Rajani Products Vs Madhukar Varandani

Originality Threshold in Artistic Works

Brief Introductory Note: This case involves a dispute over copyright protection for artistic labels used in the edible oil business. Rajani Products, a partnership firm, filed a petition in the Delhi High Court to cancel a copyright registration held by Madhukar Varandani, who runs Naturalindia Oils and Proteins. The main issue was whether Varandani's label, which included a Swastik device, copied Rajani Products' earlier labels too closely, making it unoriginal and unworthy of copyright protection. The court examined if the challenged label was a substantial imitation of the original works, leading to its removal from the copyright register. This decision highlights how courts protect original creative works in business branding while preventing unfair copying that could harm established reputations.

Factual Background:  Rajani Products is a partnership firm that makes and sells edible oils and similar products. They claim to have started using the Swastik mark, including labels like "Swastik No. 1" and a Swastik logo, back in 1975 through their earlier owners. The word "Swastik" is a key part of their branding. They have registered several trademarks for these, such as one for "Swastik No. 1" under application number 411334 for mustard and til oil, valid until 2034, and another under 1055218 for various edible oils, valid until 2031. Two more applications are pending. Rajani Products also holds copyright registrations for their artistic labels: one is A-45417/1984 for a Swastik label, and another is A-46097/1984 for a similar Swastik label. These copyrights protect the unique designs they created for their products.

On the other side, Madhukar Varandani runs a business called Naturalindia Oils and Proteins, which also deals in edible oils. He started using labels like "Shubharambh" with a Swastik device and "Niwai" with a Swastik device for his products. Rajani Products did not mind the words "Shubharambh" or "Niwai" but objected strongly to the use of the Swastik device, saying it looked too much like theirs. Varandani got a copyright registration in 2019 for his artistic work titled "NIOP Niwai in English and Hindi with Device of Swastik," numbered A-128046/2019. In this design, the Swastik device is a central feature.

Rajani Products learned about this copyright when Varandani mentioned it in a defense document during a separate lawsuit. Before that, Rajani Products had already sued Varandani in a lower court for using those labels, and on February 19, 2021, the District Judge in South Saket Court, New Delhi, granted a temporary order stopping Varandani from using the "Shubharambh" and "Niwai" labels with the Swastik device. Feeling harmed by the copyright registration, Rajani Products asked the high court to cancel it, arguing it was not original and copied their designs.

Procedural Detail:  The case started when Rajani Products filed a petition under Section 50 of the Copyright Act, 1957, in the Delhi High Court, numbered C.O.(COMM.IPD-CR) 16/2024. This section allows someone affected by a wrong copyright entry to ask for its removal. The court issued a notice on August 30, 2024, which Varandani's lawyer accepted, and gave him four weeks to reply. On December 13, 2024, the court noted no reply was filed and gave another six weeks. Then, on April 29, 2025, the court gave a final chance of four weeks to file a reply, but with a condition to pay 10,000 rupees as costs, and asked both sides to submit short written summaries. Despite this, Varandani did not file a reply, so on September 8, 2025, the court closed his chance to respond. The government's lawyer for the copyright office opposed canceling the registration but did not provide detailed arguments. The case was heard without Varandani's full defense, and the judgment was delivered on November 24, 2025.

Core Dispute:  The main question was whether Varandani's copyrighted label was original enough to stay on the copyright register or if it was too similar to Rajani Products' earlier labels, making it a copy that should be removed. Rajani Products argued they were the first to use the Swastik design in edible oil labels since 1975, and Varandani's version imitated it closely, including the shape, placement, and colors. They said this copying harmed their business reputation. Varandani did not defend himself properly since he missed filing a reply, but the copyright office opposed the cancellation. The court had to decide if Rajani Products was truly affected and if the challenged label met the legal test for originality under copyright law.

Detailed Reasoning : The court began by noting that since Varandani did not file a reply despite many chances, the facts presented by Rajani Products stood unchallenged. Under Section 50 of the Copyright Act, 1957, the court explained that this provision allows the removal of a copyright entry if it was wrongly made or harms someone. It can be requested by any "person aggrieved," meaning someone directly affected by the registration. The court found Rajani Products qualified as aggrieved because they own registered copyrights for similar Swastik labels, and both parties sell the same type of products like edible oils. Allowing Varandani's registration to stay could weaken Rajani Products' brand and goodwill, as customers might confuse the products.

