Sanjit Singh Salwan & Ors. Vs. Sardar Inderjeet Singh Salwan

Introduction

This case involves a dispute between parties claiming to be trustees of the Guru Tegh Bahadur Charitable Trust, focusing primarily on the question of whether a plea of estoppel can prevent a party from raising a challenge to a settlement or award when the party’s previous conduct induced the other to act to its detriment. The case navigates the complex interplay of arbitration law, injunction suits, estoppel doctrines, and court jurisdiction, particularly concerning the arbitrability of disputes involving charitable trusts.

Factual Background

The appellants and respondents were both involved in managing the Guru Tegh Bahadur Charitable Trust and had disputes concerning its administration, including allegations of interference in the management of a school run by the Trust. The respondents filed a suit for perpetual injunction to restrain the appellants from entering the school premises and interfering with its functioning. The appellants challenged the suit’s maintainability under Section 92 of the Code of Civil Procedure (CPC), contending that the suit was barred. During the appeals process, parties decided to resolve their disputes through arbitration by appointing a sole arbitrator who, after hearings, passed an award with directions for managing the Trust’s affairs.

Procedural Background

Following the sole arbitrator’s award on December 30, 2022, both parties filed a joint application seeking disposal of the pending appeal in view of the award, which was accepted, and a consent decree incorporating the award was passed by the District Court on January 27, 2023. This decree was unchallenged and remained operative. Subsequently, the appellants sought to enforce the award and consent decree by filing execution proceedings in November 2023 but withdrew these to file an application under Section 9 of the Arbitration and Conciliation Act, 1996, seeking interim measures. The Commercial Court rejected this application, holding the dispute non-arbitrable under Section 92 of the CPC and declaring the arbitral award null and void. The High Court affirmed this decision, leading the appellants to approach the Supreme Court.

Core Dispute

The core legal issue centers on whether the respondents, who initially accepted the arbitration award and consent decree, could later challenge the award’s validity on the basis of non-arbitrability under Section 92 of the CPC. Relatedly, the question arose whether the appellants were entitled to enforcement of the consent decree and protection under the doctrine of estoppel, given that the respondents’ conduct induced the appellants to act to their detriment.

Discussion on Judgments

The appellants relied heavily on precedent establishing that a party cannot approbate and reprobate—that is, cannot accept the benefits of a judgment, decree, or contract and later repudiate it to the detriment of the other party. Important case law cited by the appellants included Suzuki Parasrampuria Suitings Pvt. Ltd. v. Official Liquidator of Mahendra Petrochemicals Ltd., (2018) 10 SCC 707; Joint Action Committee of Air Line Pilots’ Association of India v. Director General of Civil Aviation, (2011) 5 SCC 435; Mumbai International Airport Pvt. Ltd. v. Golden Chariot Airport, (2010) 10 SCC 422; and Karam Kapahi v. Lal Chand Public Charitable Trust, (2010) 4 SCC 753. These decisions underscored that a litigant’s conduct in accepting an award or decree can estop them from later asserting its invalidity.

Conversely, the respondents argued that under Section 92 CPC, disputes concerning the management of a trust are non-arbitrable; thus, the arbitrator lacked jurisdiction, rendering the award a nullity. This position, supported by rulings such as Vimal Kishor Shah v. Jayesh Dinesh Shah, (2016) 8 SCC 788 and Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd., (2011) 5 SCC 532, was upheld by both the Commercial Court and the High Court.

The Supreme Court also relied on older foundational principles such as those enshrined in Dhiyan Singh v. Jugal Kishore, AIR 1952 SC 145, to articulate how estoppel by conduct applies even if an award may be invalid in law when parties accept and act upon that award, changing their position to their detriment. The Court additionally cited Mumbai International Airport Pvt. Ltd. v. Golden Chariot Airport to emphasize that a party cannot adopt inconsistent legal positions to prolong litigation or gain unfair advantage.

Reasoning and Analysis of the Judge

The Supreme Court recognized that the respondents had expressly contended in earlier pleadings that their suit was maintainable and not barred by Section 92 of the CPC. They joined the arbitration process and accepted the arbitral award, prompting the disposal of the respondents' appeal by the District Court via a consent decree incorporating the award terms. The Court ruled that the respondents' later contention of non-arbitrability and invalidity of the award amounted to approbation and reprobation, which is impermissible.

The Court emphasized that the appellants acted on the consent decree to their detriment, such as by withdrawing FIRs and remitting substantial amounts per the award terms. Consequently, the principle of estoppel operated to preclude the respondents from challenging the decree's validity. The Court deemed it unjust to allow a party to accept benefits under a decree or award and later repudiate the same to thwart enforcement.

Furthermore, the Court acknowledged that the question of arbitrability was deemed by the lower courts without due regard to the principle of estoppel by conduct. Therefore, the Supreme Court restored the appellants' right to revive execution proceedings on the consent decree and ordered that the matter be dealt with on merit in accordance with law.

The Supreme Court allowed the civil appeal filed by the appellants and set aside the orders of the Commercial Court and the High Court that had held the arbitration award null and void and denied interim measures. The appellants were permitted to revive the execution proceedings filed earlier and to enforce the consent decree. The Court held that the respondents were estopped by their own conduct from denying the award’s enforceability, and justice required that the appellants not be left remediless. The parties were left to bear their own costs.

This case firmly establishes the application of the doctrine of estoppel by conduct and election in arbitration and civil litigation contexts, particularly when one party accepts a consent decree or arbitral award and induces the other party to act to its detriment. It confirms that a party who approbates a legal instrument cannot later reprobate the same to undermine its enforcement. Importantly, the Court clarified that objections concerning arbitrability under Section 92 CPC, though serious, cannot be invoked to defeat an award once consented to and acted upon by the parties. The judgment underscores that the finality and enforceability of arbitration awards and consent decrees are to be respected in the interest of justice and fairness, preventing litigious gamesmanship.

 Sanjit Singh Salwan & Ors. Vs. Sardar Inderjeet Singh Salwan & Ors.:: August 14, 2025:SLP (Civil) No. 29398 of 2024: 2025 INSC 988: Supreme Court of India: Augustine George Masih and Justice Atul S. Chandurkar

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Metpalli Lasum Bai (since dead) and Others Vs. Metapalli Muthaiah

Introduction

This legal dispute centers on rival claims over a chunk of land measuring 4 acres and 16 guntas, located in village Dasnapur. The parties involved are the legal representatives of the late Metpalli Rajanna and others, with plaintiff Lasum Bai (the second wife of Rajanna) on one side and defendant Muthaiah (Rajanna’s son from his first marriage) on the other. The case raises intricate issues concerning the rights to joint family property, the validity of a will, and the effect of oral family arrangements in partition disputes.

Factual Background

The original landowner, Metpalli Ramanna, died intestate before 1949. His legal heir, Metpalli Rajanna, who died in 1983, had two marriages. Rajanna’s first marriage to Narsamma produced two children — Muthaiah and Rajamma. After Narsamma’s death, Rajanna married Lasum Bai, who bore no children. Thereafter, Rajanna made registered will dated 24th July 1974 that distributed his properties among Lasum Bai, Muthaiah, and Rajamma. Specifically, Lasum Bai was granted certain lands including part of Sy. No. 28 of Dasnapur village (6 acres 16 guntas out of 12 acres 32 guntas), one third portions of Sy. Nos. 6 & 9 in Mavala village, and other properties. Muthaiah and Rajamma also received defined shares.

Plaintiff Lasum Bai sold two acres from her share in a registered sale deed dated 27th August 1987 and later entered into an agreement to sell the remaining 4 acres 16 guntas to Janardhan Reddy. Defendant Muthaiah filed an injunction suit against her preventing sale, aiming to challenge her right over the land. The District Munsif granted injunction in favor of Muthaiah but did not examine title, prompting Lasum Bai to file a declaratory suit.

Procedural Background

Lasum Bai instituted Original Suit No. 2 of 1991 for declaration of title and possession over her share of properties under the will. Muthaiah contested the claim, asserting the properties were joint ancestral properties and that he inherited full rights as sole coparcener after Rajanna’s death. The trial court decreed the suit favoring Lasum Bai declaring her owner and granting permanent injunction against Muthaiah and Rajamma dated 15th November 1994.

Muthaiah and Rajamma appealed before the Andhra Pradesh High Court, which in a judgment dated 23rd January 2014 partly allowed the appeal, holding Muthaiah entitled to 3/4 share and Lasum Bai to 1/4 share only, stripping her of injunction rights over the entire property. Lasum Bai and legal representatives of Janardhan Reddy appealed to the Supreme Court.

