S.S. White Burs Inc. Vs The Registrar of Trade Marks

S.S. White Burs Inc. Vs. The Registrar of Trade Marks:25.04.2026:C.O. (COMM.IPD-TM) No. 448/2022:2026:DHC:3478:Hon’ble Ms. Justice Manmeet Pritam Singh Arora

In a detailed judgment concerning cross-rectification petitions over the trademark ‘S.S. WHITE’ used for dental care products, the Delhi High Court allowed the petition filed by S.S. White Burs Inc., a U.S.-based company, and directed cancellation of the Indian company’s registration while dismissing the counter-rectification petition.

Background

S.S. White Burs Inc. (Petitioner), a pioneer in dental products since 1844, claimed global rights in the coined mark ‘S.S. WHITE’ through a chain of title originating from its founder Dr. Samuel Stockton White. It held a prior Indian registration (No. 609897 in Class 10, applied in 1993) and asserted trans-border reputation and use in India since 1991 through distributors. The Petitioner sought rectification of Trade Mark Registration No. 2147676 in Classes 5 and 10 granted to S.S. White Dental Private Limited (Respondent), an Indian company incorporated in 1992, which had applied for the mark in 2011 and obtained registration in 2013.

The Respondent claimed honest adoption of ‘S.S. WHITE’ in 1991–92 at the instance of S.S. White, U.K., along with prior use in India. The parties were also litigating parallel commercial suits.

Key Findings

Justice Manmeet Pritam Singh Arora held that the Petitioner established prior, bona fide, and continuous global proprietary rights in the inherently distinctive coined mark ‘S.S. WHITE’, including territorial assignment under 1986 agreements (and amendments) granting it worldwide rights except in the UK, France, and Brazil. 

The Court found substantial evidence of the Petitioner’s use and reputation in India since at least 1991, supported by sales data, affidavits, and worldwide registrations in over 90 countries.On the Respondent’s adoption, the Court ruled it was unauthorized and dishonest. The Respondent failed to produce any written authorization from S.S. White, U.K., whose own written statement in connected proceedings denied granting any such permission. Contemporary 1993 cease-and-desist notices from UK solicitors (asserting the Petitioner’s rights) put the Respondent on notice, yet it persisted with use. The Court highlighted inconsistencies in the Respondent’s stand — claiming derivation from S.S. White, U.K. in suits, but describing the name as an acronym (“Surgical Scientific White”) before the Registrar of Companies — rendering its adoption lacking in bona fides.

The Court further noted the Respondent’s slavish imitation of the Petitioner’s stylized device mark, evidencing bad faith under Section 11(10) of the Trade Marks Act, 1999. Procedural lapses in the original registration (improper classification and examination) were also considered, though the dishonesty finding was decisive.

The Respondent’s defences — including delay, lack of opposition, honest concurrent use, and absence of trans-border reputation — were rejected. The Court clarified that the Petitioner qualified as a “person aggrieved” and that prior knowledge did not bar rectification in cases of dishonest adoption.

Outcome

The Court allowed C.O. (COMM.IPD-TM) No. 448/2022, directing rectification of the Register by cancelling the Respondent’s impugned registration No. 2147676. Consequently, the Respondent’s counter-petition (C.O. (COMM.IPD-TM) No. 299/2023) was dismissed as it did not survive.

This judgment reinforces principles of prior rights in coined marks, strict scrutiny of claims of honest adoption (especially when derivative), and the relevance of bad faith and stylistic imitation in rectification proceedings under the Trade Marks Act, 1999. It underscores that territorial assignments and global reputation can prevail over local claims of concurrent use when adoption lacks bona fides.

Case Details: S.S. White Burs Inc. versus The Registrar of Trade Marks & Anr. and connected matter, Order dated 25.04.2026, C.O. (COMM.IPD-TM) 448/2022 (lead) & 299/2023, Delhi High Court, Honourable Ms. Justice Manmeet Pritam Singh Arora.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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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**Delhi High Court Cancels Indian Company’s ‘S.S. WHITE’ Trademark Registration, Upholding Global Rights of U.S. Pioneer in Dental Products**

**Introduction**  

In a significant ruling on trademark rights in the dental industry, the Delhi High Court resolved a long-standing dispute between an American company with roots dating back to the 19th century and an Indian firm over the use of the mark ‘S.S. WHITE’. The Court examined claims of prior global ownership, honest adoption, and bad faith registration, ultimately protecting the established international brand while highlighting the importance of genuine and lawful adoption of trademarks in India.

**Factual Background**  

The American company, S.S. White Burs Inc., traces its origins to a dentist named Dr. Samuel Stockton White who started making dental products in the United States in 1844 under the name ‘S.S. WHITE’. Over the decades, this coined mark became well-known worldwide for dental tools and supplies. Through business transfers and agreements in the 1980s, the U.S. company gained exclusive rights to the mark across most of the world, including India, while certain countries like the United Kingdom, France, and Brazil were treated separately. The American firm had been selling its products in India through distributors since the early 1990s and held an Indian trademark registration from the 1990s.

The Indian company, S.S. White Dental Private Limited, was incorporated in the early 1990s. It claimed it adopted the name ‘S.S. WHITE’ after discussions with a director from the UK branch of the brand for selling and making dental goods in India. The Indian firm registered the mark ‘S.S. WHITE’ in 2013 for dental and related products after applying in 2011. Both sides accused each other of copying and infringing rights, leading to parallel court cases.

**Procedural Background**  

The U.S. company filed a petition before the Delhi High Court seeking to cancel the Indian company’s trademark registration, arguing it was wrongly granted and obtained through improper means. In response, the Indian company filed its own petition to cancel the U.S. company’s earlier registration. These cross-petitions were heard together, with the U.S. company’s petition treated as the main one. The Court also considered pleadings and documents from related commercial suits between the parties. The Indian company did not file a formal reply in the main petition, though it submitted written arguments drawing from the connected cases. After hearing detailed submissions from both sides, the Court reserved judgment and delivered its decision on 25 April 2026.

**Reasoning**  

The Court first looked at the history of the mark and found that ‘S.S. WHITE’ was a specially created, distinctive name with a clear chain of ownership leading to the U.S. company for most parts of the world, including India. Evidence showed the American firm had built a strong global reputation over many years, with products reaching India through regular channels well before the Indian company’s adoption. The U.S. company had actively protected its rights worldwide and acted promptly once it learned of the Indian firm’s use.

Turning to the Indian company’s claim, the Court found its adoption was not independent or honest. The Indian firm said it received permission from the UK branch, but no written proof was provided, and the UK entity itself denied giving any such authorization in related proceedings. Old letters from the early 1990s showed the Indian company was warned about unauthorized use of the name, yet it continued. The Court noted inconsistencies in the Indian company’s explanations — one version linked the name to a foreign collaborator, while another described it as a simple abbreviation for its business activities. This shifting stand suggested the adoption was not straightforward.

The Court also observed that the Indian company had copied not just the words but the special stylized way the U.S. company presented its mark, which pointed to an attempt to ride on the established reputation. Even though the Indian firm had been using the name locally for some time, the Court held that such use did not create superior rights when the original adoption lacked genuine permission from the true owner for the Indian territory.

**Judgements with Complete Citation and Their Context Discussed**  

The Court referred to principles from earlier cases to support its view on bad faith adoption. It discussed the ruling in *Kia Wang v. The Registrar of Trademarks & Anr.* (2023: DHC: 6684), where a coordinate bench cancelled a registration because the respondent had copied the stylized device mark of the petitioner for similar goods. In that context, the Court explained that imitating the distinctive presentation of a mark, combined with identical goods, shows bad faith and makes the registration vulnerable to cancellation under relevant provisions of the Trade Marks Act. This helped illustrate why slavish copying of style strengthens a case for rectification.

The judgment also touched upon the need for honest concurrent use and proper examination at the trademark registry, referencing the broader framework under the Act that protects prior rights and prevents misleading registrations. While discussing trans-border reputation, the Court kept in mind settled ideas from Supreme Court precedents like *Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd.* (AIR 2018 SC 167), emphasizing that reputation can spill over into India through specialized fields even without massive local advertising.

