Satyanarain Khandelwal Vs Prem Arora

Introduction:The judgment delivered by the Delhi High Court in the batch of transfer petitions led by Satyanarain Khandelwal v. Prem Arora represents a significant judicial exposition on the interplay between legislative intent, statutory interpretation, and the principle of retrospectivity in the context of commercial litigation reforms in India. 

At its core, the case grapples with the applicability of the Commercial Courts (Amendment) Act, 2018, which reduced the "specified value" threshold for commercial disputes from Rs. 1 crore to Rs. 3 lakhs, thereby expanding the jurisdiction of designated commercial courts. 

The petitioners, who were tenants involved in disputes over agreements to sell shops in a property, sought the transfer of their pending civil suits from ordinary civil courts to commercial courts, arguing that the amendment should apply retrospectively to suits filed before its commencement on May 3, 2018. 

This contention invoked Section 15 of the parent Commercial Courts Act, 2015, which mandates the transfer of pending suits involving commercial disputes to specialized courts. The High Court, however, rejected this plea, emphasizing the prospective nature of statutes unless explicitly stated otherwise, and underscored the potential disruption to substantive rights and administrative processes if retrospectivity were imputed.

Drawing from foundational principles of jurisprudence, the court highlighted the presumption against retrospectivity to avoid unsettling vested rights, such as rights of appeal or procedural entitlements in ongoing litigations. 

This decision not only clarifies the temporal scope of the 2018 Amendment but also reinforces the judiciary's role in adhering to the literal meaning of statutes while balancing the legislative objective of expediting commercial resolutions with the stability of existing legal proceedings. 

By involving the High Court's administrative wing and soliciting responses on an internal decision dated February 4, 2020, which limited the amendment's application to post-2018 suits, the judgment provides a comprehensive analysis that could influence similar transfer applications across jurisdictions, particularly in high-volume commercial hubs like Delhi.

Factual Background:The disputes in this case originated from a property located at RZ-21/284, Gitanjali Park, West Sagarpur, New Delhi, comprising nine shops owned initially by the mother of Respondent No. 1, Prem Arora. The petitioners, including Satyanarain Khandelwal, Ishwar Singh, Prakash Chand Modi, Mahaveer Bansal, Radhey Shyam, and Manoj Kumar Bansal, were inducted as tenants by Respondent No. 2 (Prem Arora's father), each paying a security deposit. 

In 2009, the mother executed a General Power of Attorney and a Will in favor of Respondent No. 1, followed by a Gift Deed in 2014, transferring ownership to him. Prior to formal ownership transfer, Respondent No. 1 approached the petitioners in late 2013 to sell them the shops they occupied, accepting advances via cheques dated between November 17 and 25, 2013. 

These advances ranged from Rs. 2 lakhs to Rs. 4 lakhs per petitioner. On January 6, 2014, Agreements to Sell were executed, adjusting the prior security deposits against the sale consideration, with further payments made on January 14 and 30, 2014, bringing the total per shop (except for Modi's double shops) to Rs. 12 lakhs after adjustments. 

Respondent No. 1, not yet the owner, sought extensions for execution, assuring the petitioners they were virtually owners and need not pay rent. However, tensions arose when Respondent No. 1 denied the agreements in subsequent proceedings, claiming forged signatures. 

This led the respondents to file eviction suits in 2017 for possession, arrears of rent, and mesne profits against each petitioner, titled as Prem Arora & Anr. v. respective petitioners. 

In response, the petitioners filed suits in December 2018 for specific performance of the Agreements to Sell and permanent injunctions against eviction. The underlying facts thus revolved around allegations of breach of contract, denial of agreements, and competing claims over property rights, with the commercial angle emerging from the immovable property transactions qualifying as "commercial disputes" under the 2015 Act.

Procedural Background:The procedural journey began with the respondents' 2017 eviction suits pending before the Additional District Judge at Patiala House Courts, New Delhi. The petitioners filed written statements denying eviction claims and highlighting the Agreements to Sell. In replications, Respondent No. 1 disavowed the agreements, prompting the petitioners' 2018 suits for specific performance. Recognizing overlapping issues, the petitioners sought transfer of their suits to the court handling the eviction matters via petitions allowed on February 5, 2019, by the District and Sessions Judge, consolidating proceedings before the Additional District Judge. 

Subsequently, an application under Section 151 of the Code of Civil Procedure was filed for formal consolidation, citing common substantial questions and evidence, but this was dismissed on November 25, 2020. A review application met the same fate on June 25, 2021, leading to a Civil Miscellaneous Petition before the High Court, which was dismissed as withdrawn on September 2, 2021. 

Invoking the Commercial Courts Act, 2015, as amended in 2018, the petitioners then filed the instant transfer petitions under Section 15(5) in 2021, arguing the suits involved commercial disputes over Rs. 3 lakhs and should be transferred to designated commercial courts. 

Notices were issued, and on March 25, 2022, the High Court sought the High Court's administrative response on a February 4, 2020, decision limiting the 2018 Amendment to post-commencement suits. 

Reasoning and Decision of Court:The High Court's reasoning commenced with framing the core issue: whether Section 19 of the 2018 Amendment, stating "Save as otherwise provided, the provisions of this Act shall apply only to cases relating to commercial disputes filed on or after the date of commencement of this Act," permits retrospective application to pre-2018 suits valued above Rs. 3 lakhs, enabling transfers under Section 15 of the 2015 Act. 

Rejecting the petitioners' purposive interpretation, the court invoked cardinal principles from Supreme Court precedents like Monnet Ispat and Energy Ltd. v. Union of India and Hitendra Vishnu Thakur v. State of Maharashtra, affirming that statutes are prima facie prospective unless expressly or impliedly retrospective, to preserve vested rights and avoid unsettling past transactions. 

The court found no ambiguity in Section 19's language, which explicitly limits application to post-commencement cases, and held that imputing retrospectivity would infringe substantive rights, such as unrestricted appeals or exemptions from mandatory pre-institution mediation under the new Section 12A. Administratively, it would burden commercial courts with small-value pre-2018 disputes, defeating the Act's goal of speedy resolution for high-value matters. 

The Saving Clause in Section 19 was interpreted narrowly to preserve existing rights without creating new ones, and harmoniously with Section 15, not to extend retrospectivity. The court dismissed reliance on Hari Singh v. MS Superhouse Ltd., viewing it as a general directive inapplicable here. Ultimately, the petitions were dismissed on July 18, 2022, refusing transfer and affirming the 2018 Amendment's prospective operation.

Point of Law Settled in the Case:The judgment settles that the Commercial Courts (Amendment) Act, 2018, does not apply retrospectively to commercial disputes filed before May 3, 2018, even if their value exceeds the reduced threshold of Rs. 3 lakhs. 

This precludes transfers of such pending suits from ordinary civil courts to commercial courts under Section 15 of the 2015 Act, based on the presumption against retrospectivity absent explicit legislative intent. It clarifies that the Saving Clause in Section 19 preserves pre-existing rights but does not extend the amendment's benefits to prior cases, ensuring stability in procedural and substantive entitlements while aligning with the Act's objective of efficient commercial adjudication without overwhelming specialized courts.

Case Title: Satyanarain Khandelwal Vs Prem Arora

Date of Order: 18th July, 2022

Case Number: TR.P.(C.) 47/2021 

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble the Chief Justice Satish Chandra Sharma and Hon'ble Mr. Justice Subramonium Prasad

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Ayur United Care LLP Vs Union of India

Introduction:In the evolving landscape of intellectual property law in India, the abolition of the Intellectual Property Appellate Board (IPAB) on April 4, 2021, marked a significant shift in the adjudication of IP disputes, transferring such matters to the High Courts. This transition raised intricate questions about procedural norms, particularly regarding the appropriate bench composition for hearing challenges to pre-abolition IPAB orders. 

The case of Ayur United Care LLP versus Union of India & Anr., along with several connected writ petitions, exemplifies this transitional complexity. Decided by the High Court of Delhi, the judgment delves into whether writ petitions under Articles 226 and 227 of the Constitution, contesting IPAB decisions on trademark rectifications, should be adjudicated by a Single Judge or a Division Bench. At its core, the dispute revolves around the interpretation of the Intellectual Property Division (IPD) Rules, 2021, and the Delhi High Court Rules, 2018, highlighting tensions between statutory mandates, judicial efficiency, and historical appellate structures. The petitioners, primarily entities holding or challenging the trademark "AYUR," faced rectification orders from the IPAB that favored the second respondents, prompting these writs. 