Core Dispute

The dispute pivots on whether Lasum Bai’s claim by virtue of the registered will and the oral family settlement resulting in partition of joint family properties is valid and enforceable against Muthaiah’s claim to the whole ancestral property as coparcener. It also concerns the effect of sales made by Lasum Bai and the validity of the injunction suit initially granted in favor of Muthaiah.

Discussion on Judgments

The trial court upheld the validity of the 1974 registered will and oral family arrangement, noting Muthaiah’s admission of the will and possession of properties by Lasum Bai. The court held that Rajanna, foreseeing family disputes, made an amicable division whereby Lasum Bai received a definite share. The judgment granted her title and injunction protecting her possession.

The Andhra Pradesh High Court overturned this to an extent, holding the properties were ancestral and joint family properties inherited by Muthaiah as sole coparcener, limiting Lasum Bai’s share to one-fourth and denying a full injunction. The High Court discredited the oral family settlement for being unregistered and considered the will lacking sanctity as Rajanna was not the sole owner.

The Supreme Court, upon review, restored the trial court’s decision, reasoning that the will is a registered document with a presumption of validity and was admitted by Muthaiah. The family arrangement and possession further confirmed the distribution. The Supreme Court rejected the High Court’s view that the will lacked sanctity and noted that the will afforded Muthaiah a major share, negating manipulation claims. The Supreme Court also recognized that Muthaiah had not challenged the registered sale deed of two acres earlier, hence estopped from questioning Lasum Bai’s rights.

Reasoning and Analysis of the Judge

The Supreme Court critically analyzed the evidence, including Muthaiah's own testimony admitting the signatures on the will and the possession status aligning with the family settlement. The court held that a registered will carries legal sanctity and presumption of authenticity. The judge emphasized that absence of challenge to the will’s validity and admissions weakened Muthaiah’s case against it.

The judge also noted that the oral family settlement was corroborated by possession and conduct of parties, fulfilling criteria for acceptance. The division under the will was seen as a fair and intended partition to avoid disputes. The fact that the major share was left to Muthaiah further weakened allegations of forgery or manipulation.

The plaintiff’s prior sale deed of part of her share, unchallenged by Muthaiah, was treated as acquiescence. This estoppel factored in the court’s refusal to unsettle plaintiff’s title.

Final Decision

The Supreme Court allowed Civil Appeal No. 5921 of 2015 filed by plaintiff Lasum Bai and legal representatives of Janardhan Reddy, reinstating the trial court’s decree declaring Lasum Bai’s title and the validity of her possession and sales. The court dismissed Civil Appeal No. 5922 of 2015 filed by defendant Muthaiah’s representatives. The High Court’s judgment partially setting aside the trial court’s decree was reversed, and the registered will and family arrangement were upheld as valid effective instruments of partition.

Law Settled in This Case

This case reiterates that a duly registered will partitioning joint family property and creating definite shares among coparceners enjoys presumption of validity and legal sanctity. Oral family arrangements supported by possession and conduct may be admitted to prove partition if not contradicted by valid documents. A party admitting signatures on a will and not challenging earlier sales is estopped from disputing ownership later. The case affirms the importance of registered wills in overriding the presumptions of joint family ownership and confirms that actual partition recognized by all parties can displace presumed ancestral coparcenary rights.

Case Details

Case Title: Metpalli Lasum Bai (since dead) and Others Vs. Metapalli Muthaiah (D) by LRs

Date of Order: July 21, 2025

Case Number: Civil Appeal Nos. 5921 and 5922 of 2015

Neutral Citation: 2025 INSC 879

Name of Court: Supreme Court of India

Name of Judge: Justices Vikram Nath and Sandeep Mehta

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

Suggested Titles for Publication in Law Journal:

1. "Sanctity of Registered Wills and Partition in Hindu Undivided Family Property: Insights from Metpalli Lasum Bai v. Metapalli Muthaiah"

2. "Oral Family Settlements and Property Rights: A Supreme Court Analysis on Joint Family Property Partition"

3. "The Interplay of Will, Possession, and Estoppel in Family Property Disputes: A Case Study"

4. "Registered Will as Evidence of Partition: Revisiting Property Rights in Hindu Joint Families"

5. "Partition Disputes in Hindu Joint Families: Legal Lessons from Metpalli Lasum Bai v. Metapalli Muthaiah"

Lenskart Solutions Limited v. Mr. Chetan Govind Vhand

Lenskart Solutions Limited filed a commercial suit against Mr. Chetan Govind Vhand alleging trademark infringement through the defendant's use of a deceptively similar mark in business operations, seeking injunction and other reliefs. The procedural background involves the plaintiff filing multiple interim applications for exemptions and permissions at the outset of the suit, including for filing additional documents, waiving pre-institution mediation due to urgency, exempting advance service to the defendant to prevent concealment of infringing activities, and extending time for court fees payment. The core dispute centers on the alleged infringement of the plaintiff's trademark rights, with concerns over the defendant potentially disposing of or hiding evidence of such infringement. The court granted all requested exemptions and permissions, allowing the suit to proceed with urgent ex-parte considerations, exemption from mediation citing the need for immediate interim relief as per Supreme Court precedent, permission to file additional documents, waiver of advance notice to the defendant, and a two-week extension for court fees. 

Case Title Lenskart Solutions Limited v. Mr. Chetan Govind Vhand Date of Order August 8, 2025 Case Number CS(COMM) 814/2025 Name of Court High Court of Delhi at New Delhi Name of Judge Honble Mr. Justice Tejas Karia.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Rajkumar Sabu Vs. Sabu Trade Private Ltd.

### Introduction

This case delves into the procedural intricacies of trademark registration under Indian law, examining the scope for third-party intervention prior to the advertisement of a trademark application. It highlights the boundaries of the Registrar of Trade Marks' discretion in handling interlocutory petitions alleging fabrication of user claims and underscores the statutory framework that prioritizes post-advertisement oppositions over pre-emptive challenges. The judgment clarifies the absence of a mandatory hearing for objectors at the examination stage, reinforcing the structured process outlined in the Trade Marks Act, 1999, to ensure efficiency while protecting applicants' rights. By dismissing the writ petition, the court emphasizes balancing procedural fairness with statutory compliance, offering guidance on when and how third parties can effectively contest trademark applications without disrupting the registration pipeline.

### Factual Background

The first respondent, Sabu Trade Private Ltd., submitted a trademark application for the word mark "SACHAMOTI" on January 22, 2020, claiming usage by itself or its predecessor-in-title since April 1, 1984, in classes 30, 35, and 39. An examination report was issued by the Registrar on February 18, 2020, to which the applicant responded the following day. The petitioner, Rajkumar Sabu, lodged an interlocutory petition on July 20, 2021, asserting that the claimed user date was based on fabricated documents, urging the Registrar not to proceed with the application or advertise it in the Trade Marks Journal, and requesting a hearing. Despite paying the requisite fee of Rs. 2,700, no response was received to this petition. The application was accepted on February 25, 2025, and advertised in Trade Marks Journal Number 2199 on March 10, 2025. Seeking clarity, the petitioner filed a request under the Right to Information Act, 2005, on April 21, 2025, specifically asking for the document supporting the user date of April 1, 1984, but the reply on June 4, 2025, merely stated that all available documents were uploaded on the IP India portal, providing no substantive details.

### Procedural Background

The petitioner invoked Article 226 of the Constitution of India by filing a writ petition for certiorari to quash the acceptance report dated February 25, 2025, and the advertisement in the Trade Marks Journal dated March 10, 2025. The petition contended that the Registrar failed to consider the interlocutory petition and provide a hearing, violating principles of natural justice and the powers under Section 19 of the Trade Marks Act, 1999. The matter was heard before a single judge, with arguments from the petitioner's counsel emphasizing the need for pre-advertisement scrutiny, the first respondent's counsel defending the statutory procedure and the availability of opposition post-advertisement, and the second respondent represented by a Deputy Solicitor General. No interim relief was sought or granted in the connected miscellaneous petition, and the court proceeded to decide the writ on merits after considering the statutory provisions and rules.

