Wednesday, June 10, 2026

Alkem Laboratories Ltd. Vs. Numen Pharma Private Limited

Alkem Laboratories Ltd. Vs. Numen Pharma Private Limited:08 June 2026 :Commercial IP Suit No. 679 of 2025 :BombHC: Hon'ble Judge: Justice Sharmila U. Deshmukh

The Court considered a dispute concerning trademark infringement and passing off in relation to pharmaceutical products marketed under the marks “ALCIPRO” and “ACIPROX”. The case arose from allegations that the defendant had adopted the mark “ACIPROX”, which the plaintiff contended was deceptively similar to its long-standing registered trademark “ALCIPRO”.

The principal question before the Court was whether the defendant’s mark “ACIPROX” was phonetically similar to the plaintiff’s registered mark “ALCIPRO” so as to give rise to a likelihood of confusion, particularly in the case of medicinal preparations.

After examining the material on record and the submissions of the parties Court observed that the rival marks must be compared as a whole and not dissected syllable by syllable. The Court found that “ALCIPRO” and “ACIPROX” were phonetically similar and that even a bare possibility of confusion in relation to medicinal products must be prevented. The Court held that a registered proprietor is entitled to restrain the use of an identical or deceptively similar mark, emphasizing that differences in packaging, colour schemes, or the fact that the products are Schedule ‘H’ drugs do not eliminate the likelihood of confusion.

Accordingly, the Court allowed the interim application and granted an injunction restraining the defendant from manufacturing, selling, marketing, or otherwise using the mark “ACIPROX” or any other mark deceptively similar to the plaintiff’s registered trademark “ALCIPRO” pending disposal of the suit.

Disclaimer: Readers are advised not to treat this as a substitute for legal advice, as it is based on limited information and is intended solely for general informational purposes.

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Differences in packaging, house marks and prescription-based sale in relation to medicinal product and Trademark Confusion

Alkem Laboratories Ltd. v. Numen Pharma Private Limited: Bombay High Court Protects Pharmaceutical Trademark “ALCIPRO” Against Use of “ACIPROX”

Introduction

Trademark disputes involving medicinal products are treated with exceptional seriousness because even a minor possibility of confusion between two pharmaceutical products can have grave consequences for public health. The Bombay High Court's decision in Alkem Laboratories Ltd. v. Numen Pharma Private Limited reiterates the settled principle that in the case of medicines, courts apply a stricter standard and seek to eliminate even the possibility of confusion.

The dispute involved the registered trademark "ALCIPRO", used by Alkem Laboratories for several decades, and the mark "ACIPROX" adopted by a comparatively recent entrant in the pharmaceutical market. The case raised important questions concerning phonetic similarity, the anti-dissection rule, the effect of International Non-Proprietary Names (INN), common-to-trade arguments, and the degree of protection available to medicinal trademarks.

The judgment is of considerable importance to pharmaceutical companies, trademark owners, medical practitioners, and intellectual property lawyers, as it reinforces the principle that public safety outweighs commercial convenience when deceptively similar medicinal marks are involved.

Factual and Procedural Background

Alkem Laboratories Ltd., a well-known pharmaceutical company, adopted the trademark "ALCIPRO" in 1990 and obtained registration in Class 5 on 4 April 1990. Subsequently, on 28 September 1998, it secured registration for the variant mark "ALCIPRO-TN". The products bearing the "ALCIPRO" mark contain Ciprofloxacin and are used for the treatment of bacterial infections, urinary tract infections, throat infections, skin infections and respiratory infections.

Over the years, Alkem introduced several variants of the "ALCIPRO" range and established extensive goodwill and reputation in the market. The plaintiff produced evidence of sales and promotional activities and demonstrated long and continuous use of the mark.

In December 2023, Alkem came across an application advertised in the Trade Marks Journal for registration of the mark "ACIPROX", filed by Numen Pharma Private Limited on 16 January 2023 on a proposed-to-be-used basis. Alkem filed an opposition to the application. In response, the defendant claimed use of the impugned mark since 2023.

Alkem instituted Commercial IP Suit No. 679 of 2025 before the Commercial Division of the Bombay High Court seeking reliefs for trademark infringement and passing off. On 8 October 2025, the Court granted ad-interim protection in favour of Alkem.

Numen Pharma filed an affidavit in reply dated 22 November 2025 and an additional affidavit dated 19 March 2026 opposing the interim application. After hearing the parties, the Court reserved the matter on 24 April 2026 and pronounced its order on 8 June 2026.

Dispute Before the Court

The principal question before the Court was whether the mark "ACIPROX" used by the defendant was deceptively similar to the plaintiff's registered mark "ALCIPRO" and whether such use amounted to infringement and passing off.

Alkem contended that "ALCIPRO" was an invented and distinctive mark which had acquired substantial reputation since 1990. It argued that the defendant's mark differed merely by deletion of the letter "L" and addition of the letter "X", creating a high likelihood of confusion. Since the products involved medicinal preparations with different compositions and therapeutic uses, even a slight possibility of confusion could produce dangerous consequences.

Numen Pharma argued that the expression "CIPRO" was descriptive and derived from the molecule Ciprofloxacin, which forms part of the International Non-Proprietary Name system. According to the defendant, the plaintiff could not claim monopoly over such a generic component. It further contended that the rival marks were visually and phonetically distinct, the packaging and trade dress were different, and the medicines were Schedule H drugs sold only on prescription, thereby eliminating the possibility of confusion.

The defendant also relied upon the existence of numerous trademarks containing the expression "CIPRO" and asserted that the impugned mark had been honestly adopted after conducting a search of the trademark registry.

Reasoning and Analysis of the Court

The Court observed that the plaintiff's product and the defendant's product contained entirely different active ingredients and were intended for treatment of different ailments. Consequently, substitution of one medicine for the other could have hazardous consequences.

The Court emphasized that in cases involving medicinal products, even the slightest possibility of confusion must be prevented. It noted that the dispute was essentially between "ALCIPRO" and "ACIPROX", where the defendant had merely omitted the letter "L" and added the letter "X". The Court rejected the defendant's attempt to compare the marks syllable by syllable and reaffirmed the anti-dissection rule, according to which marks must be considered as a whole.

The Court relied heavily upon the Division Bench decision in Sun Pharmaceutical Industries Ltd. v. Meghmani Lifesciences Ltd. & Anr., Comm. Order 08.04.2026 in Appeal (L) No.42382 of 2025, where the rival marks "RACIRAFT" and "ESIRAFT" were examined. The Division Bench had held that dissecting marks into individual syllables was impermissible and that phonetic similarity should be assessed by considering the marks in their entirety.

Applying this principle, the Court held that "ALCIPRO" and "ACIPROX" were phonetically similar. It observed that hurried pronunciation or mispronunciation could easily create confusion and that the terminal letter "X" was insufficient to distinguish the marks.

The Court reiterated that the possibility of confusion assumes greater significance in a multilingual country like India, where varying levels of literacy and pronunciation exist.

The Court relied extensively upon the landmark decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, which laid down that even prescription drugs are susceptible to confusion and that a higher standard of care is required for medicinal products. The Supreme Court had emphasized that doctors and pharmacists are not immune from mistakes and that linguistic diversity and varying standards of healthcare infrastructure necessitate strict measures against deceptively similar medicinal marks.

Reference was also made to Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court stressed that confusion involving medicinal products demands exacting judicial scrutiny because the consequences may be far more serious than those involving ordinary consumer goods.

The Court rejected the defendant's argument that the medicines were Schedule H drugs and therefore confusion was unlikely. It held that prescriptions are often handwritten or communicated orally and mistakes are possible even among professionals.

On the issue of International Non-Proprietary Names, the Court held that the plaintiff was not seeking monopoly over "Ciprofloxacin" itself. The exclusivity claimed was in the distinctive combination embodied in the mark "ALCIPRO". The plaintiff's registration dated back to 1990 under the Trade and Merchandise Marks Act, 1958, whereas the notification concerning INNs under Section 13 of the Trade Marks Act, 1999 came much later. Therefore, Section 13 did not invalidate or diminish the plaintiff's rights.

The Court also referred to Lupin Ltd. v. Eris Lifesciences (P) Ltd., 2015 SCC OnLine Bom 6807, observing that the defendant had not challenged the validity of the plaintiff's registration within the narrow window recognised in that decision. Under Section 31 of the Trade Marks Act, registration constitutes prima facie evidence of validity.

The defendant's reliance upon the existence of numerous marks containing "CIPRO" was rejected. The Court observed that mere entries on the register are insufficient to establish that a mark has become common to the trade. It relied on Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services Pvt. Ltd., 2015 SCC OnLine Bom 531, where it had been held that extensive and widespread use must be demonstrated before a mark can be treated as common to the trade.

With respect to passing off, the Court examined Section 27(2) of the Trade Marks Act, 1999 and relied upon Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, where the Supreme Court held that likelihood of damage is sufficient and proof of actual fraud or actual damage is unnecessary.

The Court also relied upon Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, which explained that misrepresentation in passing off does not require proof of mala fide intention.

The Court distinguished the authorities cited by the defendant. It held that Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd., 2022 SCC OnLine Del 2580, involved marks derived from the same generic drug and therefore turned on entirely different facts. Similarly, Aristo Pharmaceutical Pvt. Ltd. v. Healing Pharma India Pvt. Ltd., 2025 SCC OnLine Bom 4693, concerned an undisguised clipped version of a generic term without any distinctive addition. The Court found those decisions inapplicable.

The Supreme Court's decision in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., (1969) 2 SCC 716, was also distinguished on facts, although the principle that marks must be compared as a whole was accepted.

After examining the evidence, the Court concluded that the plaintiff had established goodwill and reputation built over decades and that the defendant, being incorporated only in 2023, was a late entrant. The balance of convenience clearly favoured the plaintiff.

Final Decision of the Court

The Bombay High Court held that the plaintiff had established a strong prima facie case for trademark infringement and passing off.

