Fornnax Technology Pvt.Ltd. Vs. The Registrar of Copyrights

The Delhi High Court, in a significant ruling delivered on **February 11, 2026**, set aside a common order passed by the Registrar of Copyrights dated January 28, 2026, and remanded multiple connected copyright registration applications back to the Registrar for fresh de novo consideration. The decision addresses critical procedural and substantive issues in the pre-registration scrutiny of artistic works under the Copyright Act, 1957, particularly where opposition arises from competitors in the industrial machinery sector. The appellant, Fornnax Technology Private Limited, sought copyright registration for artistic works consisting of technical drawings or views of components of its secondary shredder machines (notably the "Cutting Chamber Part of Secondary Shredder R-4000 Front View" and related models). The Registrar rejected these applications after entertaining oppositions from respondents (including competitors represented through counsel for R-2 to R-4), primarily on the ground that the works had been industrially applied to more than fifty articles, triggering the bar under Section 15(2) of the Act, and thus could not qualify for copyright protection.

The factual matrix revolves around Fornnax's claim to copyright in original artistic works embodied in engineering drawings or visual representations of shredder components designed for waste processing and recycling machinery. The company asserted that these were pure artistic expressions not intended solely for industrial application beyond limited production. The opposing parties, apparently competitors in the shredder or recycling equipment market, challenged the registrability, producing materials such as PR articles, website "success stories" claiming over 100 installations, and even YouTube/social media videos allegedly showing widespread commercial exploitation of the designs.

Procedurally, the appellant filed applications under Section 45 of the Copyright Act for entry in the Register of Copyrights. The Registrar, invoking powers under Section 45(2) to conduct such inquiry as deemed fit, entertained written oppositions and documents from the respondents, conducted a personal hearing on January 21, 2026, and passed the impugned common rejection order. Aggrieved, Fornnax preferred multiple connected appeals under Section 72 of the Act before the Delhi High Court, which were heard together.

The Court, speaking through Justice Tushar Rao Gedela in an oral judgment, identified two primary infirmities warranting remand. First, the Registrar failed to properly address the appellant's specific objection that the opposing respondents were not "persons interested" as contemplated under Rule 70(9) and (10) of the Copyright Rules, 2013, which govern pre-registration scrutiny and opposition at the application stage. Instead, the Registrar erroneously equated or imported the concept of "person aggrieved" (who can seek rectification or cancellation post-registration under Section 50) into the pre-grant phase, thereby allowing competitors to participate and oppose when their locus standi may be limited to post-grant proceedings. The Court emphasized that these are distinct statutory stages with different standing requirements, and the failure to deal with this objection vitiated the order. Reliance was placed on the appellant's submissions citing the Allahabad High Court in Pramod Sharma vs. State of U.P. (2023 SCC OnLine All 1904) to define "person interested," which remained unaddressed.

Second, the Court found a serious breach of natural justice in the Registrar's reliance on electronic evidence (website claims of over 100 installations, PR materials, YouTube videos, and social media content) to invoke the Section 15(2) bar without furnishing copies to the appellant prior to or during the hearing, and without granting any effective opportunity to rebut the same with counter-evidence. The appellant had specifically asserted production of only 29–34 units for certain models and challenged the admissibility of such electronic material under Section 65B of the Indian Evidence Act (or equivalent provisions under the Bharatiya Sakshya Adhiniyam), pointing out lack of certification/affidavit. These contentions, raised in detailed post-hearing written submissions (particularly paras 16–17), found no engagement in the impugned order. The Court held that assertions and counter-assertions on the quantum of industrial application required adjudication on tangible, admissible evidence, which was absent here.

While noting the appellant's reliance on the Supreme Court's recent pronouncement in Cryogas Equipment (P) Ltd. vs. Inox India Ltd. (2025 SCC OnLine SC 780, para 66) — which clarified that an original artistic work does not lose copyright protection merely because a design derived from it is industrially applied — the High Court did not decide the merits. It clarified that no opinion was expressed on whether the works qualified as artistic works retaining copyright or whether the Section 15(2) bar applied, leaving these for fresh examination.

The Court accordingly quashed the impugned order, remitted the applications for de novo consideration by a different officer, directed that the appellant be permitted to rebut any documents relied upon by the respondents, allowed the respondents to file further materials in support of opposition, and explicitly required the Registrar to record a specific finding on whether opposition by the respondents could be maintained at the pre-registration stage. No costs were imposed.

This decision settles important points of law in copyright registration practice. It reinforces the strict separation between pre-grant inquiry/opposition under Section 45 read with Rule 70 (limited to "persons interested") and post-grant rectification/expungement under Section 50 (available to "persons aggrieved"). Conflating the two concepts is impermissible. It also establishes that any reliance on electronic or documentary evidence adverse to the applicant during inquiry must comply with natural justice — copies must be supplied and rebuttal opportunity afforded — failing which the order becomes unsustainable. Finally, it underscores that the Section 15(2) industrial application bar (loss of copyright after more than fifty reproductions without design registration) requires concrete, rebuttable evidence rather than untested website claims or media content, aligning with the Supreme Court's emphasis in Cryogas on preserving underlying artistic copyright despite industrial derivation.

**Case Details**  

**Title**: Fornnax Technology Private Limited vs. The Registrar of Copyrights & Ors. (and connected matters)  

**Date of Order**: February 11, 2026  

**Case Number**: CA (COMM.IPD-CR) 5/2026, 6/2026, 7/2026 & 8/2026 (with connected I.As.)  

**Neutral Citation**: Not available in the provided judgment text (awaiting publication)  

**Name of Court**: High Court of Delhi at New Delhi  

**Name of Hon'ble Judge**: Hon'ble Mr. Justice Tushar Rao Gedela  

**Disclaimer**: Readers are advised not to treat this as substitute for legal advice 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 for the Article**  

1. Delhi High Court Remands Copyright Applications: Strict Adherence to Locus Standi and Natural Justice in Pre-Registration Oppositions  

2. Fornnax Technology vs Registrar of Copyrights: High Court Quashes Rejection Order Over Procedural Lapses and Evidence Irregularities  

3. Pre-Grant Opposition in Copyright Registration: Delhi High Court Draws Clear Line Between "Person Interested" and "Person Aggrieved"  

4. Section 15(2) Bar and Electronic Evidence: Delhi High Court Mandates Fair Opportunity in Copyright Registration Proceedings  

**Suggested Tags**  

Copyright Registration, Registrar of Copyrights, Section 45 Copyright Act, Section 50 Copyright Act, Section 15(2) Copyright Act, Rule 70 Copyright Rules 2013, Natural Justice in IP Proceedings, Person Interested vs Person Aggrieved, Industrial Application of Artistic Works, Delhi High Court IP Judgment, Fornnax Technology Copyright Case, Cryogas Equipment Precedent  

**Headnote**  

Delhi High Court sets aside Registrar of Copyrights' rejection of artistic work registration applications on grounds of improper conflation of "person interested" (pre-grant) with "person aggrieved" (post-grant), failure to address locus objections, and violation of natural justice by relying on unshared electronic evidence to invoke Section 15(2) bar; matter remanded for de novo consideration by different officer with directions to permit rebuttal and record finding on maintainability of opposition.

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The appellant sought copyright registration under Section 45 of the Copyright Act, 1957 for artistic works comprising technical drawings/views of components (such as the "Cutting Chamber Part of Secondary Shredder R-4000 Front View") of its secondary shredder machines used in waste processing/recycling. The Registrar entertained oppositions from respondents (competitors), considered their documents including website PR articles claiming over 100 installations, YouTube/social media videos, and rejected the applications on February 28, 2026 (impugned common order), primarily invoking the Section 15(2) bar that copyright ceases after industrial application to more than fifty articles without design registration. Aggrieved, the appellant filed connected appeals under Section 72 before the Delhi High Court.

The Court, in its oral judgment dated February 11, 2026, quashed the impugned order and remanded the applications for de novo consideration by a different officer. It held that the Registrar failed to address the appellant's objection that respondents were not "persons interested" under Rule 70(9) & (10) of the Copyright Rules, 2013 (governing pre-registration inquiry/opposition) and wrongly equated them with "persons aggrieved" under Section 50 (post-registration rectification), conflating distinct statutory stages and allowing impermissible pre-grant participation by competitors. 

Law Point:

Pre-registration inquiry under Section 45 read with Rule 70 of Copyright Rules, 2013 permits opposition only by "persons interested"; post-registration rectification/expungement under Section 50 is available to "persons aggrieved" these are distinct stages and concepts that cannot be conflated or substituted (paras 4-7, 15).