To decide if the label should be removed, the court discussed what makes an artistic work original under copyright law. It stressed that copyright protects only original creations, not copies. The court referred to a previous case to explain how to compare labels: Marico Ltd. v. Jagit Kaur, 2018 SCC OnLine Del 8488. In that case, the Delhi High Court said that when checking if one label copies another, you look at the overall look and main features, not tiny details side by side. You consider things like color schemes, object arrangements, and if the copy could fool an average person. The court quoted a part from that judgment where it compared two coconut oil labels. One had a similar color scheme, coconut tree, and broken coconuts, leading the court to call it a "colorful imitation or substantive reproduction." The Marico case also borrowed from an older Supreme Court decision: Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618. There, the Supreme Court said you judge similarity by broad features that might mislead a normal buyer, not by nitpicking differences. For example, in Parle, two biscuit wrappers had similar sizes, colors, a girl with raised arm, animals, and a farm background, so one was seen as deceptively similar. The court explained that even if not identical, if the overall effect confuses people, it's a problem. It emphasized that ordinary buyers aren't detectives like Sherlock Holmes; they can easily mix up similar designs seen days apart.

Applying this to the current case, the court compared the designs visually. Rajani Products' labels from 1984 showed a Swastik symbol in a circle with specific colors and placement. Varandani's 2019 label had a very similar Swastik device, also in a circle, with matching background colors. The court said the Swastik was the key part in both, and the similarities in color and layout made Varandani's a "substantial imitation or reproduction." Since it copied essential elements without originality, it didn't deserve copyright protection. The court concluded that keeping such a non-original work on the register was wrong under the Copyright Act, 1957.

Decision:  The court allowed the petition and ordered the cancellation of Varandani's copyright registration A-128046/2019. It directed the copyright office to remove it from the register and update their website within four weeks. The petition and any related application were closed.

Concluding Note

This case shows the importance of originality in copyright for business labels. It reminds companies to create unique designs rather than borrow from others, as courts will step in to protect earlier creators and prevent confusion in the market. By canceling the registration, the court upheld fair competition in the edible oil industry, ensuring that goodwill built over years isn't unfairly diluted.

Case Title: Rajani Products Vs Madhukar Varandani

Order Date: November 24, 2025

Case Number: C.O.(COMM.IPD-CR) 16/2024

Neutral Citation: 2025:DHC:10368

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia

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 This Legal Analytical Article

Protecting Originality in Branding: Analyzing the Delhi High Court's Decision in Rajani Products v. Madhukar Varandani on Copyright Rectification

Swastik Symbol Dispute: A Deep Dive into Copyright Cancellation for Imitative Artistic Works in Edible Oil Labels

Judicial Safeguards Against Copycat Labels: Lessons from the 2025 Delhi High Court Ruling on Section 50 of the Copyright Act

Originality Threshold in Artistic Works: Unpacking the Reasoning in Rajani Products' Successful Petition Against Infringing Copyright

Balancing Trademark and Copyright in Business: An Examination of Substantial Similarity in the Varandani Label Cancellation Case

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High Court of Delhi at New Delhi, through Hon'ble Mr. Justice Tejas Karia, delivered judgment on November 24, 2025, in the case titled Rajani Products vs Madhukar Varandani, Proprietor of M/s Naturalindia Oils and Proteins & Anr., bearing case number C.O.(COMM.IPD-CR) 16/2024. The court ordered the cancellation of a copyright registration for an artistic label featuring the Swastik device, deeming it a substantial imitation lacking originality.

The dispute centered on Rajani Products, a firm in the edible oil business, challenging the 2019 copyright registration (No. A-128046/2019) held by Madhukar Varandani for his "NIOP Niwai" label with a Swastik symbol. Rajani Products claimed prior use of similar Swastik-based labels since 1975, backed by their own 1984 copyright registrations and trademarks. The court noted that Varandani failed to file a reply despite multiple opportunities, leaving the petitioner's claims unchallenged. Applying Section 50 of the Copyright Act, 1957, which allows rectification of erroneous entries, the judge ruled that Rajani Products was an aggrieved party due to potential dilution of their goodwill in the same market.