**Final Decision of Court**  

The Delhi High Court allowed the main petition filed by the U.S. company and directed the cancellation of the Indian company’s trademark registration for ‘S.S. WHITE’. As a result, the counter-petition by the Indian company did not survive and was dismissed. The Court made it clear that the U.S. company’s prior and legitimate rights prevailed, and the Indian registration could not stand due to the circumstances of its adoption and registration.

**Point of Law Settled in the Case**  

This judgment settles that when a trademark has a clear international owner with prior rights in a territory, a local party cannot claim honest adoption merely by asserting oral permission from a related but unauthorized entity, especially when contemporaneous records show awareness of the true owner’s rights. Copying the stylized form of an established mark further indicates bad faith, making the registration liable to be removed. The decision reinforces that genuine permission or assignment from the rightful proprietor is essential for building independent rights, and shifting explanations about adoption can undermine a party’s claim before the court.

**Case Detail:** S.S. White Burs Inc. versus The Registrar of Trade Marks & Anr. and connected matter, Order dated 25.04.2026, C.O. (COMM.IPD-TM) 448/2022 (lead petition) & 299/2023, Delhi High Court, Honourable Ms. Justice Manmeet Pritam Singh Arora.

**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:**  

1. Delhi High Court Protects Century-Old U.S. Dental Brand, Cancels Indian Firm’s ‘S.S. WHITE’ Trademark  

2. Honest Adoption Under Scanner: Delhi High Court Cancels ‘S.S. WHITE’ Registration in Dental Products Dispute  

3. Prior Global Rights Prevail: Key Trademark Rectification Ruling by Delhi High Court in ‘S.S. WHITE’ Case  

**Suitable Tags:**  

#TrademarkRectification #DelhiHighCourt #IPCaseLaw #TrademarkLaw #HonestAdoption #BadFaith #DentalProducts #IPRUpdate #IndianIPLaw #TrademarkDispute #S.S.White #IPAdjutor #AdvocateAjayAmitabhSuman #TrademarkCancellation

**Headnote of Article:**  

Delhi High Court cancels Indian company’s ‘S.S. WHITE’ trademark registration holding its adoption unauthorized and lacking bona fides despite local use; upholds prior global rights of U.S. pioneer in dental products and emphasizes that imitation of stylized mark and inconsistent explanations indicate bad faith under trademark law.

Sanjeev Gaur Vs The State of Assam

Gauhati High Court Upholds Cognizance in Intellectual Property Theft Dispute Involving Surgical Glove Manufacturing Machines

Case Title: Sanjeev Gaur & Anr. v. State of Assam & Anr.

Case No.: Crl.Pet./1526/2024

Decided on: 23.04.2026

Coram: Honourable Mr. Justice Pranjal Das

In a significant ruling concerning territorial jurisdiction and prima facie case in intellectual property-related offences, the Gauhati High Court dismissed a petition under Section 528/529 BNSS, 2023, seeking quashing of criminal proceedings in CR Case No. 40 of 2024.

Background

The informant, M/s Anondita Healthcare Pvt. Ltd., alleged that the petitioners — Sanjeev Gaur (petitioner No. 1) and Ranjit Kumar Yadav (petitioner No. 2, a former employee) — conspired to steal the design of an indigenously developed machine used for manufacturing surgical gloves. The machine was conceptualized in 2013, became operational in October 2013, and its design was registered under the Designs Act, 2002 on 18.04.2016. The company claimed the machine was assembled in Noida and later shifted to its factory in Village Kurshala, Paneri, Kamrup (under Boko Police Station jurisdiction) in 2015.

It was alleged that petitioner No. 2, while working as Assistant Production Manager till July 2019 at the Assam factory, had access to the confidential design and shared it with petitioner No. 1 after being induced with better pay and bribes. Petitioner No. 2 later joined petitioner No. 1’s company, M/s Swear Healthcare Pvt. Ltd., at Dholpur, Rajasthan, where an allegedly identical machine was manufactured, causing wrongful loss to the informant and gain to the petitioners.

An initial FIR (Boko P.S. Case No. 826/2021) under Sections 120(B), 408, 420 IPC read with Section 63 of the Copyright Act and Sections 103/104 of the Trade Marks Act was registered. However, the police filed a final report (FR No. 168/2023) citing insufficient evidence. The informant then filed a protest petition and a private complaint dated 28.06.2024, registered as CR Case No. 40/2024.

Proceedings Before the Magistrate

The learned JMFC, Boko, examined the complainant under Section 200 CrPC and three witnesses (CW1–CW3) under Section 202 CrPC. The witnesses consistently deposed about petitioner No. 2’s involvement in the design process, his communications with petitioner No. 1 regarding the machine, and the identical nature of the machine observed at the Rajasthan factory. On 21.08.2024, the Magistrate took cognizance under Sections 408, 420, 120(B) IPC read with Section 63 of the Copyright Act and Sections 103/104 of the Trade Marks Act, and issued summons.

High Court’s Decision

The petitioners contended that:

The complaint was malicious and stemmed from business rivalry.

The Boko court lacked territorial jurisdiction, as the alleged copied machine was operating in Rajasthan.

No prima facie case existed, especially after the police final report.

Justice Pranjal Das rejected both grounds. On territorial jurisdiction, the Court held that part of the offence (design theft and access to the machine) occurred within the jurisdiction of Boko Police Station in Assam, where the informant’s machine operated and the former employee had worked. Relying on Sections 177 and 178 CrPC (corresponding to Sections 197 and 198 BNSS), the Court ruled that even if the offence had multiple limbs across jurisdictions, the Boko court had jurisdiction since a part of the cause of action arose there. The decisions in Y. Abraham Ajith (2004) 8 SCC 100 and Bhura Ram (2008) 11 SCC 103 were distinguished, as those cases involved no part of the offence in the concerned jurisdiction.

On merits, the Court found that the complainant and witnesses’ statements disclosed a prima facie case of criminal conspiracy, breach of trust, cheating, and IP violations. The Magistrate had applied his mind and properly scrutinized the evidence before taking cognizance, in line with the principles laid down in Sujoy Ghosh v. State of Jharkhand (SLP (Crl) No. 9452 of 2025). The police final report did not bar the private complaint.

Outcome

The High Court upheld the cognizance order dated 21.08.2024 and dismissed the petition. The stay on proceedings was vacated.

This judgment reaffirms that in cases involving multi-jurisdictional economic and IP offences, courts can exercise jurisdiction where any part of the offence occurs, and private complaints can proceed even after a police closure report if sufficient material discloses a prima facie case.

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Factual and Procedural Background

A company called M/s Anondita Healthcare Pvt Ltd was making surgical gloves using a special machine they had designed themselves in their factory near Boko in Assam. They alleged that one of their former employees, Ranjit Kumar Yadav, who had worked closely with the machine and knew all its details, secretly shared the design with another businessman named Sanjeev Gaur. Gaur then started producing very similar machines in his factory in Dholpur, Rajasthan, through his company Swear Healthcare. The company claimed this caused them heavy losses. They first filed a police complaint in Assam in 2021, but after investigation the police submitted a final report saying there was not enough evidence. Not satisfied, the company filed a private complaint before the local magistrate in Boko in 2024. The magistrate heard the company owner and three witnesses who described how the employee had access to the design, spoke about making similar machines for Gaur, and how an identical machine was later seen in Rajasthan. Based on these statements, the magistrate took cognizance of offences like cheating, criminal conspiracy, breach of trust, and violations related to copyright and trademarks, and issued summons to both men.

Dispute in Question

The petitioners Sanjeev Gaur and Ranjit Kumar Yadav approached the Gauhati High Court to get the entire criminal case quashed. They argued that the case was nothing but a business rivalry turned into a criminal matter, that the police had already found no evidence, and most importantly that the court in Assam had no jurisdiction because the accused were operating their machines in Rajasthan, far away from Assam. They also said there was no strong enough case to even summon them.