Factual Background:The controversy stems from disputes over the trademark "AYUR," a term associated with traditional Indian wellness and Ayurvedic products. The petitioners, including Ayur United Care LLP, M H Polymers Pvt. Ltd., and Three N-Products Pvt. Ltd., held registrations for this mark, which they claimed as proprietary for their goods and services. 

The second respondents, appearing in various petitions, filed rectification applications before the IPAB, arguing that "AYUR" was generic or descriptive and thus not eligible for exclusive registration. On June 28, 2013, the IPAB allowed these rectification petitions, effectively challenging or revoking the petitioners' registrations in favor of the applicants. 

Aggrieved by this, the petitioners invoked Articles 226 and 227 of the Constitution to file writ petitions before the High Court of Delhi, seeking to set aside the IPAB's orders. These petitions were lodged prior to the IPAB's abolition but gained renewed urgency post-April 4, 2021, when the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, dissolved the IPAB and transferred its pending matters to the High Courts. 

The factual matrix is compounded by multiple interconnected petitions, each involving similar trademark disputes but with varying parties, such as Ayur United Care LLP as the common petitioner in several cases, and entities like Three N-Products Pvt. Ltd. in others. The underlying IP issue—whether "AYUR" qualifies as a distinctive mark or falls into the public domain—remains substantive, but the judgment primarily addresses a preliminary threshold question arising from the respondents' objection that these matters could not be heard by a Single Judge.

Procedural Background:The procedural journey began with the filing of rectification petitions against the "AYUR" trademark registrations before the IPAB, culminating in its June 28, 2013, order favoring rectification. The aggrieved registrants then approached the High Court of Delhi via writ petitions under Articles 226 and 227, which were initially listed and proceeded in the ordinary course. However, the abolition of the IPAB on April 4, 2021, via the Tribunals Reforms Ordinance (later enacted as the Tribunals Reforms Act, 2021), redirected all IPAB-related appeals and proceedings to the jurisdictional High Courts, including Delhi's newly established Intellectual Property Division (IPD). 

This led to the transfer and re-designation of the petitions as W.P.(C)-IPD series cases. During hearings, the respondents raised a serious preliminary objection, contending that these writs, challenging quasi-appellate IPAB orders, must be heard by a Division Bench rather than a Single Judge, invoking rules on bench composition for matters involving fundamental rights or statutory interpretations. The petitioners countered that the IPD Rules mandated Single Judge adjudication for IP subject matters, except in specified exceptions. 

Reasoning and Decision of Court:The court's reasoning commences with a clear delineation of the rival submissions, acknowledging the petitioners' insistence on Single Judge jurisdiction under the IPD Rules and the respondents' push for Division Bench hearing based on the Delhi High Court Rules and the nature of the writs. 

Rule 4's general mandate for Single Judge adjudication in IPD, Rule 2(l)'s inclusion of writs arising from IPR subjects except Division Bench matters, and the wide ambit of "matter" in Rule 2(i) encompassing trademarks. It noted that Section 13 of the Commercial Courts Act pertains to appeals from decrees, irrelevant here. Harmonizing the rules, the court rejected the rigid Division Bench requirement, holding that a writ petition challenging an IPAB trademark order constitutes an "IPR subject matter" to be heard by a Single Judge under IPD Rule 4, as it does not trigger DHC Rules' Division Bench exceptions. 

The decision underscores that post-abolition, such petitions are original proceedings before the IPD, not appeals, and thus fall within Single Judge domain for efficiency. While appreciating alternative options, the court deemed them unnecessary, affirming its own jurisdiction as a Single Judge and directing the matters to proceed on merits, thereby resolving the preliminary objection in favor of Single Bench hearing.

Point of Law Settled in the Case: The judgment settles a pivotal point of law concerning the jurisdictional framework post-IPAB abolition: writ petitions under Articles 226 and 227 challenging pre-abolition IPAB orders on intellectual property matters, such as trademark rectifications, are to be adjudicated by a Single Judge of the Intellectual Property Division (IPD) of the High Court, unless they fall within explicit exceptions requiring Division Bench hearing under the Delhi High Court Rules, 2018, or Section 13 of the Commercial Courts Act, 2015. 

This clarification arises from a harmonious interpretation of the IPD Rules, 2021—particularly Rules 4, 2(i), 2(j), and 2(l)—which define IP subject matters broadly to include patents, copyrights, trademarks, and related disputes, mandating Single Judge resolution for efficiency in the post-tribunal era. 

The court elucidates that such petitions, though stemming from appellate-like IPAB proceedings, are treated as original IPD matters upon transfer, not invoking DHC Rules' Division Bench mandates for cases involving statutory vires, personal liberty, or public interest litigation. 

This ruling prevents procedural fragmentation, ensuring streamlined adjudication of legacy IPAB cases while respecting the legislative intent behind the Tribunals Reforms Act, 2021, to decongest tribunals and empower High Courts. It also underscores that the term "matter" in IPD Rules encompasses IPAB orders, rejecting arguments for mandatory Division Bench listing based on the quasi-appellate nature of the challenge, and affirms that Single Judges possess inherent jurisdiction unless statutorily ousted.

Case Detail: Ayur United Care LLP Vs Union of India & Anr. 

Date of Order: 16 October 2023

Case Number: W.P.(C)-IPD 61/2021

Neutral Citation: 2023:DHC:7556

Name of Court: High Court of Delhi at New Delhi

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

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Kedar Nath Mishra Vs Invision Medi Sciences Pvt. Ltd.

Introduction: This judgment, delivered by a division bench, underscores the distinction between mere prior use and the requirement to establish protectable goodwill in passing off actions, even when the defendant holds a registered trademark. 

At stake were competing marks "BONERICH" and "BONRICH" for medicinal products aimed at bone health, highlighting how courts balance statutory registration rights under the Trade Marks Act, 1999, against common law remedies for unregistered marks. 

The appellant, a sole proprietor, challenged the restraint on his use of "BONERICH," arguing that the respondent's claim lacked foundational proof of reputation predating his adoption, while the respondent defended its prior user status dating back to a proprietorship era. 

The High Court's intervention, setting aside the injunction, reinforces that passing off cannot succeed on priority alone but demands evidence of market recognition and potential harm, drawing on precedents like Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra and Wander Ltd. v. Antox India (P) Ltd. 

Factual Background:The dispute centers on two phonetically and visually similar trademarks, "BONERICH" and "BONRICH," both used for pharmaceutical preparations related to bone health and nutritional supplements under Class 5. The appellant, Kedar Nath Mishra, operating as a sole proprietor, asserted that he honestly adopted and began using "BONERICH" on August 29, 2011, for marketing and distributing medicinal products, claiming continuous and uninterrupted commercial use that built distinctiveness and exclusive association with his goods over time. 

To secure statutory protection, he first applied for registration on September 18, 2013, but the application was refused due to non-prosecution of objections under Sections 9 and 11 of the Trade Marks Act; subsequently, a fresh application on December 5, 2018, led to registration on February 8, 2021, with claimed prior use from 2011. 

The respondent, Invision Medi Sciences Pvt. Ltd., incorporated on February 22, 2011, engaged in pharmaceuticals including allopathic, ayurvedic, and homeopathic medicines, contended that its promoter, Mukesh Kumar, had adopted "BONRICH" since 2007 through his proprietorship firm, initially named Marx Remedies and later Invision Medi Sciences. Upon incorporation, the respondent claimed the entire business, including goodwill and trademarks, was transferred to it, enabling continuous use of "BONRICH" from 2007 onward. 

The appellant became aware of the respondent's mark on July 29, 2021, when the latter applied for registration under Application No. 5064847, initially claiming use from November 18, 2011—a date postdating the appellant's adoption—but later amended to December 31, 2007, via a form filed on January 18, 2023, supported by an Assignment Deed dated January 14, 2023, formalizing the transfer from Marx Remedies.

The respondent bolstered its prior use claim with documents like VAT registrations, licenses, stock registers, invoices showing sales of Rs. 25.73 lakhs from 2007-2011 and Rs. 1.05 crores thereafter, CA certificates, and evidence of pan-India distribution. Conversely, the appellant challenged these as fabricated, pointing to inconsistencies in the respondent's pleadings about Marx Remedies' existence and the absence of any mention of its takeover in the respondent's Memorandum of Association, which only referenced Invision Medi Sciences.

 This factual matrix revealed a classic conflict between a registered mark's proprietor asserting infringement and a prior user relying on common law rights through assignment and succession, setting the stage for examining whether documentary evidence of use sufficed without proven market reputation.