Justice Karia compared the labels, highlighting similarities in the Swastik device, color schemes, and placement, and cited precedents like Marico Ltd. v. Jagit Kaur (2018 SCC OnLine Del 8488) and Parle Products (P) Ltd. v. J.P. & Co., Mysore ((1972) 1 SCC 618) to emphasize that broad features must be examined for deceptive similarity, not minute differences. Finding the impugned work unoriginal, the court expunged it from the Copyright Register and directed the Controller General of Patents, Designs and Trade Marks to update records accordingly.

This decision underscores the judiciary's role in protecting original artistic works in branding, particularly in competitive sectors like edible oils, where visual imitation can mislead consumers.

Disclaimer:This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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In a significant ruling on intellectual property rights, the High Court of Delhi at New Delhi, through Hon'ble Mr. Justice Tejas Karia, delivered judgment on November 24, 2025, in the case titled Rajani Products vs Madhukar Varandani, Proprietor of M/s Naturalindia Oils and Proteins & Anr., bearing case number C.O.(COMM.IPD-CR) 16/2024. The court ordered the cancellation of a copyright registration for an artistic label featuring the Swastik device, deeming it a substantial imitation lacking originality.

The dispute centered on Rajani Products, a firm in the edible oil business, challenging the 2019 copyright registration (No. A-128046/2019) held by Madhukar Varandani for his "NIOP Niwai" label with a Swastik symbol. Rajani Products claimed prior use of similar Swastik-based labels since 1975, backed by their own 1984 copyright registrations and trademarks. The court noted that Varandani failed to file a reply despite multiple opportunities, leaving the petitioner's claims unchallenged. Applying Section 50 of the Copyright Act, 1957, which allows rectification of erroneous entries, the judge ruled that Rajani Products was an aggrieved party due to potential dilution of their goodwill in the same market.

Justice Karia compared the labels, highlighting similarities in the Swastik device, color schemes, and placement, and cited precedents like Marico Ltd. v. Jagit Kaur (2018 SCC OnLine Del 8488) and Parle Products (P) Ltd. v. J.P. & Co., Mysore ((1972) 1 SCC 618) to emphasize that broad features must be examined for deceptive similarity, not minute differences. Finding the impugned work unoriginal, the court expunged it from the Copyright Register and directed the Controller General of Patents, Designs and Trade Marks to update records accordingly.

This decision underscores the judiciary's role in protecting original artistic works in branding, particularly in competitive sectors like edible oils, where visual imitation can mislead consumers.

Disclaimer:This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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Castrol Limited Vs Sanjay Sonavane

Continuous Online Harm versus Res Judicata

Brief Introductory Note:  The Delhi High Court recently dealt with a dispute where a company (the plaintiff) sued several defendants for spreading false news, making threatening WhatsApp messages and using the plaintiff’s trademark in a way that allegedly harmed its reputation. The plaintiff had already filed an earlier suit (the “First Suit”) concerning the same trademark issue and a police raid. In the present case the plaintiff asked the court to stop the defendants from further disparagement and to remove the online material. The court had to decide whether this new suit was permissible under the law that prevents filing two suits for the same cause of action.

Factual Background: The plaintiff manufactures products bearing the mark “3X”. The defendants, especially defendant 1, filed a criminal complaint that led police to raid the plaintiff’s distributor in Nashik. After the raid, several news articles and a YouTube video appeared, and defendant 1 also shared a threatening WhatsApp message that mentioned the plaintiff’s mark. The plaintiff claimed that these actions damaged its reputation and infringed its trademark. In the First Suit, the plaintiff had asked for an injunction to stop the defendants from threatening legal action over the 3X mark and for a declaration that such threats were unjustified. The court in that suit gave a preliminary finding that the plaintiff’s use of the 3X mark did not infringe the defendants’ 3P mark and restrained the defendants from issuing further threats.

Procedural Detail: While the First Suit was still pending, the plaintiff filed a second suit (the present plaint) seeking a permanent injunction to stop the defendants from publishing the news articles, the YouTube video and the WhatsApp messages, and to have the material taken down. The defendants argued that the second suit was barred by Order II Rule 2 of the Code of Civil Procedure, which says a plaintiff cannot bring a second suit for the same cause of action if the same relief could have been claimed in the first suit. The plaintiff argued that new events – such as the sharing of the YouTube video on 19 August 2025 and the continued circulation of the material on the internet – gave rise to a fresh cause of action.