Case Title: Fornnax Technology Pvt.Ltd. Vs. The Registrar of Copyrights:11.02.2026:CA (COMM.IPD-CR) 5/2026:2026:DHC:1295: Hon'ble Mr. Justice Tushar Rao Gedela  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks

Introduction : The case revolves around the trademark registration battle for the mark 'TAJPURIYA' in Class 33 for alcoholic beverages, highlighting critical procedural safeguards in trademark examination and adjudication under the Trade Marks Act, 1999. The Delhi High Court's decision in this appeal underscores the imperative that the Registrar of Trade Marks must confine refusals to objections explicitly raised in the Examination Report, thereby upholding principles of natural justice and preventing arbitrary shifts in grounds for refusal. This ruling reinforces that applicants deserve a full and fair opportunity to address all objections, and any deviation renders the order unsustainable, especially when the mark is asserted to be arbitrary and devoid of direct descriptive or geographical linkage to the goods.

Factual Background :ADS Agro Industries Pvt. Ltd., a rapidly expanding liquor conglomerate in India's alcohol beverage sector, is involved in manufacturing, marketing, trading, and selling liquor products. The company honestly and bona fide adopted the trademark 'TAJPURIYA' for alcoholic beverages and preparations for making such beverages, claiming the mark to be arbitrary in relation to the goods and inherently distinctive, with no natural or direct connection to alcohol or the industry.

Procedural Background : On 08.06.2021, the Appellant filed Trademark Application No. 4997781 in Class 33 on a 'proposed to be used' basis for the mark 'TAJPURIYA'. The Registrar issued an Examination Report dated 24.06.2021, raising an objection solely under Section 9(1)(a) of the Trade Marks Act, 1999, on the ground that the mark constituted a geographical name and was thus incapable of distinguishing the goods or services of one person from those of another. The Appellant promptly filed a detailed reply dated 26.06.2021, asserting the mark's arbitrariness, inherent distinctiveness, absence of any geographical connection, and entitlement to registration even if hypothetically treated as having geographical origin, relying inter alia on the Gujarat High Court precedent in Sahkar Seeds Corporation v. Dharti Seeds, 2017 SCC OnLine Guj 2577. Following this, the Registrar issued a hearing notice, conducted a hearing on 03.01.2024, and passed the impugned order dated 29.01.2024 refusing registration under Section 9, but on an entirely new and extraneous ground—that 'Tajpuriya' refers to an indigenous tribe of Nepal (also residing in parts of India such as Bihar, West Bengal, Sikkim, and Darjeeling), where alcohol forms an essential part of religious rituals, rendering the mark devoid of distinctive character.

Reasoning and Decision of Court: The Delhi High Court, presided over by Hon'ble Ms. Justice Jyoti Singh, found substantial merit in the Appellant's challenge under Section 91 of the Act. The Court observed that the impugned order suffered from two fundamental defects. First, the refusal was predicated on a fresh ground (tribal name linked to ritualistic alcohol use) never raised in the Examination Report, thereby denying the Appellant any opportunity to contest or reply to it, which violated procedural requirements under the Act and breached principles of natural justice. Second, the original geographical name objection from the Examination Report was neither reiterated nor addressed in the impugned order, and the Registrar failed to engage with the detailed submissions in the Appellant's reply regarding the mark's arbitrariness, inherent distinctiveness, and high degree of protection for arbitrary marks (even those with alleged geographical connotations). The Court noted that shifting to an extraneous ground without prior notice or consideration of the reply rendered the order wholly illegal and unsustainable. Consequently, the impugned order dated 29.01.2024 was set aside, and the matter was remanded to the Registrar for re-examination of the application from the hearing stage, mandating due consideration of the reply to the Examination Report, grant of a fresh hearing opportunity to the Appellant, and completion of the entire process within two months from the date of the judgment.

Point of Law Settled in the Case :The judgment firmly establishes that the Registrar of Trade Marks is bound to restrict refusal grounds to those explicitly articulated in the Examination Report issued under the Trade Marks Act, 1999. Introducing new or extraneous grounds in the final order without affording the applicant prior notice and an opportunity to respond constitutes a serious procedural irregularity, infringing natural justice principles and statutory procedure. Furthermore, where specific objections are raised and a detailed reply is filed addressing distinctiveness, arbitrariness, or exceptions for arbitrary use, the Registrar is duty-bound to deal with and consider those submissions; failure to do so, coupled with reliance on unheralded grounds, vitiates the refusal order. This ruling strengthens applicant protections in opposition and refusal proceedings by mandating transparency, consistency, and fairness throughout the examination and hearing stages.

Case Title: ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks 

Date of Order: 3rd February, 2026 

Case Number: C.A.(COMM.IPD-TM) 33/2024 

Neutral Citation: 2026:DHC:1134 

Name of Court: High Court of Delhi 

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

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 for the Article:

Delhi High Court Sets Aside Trademark Refusal for 'TAJPURIYA': Procedural Fairness Prevails in Registrar's Examination

Arbitrary Marks and Natural Justice: Delhi HC Remands 'TAJPURIYA' Application, Bars Extraneous Refusal Grounds

No New Grounds Without Opportunity: Procedural Fairness Trademark Examination Landmark Delhi HC Ruling on Trademark Refusal Procedure

Suggested Tags: TrademarkLaw, DelhiHighCourt, IPLaw, TradeMarksAct1999, NaturalJustice, TrademarkRefusal, ArbitraryMarks, IPIndia, TrademarkRegistration, RegistrarOfTradeMarks, IndianIP,  IPUpdate, TrademarkCaseLaw,

Headnote Delhi High Court holds that Registrar cannot refuse trademark registration on grounds not raised in Examination Report; impugned refusal for 'TAJPURIYA' set aside for violating natural justice and failing to address applicant's reply on arbitrariness and distinctiveness; matter remanded for fresh consideration within two months (2026:DHC:1134).

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ADS Agro Industries Pvt. Ltd., engaged in manufacturing and selling liquor products, adopted the arbitrary and inherently distinctive mark 'TAJPURIYA' for alcoholic beverages in Class 33 and filed Trademark Application No. 4997781 on 08.06.2021 on proposed-to-be-used basis. The Registrar raised objection under Section 9(1)(a) of the Trade Marks Act, 1999 vide Examination Report dated 24.06.2021 treating it as a geographical name incapable of distinguishing goods; Appellant filed detailed reply dated 26.06.2021 asserting arbitrariness, inherent distinctiveness, lack of geographical connection and reliance on Gujarat HC precedent. After hearing on 03.01.2024, Registrar refused registration vide impugned order dated 29.01.2024 on new ground that 'Tajpuriya' is name of an indigenous tribe of Nepal (also in parts of India) where alcohol is essential in religious rituals, thus lacking distinctive character under Section 9. Appellant challenged this under Section 91 before Delhi High Court, which found the order unsustainable as the refusal relied on a fresh ground not raised in Examination Report (violating natural justice and procedure, denying Appellant opportunity to respond) and failed to address points in Appellant's reply on arbitrariness and protection even for arbitrary geographical-origin marks; accordingly, impugned order was set aside and matter remanded to Registrar for re-examination from hearing stage after considering reply, with fresh hearing and decision within two months.

Law settled: Registrar cannot refuse trademark registration on a ground not raised in the Examination Report, as it deprives applicant of opportunity to respond, violating principles of natural justice and procedural fairness under the Trade Marks Act, 1999. (Para 4, 8)

Law settled: Where Examination Report raises specific objection (e.g., geographical name under Section 9(1)(a)), Registrar must deal with applicant's detailed reply addressing distinctiveness/arbitrariness and cannot shift to extraneous or new grounds without opportunity; failure to consider reply renders order unsustainable. (Para 5, 8)

Law settled: Impugned refusal order must be confined to objections raised in Examination Report and cannot be sustained if it introduces new grounds or ignores applicant's submissions on inherent distinctiveness of arbitrary marks. (Para 8)

Case Title: M/s. ADS Agro Industries Pvt. Ltd. Vs. The Registrar of Trade Marks Order Date: 3rd February, 2026 Case Number: C.A.(COMM.IPD-TM) 33/2024 Neutral Citation: 2026:DHC:1134 Name of Court: High Court of Delhi Name of Judge: Hon'ble Ms. Justice Jyoti Singh

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

7-Eleven International LLC Vs The Deputy Registrar of Trade Marks

Brief Note: The Madras High Court, in a detailed judgment on February 11, 2026, dismissed the appeals filed by 7-Eleven International LLC, a global convenience store chain based in the USA, thereby upholding the 2014 order of the Deputy Registrar of Trade Marks. The ruling affirmed the registration of the trademark "Big Bite" in Class 30 in favor of the Indian company Ravi Foods Private Limited (the substituted third respondent, following assignments from the original applicant Dukes Consumer Care Limited), while rejecting 7-Eleven's competing application and opposition. This decision reinforces the territorial nature of trademark rights under Indian law and clarifies the limited role of international reputation and prior filing dates when no actual use or goodwill has been established in the Indian market.