### Core Dispute

The central issue revolved around whether the Registrar of Trade Marks was obligated to consider the petitioner's interlocutory petition alleging fabrication of the user claim and to afford a hearing before accepting and advertising the trademark application. The petitioner argued that the Registrar's failure to act on the petition and exercise powers under Section 19 to withdraw acceptance amounted to a miscarriage of justice, especially given the payment of fees and the RTI response's inadequacy. In contrast, the first respondent maintained that no provision under the Trade Marks Act, 1999, or Rules, 2017, permitted pre-advertisement oppositions or hearings for third parties, asserting that the statutory scheme confined challenges to post-advertisement oppositions under Section 21, and that the interlocutory petition lacked a legal basis.

### Discussion on Judgments

No judgments were cited by the parties or referenced by the court in the course of this case. The analysis was confined to a direct interpretation of the relevant statutory provisions under the Trade Marks Act, 1999, including Sections 18, 19, and 21, and the Trade Marks Rules, 2017, particularly Rules 10, 11, 33, and Entry 15 of Schedule I, without reliance on prior judicial precedents to contextualize or support the arguments or decision.

The judge meticulously dissected Chapter III of the Trade Marks Act, 1999, focusing on the procedure for registration. He noted that Section 18(4) and (5) require reasons only for refusal or conditional acceptance, implying no such obligation for unconditional acceptance, as evidenced by the brief order waiving objections based on submitted documents. Regarding the interlocutory petition, the judge held it lacked statutory foundation, as Entry 15 of Schedule I pertains to fees for specific applications like reviews or uncontemplated matters, but any petition must invoke a substantive provision from the Act or Rules. He clarified that while Rule 33 allows examination and re-examination by the Registrar, it does not envision third-party oppositions at that stage, which are expressly reserved for post-advertisement under Section 21 and Rules 42-51. Although acknowledging the Registrar's power under Section 19 to withdraw acceptance pre-registration, the judge reasoned this does not confer a right on third parties to be heard, as the provision is silent on such entitlements. He suggested procedural improvements, like mandating citation of provisions in interlocutory applications and enabling rejections for non-maintainability, to enhance transparency. Balancing equities, the judge found no prejudice to the petitioner, who had already lodged an opposition under Section 21, while quashing the acceptance would cause irreparable harm to the applicant, thus justifying non-interference.

The writ petition was dismissed without any order as to costs, upholding the acceptance report and advertisement. The connected miscellaneous petition was closed accordingly, with the court observing that the petitioner's remedy lies in the ongoing opposition proceedings before the Registrar.

This case establishes that third parties have no inherent right to intervene or be heard at the pre-advertisement stage of trademark registration unless explicitly provided under the Trade Marks Act, 1999, or Rules, 2017. It clarifies that interlocutory petitions challenging applications must be grounded in specific statutory provisions to be maintainable, and the Registrar's power to withdraw acceptance under Section 19 does not mandate hearings for objectors. The judgment reinforces that oppositions are confined to the post-advertisement phase under Section 21, promoting procedural efficiency while suggesting enhancements for handling miscellaneous applications to ensure fairness and accountability.

Rajkumar Sabu Vs. Sabu Trade Private Ltd.: August 19, 2025 : W.P.(IPD)No.34 of 2025  : 2025:MHC:2069  : Senthilkumar Ramamoorthy, J.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Cadila Healthcare Ltd. Vs. Diat Foods (India)

### Introduction

This case revolves around the contentious use of the phrase "SUGAR FREE" in the context of trademark law, specifically in an action for passing off. It highlights the delicate balance courts must strike between protecting a plaintiff's established brand identity and allowing competitors to use descriptive terms in a fair manner. The dispute pits a pharmaceutical giant known for its artificial sweeteners against a food manufacturer introducing sugar-free products, raising questions about distinctiveness, descriptiveness, and the potential for consumer confusion. The judgment underscores the evolving jurisprudence on generic expressions in trademarks, emphasizing interim relief under the Code of Civil Procedure to maintain equilibrium pending full trial. By examining prior precedents involving the same plaintiff, the court navigates the line between proprietary rights and honest commercial use, offering insights into how courts assess visual prominence in packaging to prevent deception.

### Factual Background

The appellant, Cadila Healthcare Ltd., introduced a low-calorie table-top sweetener under the mark "SUGAR FREE" in 1988, which contained Aspartame and had only 2% of the calories of natural sugar. The product achieved significant market success, with sales amounting to around Rs. 216.40 crores from 1988 onwards, and trademark registration applications were pending. The appellant claimed that "SUGAR FREE" had become synonymous with its products among consumers. The respondent, Diat Foods (India), launched "Sugar Free Cookies" sweetened with Splenda, a competing artificial sweetener. On the respondent's packaging, "SUGAR FREE" was displayed in large, bright red fonts, making it highly prominent, while "Cookies" appeared in smaller, pale brown fonts, and phrases like "SUGARLESS Bliss" and "Sweetened with Splenda" were less emphasized. The respondent had applied for registration of "SUGARLESS" and/or "SUGARLESS Bliss" as its trademark. The appellant alleged that this packaging misled consumers into associating the cookies with its "SUGAR FREE" brand, diluting its mark and constituting passing off.

### Procedural Background

The appellant filed a suit for permanent injunction, damages, rendition of accounts, and delivery up, alleging passing off of its "SUGAR FREE" mark. Along with the suit, an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, was filed seeking interim injunction. On February 5, 2008, the court granted an ex parte ad interim injunction restraining the respondent from using "SUGAR FREE" or any deceptively similar mark. The respondent contested the application, leading to the impugned order dated July 9, 2008, by a Single Judge, who dismissed the interim injunction with costs of Rs. 50,000, finding sufficient added matter in the respondent's packaging to distinguish it. Aggrieved, the appellant filed the present appeal (FAO (OS) No. 385 of 2008) before the Division Bench of the Delhi High Court. The appeal focused on modifying the interim arrangement, with the respondent proposing a revised packaging during hearings. The Division Bench heard arguments on the descriptive use of "SUGAR FREE" and pronounced judgment on September 29, 2010.

### Core Dispute

At the heart of the dispute was whether the respondent's prominent use of "SUGAR FREE" on its cookie packaging amounted to passing off the appellant's established mark, or if it was merely descriptive of the product's sugar-free nature. The appellant argued that "SUGAR FREE" had acquired secondary meaning and distinctiveness through extensive use and sales, entitling it to protection against dilution. It contended that the respondent's packaging, by emphasizing "SUGAR FREE" over its own marks like "SUGARLESS Bliss" and "Splenda," created confusion, suggesting a connection to the appellant's sweetener products. The respondent defended its use as descriptive and bona fide, pointing to its application for "SUGARLESS Bliss" and the use of a competitor's sweetener, Splenda. The court had to determine an interim balance: whether to restrain the use entirely, allow it without restrictions, or impose conditions on font size and prominence to prevent deception while permitting fair competition.

### Discussion on Judgments

The court extensively discussed prior judgments involving the appellant's "SUGAR FREE" mark to guide its decision. In Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2008 (36) PTC 168 (Del.), a Single Judge examined the use of "SUGAR FREE" on Amul's "Pro Biotic Frozen Dessert" packaging, where it was alleged to be used as part of the trade mark rather than descriptively. The judge found prima facie distinctiveness in "SUGAR FREE" for the appellant's sweeteners but allowed descriptive use by the defendant, restraining only the overwhelming prominence that could confuse consumers into thinking the appellant's sweetener was an ingredient. This was referred to in the context of assessing whether absolute restraint on "SUGAR FREE" was warranted or if conditional use sufficed. The appeal against this, Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 (41) PTC 336 (Del.), was analyzed in detail, where the Division Bench held that "SUGAR FREE" was not a coined word but a combination of common English terms, incapable of inherent distinctiveness across all food products. It affirmed the Single Judge's restriction on font size to ensure descriptive use without indicating a connection to the appellant, cited here to support interim restrictions on prominence rather than outright prohibition. In Cadila Health Care Ltd. v. Dabur India Ltd., 2008 (38) PTC 617 (Del.) (DB), the Division Bench addressed "SUGAR FREE" on Dabur's "Chyawanprash" packaging, finding no passing off as it was in smaller fonts compared to the main mark and prominently displayed the defendant's trade mark, referenced to illustrate that equal or lesser prominence avoids confusion. Similarly, Cadila Health Care Ltd. v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2008 (4) RAJ 611, involved "SUGAR FREE" on another "Chyawanprash" product, where the Bench concluded the use was descriptive and not perceived as the appellant's product due to matching font sizes with other descriptors, used in the present case to emphasize that prominence determines deceptive similarity. Finally, Goenka Institute of Education & Research v. Anjani Kumar Goenka, 2009 AIR (Del) 139, was drawn upon for its analysis of Section 12 of the Trade Marks Act, 1999, on honest concurrent use, where the court imposed conditions to prevent public confusion even in descriptive contexts, applied here to justify court-imposed limitations on font and prominence akin to registrar powers.