Procedural Background:The proceedings commenced with the appellant filing a commercial suit, CS (COMM) 702/2022, before the District Judge (Commercial Court-01), South, Saket, Delhi, seeking permanent injunction against the respondent for trademark infringement and passing off, along with delivery-up, damages, and costs, based on the deceptive similarity between "BONERICH" and "BONRICH" for identical goods. Accompanying the suit was an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, for interim relief. Summons were served on the respondent on January 12, 2023, prompting it to file a written statement denying the claims, alleging suppression by the appellant, and asserting prior use since 2007.

Simultaneously, the respondent lodged a counter-claim, CS (COMM) 79/2023, for passing off, seeking similar injunctive relief against the appellant, supported by its own interim application under Order XXXIX Rules 1 and 2, an application under Section 124(2) of the Trade Marks Act for permission to file rectification proceedings challenging the appellant's registration, and relying on the amended user claim and Assignment Deed. 

The appellant responded with an application under Section 340 of the Code of Criminal Procedure, accusing the respondent of perjury through fabricated documents. The Commercial Court, in its order dated June 7, 2024, disposed of the interim applications by dismissing the appellant's plea for injunction, granting the respondent's counter-claim interim relief restraining the appellant from using "BONERICH," allowing three months for rectification proceedings, and deferring the Section 340 application to trial. 

Aggrieved solely by the injunction in the counter-claim, the appellant filed two appeals under Section 13 of the Commercial Courts Act, 2015, read with Order XLIII Rule 1(r) CPC: FAO (COMM) 160/2024 challenging the dismissal of his interim application, and FAO (COMM) 159/2024 assailing the grant of injunction to the respondent. The High Court, after hearing arguments from both sides on prior use, goodwill, assignment validity, and passing off elements, delivered an oral judgment on January 13, 2026, partly allowing the appeals by setting aside the injunction against the appellant, while clarifying that observations were prima facie and not binding on trial.

Reasoning and Decision of Court:The division bench of the Delhi High Court meticulously analyzed the impugned order, emphasizing the limited appellate scope under Wander Ltd. v. Antox India (P) Ltd., where interference is warranted only for arbitrariness, perversity, or disregard of legal principles, and found the Commercial Court's grant of injunction flawed for failing to establish goodwill and reputation essential to passing off. 

Recalling the tripartite test for passing off—goodwill/reputation, misrepresentation, and damage—from precedents like Pernod Ricard and FDC Ltd. v. Faraway Foods (P) Ltd., the court noted that prior use under Section 34 of the Trade Marks Act defends against infringement but does not suffice for affirmative passing off relief without proven market recognition predating the rival's adoption. 

The bench observed that while the Commercial Court prima facie accepted the respondent's prior use since 2007 based on invoices, sales figures (Rs. 25.73 lakhs pre-2011, Rs. 1.05 crores post), licenses, and pan-India presence, it merely catalogued these without evaluating if they translated into goodwill by August 29, 2011, when the appellant adopted "BONERICH." 

Rejecting the respondent's argument that such findings were implicit, the court stressed that passing off requires explicit prima facie satisfaction on reputation, as mere sales do not automatically confer protectable goodwill without evidence of consumer association or market impact. The bench dismissed the appellant's challenges to the Assignment Deed and Marx Remedies' existence as trial issues but held that even assuming valid prior use, the absence of goodwill findings vitiated the injunction, rendering it an error on principle. 

Consequently, the court set aside the restraint on the appellant's use of "BONERICH," dismissed the respondent's interim application in the counter-claim, and clarified that its observations were tentative, not influencing the final trial, thus balancing interim equities without prejudging merits.

Point of Law Settled in the Case:This judgment crystallizes the principle that in an action for passing off, particularly at the interim stage, mere establishment of prior use of a mark does not entitle a party to injunctive relief against a subsequent user, even if the latter holds a registered trademark, unless the court records a prima facie finding on the existence of goodwill and reputation in the mark predating the rival's adoption, as goodwill forms the sine qua non of the tort, distinct from statutory defenses under Section 34 of the Trade Marks Act. 

It reiterates that passing off requires proof of the classical trinity—goodwill/reputation, misrepresentation leading to confusion, and actual/likely damage—with courts mandated to analyze evidence like sales figures and geographical presence not just descriptively but evaluatively to determine if they evince market recognition capable of deception. 

The decision affirms that appellate courts will interfere under Order XXXIX CPC if lower courts grant injunctions without explicit satisfaction on these elements, preventing presumptive relief based solely on documentary use without reputational impact, and underscores that allegations of document fabrication under Section 340 CrPC are trial matters not preempting interim assessments.

Case Title: Kedar Nath Mishra Vs Invision Medi Sciences Pvt. Ltd.;13 January 2026;FAO (COMM) 159/2024:2026:DHC:352:DB: Mr. Justice C. Hari Shankar and Mr. Justice Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it 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:

Prior Use vs. Goodwill in Passing Off

Suggested Tags:

Trademark Infringement, Passing Off, Goodwill and Reputation, Prior User Rights, Section 34 Trade Marks Act, Interim Injunction, Order XXXIX CPC, Pharmaceutical Trademarks, Assignment Deed Validity, Delhi High Court, Commercial Courts Act, Pernod Ricard Precedent, Wander v. Antox Principle

Zydus Lifesciences Limited Vs E. R. Squibb

Introduction:This appeal challenges an interim injunction granted by a single judge of the Delhi High Court, which restrained the appellant, Zydus Lifesciences Limited, from manufacturing or marketing its anti-cancer drug ZRC 3276 on the grounds of alleged infringement of the respondent's patent for a monoclonal antibody used in cancer treatment. 

The judgment, delivered by a division bench, delves into fundamental questions about the enforcement of patent rights in the pharmaceutical sector, especially when the product in question is a life-saving medication essential for treating various carcinomas. It underscores the tension between protecting innovative intellectual property and ensuring affordable access to critical healthcare solutions, highlighting how courts must navigate the classical principles of injunctions—prima facie case, balance of convenience, and irreparable loss—while incorporating public interest as a paramount factor, as emphasized by Supreme Court precedents. 

This decision not only critiques the procedural and substantive flaws in the impugned order but also sets a nuanced precedent for handling quia timet actions in patent disputes, where anticipated infringement is alleged without the availability of the defendant's product for direct comparison. 

By modifying the injunction to allow market release subject to accounting safeguards, the court strikes a balance that prioritizes patient access without undermining patentee rights, reflecting broader policy concerns in a country where healthcare affordability is a pressing issue. The analytical depth of the judgment lies in its scrutiny of scientific claims, such as antibody binding specificity and amino acid sequencing, against legal standards, revealing how technical interpretations can sway outcomes in high-stakes litigation involving biologics and biosimilars.

Factual Background:The dispute revolves around competing pharmaceutical products designed to combat cancer through immune system modulation, specifically targeting the Programmed Death-1 (PD-1) protein pathway. The respondent, E.R. Squibb and Sons, LLC (a subsidiary of Bristol-Myers Squibb), holds a patent for an isolated monoclonal antibody, commercially known as 5C4, which is structurally identical to Nivolumab, a blockbuster anti-cancer drug marketed under the brand Opdivo. 

This antibody is engineered to bind specifically to human PD-1, a protein in the CD28 family found on T-cells, thereby blocking its interaction with ligands PD-L1 and PD-L2 on cancer cells. This blockade prevents the deactivation of T-cells, enabling the immune system to recognize and attack malignant cells, making it effective against a wide array of life-threatening carcinomas. 

The patent claims are defined by two key indicia: the antibody's specific binding to PD-1 and its composition of heavy and light chains with precise amino acid sequences. Proteins like antibodies are composed of amino acids arranged in unique sequences, and the respondent's invention emphasizes this specificity to distinguish it from non-selective bindings. 

On the other side, the appellant, Zydus Lifesciences Limited, developed ZRC 3276 as a purported biosimilar to Nivolumab, claiming it offers a 70% cost reduction compared to the respondent's product, thereby enhancing accessibility for cancer patients in India. However, testing revealed that ZRC 3276 binds not only to PD-1 but also to other proteins in the CD28 family, with a statistically significant 'p' value of around 0.0001, indicating cross-reactivity. 

The respondent argued that this still falls within the patent's scope, while the appellant contended that such binding violates the "specificity" requirement. Additionally, the appellant had sought regulatory exemptions by positioning ZRC 3276 as a biosimilar to Nivolumab, implying structural similarity, but without direct evidence of identical amino acid sequences. 

The scientific backdrop involves immunology basics: white blood cells include lymphocytes like B-cells, which produce Y-shaped antibodies with complementarity-determining regions (CDRs) for antigen binding, and T-cells, which use PD-1 to distinguish normal from abnormal cells. 