Introduction: Trademark disputes involving identical or highly similar marks often hinge on the fundamental principles of priority, goodwill, and territoriality. In cross-border conflicts, foreign entities frequently invoke their global reputation, extensive international use, and early filing dates to claim superior rights, especially when a local entity enters the scene later. The present case exemplifies such a clash between a multinational giant and an Indian food products company over the mark "Big Bite" for goods in Class 30, encompassing confectionery, biscuits, bakery items, savoury snacks, and related food products. The Madras High Court delved deeply into whether mere international fame, prior adoption abroad, or an earlier application date in India can override the established prior user status of a domestic party that has continuously used the mark in trade within India. The judgment underscores that Indian trademark law, while recognizing trans-border reputation in exceptional cases, predominantly adheres to the principle of territoriality, requiring concrete evidence of goodwill and reputation spilling over into or being cultivated in the Indian jurisdiction for protection against local prior users.

Factual Background: 7-Eleven International LLC, renowned for operating nearly 80,000 convenience stores worldwide under the "7-Eleven" brand (including some presence in India), claimed to have adopted and continuously used the formative mark "Big Bite" since August 1988, primarily for savoury food items such as hot dogs, pizzas, and potato chips sold in its stores. The company asserted that through extensive global use, promotion, and registrations in multiple jurisdictions (including Classes 29, 30, and 43), the mark had acquired a trans-border reputation that extended to India. To secure statutory rights in India, 7-Eleven filed its earliest application for "Big Bite" on August 16, 1994 (Application No. 636986 in Class 30), which was advertised in the Trade Marks Journal on September 16, 2007.  

On the other side, the original applicant (M/s. Dukes Consumer Care Limited, later renamed SWG Consumer Care Limited and eventually assigned to Ravi Foods Private Limited effective January 21, 2025) filed Application No. 1297871 in Class 30 on July 19, 2004, seeking registration of "Big Bite" for chocolates, biscuits, bread, pastry, confectionery, ice creams, spices, and other goods in the class. The mark was advertised on May 15, 2005. Ravi Foods (and its predecessors) claimed continuous, open, and extensive use of the mark in India since October 5, 2004, for various food products. 7-Eleven opposed the Indian application, while the Indian side opposed 7-Eleven's earlier-filed but later-advertised application.

Procedural Background: The oppositions were adjudicated together by the Deputy Registrar of Trade Marks, Chennai, who passed a common order on July 18, 2014. In that order, the Deputy Registrar rejected 7-Eleven's Application No. 636986 (opposed by the Indian side under Opposition No. MAS-720132) and accepted the Indian company's Application No. 1297871 (opposing 7-Eleven's opposition under No. MAS-211161). The Registrar primarily relied on the Supreme Court's decision in Milmet Oftho Industries v. Allergan Inc. (2004) to prioritize the first actual user in India, noting that 7-Eleven had not demonstrated any use or business presence in India under the mark, while the Indian party had established prior and continuous local use.  

Aggrieved, 7-Eleven filed two appeals under Section 91 of the Trade Marks Act, 1999: (T)CMA(TM) No. 110 of 2023 challenging the acceptance of the Indian application and (T)CMA(TM) No. 157 of 2023 challenging the rejection of its own application. During the pendency of these appeals, there were substitutions of parties due to corporate changes and assignments, culminating in Ravi Foods Private Limited being arrayed as the third respondent. The appeals were heard and reserved on January 22, 2026, and decided on February 11, 2026.

Reasoning and Decision of Court:  The High Court meticulously examined the arguments advanced by both sides. 7-Eleven contended that the Registrar erred by applying a narrow "prior user in India" test, ignoring its prior international adoption since 1988, global registrations, trans-border reputation, and earlier filing date in 1994. It argued that the Indian adoption in 2004 was mala fide, aimed at riding on its international goodwill, and that allowing identical use would cause confusion and association. Reliance was placed on numerous precedents, including N.R. Dongre v. Whirlpool Corporation (emphasizing trans-border reputation), S. Syed Mohideen v. P. Sulochana Bai, Milmet Oftho, and various High Court decisions supporting protection of well-known or spill-over reputation.  

The Court, however, rejected these contentions after a thorough analysis. It held that Indian trademark law is fundamentally territorial, and rights are acquired primarily through use in India. Mere availability of the mark on a foreign website or international reputation does not automatically confer goodwill or reputation in India absent evidence of actual spillover or substantial business activity on Indian soil. The Court observed that 7-Eleven had not placed any material showing sales, business, or reputation-building efforts in India under "Big Bite" either at the time of its 1994 application or during opposition proceedings commencing in 2007. The mere filing date, while relevant under Section 11, could not override the established prior use by the Indian party since 2004.  

Distinguishing the Milmet Oftho line of cases, the Court clarified that trans-border reputation protection is exceptional and requires clear proof of reputation in India, which was absent here. The mark was not shown to qualify as "well-known" under Section 2(1)(zg) or to warrant protection under Section 11(2) or 11(3) without local goodwill. The Court found no error in the Registrar's reliance on territorial prior use and upheld the impugned order in its entirety, dismissing both appeals without costs.

Point of Law Settled in the Case:  This judgment reaffirms and strengthens the territoriality principle in Indian trademark jurisprudence, holding that international reputation and prior foreign use, without corresponding goodwill, reputation, or actual business presence in India, cannot defeat the rights of a prior bona fide user who has continuously used the mark in the Indian market. A foreign applicant's earlier application date alone is insufficient to prevail over a local prior user's established trade use, particularly when no spillover of reputation is proved. The decision clarifies the narrow scope for invoking trans-border reputation under Sections 11(2) and 11(3) of the Trade Marks Act, 1999, emphasizing that concrete evidence of Indian goodwill is essential, and mere global fame or website presence does not suffice.

Case Title: 7 – Eleven International LLC Vs The Deputy Registrar of Trade Marks.  

Date of Order: 11.02.2026  

Case Number: (T)CMA(TM) Nos.110 & 157 of 2023  

Neutral Citation: 2026:MHC:542  

Name of Court: High Court of Judicature at Madras  

Name of Hon'ble Judge: The Hon'ble Mr. Justice N. Anand Venkatesh  

Disclaimer: Readers are advised not to treat this as substitute for legal advice 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 for the Article**  

- Madras High Court Upholds Territoriality: Indian Company Wins "Big Bite" Trademark Battle Against Global Giant 7-Eleven  

- International Reputation Insufficient Without Indian Goodwill: Madras HC Rejects 7-Eleven's "Big Bite" Claim in Favour of Local Prior User  

- Territorial Principle Prevails: Madras High Court Dismisses 7-Eleven's Appeals Over "Big Bite" Trademark Registration  

- "Big Bite" Trademark Dispute: Madras HC Affirms Prior Use in India Over Global Fame and Early Filing  

**Suggested Tags**  

TrademarkLaw, BigBiteTrademark, 7Eleven, RaviFoods, MadrasHighCourt , TerritorialityPrinciple, TransBorderReputation, PriorUser, Section11, TradeMarksAct, IntellectualProperty, IPLitigation, JusticeNAnandVenkatesh, Class30Trademarks, IndianTrademarkDispute,  

**Headnote of Article**  

Madras High Court dismisses appeals by 7-Eleven International LLC, upholds Deputy Registrar's 2014 order granting "Big Bite" trademark registration in Class 30 to Ravi Foods Private Limited as prior user in India; holds that international reputation and prior foreign adoption/early filing date cannot override local prior use absent proof of goodwill or spillover reputation in India, reinforcing strict application of territoriality under the Trade Marks Act, 1999.