The Court found that "ACIPROX" was deceptively similar to "ALCIPRO" and that continued use of the impugned mark was likely to create confusion with potentially serious consequences because the medicines treated different ailments.

Accordingly, the interim application was allowed and the earlier ad-interim protection was confirmed. The defendant, along with its directors, employees, distributors, agents and all persons acting on its behalf, was restrained from manufacturing, selling, advertising, marketing or otherwise using the mark "ACIPROX" or any other mark identical or deceptively similar to "ALCIPRO" pending disposal of the suit. The Court also granted relief in respect of passing off.

Point of Law Settled

The judgment reaffirms that in pharmaceutical trademark disputes, the test is not actual confusion but the possibility of confusion. Courts are required to apply a stricter standard because mistakes in dispensing medicines may endanger public health.

The decision reiterates the anti-dissection rule and confirms that rival marks must be compared as a whole rather than syllable by syllable. It further clarifies that differences in packaging, colour schemes, house marks or the fact that medicines are prescription drugs do not eliminate the likelihood of confusion.

The judgment also emphasizes that mere existence of similar marks on the register does not establish that a mark is common to the trade unless extensive and widespread use is proved. It additionally reinforces the evidentiary value of registration under Section 31 of the Trade Marks Act, 1999 and underscores that goodwill acquired through long-standing use will receive strong judicial protection against late entrants.

Case Details:

Title of the Case: Alkem Laboratories Ltd. v. Numen Pharma Private Limited

Date of Judgment/Order: 8 June 2026

Case Number: Interim Application No. 1606 of 2026 in Commercial IP Suit No. 679 of 2025

Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division

Name of Hon'ble Judge: Justice Sharmila U. Deshmukh

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

Disclaimer: Images used herein do not reflect actual images used in Judgement and that the same are for illustrative purpose only. Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

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ALCIPRO vs ACIPROX: Key Takeaways from Bombay High Court's Trademark Judgment
Pharmaceutical Trademark Infringement and Passing Off: Analysis of Alkem Laboratories Case
Can Prescription Drugs Cause Trademark Confusion? Bombay High Court Answers
Anti-Dissection Rule Applied in ALCIPRO vs ACIPROX Trademark Dispute
Section 13 of Trade Marks Act and INN Defence Explained Through Alkem v. Numen Pharma
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Medicinal Trademark Protection in India: Lessons from Alkem Laboratories v. Numen Pharma
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Headnote of the Judgment:

Alkem Laboratories Ltd., proprietor of the registered trademark "ALCIPRO" since 1990 for pharmaceutical products containing Ciprofloxacin, instituted a suit for infringement and passing off against Numen Pharma Private Limited, which adopted the mark "ACIPROX" in 2023. The defendant contended that "CIPRO" was generic, that the marks were dissimilar, and that the medicines were Schedule H drugs sold only on prescription. The Bombay High Court held that medicinal products require a stricter standard of scrutiny and that even the possibility of confusion must be avoided. Applying the anti-dissection rule and relying upon Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, and Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, the Court found "ACIPROX" phonetically similar to "ALCIPRO". It rejected the defendant's reliance on differences in packaging, house marks and prescription-based sale. Holding that the plaintiff had established goodwill and a strong prima facie case of infringement and passing off, the Court granted an interim injunction restraining use of the mark "ACIPROX" and any deceptively similar mark pending disposal of the suit.

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Tuesday, June 9, 2026

SC-J.R. Kapoor Vs. Micronix India

Introduction

The Supreme Court’s decision in J.R. Kapoor v. Micronix India is a significant judgment in Indian trademark law that examines the limits of trademark protection where a disputed word forms part of a descriptive or commonly used expression. The case dealt with a conflict between the trade names “MICRONIX” and “MICROTEL” used in relation to electronic and electrical products. The dispute required the Court to determine whether the use of a common prefix could create a likelihood of confusion sufficient to justify an injunction.

The judgment is important because it highlights a fundamental principle of trademark law: no trader can ordinarily claim monopoly over descriptive or generic words that are commonly associated with a particular technology, product, or industry. At the same time, the Court examined whether the overall trade name, logo, packaging, and visual presentation were sufficiently similar to mislead consumers.

The ruling continues to be relevant for businesses, trademark owners, startups, manufacturers, branding professionals, and intellectual property practitioners. It serves as an important reminder that trademark protection extends to distinctive features of a mark and not necessarily to words that are descriptive of the goods or technology involved. The decision also provides valuable guidance on the principles governing interim injunctions in trademark disputes.

Factual and Procedural Background

The dispute arose between Micronix India, the respondent-plaintiff, and J.R. Kapoor, the appellant-defendant, both of whom were engaged in the manufacture and sale of electrical and electronic products, including cable television equipment, aerial boosters, solid-state boosters, and related apparatus.

Originally, the appellant was one of the partners in a partnership firm known as Micronix India. The firm had been carrying on business since 21 September 1977 and was the proprietor of the registered trademark “MICRONIX” along with a distinctive logo comprising the letters “M” and “T.” The products of the firm were marketed under this trademark and logo.

Subsequently, disputes arose between the partners, resulting in litigation. The partnership was ultimately dissolved pursuant to a consent order dated 14 February 1992 passed in a suit pending before a court in Delhi. Under the terms of the settlement, the trademark “MICRONIX” and the associated logo were allotted to the respondent-plaintiff.

After the dissolution of the partnership, the appellant commenced an independent business manufacturing similar electronic products. In connection with this new venture, the appellant adopted the trade name “MICROTEL” and used a separate logo consisting of the letter “M” designed in a style different from that employed by the respondent. The appellant’s logo appeared in blue colour, while the trade name “MICROTEL” appeared in bold red letters.

Contending that the use of “MICROTEL,” the logo “M,” and the associated cartons infringed its trademark rights and were likely to deceive consumers, the respondent instituted a suit seeking injunction against the appellant. The learned Single Judge granted an interim injunction restraining the appellant from using the impugned trade name, logo, and carton. An appeal against the order was summarily dismissed by a Division Bench of the Delhi High Court. Aggrieved by these orders, the appellant approached the Supreme Court.

The appeal before the Supreme Court was confined to the issue of whether the grant of interim injunction was justified pending final adjudication of the suit.

Dispute Before the Court

The principal question before the Supreme Court was whether the appellant should be restrained, at the interim stage, from using the trade name “MICROTEL,” the logo “M,” and the packaging cartons employed for marketing his products.

The respondent argued that “MICROTEL” was deceptively similar to “MICRONIX” and that both parties were operating in the same field of electronic and electrical goods. It was contended that the use of a similar prefix and logo was likely to mislead consumers into believing that the appellant’s products were associated with the respondent.

The appellant disputed these allegations and argued that the word “micro” was descriptive of micro-chip technology commonly used in electronic products and therefore incapable of exclusive appropriation by any one trader. It was further contended that the suffixes “tel” and “nix” were entirely different, the logos were visually distinct, and the packaging adopted by the parties bore no resemblance sufficient to cause confusion among purchasers.

The Supreme Court was therefore required to determine whether the respondent had established a prima facie case of deceptive similarity warranting continuation of the interim injunction.

Reasoning and Analysis of the Court

The Supreme Court began by emphasizing that at the interim stage the Court was not required to finally determine the rights of the parties. The only issue was whether a temporary restraint should continue pending trial. The Court clarified that its observations would be confined to the interlocutory proceedings and would not prejudice the final adjudication of the suit.

A significant aspect of the Court’s reasoning related to the nature of the word “micro.” The Court observed that both parties were engaged in the manufacture of electronic products in which micro-chip technology played a substantial role. The products included various electronic apparatus, boosters, and equipment where the term “micro” had a direct connection with the technology employed.

The Court held that the word “micro” was descriptive of the technology used in manufacturing many electronic goods and had become a common expression in the industry. Since the word was descriptive and widely used, no trader could claim an exclusive monopoly over it. Any manufacturer producing products involving micro-chip technology would be justified in using the prefix “micro” as part of its trade name.

Having concluded that the prefix “micro” was common and descriptive, the Court proceeded to compare the distinguishing portions of the rival trade names. The Court noted that the suffixes “nix” and “tel” were entirely different both phonetically and visually. According to the Court, the words “MICRONIX” and “MICROTEL” were not likely to create confusion among consumers familiar with electronic goods. The phonetic dissimilarity between “tel” and “nix” was considered significant.

The Court then examined the visual presentation of the trade names. It observed that “MICRONIX” appeared in slim black-and-white letters enclosed within elongated triangular designs, whereas “MICROTEL” appeared in thick bold red letters without any surrounding design. The visual appearance of the two trade names was therefore materially different.

The Court also undertook a comparison of the rival logos. The respondent’s logo consisted of a stylized letter “M” with the letter “T” embedded within it and the word “MICRONIX” appearing below. The entire logo appeared in white against a black square background. In contrast, the appellant’s logo consisted solely of a bold blue letter “M” with distinctive brush-like features and white lines across it. There were no accompanying letters, background designs, or other elements similar to those used by the respondent.

After comparing the logos, the Court concluded that there was no realistic possibility that consumers would be misled into believing that the products originated from the same source. The visual impressions created by the two logos were substantially different.

The Court similarly rejected the respondent’s arguments regarding the packaging cartons. The respondent attempted to point out similarities in addresses, model numbers, and certain descriptive phrases used on the cartons. The Court found these contentions unpersuasive. It observed that no one could claim monopoly over a common address such as “New Delhi-110020.” Likewise, the use of generic terms such as “MODEL” or references to colour and black-and-white televisions did not establish deceptive similarity. The Court noted that the respondent’s carton was printed in black and white, whereas the appellant’s carton was in colour and bore a different overall appearance.

Considering the trade names, logos, and cartons as a whole, the Court held that there was not even a remote possibility of confusion or deception among buyers and users of the products. The Court therefore found no justification for continuing the interim injunction.