Cancer cells exploit this by expressing PD-L1, deceiving T-cells into tolerance, which monoclonal antibodies like 5C4 counteract. The factual peculiarity here is the absence of the appellant's product in the market, leading to a quia timet suit based on anticipated infringement, with no physical sample for direct mapping, forcing reliance on collateral evidence like regulatory filings and pre-grant patent responses.

Procedural Background:The proceedings originated from a patent infringement suit filed by the respondent against the appellant in the Delhi High Court, styled as a quia timet action to preempt future infringement, given that ZRC 3276 was not yet commercially available but was in advanced stages of development and regulatory approval. 

The respondent sought an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, alleging that the appellant's product would infringe their patent by replicating the claimed monoclonal antibody. The single judge, after hearing arguments, granted the injunction in an order that restrained the appellant from manufacturing, selling, or releasing ZRC 3276, reasoning that prima facie infringement was established through indirect evidence despite the lack of product-to-claim mapping. 

Aggrieved by this, the appellant filed an appeal under Section 13 of the Commercial Courts Act, 2015, registered as FAO(OS) (COMM) 120/2025, along with accompanying applications for stay and other reliefs.  The appeal focused on challenging the single judge's interpretation of "specific binding," the validity of product-to-product comparisons, and the disregard for public health implications. No counter-claims for patent invalidity were raised at this interim stage, keeping the focus on injunction criteria. 

Reasoning and Decision of Court:The division bench meticulously dissected the single judge's order, finding it flawed on multiple fronts, particularly in granting an absolute injunction without product-to-claim mapping and overlooking public interest. Central to the reasoning was the interpretation of the patent claim's requirement that the antibody "binds specifically to human PD-1." 

The court noted the respondent's own pre-grant response defining "specifically" as excluding statistically significant binding to other CD28 family proteins, with a 'p' value threshold of less than 0.05. Applying this, the bench found ZRC 3276's 'p' value of 0.0001 indicated significant cross-binding, thus potentially excluding it from the claim's scope. 

The single judge's view that "specifically" means not "exclusively" was rejected as inconsistent with the respondent's representations, and the impugned order's failure to address this contention was highlighted as a critical oversight. On amino acid sequencing, the bench critiqued the single judge's reliance on biosimilar status, where the appellant's regulatory exemption treated Nivolumab as the reference biologic, and 5C4 shared sequences with Nivolumab, leading to an erroneous transitive equality (if A equals B and C equals B, then A equals C). 

The court clarified that biosimilars do not invariably share identical sequences, as variations can occur, and no evidence supported this as an inflexible rule. This exposed the fallacy of product-to-product mapping instead of the mandated product-to-claim approach under Rule 3(A)(ix) of the Delhi High Court Rules Governing Patent Suits, 2022, which requires mapping "to the extent possible," but not its complete waiver in quia timet actions. 

The bench emphasized Section 48 of the Patents Act, 1970, granting exclusive rights only over "that" product, necessitating direct mapping for infringement findings. Collateral materials, like regulatory filings, were deemed insufficient for a prima facie case without expert evidence, raising arguable issues better suited for trial. Invoking Supreme Court rulings in Ramnik Lal Bhutta and Raunaq International, the court integrated public interest, noting the drug's life-saving nature, 70% cost savings, and the patent's imminent expiry on May 2, 2026. 

Balance of convenience tilted against absolute restraint, as depriving patients for four months outweighed potential harm to the respondent, securable through accounts. The decision modified the injunction: the appellant could market ZRC 3276 but must file periodical accounts of sales to secure the respondent if they succeed at trial, thus protecting both IP rights and public health.

Point of Law Settled in the Case:This judgment settles several critical points in patent litigation, particularly for biologics in quia timet scenarios, affirming that product-to-claim mapping under Rule 3(A)(ix) of the Delhi High Court Patent Suits Rules cannot be entirely dispensed with, even in anticipatory actions; the phrase "to the extent possible" allows flexibility but demands maximum feasible effort, and collateral evidence alone may not suffice for prima facie infringement without raising triable issues. 

It clarifies that patent claims must be interpreted consistently with the patentee's representations during prosecution, such as defining "specifically binds" to exclude statistically significant cross-binding based on 'p' values, preventing post-grant expansions of scope. 

The decision rejects product-to-product mapping as a substitute for claim mapping, emphasizing Section 48's focus on the claimed invention over commercial embodiments. On biosimilars, it establishes that similarity for regulatory purposes does not automatically imply identical amino acid sequences for infringement, requiring direct evidence. 

Crucially, it reinforces public interest as an integral factor in injunctions for life-saving drugs, per Supreme Court precedents, allowing courts to modify restraints by mandating account maintenance to balance IP protection with healthcare access, especially when patents are near expiry and affordability impacts vulnerable populations.

Case Title: Zydus Lifesciences Limited Vs E. R. Squibb and Sons, LLC & Ors.

Date of Order: 12 January 2026

Case Number: FAO(OS) (COMM) 120/2025, 

Neutral Citation: 2026:DHC:178-DB

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Mr. Justice C. Hari Shankar and Mr. Justice Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Sana Herbals Private Limited Vs. Mohsin Dehlvi

Introduction: This dispute revolves around competing claims over the trademarks "NOKUFSYRUP" and "NOKUF," both associated with cough remedies, highlighting tensions between registration rights, prior usage, assignment deeds, and the common law tort of passing off. 

The appellant, Sana Herbals Private Limited, sought to protect its registered mark "NOKUFSYRUP" by alleging infringement and passing off by the respondents, who held an earlier registration for "NOKUF." The High Court of Delhi, in its appellate jurisdiction, delved into whether an injunction could be granted against a registered trademark holder on grounds of passing off, emphasizing that statutory infringement claims fail against registered marks but passing off actions may persist under common law. 

This judgment underscores the primacy of prior user in passing off claims, the invalidity of unregistered assignments without goodwill transfer, and the rejection of abandonment pleas where historical use is established, even if interrupted. 

By affirming the lower court's denial of interim relief, the decision reinforces that goodwill must predate the defendant's use and that long disuse alone does not entitle a later user to enjoin the original proprietor, providing clarity on balancing equitable considerations with legal principles in trademark disputes.

Factual Background:The factual matrix of this case traces back to the mid-1990s in the Unani medicine sector, where the respondents, Mohsin Dehlvi and Dehlvi Remedies Pvt Ltd, claimed to have adopted and used the trademark "NOKUF" for cough syrup since October 20, 1994, with sales through the second respondent company. They applied for registration of "NOKUF" on June 3, 1996, claiming user from 1994. 

The appellant, Sana Herbals Private Limited, was incorporated on October 21, 1997, by relatives of the first respondent, including his cousins Shakeel Jamil and Jamul ul Rehman. Shortly thereafter, on November 3, 1997, a manufacturing agreement was executed, permitting the appellant to produce cough syrup under the "NOKUF" mark for three years on behalf of the respondents. The appellant contends that in 1998, the first respondent granted manufacturing rights, and subsequently, the respondents began purchasing "NOKUF"-branded products from the appellant for retail sale, a practice allegedly continuing until 2006-2007. 

Central to the dispute is an Assignment Deed dated September 19, 1999, which the appellant asserts transferred all intellectual property rights in "NOKUF" from the second respondent to itself, though the respondents vehemently deny its execution and validity, arguing it was unregistered and failed to transfer goodwill as required under Section 42 of the Trade Marks Act. Between 2000 and 2009, the respondents purportedly purchased "NOKUF" syrup from the appellant. In 2003, a fire destroyed the respondents' manufacturing unit, leading to financial distress.

Consequently, in 2007, the second respondent was struck off the Register of Companies for non-compliance. The appellant, claiming exclusive rights post-assignment, applied for registration of "NOKUFSYRUP" on May 15, 2015, securing it effective from that date on February 13, 2020. Meanwhile, the second respondent was reinstated in 2019 by the National Company Law Tribunal, revived its 1996 application, and obtained registration for "NOKUF" effective from June 3, 1996, on September 22, 2020. In 2024, the second respondent acquired a drug license, signaling intent to resume production under "NOKUF" or "KufNo Syrup." 

The appellant opposed the "NOKUF" registration in 2015, but the opposition was rejected in 2019, with an appeal pending before the Intellectual Property Appellate Board at the suit's institution. The appellant alleged continuous use, advertisement, and goodwill buildup in "NOKUF" since 1999, supported by invoices, while the respondents claimed prior authorship, extensive pre-1997 use, and that any appellant use was licensed and on their behalf. The respondents further asserted that post-fire, they outsourced production to a related entity, denying abandonment, and accused the appellant of fraudulently registering "NOKUFSYRUP" during their dormancy, claiming user from April 1, 1998, after the respondents' commencement.