Judgement with Complete Citation their Context Referred, Reasoning and Decision of Court

Justice Pranjal Das of the Gauhati High Court carefully examined the matter and delivered the judgment on 23 April 2026 in the case of Sanjeev Gaur and Anr. versus The State of Assam and Anr. The court referred to the landmark Supreme Court decisions on territorial jurisdiction such as Y. Abraham Ajith & Ors Vs. Inspector of Police, Chennai (2004) 8 SCC 100 and Bhura Ram & Ors Vs. State of Rajasthan & Anr (2008) 11 SCC 103, which explain that a court has jurisdiction only if part of the offence has occurred within its area. The court also relied on the recent Supreme Court ruling in Sujoy Ghosh Vs. The State of Jharkhand & Anr (SLP (Crl) No. 9452 of 2025), which lays down clear principles that summoning an accused is a serious step and the magistrate must apply his mind to see if a prima facie offence is made out from the complaint and witness statements.

The High Court reasoned that even though the copied machines were being used in Rajasthan, a significant part of the alleged offence – including the development and operation of the original machine, the employee’s access to its confidential design while working in the Assam factory, and the alleged stealing of that design – had taken place within the jurisdiction of the Boko court in Assam. Therefore, under the rules of territorial jurisdiction, the local magistrate had the power to hear the case. The court further observed that the statements given by the complainant and the three witnesses were consistent and detailed enough to show a basic case of wrongdoing against the petitioners. The magistrate had properly examined the material before taking cognizance and issuing summons, and the earlier police closure report did not prevent the private complaint from proceeding when fresh evidence was placed before the court. Finding no merit in the petition, the High Court upheld the magistrate’s order dated 21 August 2024, dismissed the quashing petition, and vacated the stay on the proceedings.

One Important Legal Point Settled in this Case

Even when the main manufacturing activity or the accused persons are located in another state, a criminal court can still exercise jurisdiction if any important part of the alleged offence, such as the place where the original machine operated or where the design was allegedly stolen, occurred within its local area. This allows cases involving intellectual property theft and business disputes spanning multiple states to be tried where a substantial connection exists.

Case Details: Sanjeev Gaur and Anr. versus The State of Assam and Anr., Order dated 23.04.2026, Case No. Crl.Pet./1526/2024, Gauhati High Court, Honourable Mr. Justice Pranjal Das.

Disclaimer: Donot treat this as substitute for legal advise as it may contain subjective errors.

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

Crystal Crop Protection Limited Vs. Sudpita Dey, Assistant Controller of Patents and Designs & Ors.

Combinations of known ingredients is non patentable, in absence of unexpected enhancement

Introduction

Patents protect new inventions that are useful, novel, and involve an inventive step. In the field of agrochemicals, companies often try to patent combinations of existing active ingredients, claiming they work better together than separately. This case highlights the challenges in obtaining patent protection for such combinations when prior publications already describe similar mixtures. The court examined whether a specific insecticidal formulation using Fipronil and Emamectin Benzoate in a suspension concentrate (SC) form deserved a patent, or whether it was anticipated by existing knowledge in the public domain.

The judgment provides a clear example of how Indian courts apply the tests of novelty (newness) and inventive step (non-obviousness) under the Patents Act, 1970. It is particularly useful for understanding how prior art documents from other countries (here, Chinese patents) can block a patent grant in India if they disclose the same or very similar invention.

Factual Background

Crystal Crop Protection Limited filed Patent Application No. 1607/DEL/2010 on July 8, 2010, titled “Insecticidal Composition.” The invention claimed a broad-spectrum insecticide made by combining two active ingredients: Fipronil (a phenyl-pyrazole insecticide that disrupts the insect nervous system) at exactly 3.5% w/w and Emamectin Benzoate (an avermectin-class insecticide) at exactly 1.5% w/w, formulated as a suspension concentrate (SC).

The company argued that this specific combination and formulation offered a synergistic effect — meaning the two chemicals together killed insects more effectively than the sum of their individual effects. It claimed the product controlled both biting/chewing insects (like Spodoptera, fruit borers, Helicoverpa) and sucking insects (mites, leaf miners, thrips) in a single, cost-effective, and environment-friendly product. The appellant emphasized that no single prior product effectively handled such a wide range of pests without higher costs or environmental harm.

The complete specification highlighted lower dosage requirements, reduced residues, rain-fastness (not washing off easily), and better safety for non-target organisms. The independent Claim 1 specifically defined the composition with the exact percentages and SC form, while dependent claims covered adjuvants and their concentrations.

Procedural Background

After filing, the application underwent examination. The First Examination Report (FER) was issued in 2017, and the applicant responded and amended claims in 2019. Between 2017 and 2021, four pre-grant oppositions were filed by different parties, including Respondent No. 3 (represented by Advocate Ajay Amitabh Suman). The applicant replied to these oppositions.

A hearing was held before the Assistant Controller of Patents and Designs on November 23, 2021. On January 11, 2022, the Assistant Controller refused the application on three main grounds:

• Lack of novelty (the invention was not new);
• Lack of inventive step (it was obvious to a skilled person);
• Non-patentability under Section 3(d) of the Patents Act (mere new form of a known substance without enhanced efficacy).

The appellant filed an appeal under Section 117A of the Patents Act before the Delhi High Court, arguing that the Controller’s order lacked proper reasoning, failed to consider the synergistic effect, and misapplied the law on novelty and obviousness. The appellant relied on the Delhi High Court’s earlier decision in Biomoneta Research Pvt. Ltd. vs. Controller General of Patents (2023 SCC OnLine Del 1482) to support patentability of synergistic combinations.

Respondent No. 3 strongly defended the refusal, pointing out that multiple Chinese prior art documents already disclosed the same combination of Fipronil and Emamectin Benzoate in similar concentrations and formulations.

Reasoning

The court, through Justice Tushar Rao Gedela, carefully analyzed the invention and the cited prior arts. It first summarized the problem the invention sought to solve and the claimed solution, including the alleged synergy.

Lack of Novelty

The court found that the invention lacked novelty primarily because of two Chinese documents:

• CN1969627 (CN'627): Embodiment 5 explicitly disclosed a composition with exactly 3.5% Fipronil and 1.5% Emamectin Benzoate. Claim 8 described formulations as “suspending agent” (which corresponds to suspension concentrate/SC). The abstract and claims covered the same range of pests. The court noted that the specific percentages fell within the broad ranges disclosed, and the SC form was expressly taught.
• CN101019546 (CN'546): Example 5 again disclosed the identical 3.5% Fipronil + 1.5% Emamectin Benzoate combination, with co-toxicity coefficient showing synergy, and mentioned possible formulations including aqueous emulsions.

The court held that a single prior art document anticipating all essential features of the claim destroys novelty. Here, the exact active ingredients, their precise concentrations in one case, and the formulation type were already public knowledge. Minor differences in other components (like presence of synergists in some examples) did not save the claim, as the core combination was disclosed.

Lack of Inventive Step (Obviousness)

Even if not entirely anticipated, the court found the invention obvious to a person skilled in the art (PSA). It examined several additional documents:

• CN101066055A (CN'055) and CN101151970A (CN'970): These taught combinations of Fipronil and Emamectin Benzoate (or its derivatives) in overlapping ratios, with adjuvants, and various formulations including suspensions. They encouraged mixtures to reduce resistance and improve efficacy.
• CN1911037 (CN'037): Disclosed SC formulations of the same pair with ratios covering the claimed amounts, field trials showing good control, and synergy data.
• CN1579160 (CN'160): Explicitly taught synergistic pesticidal compositions of Fipronil and Emamectin Benzoate in suspension form, with examples and preparation methods.

The court explained that combining teachings from these documents (all in the same technical field of crop protection) would obviously lead a skilled formulator to the claimed specific percentages and SC form. SC formulations were a standard, well-known type in the industry for water-based, environment-friendly delivery. The alleged synergy was also demonstrated or suggested in prior arts.

The court rejected the argument of “teaching away” or improper mosaicing, noting that when documents disclose similar products in the same field, it reflects the state of the art rather than impermissible combining of unrelated teachings (Sterlite Technologies Ltd. v. HFCL Ltd., 2022 SCC OnLine Del 2895).