### Reasoning and Analysis of the Judge

The Division Bench, comprising Sanjay Kishan Kaul and Valmiki J. Mehta, JJ., reasoned that "SUGAR FREE" is a generic expression combining common words, not inherently distinctive across all products, but had acquired secondary meaning limited to the appellant's artificial sweeteners. Drawing from prior cases, the judges noted that absolute restraint was inappropriate for descriptive use, but unrestricted prominence could deceive consumers into associating the respondent's cookies with the appellant's brand, especially since Splenda, a competitor, was used. They analyzed the packaging visuals, finding the original and proposed modified cartons gave undue emphasis to "SUGAR FREE," overshadowing "SUGARLESS Bliss" and "Sweetened with Splenda," indicating dishonest intent rather than pure descriptiveness. Invoking the principle of balancing equities under Order 39 Rules 1 and 2, the court emphasized maintaining status quo pending trial, where public interest in avoiding confusion is paramount. Analogizing to honest concurrent use under Section 12 of the Trade Marks Act, they held that courts can impose conditions like equal prominence to ensure the expression conveys sans sugar without implying a brand connection. The judges rejected the respondent's unwillingness to equalize prominence, concluding that extra emphasis on "SUGAR FREE" conveyed a false association, warranting modification of the impugned order to prevent deception while allowing use.

### Final Decision

The appeal was allowed to a limited extent, modifying the impugned order. The court held there would be no restraint on the respondent using "SUGAR FREE," but it must not be used with greater prominence or larger font size than "SUGARLESS Bliss" and "Sweetened with Splenda." The grant of Rs. 50,000 costs in the impugned judgment was set aside. The respondent was granted 30 days to exhaust existing packaging stock. The court clarified that its observations were for interim purposes only and would not influence the final trial.

### Law Settled in This Case

This case reinforces that generic expressions like "SUGAR FREE" cannot be monopolized absolutely but may acquire limited secondary meaning, entitling protection against passing off if used deceptively. It settles that in interim proceedings under Order 39 Rules 1 and 2 of the Code of Civil Procedure, courts can impose conditions on font size and prominence in packaging to balance proprietary rights with fair descriptive use, preventing consumer confusion. Drawing from Section 12 of the Trade Marks Act, 1999, it establishes that even in passing off actions, analogous powers allow restrictions to ensure honest use without deception, particularly when prominence suggests a false brand connection.

### Case Details

Case Title: Cadila Healthcare Ltd. Vs. Diat Foods (India)  

Date of Order: September 29, 2010  

Case Number: FAO (OS) No. 385 of 2008  

Neutral Citation: 2010 SCC OnLine Del 3445  

Name of Court: High Court of Delhi  

Name of Judge: Sanjay Kishan Kaul and Valmiki J. Mehta, JJ.

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Right of equality in the eyes of law

Right of equality in the eyes of law

Introduction: Equality, in its absolute sense, is an impossible target to achieve. By birth, every one is unequal. What one can achieve in a society is relative equality, i.e., equal opportunity to grow. The state should also take care of free will and intention of individuals while enacting laws and punishment measures to achieve relative equality while regulating liberty and guaranteeing rights to every individual.

Inequality is a product of nature, inherent and unavoidable, while equality is a human construct, an ideal forged through societal efforts and institutions. From the moment of birth, individuals are differentiated by genetics, environment, family background, physical abilities, and intellectual capacities. These natural disparities mean that absolute equality—where all people possess identical outcomes, resources, and statuses—remains a utopian fantasy. Instead, societies must strive for relative equality, which focuses on providing equal opportunities for personal and collective growth. This approach acknowledges human diversity while empowering the state to intervene thoughtfully, regulating liberties and safeguarding rights in a way that respects individual free will, intentions, and capabilities.

In this framework, the state acts as a mediator, not an equalizer of outcomes, but a guarantor of fair starting points. By considering the unique motivations and potentials of individuals, the state can craft policies that mitigate natural inequalities without erasing them. This balance is essential because unchecked liberty can exacerbate disparities, while overregulation can stifle human agency. The result is a society where opportunities are accessible to all, fostering growth rather than uniformity.

Natural Inequalities: The Foundation of Human Diversity:At the core of this discussion is the recognition that inequality is woven into the fabric of existence. Nature does not distribute talents, health, or circumstances evenly. Consider the historical example of Dara Shikoh and Aurangzeb, brothers born to the Mughal emperor Shah Jahan in the 17th century. Despite sharing the same royal lineage, upbringing, and privileges, they embodied starkly different qualities. Dara Shikoh was a scholar and philosopher, known for his liberal views, tolerance toward other religions, and efforts to translate Hindu texts like the Upanishads into Persian, promoting syncretism and intellectual harmony. In contrast, Aurangzeb was austere, devoutly orthodox in his Islamic faith, and pragmatic in his pursuit of power, often employing strict governance and military strategies. Their differences in temperament, ideology, and capabilities led to a brutal war of succession, where Aurangzeb emerged victorious and executed Dara. This fraternal rivalry illustrates how even siblings, raised in identical environments, can diverge profoundly due to innate dispositions and free will. Such natural variations underscore that absolute equality is unattainable; attempting to force it would require suppressing individuality, which is antithetical to human flourishing.

In modern society, these innate differences manifest in myriad ways: one person may excel in mathematics due to genetic predispositions, while another thrives in artistic endeavors. Socioeconomic factors compound these, with children born into poverty facing barriers that their affluent peers do not. Free will further complicates the equation—individuals choose paths based on personal intentions, values, and motivations, leading to diverse outcomes. The state cannot homogenize these traits without resorting to authoritarian control, which history shows leads to oppression rather than equity.

Counterarguments to Absolute Equality: Expanding the Critique:While the ideal of absolute equality appeals to notions of justice and fairness, it faces robust counterarguments that highlight its impracticality and potential harms. Proponents of absolute equality often argue that societal structures alone create disparities, and thus, through radical redistribution and uniform policies, equality can be engineered. However, this view overlooks several critical flaws:

Biological and Genetic Realities as Inescapable Barriers:Counter to the nurture-over-nature argument, scientific evidence demonstrates that genetics play a significant role in traits like intelligence, physical prowess, and even personality. For instance, twin studies show that identical twins raised apart often exhibit similar abilities and preferences, suggesting heritability. Imposing absolute equality would require interventions like genetic engineering or forced resource allocation, which raise ethical dilemmas about consent and human rights. Such measures could lead to a dystopian society where individual uniqueness is sacrificed, stifling innovation and personal fulfillment. The Dara-Aurangzeb example reinforces this: their differing qualities were not merely products of environment but intrinsic, and no state policy could have made them identical without destroying their essences.

The Fallacy of Equal Outcomes Undermining Merit and Motivation:Advocates for absolute equality might claim that equal outcomes motivate collective progress, but this ignores human psychology. Free will drives individuals to pursue goals based on personal intentions, and removing incentives for excellence—such as rewards for innovation or hard work—can lead to stagnation. Historical experiments, like communist regimes attempting classless societies, often resulted in reduced productivity and widespread discontent because they disregarded individual capabilities and motivations. Instead of fostering equality, these systems created new hierarchies based on political loyalty, proving that absolute equality erodes liberty and breeds inefficiency.

Cultural and Social Diversity as Assets, Not Obstacles:A common pro-equality argument posits that uniformity promotes harmony, but counterarguments emphasize that diversity enriches societies. Cultural, ethnic, and ideological differences, like those between Dara's pluralism and Aurangzeb's orthodoxy, spark creativity and debate. Forcing absolute equality could homogenize cultures, leading to cultural erosion and loss of heritage. Moreover, in pluralistic societies, equal outcomes often require suppressing minority voices or traditions, which contradicts the very inclusivity equality seeks.

Economic Impracticality and Unintended Consequences:Economically, absolute equality demands infinite resources for redistribution, which is impossible in finite systems. Counterarguments highlight how such pursuits lead to inflation, black markets, or economic collapse, as seen in Venezuela's attempts at wealth equalization. By ignoring individual intentions—such as entrepreneurial drive—these policies discourage investment and growth, ultimately harming the vulnerable they aim to help.

These counterarguments collectively dismantle the feasibility of absolute equality, advocating instead for relative equality as a pragmatic alternative.