Final Decision of the Court

The Supreme Court allowed the appeal and set aside the orders of the Single Judge and the Division Bench of the Delhi High Court granting interim injunction against the appellant.

The Court held that the appellant could not be restrained, at the interim stage, from using the trade name “MICROTEL,” the logo “M,” and the associated cartons because the materials on record did not disclose any real likelihood of confusion or deception among consumers.

At the same time, the Court clarified that its observations were confined to the question of interim relief and would not prevent the trial court from reaching a different conclusion upon a full appreciation of evidence during the final hearing of the suit.

Point of Law Settled

The judgment establishes that descriptive or generic words commonly associated with a particular technology, trade, or industry cannot ordinarily be monopolized by a single trader.

The decision clarifies that where a common descriptive element forms part of competing trade names, courts must focus on the distinctive portions of the marks while assessing deceptive similarity. The mere presence of a shared descriptive prefix is insufficient to justify an injunction unless the overall trade names, logos, packaging, and commercial impressions are likely to confuse consumers.

The ruling further emphasizes that trademark disputes must be examined from the perspective of ordinary purchasers and that courts should assess phonetic, visual, and structural similarities in their entirety rather than concentrating on isolated common elements.

The judgment remains an important authority on descriptive trademarks, deceptive similarity, common industry expressions, and the grant of interim injunctions in trademark litigation.

Case Details:

Title of the Case: J.R. Kapoor v. Micronix India

Date of Judgment/Order: 10 August 1994

Case Number: Civil Appeal No. 2253 of 1994

Neutral Citation: MANU/SC/1166/1994

Equivalent Citations: 1994 Supp (3) SCC 215; 1994 (14) PTC 260 (SC)

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice P.B. Sawant and Justice S.C. Agrawal

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

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Supreme Court on Common Descriptive Words in Trademark Law
J.R. Kapoor Case Explained: Trade Name Similarity and Consumer Confusion
Trademark Protection and Generic Words: Lessons from Micronix India Case
Supreme Court Clarifies Limits of Trademark Monopoly in Electronics Industry
Descriptive Prefixes and Trademark Infringement: J.R. Kapoor v. Micronix India
Interim Injunction in Trademark Disputes: Analysis of the Micronix Case
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Trademark Law and Common Industry Expressions: A Landmark Ruling
Understanding Deceptive Similarity Through J.R. Kapoor v. Micronix India

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Headnote of the Judgment:

J.R. Kapoor v. Micronix India, Supreme Court of India, Civil Appeal No. 2253 of 1994, decided on 10.08.1994. The dispute concerned the use of the trade name “MICROTEL” and logo “M” by the appellant after dissolution of a partnership that had previously used the registered trademark “MICRONIX.” The Delhi High Court granted an interim injunction restraining use of the impugned mark, logo, and cartons. Allowing the appeal, the Supreme Court held that the word “micro” was descriptive of micro-chip technology and incapable of exclusive monopoly. The Court found that the trade names “MICRONIX” and “MICROTEL,” their logos, and packaging were visually and phonetically distinct and unlikely to cause confusion among consumers. Consequently, the interim injunction was set aside, leaving the merits of the suit to be determined at trial.

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SC-Novartis AG Vs. Union of India

Let me first read the uploaded PDF to get the full details of the case.Now I have enough material from the judgment. Let me compile the comprehensive analytical article.Now I have a comprehensive understanding of the case. Let me write the detailed analytical article.

The Gleevec Verdict: India's Supreme Court Draws the Line Against Evergreening in Novartis AG v. Union of India

Introduction

Few patent law judgments anywhere in the world have generated as much attention, debate, and global consequence as the Supreme Court of India's decision in Novartis AG v. Union of India, delivered on April 1, 2013. At its core, this case was about a cancer drug called Gleevec or Glivec, marketed by Novartis AG, a Swiss multinational pharmaceutical giant, and whether the drug's active substance in a particular crystal form deserved a patent in India. But the implications reached far beyond one drug or one company. The judgment went to the very heart of the tension between the rights of patent-holding pharmaceutical corporations and the right of millions of patients in developing countries to access life-saving medicines at affordable prices. It also addressed, for the first time with such depth and clarity by the Supreme Court, the meaning of "evergreening," the controversial practice by which pharmaceutical companies seek to extend their patent monopoly by making minor tweaks to an already known substance and claiming a fresh patent for the slightly modified version. The Court's ruling, written by Justice Aftab Alam (with Justice Ranjana P. Desai concurring), was a resounding rejection of Novartis's patent claim and a definitive statement that Indian patent law, as amended in 2005, imposes a high bar for the patentability of pharmaceutical products, one that is deliberately higher than that set by many Western patent systems.

Factual and Procedural Background

The story of this litigation begins with a German scientist named Dr. Jürg Zimmermann, who invented a class of compounds called N-phenyl-2-pyrimidine-amine derivatives. One of these compounds was Imatinib, which was found to have remarkable anti-tumoral properties and became the key ingredient in a drug for the treatment of chronic myeloid leukaemia and certain types of tumours. Dr. Zimmermann filed an application for patent for these compounds in the United States on February 4, 1993, which later became US Patent No. 5,521,184, granted on May 28, 1996. This patent, commonly called the Zimmermann Patent, covered Imatinib and its pharmaceutically acceptable salts, including Imatinib Mesylate, which is the methanesulfonic acid addition salt of Imatinib. After Ciba Geigy merged with Sandoz in 1996, the resulting company became Novartis AG, the appellant in this case.

Gleevec or Glivec, as it is known commercially, is directly derived from the Zimmermann Patent. Novartis has always maintained that Gleevec is fully covered by Zimmermann Patent No. 5,521,184. In the United States, Novartis sought and obtained extension of the Zimmermann Patent's term for the period of regulatory review for Gleevec. When a US company called NATCO sought to market its drug Veenat 100 (containing Imatinib Mesylate as its active ingredient) in the United Kingdom, Novartis successfully stopped it on the basis of the Zimmermann Patent. Before filing its Indian patent application, Novartis made an application in 2002 for the grant of Exclusive Marketing Rights (EMR) for the subject product under Section 24-A (since omitted) of the Patents Act, 1970. The Patent Office granted EMR to the appellant in 2003.

Now comes the critical point of the case. Novartis AG filed an application on July 17, 1998, before the Indian Office of Controller of Patents and Designs, for grant of a patent not for Imatinib or Imatinib Mesylate (the known salt), but specifically for the beta-crystalline form of Imatinib Mesylate, which Novartis referred to as beta-IM or β-IM. The priority date claimed was July 18, 1997, being the date on which the patent was applied for in Switzerland. The Indian Patent Office put the application on hold by adopting the mailbox procedure on account of expected changes in the patent regime in India. It was only after the Patents Act, 1970, was amended in 2005, that the application was taken up for consideration.

On January 25, 2006, the Assistant Controller of Patents vide five separate orders rejected the appellant's patent claim for β-IM, holding that the invention claimed by the appellant was anticipated by prior publication, specifically by Zimmermann Patent No. 5,521,184, and that the same was obvious to a person skilled in the art in view of the disclosures provided in Zimmermann Patent No. 5,521,184 specifications. The Assistant Controller further held that the patentability of the alleged invention was disallowed by Section 3(d) of the Patents Act as amended.

Aggrieved, Novartis appealed to the Intellectual Property Appellate Board (IPAB). By its order dated June 26, 2009, the IPAB held that although β-IM satisfied the test of invention/inventive step prescribed in Sections 2(1)(j) and (ja) of the Patents Act, 1970, it failed the test of enhanced efficacy prescribed in Section 3(d) thereof. The IPAB dismissed the appeals filed by the appellant on this ground. However, in a partial relief to Novartis, the IPAB held that the appellant could not be denied a process patent for the preparation of β-IM. The appellant challenged the IPAB order before the Supreme Court of India directly under Article 136 of the Constitution. The parties who had opposed the patent claim before the authorities below, including Cipla Ltd., NATCO Pharma Limited, the Cancer Patients Aid Association, and others, were permitted to file SLPs in the Supreme Court against the partial ruling in favour of the appellant regarding the process patent. Thus, all parts of the IPAB order were appealed against, and all issues were open for determination by the Supreme Court. The Civil Appeals before the Supreme Court were Civil Appeals Nos. 2706-716 of 2013 (with Civil Appeal No. 2728 of 2013 and Civil Appeals Nos. 2717-27 of 2013).

The Dispute

Before the Supreme Court, the central question was deceptively simple but deeply consequential: could Novartis AG obtain an Indian patent for the beta-crystalline form of Imatinib Mesylate (β-IM), which it marketed as Gleevec/Glivec for the treatment of chronic myeloid leukaemia? This question broke down into several layered issues.

The first was whether β-IM was a new substance altogether, or merely a new form of an already known substance. This was crucial because Section 3(d) of the Patents Act, 1970, as amended in 2005, specifically deals with the situation where a new form of a known substance is claimed for patent, and imposes a requirement that the new form must show significantly enhanced efficacy compared to the known substance.

The second was what the correct legal test for "invention" was under Indian law, specifically under Sections 2(1)(j) and 2(1)(ja) of the Patents Act, 1970. Did β-IM satisfy this test?

The third, and perhaps the most intensely debated, question was the meaning, scope, and applicability of Section 3(d) of the Patents Act, 1970, as amended by the Patents (Amendment) Act, 2005. Novartis strenuously argued that Section 3(d) was an exception provision, operating only in the manner of a caution or as an "ex majore cautela" clause, and that if an applicant passed the test of invention under Sections 2(1)(j) and (ja), it could not be denied a patent merely on the basis of Section 3(d). The respondents argued the opposite: that Section 3(d) represented an independent and additional tier of requirement for chemical substances and pharmaceuticals, deliberately designed to prevent evergreening.