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In this trademark dispute over the mark "Big Bite" in Class 30 for food products like confectionery, biscuits, savouries and allied items, the appellant 7-Eleven International LLC, a US-based global convenience store chain, claimed prior adoption since 1988 internationally, global registrations, trans-border reputation extending to India, and an earlier Indian application filed on 16.8.1994 (No.636986), while the contesting respondent (originally Dukes Consumer Care Ltd, later assigned to Ravi Foods Private Limited) filed its application on 19.7.2004 (No.1297871) and claimed continuous use in India since 5.10.2004. The Deputy Registrar, vide common order dated 18.7.2014, rejected 7-Eleven's application and opposition, accepting the respondent's application on the ground of prior actual use in India, relying on territoriality and Supreme Court precedent in Milmet Oftho Industries v. Allergan Inc. Aggrieved, 7-Eleven filed appeals under Section 91 of the Trade Marks Act, 1999 before the Madras High Court, which were heard and decided on 11.2.2026, dismissing both appeals and upholding the Registrar's order in toto.

Law settled: 

Trademark rights in India are primarily territorial; international reputation and prior foreign use/adoption do not automatically confer goodwill or protection in India absent concrete evidence of actual business, sales, spillover reputation or goodwill generated on Indian soil — mere website presence, global fame or prior application date (without use) cannot override a bona fide prior local user's continuous and extensive trade use in India .

In opposition/registration proceedings, the test of prior user in India prevails over international reputation unless trans-border reputation is clearly proved to have permeated the Indian market with substantial evidence; a foreign applicant's earlier filing date is relevant but not decisive when no use is shown in India by the date of application or opposition commencement .

Case Title: 7 Eleven International LLC Vs. The Deputy Registrar of Trade Marks:11.02.2026:(T)CMA(TM) Nos.110 of 2023 : 2026:MHC:542 : Madras HC:Hon’ble Mr. Justice N. Anand Venkatesh  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

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Manu Chaudhary Vs Controller of Patents

The Delhi High Court in a significant ruling has set aside the refusal of a patent application involving an oral herbal pain killer composition derived from Indian biological materials, primarily on the ground of non-submission of approval from the National Biodiversity Authority (NBA) at the time of refusal. The Court emphasized procedural fairness, discretion under Section 15 of the Patents Act, 1970, and the mandatory but timing-flexible requirement of NBA permission under the interplay of the Patents Act and the Biological Diversity Act, 2002.

Introduction: This appeal before the Delhi High Court  addresses a recurring challenge in patent prosecution involving traditional knowledge and biological resources from India: the mandatory requirement of prior or pre-grant approval from the National Biodiversity Authority (NBA) when inventions utilize biological material sourced from India. The case highlights the tension between strict compliance with biodiversity access regulations and the practical realities of administrative timelines in government bodies. It also touches upon procedural aspects like representation in hearings and the scope of Controller's discretion to refuse or defer decisions. The ruling promotes a balanced approach, ensuring applicants are not unduly penalized for delays beyond their control while upholding the protective intent of biodiversity laws. This decision is particularly relevant for inventors working in herbal, pharmaceutical, and traditional medicine sectors, where Indian biodiversity forms the basis of many innovations.

Factual Background: The Appellant, Manu Chaudhary, an experienced pharmaceutical researcher with over three decades in antimicrobial resistance, natural products, and drug revival technologies, filed Indian Patent Application No. IN 201711047431  (originally titled under related application 2545/DEL/2010 as "Oral herbal Pain Killer Formulations"). The invention pertains to an oral herbal pain killer composition for peripheral pains, comprising effective amounts of selected herbal components (specific plant parts with defined chemical constituents) in predefined ratios to achieve synergistic pharmacodynamic effects. It also includes a simplified, reproducible process for preparing these compositions while preserving safety, efficacy, and stability. The objective was to offer herbal alternatives to existing pain relief medications with reduced side effects, suitable even for patients with ulcers or other vulnerabilities. The application disclosed use of biological materials from India, triggering NBA approval requirements.

Procedural Background: 

The application was filed and First Examination Report (FER) issued observing  the claims novel and industrially applicable but raised objections on lack of inventive step (citing prior arts D1-D7), non-patentability under Sections 3(d), 3(e), and 3(p) of the Patents Act, and absence of NBA permission under Section 10(4)(ii)(D). The Appellant responded , amending claims from 1-10 to 1-7 to address issues. A hearing notice  limited objections to NBA approval and Section 3(p) (implying other grounds were waived). The Appellant attended the hearing  via an authorized representative, filed written submissions explaining technical glitches in Form 3 filing and pending NBA approval (evidenced by an email on intimating NBA acknowledgment). Despite this, the Controller refused the application under Section 15 . NBA approval was eventually granted , post-refusal. The Appellant challenged this refusal via appeal under Section 117A(2), seeking revival.

Reasoning and Decision of Court: The Court identified three refusal grounds: (i) lack of timely NBA approval; (ii) non-patentability under  Section 3(p)  (mere new use of known herbal medicines without technical advancement); and (iii) improper representation by an unauthorized person at the hearing (contrary to Sections 128 and 132). The Court focused primarily on the NBA issue, holding that while Section 10(4)(ii)(D) mandates disclosure and permission for biological material from India, neither the Patents Act nor the Biological Diversity Act, 2002 (Section 6(1A)) prescribes outright rejection for delayed submission. The relevant provision requires registration/approval before grant, not at filing or hearing stages. Guidelines for Processing Patent Applications relating to Traditional Knowledge and Biological Material (paragraphs 19 and 22) reinforce that patents "should not be granted" without NBA permission, but do not compel refusal if approval is pending and the applicant has applied diligently. The Appellant had applied to NBA, informed the Controller via email with acknowledgment proof before the refusal order, and could not control NBA's processing timeline. The Court found the Controller erred by not deferring the order under discretionary powers in Section 15, which allows requiring amendments/documents and refusing only on failure to comply. Non-submission due to pending approval was not a "failure" attributable to the Applicant. On representation, the Court noted the Controller should have objected and deferred rather than proceeding ex parte. Merits under Section 3(p) were not examined, leaving them open. The appeal was disposed of by setting aside the refusal, remanding for re-examination post-hearing (with proper Patent Agent/Advocate representation), considering NBA approval (no new material except this), and deciding within two months.

Point of Law Settled in the Case: The judgment clarifies that while NBA approval is mandatory for patent grant in cases involving Indian biological resources, absence of approval at examination/hearing stages does not automatically warrant refusal if the applicant has applied timely and informed the Controller of pendency. The Controller must exercise discretion under  Section 15  to defer proceedings awaiting approval, rather than refusing mechanically, especially when novelty is acknowledged. This prevents hyper-technical rejections and aligns with the proviso in Section 6 of the Biological Diversity Act allowing post-filing but pre-grant approval. It reinforces procedural fairness in patent prosecution involving biodiversity access obligations.

Case Title:Manu Chaudhary Vs Controller of Patents and Designs  

Date of Order:07.02.2026  

Case Number:C.A.(COMM.IPD-PAT) 36/2024  

Neutral Citation:2026:DHC:1095   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon'ble Judge:Hon'ble Ms. Justice Jyoti Singh  

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:**  

1. Delhi High Court Sets Aside Patent Refusal: NBA Approval Pendency Not Ground for Immediate Rejection in Biological Material Cases  

2. Balancing Biodiversity Compliance and Patent Prosecution: Delhi HC Remands Herbal Painkiller Application for Re-Examination  

3. No Automatic Refusal for Delayed NBA Approval – Landmark Clarity from Delhi High Court in Patents Involving Indian Biological Resources  

4. Procedural Fairness in Patent Appeals: Delhi HC Emphasizes Controller's Discretion Under Section 15 When NBA Permission is Awaited  

**Suggested Tags:** DelhiHighCourt , PatentsAct1970 , NBAApproval , BiologicalDiversityAct,  Section104iiD, Section15 , PatentsAct, HerbalPharmaceuticals, TraditionalKnowledge, PatentAppeal , IPLitigation, BiodiversityAccess, Section3p, InventiveStep, PatentProsecutionIndia,   

**Headnote:** Delhi High Court sets aside Controller's refusal of patent application for oral herbal pain killer composition under Section 15 of Patents Act, 1970, holding that pending NBA approval (applied for and acknowledged before refusal) warranted deferral rather than outright rejection; Controller must exercise discretion to await pre-grant NBA permission in biological material cases; matter remanded for fresh examination within two months post-hearing with proper representation; merits under Section 3(p) left open.