The State's Role in Achieving Relative Equality: Regulating Liberty with Nuance:Given the impossibility of absolute equality, the state must focus on relative equality by guaranteeing equal opportunities. This involves regulating liberties—ensuring they do not infringe on others' rights—while accounting for free will, intentions, and capabilities. Liberty, as the freedom to act according to one's will, is inherently controlled by state-enacted laws. These laws, in turn, manage rights to create an environment where everyone has an equal opportunity to grow. However, the current mechanisms for regulating rights often remain oblivious to individual backgrounds, capabilities, free will, intentions, and traits. The state typically defines a set of crimes and prescribes uniform punishments, overlooking the nuanced human elements that make each case unique. This one-size-fits-all approach can inadvertently perpetuate inequalities rather than mitigate them, as it fails to tailor interventions to the individual's context.

Laws Tailored to Individual Contexts:Enacting laws that consider intent prevents blanket punishments that ignore nuances. For example, in criminal justice, distinguishing between manslaughter (unintentional) and murder (malicious) respects free will and promotes fairness. This approach equalizes opportunities by rehabilitating rather than alienating offenders, particularly those from disadvantaged backgrounds. Yet, even here, the system often falls short by not delving deeper into personal histories. Laws should evolve to incorporate comprehensive assessments of an individual's background, such as socioeconomic factors, psychological profiles, and life experiences, ensuring that the regulation of liberty aligns with the goal of fostering growth for all.

Punishment Measures Sensitive to Capabilities and Individual Traits:Proportional punishments, adjusted for socioeconomic factors, avoid perpetuating inequality. Harsh sentences for minor offenses in impoverished communities deepen cycles of poverty, while leniency for the elite erodes trust. By incorporating restorative justice, the state can address root causes, enhancing opportunities for all. However, the prevailing crime-oriented punishment model—where the state provides one standardized penalty for a defined crime—neglects individual free will and traits. This is akin to a doctor treating two patients suffering from the same disease with identical medicine, disregarding their unique capabilities, allergies, or overall health profiles. In reality, effective medical treatment is personalized: one patient might require a milder dosage due to age or comorbidities, while another needs a stronger regimen based on their resilience and history.

Similarly, in the justice system, two persons guilty of the same crime should not be subjected to the same punishment. Consider a respectful, first-time offender in society—perhaps a community leader who commits theft out of desperation during a personal crisis—versus a habitual offender with a long record of similar acts driven by entrenched patterns of behavior. For the former, a rehabilitative approach like community service or counseling might suffice, respecting their free will and intention to reform, while promoting their growth and reintegration. For the latter, stricter measures, such as incarceration combined with intensive therapy, could be necessary to protect society and address deeper traits. Punishment should thus shift from being purely crime-oriented to individual-oriented, evaluating factors like background, capabilities, free will, and intentions. This nuanced regulation ensures that the state's control over liberty and rights truly provides equal opportunities for personal development, preventing the system from blindly amplifying natural inequalities.

Policies Promoting Equal Opportunity:Affirmative actions, like scholarships for underprivileged students, regulate economic liberties (e.g., taxing the wealthy) to fund programs that bridge capability gaps. These must respect free will by offering choices, not mandates, ensuring individuals can pursue paths aligned with their intentions. Extending this, policies should include individualized support systems, such as personalized education plans or vocational training that account for diverse traits and motivations, further emphasizing the state's role in controlled liberty for equitable growth.

However, the state must guard against overreach. Excessive regulation could suppress free will, leading to resentment or underground resistance, as seen in prohibition-era policies.

Addressing Potential Conflicts: Balancing Liberty, Rights, and Equality:Conflicts arise when regulating liberty for equality. For instance, wealth taxes limit economic freedom but fund social programs, creating equal opportunities. To mitigate trade-offs, the state should:

- Prioritize transparency in lawmaking to build trust.

- Incorporate feedback mechanisms respecting diverse intentions.

- Use data on capabilities to tailor interventions without stereotyping.

- Reform punishment paradigms to emphasize individual-oriented justice, ensuring that regulations on rights do not ignore personal contexts, as highlighted in the doctor-patient analogy.

By addressing these conflicts with a focus on nuance, the state can avoid the pitfalls of uniform mechanisms that overlook human diversity.

Embracing Relative Equality for a Just Society:In a world of natural inequalities, absolute equality is a mirage that distracts from achievable goals. By focusing on relative equality—equal opportunities regulated with respect for free will, intentions, and capabilities—the state can foster a balanced society. Drawing from examples like Dara and Aurangzeb, we see that diversity is strength, not weakness. Through nuanced laws and punishments that control liberty while tailoring rights to individual traits—moving beyond crime-oriented to individual-oriented approaches—the state regulates liberty, guarantees rights, and enables all to grow, transforming inherent differences into collective progress. This human construct of equality, though imperfect, honors nature's variety while advancing justice.

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

Court on Its Own Motion Vs Obsession Naaz

### Introduction

This case revolves around a criminal contempt proceeding initiated by the High Court of Delhi on its own motion following a violent attack on court-appointed Advocate Commissioners in Kolkata. The incident stemmed from a trademark infringement suit filed by Samsung Electronics Company Limited against vendors selling counterfeit products bearing its marks. The court's intervention highlighted the critical need to protect the administration of justice from interference, particularly when judicial officers or commissioners are obstructed in executing court orders. The judgment underscores the judiciary's role in upholding its authority against premeditated disruptions, balancing the principles of wilful disobedience with the requirement for proof beyond reasonable doubt.

### Factual Background

Samsung Electronics Company Limited, a global leader in electronics with operations in over 67 countries including India, discovered in November 2014 that several vendors in the Khidderpore area of Kolkata were selling counterfeit mobile phones, tablets, and accessories under its trademark "Samsung" and oval slanted logo. The company identified five main markets and 15 vendors involved in this activity. On December 23, 2014, the Delhi High Court, in the suit CS(OS) No. 4024/2014, restrained these vendors from dealing in counterfeit goods and appointed 11 Advocate Commissioners to inspect specific shops, prepare inventories of infringing products, seize them, seal them, and release them on superdari for production in court as needed. The commissioners were authorized to seek assistance from Samsung representatives and local police.

The commissioners coordinated with Samsung's counsel and informed the Deputy Commissioner of Police (Enforcement), Kolkata, in advance. On January 13, 2015, they arrived at the markets with 21 police personnel. Upon reaching the sites, they encountered resistance: shops were shut, lights turned off, and mobs gathered, armed with rods, hockey sticks, and lathis. Several commissioners were assaulted; for instance, Mr. Shravan Sahary suffered blows to his face, losing two teeth, while Mr. Ankur Mittal received multiple injuries. The mobs manhandled police personnel and forced the teams to flee without completing the inspections. Injured commissioners and police were treated at hospitals, and a FIR was registered by Kolkata Police under various IPC sections. The attack appeared premeditated, as news of the raid had spread, leading to the removal of counterfeit goods beforehand.

### Procedural Background

The underlying suit, CS(OS) No. 4024/2014, was filed by Samsung against 15 defendants for trademark infringement. The court issued an ex-parte injunction and appointed commissioners on December 23, 2014. Following the January 13, 2015 incident, Mr. Shravan Sahary mentioned the matter before the Delhi High Court on January 22, 2015, leading to suo motu criminal contempt proceedings. Notices were issued to the original 16 defendants and the DCP, Kolkata, for explanations. The matter was transferred to a Division Bench. Based on police investigations, additional respondents (Nos. 17-30) were impleaded between March 2015 and April 2024. Affidavits were filed by respondents denying involvement, claiming alibis, or tendering apologies. Kolkata Police submitted charge-sheets and additional affidavits identifying attackers. The court appointed an Amicus Curiae and heard arguments, culminating in the judgment on August 22, 2025.

### Core Dispute

The central issue was whether the respondents committed criminal contempt by wilfully interfering with the administration of justice through their actions in obstructing and assaulting the court-appointed Advocate Commissioners. The court examined if the respondents' conduct demonstrated knowledge of the court order and intent to disrupt its execution, constituting contempt under the Contempt of Courts Act, 1971. Respondents argued lack of awareness, alibis, or mere bystander status, while the Amicus Curiae contended it was a concerted effort to thwart judicial process. The dispute hinged on proving "wilful" interference beyond reasonable doubt, balancing apologies with the gravity of the assault on court officers.