The fourth question was what "efficacy" meant under Section 3(d) and its Explanation. Novartis argued that β-IM had enhanced bioavailability (it was 30% more bioavailable than Imatinib in free base form), and that bioavailability was a form of efficacy. The respondents argued that "efficacy" in the context of a medicine must mean therapeutic efficacy, that is, the ability to cure or treat the disease for which the medicine is prescribed, and that mere physicochemical properties or enhanced bioavailability did not constitute enhanced therapeutic efficacy.

Novartis submitted before the Supreme Court through its Senior Advocate Mr. Gopal Subramanium that both Imatinib Mesylate and β-IM were new products produced as a result of two inventions; that beginning from Imatinib-in-free-base-form, in a two-stage invention they first produced Imatinib Mesylate and then developed β-IM; that Zimmermann Patent No. 5,521,184 did not teach a person how to prepare Imatinib Mesylate from Imatinib-in-free-base; and that Section 3(d) operated only ex majore cautela and was not meant to be an exception to the test of invention. The respondents, including Cipla Ltd. through Senior Advocate Mr. Harish Salve and Mr. Harish Salve and Ranbaxy through Ms. Prathiba Singh, strongly opposed all these positions.

Reasoning and Analysis of the Court

The Supreme Court's judgment, authored by Justice Aftab Alam (Justice Ranjana P. Desai concurring), is a masterly piece of legal analysis that combines an examination of the statutory provisions, their legislative history, the parliamentary debates, international treaty obligations, and the specific facts of the case.

The Court began by setting out the framework of the Patents Act, 1970, noting that "invention" and "patentability" are two distinctly separate concepts under Indian law. Section 2(1)(j), which defines "invention," requires a new product or process involving an inventive step that is capable of industrial application. Section 2(1)(ja) defines "inventive step" as a feature of an invention that involves technical advance as compared to existing knowledge or economic significance, or both, and that makes the invention not obvious to a person skilled in the art. Section 2(1)(ac) defines "capable of industrial application" as a product that is capable of being made or used in an industry. Together, these provisions mean that to qualify as an invention under Indian law, a product must be new (not anticipated), must involve an inventive step (not obvious), and must be capable of industrial application. The Court emphasized that something may be an "invention" in the general sense and yet may not qualify as a patentable invention under the 1970 Act, and something may even satisfy the definition of "invention" under the 1970 Act and yet be denied a patent for other larger considerations, as stipulated in Section 3 of the Act.

Section 3 of the Patents Act lists things that "are not inventions within the meaning of this Act." Section 3(d), as amended in 2005, is the provision that became the epicenter of this litigation. It states that the following shall not be deemed to be an invention: "the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant." The Explanation to Section 3(d) is equally significant: "For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy."

The Court then undertook a detailed examination of the legislative history and parliamentary debates around the 2005 amendment to determine the precise intent of Section 3(d). The Court found that India had an absolutely unenviable task in amending the Patents Act, 1970, to make it TRIPS-compliant without compromising on public health considerations. The TRIPS Agreement had aroused grave concerns about its impact on public health, particularly the inverse relationship between product patents in pharmaceuticals and the availability of essential medicines at affordable prices. The Court noted that India had, after the patent system in India barred the grant of patents for pharmaceutical and chemical substances, developed a pharmaceutical industry that became a major supplier of drugs at cheap prices to a number of developing and underdeveloped countries. Ninety per cent of the drugs India had been supplying to sub-Saharan Africa for treating AIDS were generic drugs whose prices had dramatically fallen because of the competition. The reintroduction of product patents in the Indian patent system through the TRIPS Agreement became a cause of alarm, particularly from the standpoint of public health and the supply of medicines to poor countries.

In Parliament, the government introduced Section 3(d) as the specific provision that would prevent the abuse of product patents in pharmaceutical substances and check the practice of evergreening. In fact, the Court noted that the whole Parliamentary debate on the Patents Amendment Bill centred on medicines and drugs, with about 80% of the debate focusing on medicines and drugs and the remaining 20% on agricultural chemicals. The Court held that the amended portion of Section 3(d) of the 1970 Act sets up a second tier of qualifying standards for chemical substances and pharmaceutical products in order to leave the door open for true and genuine inventions but, at the same time, to check any attempt at repetitive patenting or extension of the patent term on spurious grounds.

On the question of whether Section 3(d) was an ex majore cautela clause or an independent substantive provision, the Court firmly rejected Novartis's argument. The Court held that Section 3(d) is not a provision ex majore cautela and is applicable to the subject product β-IM. The submission of Novartis that Section 3(d) has no application to the subject product because it has satisfied the tests of invention as provided in Sections 2(1)(j) and (ja) was completely misconceived, for the reason that Section 3 was designed to defeat an application for patent which passed through the definition of invention. Section 3 was not a mere cautionary provision; it was a substantive disqualifying provision. If clause (d) is isolated from the rest of Section 3, and the legislative history behind the incorporation of Chapter II in the Patents Act, 1970, is disregarded, then it may be possible to see Section 3(d) as an extension of the definition of "invention" and to link Section 3(d) with Sections 2(1)(j) and (ja). In that case, on reading Sections 2(1)(j) and (ja) with Section 3(d), it would appear that the 1970 Act sets different standards for qualifying as "inventions" — for medicines and drugs and other chemical substances, the 1970 Act sets the invention threshold further higher, by virtue of the amendments made in Section 3(d) in the year 2005.

Next, the Court turned to the specific facts to determine whether β-IM was covered by Zimmermann Patent No. 5,521,184. Novartis had argued that Zimmermann Patent No. 5,521,184 did not teach how to prepare Imatinib Mesylate from Imatinib free base. The Court examined the Zimmermann Patent in painstaking detail, noting that the patent related to N-phenyl-2-pyrimidine-amine derivatives, that Example 21 in the patent exemplified Imatinib (referred to as CGP 57148), and that Claim 23 listed Imatinib along with its pharmaceutically acceptable salts. A key article from the journal Cancer Research, published in January 1996, further showed that even before the Indian patent application, there was a detailed discussion about the anti-tumoral properties of Imatinib and its methanesulfonate salt (i.e., Imatinib Mesylate), with CGP 57148B referring specifically to Imatinib Mesylate. Critically, the US Board of Patent Appeals, in the case of the appellant itself, when granting US Patent Zimmermann Patent No. 6,894,051 B1 for β-IM, had proceeded on the basis that Zimmermann Patent No. 5,521,184 had the teaching for making of Imatinib Mesylate from Imatinib for any person skilled in the art. The Court noted the deeply ironic position Novartis found itself in: in the United States it had always maintained that Gleevec was part of Zimmermann Patent No. 5,521,184, used that position to extend the patent term, and relied on the Zimmermann Patent to stop NATCO from marketing its generic drug in the UK. But before the Indian authorities, it was now claiming that Imatinib Mesylate was not taught by or covered by the Zimmermann Patent. The Court held that Novartis was bound by the finding recorded in its own case in the United States. Accordingly, "Imatinib Mesylate" was a known substance under Zimmermann Patent No. 5,521,184. Therefore, β-IM was a new form of a known substance, and Section 3(d) was directly applicable.

On the question of what "efficacy" means for the purposes of Section 3(d) of the Patents Act as applied to medicines, the Court adopted a strict and narrow interpretation. The Court referred to the New Oxford Dictionary of English (1998 Edition) which defines "efficacy" as "the ability to produce a desired or intended result." The Court held that the test of efficacy in each case would depend upon the function, utility or purpose of the product under consideration. In the case of a medicine, the efficacy must be its therapeutic efficacy — its ability to produce the desired therapeutic result, meaning to cure or treat the disease for which it is prescribed. The Court held that mere improvement in physicochemical properties like better flow, thermodynamic stability, lower hygroscopicity, and enhanced bioavailability do not automatically lead to an inference of better therapeutic efficacy. It was absolutely clear, the Court stated, that the physico-chemical properties of β-IM, namely more beneficial flow properties, better thermodynamic stability, and lower hygroscopicity, had nothing to do with therapeutic efficacy. On bioavailability, the Court noted that Novartis claimed that β-IM had 30% increased bioavailability compared to Imatinib in free base form. However, even accepting this claim, the Court reasoned that bioavailability by itself may not necessarily lead to enhanced therapeutic efficacy. The Court relied on a medical commentary which stated that bioavailability studies are meant to determine the rate and extent of absorption of a drug substance; if a drug product is not bioavailable, it cannot be regarded as effective, but a determination that a drug product is bioavailable is not in itself a determination of effectiveness. The Court further noted that the enhanced therapeutic efficacy of β-IM over Imatinib Mesylate had to be specifically claimed and established by research and empirical data, and this had not been done. Indeed, the Court pointed to the clear and unambiguous averments in the subject Indian patent application, in which all the references were to Imatinib in free base form (or to the alpha crystalline form of Imatinib Mesylate in respect of flow properties, thermodynamic stability, and lower hygroscopicity), but there was no claim of any therapeutic advantage for β-IM over Imatinib Mesylate itself.

The Court also addressed an important factual point regarding the drug Gleevec as actually marketed in India (and also in the United States). Gleevec/Glivec was described on its package as "Imatinib Mesylate tablets 100 mg" with no reference to β-IM at all. This meant that the claim for a patent for β-IM was actually an attempt to obtain a patent for "Imatinib Mesylate," which would otherwise be impermissible given the Zimmermann Patent's coverage. The Court found this an attempt to obtain patent for "Imatinib Mesylate" which would otherwise be impermissible.

The Court also addressed the broader principle of patent coverage versus patent disclosure. Indian patent law, the Court held, does not permit the scope of patent coverage or claims to be wider than the disclosures or teachings contained in the patent. A limited monopoly is granted to the patentee in return for making his knowledge available to the public domain. Patent coverage or claim cannot be wider than the disclosures and teachings contained in the patent. This was significant because Novartis, in claiming that its Indian patent application covered a new and separate product from the Zimmermann Patent, was effectively trying to claim protection beyond what it had disclosed.