======

In this appeal under Section 117A(2) of the Patents Act, 1970, Manu Chaudhary challenged the Controller's refusal dated 22.02.2024 of patent application IN 201711047431, which claimed an oral herbal pain killer composition using specific Indian herbal components in predefined ratios for synergistic pharmacodynamic effect along with a reproducible preparation process aimed at reducing side effects compared to conventional analgesics. 

The application was filed on 30.12.2017, published in 2019, examined after request in 2021, and FER issued on 22.12.2021 raising objections on inventive step, Sections 3(d), (e), (p), and lack of NBA approval under Section 10(4)(ii)(D). The applicant responded by amending claims, but the hearing notice in 2023 restricted objections to NBA approval and Section 3(p). Despite the applicant informing the Controller via email on 28.12.2023 of pending NBA application (acknowledgement received) and attending hearing through authorized representative, the application was refused under Section 15. NBA approval was eventually granted on 04.07.2024 post-refusal. 

The Delhi High Court held that the Controller erred in not deferring the refusal order despite proof of NBA application pendency, as neither the Patents Act nor the Biological Diversity Act, 2002 mandates rejection for delayed submission when the applicant has diligently applied and cannot control NBA timelines; Section 6(1A) requires approval only before grant, and relevant Guidelines (paras 19 & 22) prohibit grant without permission but do not compel pre-hearing rejection. 

The Court further found that Section 15 confers discretion to await compliance rather than refuse mechanically, especially when novelty was accepted. Representation by authorized representative was also not fatal without prior objection. Merits under Section 3(p) were not examined. The refusal was set aside, the matter remanded for fresh examination within two months after hearing (with proper Patent Agent/Advocate representation), considering NBA approval (no other new material permitted).

Points of Law Settled:

Absence of NBA approval at the time of examination/hearing does not warrant automatic refusal of a patent application if the applicant has applied for approval in time and informed the Controller of its pendency; the requirement under Section 6(1A) of the Biological Diversity Act, 2002 is mandatory only before grant of patent. (Para 14, 16; read with Paras 9, 10)

The Controller must exercise discretion under Section 15 of the Patents Act, 1970 to defer the final order and await submission of NBA permission when the applicant has taken diligent steps and delay is attributable to NBA processing, rather than mechanically refusing the application. (Para 15, 14)

Guidelines for Processing of Patent Applications relating to Traditional Knowledge and Biological Material (paras 19 & 22) prohibit grant of patent without NBA permission but do not provide for rejection of the application merely because approval is awaited despite proof of application having been made. (Para 14, 7)

Where an applicant attends hearing through an authorized representative instead of a registered Patent Agent/Advocate, the Controller should raise objection and defer hearing to allow compliance rather than proceed and refuse on that ground. (Para 11, implied in 16)

Case Title:Manu Chaudhary Vs Controller of Patents:07.02.2026:C.A.(COMM.IPD-PAT) 36/2024 :2026:DHC:1095:Hon'ble Ms. Justice Jyoti Singh  

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  

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

====

Operation Mercy India Foundation Vs. Meta Platforms Inc

Introduction: In the evolving landscape of digital defamation, where anonymous online actors can disseminate harmful content across borders with ease, the question of territorial jurisdiction becomes paramount. The case of Operation Mercy India Foundation and Others versus Meta Platforms Inc. and Others, decided by the Delhi High Court, delves into this complex interplay between traditional civil procedure principles and modern cyber wrongs. 

At its core, the judgment addresses whether a defamation suit initially filed against unknown "John Doe" defendants can be returned to another court once the identities of the alleged wrongdoers are revealed, particularly when the revealed residence coincides with a place where the alleged wrong also occurred. This ruling not only reinforces the foundational tenets of Section 19 of the Code of Civil Procedure, 1908 (CPC), which governs suits for compensation for wrongs to person or movables, but also highlights the protections afforded to plaintiffs facing anonymous harassment. By emphasizing that jurisdiction must be assessed based on circumstances at the time of filing, the court safeguards bona fide litigants from procedural manipulations that could arise from defendants' deliberate anonymity. The decision draws on precedents like Tejpal Singh Sisodia and Sameer Wankhede, refining the "Merger Rule" in the context of online defamation, and underscores the need to prevent forum shopping while ensuring access to justice. 

Factual Background: The plaintiffs in this case consist of Operation Mercy India Foundation and O.M. Books Foundation, both non-profit companies registered under Section 25 of the Companies Act, 1956, with their registered offices in Telangana, along with their director, Joseph Gregory Dsouza, who resides in Secunderabad. These entities form part of the O.M. Group, engaged in charitable activities such as operating over 100 schools across India that provide subsidized education to underprivileged children, employing around 2,000 staff, and running 17 bookstores selling religious and educational books at affordable rates. 

Defendant No. 1 is Meta Platforms Inc., the owner of the social media platform Facebook, based in the United States. Defendants Nos. 2 and 3 are individuals, Jeypauljesudasan and Panigrahi, both residents of Telangana, who operated a Facebook page titled "OM Justice Seekers" using the email address omjusticeseekers@gmail.com. 

The dispute originated from posts on this page alleging serious misconduct by the plaintiffs, including benami transactions, misappropriation of donations, exorbitant fees in their institutions, and poor working conditions. The plaintiffs claimed these allegations were false, malicious, and intended to damage their reputation, goodwill, and charitable operations. They pointed to ongoing disputes with former employees in Telangana courts, including criminal complaints for financial irregularities and FEMA violations, which Defendant No. 3 allegedly exploited to publish misleading content referencing these litigations. 

The posts were widely viewed, shared, and commented upon in India and abroad, leading to a drastic reduction in donations—from Rs. 40.65 crore in 2018-2019 to Rs. 25.38 crore subsequently—and affecting operations, including a bookstore in Delhi. Specifically, the plaintiffs highlighted their purchase of land in Delhi in 2015 for a vocational training center, for which donations dried up due to the negative publicity, halting construction. 

They also received communications from foreign donors in June 2020 expressing concerns over the posts, and emails from Delhi residents in July 2020 voicing worries about the defamatory content. Asserting irreparable harm to their global reputation, the plaintiffs sought a permanent injunction to remove the page and its content.

Procedural Background: The suit was instituted in 2020 before the Delhi High Court as CS(OS) 262/2020, initially against Meta and an unknown "John Doe" defendant representing the anonymous operators of the Facebook page, given that their identities were masked. The plaintiffs invoked Section 19 of the CPC, claiming the wrong (defamatory publication and its consequences) occurred in Delhi, including reduced donations for the proposed vocational center, declining bookstore sales, and local access to the content. 

On September 15, 2020, the court granted an ex parte interim injunction against the email address associated with the page, restraining further defamatory posts. Subsequently, through discovery, the identities of Defendants Nos. 2 and 3 were revealed, and they were impleaded. 

In 2022, these defendants filed I.A. 13894/2022 under Order VII Rules 10 and 11 of the CPC, seeking rejection or return of the plaint on grounds of lack of territorial jurisdiction, arguing all parties were based in Hyderabad (Telangana) and no genuine cause of action arose in Delhi. They contended the plaintiffs' documents—letters from donors and emails from Delhi residents—were fabricated to manufacture jurisdiction.  During hearings, on March 19, 2024, the defendants confined their prayer to return under Rule 10, withdrawing the rejection plea under Rule 11. Arguments were advanced by counsel for both sides.

Reasoning and Decision of Court: The court's reasoning commenced with an affirmation that the application was confined to return under Order VII Rule 10 CPC, and proceeded on that basis. It reiterated that defamation suits fall under Section 19 CPC, which allows filing where the wrong is done or where the defendant resides/carries on business, interpreting "wrong done" to include both the act and its consequences, as established in precedents like Frank Finn Management Consultants. 

The plaintiffs' pleadings detailed wrongs in Delhi: reduced donations halting the vocational center's construction, declining bookstore sales, and publication/access of content locally, supported by annexed letters and emails. The defendants challenged these documents as fabricated, but the court held that such veracity determinations require evidence and cannot be made at the demurrer stage under Rule 10, where plaint averments are deemed true, citing Exphar v. Eupharma Laboratories and RSPL Ltd. v. Mukesh Sharma. Thus, the plaintiffs established "wrong done" in Delhi for jurisdictional purposes. 

The court then examined the "Merger Rule" from Tejpal Singh Sisodia, which mandates suing at the defendant's residence if it coincides with a place of wrong, to avoid options under Section 19. Acknowledging the plaintiffs' averments of global harm, including in Telangana (where plaintiffs are based and operate schools/bookstores), the court found a merger there. However, it distinguished the case due to the initial John Doe proceedings: jurisdiction is assessed at filing, when defendants' identities and residences were unknown, making Delhi a valid forum based on local wrongs. 

