, misrepresentation, and damage—asserting the plaintiff's mark's goodwill. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 was used to contend no need for proving mala fide intent, only likelihood of confusion. Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. (1993) PTC 253 was cited to argue that in registered trademark cases, balance of convenience plays a minimal role. SKOL Breweries Ltd. v. Som Distilleries & Breweries Ltd. (2012) 49 PTC 231 (Bom) and SKOL Breweries Ltd. v. Fortune Alcobrew Pvt. Ltd. (2012) 50 PTC 413 (Bom) were relied upon to affirm that substantial use of a registered mark, even with variations, constitutes deemed use, and disclaimers do not cover essential numerals unless specified. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) 2 SCR 252 was discussed in the context of disclaimers' purpose, distinguishing it as not applying to non-descriptive numerals. Shaw Wallace & Co. Ltd. v. Castle Douglas Industries Ltd. (unreported, Bombay High Court, Notice of Motion No. 1259 of 1994, decided June 20, 1996) was used to establish "5000" as essential despite disclaimers in similar marks. Shaw Wallace & Co. Ltd. v. Superior Industries Ltd. (2003) 27 PTC 63 (Del) supported that numerals like "5000" can acquire distinctiveness through use. Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 was cited to argue that mere registration does not prove use, dismissing the defendant's reliance on other numeral marks. The defendant invoked S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1 on suppression of facts, contending the plaintiff hid applications and oppositions. Shelke Beverages Pvt. Ltd. v. Rasiklal Manikchand Dhariwal (2010) 3 All MR 667 was relied upon to claim "5000" is common to trade, but the court distinguished it on facts of dissimilarity. S.J.S. Business Enterprises (P) Ltd. v. State of Bihar (2004) 7 SCC 166 was used to define material suppression affecting merits.

Reasoning and Analysis of the Judge:The judge compared the marks holistically, finding "5001" deceptively similar to "5000" visually and phonetically, likely causing confusion in beer sales. He rejected the disclaimer argument, holding it applied only to descriptive matter, not the distinctive numeral "5000," as the Registrar specifies numeral disclaimers explicitly. Citing prior rulings, he affirmed "5000" as essential and protectable. On passing off, the judge found the plaintiff's extensive use established reputation, with the defendant's mark misrepresenting origin and damaging goodwill. He dismissed suppression claims, deeming alleged facts irrelevant to the suit's registered marks. Delay defenses were rejected due to dishonest adoption, and jurisdiction was upheld under the Trade Marks Act. Balance of convenience favored the plaintiff, given long user since 1983 versus the defendant's unsubstantiated claims, with irreparable harm from continued infringement.

Final Decision: The court made the notice of motion absolute, granting temporary injunctions restraining the defendant from using "COX 5001" or any mark with "5001" deceptively similar to "HAYWARDS 5000," for infringement and passing off in beer sales.

Law Settled in This Case: This judgment settles that numerals in composite trademarks can be distinctive and protectable if not explicitly disclaimed, with disclaimers limited to descriptive matter unless specified. It reinforces holistic mark comparison, emphasizing essential features, and deems substantial use of registered marks as valid despite minor variations. In passing off, likelihood of confusion suffices without proving intent, and delay or acquiescence defenses fail against dishonest adoption. Suppression must involve material facts affecting merits, and mere registration of similar marks does not prove use or commonality without evidence.

Case Title: Sabmiller India Ltd. Vs Jagpin Breweries Ltd.

Date of Order: 06.02.2014

Case Number: Notice of Motion No. 92 of 2012 in Suit No. 56 of 2012

Neutral Citation: 2014 SCC OnLine Bom 4842

Name of Court: High Court of Bombay

Name of Hon'ble Judge: Kathawalla S.J., 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