The Court also rejected Novartis's argument that Indian patent law should be aligned with the standard of a "manipulative step" used in United States patent law. In the United States, when the US Board of Patent Appeals granted β-IM a patent, it recognized it as involving a "manipulative step" which may not necessarily involve an "inventive step." The Court held that the standard under Indian law is "inventive step," not "manipulative step," and the two are clearly different things. The requirement of "inventive step" under Indian law is a higher standard than the "manipulative step" recognized in the US context. Indian patent law, the Court stated, lays down a high requirement of "inventive step" in Section 2(1)(ja) and "enhanced efficacy" in Section 3(d) for incremental improvements of known substances or processes to qualify for patent protection. Standard of inventiveness is high under Indian patent law, and patent law in India should not develop in a manner where the scope of patent is determined based not on the intrinsic worth of the invention but by artful drafting of its claims by skilful lawyers, where patents are traded as a commodity not for production and marketing of patented products but to search for someone who may be sued for infringement.

Final Decision of the Court

The Supreme Court dismissed the appeals filed by Novartis AG with costs. It held that the subject product, β-crystalline-Imatinib Mesylate (β-IM), failed both the test of invention under Sections 2(1)(j) and (ja) of the Patents Act, 1970, and the test of enhanced efficacy/patentability as laid down under Section 3(d) read with its Explanation. The Court therefore held that β-IM was not entitled to the grant of an Indian patent. The Court further dismissed the cross-appeals of the other parties (Cipla, NATCO, Cancer Patients Aid Association, and others) against the partial relief granted by the IPAB in favour of Novartis regarding the process patent, holding that the question of a process patent for β-IM was not strictly a part of the subject matter before the Court.

Points of Law Settled in the Case

This judgment settled several vital and enduring principles of Indian patent law, particularly in relation to pharmaceutical products.

The most foundational principle established is that "invention" and "patentability" are two distinctly separate and cumulative concepts under the Patents Act, 1970. A substance may satisfy the definition of "invention" under Sections 2(1)(j) and (ja) and yet be denied a patent if it fails the requirements of Section 3(d). Section 3(d) is not an ex majore cautela provision; it is a substantive, independent tier of qualifying standards specifically for chemical substances and pharmaceuticals.

The Court definitively interpreted the meaning of "efficacy" under Section 3(d) and its Explanation for the purpose of pharmaceutical products: efficacy means therapeutic efficacy, that is, the ability of the medicine to produce its desired therapeutic result in treating the disease for which it is prescribed. Mere improvements in physicochemical properties such as better flow, greater stability, lower hygroscopicity, or improved bioavailability do not by themselves constitute enhanced therapeutic efficacy unless it is specifically established with research and empirical data that the enhanced physicochemical property or bioavailability actually translates into enhanced therapeutic effect.

The Court established that a new pharmaceutical product in the context of Section 3(d) and its Explanation must not mean something entirely new or unfamiliar; it may mean something "different from a recent previous" product or a product "regarded as better than what went before" or a product "in addition to another or others of the same kind." Such new pharmaceutical products, however, must additionally pass the test of enhanced efficacy to qualify for patent protection.

The Court held that the standard of inventiveness under Indian patent law is high, deliberately set to require a genuine technical advance and not merely a manipulative step, in contrast to the US standard. This means that incremental improvements of known pharmaceutical substances or processes, unless they genuinely advance the state of the art in a way that is not obvious to a person skilled in the art and demonstrate enhanced efficacy, will not qualify for patent protection in India.

The Court settled the principle that the scope of a patent claim cannot be wider than the disclosure or teaching contained in the patent. The patentee's monopoly is limited to what has been disclosed in the patent specification. This prevents companies from using artful claim drafting to secure broader protection than they have actually invented and disclosed.

The Court also settled the principle that an applicant for a patent is bound by positions taken and findings recorded in patent proceedings in other jurisdictions, particularly when the applicant itself has relied on those findings. Novartis, having always maintained in the United States and elsewhere that Gleevec was part of the Zimmermann Patent, could not turn around and claim before Indian authorities that Imatinib Mesylate was not disclosed in the Zimmermann Patent.

Case Details

Title: Novartis AG v. Union of India and Others

Date of Order: April 1, 2013

Case Numbers: Civil Appeals Nos. 2706-716 of 2013 (with Civil Appeal No. 2728 of 2013 and Civil Appeals Nos. 2717-27 of 2013)

Citation: (2013) 6 SCC 1

Name of Court: Supreme Court of India

Hon'ble Judges: Aftab Alam, J. and Ranjana P. Desai, J.

Disclaimer: Readers are advised not to treat this as a 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 SEO Titles

Novartis AG Vs. Union of India: The Landmark Supreme Court Ruling That Blocked Gleevec's Indian Patent
Section 3(d) of the Indian Patents Act Explained: The Novartis Gleevec Judgment and Evergreening
India's Supreme Court on Pharmaceutical Patent Evergreening: Novartis Case Analysis 2013
Therapeutic Efficacy vs. Bioavailability in Indian Patent Law: Lessons from the Novartis Judgment
Imatinib Mesylate Patent Denied in India: Complete Legal Analysis of the Novartis Decision
TRIPS, Access to Medicines, and Indian Patent Law: The Novartis Gleevec Case Fully Explained
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Headnote

Under the Patents Act, 1970, "invention" and "patentability" are two distinct and cumulative concepts. For a pharmaceutical or chemical substance that is a new form of a known substance, the applicant must satisfy not only the test of "invention" as defined in Sections 2(1)(j) and (ja) but also the separate and independent test of enhanced efficacy prescribed in Section 3(d) read with its Explanation. Section 3(d) is a substantive disqualifying provision and not an ex majore cautela clause. For the purposes of Section 3(d) of the Patents Act, 1970, and its Explanation, "efficacy" in the case of a medicine means therapeutic efficacy — the ability of the medicine to cure or treat the disease for which it is prescribed. Mere improvement in physico-chemical properties such as better flow, thermodynamic stability, lower hygroscopicity, or enhanced bioavailability does not constitute enhancement of known efficacy unless specifically established with research and empirical data to result in enhanced therapeutic effect. Beta-crystalline Imatinib Mesylate (β-IM), the active ingredient of the cancer drug Gleevec/Glivec, being a new form of Imatinib Mesylate, which was itself a known substance disclosed in Zimmermann Patent No. 5,521,184, failed both the test of invention and the test of enhanced efficacy, and was accordingly held not entitled to an Indian patent. The standard of inventiveness under Indian patent law is deliberately high and differs from the standard of a "manipulative step" recognized in United States patent law. Indian patent law disallows evergreening and sets up a second tier of qualifying standards for pharmaceutical products to permit genuine inventions while preventing repetitive patenting or extension of patent term on spurious grounds.

Monday, June 8, 2026

GRM Foodkraft Pvt Ltd and Another Vs. KS Agro Impex

GRM Foodkraft Pvt. Ltd. & Anr. Vs. KS Agro Impex & Anr.:29 May 2026: CS(COMM) 637/2024: 2026:DHC:4851:Hon’ble Ms. Justice Jyoti Singh

The Delhi High Court, in a trademark and trade dress passing-off dispute concerning Basmati rice packaging, granted interim protection to GRM Foodkraft Pvt. Ltd. and its affiliate against KS Agro Impex. The plaintiffs alleged that the defendants had copied the distinctive packaging and trade dress of their “10X Zarda King” Golden Sella Basmati Rice product, including the green-and-gold colour scheme, stylised lettering, lanterns, stars, moon imagery, and other visual elements.

The defendants contended that the features relied upon by the plaintiffs were generic, that the word “Zarda” was descriptive and common to trade, and that their prominent “Double Chabi” house mark eliminated any possibility of confusion.

Court held that the test in a passing-off action is the overall impression created by the rival trade dresses and not a side-by-side comparison of differences. The Court found that the defendants had copied several essential and distinctive elements of the plaintiffs’ packaging, resulting in deceptive similarity likely to confuse consumers of average intelligence and imperfect recollection. The Court further observed that the plaintiffs had established substantial goodwill and reputation through significant sales, advertising expenditure, and market presence.

Holding that a prima facie case of passing off was made out, the Court concluded that the defendants’ packaging amounted to “smart copying” of the plaintiffs’ trade dress and upheld the injunction restraining use of the impugned packaging pending disposal of the suit.

Here is a concise legal news-style report:

GRM Foodkraft Pvt. Ltd. & Anr. v. KS Agro Impex & Anr.

Date of Judgment: 29 May 2026

Case No.: CS(COMM) 637/2024

Neutral Citation: 2026:DHC:4335

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Jyoti Singh

Justice Jyoti Singh held that the test in a passing-off action is the overall impression created by the rival trade dresses and not a side-by-side comparison of differences. The Court found that the defendants had copied several essential and distinctive elements of the plaintiffs’ packaging, resulting in deceptive similarity likely to confuse consumers of average intelligence and imperfect recollection. The Court further observed that the plaintiffs had established substantial goodwill and reputation through significant sales, advertising expenditure, and market presence.

[Disclaimer: Readers are advised not treat this as a substitute for legal advise as it may contain errors in perception,interpretation and presentation of facts and law.]

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Presence of house mark on packaging does not by itself dispel consumer confusion

Introduction:

In the competitive world of fast-moving consumer goods, particularly food products like rice, the visual appearance of packaging often matters more to consumers than the brand name printed on it. A consumer walking into a kirana store or wholesale market relies heavily on colour, design, imagery, and overall visual impression to identify and pick a product they have previously purchased. This reality forms the bedrock of trade dress protection law in India, and the Delhi High Court's judgment in GRM Foodkraft Pvt Ltd v. KS Agro Impex is a significant recent addition to this body of law.