Core Dispute: The central question before the court was whether the second suit was a fresh case based on new facts, or whether it was simply an attempt to re‑litigate matters already decided in the First Suit. The court also considered whether the plaintiff could have asked for the removal of the online material in the first suit and whether the continued presence of the articles and video created a continuous cause of action.

Detailed Reasoning :  The court examined the provisions of Order II Rule 2 CPC, which is meant to stop multiple lawsuits over the same set of facts. It recalled the Supreme Court decision in Gurbux Singh v. Bhura Lal (AIR 1964 SC 1810), which laid down three conditions for applying the rule: the second suit must be for the same cause of action, the plaintiff must have been entitled to more than one relief in the first suit, and the plaintiff must have omitted to claim that relief without the court’s permission. The court noted that the plaintiff was aware of the news articles and the YouTube video when the First Suit was filed, as shown by the documents attached to that suit (DOCUMENT‑20 and DOCUMENT‑21). The plaintiff had not asked for the removal of those materials in the first suit, even though the cause of action (the alleged defamation and trademark harm) was already present.

The court also referred to Mohamad Khalil Khan v. Mahbub Ali Mian (1949 51 BomLR 9), which explains that a new suit is allowed only if the claim is substantially different. In this case, the only new fact was the forwarding of the video on 19 August 2025, which the court said could have been added to the First Suit by amendment under Order VI Rule 17 CPC. The court cited Life Insurance Corporation of India v. Sanjeev Builders Pvt. Ltd. (2022 SCC OnLine SC 1128) to stress that an amendment should not change the nature of the suit or introduce a new cause of action.

The plaintiff relied on the judgment in Ruchi Kalra (supra) and Bengal Waterproof (supra) to argue that a continuous breach gives a fresh cause of action each time the offending material is viewed or shared. The court accepted that the internet can create a continuing wrong, but held that the principle does not override the bar under Order II Rule 2 when the plaintiff already had the opportunity to seek relief in the earlier suit.

Decision: The court concluded that the second suit was barred by Order II Rule 2 CPC because the plaintiff could have, and should have, sought the relief of taking down the media coverage and the YouTube video in the First Suit. The court dismissed the present plaint but gave the plaintiff liberty to amend the First Suit to include the later developments and the new defendants, in accordance with the law.

Concluding Note: The judgment reinforces the importance of bringing all related claims in one suit and using the amendment procedure when new facts emerge after the first filing. It also clarifies that while the internet can give rise to a continuous cause of action, that does not automatically allow a fresh suit when the same relief was available earlier.

Case Title: Castrol Limited Vs Sanjay Sonavane

Order Date: 24 November 2025

Case Number: CS(COMM) 946/2025

Neutral Citation: 2025:DHC:10370

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tejas Karia

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

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Delhi High Court Dismisses Second Trademark‑Defamation Suit as Barred by Order II Rule 2

 In a judgment delivered on 24 November 2025 in Castrol Limited Vs Sanjay Sonavane(CS(COMM) 946/2025), Justice Tejas Karia of the High Court of Delhi ruled that a plaintiff cannot bring a fresh suit seeking the removal of online articles and a YouTube video when the same relief could have been claimed in an earlier proceeding. The court held that the plaintiff’s second suit was barred by Order II Rule 2 of the Code of Civil Procedure, which prevents multiplicity of actions on the same cause of action. The judge noted that the plaintiff was aware of the offending material when the first suit was filed and could have amended that suit to include the later developments, rather than initiating a new case. Consequently, the court dismissed the present plaint but granted the plaintiff liberty to amend the original suit to incorporate the new facts and parties.