It also clarified the correct approach to inventive step, drawing from Agriboard International LLC vs. Deputy Controller of Patents (2022 SCC OnLine Del 940): the Controller must compare (i) the prior art, (ii) the claimed invention, and (iii) how a PSA would obviously bridge them. The impugned order satisfied this test.

Other Grounds

The court found it unnecessary to examine Section 3(d) (new form without enhanced efficacy) or sufficiency of disclosure once novelty and inventive step objections were upheld.

On the appellant’s procedural challenge (alleged non-application of mind or copy-pasting), the court held that mere similarity in reasoning with opposition submissions does not invalidate the order if independent analysis is evident. Here, the Controller had examined each prior art in detail.

Judgements with Complete Citation and Their Context Discussed

The court referred to and applied several key precedents to guide its analysis:

• Biomoneta Research Pvt. Ltd. vs. Controller General of Patents, Designs and Anr. (2023 SCC OnLine Del 1482): Cited by the appellant to argue that synergistic combinations of known ingredients can be patentable if they show unexpected enhancement. The court distinguished it on facts, as the prior arts here already suggested or demonstrated synergy for the same pair.
• Sterlite Technologies Ltd. v. HFCL Ltd. (2022 SCC OnLine Del 2895): Used to explain that using multiple documents disclosing similar products in the same field does not amount to impermissible “mosaicing.” It reflects the cumulative state of the art.
• Agriboard International LLC vs. Deputy Controller of Patents and Designs (2022 SCC OnLine Del 940): Provided the three-step framework for assessing inventive step — prior art disclosure, claimed invention, and obviousness to PSA. The court confirmed the Controller followed this structured approach.

These citations were discussed in the context of ensuring that patent refusals are reasoned, that obvious combinations in a crowded field like pesticides do not qualify for protection, and that synergy claims must be evaluated against existing disclosures.

Final Decision of the Court

The Delhi High Court upheld the Assistant Controller’s refusal order in its entirety. The appeal was dismissed without any order as to costs. The court concluded that the claimed composition lacked both novelty and inventive step, making it unpatentable under the Patents Act. It did not find any infirmity in the Controller’s reasoning warranting interference or remand for fresh consideration.

Point of Law Settled in the Case

A specific selection of known active ingredients in precise percentages and a standard formulation type (like SC) does not automatically qualify for a patent if prior publications already disclose the same combination, similar ratios, and the formulation option. Synergy, while potentially patentable in principle, must be genuinely unexpected and not suggested or shown in existing literature.

Controllers and courts must apply a structured analysis for inventive step, but when the field is well-developed and multiple documents point in the same direction, the invention is likely obvious. Mere procedural arguments about “copy-pasting” will not succeed if the final decision shows application of mind to the key issues.

The case underscores that patents are not granted for incremental or routine improvements in agrochemical formulations when the core idea is already in the public domain through foreign prior art.

Case Title: Crystal Crop Protection Limited Vs. Sudpita Dey, Assistant Controller of Patents and Designs & Ors.

Date of Order: 08 April 2026

Case Number: C.A.(COMM.IPD-PAT) 86/2022

Neutral Citation: 2026:DHC:2926

Name of Court: High Court of Delhi

Name of Hon'ble Judge: 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

Suggested Titles for the Article:

1. Delhi High Court Remands Insecticide Patent: Reasoned Order Required for Synergistic Fipronil-Emamectin Composition
2. Synergistic Insecticidal Formulation Gets Second Chance: Key Takeaways from Crystal Crop Protection Patent Appeal
3. Why the Delhi High Court Set Aside Refusal of Broad-Spectrum Pesticide Patent
4. Patent Office Must Apply Mind Independently: Lessons from Crystal Crop’s Successful Appeal

Suitable Tags:

Patent Appeal, Insecticidal Composition, Synergistic Effect, Fipronil, Emamectin Benzoate, Section 3(d), Lack of Novelty, Inventive Step, Pre-Grant Opposition, Delhi High Court, Suspension Concentrate, Reasoned Order, Agrochemical Patent

Headnote of the Article

In Crystal Crop Protection Limited v. Sudpita Dey (2026), the Delhi High Court set aside the refusal of a patent for a synergistic insecticidal composition of 3.5% Fipronil and 1.5% Emamectin Benzoate in suspension concentrate form. The court held that the Assistant Controller’s order lacked independent reasoning, failed to properly address the applicant’s arguments on novelty, inventive step, and synergy, and improperly invoked Section 3(d). Remanding the application for fresh consideration, the judgment reinforces the requirement of reasoned, speaking orders in patent proceedings and proper evaluation of synergistic combinations under Indian patent law.

Kamal Raheja Vs. Hahnemann Pure Drug Co.

Infringement Protection Independent of Commercial Use

Introduction

In a straightforward yet important ruling on trademark protection in the pharmaceutical and skincare sector, a Division Bench of the Delhi High Court on 8 July 2025 dismissed an appeal by Kamal Raheja challenging an interim injunction restraining him from using the mark “MARKS GO” for skincare cream. The court held that the registered proprietor of a trademark enjoys exclusive rights to prevent infringement regardless of whether the mark is currently in commercial use due to a suspended drug manufacturing licence.

The Court clarified that lack of commercial exploitation does not automatically defeat an infringement action at the interim stage. The remedy for non-use lies in a separate rectification application under Section 47 of the Trade Marks Act, not as a defence in an infringement suit. This decision reinforces that valid registration provides strong prima facie protection, and infringing parties cannot escape liability by pointing to regulatory issues faced by the brand owner.

Factual Background

Hahnemann Pure Drug Co., the respondent, is the registered proprietor of the trademark “MARKS GO” in Class 5 under the Trade Marks Act, 1999, with registration dating back to 14 September 2010. The mark covers skincare cream and related products. The company discovered that Kamal Raheja, the appellant, was manufacturing and selling similar skincare products under the identical mark “MARKS GO”.

Hahnemann filed a commercial suit (CS(COMM) 346/2023) before the District Judge (Commercial Court-02), Rohini, seeking a permanent injunction against the appellant for trademark infringement. Along with the suit, it moved an application under Order XXXIX Rules 1 and 2 of the CPC for an interim injunction. On 8 June 2023, the trial court granted an ex parte ad interim injunction restraining the appellant and others from using “MARKS GO” or any deceptively similar mark for skincare products.

The appellant filed an application under Order XXXIX Rule 4 CPC seeking vacation of the injunction. Meanwhile, the respondent faced regulatory action: its drug manufacturing licence was suspended following a show cause notice under the Drugs and Cosmetics Act, 1940. The appellant argued that due to this suspension, the respondent could not commercially exploit the mark and thus had no justification to seek an injunction.

On 7 March 2025, the learned Commercial Court allowed the respondent’s injunction application, making the ex parte order absolute, and dismissed the appellant’s vacation application. It found the rival marks identical, used for similar goods, and rejected the appellant’s plea of acquiescence while noting the respondent’s registration and the appellant’s lack of priority.

Procedural Background

The suit was instituted in 2023. The trial court promptly granted an ex parte ad interim injunction on 8 June 2023. After hearing both sides on the interim applications, the Commercial Court passed the detailed impugned order on 7 March 2025, confirming the injunction and rejecting the vacation plea.

Aggrieved, Kamal Raheja filed the present appeal under Section 13 of the Commercial Courts Act read with Order XLIII Rule 1(r) CPC before the Delhi High Court (FAO(COMM) 105/2025), along with applications for stay and other reliefs. The appeal was heard as an oral judgment on 8 July 2025.

Reasoning

The Division Bench noted that the appellant did not contest the core issues of registration, identity of marks, or similarity of goods. The sole argument was that the respondent’s drug licence suspension prevented commercial use of “MARKS GO”, rendering the injunction unjustified.

The court rejected this submission outright. It explained that rights against infringement flow directly from valid registration under Section 28(1) of the Trade Marks Act. Once a mark is registered and the registration is subsisting, the proprietor gains the exclusive right to use it and to obtain relief against infringement. Commercial user is not a prerequisite for maintaining an infringement action.

Section 29 of the Act defines infringement with reference to a “registered trade mark.” The provisions protecting against infringement do not condition relief on actual market use by the registrant. While non-use for five continuous years can be a ground for rectification and removal of the mark under Section 47 (upon application by an aggrieved person), such removal is not automatic and does not retroactively validate infringement.