Returning the plaint post-revelation would penalize plaintiffs for defendants' anonymity, undermine bona fide suits against unknown infringers, and lead to de novo trials vacating prior orders, as per Exl Careers. The court rejected applying the Merger Rule retrospectively, noting defendants could raise jurisdiction during trial via evidence. It also affirmed Tejpal's consistency with prior cases like Frank Finn and Indian Potash, and its statutory basis in Section 19, not forum non conveniens (rendering Horlicks inapplicable). Ultimately, the court dismissed I.A. 13894/2022, allowing the suit to proceed in Delhi, with observations not prejudicing merits.

Point of Law Settled in the Case: The judgment clarifies that when a suit is validly instituted against "John Doe" entities due to unknown identities, the assessment of jurisdiction—particularly the application of the "Merger Rule" (requiring suit at the defendant's residence if it merges with a place of wrong)—must be based solely on circumstances at the time of filing, not subsequent revelations. This prevents defendants from exploiting their initial anonymity to force plaint return, ensuring plaintiffs are not disadvantaged and interim protections remain intact. The ruling reinforces the demurrer principle for Order VII Rule 10 applications, prohibiting threshold inquiries into document veracity that necessitate evidence, and distinguishes cyber defamation's global reach from traditional wrongs, while affirming that jurisdiction can still be contested at trial. 

Case Title: Operation Mercy India Foundation & Ors. Vs. Meta Platforms Inc. & Ors.

Date of Order: 07.02.2026

Case Number: CS(OS) 262/2020

Neutral Citation: 2026:DHC:10222 

Name of Court: High Court of Delhi at New Delhi

-Name of Hon'ble Judge: Hon'ble Mr. Justice Purushaindra Kumar Kaurav

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

1. "Navigating Territorial Jurisdiction in Online Defamation: Insights from the Delhi High Court's Ruling in Operation Mercy India Foundation v. Meta Platforms"

2. "John Doe Defendants and the Merger Rule: A Deep Dive into Section 19 CPC in Digital Defamation Cases"

3. "Preserving Jurisdiction in Anonymous Cyber Wrongs: Analysis of the High Court Judgment on Plaint Return under CPC"

### Suggested Tags

Defamation Law, Territorial Jurisdiction, Section 19 CPC, John Doe Suits, Online Anonymity, Merger Rule, Delhi High Court, Cyber Defamation, Order VII Rule 10 CPC, Forum Shopping, Procedural Fairness,

### Headnote of Article

Delhi High Court holds that in defamation suits filed against anonymous "John Doe" defendants under Section 19 CPC, territorial jurisdiction is determined based on circumstances at the time of institution, and subsequent revelation of defendants' identities does not warrant return of plaint under Order VII Rule 10, even if it reveals a merger of wrong and residence; demurrer principle applies, barring evidentiary inquiries into plaint documents at threshold stage.

======

The plaintiffs, Operation Mercy India Foundation and O.M. Books Foundation (non-profit entities based in Telangana engaged in running subsidized schools and bookstores across India) along with their director Joseph Gregory Dsouza, filed a defamation suit against Meta Platforms Inc. (owner of Facebook) and two individuals (Defendants 2 and 3, residents of Telangana) who anonymously operated a Facebook page titled "OM Justice Seekers." The page posted allegedly false and malicious content accusing the plaintiffs of benami transactions, misappropriation of donations, exorbitant fees, and poor conditions in their institutions, exploiting pending disputes with former employees in Telangana. 

The plaintiffs claimed irreparable harm including drastic reduction in donations (from over Rs. 40 crore to Rs. 25 crore), inability to construct a vocational training center on Delhi-purchased land, declining sales at their Delhi bookstore, and receipt of concerned emails from Delhi residents, asserting the wrong occurred in Delhi under Section 19 CPC. The suit was initially filed in 2020 against Meta and a John Doe defendant due to anonymity, with an ex parte interim injunction granted on September 15, 2020. 

Defendants 2 and 3 were later impleaded after identity revelation. In 2022, they sought return/rejection of the plaint under Order VII Rules 10 and 11 CPC, confining to return under Rule 10, arguing no cause of action in Delhi, all parties Hyderabad-based, and documents fabricated for forum shopping. 

The court, applying demurrer principle, accepted plaint averments as true at threshold, finding "wrong done" (including consequences like donation loss and local access) established in Delhi. While noting the "Merger Rule" from Tejpal (where wrong coincides with defendant's residence in Telangana, limiting suit there), it held jurisdiction fixed at filing when defendants were unknown John Doe, making Delhi valid; returning plaint post-revelation would unfairly penalize plaintiffs for defendants' anonymity, vacate interim orders, and require de novo trial. Jurisdiction could be re-agitated at trial via evidence. Thus, I.A. 13894/2022 was dismissed, allowing the suit to proceed in Delhi.

Law settled: 

In defamation suits filed against anonymous/John Doe defendants, territorial jurisdiction under Section 19 CPC is determined based on circumstances and plaint averments at the time of institution/filing; subsequent revelation of defendants' identities and residence (even triggering Merger Rule where wrong coincides with residence) does not warrant return of plaint under Order VII Rule 10 CPC, as it would disadvantage bona fide plaintiffs and undermine interim protections (paras 27-33).

Applications under Order VII Rule 10 CPC are decided on demurrer, deeming plaint averments true; veracity of annexed documents (e.g., donor letters, emails proving local harm/publication) cannot be adjudicated at threshold without evidence, precluding return on fabrication grounds (paras 17-19).

 The "Merger Rule" in Tejpal (para 46) — requiring suit only at place of merger (wrong done + defendant residence) when wrong occurs in multiple jurisdictions including defendant's residence — is good law, statutorily rooted in Section 19 CPC text, not forum non conveniens, and consistent with prior Delhi HC precedents (paras 20-24, relying on Sameer Dnyandev Wankhede v. Red Chillies Entertainments Pvt. Ltd.).

Case Title: Operation Mercy India Foundation  Vs. Meta Platforms Inc.:07.02.2026: CS(OS) 262/2020: 2026:DHC:10222  : Hon'ble Mr. Justice Purushaindra Kumar Kaurav

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw  #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

====

Satya Paul Vs. Alka Industrial Corporation

Introduction: The Delhi High Court  in a significant trademark rectification decision delivered on February 9, 2026, protected the long-standing seniority and acquired distinctiveness of the mark  ARUN  used continuously since 1962 for sewing machines and parts (Class 7), while directing substantial variation in the later-registered mark "AiC ARUN" (registered in 2010/2011) belonging to a geographically proximate competitor in Punjab. The judgment in C.O. (COMM.IPD-TM) 651/2022 titled Satya Paul Vs Alka Industrial Corporation & Anr.  represents a textbook application of Sections 47 and 57 of the Trade Marks Act, 1999 in rectification / cancellation proceedings before the High Court sitting in its Intellectual Property Division jurisdiction. The core dispute concerned whether the addition of a corporate prefix ("AiC" standing for Alka Industrial Corporation) was sufficient to avoid deceptive similarity with a prior, highly reputed house mark "ARUN" that had enjoyed statutory registrations since the mid-1970s and factual use since 1962. The Court was called upon to balance the statutory presumption of validity attaching to a registered mark against overwhelming evidence of prior adoption, continuous use, acquired distinctiveness, extensive promotion, successful enforcement actions, and geographical/trade-channel overlap. Ultimately, the Court refused to treat "ARUN" as a generic or publici juris term in the sewing machine trade and held that the dominant and essential feature of the impugned mark remained confusingly similar, warranting partial rectification rather than outright cancellation.

Factual Background: The petitioner, Satya Paul (trading as Satya Paul & Co., Jalandhar), claimed prior adoption and use of the word mark "ARUN"  for sewing machines and parts thereof since 1962 through its predecessor-in-interest. The petitioner placed on record extensive promotional materials (newspaper advertisements spanning decades), caution notices issued to trade associations and dealers, circulars warning against misuse, numerous successful civil suits and decrees against infringers over the years, and audited sales figures certified by a Chartered Accountant showing exponential .

The respondent no.1 (Alka Industrial Corporation, Ludhiana — geographically close to Jalandhar) applied for registration of AiC ARUN" on January 17, 2007 claiming user from April 1, 2004. The mark was advertised in Trade Marks Journal No.1431 dated January 1, 2010 and registered (No.1524226 in Class 7) effective January 12, 2011. The Search Report dated October 23, 2007 cited the petitioner’s earlier "ARUN" registrations, yet no opposition was filed by the petitioner under Section 21. 