The decision underscores the principle that while the internet can give rise to a continuing cause of action, parties must still consolidate all related claims in a single proceeding to avoid the procedural bar imposed by Order II Rule 2. The ruling also highlights the importance of timely amendments under Order VI Rule 17 when fresh evidence emerges after a suit is instituted.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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Bikanervala & Anr. Vs. Sh. Satya Narayan

Brief Introductory Head Note Summary of Case, Factual Background

This case involves a petition filed before the High Court of Delhi challenging an order passed by the Trial Court. The core issue revolves around the Trial Court's refusal to allow the Petitioners, Bikanervala & Anr., to submit electronic evidence (videos contained in a pen drive) in a contempt petition they filed against the Respondents, Sh. Satya Narayan & Ors. The videos allegedly show the Respondents violating an interim injunction by using a distinctive artistic label or "JHALAR device" similar to that of the Petitioners' 'BIKANERVALA' trademark. The High Court ultimately upheld the Trial Court's discretionary decision, finding no reason to interfere with the rejection of the application to take the videos on record, especially since the videos were not relied upon for the main trademark infringement suit but only for the separate contempt proceedings.

Procedural Detail

The Petitioners had filed a main suit, CS (COMM) No. 2232/2019, seeking a permanent injunction to prevent the Respondents from using the trademark and artwork 'BIKANER CORNERWALA,' which they claimed was identical or deceptively similar to their 'BIKANERVALA' mark. An interim injunction was initially granted on February 11, 2020, but a subsequent order on February 13, 2020, permitted the Respondents to use the words "Bikaner Cornerwala" or "Bikaner Corner Wala" while the injunction continued to operate specifically on the Petitioners' distinctive artistic label, the "JHALAR device". The injunction was later given full effect on May 9, 2023, restraining the use of 'BIKANER CORNERWALA' or 'BIKANER CORNER WALA' entirely.

Following this, the Petitioners conducted investigations in March and April 2023, where they shot videos allegedly revealing the Respondents' use of the "JHALAR device" in violation of the 2020 injunctions. The Petitioners then filed Contempt Petition No. 8/2023 against the Respondents, mentioning a Google Drive link to these videos.

The Petitioners filed an application on March 4, 2025, under Order XI Rule 6 of the Civil Procedure Code (CPC) as amended by the Commercial Courts Act, 2015, to place a pen drive containing the video recordings on record. This first application was dismissed by the Trial Court on July 24, 2025, because the supporting affidavit was given by the Petitioners' counsel, not a party to the proceeding, as required by Order XI Rule 6(3) of the Commercial Courts Act.

The Petitioners filed a fresh application on August 25, 2025, for the same purpose, this time supported by an affidavit from their authorised representative. This second application was also dismissed by the Trial Court on October 31, 2025 (the Impugned Order).

The present petition, CM(M)-IPD 45/2025, was filed by the Petitioners, Bikanervala & Anr., to challenge the Trial Court's dismissal order dated October 31, 2025. The Petitioners argued that the Trial Court had dismissed the application based on the erroneous fact that the videos were downloaded from the Google Drive on August 20, 2025, when the correct fact was that they were downloaded to a local drive on April 13, 2023, and only copied to the pen drive on August 20, 2025. They asserted that the videos were highly relevant for proving the Respondents' "contumacious conduct" in the contempt matter, even if they weren't relevant for the merits of the trademark infringement suit.

Core Dispute

The central dispute in the High Court was whether the Trial Court was justified in dismissing the Petitioners' application, filed under Order XI Rule 6 CPC as amended by the Commercial Courts Act, 2015, to submit a pen drive containing video evidence in the contempt petition.

The Trial Court's reasoning in the Impugned Order, which the Petitioners challenged, rested on several observations:

The original video recordings were always in the possession or control of the Petitioners, yet they claimed they were downloaded from a Google Drive link.

The investigator, Anil Kumar, who shot the videos, was not examined as a witness.

The Google Drive link (URL) provided by the Petitioners in their previous application was non-functional and nothing was stored on the cloud as of the date of an earlier order (July 24, 2025) and even at the time of the hearing on the fresh application (October 10, 2025).

The Petitioners' stands in the affidavit and application were contradictory regarding the date of downloading the videos, stating they were downloaded on August 20, 2025, in the pen drive, but also asserting they were downloaded on April 13, 2023.

Given the link was empty earlier, it was "highly improbable" to download the videos to the pen drive on August 20, 2025, as claimed.

The Trial Court could not believe the videos were downloaded in the pen drive by the Petitioners' authorised representative as asserted.

Detailed Reasoning and Discussion by Court including on Judgement with Complete Citation Referred and Discussed for Reasoning

The High Court of Delhi, presided over by Justice Manmeet Pritam Singh Arora, heard the arguments and reviewed the Impugned Order dated October 31, 2025.