### Discussion on Judgments

The court relied on several Supreme Court judgments to define the scope of criminal contempt, emphasizing wilful disobedience and interference in justice. In Jhareswar Prasad Paul v. Tarak Nath Ganguly, (2002) 5 SCC 352, cited in the context of upholding judicial majesty, the Apex Court observed that contempt jurisdiction protects the dignity of courts as a guarantee for citizens' rights, underscoring that undermining respect for the judiciary erodes democratic fabric—this was referred to establish the purpose of contempt proceedings in the present case. Ram Kishan v. Tarun Bajaj, (2014) 16 SCC 204, was extensively quoted to explain that contempt requires "wilful" disobedience, excluding accidental or negligent acts, and demands proof beyond reasonable doubt; it was used to delineate that proceedings are quasi-criminal and must be exercised cautiously, applying this to assess if respondents' actions were intentional. U.N. Bora v. Assam Roller Flour Mills Association, (2022) 1 SCC 101, was invoked to reiterate principles from prior cases, noting that two interpretations of an action favor non-contumacious views if possible, and was referenced to affirm the need for mental intent in interference. Hukum Chand Deswal v. Satish Raj Deswal, (2021) 13 SCC 166, was cited alongside Ram Kishan to emphasize the "wilful" element as knowingly intentional, excluding bona fide inability, and was applied to evaluate respondents' claims of unawareness. S. Sundaram Pillai v. V.R. Pattabiraman, (1985) 1 SCC 591, was mentioned in the context of excluding compelling circumstances from contempt, used to reject alibis lacking proof. Rakapalli Raja Ram Gopala Rao v. Naragani Govinda Sehararao, (1989) 4 SCC 255, Niaz Mohammad v. State of Haryana, (1994) 6 SCC 332, Chordia Automobiles v. S. Moosa, (2000) 3 SCC 282, Anil Ratan Sarkar v. Hirak Ghosh, (2002) 4 SCC 21, Bank of Baroda v. Sadruddin Hasan Daya, (2004) 1 SCC 360, State of Orissa v. Mohd. Illiyas, (2006) 1 SCC 275, Sahdeo v. State of U.P., (2010) 3 SCC 705, National Fertilizers Ltd. v. Tuncay Alankus, (2013) 9 SCC 600, Sushila Raje Holkar v. Anil Kak, (2008) 14 SCC 392, and Three Cheers Entertainment (P) Ltd. v. CESC Ltd., (2008) 16 SCC 592, were collectively referenced as precedents on standards of proof, wilfulness, and caution in contempt, invoked to support the finding that only deliberate interference qualifies as contempt in this mob attack scenario. R.N. Dey v. Bhagyabati Pramanik, (2000) 4 SCC 400, was quoted approvingly in U.N. Bora to reinforce contempt's contours, applied here to limit proceedings to proven wilful acts.

The judges reasoned that criminal contempt under the Contempt of Courts Act, 1971, requires wilful interference in justice administration, proven beyond reasonable doubt, as established in precedents like Ram Kishan v. Tarun Bajaj. They analyzed affidavits and police reports, finding the attack premeditated: shops were preemptively cleared, shutters downed, and mobs mobilized upon commissioners' arrival. This demonstrated intent to obstruct court orders, as respondents knew of the raid's purpose from interactions. Alibis by shop owners (e.g., Respondents 1, 4, 13) were rejected, as their absence did not negate orchestration or knowledge, evidenced by on-site resistance. Mere bystanders (e.g., cycle repairers, bus conductors) lacked intent or knowledge, discharging them. However, identified attackers and shop affiliates showed wilfulness by inciting violence to prevent seizures, undermining judicial authority. Apologies were insufficient given injuries to commissioners and police, emphasizing deterrence to uphold rule of law. The analysis balanced evidence with contempt's quasi-criminal nature, confining punishment to those with proven interference.

The court held Respondents Nos. 1, 2, 4, 10, 11, 13, 17, 18, 21, 22, 24, and 27 guilty of criminal contempt for wilfully interfering in justice administration. Each was fined Rs. 2,000 and sentenced to one day of simple imprisonment, with medical examination in Tihar Jail. Notices against other respondents were discharged. The petition was disposed of, with observations limited to contempt proceedings, not affecting parallel criminal cases.

 

This case reaffirms that criminal contempt requires wilful interference in justice administration, proven beyond reasonable doubt, excluding accidental or unaware acts. Obstructing court-appointed commissioners constitutes contempt if intentional, as it undermines judicial majesty and citizens' rights protection. Unconditional apologies do not absolve grave interferences like violent assaults on court officers. Courts must exercise contempt powers sparingly but firmly to deter premeditated disruptions, ensuring rule of law prevails without affecting parallel criminal trials.

Court on Its Own Motion Vs Obsession Naaz & Ors.: August 22, 2025:CONT.CAS.(CRL) 3/2015:2025:DHC:7206-DB:Hon'ble Mr. Justice Subramonium Prasad and Hon'ble Mr. Justice Harish Vaidyanathan Shankar

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Yatra Online Limited Vs Mach Conferences and Events Limited

Introduction

The dispute between Yatra Online Limited (Plaintiff) and Mach Conferences and Events Limited (Defendant) arose in connection with alleged infringement, passing off, misrepresentation, dilution, and unfair competition pertaining to the trademark ‘YATRA’, including device marks and formative domain names. This case study delves into the complexities surrounding claims for exclusivity over generic and descriptive marks in the travel services industry, the nuances of prima facie rights, and the scope of injunctive relief in trademark cases before the Hon’ble High Court of Delhi.

Factual Background

Yatra Online Limited asserted its status as the registered proprietor of multiple trade marks such as 'YATRA.COM', 'YATRA WITH DEVICE', 'YATRA FREIGHT', and related device marks. The plaintiff highlighted the adoption of ‘YATRA’ as its trade name in 2005 and its business operations commencing in 2006 through the website www.yatra.com and associated platforms. The brand ‘YATRA’ was presented as a dominant market player in online travel bookings and related services, boasting a large customer base and multi-channel presence. In fiscal year 2024-2025, the plaintiff acquired Globe All India Services Limited, further solidifying its corporate clientele to over 1,200 clients.

Upon discovering the defendant’s intent to launch www.bookmyyatra.com, the plaintiff observed Mach Conferences and Events Limited attempting to register and use confusingly similar marks for identical travel-related services. This included trade mark applications for ‘BookMyYatra’ and ‘BookMyYatra.com’, domain registration, and evidence from an Analyst/Investor meeting transcript. The plaintiff considered the defendant’s actions a deliberate attempt to capitalize on the reputation and goodwill established by Yatra’s longstanding use.

Conversely, the defendant argued that ‘YATRA’ is a generic, descriptive word meaning ‘journey’ in Hindi, and is widely used in the travel industry by various businesses. The defendant claimed no exclusive rights accrue to the plaintiff, especially in Class 39, as the Registrar had issued device mark registrations with a disclaimer expressly denying exclusivity over the word ‘YATRA’.

Procedural Background

The plaintiff filed a suit seeking injunction against the defendant from using the marks ‘BOOKMYYATRA’ and ‘BOOKMYYATRA.COM’, and requested delivery of the defendant’s domain name. The plaintiff further sought withdrawal of the defendant’s trade mark applications and damages. By an ex-parte interim order dated 09.12.2024, the defendant was restrained from using the impugned marks pending further hearing. The defendant filed a detailed reply opposing interim relief, followed by a rejoinder from the plaintiff. The application was finally heard and reserved for order on 27.07.2025.

During arguments, the plaintiff emphasized its statutory and common law rights, asserting ‘YATRA’ as having acquired a secondary meaning due to long and exclusive market use. The defendant countered, highlighting multiple instances of third-party use, registration refusals, disclaimers, and the generic nature of 'YATRA' and '.com', arguing that no confusion or exclusive rights could be claimed.

Core Dispute

The crux of the dispute rested on whether the plaintiff could claim exclusive statutory and common law rights over the mark ‘YATRA’, considering its registration status, disclaimers, evidence of goodwill, and the prevailing use of the word within the industry. The court was to decide the validity and enforceability of trade marks containing generic elements, the implications of disclaimers on exclusivity, and whether the defendant’s marks ‘BookMyYatra’ and ‘BookMyYatra.com’ constituted infringement, passing off, or justified remedial injunction.

Discussion on Judgments – Complete Citations and Context

Both parties heavily relied on precedent to support their positions. The plaintiff’s counsel cited the following authorities:

Registrar of Trade Marks v. Ashok Chandra Rakhit Limited, 1955 SCC OnLine SC 12 (regarding the effect of disclaimers).

Pidilite Industries Limited v. Riya Chemy, 2022 SCC OnLine Bom 5077 (impact of disclaimers and common law rights).

Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel & Others, (2006) 8 SCC 726 (common law rights and secondary meaning).

Amritdhara Pharmacy v. Satyadeo Gupta, 1962 SCC OnLine SC 13; Corn Products Refining Co. v. Shangrila Food Products Limited, 1959 SCC OnLine SC 11 (similarity and confusion).

Sky Enterprise Private Ltd. v. Abaad Masala & Co., 2020 SCC OnLine Bom 750; British School Society v. Sanjay Gandhi Educational Society and Another, 2022 SCC OnLine Del 1165; British School Society v. British International School, 2021 SCC OnLine Del 5210.

Frank Reddaway & Co. Ltd. v. Banham & Co. Ltd., AC 1999; Godfrey Philips India Ltd. v. Girnar Food & Bevarages (P) Ltd., (2004) 5 SCC 257 (secondary meaning and household reputation).

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., (1969) 2 SCC 131; Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618; Mex Switchgears Pvt. Ltd. v. Omex Cables Industries, 2018 SCC OnLine Del 10412; Pidilite Industries Ltd. v. S.M. Associates, 2003 SCC OnLine Bom 143 (deceptive similarity).

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 (honest business practices).

Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd., 2001 SCC OnLine Bom 1176; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 (bad faith/adoption).

M/s Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, 2002 SCC OnLine Del 239; Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145; Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727; Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73; Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50 (domain name and passing off).

M/s. Jawahar Engineering Co. v. M/s. Jawahar Engineers Pvt. Ltd., 1983 SCC OnLine Del 41; Intel Corporation v. Harpreet Singh, 2018 SCC OnLine Del 7264; Mars Inc. v. Kumar Krishna Mukerjee, 2002 SCC OnLine Del 1218 (quia timet injunctions).

National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd., (1970) 3 SCC 665; Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del 1744; Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt. Ltd., 2023 SCC OnLine Del 2065; Rajesh Chugh v. Chhavi Poplai, 2019 SCC OnLine Del 6717; Goenka Institute v. Anjani Kumar, 2009 SCC OnLine Del 1691; Dr. Reddy's Labs Ltd. v. Reddy Pharmaceuticals Ltd., 2004 SCC OnLine Del 668; Lupin Limited v. Eris Lifesciences Pvt. Ltd., 2015 SCC OnLine Bom 6807; Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distiller Pvt. Ltd., 2015 SCC OnLine Del 10164 (third-party use).

The defendant’s counsel referenced:

Parakh Vanijya Pvt. Ltd. v. Baroma Agro Product, 2018 SCC OnLine SC 686 (effect of disclaimers).

Nilkamal Crates & Containers v. Ms. Reena Rajpal, 2023:DHC:8087 (whole mark policy under Section 17 of Trade Marks Act).

BigTree Entertainment Pvt. Ltd. v. Brain Seek Sportainment Pvt. Ltd., 2017:DHC:7767; People Interactive (India) Pvt. Ltd. v. Vivek Pahwa, 2016 SCC Online Bom 7351; Juice Generation Inc. v. GS Enters LLC, 2015 U.S App. LEXIS 12456; Office Cleaning Services LD. V. Westminster Window and General Cleaners LD., (1946) 63 RPC 39; Radio Taxicabs (London) Ltd. v. Owner Driver Radio Taxi Services Ltd., RPC 351.

Kamdhenu Ltd. v. Registrar of Trade Marks, 2023 SCC Online Del 3913; J.R Kapoor v. Micronix India, 1994 Supp (3) SCC 215; Pernod Ricard India Pvt. Ltd. v. A.B Sugars Limited, 2023 SCC OnLine Del 6966; PhonePe Pvt. Ltd. v. EZY Services, 2021 SCC OnLine Del 2635; Ayushakti Ayurved Pvt. Ltd. v. Hindustan Lever Limited, 2003 SCC OnLine Bom 404; Vijay Kumar Ahuja v. Lalita Ahuja, 2001 SCC OnLine Del 1215.

The context for these precedents included the market effect of disclaimers, what constitutes generic and descriptive marks, standards for secondary meaning, the principle of anti-dissection and dominant marks, and the prerequisites for injunctive relief.

Reasoning and Analysis of the Judge

Justice Tejas Karia provided a detailed rationale examining whether the plaintiff’s marks had acquired distinctiveness or secondary meaning. The court recognized the plaintiff's longstanding market use and device mark registrations but underscored that the Registrar of Trade Marks expressly issued a disclaimer, denying exclusive rights over ‘YATRA’.

It was reasoned that ‘YATRA’, being a synonym for ‘travel’ in Hindi, is a generic and descriptive term commonly employed in the travel industry. The market was replete with various businesses and registered marks containing ‘YATRA’, undermining the plaintiff’s claim for exclusivity or secondary meaning. The court scrutinized evidence of market adoption, business operations, reputational claims, and differences in marks, emphasizing that generic and descriptive marks, even with significant market reputation, cannot be monopolized absent distinctiveness.

Further, the court adopted the whole mark policy, stating that the defendant’s marks 'BookMyYatra' and 'BookMyYatra.com', viewed in their entirety and with their prefixes, were distinguishable from the plaintiff’s device marks and did not create likelihood of confusion. The use of ‘BookMy’ was deemed to be a common prefix in online businesses (e.g., BookMyShow, BookMyTrip), and '.com' was held to be generic and incapable of conferring distinctiveness.

The court found no prima facie case of infringement, deception, or passing off, nor did the plaintiff satisfy requirements for declaring ‘YATRA’ a well-known mark under Section 2(zg) of the Trade Marks Act or Rule 124 of the Trade Mark Rules.

Based on the above reasoning, the court dismissed the application for interim injunction. No permanent relief was granted. The ex-parte restraint against the defendant using 'BookMyYatra' and 'BookMyYatra.com' or the domain name www.bookmyyatra.com was vacated, finding no prima facie case for infringement or passing off. The court held that generic and descriptive marks such as 'YATRA' and '.com', absent secondary meaning, do not qualify for legal protection from third-party use in the context of the travel services industry.

The judgment clarified that generic or descriptive words—especially those commonly used in the relevant industry—cannot be monopolized or protected as trade marks in the absence of distinctiveness or secondary meaning. Disclaimers attached to device mark registrations restrict the proprietor from claiming exclusivity over the disclaimed element. Moreover, the presence of widespread industry use and registration of similar marks by different proprietors precludes the grant of exclusivity or injunctive relief. When marks are to be compared, courts must examine them as wholes, not merely by their constituent parts, and generic website suffixes like '.com' have no distinctiveness.

Yatra Online Limited Vs Mach Conferences and Events Limited: August 22, 2025: CS(COMM) 1099/2024: 2025:DHC:7167:Hon'ble Mr. Justice Tejas Karia

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.

Sushil Kumar Vs The Polo/Lauren Company

Introduction

The dispute between Sushil Kumar T/A Da Polo & Anr. and The Polo/Lauren Company L.P. pivots on crucial questions of territorial and pecuniary jurisdiction in the realm of trademark and copyright enforcement, especially in the digital era. The matter came before the High Court of Delhi, challenging the decision of the Commercial Court (South District, Saket Court, New Delhi) to entertain a suit for permanent injunction based on alleged infringement, passing off, and copyright violation due to the use of trade marks similar to those of the respondent. The petitioners sought judicial intervention under Article 227 of the Constitution of India, raising fundamental issues about the interplay between internet-based commerce and forum conveniens in intellectual property litigation.

Factual Background

The Respondent, The Polo/Lauren Company L.P., holds registrations for multiple formative variants of the mark "POLO," including "POLO RALPH LAUREN," and other associated device marks, with registered protection over goods and services in their class. The Petitioners, Sushil Kumar T/A Da Polo and another, were accused of adopting and using the impugned trade mark "DA POLO" on identical goods, marketing these through their own website (www.dapolo.in) and e-commerce platforms such as www.indiamart.com. The Respondent contended that such acts constituted infringement, passing off, and copyright violation, seeking permanent injunction restraining those acts. The core factual assertion by the Respondent was that these infringing products were networked and made accessible to customers within the territorial jurisdiction of the South Delhi Commercial Court.

Procedural Background

The suit was filed by the Respondent before the Commercial Court seeking permanent injunction, damages, and other reliefs. The Petitioners, acting as Defendants in that suit, moved an application under Order VII Rules 10 and 11 of the Code of Civil Procedure, 1908, together with Sections 35, 35A, and 151, to dismiss or return the plaint for lack of jurisdiction and inadequate valuation. The Commercial Court rejected the application, considering the objections 'by way of demurrer', leading the Petitioners to file the present petition under Article 227 of the Constitution of India before the High Court of Delhi.