Decided on 29th May 2026, this case deals with the question of whether a rice seller can protect the unique packaging of its product, even without a registered trademark , when a competitor launches a nearly identical-looking product in the market. The Court's answer is a resounding yes, provided the plaintiff can demonstrate goodwill, misrepresentation, and damage, the three classic ingredients of a passing off action. What makes this judgment particularly instructive is the Court's detailed analysis of how the "overall impression" test works in practice, how the presence of a competitor's own house mark does not automatically rescue it from a finding of deceptive similarity, and why rice as a food product demands a lower threshold of deceptive similarity than many other products.

Factual and Procedural Background:

The story of this dispute begins in 1974, when the predecessors of the Plaintiff companies started a rice milling business called Garg Rice & General Mills in Panipat, Haryana. They set up their first milling plant between 1974 and 1979, initially selling only in the domestic market. A second plant followed in 1980, and by 1988 the business had expanded internationally, exporting basmati rice to Saudi Arabia and other Middle Eastern countries. Over the decades, the business grew substantially, and by 2024, Plaintiff No. 2 had a presence in more than 38 countries and was recognised as one of India's leading basmati rice exporters.

Plaintiff No. 1, GRM Foodkraft Pvt Ltd, was incorporated on 7th July 2020 as a wholly owned subsidiary of Plaintiff No. 2, specifically to handle the domestic market. It adopted the house mark "10X" for its range of rice products. In 2021, Plaintiff No. 1 launched Golden Sella Basmati Rice under the sub-brand "Zarda King," using a specially designed, distinctive packaging. This packaging featured a green and gold colour scheme, gold English lettering styled to resemble Urdu or Arabic script, the words "Zarda King" prominently placed in the centre in golden font, hanging lanterns and stars at the top in golden colour, a crescent moon with a star at the top centre, an image of a building resembling Arabic architecture with minarets, and a plate of pulao at the bottom. The trademarks associated with this packaging were assigned to Plaintiff No. 1 by Mr. Dhruv Kumar Singhal through assignment deeds dated 6th August 2023, following trademark applications filed on 4th November 2022.

The product achieved remarkable commercial success. From the time of its launch in October 2021 through financial year 2023-24, it generated cumulative sales exceeding Rs. 86.16 crores. Promotional and marketing expenditure exceeded Rs. 8 crores over this period. Celebrities such as Salman Khan and Saina Nehwal endorsed the brand, and it was promoted through hoardings, YouTube videos, and listings on platforms like IndiaMart.

In the first week of July 2024, Plaintiff No. 1 learned through trade channels that Defendant No. 1, KS Agro Impex, was also selling Golden Sella Basmati Rice. When the product was procured from the market, it became apparent that the packaging of Defendant No. 1 was strikingly similar to that of the Plaintiffs. It used a green and gold colour scheme, gold lettering in English resembling Urdu or Arabic script, the word "Zarda" in a similar golden stylised font (but with the suffix "Special" added), hanging lanterns and stars at the top in golden colour, the word "Zarda" written separately in Urdu or Arabic script, and an image of a pulao dish towards the lower portion of the pack. Defendant No. 1 was established as a partnership firm in 2016 and claimed to be a reputed business entity selling over 50 varieties of rice under the brand "Double Chabi," exporting to over 25 countries. In July 2024, two of its partners applied for trademark registration of a label bearing "Double Chabi Zarda Special." Defendant No. 2 was found to be the manufacturer and supplier of packaging material to Defendant No. 1.

After conducting an extensive market survey covering 208 persons across 7 cities comprising 109 street hawkers, 75 rice retailers, and 24 rice distributors the Plaintiffs filed the suit. The survey revealed that 81 percent of respondents were aware of the Plaintiffs' packaging and 85 percent could identify it from a distance. On 1st August 2024, the Court passed an ex parte ad interim injunction restraining the Defendants from selling, offering for sale, or advertising Golden Sella Basmati Rice in the impugned packaging, while granting Defendant No. 1 the liberty to continue its business using a different and distinct packaging. Defendant No. 1 subsequently filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908 seeking vacation of this ex parte order.

The Dispute:

The core dispute before the Court was whether the packaging or trade dress adopted by Defendant No. 1 for its Golden Sella Basmati Rice was deceptively similar to the distinctive trade dress of the Plaintiffs, and whether the Plaintiffs had made out a prima facie case of passing off and copyright infringement warranting continuation of the interim injunction.

The Plaintiffs argued that Defendant No. 1 had dishonestly and deliberately copied almost every essential element of their unique packaging the colour scheme, font style, the word Zarda, hanging lanterns and stars, Arabic architectural imagery, and pulao plate with the intent to mislead consumers into believing that the Defendant's product was associated with the Plaintiffs. They contended that all three ingredients of passing off goodwill and reputation, misrepresentation, and irreparable harm were clearly established. They emphasised that for edible products like rice, a lower threshold of deceptive similarity should apply and the relevant consumers include street hawkers, rice retailers, and distributors in Tier-II and Tier-III cities who may not be discerning buyers.

Defendant No. 1 contested the claim on several grounds. It argued that individual elements of a trade dress such as colours, stars, lanterns, the crescent moon, a pulao image, or minarets cannot be monopolised by any party. It contended that the word "Zarda" is generic and descriptive, referring to a traditional sweet rice dish made from milk, saffron, sugar, and food colouring, and that the word originates from the Urdu word "Zard" meaning yellow. Defendant No. 1 also argued that it had given a disclaimer in its trademark application stating it would not claim exclusive rights over the word "Zarda." It further contended that its packaging was distinct from the Plaintiffs' because it had a matte finish with white polka dots in the background, prominently displayed the house mark "DOUBLE CHABI" on multiple places including the foldable sides of the packaging, had a prominent red colour strip at the bottom, and placed the pulao image in the centre rather than on the side. It argued that the Plaintiffs had failed to prove goodwill specifically in relation to the Zarda King sub-brand packaging and had merely shown overall sales figures for the 10X brand. It also argued that consumers buying rice in 30-kg bags are discerning consumers who would not be confused.

Reasoning and Analysis of the Court:

The Court approached the matter by first identifying the applicable legal framework for passing off before examining the facts in light of that framework.

On the law of passing off, the Court reiterated the classic "trinity test" goodwill and reputation, misrepresentation, and damage or injury drawing from the House of Lords judgment in Reckitt and Colman Products Ltd v. Borden Inc., [1990] 1 WLR 491, and the Supreme Court's judgment in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65. From the Reckitt and Colman case, the Court noted that a successful passing off action requires that the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature, and that the misrepresentation has deceived or is likely to deceive in a manner likely to cause damage to the plaintiff. The Court also drew upon the Delhi High Court's own judgment in Dabur India Limited v. Shree Baidyanath Ayurved Bhawan Pvt. Ltd., 2012 SCC OnLine Del 3332, emphasising that no trader is entitled to represent his goods as being the goods of another, and that any representation through marks, devices, colour combinations, or other means constitutes an invasion of proprietary rights.

On the question of deceptive similarity, the Court anchored itself firmly in the landmark Supreme Court decision in Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618. From this case, the Court extracted the central principle that in determining whether one mark or packaging is deceptively similar to another, it is the broad and essential features that must be considered, not a side-by-side comparison to hunt for differences. The test is whether there is overall similarity sufficient to mislead a person of average intelligence and imperfect recollection. The Court quoted the Supreme Court's observation from Parle Products that if a person was not careful enough to note the peculiar features of the plaintiff's packaging, he might easily mistake the defendant's packaging for it some time after seeing the original, because an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes.

Applying these principles, the Court conducted a detailed visual comparison of the rival packaging. It found that the similarities were numerous and obvious green and gold colour scheme, gold English lettering styled to resemble Urdu or Arabic script, the word "Zarda" in a similar font and style, hanging stars and lanterns at the top in golden colour, the word "Zarda" separately inscribed in Urdu or Arabic script, and a plate of pulao in the lower portion — and these similarities substantially outweighed the differences pointed out by Defendant No. 1. The Court acknowledged that there were some differences, such as the white polka dots and matte finish on Defendant No. 1's packaging, the placement of the pulao image, and the red strip at the bottom. However, it held that the test is not to focus on dissimilarities but on similarities of essential elements, and that even where dishonesty is apparent, the law requires paying greater attention to points of similarity. In this context, the Court drew on the observation in Baker v. Master Printers Union of New Jersey, 47 USPQ 69, which has been widely quoted in Indian courts: the most successful form of copying is to employ enough points of similarity to confuse the public, with enough points of difference to confuse the courts.

The Court found that Defendant No. 1 had engaged in precisely this kind of "smart copying," a term the Court borrowed from Allied Blenders alias Distillers Private Limited v. Hermes Distillery Private Limited, 2024 SCC OnLine Del 217. In the Allied Blenders case, the Court had observed that when broad similarities are so obvious at first look, the differences are nudged into oblivion, and that a chart of differences showing extraordinary effort by the defendant actually highlights the similarities rather than diminishing them.

On the argument that the word "Zarda" is generic or descriptive and therefore no one can claim exclusivity over it, the Court took a nuanced position. It acknowledged that even if Zarda is accepted to be generic or descriptive, this does not materially dilute the Plaintiffs' case of passing off, because the claim is not merely about the word Zarda but about the overall deceptive imitation of the entire trade dress, get-up, and visual presentation. The Court further observed that in the overall setting of the packaging, Zarda functions as a memorable component in consumer recollection, and that the addition of the suffix "Special" by Defendant No. 1 is not sufficient to create any meaningful distinction in the mind of a consumer guided by overall impression. The Court noted pointedly that this addition of "Special" was an unsuccessful attempt to create an illusion of distinction and avoid an action for dishonest copying and imitation.

The Court was also unpersuaded by Defendant No. 1's argument that it cannot claim monopoly over individual elements like colours, stars, minarets, or lanterns. Referring to the Delhi High Court's judgment in Colgate Palmolive Company and Another v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005, the Court observed that while no party can have monopoly over a particular colour, if there is substantial reproduction of a colour combination in similar order and proportion on packaging that has been imprinted on consumers' minds, it is liable to cause confusion and dilute distinctiveness. The Court emphasised that it is the overall combination, arrangement, and ensemble of these elements taken together that acquires distinctiveness and deserves protection.