The Court's primary focus was on the scope of its extraordinary jurisdiction to interfere with a decision of the Trial Court. The High Court ruled that the Trial Court's order, which rejected the application under Order XI Rule 6 CPC as amended by the Commercial Courts Act, 2015, was a matter within the Trial Court's jurisdiction. The Court found no reason to exercise its extraordinary jurisdiction to overturn the Trial Court's discretion.

The High Court specifically addressed the relevance of the evidence. It noted that the videos were not relevant to the merits of the main trademark infringement suit. The Petitioners had already concluded their evidence in the suit and had chosen not to rely upon these videos for the issues concerning the merits of the main claim. The Petitioners were relying on these videos solely for the adjudication of the contempt petition.

The High Court provided a crucial legal distinction regarding contempt proceedings. The Court stated that the issue of whether the Respondents committed contempt is a matter "between the Court and the defendant". This principle suggests that contempt proceedings are primarily for the vindication of the court's dignity and authority, not merely an adversarial proceeding between the parties. Therefore, the issue of contempt will be decided by the Trial Court based on the evidence already filed with the contempt petition.

Given these facts—that the evidence was not critical to the main suit, that the Petitioners had already concluded their evidence, and that the Trial Court had appreciated the facts and exercised its discretion based on the contradictory stands and non-functional evidence link—the High Court found no ground to interfere with the discretion exercised by the Trial Court in dismissing the application.

(The order does not include citations of any external legal judgments referred to or discussed for reasoning beyond the facts and procedural history of the case itself ).

Decision

The High Court of Delhi dismissed the present petition, CM(M)-IPD 45/2025. Consequently, all pending applications were also disposed of. The Trial Court's decision to not permit the electronic evidence (pen drive with videos) to be taken on record in the contempt petition stands affirmed.

Concluding Note

The decision of the High Court of Delhi underscores the principle of judicial non-interference with the discretionary orders of a subordinate court, particularly when the subordinate court has considered the facts presented to it. The key takeaway for any litigant is the importance of timely and consistent presentation of evidence, especially in the context of commercial litigation governed by specific procedural rules like Order XI Rule 6 of the Commercial Courts Act. The Trial Court's refusal, upheld by the High Court, was heavily influenced by the Petitioners' conflicting statements regarding the download date of the electronic evidence and the non-functional status of the original evidence link. Furthermore, the Court reiterated the distinct nature of contempt proceedings, which are fundamentally matters between the court and the alleged contemnor, allowing the Trial Court to decide the issue based on the evidence already before it, without the High Court needing to exercise its extraordinary power to compel the acceptance of belated or questionable evidence. This highlights the strict standards applied to the introduction of electronic evidence, requiring clear chain of custody and verifiable authenticity.

Case Title: Bikanervala & Anr. Vs. Sh. Satya Narayan & Ors. Order Date: November 20, 2025 Case Number: CM(M)-IPD 45/2025 Neutral Citation: 2025:DHC:Citation No [This would be reflected at top of any page of Order in this format Year:DHC:Citation No] Name of Court: High Court of Delhi at New Delhi Name of Hon'ble 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

Suggested Titles for the Legal Analytical Article:

The Discreet Hand of Justice: High Court Refuses to Interfere with Trial Court's Discretion on Electronic Evidence in Contempt Proceedings

Contempt, Commercial Courts, and CPC: An Analysis of Timeliness and Authenticity in Filing Electronic Evidence

Order XI Rule 6, CPC, and the Burden of Proof: Why Bikanervala's Pen Drive Was Dismissed by the Trial Court

The Contradictory Evidence Conundrum: A Study in Admissibility of Electronic Records for Contempt in Trademark Disputes

Beyond the Main Suit: Examining the High Court's Stance on Introducing Evidence Solely for Contempt Adjudication

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Delhi High Court Upholds Trial Court's Discretion to Reject Late Electronic Evidence in Trademark Contempt Plea

New Delhi: In a recent order dated November 20, 2025, the High Court of Delhi, presided over by Hon'ble Ms. Justice Manmeet Pritam Singh Arora, dismissed a petition filed by Bikanervala & Anr. in the case of Bikanervala & Anr. Vs. Sh. Satya Narayan & Ors. (Case No. CM(M)-IPD 45/2025). The Court refused to interfere with a Trial Court's decision that declined to take on record a pen drive containing video evidence regarding an alleged trademark violation.