Procedural Background: The procedural journey began with the appellant filing Commercial Suit No. 1776/2020 before the District Judge, Commercial Court-03, Tis Hazari, Delhi, seeking permanent injunction against the respondents' use of "NOKUF" or "KufNo Syrup," alleging infringement of its registered "NOKUFSYRUP" mark and passing off. Alongside the suit, the appellant applied for interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. 

The respondents filed a written statement denying the claims, asserting prior adoption and registration of "NOKUF," invalidity of the 1999 Assignment Deed, and no abandonment despite the company strike-off and fire incident. After hearing arguments, the learned Commercial Court dismissed the interim injunction application on December 21, 2024, finding no prima facie case for infringement or passing off, given the respondents' registration and prior user. 

Aggrieved, the appellant appealed to the High Court of Delhi under Section 13 of the Commercial Courts Act, 2015, vide FAO (COMM) 77/2025, along with an application for stay. The court pronounced its judgment  upholding the lower court's order and dismissing the appeal, emphasizing that no infringement lay against a registered mark and no passing off was established due to the respondents' prior use and lack of abandonment.

Reasoning and Decision of Court:The High Court's reasoning commenced by clarifying that no infringement action could sustain against the respondents, as their "NOKUF" mark was registered effective from June 3, 1996, predating the appellant's "NOKUFSYRUP" registration. Relying on the Supreme Court's ruling in S. Syed Mohideen v. P. Sulochana Bai, the court held that Section 28(3) of the Trade Marks Act, 1999, grants concurrent rights to registered proprietors of identical or similar marks, barring infringement claims between them, though passing off actions remain viable under Section 27(2) as a common law remedy. Following its own precedent in Vaidya Rishi India Health (P) Ltd v. Suresh Dutt Parashar, the court declined to entertain infringement allegations, focusing solely on passing off. 

On facts, the court accepted the respondents' prior user from 1994 to 1999, undisputed by the appellant except for the starting date, and noted the 1997 Manufacturing Agreement's clauses acknowledging the respondents' ownership, estopping the appellant from denying pre-1997 use. 

The 1999 Assignment Deed was deemed prima facie invalid for not expressly transferring goodwill, as required under Section 42, and for non-registration within the stipulated period, rendering it unenforceable at the interim stage, though potentially triable.

Turning to passing off, the court outlined its tripartite test—goodwill, misrepresentation, and damage—stressing that the plaintiff's goodwill must predate the defendant's use, as per Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd and Pernod Ricard India (P) Ltd v. Karanveer Singh Chhabra. Since the respondents' use from 1994 predated the appellant's incorporation, no prior goodwill accrual was possible, ipso facto ruling out passing off. 

The court rejected the appellant's abandonment plea, distinguishing it from acquiescence, and held that the respondents' disuse from 1999 to 2024, due to fire and strike-off, did not constitute abandonment under Hardie Trading Ltd v. Addisons Paints & Chemicals Ltd, as there was no intent to relinquish rights, evidenced by outsourcing to a related entity and revival efforts. 

Non-use by the plaintiff is a defense in infringement but irrelevant in a passing off suit against the defendant, as clarified in Veerumal Praveen Kumar v. Needle Industries (India) Ltd. The appellant's evidence of goodwill—limited invoices, minimal advertisements—was deemed insufficient under Brihan Karan Sugar Syndicate Pvt Ltd v. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana, failing to prove distinctiveness or public association. 

Equitable arguments of the appellant's 25-year use were dismissed as unsound in law, per Laxmikant V. Patel v. Chetanbhai Shah, emphasizing prior continuous use for passing off success. Concluding no prima facie case, balance of convenience, or irreparable injury, the court dismissed the appeal, denying injunction and allowing the respondents to resume use under their registered mark.

Point of Law Settled in the Case:This judgment settles that in trademark disputes involving registered marks, no statutory infringement action lies against another registered proprietor under Section 28(3) of the Trade Marks Act, 1999, but passing off remains actionable under common law via Section 27(2), provided the plaintiff proves prior goodwill predating the defendant's use, misrepresentation, and damage. 

It clarifies that assignment deeds without explicit goodwill transfer and timely registration are prima facie invalid under Section 42, unenforceable at interim stages. 

Prior user, even sporadic, suffices to defeat passing off claims if commencing before the plaintiff's, without requiring continuity for defensive purposes under Section 34.

Abandonment demands proven intent to relinquish, not mere disuse due to extenuating circumstances like business disruptions, and non-use by the defendant cannot ground an injunction in passing off, distinguishing it from infringement defenses. Goodwill evidence must be robust, including sales, advertisements, and public distinctiveness, with long subsequent use by the plaintiff insufficient to enjoin the prior user reviving the mark. 

Case Title: Sana Herbals Private Limited Vs. Mohsin Dehlvi & Anr.

Date of Order: 5 January 2026

Case Number: FAO (COMM) 77/2025

Neutral Citation: 2026:DHC:7-DB

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice C. Hari Shankar and Hon'ble Mr. Justice Om Prakash Shukla

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Fullstack Education Pvt Ltd vs. Institut Europeen D Administration Des Affaires

Introduction:The case of Fullstack Education Pvt Ltd versus Institut Europeen D Administration Des Affaires (INSEAD) Association & Anr. exemplifies the tensions that arise when two entities hold seemingly similar trademarks for related services, leading to disputes over rectification under the Trade Marks Act, 1999. 

This appeal before the Division Bench of the Delhi High Court challenged a Single Judge's decision to rectify the trademark register by removing the appellant's mark based on phonetic similarity and potential confusion. The core issue revolved around whether a rectification petition under Section 57 of the Act could be decided on a "prima facie" basis or required a final, conclusive determination.

The judgment underscores the procedural rigor demanded in rectification proceedings, distinguishing them from interim relief applications, and highlights the enduring relevance of classical trademark infringement tests in modern disputes involving educational institutions specializing in artificial intelligence and business administration. 

By setting aside the impugned order and remitting the matter for fresh consideration, the court reinforced the need for definitive findings in matters that could irrevocably alter trademark rights, while also addressing broader implications for honest adoption and consumer deception in a globalized educational market.

Factual Background:The dispute originated from the registration of trademarks by two educational entities offering services in higher education, particularly involving artificial intelligence and data science. The respondent, Institut Europeen D Administration Des Affaires (INSEAD) Association, a renowned international business school, held the registered trademark "INSEAD," which stands for its full name and is associated with providing executive education and business programs worldwide. 

On the other hand, the appellant, Fullstack Education Pvt Ltd, operated under the mark "INSAID," representing "International School of AI and Data Science," and offered similar services in AI-focused higher education. Both marks were undisputedly registered under the Trade Marks Act, 1999, but the respondent alleged that the appellant's mark created a manifest phonetic similarity, potentially leading to consumer confusion among students seeking admissions. 

The respondent contended that the appellant's adoption of "INSAID" was dishonest, pointing to evidence that the appellant's CEO, Mr. Manvender Singh, was aware of INSEAD's reputation prior to adopting the similar acronym. This awareness was inferred from materials such as interviews and website content where the CEO referenced INSEAD, suggesting that the choice of "INSAID" was not coincidental but deliberate, occurring later in time than INSEAD's established use. 

The competing marks visually differed in styling—"INSEAD" featured a circular logo with the tagline "The Business School for the World," while "INSAID" had a colorful design emphasizing AI and data science—but the auditory resemblance formed the crux of the conflict, with arguments centering on how terms like "-ead" and "-aid" could be pronounced similarly, akin to words like "dead" and "said." This factual matrix set the stage for a rectification petition invoking Section 11 of the Act, which prohibits registration of marks likely to cause confusion due to similarity with existing marks.

Procedural Background:The procedural journey began when the respondent filed a petition under Section 57 of the Trade Marks Act, 1999, seeking rectification of the trademark register by removing the appellant's "INSAID" mark. This petition was heard by a Single Judge of the Delhi High Court, who, after considering arguments on phonetic similarity and likelihood of confusion, allowed the petition via a judgment dated 17 May 2023. During the Single Judge proceedings, the respondent emphasized initial interest confusion among educated consumers like students, while the appellant countered that the targeted audience's sophistication precluded any real deception and invoked tests from landmark cases like Pianotist Co.'s Application.

The Single Judge reserved orders on an interim relief application under Order XXXIX Rules 1 and 2 of the Civil Procedure Code on 10 September 2021, but the matter was reopened on 12 January 2023 after a significant lapse, leading to the final impugned judgment. Aggrieved by this, the appellant filed Letters Patent Appeal (LPA) No. 536/2023 before the Division Bench, along with applications for stay and additional facts. 