Both parties manufacture and sell identical goods (sewing machines and parts) through overlapping trade channels and consumer bases in Punjab and beyond.

Procedural Background: The petitioner instituted rectification proceedings under Sections 47, 57 and 125 of the Trade Marks Act, 1999 before the Delhi High Court seeking cancellation / removal / rectification of the entry relating to "AiC ARUN" on grounds of deceptive similarity, prior rights, bad faith adoption, and likelihood of confusion/deception. 

Reasoning and Decision of Court: The Court first recorded the petitioner’s unchallenged prior adoption and registrations dating back to the 1970s, together with continuous use since 1962, extensive advertising, trade vigilance (caution notices, circulars), successful enforcement litigation, and dramatic sales growth evidencing goodwill, reputation and secondary meaning acquired by "ARUN" in the sewing machine trade.

Rejecting the respondent’s principal defences, the Court held: - "ARUN" is not generic/publici juris in this context — the respondent failed to produce any cogent evidence showing widespread third-party use; the petitioner’s long, uninterrupted, exclusive-style use + registrations + enforcement history conferred protectable distinctiveness and exclusivity.

Mere addition of prefix "AiC" (even if denoting corporate name) does not eliminate deceptive similarity when the essential, dominant and distinctive feature remains "ARUN". Phonetic identity, visual prominence of "ARUN", identical goods, identical trade channels, common consumer base, and geographical proximity create high likelihood of confusion for the average consumer with imperfect recollection.

The argument that non-filing of opposition under Section 21 read with Section 23 forever bars rectification under Sections 47/57 was emphatically rejected. The Court reasoned that such an interpretation would create anomalous classes of registrants (those who opposed vs. those who did not), defeat the legislative intent behind rectification provisions, and leave genuine prior right holders without remedy in cases of honest oversight or lack of knowledge of advertisement.

Reliance on Surya Agro-Oils (sun/solar system analogy) was misplaced as "ARUN" was not shown to be commonly used by multiple traders in sewing machines. The Division Bench ruling in Himalaya Drug Co. v. SBL Limited (2012) and Single Judge decision in Greaves Cotton Ltd. (2011) were followed to hold that appropriation of the essential feature of a senior mark by mere prefix/suffix does not avoid infringement or sustain a junior registration.

Instead of outright cancellation, the Court exercised discretion under Section 57 to direct variation/rectification by deletion of the word "ARUN" from "AiC ARUN", allowing the respondent to retain "AiC" and add other distinctive elements (if so advised) so as to maintain safe distance from the petitioner’s mark. The Registrar was directed to effect the rectification within six weeks.

Point of Law Settled in the Case: The judgment reaffirms and applies several important propositions: Long prior use + multiple registrations + extensive promotion + successful enforcement + geographical proximity + identical goods + common trade channels can clothe even a seemingly ordinary word ("ARUN") with strong secondary meaning and exclusivity in a given trade. Addition of a corporate prefix/abbreviation does not automatically immunize a mark from a charge of deceptive similarity when the senior mark’s essential feature remains the visually, phonetically and conceptually dominant component.Failure to oppose advertisement under Section 21 does not create an absolute bar to subsequent rectification/cancellation proceedings under Sections 47/57; the two remedies serve distinct purposes and co-exist to prevent anomalous outcomes.Rectification power under Section 57 is flexible — courts may direct partial variation/deletion instead of wholesale cancellation where the junior registrant has some user and the equities so permit.

Case Title:Satya Paul Vs. Alka Industrial Corporation & Anr.  

Date of Order:09.02.2026  

Case Number:C.O. (COMM.IPD-TM) 651/2022  

Neutral Citation:2026:DHC:1038  

Name of Court:High Court of Delhi at New Delhi  

Name of Hon'ble Judge:Hon’ble Mr. Justice Tushar Rao Gedela  

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

1. Delhi High Court Directs Deletion of “ARUN” from “AiC ARUN” – Protects 60-Year-Old Sewing Machine Trademark Against Deceptively Similar Junior Mark  

2. Prior Use Since 1962 Trumps Later Registration: Delhi HC Orders Rectification of “AiC ARUN” in Favour of Senior “ARUN” Mark  

3. Mere Corporate Prefix Insufficient to Avoid Deceptive Similarity – Delhi High Court Mandates Variation of Registered Mark “AiC ARUN”  

4. Non-Opposition Does Not Bar Rectification: Delhi HC Clarifies Co-existence of Sections 21 & 57 in Trademark Law  

### Suggested Tags

trademark rectification, deceptive similarity, prior use, Section 57 Trade Marks Act, Section 47 cancellation, dominant feature, acquired distinctiveness, sewing machines trademark, Delhi High Court IPD, bad faith adoption, geographical proximity, honest concurrent use, publici juris defence, prefix addition, partial rectification,

### Headnote

Trade Marks Act, 1999 — Ss. 47, 57 — Rectification — Deceptive similarity — Prior registered mark “ARUN” used since 1962 for sewing machines — Later registered mark “AiC ARUN” — Dominant feature “ARUN” phonetically and visually identical — Addition of corporate prefix “AiC” insufficient to avoid confusion — Long uninterrupted use, multiple registrations, extensive promotion, successful enforcement and exponential sales growth confer distinctiveness and exclusivity — “ARUN” not generic/publici juris on facts — Non-opposition under S.21 no bar to rectification under Ss.47/57 — Directed deletion of “ARUN” from impugned mark with liberty to retain “AiC” + distinctive additions — Petition allowed with variation.

=====

The petitioner, prior adopter and registered proprietor of the trademark ARUN since 1962 for sewing machines and parts in Class-7 (with registrations from 1976, 1984, and 2001, plus artistic label copyright in 1999), sought rectification/cancellation of the respondent's later-registered mark AiC ARUN (No.1524226, applied 2007 claiming user from 2004, registered 2010/2011) under Sections 47, 57 and 125 of the Trade Marks Act, 1999, alleging deceptive similarity, prior rights, confusion in identical goods/trade channels, geographical proximity (Jalandhar vs Ludhiana), and mala fide adoption despite the respondent's knowledge of the petitioner's reputation. 

The respondent defended claiming no deceptive similarity due to the distinguishing prefix "AiC" (its corporate name), distinct get-up/packaging, "ARUN" being common/generic/publici juris in the sewing machine trade, lack of opposition to its advertisement under Section 21 barring later challenge, and modest sales causing no injury. The Delhi High Court, after examining evidence of the petitioner's long uninterrupted use, extensive promotion, caution notices, successful enforcement suits, and exponential sales growth establishing acquired distinctiveness and goodwill, held that "ARUN" was not generic on facts, the dominant essential feature "ARUN" remained phonetically/visually confusingly similar despite the prefix, and non-opposition under Section 21 did not bar rectification under Sections 47/57 as the remedies serve distinct purposes to avoid anomalous outcomes. Instead of full cancellation, the Court directed partial rectification by deletion of "ARUN" from "AiC ARUN", permitting retention of "AiC" with liberty to add other distinctive elements for safe distance, with compliance by the Registrar within six weeks.

Points of law settled:

Mere addition of a corporate prefix ("AiC") does not eliminate deceptive similarity where the senior mark’s essential/dominant feature ("ARUN") remains the visually, phonetically and conceptually predominant component, likely to confuse average consumers with imperfect recollection in identical goods, trade channels and geographical proximity (paras 33, 35–36).

Failure to file opposition under Section 21 against advertisement does not create an absolute/forever bar to subsequent rectification/cancellation proceedings under Sections 47/57; the provisions co-exist to prevent anomalous classification of right-holders and preserve remedies for genuinely aggrieved prior registrants (paras 37).

Rectification power under Section 57 is flexible, permitting partial variation/deletion of confusing elements rather than wholesale cancellation where equities (modest junior user/sales) permit, ensuring safe distance while protecting senior rights (para 41).