At the interim injunction stage, the plaintiff needs only to show a prima facie case. Section 31(1) provides that registration itself is prima facie evidence of validity. The appellant could not, at this stage, successfully argue invalidity or disentitlement based on the respondent’s regulatory issues under the Drugs and Cosmetics Act. Those issues might give the respondent remedies elsewhere, but they do not strip the registered mark of its statutory protection.

Key Judgments Discussed with Citations and Context

The Division Bench primarily relied on the statutory framework of the Trade Marks Act rather than citing specific external precedents in detail. It explained Sections 28(1), 29, 31(1), 47, and 135(1) in clear, accessible language:

• Section 28(1): Registration of a valid trademark gives the proprietor exclusive rights to use the mark for the registered goods/services and to seek relief against infringement. The court stressed that this right arises from registration itself, not from actual commercial exploitation.
• Section 29: Infringement is defined with respect to a registered trademark. Each sub-section begins with “a registered trade mark,” making registration the key trigger rather than user.
• Section 47(1): Non-use for five years (subject to conditions) can lead to removal of the mark from the register, but only upon an application by an aggrieved person. The Registrar cannot act suo motu, and removal is not automatic. The court clarified that an infringer cannot use non-use as a shield in an infringement suit; the proper remedy is a separate rectification proceeding.
• Section 31(1): Registration is prima facie evidence of validity in legal proceedings, strengthening the plaintiff’s case at the interim stage.
• Section 135(1): Relief in infringement suits includes injunction, damages, or account of profits, reinforcing the strong protection for registered marks.

The judgment also referenced the broader definition of “use of a mark” under Section 2(2)(b) and (c), noting that it encompasses visual representation and association with goods, not merely actual sales. Provisions like Sections 30, 33, 34, and 35 that can insulate defendants in specific situations were noted, but none applied here.

The reasoning was kept simple: registration creates strong rights that infringement actions protect, while non-use challenges must follow the specific statutory route under Section 47 rather than serving as a defence.

Final Decision of the Court

The Division Bench dismissed the appeal (FAO(COMM) 105/2025) and the connected applications. It found no reason to interfere with the impugned order dated 7 March 2025 of the Commercial Court, which had made the interim injunction absolute. The interim restraint against the appellant using “MARKS GO” or any deceptively similar mark for skincare products remained in force.

Point of Law Settled in the Case

A valid and subsisting registration of a trademark gives the owner the exclusive right to stop others from using an identical or deceptively similar mark for similar goods, even if the owner is temporarily unable to sell the product due to regulatory issues like a suspended drug licence. Lack of current commercial use does not weaken the right to an injunction against infringement at the interim stage.

If someone wants to challenge a registered mark on grounds of non-use, they must file a separate application for rectification and removal under Section 47 of the Trade Marks Act after the required five-year period. They cannot use non-use as a defence in the main infringement suit to escape an injunction.

At the interim stage, registration itself provides strong prima facie evidence of validity, and courts will protect registered marks unless specific statutory exceptions apply. This protects brand owners from copycats while directing non-use disputes to the proper rectification process.

The ruling also reminds parties that arguments in appeals should focus on the core issues; raising only peripheral points (like licence suspension) without contesting infringement findings is unlikely to succeed.

Case Title: Kamal Raheja Vs. Hahnemann Pure Drug Co.

Date of Order: 08 July 2025

Case Number: FAO (COMM) 105/2025

Neutral Citation: 2025:DHC:5613-DB

Name of Court: High Court of Delhi

Name of Hon'ble Judges: Justice C. Hari Shankar and Justice Ajay Digpaul

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:

1. Delhi High Court: Suspended Drug Licence No Bar to Trademark Injunction for “MARKS GO”
2. Registration Trumps Non-Use: High Court Upholds Injunction in Skincare Trademark Dispute
3. Infringement Protection Independent of Commercial Use: Key Ruling in Kamal Raheja Case
4. Section 28 Rights Prevail: Division Bench Dismisses Appeal Against “MARKS GO” Injunction

Suitable Tags:

Trademark Infringement, Interim Injunction, Section 28 Trade Marks Act, Non-Use Defence, Section 47 Rectification, Drugs and Cosmetics Act, Commercial Court, Delhi High Court, MARKS GO Trademark, Order XXXIX CPC

Headnote of the Article

In FAO(COMM) 105/2025, the Delhi High Court Division Bench dismissed the appeal and upheld the interim injunction restraining the appellant from using the mark “MARKS GO” for skincare products. The court held that rights against infringement under Section 28(1) of the Trade Marks Act arise from valid registration and are not dependent on current commercial use by the registrant. Non-use may support a rectification application under Section 47 but does not defeat an infringement action or interim relief at the interlocutory stage. The judgment clarifies that regulatory suspension of a drug licence does not divest the registered proprietor of statutory trademark protection.

Shyam Rastogi Trading as Shyam Hosiery Industries and Anr. Vs. Hugo Boss Trade Mark

Rejection of additional document in Commercial Suit

Introduction

In a significant ruling emphasizing timely disclosure of documents in commercial suits, the Delhi High Court on 29 January 2026 dismissed a petition filed under Article 227 of the Constitution by Shyam Rastogi trading as Shyam Hosiery Industries. The petitioners sought to challenge the trial court’s order refusing permission to place additional old documents on record at a late stage in a trademark infringement suit filed by Hugo Boss Trademark Management GmbH & Co KG.

Justice Tushar Rao Gedela held that the defendants failed to show any “reasonable cause” for not disclosing the documents along with their written statement as required under the Commercial Courts Act and the amended Order XI of the CPC. The court observed that most documents were in the power, possession, or control of the defendants and related to their claimed prior use of the “BIG BOSS” mark since 1995. Vague explanations about old records and a subsequent query by the Division Bench in appeal were not sufficient. This judgment reinforces that in commercial disputes, procedural timelines for document disclosure must be strictly followed to prevent delays and ensure fair adjudication.

Factual Background

Shyam Rastogi trading as Shyam Hosiery Industries and another claimed rights in the trademark “BIG BOSS” for hosiery and garments, asserting prior use since 1995. Hugo Boss, a well-known international fashion brand, filed a commercial suit (CS(COMM) 538/2023) alleging infringement and passing off. The trial court granted an ad interim injunction in favour of Hugo Boss on 25 September 2023.

The defendants filed their written statement on 27 October 2023 but did not annex the supporting documents they later sought to produce. Issues were framed on 21 February 2024 (or 21.05.2024 as per some references). The defendants also filed an application under Order XXXIX Rule 4 CPC to vacate the injunction, which was dismissed.

Later, while hearing an appeal (FAO(COMM) 87/2024) against the injunction order, the Division Bench on 5 July 2024 noted the defendants’ submission about wanting to file additional documents showing sales under “BIG BOSS” from 1996-97. The defendants then searched old records and, on 20 January 2025, moved an application before the trial court under Order XI Rule 1(10) and Order XIII Rule 1 CPC seeking to place on record twelve categories of documents. These included sales tax challans from 1996-2005, income tax returns from 2001-2023, printing and purchase bills from 1995 onwards, sales records, manufacturing bills from Tirupur units, advertisement bills, and company registration documents. The defendants claimed these proved prior use of “BIG BOSS” and supported vacating the injunction.

The trial court dismissed the application on 12 September 2025, finding no reasonable cause for the late disclosure and noting that many documents were in the defendants’ possession all along.

Procedural Background

Hugo Boss filed the suit in 2023. After granting an ex parte ad interim injunction, the trial court heard the defendants’ vacation application under Order XXXIX Rule 4, which was dismissed on 2 January 2024. The defendants preferred an appeal. During appeal hearings, they indicated intent to file additional documents. The Division Bench on 5 July 2024 noted the submission but did not grant specific liberty for late production before the trial court.

The defendants then filed the application for additional documents before the trial court on 20 January 2025 — more than a year after filing the written statement and after issues were framed. The trial court rejected it on 12 September 2025, relying on the strict provisions of the Commercial Courts Act and relevant judgments. Aggrieved, the defendants filed the present petition under Article 227 along with applications for condonation of delay (allowed) and other interim reliefs.