The appeal was argued on grounds that the Single Judge erred in applying Section 11 without fully evaluating classical infringement principles and, crucially, decided the rectification petition on a prima facie basis rather than through a conclusive determination. 

The Division Bench heard submissions from both sides, with the appellant's counsel detailing flaws in the confusion analysis and the respondent's counsel urging expeditious disposal given the petition's pendency since 2021. The court ultimately allowed the appeal on 30 October 2023, setting aside the Single Judge's order and remitting the matter for fresh adjudication, while requesting fast-tracking subject to court priorities.

Reasoning and Decision of Court:The Division Bench's reasoning pivoted on a critical procedural distinction between interim relief and final rectification under Section 57 of the Act. While acknowledging the Single Judge's analysis of phonetic similarity—observing that "INSEAD" and "INSAID" shared auditory traits that could invoke initial interest confusion, especially in educational services—the court noted that these conclusions were repeatedly qualified as "prima facie." For instance, the Single Judge held that phonetic similarity existed based on examples like "dead" and "said," and that even enlightened students might experience momentary wonderment upon encountering the marks, satisfying the likelihood of confusion test under Section 11. 

Similarly, on dishonest adoption, the Single Judge prima facie rejected honest concurrent use, citing the appellant's CEO's prior knowledge of INSEAD from interviews and materials. However, the Division Bench emphasized that Section 57 empowers courts to cancel or vary registrations with finality, as such orders result in a mark being struck off the register, carrying irreversible consequences. 

A prima facie opinion, being tentative and based on preliminary examination, suffices for ad interim injunctions but falls short for rectification petitions, which demand definitive and conclusive findings. 

The court rejected the respondent's attempt to downplay the "prima facie" language as mere phrasing, insisting on adhering to the explicit record. Although the appellant raised substantive arguments on infringement tests from Pianotist Co.'s Application, the Bench set aside the judgment on this narrow ground without delving deeply into them, deeming it sufficient for reversal. The decision allowed the appeal, remitted the petition to the Single Judge for fresh consideration with expeditious disposal, kept all contentions open, and disposed of pending applications, thereby ensuring a thorough trial-like evaluation rather than a summary disposal.

Point of Law Settled in the Case:This judgment settles a pivotal point in trademark rectification proceedings: that decisions under Section 57 of the Trade Marks Act, 1999, must be based on final and conclusive determinations rather than prima facie opinions. The court clarified that while prima facie assessments are appropriate for granting interim relief under provisions like Order XXXIX of the Civil Procedure Code, rectification petitions involve exercising a power imbued with finality, as they lead to the permanent removal of a registered mark from the register. Such actions cannot rest on tentative views formed from initial impressions or preliminary examinations of the dispute, as they would undermine the stability and integrity of the trademark system. By drawing this distinction, the ruling reinforces that rectification requires a rigorous, evidence-based conclusion on elements like phonetic similarity, likelihood of confusion, and honest adoption, ensuring that only after a comprehensive evaluation—potentially akin to a trial—can a court direct alterations to the register. This principle protects registered proprietors from hasty cancellations and aligns with the Act's objective of maintaining a reliable public record of trademarks, while also highlighting that procedural lapses, such as conflating interim and final standards, can vitiate even well-reasoned substantive analyses.

Case Title: Fullstack Education Pvt Ltd vs. Institut Europeen D Administration Des Affaires (INSEAD) Association & Anr.

Date of Order: 30 October 2023

Case Number: LPA 536/2023

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Yashwant Varma and Hon'ble Mr. Justice Ravinder Dudeja

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

The Procter & Gamble Company Vs. IPI India Private Limited

Introduction:The dispute between The Procter & Gamble Company, a global giant in consumer goods, and IPI India Private Limited, a local player in similar product categories, exemplifies this tension. This case revolves around the petitioner's established brands "VICKS" and "VAPORUB," which have become synonymous with relief from cold and respiratory ailments, and the respondent's marks "VAPORIN" and related variants, which the petitioner argued were crafted to ride on the goodwill of their iconic products. 

Filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999, the petitions sought rectification of the trademark register by removing the respondent's registrations, asserting that the impugned marks were deceptively similar in phonetics, visuals, structure, and concept, leading to potential confusion among consumers. 

The Madras High Court's adjudication in this matter not only underscores the principles of trademark law in India but also reinforces the protection afforded to well-known marks against dishonest adoption. By examining the historical use, registration details, and market presence of both parties, the court delved into whether the respondent's marks crossed the threshold of permissible similarity, ultimately weighing factors like consumer perception, trade channels, and the overall impression created by the marks. 

This analytical article dissects the judgment, providing insights into how courts apply the anti-dissection rule, the test of imperfect recollection, and the concept of house marks in resolving such conflicts, offering valuable lessons for trademark practitioners and businesses alike.

Factual Background: The Procter & Gamble Company, founded in 1837 and headquartered in Cincinnati, Ohio, United States, stands as one of the world's leading multinational corporations in the manufacture and trade of health care, personal care, and hygiene products. Among its portfolio, the brand "VICKS" holds a flagship position, particularly for pharmaceutical and medicinal preparations aimed at alleviating cold, cough, and respiratory issues. 

Launched internationally in 1890 and introduced to the Indian market in 1964, "VICKS" has cultivated immense recognition and loyalty among consumers and the trade. Complementing this, the company has developed a family of marks under the "VAPO" formative prefix, including "VICKS VAPORUB," "VICKS VAPOCOOL," "VICKS VAPOPATCH," "VICKS VAPOEASE," "VICKS VAPAPADS," "VICKS COUGH DROPS," and "VICKS INHALER." These products, especially "VAPORUB," have garnered tremendous goodwill through extensive marketing, sales, and consistent quality, becoming household names associated with instant relief. 

The petitioner's trademarks "VICKS" and "VAPORUB" were registered globally as early as 1928, with Indian registrations dating back to 1954 for "VICKS" in Class 5 and 1977 for "VAPORUB" in the same class. Additional registrations include device marks and labels from 2007 and 2008, alongside copyrights in the distinctive packaging artistry. 

Courts across India have repeatedly acknowledged and protected these marks, affirming their well-known status. In contrast, IPI India Private Limited, based in Telangana, India, entered the market with products under marks like "VAPORIN COLD RUB" and "VAPORIN," promoted with slogans such as "Vapor In, Stress Out. Anytime, Anywhere." These products targeted similar categories—personal care and medicinal preparations in Classes 3 and 5—leading the petitioner to discover their existence and perceive them as imitations designed to capitalize on established reputation. 

Upon learning of the respondent's registrations (No. 3897775 in Class 3, No. 4285435 in Class 5, and No. 3461733 in Class 3), the petitioner issued a cease and desist notice on September 27, 2022, alleging deceptive similarity and dishonest intent, which prompted the filing of rectification petitions to expunge these entries from the trademark register.

Procedural Background: The proceedings commenced with the filing of three original petitions under Sections 47 (removal for non-use), 57 (rectification or variation of register), and 125  all in the name of the first respondent, IPI India Private Limited, with the Registrar of Trade Marks as the second respondent. The petitions were consolidated for a common hearing given the overlapping issues. 

The petitioner argued prior registration, deceptive similarity, and dishonest adoption, citing extensive evidence of their marks' global and Indian presence, sales figures, and judicial recognitions. The first respondent  countered by claiming that "VAPO" was descriptive and common to trade, thus not monopolizable, and that their marks were distinct enough to avoid confusion. 

Reasoning and Decision of Court:The Madras High Court's central reasoning was the test for deceptive similarity under Section 2(1)(h) of the Trade Marks Act, which deems marks similar if they are likely to cause confusion. The court rejected the respondent's plea to dissect the marks, invoking the anti-dissection rule from precedents like Amritdhara Pharmacy, where the Supreme Court held that marks must be compared as wholes, considering phonetic, visual, structural, and conceptual resemblances from the viewpoint of a person of average intelligence with imperfect recollection. 

Here, "VAPORUB" and "VAPORIN" were found phonetically akin, with the shared "VAPOR" prefix dominating the impression, and the suffixes "UB" and "IN" insufficient to differentiate, especially in spoken trade where pronunciation overlaps. Visually and structurally, the marks' composition mirrored each other, heightening confusion risks. 

The court noted the identical goods—cold rubs and medicinal preparations—sold through overlapping channels to the same consumer base, amplifying the likelihood of deception. Dismissing the respondent's argument that "VAPO" is descriptive (evoking vapor for ointments), the court observed that the petitioner's long use had rendered it distinctive, and the respondent's adoption of a similar formative element betrayed dishonest intent to freeride on goodwill, as evidenced by similar packaging, colors, and layouts. 