The dispute arose from a suit filed by the petitioners seeking to restrain the respondents from using the mark 'BIKANER CORNERWALA', claiming it infringed their well-known 'BIKANERVALA' trademark. While an interim injunction was in place restraining the use of the petitioners' distinctive "JHALAR device," the petitioners alleged that the respondents continued to violate this order. To prove this "contumacious conduct," the petitioners sought to introduce video recordings shot by investigators in 2023 into the ongoing contempt proceedings via a pen drive application under Order XI Rule 6 of the Commercial Courts Act.

The Trial Court dismissed the application, noting significant discrepancies in the petitioners' claims regarding the electronic evidence. Specifically, the Trial Court observed that the Google Drive link originally cited by the petitioners was found to be empty on multiple occasions, making the claim that videos were downloaded from it on a specific later date "highly improbable".

Upholding the lower court's decision, Justice Arora observed that the videos were not relevant to the merits of the main suit, where evidence had already concluded. Regarding the contempt petition, the High Court ruled that the issue of contempt is primarily a matter between the Court and the alleged contemnor. Finding no error in how the Trial Court exercised its jurisdiction to reject the contradictory evidence, the High Court dismissed the petition.

Disclaimer: This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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Ashim Kumar Ghosh Vs. The Registrar of Trade Marks

Suggestive Versus Descriptive Marks

Brief Introduction : This case arises out of an appeal under Section 91 of the Trade Marks Act, challenging the refusal of registration of the "SoEasy" trademark. Ashim Kumar Ghosh vs. The Registrar of Trade Marks dealt with the refusal of registration for the trademark "SoEasy" in respect of instructional and teaching materials (Class 16) after it had initially been accepted and advertised. The case examines the powers of the Registrar under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application and considers whether "SoEasy" is distinctive or only descriptive and generic, impacting its eligibility for registration. Ashim Kumar Ghosh filed a trademark application for "SoEasy" (No. 5799569), meant for instructional and teaching materials. His application was first accepted and published, but later the Registrar issued notice for withdrawal of acceptance, claiming the mark lacked distinctiveness. Following a hearing, the application was formally refused under Sections 9(1)(a) and 9(1)(b), as the mark was argued to be generic, descriptive, and laudatory.​

Procedural Detail: The application was filed on February 2, 2023, on a proposed-to-be-used basis. The Registrar examined it and initially accepted it, subject to use as a whole, publishing it in the Trade Mark Journal in April 2024. No opposition was filed after publication. However, in December 2024, a notice under Section 19 sought to withdraw acceptance, citing that the mark was not distinctive. The appellant responded, but after a hearing in February 2025, the Registrar issued a fresh refusal in May 2025. The applicant then appealed to the High Court of Delhi.​

Core Dispute: The central dispute is whether the Registrar could lawfully withdraw the acceptance of "SoEasy" and refuse its registration as a trademark. Secondly, the dispute was whether "SoEasy" is inherently distinctive or merely descriptive or generic in connection to the goods/services, and thus ineligible for protection under Section 9(1) of the Act.​

Detailed Reasoning: The Court outlined the relevant statutory scheme. Section 19 allows the Registrar to withdraw acceptance of an application before registration, even if accepted and advertised without opposition. This power, the Court noted, is to preserve the purity of the Register but is not unfettered.

On the argument about procedural fairness, the Court found that the Registrar was indeed within rights to revisit the acceptance, and there was no vested right to registration in the absence of an opposition.

The significant legal debate centered around Section 9(1), which bars registration of marks lacking distinctiveness (Clause (a)), or which consist exclusively of marks that designate the kind, quality, etc., of goods/services (Clause (b)). The Registry's position was that "SoEasy" is laudatory, generic, and merely descriptive.

To interpret distinctiveness, the High Court relied extensively on established legal principles from decisions such as Teleecare Network India Pvt Ltd v. Asus Technology Pvt Ltd (2019 SCC OnLine Del 8739), which, following the US landmark Abercrombie classification, defined categories: generic, descriptive, suggestive, arbitrary, and fanciful. Suggestive, arbitrary, and fanciful marks are considered inherently distinctive.