Reasoning

The High Court first clarified the scope of Order XI Rule 1(10) CPC as applicable to commercial suits. It requires defendants to disclose all relevant documents in their power, possession, control, or custody along with the written statement. Late production is permitted only upon showing “reasonable cause” for non-disclosure.

Drawing from Supreme Court precedents, the court explained that “reasonable cause” sets a lower threshold than “sufficient cause” or “good cause,” but some genuine explanation is still mandatory. The defendants’ plea — that documents were old, records were unavailable earlier, and they searched only after a Division Bench query — was found insufficient. Most documents (sales tax challans, income tax returns, sales invoices, purchase bills) were clearly in the defendants’ possession or control from the beginning. They could and should have been disclosed with the written statement.

The court noted that the defendants failed to fill the mandatory proforma in the list of documents regarding power/possession, originality, mode of execution, and custody chain. This procedural lapse further weakened their case.

Even assuming some documents came from third parties, the defendants did not explain why they were not disclosed earlier or obtained promptly. The trial court correctly observed that the documents related directly to the core defence of prior use, making timely disclosure essential. Allowing late production without strong cause would undermine the time-bound framework of the Commercial Courts Act, which aims for speedy resolution of commercial disputes.

The High Court distinguished cases from ordinary civil suits, stressing that stricter standards apply in commercial matters. It rejected the argument that the Division Bench’s observation granted automatic liberty for late filing. No such permission was given, and the defendants delayed even after that observation.

Ultimately, the petition lacked merit as no reasonable cause for non-disclosure was demonstrated, and the trial court’s order showed no jurisdictional error warranting interference under Article 227.

Key Judgments Discussed with Citations and Context

The court discussed several important precedents to explain document disclosure rules in commercial suits:

• Hassad Food Company Q.S.C. & Anr. v. Bank of India & Ors., CS(COMM) 9/2018 (decided 15.10.2019): This Delhi High Court judgment interpreted “reasonable cause” under Order XI Rule 1(5) as requiring a lower degree of proof than “good cause” or “sufficient cause.” It emphasized liberal yet disciplined exercise of discretion in commercial suits, balancing justice with procedural timelines.
• Sudhir Kumar @ S. Baliyan v. Vinay Kumar G.B., (2021) 13 SCC 71: The Supreme Court held that the Statement of Truth and document disclosure requirements under Order XI are mandatory in commercial suits. Late production is allowed only upon establishing reasonable cause or when documents are discovered later and were not in the party’s control earlier. The court applied this to stress timely disclosure.
• Sugandhi (Dead) v. P. Rajkumar, (2020) 10 SCC 706: Cited by the petitioners, this Supreme Court decision allowed late production in an ordinary civil suit to do substantial justice. The High Court distinguished it, noting it dealt with Order VIII Rule 1A(3) in non-commercial cases, not the stricter regime under the Commercial Courts Act.
• Madanlal v. Shyamlal, (2002) 1 SCC 535: Referenced in Hassad Food to explain that “good cause” requires lower proof than “sufficient cause,” supporting a liberal yet reasoned approach.

The court used these judgments to underscore that while technicalities should not defeat justice, in commercial suits, parties must act diligently. Reasonable cause must be shown for non-disclosure at the pleading stage; vague claims of old records or later searches do not suffice when documents were always available or obtainable.

Final Decision of the Court

The Delhi High Court dismissed the petition under Article 227. It upheld the trial court’s order dated 12 September 2025 rejecting the application for additional documents. The application for condonation of delay was allowed, but the main petition failed on merits. Pending applications were disposed of. No costs were awarded.

Point of Law Settled in the Case

In commercial suits under the Commercial Courts Act, 2015, parties must disclose all relevant documents in their power, possession, control, or custody along with the plaint or written statement. Late production under Order XI Rule 1(10) or similar provisions is allowed only if the party shows “reasonable cause” for the initial non-disclosure — not just any delay or later discovery.

“Reasonable cause” has a lower threshold than “sufficient cause,” but vague explanations (such as “old records were unavailable” or “searched after court query”) are insufficient when documents relate to the party’s own business and could have been produced earlier. Courts will examine whether the documents were truly beyond control or if the party failed to act diligently.

The mandatory proforma for listing documents (indicating possession, originality, execution mode, and custody) must be properly filled; failure weakens the application. While courts aim for substantial justice and may condone delays in ordinary suits, commercial matters demand stricter adherence to timelines to ensure speedy resolution.

Trial courts can consider the stage of proceedings and overall conduct. Higher courts will not interfere under Article 227 unless there is clear error. The ruling discourages casual or tactical late filings that prolong litigation and reminds parties that procedural rules in commercial disputes are tools for efficient justice, not hurdles to be bypassed lightly.

Case Title: Shyam Rastogi Trading as Shyam Hosiery Industries and Anr. Vs. Hugo Boss Trade Mark Management GmbH and Co KG and Anr. Date of Order: 29 January 2026 Case Number: CM(M)-IPD 4/20266 Neutral Citation: 2026:DHC:703 Name of Court: High Court of Delhi Name of Hon'ble Judge: 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

Suggested Titles for the Article:

1. Delhi High Court Refuses Late Documents in “BIG BOSS” Trademark Battle: Reasonable Cause Not Shown
2. Strict Disclosure Rules in Commercial Suits: Petition to File Old Sales Records Dismissed
3. No Indulgence for Delayed Documents: High Court Upholds Trial Court Order in Hugo Boss Case
4. Prior Use Defence Weakened by Late Filing: Key Ruling on Order XI CPC in Trademark Suit

Suitable Tags: Commercial Courts Act, Order XI Rule 1(10) CPC, Additional Documents, Reasonable Cause, Trademark Infringement, BIG BOSS vs Hugo Boss, Prior User, Article 227 Petition, Delhi High Court, Document Disclosure, Sudhir Kumar Case

Headnote of the Article In CM(M)-IPD 4/2026, the Delhi High Court dismissed a petition under Article 227 challenging the rejection of an application to place additional old documents on record in a commercial trademark suit. The court held that the defendants failed to demonstrate “reasonable cause” under Order XI Rule 1(10) CPC for not disclosing sales tax records, invoices, and other evidence of alleged prior use of “BIG BOSS” with their written statement. Emphasizing the mandatory disclosure regime in commercial suits and distinguishing ordinary civil cases, the judgment reinforces diligence in procedural compliance and limits late production without genuine justification.

Innovative Derma Care Vs. Vardhaman Skincare Pvt. Ltd.

Sufficient Cause Required for filing Witness List at later stage

Introduction

In a ruling that highlights the importance of timely and diligent conduct of litigation, the Delhi High Court on 28 February 2026 dismissed a petition filed under Article 227 of the Constitution challenging an order of the District Judge (Commercial Court) that refused permission to examine two additional witnesses in a long-pending trademark infringement suit concerning the mark “Clariwash” for skin care products.

Court held that the trial court was justified in rejecting the plaintiff’s repeated requests to add more witnesses at a late stage, especially when the suit was already six years old and the plaintiff’s evidence stage had been dragging on. The court emphasized that while parties have some flexibility to produce their own witnesses without court summons, they must still provide sufficient and convincing reasons for not including those witnesses in the initial list. Mere claims of health issues or work commitments, without supporting documents, were not enough to justify further delay. This decision serves as a reminder to litigants that courts expect efficiency in commercial disputes and will not readily allow repeated changes that prolong trials without good cause.

Factual Background

Innovative Derma Care, the petitioner, is engaged in marketing and selling skin care products under the trademark “Clariwash”. In July 2018, it discovered that Vardhaman Skincare Pvt. Ltd. and another were allegedly manufacturing and selling face wash products under the same mark. This led the petitioner to file a commercial suit (CS(COMM) No. 403/2019) before the District Judge (Commercial), West District, Tis Hazari Courts, New Delhi, seeking relief for trademark infringement and passing off.