The house mark "VICKS" was recognized as a common identifier, making "VAPORUB" the key differentiator, which the respondent's marks encroached upon. Relying on Section 9's absolute grounds for refusal (lack of distinctiveness, potential for confusion) and Section 11's relative grounds (similarity to earlier marks), the court found the registrations violative. 

Prior user rights under Section 34 were upheld for the petitioner, given their 1964 Indian launch versus the respondent's later entry. Judicial precedents, including Corn Products Refining Co. v. Shangrila Food Products Ltd., reinforced that initial interest confusion could harm reputation. Ultimately, the court allowed all three petitions, directing the Registrar to remove the impugned registrations from the register and awarding costs to the petitioner, emphasizing that trademark law safeguards consumer interests and prevents unjust enrichment.

Point of Law Settled in the Case: This judgment solidifies the application of the deceptive similarity test in cases involving formative marks, clarifying that prefixes like "VAPO," when acquired distinctiveness through prolonged use and market dominance, cannot be appropriated even if arguably descriptive, as such adoption evidences bad faith. It reiterates that trademarks must be assessed holistically, without dissection, from the lens of an ordinary consumer's imperfect recollection, and that similarity extends beyond words to trade dress and packaging. The decision underscores the primacy of prior user rights and the well-known status of marks, as per Section 2(1)(zg), in rectification proceedings, establishing that house marks do not dilute the independent protection of sub-brands within a family. Furthermore, it affirms that registrations granted in error, causing confusion or deceiving the public, warrant expungement under Sections 47 and 57, prioritizing public interest over registrant's claims of commonality. This precedent serves as a deterrent against parasitic branding, particularly in pharmaceutical sectors where consumer health and trust are paramount, and highlights the courts' role in maintaining the integrity of the trademark register.

Case Title: The Procter & Gamble Company Vs. IPI India Private Limited & Anr.

Date of Order: January 6, 2026

Case Number: O.P.(TM)Nos.48, 49 and 50 of 2024

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Mr. Justice N. Senthilkumar

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

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

Sanjeev Kumar Juneja Vs Terrace Pharmaceuticals Pvt. Ltd.

Terrace Pharmaceuticals Pvt. Ltd. filed a suit in 2018 against Sanjeev Kumar Juneja and another for infringement of their registered trademark "MANTRA" and passing off due to defendants' use of similar "MANTRA" formative marks like "ROOP MANTRA" in medicinal and cosmetic goods.

Defendants contested, filed an application under Order VII Rule 11 CPC to reject the plaint which was dismissed and upheld in revision, then applied under Section 124 of the Trade Marks Act, 1999 to challenge validity and stay the suit.

Trial Court framed an additional issue on validity but dismissed the stay as belated. In revision, the High Court reasoned that Section 124 mandates stay of infringement suits once prima facie invalidity is found to allow rectification but does not apply to passing off actions, held composite suits permissible but severable under Order II Rule 6 CPC due to delay caused by joinder, and modified the order to grant three months for rectification, stay the infringement claim, and direct separation and proceeding of the passing off claim as a new suit.

• Section 124 of the Trade Marks Act, 1999 applies only to suits for infringement of registered trade marks and not to actions for passing off:  Para 19.
• A composite suit joining causes of action for trade mark infringement and passing off is permissible, but the causes are severable, and the court can order separate trials under Order II Rule 6 CPC if joinder causes delay or inconvenience:  Para 25.

Case Title: Sanjeev Kumar Juneja Vs Terrace Pharmaceuticals Pvt. Ltd.:22.01.2026:CR No.6252 of 2023:Punjab and Haryana HC:Hon'ble Mr. Justice Pankaj Jain

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

Merck Sharp & Dohme Corp. Vs Ranvir Kumar Bindeshwari Singh

Merck Sharp & Dohme Corp. and Sun Pharmaceutical Industries Ltd. filed a suit in August 2018 against Ranvir Kumar Bindeshwari Singh and others for infringing their Indian Patent No. 209816 covering Sitagliptin by advertising and exporting the infringing product SEPAMET-XR containing Sitagliptin Phosphate Monohydrate, seeking permanent injunction, damages, rendition of accounts, delivery up, and costs.

The court granted ex-parte interim injunction in August 2018. Defendants filed written statement denying infringement, export for domestic market, and court's jurisdiction but later ceased appearing, leading to ex-parte proceedings in March 2024 after substituted service. The patent lapsed in July 2022, rendering injunction infructuous, so plaintiffs restricted relief to damages and costs, filing unrebutted affidavit evidence.

The court, accepting plaintiffs' evidence, calculated compensatory damages based on defendants' estimated export profits over 12 months at Rs.49,44,450 with 25% margin, awarded exemplary damages of Rs.10 lakhs for willful post-injunction infringement posing public health risks, and granted actual costs of Rs.21,67,074, holding defendants jointly liable.

• In patent infringement suits proceeded ex-parte, unrebutted affidavit evidence of plaintiffs is sufficient to establish entitlement to compensatory damages calculated on the basis of infringer's estimated profits from export data with a reasonable profit margin:  Para 25.
• Exemplary damages may be awarded in patent infringement cases where defendants willfully disobey court injunction orders and continue infringing activities, considering public health risks from sub-standard medicines:  Para 28.
• Actual legal costs, including court fees and expenses supported by affidavit, are recoverable in commercial patent suits under the Commercial Courts Act, especially when unrebutted:  Para 29.

Case Title: Merck Sharp & Dohme Corp. Vs Ranvir Kumar Bindeshwari Singh :23.01.2026:CS(COMM) 1075/2018:2026:DHC:571:Hon'ble Mr. Justice Tushar Rao Gedela

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

Jesal Vimal Jetha Vs Controller General of Patents

Jesal Vimal Jetha filed a patent application in 2018 for a customizable comforter system with a supporter for therapeutic use, addressing issues like backache and posture through adjustable compartments for individual body needs.

The First Examination Report (FER) in January 2020 raised objections on novelty and inventive step based on prior arts D1 and D2, to which the appellant responded. Subsequent hearing notices introduced additional prior arts D3, D4, and D5, leading to hearings in July and September 2020 where the appellant submitted detailed technical replies.

The Controller rejected the application in October 2020 under Section 2(1)(ja) for lack of inventive step without adequately considering the appellant's responses, particularly the July 2020 reply addressing D3-D5, and contained factual errors in analyzing prior arts.

The Delhi High Court, finding violations of natural justice due to non-consideration of key submissions, jurisdictional infirmities, procedural unfairness, and inconsistencies like shifting the closest prior art from D1 to D3, set aside the rejection order and remanded the matter for fresh consideration with a new hearing, clarifying that merits were not examined.

• The failure to consider the appellant's detailed technical response to objections based on newly cited prior arts in the hearing notice constitutes a violation of natural justice and procedural fairness Para 13.
• The Controller's impugned order must explicitly advert to and consider all submissions, including highly technical responses to prior arts, and absence thereof renders the decision unfathomable and invalid:  Para 15.
• Factual errors in the Controller's analysis of prior arts, such as misstating positional rearrangement of compartments not disclosed in the cited document, indicate non-application of mind and require judicial interference:  Para 16.
• The ability to arrange or re-arrange compartments in any spatial manner, including multilayer stacking, may constitute a novel inventive feature when contrasted with linear parallel arrays in prior arts, and failure to address this vitiates the rejection:  Para 17.
• Procedural fairness in patent examination may require issuance of a Second Examination Report (SER) under Section 13(3) of the Patents Act in cases involving amendments or new objections, to ensure all issues are compositely put to the applicant before response: Para 18.

Case Title: Jesal Vimal Jetha Vs Controller General of Patents:23.01.2026: C.A.(COMM.IPD-PAT) 233/2022:2026:DHC:573:Hon'ble Mr. Justice Tushar Rao Gedela

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

LMC Computers Vs. iThink Apps Private Limited

In the suit filed by LMC Computers against iThink Apps Private Limited & Ors before the Delhi High Court, the plaintiff sought condonation of delay in filing replication to the written statement. The written statement was taken on record on 18.09.2025, replication was filed on 03.11.2025 (46th day, as the 45th day fell on Sunday), but served on defendants only on 10.11.2025 after Registry objection, despite defendants' email reminder on 05.11.2025. 

Plaintiff argued that filing on next working day after Sunday was valid under Section 10 General Clauses Act, 1897 and Rule 6 Chapter I Delhi High Court (Original Side) Rules, 2018, while delay arose due to voluminous pleadings and multiple inter se litigations; defendants opposed, alleging deliberate non-service for unfair advantage and insisting strict compliance with Rule 5 Chapter VII requiring service endorsement for acceptance. 