Case Title: Satya Paul Vs. Alka Industrial Corporation: 09.02.2026 :C.O. (COMM.IPD-TM) 651/2022 : 2026:DHC:1038  Hon’ble Mr. Justice Tushar Rao Gedela  

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

#IPUpdate #IPCaselaw #IPCaseLaw #IPLaw #IPRNews #IPIndiaupdate #Trademark #Copyright #DesignLaw #PatentLaw #Law #Legal #IndianIPUpdate #AdvocateAjayAmitabhSuman #IPAdjutor

=====

Yokogawa Electric Corporation Vs. Union of India

Introduction: The case of Yokogawa Electric Corporation v. Union of India represents a significant judicial pronouncement on the procedural rigours governing trademark opposition proceedings in India, particularly concerning the nature of time limits prescribed for filing evidence in support of opposition under the Trade Marks Rules. Decided by the High Court of Madras, the judgment underscores the imperative of adhering to strict timelines in trademark disputes to prevent undue delays in the registration process. 

The court was confronted with a challenge to the Deputy Registrar of Trade Marks' refusal to accept belated evidence filed by the opponent, raising a pivotal question that has divided judicial opinions across various High Courts: whether the time limits under Rule 50 of the Trade Marks Rules, 2002 (and by extension, analogous provisions in subsequent rules) are mandatory or directory. By aligning itself with the stricter interpretation adopted by the Delhi High Court and rejecting the more lenient view of the Gujarat High Court, the Madras High Court reinforced the policy objective of expediting trademark registrations while curtailing procedural indulgences that could prolong opposition proceedings indefinitely.

Factual Background: Yokogawa Electric Corporation, a Japanese entity renowned globally for its solutions in industrial automation, control, test, and measurement, has long used the trademark CENTUM/CENTUM. Upon discovering that Centum Industries Pvt. Ltd., the third respondent, had applied for registration of a similar mark in Class 09 under Application No. 1587782, Yokogawa promptly filed a Notice of Opposition on 17 November 2011. The third respondent's counter-statement was served on Yokogawa on 19 March 2012, triggering the period for filing evidence in support of the opposition. Yokogawa sought extensions of time, first until 19 June 2012 and subsequently until 19 September 2012, citing the need to collate documents from its offices spread across multiple countries. Eventually, on 24 August 2012, Yokogawa filed an interlocutory petition along with an affidavit of evidence, which was served on the third respondent. However, the Deputy Registrar rejected this evidence vide order dated 21 October 2014, holding that Rule 50 evidence is mandatory and that the Registrar lacks power to extend time beyond the prescribed limits, relying on decisions of the Intellectual Property Appellate Board (IPAB).

Procedural Background: The opposition proceedings commenced with Yokogawa's timely notice of opposition, followed by the third respondent's counter-statement. Under the Trade Marks Rules, 2002, Rule 50 mandated that evidence in support of opposition be filed within two months of receipt of the counter-statement, extendable by the Registrar for a further period not exceeding one month in aggregate. Yokogawa's requests for extensions and subsequent filing through an interlocutory petition fell outside this window. The Deputy Registrar's impugned order explicitly declined to take the late evidence on record, emphasising the binding nature of IPAB precedents that curtailed the Registrar's discretion. Aggrieved, Yokogawa filed the writ petition under Article 226 in 2015 (after receiving the order copy that year), seeking certiorarified mandamus to quash the Registrar's order and direct acceptance of the evidence. 

Reasoning and Decision of Court: The Madras High Court looked into conflicting judicial precedents on the interpretation of Rule 50 of the 2002 Rules. It noted the Gujarat High Court's view in Wyeth Holdings that the provision was directory, drawing from principles of subordinate legislation and the Supreme Court's observations in Salem Advocate Bar Association regarding the contextual interpretation of the word "shall". In contrast, the court placed greater reliance on Delhi High Court decisions in Sunrider Corporation v. Hindustan Lever Limited and Mahesh Gupta v. Registrar of Trademarks, which highlighted deliberate legislative changes: the inclusion of "not exceeding one month in aggregate" as a cap on extensions and the removal of discretionary phrases like "unless the Registrar otherwise directs" from earlier rules. These amendments, the Delhi High Court reasoned, manifested a clear intent to make the timeline mandatory and to deem opposition abandoned upon non-compliance. The Madras High Court found this reasoning persuasive, observing that even under the Trade Marks Rules, 2017 (where the one-month extension phrase was omitted), the absence of discretionary language reinforced the mandatory nature. The court emphasised the Trade Marks Registry's policy of strict timelines to prevent opponents from indefinitely stalling registrations. Consequently, it held that the Registrar lacked power to condone delays beyond the prescribed period, dismissed the writ petition as devoid of merit, and upheld the impugned order without costs.

Point of Law Settled in the Case

The judgment settles, within the jurisdiction of the Madras High Court, that the time limit for filing evidence in support of trademark opposition under Rule 50 of the Trade Marks Rules, 2002 (and corresponding provisions in the 2017 Rules) is mandatory rather than directory. The Registrar possesses no discretion to extend time beyond the statutory maximum of one month aggregate extension under the 2002 Rules, and failure to file evidence within the overall three-month window results in deemed abandonment of the opposition. By expressly preferring the Delhi High Court's interpretation over that of the Gujarat High Court and the IPAB's earlier view in Sahil Kohli (which treated similar provisions under the 2017 Rules as directory by invoking Section 131 of the Trade Marks Act, 1999), the court has aligned itself with a stricter construction that prioritises expeditious disposal of trademark applications. This ruling reinforces the legislative intent evident from deliberate drafting changes aimed at curtailing delays and establishes that procedural lapses in opposition evidence cannot be condoned indefinitely, thereby promoting certainty and efficiency in trademark adjudication.

Case Title: Yokogawa Electric Corporation Vs. Union of India & Ors.

Date of Order: 10.10.2025

Case Number: W.P. No. 5703 of 2016

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Mr. Justice M. Dhandapani

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

Mandatory Timelines in Trademark Opposition: Madras High Court Upholds Strict Compliance in Yokogawa Electric Corporation v. Union of India

Deemed Abandonment of Opposition: Analysing the Mandatory Nature of Evidence Filing under Trade Marks Rules

Yokogawa Electric Corporation v. Union of India: Reinforcing Procedural Rigour in Trademark Opposition Proceedings

Suggested Tags

Trademark Law, Opposition Proceedings, Rule 50 Trade Marks Rules 2002, Mandatory vs Directory Provisions, Deemed Abandonment, Madras High Court, Delhi High Court Precedents, Trade Marks Registry, Evidence Filing Timeline, Intellectual Property Law

Headnote

Madras High Court holds that time limit for filing evidence in support of trademark opposition under Rule 50 of Trade Marks Rules, 2002 is mandatory; Registrar lacks discretion to condone delay beyond one month aggregate extension; opposition deemed abandoned upon non-compliance; court prefers Delhi High Court's strict interpretation over Gujarat High Court's directory view; writ petition challenging refusal to accept belated evidence dismissed.

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Yokogawa Electric Corporation, a Japanese entity using the trademark CENTUM worldwide, opposed the registration of a similar mark applied for by Centum Industries Pvt. Ltd. in Class 09 under Application No.1587782, filing a Notice of Opposition on 17.11.2011. The counter-statement was served on Yokogawa on 19.03.2012, triggering the period to file evidence in support of opposition under Rule 50 of the Trade Marks Rules, 2002. Yokogawa sought extensions and eventually filed evidence via interlocutory petition on 24.08.2012, which the Deputy Registrar rejected on 21.10.2014, holding Rule 50 evidence mandatory with no power to extend time beyond the prescribed limits.

Yokogawa challenged this order via writ petition in 2015, relying on Gujarat High Court's directory interpretation in Wyeth Holdings, while respondents cited Delhi High Court's mandatory view in Aman Engineering Works and others. The Madras High Court agreed with the Delhi High Court's reasoning on deliberate legislative changes capping extensions at one month aggregate and removing Registrar's discretion, held the timeline mandatory even under analogous 2017 Rules, upheld the rejection, and dismissed the writ as devoid of merit.

• The time limit for filing evidence in support of trademark opposition under Rule 50 of the Trade Marks Rules, 2002 is mandatory, with the Registrar having no discretion to extend beyond one month aggregate (total three months from service of counter-statement), leading to deemed abandonment upon non-compliance [Paras 11, 12].
• The removal of discretionary phrases and inclusion of "not exceeding one month in aggregate" in Rule 50(1) of 2002 Rules manifests legislative intent for strict timelines; similar mandatory nature applies even under Rule 45 of Trade Marks Rules, 2017 despite omission of extension phrase [Paras 10,(46)].

Case Title: Yokogawa Electric Corporation Vs. Union of India:10.10.2025:W.P. No. 5703 of 2016:MadHC:The Honourable Mr. Justice M. Dhandapani

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

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