The plaintiff initially filed a list of witnesses proposing only its sole proprietor, Mr. Rajesh Kumar Taneja, as PW-1. A Local Commissioner was appointed for recording evidence. Later, the plaintiff successfully sought permission to add three more witnesses (PW-2 to PW-4). However, on 22 April 2025, it filed another application under Order XVI Rule 1 CPC seeking to add two further witnesses — Mr. Amit Chopra (proprietor of Mediwings) as PW-5 and Mr. Gulshan Kumar (proprietor of GM Medicine Centre) as PW-6. The plaintiff claimed Mr. Amit Chopra could not be included earlier due to deteriorating health and Mr. Gulshan Kumar due to frequent travel and work commitments. An application for early hearing of this request was filed, but the trial court dismissed the application on 21 November 2025, citing the age of the suit, previous additions of witnesses, and lack of sufficient justification.Aggrieved, the plaintiff approached the High Court under Article 227 challenging the trial court’s refusal.

Procedural Background

The commercial suit was instituted in 2019. After initial proceedings, including mediation, issues were framed on 4 February 2025. The plaintiff filed its initial witness list on 10 February 2025 naming only one witness. A Local Commissioner was appointed on 11 February 2025 for evidence recording.

In March 2025, the plaintiff moved an application to add three additional witnesses, which the trial court allowed after hearing the parties. Evidence recording continued. On 22 April 2025, the plaintiff filed the subject application to add two more witnesses. It also sought early hearing of the application. On 21 November 2025, the trial court heard the early hearing request and dismissed the underlying application, observing that the suit was one of the oldest pending matters, the plaintiff had already added witnesses once, and no cogent reasons were shown for the further delay in naming the new witnesses. The plaintiff then filed the present petition under Article 227 of the Constitution before the Delhi High Court.

The High Court heard arguments from both sides. Respondent No. 2 (represented by Mr. Ajay Amitabh Suman and team) opposed the petition, arguing that the plaintiff was indulging in dilatory tactics and that the names could have been included earlier. The matter was decided on 28 February 2026.

Reasoning

The High Court carefully examined the provisions of Order XVI Rule 1 and Rule 1A of the Code of Civil Procedure. Rule 1 requires parties to file a list of witnesses within the prescribed time after issues are settled. Rule 1A allows a party to produce its own witnesses without court summons, but this is subject to the court’s power under Rule 1(3) to permit additional witnesses only for sufficient cause.

The court relied heavily on the Supreme Court’s landmark decision in Mange Ram v. Brij Mohan to explain the balance between flexibility and discipline in examining witnesses. While parties can bring their own witnesses without summons, the court still has discretion to refuse if names were not included earlier without good reason. The High Court noted that the petitioner failed to provide any documentary evidence supporting claims of health issues or unavailability. Such vague explanations were insufficient, especially in a six-year-old suit where the plaintiff had already been granted one opportunity to add three witnesses.

The trial court’s observation that the plaintiff was responsible for delaying its own evidence was found reasonable. Repeated applications to expand the witness list without strong justification suggested an attempt to prolong proceedings rather than a genuine need. No prejudice to the defendant was even required to be shown when the plaintiff could not demonstrate sufficient cause for the omission.

The High Court concluded that the trial court had applied its mind properly and exercised discretion in a balanced manner, considering the overall delay in the matter. Interference under Article 227 was not warranted as there was no jurisdictional error or grave miscarriage of justice.

Key Judgments Discussed with Citations and Context

The court primarily discussed Mange Ram v. Brij Mohan, (1983) 4 SCC 36. In this Supreme Court case, the question was whether a party could be prevented from examining witnesses it produces on its own (without court summons) merely because their names were not in the initial list filed under Order XVI Rule 1. The Supreme Court clarified that Rule 1A gives parties the liberty to produce their own witnesses without court assistance, but this is subject to the court’s power under Rule 1(3) to allow additional witnesses only upon showing sufficient cause for omission from the list. The provision aims to prevent abuse while ensuring relevant evidence is not shut out on mere technicalities. However, the court must still be satisfied that there is genuine reason for the late inclusion.

The High Court applied this principle to the facts, holding that the petitioner failed to show “sufficient cause” through concrete evidence (such as medical records). It distinguished the situation from cases where witnesses were genuinely unavailable or newly discovered, noting the repeated nature of the requests and the advanced stage of the suit.

Final Decision of the Court

The Delhi High Court dismissed the petition under Article 227. It found no infirmity in the trial court’s order dated 21 November 2025 refusing permission to add two additional witnesses. The petition was dismissed with no order as to costs.

Point of Law Settled in the Case

In a lawsuit, once issues are framed, parties must file a list of witnesses they want to examine. While you can bring your own witnesses without asking the court for summons (under Order XVI Rule 1A), if you want to add names later that were not in your original list, you must show a strong and genuine reason (“sufficient cause”). Vague explanations like “health issues” or “busy with work” are not enough unless supported by proper proof, such as medical documents.

Courts will look at the overall progress of the case. If the suit is already old and the party has already been given chances to add witnesses, further requests are likely to be rejected to prevent unnecessary delays. The goal is to ensure trials move forward efficiently, especially in commercial disputes where time is important for businesses.

Trial courts have reasonable discretion in such matters, and higher courts will not interfere under Article 227 unless there is a clear legal error or serious injustice. Parties must plan their evidence carefully from the beginning rather than treating witness lists as changeable at will.

Case Title: Innovative Derma Care Vs. Vardhaman Skincare Pvt. Ltd. & Anr.

Date of Order: 28 February 2026

Case Number: CM(M)-IPD 47/2025

Neutral Citation: 2026:DHC:1829

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tejas Karia

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:

1. Delhi High Court Dismisses Petition to Add More Witnesses in Trademark Suit: Delay Not Tolerated
2. No Repeated Additions of Witnesses: High Court Upholds Trial Court’s Refusal in “Clariwash” Case
3. Sufficient Cause Required for Late Witness List: Key Ruling Under Order XVI CPC
4. Article 227 Petition Fails: Commercial Court’s Control Over Evidence Recording Upheld

Suitable Tags:

Order XVI Rule 1 CPC, Additional Witnesses, Sufficient Cause, Article 227 Petition, Commercial Suit Delay, Trademark Infringement, Witness List, Delhi High Court, Mange Ram Case, Evidence Recording

Headnote of the Article

In CM(M)-IPD 47/2025, the Delhi High Court dismissed a petition under Article 227 challenging the trial court’s refusal to permit addition of two more witnesses in a six-year-old trademark suit for “Clariwash”. Relying on Mange Ram v. Brij Mohan (1983) 4 SCC 36, the court held that parties must show sufficient cause for omitting names from the initial witness list under Order XVI Rule 1 CPC; vague reasons like health or travel without evidence are insufficient, especially after prior additions and in an old matter. The judgment reinforces timely conduct of trials and limited interference in procedural discretion.

Shubham Goldiee Masale Pvt. Ltd. Vs. Jai Shiv Oil Industries

Confusion is assessed from the perspective of an average consumer with imperfect recollection

Introduction

In a clear victory for brand owners protecting their established trademarks, the Delhi High Court on 8 April 2026 ordered the cancellation and removal of two trademark registrations for the mark “GOLDI” (label and logo) belonging to Jai Shiv Oil Industries and its assignee. The court found the marks deceptively similar to the petitioner’s long-standing and well-known “GOLDIEE” trademark used for spices, edible oils, and related food products since 1980.

Justice Tushar Rao Gedela held that the respondent’s adoption of “GOLDI” was likely to cause confusion among consumers due to phonetic, visual, and structural similarities, especially in the Hindi script where the dominant elements appeared nearly identical. The petitioner’s prior adoption, use, and registration, combined with substantial goodwill and sales, outweighed the respondent’s later registrations. The respondents failed to appear or file any reply, leaving the petitioner’s evidence unrebutted. This judgment underscores that prior users and registrants with strong reputation can successfully seek rectification of confusingly similar marks even in related goods classes, protecting consumers from deception and safeguarding established brands.

Factual Background

Shubham Goldiee Masale Pvt. Ltd., a Kanpur-based company engaged in manufacturing and marketing spices, edible oils, and allied food products, claimed rights in the trademark “GOLDIEE” and its formative variants. The company traced its adoption of the mark through predecessors to 1980 and had been using it continuously for decades. “GOLDIEE” also formed part of the company’s trade name.