The Court held that the 30+15 days limit under Rule 5 is strict and non-extendable beyond 45 days, but filing on next open day after Sunday was permissible; however, non-service provision in Rule 5 was held directory (mere irregularity, not mandatory illegality) condonable by Court in justice interests, unlike Registry's binding duty. Accordingly, replication was taken on record subject to plaintiff paying Rs.1,00,000 costs to defendants within four weeks. 

The Court also issued notice on plaintiff's applications for directions restraining defendants from intimidating proposed witness and for impleadment of two partners as co-plaintiffs, with replies/rejoinders directed and matter listed on 21.05.2026.

Law settled: 

The 30 days period for filing replication under Rule 5 Chapter VII Delhi High Court (Original Side) Rules, 2018 is extendable by maximum 15 days (total 45 days) and not thereafter; no further condonation possible even for sufficient cause, to ensure expeditious disposal of commercial disputes. Para 15, 19.

Where the last day of prescribed/extended period falls on a Sunday/holiday/Court-closed day, filing on the next working day is valid under Section 10 General Clauses Act, 1897 read with Rule 6 Chapter I Delhi High Court (Original Side) Rules, 2018. Para 11, 16.

The requirement under Rule 5 Chapter VII Delhi High Court (Original Side) Rules, 2018 that replication shall not be accepted unless it contains endorsement of service on defendant/his advocate is directory and not mandatory; non-service constitutes mere irregularity condonable by Court in interests of justice, though binding on Registry. Para 17-18.

Case Title: LMC Computers Vs. iThink Apps Private Limited & Ors.:14.01.2026:CS(COMM) 729/2025: Hon'ble Mr. Justice Tushar Rao Gedela

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

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

Yatishkumar Baburao Gaikwad Vs. Sachin Sariya

The petitioners/defendants challenged the Trial Court's order dated 17.09.2025 dismissing their application under Order VII Rule 11(a) & (d) CPC for rejection of the plaint in a trademark infringement suit, contending that the plaint disclosed no cause of action and that Delhi courts lacked territorial jurisdiction, as the defendants were based in Solapur (Maharashtra), manufactured fuses there, never supplied goods beyond Maharashtra, and the plaintiff's bald averments in para 46 about availability/sale in Delhi markets (Naraina, R.K. Puram, Sarojini Nagar) and through Just Dial lacked supporting documents or proof of actual purchase/sale.

The plaintiff/plaintiff opposed, relying on averments in paras 46-48 of the plaint about advertising, soliciting, supplying, and offering for sale via Just Dial e-commerce platform, plus filed Just Dial printouts, arguing this conferred jurisdiction. 

The High Court held that at the Order VII Rule 11 stage only plaint averments are to be considered without mini-trial or requiring proof/documents, and the averments in paras 46-48 sufficiently alleged facts conferring territorial jurisdiction on Delhi courts, particularly in view of evolved law on e-commerce/online offers for sale.

The defendants' contentions on absence of actual sale or documents were matters for trial, not rejection at threshold, hence the petition under Article 227 was dismissed without costs, with liberty to raise similar objections in written statement for Trial Court consideration.

Law settled: 

In trademark infringement/passing off cases involving e-commerce platforms, mere accessibility and looming presence of a website/offer for sale in a geography, even without aggressive targeting or actual completed sale, is sufficient to characterize it as targeting the forum and to confer territorial jurisdiction on courts where such commercial transaction could be concluded, as the tort stands committed where infringing goods are capable of being sold/purchased.

Once allegedly infringing goods are listed/available for sale on e-commerce platforms (accessible in the forum), the situs of the tort of infringement includes every place where a commercial transaction could be concluded, enabling suit filing in courts having jurisdiction over such place, irrespective of whether listing was at defendant's instance or by third party. 

Case Title: Yatishkumar Baburao Gaikwad Vs. Sachin Sariya:19.01.2026 : CM(M)-IPD 40/2025 : Hon'ble Mr. Justice Tushar Rao Gedela  

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

Dev Sahitya Kutir Pvt. Ltd. Vs. Smt. Archana Debnath

The plaintiffs (widow and son of late renowned cartoonist Narayan Debnath) filed Title Suit No.01 of 2026 before the District Judge at Alipore alleging copyright infringement by the appellant-publisher (Dev Sahitya Kutir Pvt Ltd) in respect of Debnath's literary and artistic works, claiming a 2012 agreement granted only two-year publishing rights after which unauthorized publication continued without adequate royalty.

They asserted inheritance via a 2020 Will (plaintiff no.1 as Executrix, plaintiff no.2 as legatee). The Trial Court granted ex parte ad interim injunction restraining the appellant from publishing/selling/distributing the works till February 9, 2026, just before a book fair.

The appellant appealed (FMAT 18 of 2026), contending lack of locus standi of plaintiffs absent probate under Section 213 Indian Succession Act 1925 (applicable in West Bengal).

Bar under Order IX Rule 9 CPC due to prior suit dismissal for default, suppression of facts, delay/laches defeating equity, balance of convenience against injunction causing huge losses, and non-compliance with Order XXXIX Rule 3 guidelines. 

The Division Bench dismissed the appeal, upholding the injunction, holding that even in Section 57/213 areas, an executor/legatee can protect/defend the estate pre-probate as "intermediate acts" validated retrospectively under Sections 211 and 227.

Copyright infringement cause of action is continuing/day-to-day, so no bar under Order IX Rule 9/limitation/delay applies, no material suppression occurred (copy of prior order annexed), and prima facie case/irreparable injury justified injunction at ad interim stage per settled precedents, though observations not conclusive at trial.

Law Point:

An executor or legatee under a Will of a Hindu in territories specified under Section 57 (including West Bengal) can maintain a suit to protect/defend the estate/prevent infringement pre-grant of probate, as such acts qualify as "intermediate acts" validated retrospectively upon probate grant under Sections 211 and 227 of Indian Succession Act 1925 (Paras 59–62).

In copyright infringement cases, the cause of action is continuing and arises de die in diem; thus, injunction is normally granted as a matter of course on prima facie case, delay/laches do not bar relief, and prior suit dismissal for default does not attract bar under Order IX Rule 9 CPC as the cause is not the "self-same" one (Paras 66–69)

At ad interim ex parte stage, the Court proceeds on plaint averments as sacrosanct without mini-trial; damages not necessarily adequate remedy in widespread copyright infringement; non-strict repetition of Shiv Kumar Chadha/Morgan Stanley guidelines does not vitiate reasoned order (Paras 70–83).

Case Title: Dev Sahitya Kutir Pvt. Ltd. Vs. Smt. Archana Debnath:22.01.2026: FMAT 18 of 2026: 2026:CHC-AS:96-DB: Justice Sabyasachi Bhattacharyya and Justice Supratim Bhattacharya  

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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

Dr. Dulal Kumar De Vs Union of India

Dr. Dulal Kumar De along with co-inventors filed patent application No. 202031002063 on 17 January 2020 for “Herbal Anti-Venom against Catfish Sting”, published on 14 February 2020; 

First Examination Report issued on 4 July 2022 via email to Midnapore College's registered address, with response deadline 4 January 2023 extended to 4 April 2023; 

Email overlooked due to college's 150th anniversary celebrations, status inquiry on 9 June 2023 revealed abandonment under section 21(1) of Patents Act 1970; 

Petitioner filed writ petition alleging invalid service without postal communication under section 149, claiming time period not triggered and abandonment erroneous. 

Court reasoned section 149's "may" for postal service is permissive not mandatory, Rules 2003 as amended in 2016 and Office Order 23/2016 recognize email as valid service especially since petitioner provided email address, harmonizing with Information Technology Act 2000; time limits under section 21 and Rule 24B mandatory, non-compliance deems abandonment without judicial relaxation; distinguished petitioner's cited cases on strict statutory compliance as inapplicable here. Writ petition dismissed, upholding abandonment.

Law Point:

Service of notices under section 149 of the Patents Act, 1970 is permissive and not mandatory by post; email service is valid and effective as per amended Patents Rules, 2003 and Office Order 23/2016: paras 7-9.

Time limits for responding to First Examination Report under section 21(1) of the Patents Act, 1970 read with Rule 24B are mandatory; non-compliance results in automatic abandonment without scope for judicial extension: 

Subordinate rules framed under section 159 of the Patents Act, 1970 supplement the Act without superseding it, allowing alternative modes like email service for efficiency: para 8.

Case Title: Dr. Dulal Kumar De Vs  Union of India:19/01/2026:WPA-IPD No.2 of 2025:2026:CHC-AS:78:The Hon'ble Justice Ravi Krishan Kapur  

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]  

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