On the question of goodwill and reputation, the Court rejected Defendant No. 1's contention that the Plaintiffs had failed to prove goodwill specifically in relation to the Zarda King packaging. It found that the Plaintiffs had placed on record sales turnover documents, GST invoices for printing the laminated packaging in question, CA Certificates, sales invoices, photographs of hoardings and billboards, social media promotions, YouTube campaign screenshots, and IndiaMart listings, all specifically linked to the 10X Zarda King brand. The Court held that sales worth approximately Rs. 90 crores in three years cannot be regarded as nominal for a fast-moving consumer food product like rice and are sufficient to support a prima facie inference of goodwill and distinctiveness in the trade dress.

A particularly striking rhetorical question posed by the Court was: if the Plaintiffs' trade dress was not distinctive and had not created formidable goodwill and reputation in the market, why did Defendant No. 1 choose to copy it to the maximum extent possible? The Court drew support from the principle articulated in cases like Dabur India Limited v. Shree Baidyanath Ayurved Bhawan (supra) and Seven Towns Ltd. and Another v. M/s. Kiddiland and Another, 2016 SCC OnLine Del 5168, that in a passing off action, the trade dress and get-up of packaging constitute an essential component of goodwill and reputation.

On the critical question of whether the prominent display of Defendant No. 1's house mark "DOUBLE CHABI" on its packaging was sufficient to dispel consumer confusion, the Court gave a clear and emphatic answer in the negative. It drew upon the Supreme Court's decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, which emphasised that the relevant consumer is a person of average intelligence and imperfect recollection, and that for products purchased across different literacy levels and in diverse markets, the degree of care exercised is lower. The Court observed that for rice, which is a fast-moving consumer good sold from retail shelves, kirana stores, and wholesale counters, buying decisions are predominantly driven by visual recognition of packaging colour scheme, layout, and general trade dress rather than careful scrutiny of brand names or house marks. In such an environment, the presence of DOUBLE CHABI is not sufficient to dispel consumer confusion.

This conclusion was reinforced by the recent judgment of the Division Bench of the Delhi High Court in Dabur India Limited v. Emami Limited, 2026 SCC OnLine Del 3922, where it was observed that even when a defendant's product bears a well-known house mark like "DABUR," this has little role to play when the overlapping features in the trade dress are likely to cause confusion. The Division Bench specifically held that if individual elements of a trade dress are common to the trade, the distinctive combination, arrangement, and presentation of those elements as a whole can still acquire secondary meaning and deserve protection.

The Court also drew from Cadbury India Ltd. and Others v. Neeraj Food Products, 2007 SCC OnLine Del 841, where the Delhi High Court had found passing off even though one packet was marked "Cadbury GEMS" and the other "Neeraj JAMES BOND," because all other essential features of the Cadbury pillow pack — the blue background, brown oval shape, colour of the tablets, visual explosion imagery — had been copied by the Defendant. Similarly, in Allied Blenders and Distillers Pvt. Ltd. v. Agribiotech Industries Limited (ABIL), 2020 SCC OnLine Del 2770, the Court had found deceptive similarity between the "Officers Choice" whisky label and the "Chetak" label despite clearly different brand names, because the overall combination and arrangement of elements was substantially similar.

The Court found additional support in Mondelez India Foods Pvt. Ltd. and Another v. Neeraj Food Products, 2022 SCC OnLine Del 2199, where a blue and purple pillow pack comparison had led to a passing off finding on account of copying of all essential features, and in Marico Limited v. Mr. Mukesh Kumar and Others, 2018 SCC OnLine Del 10823, where the Court held that trade dress was novel and distinctive, and exclusivity could be claimed over several elements taken as a whole.

For food products specifically, the Court applied the principle from Dominos IP Holder LLC and Another v. Dominick Pizza and Another, 2023 SCC OnLine Del 6135, Ferrero SPA and Others v. M.B. Enterprises, 2025 SCC OnLine Del 5105, and Capital Foods Private Limited v. Sankalp Recreation Private Limited and Others, MANU/DEOR/75775/2025, that greater sensitivity is required and the threshold of deceptive similarity is far lower for edible products.

The Court also applied the initial interest confusion test drawn from the Division Bench judgment in Under Armour Inc v. Anish Agarwal and Another, 2025 SCC OnLine Del 3784, noting that given the deceptive similarity in the rival packaging, a consumer may initially be drawn to Defendant No. 1's product in the mistaken belief that it has some association with the Plaintiffs, and this constitutes actionable confusion.

On the third ingredient of passing off damage the Court held that once goodwill and misrepresentation are established, damage is ordinarily presumed. The mere existence of an identically packaged competing product for an identical product — Golden Sella Basmati Rice sold through common trade channels to a common consumer base is sufficient to indicate the likelihood of injury to the Plaintiffs' goodwill and reputation.

Finally, on the common to trade argument based on third-party use of the word Zarda, the Court found no merit in it. It observed that none of the documents filed by Defendant No. 1 showed any third party using the word Zarda with a packaging deceptively similar to that of the instant case with the same colour combination and elements. Drawing from Marico Limited (supra), the Court held that to establish the plea of common use, the use by other persons must be shown to be substantial and capable of affecting distinctiveness, and the Plaintiffs are not required to pursue every insignificant infringer.

Final Decision of the Court:

The Court held that the Plaintiffs had made out a prima facie case for continuing the ex parte ad interim injunction order dated 1st August 2024. The balance of convenience lay in favour of the Plaintiffs and against the Defendants, particularly since the injunction had already been in operation for almost two years. Vacating it would cause irreparable harm and injury to the Plaintiffs. Accordingly, the injunction was confirmed and made operative till the disposal of the suit. The Defendants and all persons acting on their behalf were restrained from selling, offering for sale, and advertising Golden Sella Basmati Rice in the impugned trade dress or packaging, which was found to be confusingly and deceptively similar to the Plaintiffs' trade dress or packaging.

However, it was expressly clarified that Defendant No. 1 is not precluded from carrying on its business for Golden Sella Basmati Rice using a different trade dress or packaging that is distinct and not deceptively similar to the Plaintiffs' packaging. It was also clarified that the packaging proposals offered by Defendant No. 1 during the course of the hearing cannot be used, as those too were found to be deceptively similar.

Point of Law Settled:

This judgment settles and reinforces several important principles of passing off law in the Indian context. The overall impression test applies to trade dress just as firmly as it applies to trademarks, and what matters is not whether the packaging is identical but whether, taken as a whole, it is likely to deceive a person of average intelligence and imperfect recollection. The presence of a competitor's house mark on its packaging, even a well-known one, does not by itself dispel consumer confusion when the overall trade dress is substantially similar to that of the plaintiff. For fast-moving consumer goods, particularly food products like rice where visual impression dominates purchase decisions and consumers include those with varying literacy levels, a lower threshold of deceptive similarity applies. A party who copies all essential features of a trade dress cannot escape liability by making minor cosmetic differences, as this constitutes "smart copying" which is still copying. Goodwill in a trade dress can be established even within a relatively short period through substantial sales, promotional expenditure, and celebrity endorsements, without necessarily requiring decades of use. The word or element claimed to be generic or descriptive does not dilute the overall passing off claim if the gravamen of the action is the deceptive imitation of the entire trade dress rather than any single word.

Case Title: GRM Foodkraft Pvt Ltd and Another Vs. KS Agro Impex and Another

Date of Order: 29th May 2026

Case Number: CS(COMM) 637/2024

Neutral Citation: 2026:DHC:4851

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 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

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Head Note

GRM Foodkraft Pvt Ltd launched Golden Sella Basmati Rice in 2021 under the sub-brand Zarda King with a distinctive green and gold packaging featuring gold Arabic-style lettering, hanging lanterns and stars, a crescent moon, minarets, and a pulao plate image, achieving sales of over Rs. 86 crores in three years. On discovering that KS Agro Impex was selling an identically named product in packaging reproducing almost all these elements under the mark "Double Chabi Zarda Special," the Plaintiffs filed a suit for passing off and copyright infringement and obtained an ex parte interim injunction on 1st August 2024. The Delhi High Court, on hearing both the application for ad interim injunction and the Defendant's application for vacation of the ex parte order, held that the Defendant had substantially copied the Plaintiffs' trade dress and that the presence of the house mark "Double Chabi" was insufficient to dispel consumer confusion for a food product like rice. Applying the overall impression test from Parle Products, the Court confirmed the injunction and dismissed the vacation application, reinforcing that smart copying of trade dress, even with cosmetic differences, constitutes actionable passing off.

Jyothy Labs Limited Vs. The Registrar of Trade Marks

Jyothy Labs Limited v. The Registrar of Trade Marks & Ors.:18.05.2026:C.A.(COMM.IPD-TM) 29/2026:Hon'ble Justice Tushar Rao Gedela

In a trademark dispute, the Delhi High Court set aside an order of the Registrar of Trade Marks that had dismissed Jyothy Labs Limited’s opposition to a trademark application on the ground that the company failed to file evidence within the prescribed period. The appellant contended that the counter-statement filed by the applicant was never served upon it, depriving it of the opportunity to submit evidence under Rule 45 of the Trade Marks Rules, 2017. During the proceedings, the Registrar’s counsel acknowledged that due to a technical glitch, the counter-statement had in fact not been served on the appellant.

Justice Tushar Rao Gedela observed that proper service of the counter-statement is a mandatory requirement and that the failure to comply with this requirement denied the appellant a fair opportunity to pursue its opposition. Finding merit in the appellant’s grievance, the Court quashed the impugned order dated 6 February 2025 and remanded the matter to the Registrar of Trade Marks with directions to complete service of the counter-statement, provide the appellant an opportunity to file evidence, and thereafter continue the opposition proceedings. The appeal was accordingly disposed of.