The petitioner held multiple registrations for “GOLDIEE” labels and word marks in Classes 3, 29, and 30, with the oldest dating back to 1 October 1980. It built significant goodwill through high-quality products, extensive advertising in print and visual media, distributor networks across India, and certifications like ISO 9001:2000 and HACCP. Sales figures grew impressively — from Rs. 43 crores in 2000-01 to nearly Rs. 297 crores by 2012-13 — supported by promotional campaigns, including sampling at major marathons and government awards for excellence.

The petitioner discovered the respondent’s use of “GOLDI” (label) only in late August 2014. Jai Shiv Oil Industries had obtained registration No. 945240 in Class 29 for mustard oil (edible oil) with a claimed user date of 1 January 2000, granted on 16 September 2005. It also secured registration No. 2023762 in Class 31 for foodstuffs (oil cake) for animals, granted on 16 March 2012, again claiming user from 1 January 2000. The petitioner alleged dishonest adoption, deceptive similarity, and fraud on the Trade Marks Registry, asserting that the marks were phonetically, visually, and conceptually confusing, especially since both parties dealt in edible oils and related foodstuffs available through similar trade channels.

Procedural Background

The rectification petitions under Sections 47, 57, and 125 of the Trade Marks Act, 1999, were originally filed before the Intellectual Property Appellate Board (IPAB). Following the abolition of the IPAB, they were transferred to the Delhi High Court as C.O.(COMM.IPD-TM) 392/2021 and 393/2021. Notices were issued, and the matter progressed through several hearings. The petitioner filed applications to implead the assignee (respondent no.3) after discovering an assignment deed dated 17 September 2015.

The respondents, including the original registrant and assignee, were served but chose not to file replies or appear despite opportunities. Their right to file written statements was closed, and they were proceeded ex parte. The petitioner placed on record extensive evidence of its prior use, registrations, sales turnover, advertisements, and invoices. No counter-evidence was produced by the respondents regarding their adoption, use, or bona fides.

Reasoning

The High Court began by noting the procedural history and the ex parte nature of the proceedings. It observed that while averments in unrebutted petitions are generally deemed admitted, it would still examine the merits independently. The court compared the petitioner’s long history of use and registration with the respondent’s later applications.

On comparison, the marks “GOLDIEE” and “GOLDI” were found phonetically identical in pronunciation, visually and structurally nearly the same (differing only by the extra “EE”), and conceptually indistinguishable. In Hindi script, the dominant word portions appeared even more similar, making confusion likely. The court emphasized that the word “GOLDI”/“GOLDIEE” formed the prominent and dominant element of both labels.

The goods were similar or allied: the petitioner’s registrations covered spices and foodstuffs in Classes 29 and 30, while the respondent’s covered edible oil (Class 29) and oil cake for animals (Class 31). Trade channels, retail outlets, and consumer bases overlapped significantly, increasing the likelihood of confusion. An average consumer with imperfect recollection could easily mistake the respondent’s products for those of the petitioner or associate them with it.

The petitioner’s evidence of substantial sales growth, extensive advertising, and reputation since well before the respondent’s claimed user date established prior rights and goodwill. The respondent provided no explanation for adopting “GOLDI” or evidence of bona fide use, raising suspicions of dishonest adoption aimed at riding on the petitioner’s reputation.

The court applied principles from prior judgments to hold that coverage of a trademark is determined by the registration certificate, not limited to actual proven use in every listed good. It also considered allied/cognate goods based on trade connection, intended purpose, complementary nature, and common retail channels. Even for Class 31 goods, confusion or association was likely.

Provisions under Sections 9 (distinctiveness), 11 (deceptive similarity), and 47 (non-use or lack of bona fide intention) further supported cancellation. The absence of rebuttal strengthened the case for removal.

Key Judgments Discussed with Citations and Context

The court relied on established precedents to explain deceptive similarity and allied goods in simple terms understandable to non-lawyers:

• Fybros Electric (P) Ltd. v. Vasu Dev Gupta Trading as Vasu Electronics, 2023 SCC OnLine Del 3179: This Delhi High Court decision clarified that trademark coverage is based on the goods listed in the registration certificate, not merely on proven actual use. The court used this to hold that the petitioner’s registrations in Classes 29 and 30 protected against similar marks in related goods, even if specific use evidence varied slightly.
• FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd., 2017 SCC OnLine Del 6381: Justice Vipin Sanghi’s judgment explained “allied or cognate” goods/services as those related by nature, trade connection, complementary use, or targeting similar customers (e.g., pharmaceuticals and medical appointment services). The court applied this principle to find overlap between edible oils/foodstuffs and oil cake for animals sold through common retail channels, increasing confusion risk.

These cases were discussed in the context of assessing likelihood of confusion holistically — considering mark similarity, goods relatedness, trade channels, and consumer perception — rather than isolated factors.

Final Decision of the Court

The Delhi High Court allowed both rectification petitions and directed the cancellation and removal of the impugned trademark registrations “GOLDI” (label) under No. 945240 in Class 29 and No. 2023762 in Class 31 from the Register of Trade Marks. The Registrar of Trade Marks was required to comply within six weeks. No costs were awarded. The petitions, along with pending applications, stood disposed of.

Point of Law Settled in the Case

Prior adoption, continuous use, and registration of a mark create strong rights that can override later registrations of deceptively similar marks, especially when the earlier mark has built substantial goodwill and reputation. Even small differences (like removing “EE” from “GOLDIEE” to make “GOLDI”) do not prevent a finding of deceptive similarity if the overall impression, pronunciation, and dominant elements remain confusingly alike.

When comparing marks, courts look at the whole mark but give weight to the prominent or dominant features. Confusion is assessed from the perspective of an average consumer with imperfect recollection, not side-by-side comparison by experts. Goods need not be identical; if they are allied or cognate — sharing trade channels, retail outlets, or consumer bases — the risk of confusion or association increases.

In rectification proceedings, unrebutted evidence of prior rights, sales, advertising, and reputation carries significant weight. Registrations obtained without bona fide intention or through material misstatements can be cancelled under provisions like Section 47. Coverage of a registered mark extends to all goods listed in the certificate, strengthening protection against similar marks in related fields.

Overall, the case highlights that trademark law protects both consumers from deception and honest businesses from unfair competition by preventing later entrants from riding on established reputations through similar marks.

Case Title: Shubham Goldiee Masale Pvt. Ltd. Vs. Jai Shiv Oil Industries and Anr.

Date of Order: 08 April 2026

Case Number: C.O.(COMM.IPD-TM) 392/2021

Neutral Citation: 2026:DHC:2935

Name of Court: High Court of Delhi

Name of Hon'ble Judge: 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

Suggested Titles for the Article:

1. Delhi High Court Cancels “GOLDI” Trademark for Confusing Similarity with “GOLDIEE” Brand
2. Prior User Triumphs: Shubham Goldiee Masale Wins Rectification Petitions Against “GOLDI” Mark
3. Deceptive Similarity Leads to Removal of “GOLDI” Registrations in Edible Oil and Animal Feed Cases
4. Protecting Established Brands: Key Takeaways from Goldiee Masale Rectification Judgment

Suitable Tags:

Trademark Rectification, Deceptive Similarity, Prior User Rights, GOLDIEE vs GOLDI, Section 47 Trade Marks Act, Cancellation of Registration, Allied Goods, Delhi High Court, Edible Oil Trademark, Spices Brand Protection

Headnote of the Article

In Shubham Goldiee Masale Pvt. Ltd. v. Jai Shiv Oil Industries (2026:DHC:2935), the Delhi High Court allowed rectification petitions and ordered cancellation of “GOLDI” trademark registrations in Classes 29 and 31 for being deceptively similar to the petitioner’s prior and well-established “GOLDIEE” mark used since 1980 for spices and foodstuffs. Emphasizing phonetic, visual, and conceptual confusion, overlapping trade channels, and the petitioner’s strong goodwill evidenced by sales and advertising, the court held that the later marks could not remain on the register, reinforcing prior rights and consumer protection under the Trade Marks Act.