The Court explained that for a mark to be suggestive, it must require some imagination or thought for a consumer to connect the mark with the goods. A descriptive mark, in contrast, immediately conveys a quality or characteristic of the goods.

Applying this to "SoEasy," especially in the context of learning/educational materials, the Court observed the mark does not directly describe the goods’ kind or quality. Instead, it subtly suggests ease of use, thus needing consumer imagination. Therefore, the mark was classified as "suggestive" rather than descriptive or generic, making it inherently distinctive and entitled to registration.

Therefore, although the Registrar followed proper process and procedure under the Act, on the facts of the case, his reasoning about lack of distinctiveness was incorrect. The Court set aside the refusal, holding the mark to be registrable.​

Decision: The High Court allowed the appeal. It set aside the impugned order of the Registrar, directed the Registry to proceed with the registration of "SoEasy," and disposed of pending applications.​

Concluding Note: This judgment clarifies that the Registrar can revisit acceptance of trademark applications before registration, but must do so with sound reasoning grounded in statutory and judicial principles. Importantly, it underscores that coined or suggestive marks—even if composed of ordinary words—can be inherently distinctive if they compel consumers to make a mental leap connecting the mark to the goods. The decision strengthens the doctrine protecting inventive and suggestive marks, while restraining the arbitrary rejection of applications based solely on dictionary meanings.​

Case Title: Ashim Kumar Ghosh Vs. The Registrar of Trade Marks

Order date: 24 November 2025

Case Number: C.A.(COMM.IPD-TM) 48/2025

Neutral Citation: 2025:DHC:10350

Court Name: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia

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

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In Ashim Kumar Ghosh v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 48/2025, decided on 24 November 2025 by the High Court of Delhi, Hon’ble Mr. Justice Tejas Karia set aside the Registrar’s refusal of the trademark application for “SoEasy” in Class 16 (instructional and teaching material, printed matter and bookbinding material) and directed that the application proceed to registration. The case arose from an appeal under Section 91 of the Trade Marks Act, 1999, against an order dated 20 May 2025, by which the Registrar had refused registration after initially accepting and advertising the mark and then issuing a notice withdrawing acceptance under Section 19 on the ground that the mark was devoid of distinctiveness.​

The appellant had filed the mark “SoEasy” on a proposed-to-be-used basis; the application was examined, objections under Section 9 were initially raised, replied to, and the mark was accepted and advertised with no opposition filed within the statutory period. Subsequently, the Registrar issued a Section 19 notice alleging erroneous acceptance and lack of distinctiveness, conducted a hearing, issued a fresh examination report, and finally refused registration on the basis that “SoEasy” was generic, laudatory, and covered by Sections 9(1)(a) and 9(1)(b). The appellant argued that Section 19 conferred only a limited discretionary power, that earlier acceptance on Section 9 had attained finality, that no vested right could be defeated arbitrarily after publication, and that “SoEasy” was at least a coined, inherently distinctive, or suggestive mark, not a generic or descriptive term for the goods.​

The Court held that, procedurally, the Registrar was within his powers under Section 19 to withdraw acceptance any time before registration, even in the absence of opposition, and that there was no vested right in the appellant merely because the mark had been advertised without challenge. However, examining the merits under Section 9(1), and relying on the established classification of marks into generic, descriptive, suggestive, arbitrary, and fanciful (as discussed in Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019 SCC OnLine Del 8739), the Court found that “SoEasy” was a suggestive mark in the context of a learning/teaching platform and not descriptive of the goods’ qualities. The Court reasoned that consumers would need a degree of imagination to connect “SoEasy” with instructional and teaching materials for learning Hindi, and that the expression did not directly name or describe the goods but only suggested ease, thereby making the mark inherently distinctive and entitled to protection.​

On this basis, the High Court concluded that while the Registrar had followed the correct procedure in invoking Section 19, the substantive assessment that the mark was non-distinctive was flawed, and the refusal under Sections 9(1)(a) and 9(1)(b) could not be sustained. The impugned order was set aside and the Registrar was directed to proceed with the application for “SoEasy” in accordance with the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.​

Disclaimer:This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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