[Disclaimer: Readers are advised not treat this as a substitute for legal advise as it may contain errors in perception,interpretation and presentation of facts and law.]

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Technical Glitch Cannot Defeat Trademark Opposition

Introduction: In trademark opposition proceedings, procedural fairness is not merely a technical formality it is the very foundation on which the entire system of checks and balances rests. When a party files an opposition to the registration of a trademark, it does so to protect its existing rights from being diluted or infringed upon by a new registration. The opposition process under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 is a carefully designed mechanism that gives both the applicant and the opponent a fair opportunity to present their respective cases before the Registrar of Trade Marks. This mechanism depends critically on proper service of documents between the parties, because every subsequent step in the opposition including the filing of evidence is triggered by the receipt of the previous document.

When this chain of communication breaks down due to a technical failure on the part of the Registry itself, and the opposition is dismissed merely because the opponent did not file evidence within the prescribed time, a grave injustice results. The opponent is penalised not for its own default but for a failure that was entirely the Registry's doing. The Delhi High Court's order dated 18th May 2026 in Jyothy Labs Limited v. The Registrar of Trade Marks and Others directly confronts this situation and reaffirms a principle that is fundamental to any fair adjudicatory process: no party can be condemned for failing to do something it was never given the opportunity or notice to do.

This case, though brief in its order, carries significant lessons for trademark practitioners, trademark applicants, and the Trade Marks Registry itself about the importance of proper service, the consequences of procedural lapses by administrative bodies, and the role of the High Court in correcting such errors on appeal.

Factual and Procedural Background:

Jyothy Labs Limited, the Appellant, is a well-known Indian consumer goods company with an established presence in personal care, fabric care, and household products. The company filed an opposition bearing Opposition No. 1279339 against an application for registration of the trademark "JIVA AYURVEDA" filed under Application No. 4903005 in Class 42. Class 42 under the Trade Marks Act, 1999 relates broadly to scientific and technological services and wellness-related services, which is consistent with the Ayurveda services that the applied mark appeared to cover.

Under the Trade Marks Rules, 2017, the trademark opposition process follows a structured sequence. Once an opposition notice is filed by the opponent, the trademark applicant is required to file a counter-statement. Under Rule 45 of the Trade Marks Rules, 2017, once the counter-statement is filed by the applicant and served upon the opponent, the opponent has a period of two months to file its evidence in support of its opposition. This evidence stage is critical because it is through this evidence that the opponent substantiates the grounds of its opposition and places on record the factual basis for why the applied trademark should not be registered.

In the present case, the Registrar of Trade Marks passed an order dated 6th February 2025, dismissing the opposition filed by Jyothy Labs. The basis for this dismissal was that Jyothy Labs had not filed its evidence under Rule 45 of the Trade Marks Rules, 2017 within the prescribed period of two months from the alleged date of service of the counter-statement. As a consequence of this dismissal, the Registrar allowed the application for registration of the mark "JIVA AYURVEDA" under Application No. 4903005 in Class 42 to proceed for registration.

Jyothy Labs challenged this order by filing an appeal before the Delhi High Court under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Marks Rules, 2017. The appeal was registered as C.A.(COMM.IPD-TM) 29/2026 and was accompanied by three interlocutory applications bearing numbers I.A. 13755/2026, I.A. 13756/2026, and I.A. 13757/2026.

The core grievance of Jyothy Labs was straightforward: it never received the counter-statement filed by the trademark applicant. Since the counter-statement was never served upon it, Jyothy Labs could not have known that the two-month clock for filing evidence had started running. It was therefore impossible for it to have filed evidence within a period the commencement of which it had no notice of. There was an additional and telling inconsistency in the Registry's own records. The Hearing Notice dated 11th September 2025 issued by the Registrar of Trade Marks recorded the date of service of the counter-statement upon the appellant as 11th June 2024. However, the impugned order dated 6th February 2025 recorded the date of service of the counter-statement as 23rd April 2024. These two dates are different, and this discrepancy within the Registry's own documents powerfully corroborated the appellant's claim that something had clearly gone wrong with the service process.

The Dispute:

The dispute before the Court was narrow but significant. The question was whether the Registrar of Trade Marks was justified in dismissing Jyothy Labs' opposition under Opposition No. 1279339 solely on the ground that evidence under Rule 45 of the Trade Marks Rules, 2017 had not been filed within two months, when in fact the counter-statement the very document whose service triggers the running of that two-month period had never been properly served upon the appellant.

Jyothy Labs' position was that it was a victim of the Registry's own failure. It had filed its opposition diligently and was waiting for the next step in the proceedings. It was never informed that a counter-statement had been filed, and it was therefore never in a position to respond by filing evidence. To penalise it for this non-compliance was to visit upon it the consequences of a failure that was not of its making.

Reasoning and Analysis:

Upon hearing the parties, the Court first noted the specific claim of the Appellant that the counter-statement had never been served upon it, which was the direct cause of its failure to file evidence within the prescribed period under Rule 45 of the Trade Marks Rules, 2017. The Court also took note of the significant internal inconsistency in the Registry's own records the discrepancy between the date of alleged service mentioned in the Hearing Notice dated 11th September 2025, which stated 11th June 2024, and the date recorded in the impugned order of 6th February 2025, which stated 23rd April 2024. This inconsistency by itself raised serious doubt about whether any effective service had taken place at all.

Most importantly, when the Court issued notice and the matter was heard, the counsel representing the Registrar of Trade Marks made a candid and critical statement on instructions, after scrutinising the official records of the Registry. He stated that upon examination, it was indeed found that the counter-statement had in fact not been served upon the appellant. The reason attributed was a technical glitch that occurred at the time of service. The Registry thus effectively admitted that the service had failed and that the failure was on its part, not the appellant's.

The Court's analysis, though concise, was legally sound and principled. It observed that the mandate under Rule 45 of the Trade Marks Rules, 2017 which requires the counter-statement to be served upon the opponent before the evidence period commences had not been properly complied with by the Registrar. This non-compliance by the Registry directly deprived the appellant of the opportunity to file its evidence in support of its opposition notice. Essentially, a party cannot be expected to comply with a time-bound procedural obligation when the very trigger for that obligation the receipt of a document never reached it. Procedural deadlines presuppose proper notice; without notice, there can be no default.

No external judicial precedents were cited or discussed in this brief order, which is not unusual for an interlocutory or remand order where the facts speak clearly for themselves and the legal principle is well-established. The principle that a party must be given due notice before a proceeding can be conducted against it is foundational to natural justice and has been affirmed in countless contexts by Indian courts. The right to be heard audi alteram partem is one of the oldest and most fundamental principles of fair adjudication, and it cannot be bypassed by a procedural glitch in the Registry's own system.

The Court found it entirely appropriate in these circumstances to quash the impugned order dated 6th February 2025 and remand the matter back to the Registrar of Trade Marks. The directions given were specific and practical. The Registrar was directed to complete service of the counter-statement upon the appellant within three weeks from the date of the order. Thereafter, the appellant was to be given a proper opportunity to file its evidence in accordance with Rule 45 of the Trade Marks Rules, 2017. The Registrar was also directed to continue the proceedings in Opposition No. 1279339 after this was done.

Final Decision of the Court:

The appeal filed by Jyothy Labs Limited under Section 91 of the Trade Marks Act, 1999 read with Rule 156 of the Trade Marks Rules, 2017 was disposed of by quashing the order dated 6th February 2025 passed by the Registrar of Trade Marks. The matter was remanded to the Registrar with a direction to serve the counter-statement upon the appellant within three weeks, after which the appellant was to be given a full and proper opportunity to file its evidence under Rule 45 of the Trade Marks Rules, 2017.

Point of Law Settled:

This order reaffirms and applies the elementary but vital principle that a statutory time period for filing evidence in trademark opposition proceedings under Rule 45 of the Trade Marks Rules, 2017 can only commence from the date of actual and proper service of the counter-statement upon the opponent. Where the counter-statement has never been served upon the opponent due to a technical failure in the Registry's own system, the opposition cannot be dismissed for non-filing of evidence within that period. The consequences of a procedural failure by the Registry cannot be visited upon the opposing party. When it is admitted by the Registry itself that there was a glitch in service, the proper remedy is to quash the order dismissing the opposition and remand the matter with a direction for fresh and proper service followed by a genuine opportunity to file evidence.

Case Title: Jyothy Labs Limited Vs. The Registrar of Trade Marks and Others

Date of Order: 18th May 2026

Case Number: C.A.(COMM.IPD-TM) 29/2026

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

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**Head Note**

Jyothy Labs Limited filed an opposition to the registration of the trademark "JIVA AYURVEDA" under Application No. 4903005 in Class 42. The Registrar of Trade Marks dismissed the opposition vide order dated 6th February 2025 on the ground that Jyothy Labs had not filed evidence under Rule 45 of the Trade Marks Rules, 2017 within two months of the alleged service of the counter-statement. On appeal before the Delhi High Court, the Registry's own counsel admitted upon scrutiny of records that the counter-statement had in fact never been served upon the appellant due to a technical glitch. The Court held that the mandate under Rule 45 of serving the counter-statement upon the opponent had not been complied with, thereby depriving the appellant of its right to file evidence. The impugned order was quashed, the matter was remanded to the Registrar with a direction to serve the counter-statement within three weeks, and the appellant was to be given a proper opportunity to file evidence thereafter.

Wednesday, June 10, 2026

Alkem Laboratories Ltd. v. Numen Pharma Private Limited: Bombay High Court Protects Pharmaceutical Trademark “ALCIPRO” Against Use of “ACIPROX”

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Factual and Procedural Background

Dispute Before the Court

Reasoning and Analysis of the Court

Final Decision of the Court

Point of Law Settled

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Tuesday, June 9, 2026

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The Gleevec Verdict: India's Supreme Court Draws the Line Against Evergreening in Novartis AG v. Union of India

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Monday, June 8, 2026

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