Core Dispute

At the heart of this litigation were three intertwined issues. First, whether the Commercial Court in South Delhi had territorial and pecuniary jurisdiction in light of the Petitioners’ principal places of business being in Sonipat (Haryana) and Rohini (New Delhi), and the absence of specific evidence of commercial transactions within its jurisdiction. Second, whether mere accessibility or interactivity of the Petitioners’ website constituted purposeful availment of the jurisdiction of the Commercial Court, especially for internet-based disputes in trademark infringement and passing off actions. Third, whether the provisions of Section 134(2) of the Trade Marks Act, 1999 enabled forum shopping, or should be harmonized with Section 20 of CPC in accordance with Supreme Court interpretations to prevent abuse of process.

Discussion on Judgments

The parties cited and relied upon an array of precedents, which the judge meticulously discussed:

St. Ives Laboratories Inc. v. Arif Perfumers & Anr. (2009) 40 PTC 104 (Delhi) was referenced by the Petitioners to suggest that mere assertions of clandestine sales do not confer jurisdiction and that such suits could be a device for harassment.

Dahiben v. Arvindbhai Kalyanji Bhanushali (Gajra) Dead through Legal Representatives & Ors. (2020) 7 SCC 366 (Supreme Court of India) as cited by the Petitioners, underscored that a plaint which is manifestly vexatious and does not disclose a clear right to sue must be nipped at the threshold.

Coromandel Indag Products India Ltd. v. Sumitomo Chemical Company Ltd. & Anr. 2025 SCC OnLine Del 4647 (Delhi High Court) reaffirmed the principle that courts must look for meaningful pleadings rather than clever drafting creating an illusion of cause of action.

Banyan Tree Holding Limited v. M. Murali Krishna Reddy & Anr. 2009 SCC OnLine Del 3780 (Delhi High Court, Division Bench) established crucial tests for asserting jurisdiction in internet-based disputes. The judgment held that jurisdiction is not attracted by mere interactivity or accessibility of a website; the plaintiff must demonstrate that the defendant purposefully availed itself of the forum court and specifically targeted customers within the jurisdiction, resulting in injury or harm. This authority was heavily relied on by the Petitioners, with its multi-factor test reaffirmed in subsequent cases.

Impresario Entertainment & Hospitality Pvt. Ltd. v. S&D Hospitality 2018 SCC OnLine Del 6392 (Delhi High Court) interpreted Banyan Tree’s tests and held that plaintiffs must prima facie show commercial transactions targeting the forum state, supported by material evidence. Trap transactions, if relied upon, must be fair and transparently pleaded.

Karans Gurukul Classes & Ors. v. Gurukul Classes IIT Division & Ors. 2019 SCC OnLine Del 8444 (Delhi High Court) echoed the earlier judgments, holding that mere website interactivity does not suffice for jurisdiction unless targeted commercial activity is established.

Indian Performing Rights Society Ltd. v. Sanjay Dalia & Anr. (2015) 10 SCC 161 (Supreme Court) was referenced to clarify that Section 134(2) of the Trade Marks Act provides an additional forum but does not allow forum shopping; suits should be filed at a place where plaintiff carries on business and where the cause of action arises.

Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors. 2016 SCC OnLine Del 376 and 2023:DHC:9093 (Delhi High Court) analyzed forum conveniens and the meaning of "carries on business", harmonizing Section 134 of the Trade Marks Act with Section 20 of CPC, favoring the plaintiff’s convenience, yet restricting forum shopping.

World Wrestling Entertainment, Inc. v. Reshma Collection & Ors. (2014) 60 PTC 452 (Del) applied similar reasoning to internet-based business models, holding that transactions executed over interactive websites where orders, payments, and deliveries occur within a forum state are akin to having a shop in that state, thus satisfying the "carrying on business" criterion.

Further supporting authorities included Corona Remedies Pvt. Ltd. v. UMAC Pharmaceuticals & Ors.:2023:DHC:5718; Diamond Modular Pvt. Ltd. v. Vikash Kumar & Anr.: 2025:DHC:3619-DB; Shree Girirajji & Co. v. Gagan Pagrani Proprietor of Plastica Industries: 2024:DHC:2230-DB; Marrico Ltd.v. Mr. Mukesh Kumar & Ors. (2018) 253 DLT 8; M/s Allied Blenders & Distillers Pvt. Ltd. v. R.K. Distillers Pvt. Ltd. (2017) 69 PTC 493 all of which contributed to contours of jurisdiction in commercial disputes, especially where business is transacted via interactive websites accessible within the forum state.

On maintainability, Black Diamond Trackparts Pvt. Ltd. & Ors. v. Black Diamond Motors Pvt. Ltd. (2021) 87 PTC 480 (DB), Ashok Kumar Puri & Anr. v. S. Suncon Realtors Pvt. Ltd. & Anr. (2021) 4 HCC (Del) 201, and Deep Industries Limited v. Oil and Natural Gas Corporation Limited (2020) 15 SCC 706 were cited to clarify the limited, cautious exercise of Article 227 jurisdiction over Commercial Court orders.

Reasoning and Analysis of the Judge

Justice Tejas Karia conducted a thorough analysis of the pleadings, rival submissions, and the array of precedents. At the outset, he clarified that petitions under Article 227, while maintainable, should only be entertained in exceptional circumstances involving patent lack of inherent jurisdiction. The threshold for interference with Commercial Court orders was set high, favoring expeditious resolution over piecemeal challenges.

The judge recognized that the Respondent had sufficiently pleaded facts demonstrating the causes of action within the territorial jurisdiction of the Commercial Court. Screenshots showed the petitioners marketing allegedly infringing products online, with accessibility to customers within South Delhi. The plaint included credible apprehensions that the petitioners' activities were likely to expand further into that market, thus justifying jurisdiction for preventive relief.

On the pivotal issue of internet-based jurisdiction, Justice Karia harmonized the reasoning from Banyan Tree Holding and World Wrestling Entertainment. He acknowledged the nuanced requirement for purposeful availment — more than mere accessibility or interactivity — insisting that the defendant must target customers within the forum state. However, upon reviewing the documents and pleadings, he concluded that the petitioners’ website, coupled with the presence on multiple e-commerce platforms, established purposeful availment, as customers in the territorial jurisdiction could place orders and receive deliveries of the impugned goods.

Additionally, referencing Indian Performing Rights Society Ltd. and Ultra Home Construction Pvt. Ltd., Justice Karia asserted that Section 134(2) of the Trade Marks Act provides an additional forum only if the plaintiff carries on business in a jurisdiction where a cause of action arises, but does not endorse forum shopping solely on the basis of branch offices or online presence at distant locations. The Respondent’s assertion of active business and sales within South Delhi, recognized by their own averments and online transactions, satisfied this requirement.

Notably, the judge held that objections as to valuation and pecuniary jurisdiction had been abandoned before the Commercial Court and required no further adjudication.

Final Decision

Justice Tejas Karia dismissed the petition under Article 227, upholding the order of the Commercial Court that refused to return or reject the plaint. He determined that the Respondent had properly invoked the jurisdiction by evidencing business activity and potential expansion of the allegedly infringing mark within South Delhi through interactive online platforms. The Commercial Court’s finding was neither perverse nor lacking inherent jurisdiction, and thus did not merit interference through supervisory jurisdiction.

Law Settled in This Case

This case settles several significant legal principles in the context of intellectual property disputes over online commerce. First, it reaffirms that territorial jurisdiction in trademark and copyright suits arising from internet commerce is not triggered merely by the accessibility of a defendant’s website in the forum state; rather, the plaintiff must show that the defendant purposefully availed itself of the forum by targeting customers and conducting actual commercial transactions, resulting in injury within the jurisdiction. Second, it confirms the cautious approach courts must take under Section 134(2) of the Trade Marks Act to balance the plaintiff’s convenience with prevention of forum shopping, requiring a real nexus between business activities and the forum. Third, it underscores the limited scope of supervisory jurisdiction under Article 227 in commercial suits, emphasizing prompt resolution and restricting review to cases of patent lack of inherent jurisdiction.

Sushil Kumar Vs The Polo/Lauren Company L.P.: 22 August 2025:CM(M)-IPD 31/2025 :2025:DHC:7159: Hon’ble Mr. Justice Tejas Karia

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

Disclaimer: This information report is intended for informational purposes only and does not constitute legal advice.