Manash Lifestyle Pvt. Ltd. Vs. Shabina Kundial

Case Title: Manash Lifestyle Pvt. Ltd. Vs. Shabina Kundial

Date of Order: 14th February, 2025

Case No.: C.O. (COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:1012

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

1. Petitioner’s Background: Manash Lifestyle Pvt. Ltd., incorporated in 2011, operates the online beauty and wellness store Purplle.com. It owns the FACES and FACESCANADA trademarks, acquired through a Share Purchase Agreement in 2021.

2. Trademark Rights: The FACES trademark was originally adopted in 1974 by the petitioner’s predecessor and registered in India in 2006. The brand has been extensively used and promoted through various marketing channels, including digital platforms and celebrity endorsements.

3. Discovery of the Infringing Mark: In June 2024, during a routine trademark search, the petitioner found that Shabina Kundial (Respondent No.1) had obtained registration for a mark incorporating "FACES" in Class 44 for beauty-related services. The registration was granted on 26th April, 2021.

4. Legal Action: Manash Lifestyle filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking removal of the impugned mark from the Trade Marks Register.

Issues:

1. Whether Shabina Kundial’s trademark registration in Class 44 is deceptively similar to the petitioner’s FACES marks?

2. Whether the registration of the impugned mark was obtained dishonestly to ride on the goodwill of the FACES brand?

3. Whether the registration violates Sections 9, 11, and 18 of the Trade Marks Act, making it eligible for rectification?

Reasoning and Analysis by the Judge:

1. Absence of Defense: The respondent failed to file a reply or appear in court, leading to an ex-parte decision.

2. Similarity of Marks: The court compared the FACES marks and the impugned mark and found substantial resemblance, making it likely to cause confusion among consumers.

3. Precedent Cited: The court referred to Greaves Cotton Limited v. Mohammad Rafi (2011 SCC OnLine Del 2596), where it was held that even minor variations in a mark do not prevent infringement if the resemblance is substantial.

4. Bad Faith Adoption: The court concluded that Shabina Kundial had dishonestly adopted the petitioner’s mark to gain unfair advantage from its goodwill and reputation.

5. Violation of Trade Mark Law: The court found the respondent’s registration contrary to Sections 9 (absolute grounds for refusal), 11 (relative grounds for refusal), and 18 (application for registration) of the Trade Marks Act, making it liable for cancellation.

Decision of the Judge:

The rectification petition was allowed, and the impugned trademark (Application No. 4686526 in Class 44) was ordered to be removed from the Trade Marks Register.

The Trade Marks Registry was directed to implement the order and notify via email.

Dwarka Matlani Vs Jay Daryani

Case Title: Dwarka Matlani Vs. Jay Daryani

Date of Order: 31st January, 2025

Case No.: C.O.(COMM.IPD-CR) 704/2022

Neutral Citation: 2025:DHC:796

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

1. The petitioner, Dwarka Matlani, is engaged in the business of manufacturing and marketing products such as supari, sweet supari, mouth fresheners, and non-medicated confectionery under the trade name “Kishan Foods Products” and trademark ‘RAHUL.’

2. The petitioner has been using the label and artwork since 1997 and obtained trademark registration on 17th August 2007.

3. In April 2019, Matlani discovered that the respondent, Jay Daryani, an ex-employee and nephew of the petitioner, was using an identical or deceptively similar trademark and packaging under the name ‘ROYAL.’

4. A legal notice was sent to Daryani, who denied infringement, claiming that his adoption of ‘ROYAL AAM PACHAK TABLET’ was bona fide.

5. Despite opposition by Matlani, the Registrar of Copyrights granted a copyright registration to Daryani on 2nd May 2019.

6. Matlani filed an infringement suit in the District Court, Bharatpur, which granted an interim injunction against Daryani.

7. The Rajasthan High Court upheld this injunction.

8. Matlani then filed a rectification petition before the Intellectual Property Appellate Board (IPAB), which was later transferred to the Delhi High Court.

Issues:

1. Whether the copyright registration granted to Jay Daryani for the label/packaging of ‘ROYAL’ was valid?

2. Whether the label/packaging of Daryani was a slavish imitation of Matlani’s ‘RAHUL’ label?

3. Whether Daryani concealed material facts while obtaining copyright registration?

Reasoning and Analysis by the Judge:

1. Similarity of Labels: The court compared the labels and found that Daryani’s label was a slavish imitation of Matlani’s, with identical colors, fonts, and placement of the brand name.

2. Prior Use and Goodwill: Matlani had been using the label since 1997 and had trademark registration, whereas Daryani applied for copyright only in 2019.

3. Lack of Defense by Respondent: Daryani failed to file a written reply or pay costs imposed earlier, and no representation was made in court.

4. Registrar’s Oversight: The court noted that Matlani’s objections were not adequately considered before granting Daryani’s copyright. 

Decision of the Judge:

The court ruled in favor of Matlani and ordered the removal of Daryani’s copyright registration (Entry No. A-129092/2019) from the Copyright Register.

The court directed the Registrar of Copyrights to implement this order.

Ranveer Gautam Allahabadia Vs Union of India & Others

Case Title: Ranveer Gautam Allahabadia Vs Union of India & Others

Date of Order: February 18, 2025

Case No.: Writ Petition (Criminal) No. 83/2025

Court: Supreme Court of India

Judges: Hon'ble Justice Surya Kant & Hon'ble Justice Nongmeikapam Kotiswar Singh

Facts of the Case:

Ranveer Gautam Allahabadia, a well-known media personality, filed a writ petition in the Supreme Court seeking protection from arrest in multiple FIRs registered against him in Maharashtra, Assam, and Rajasthan. The complaints stem from content aired on his show "India’s Got Latent", which allegedly contained obscene and offensive material.

The charges against him were filed under:

Sections 79, 196, 296, and 299 of the Bharatiya Nyaya Sanhita, 2023 (BNS)

Section 67 of the Information Technology Act, 2000

Sections 4 & 7 of the Cinematograph Act, 1952

Sections 4 & 6 of the Indecent Representation of Women (Prohibition) Act, 1986

Allahabadia argued that the multiple FIRs were malicious and politically motivated, violating his freedom of speech and expression under Article 19(1)(a) of the Constitution.

Issues:

1. Whether the content aired in the show amounted to obscenity and violated any legal provisions?

2. Whether multiple FIRs based on the same content were justified or constituted harassment?

3. Whether the petitioner should be granted interim protection from arrest?

4. Whether restrictions on further broadcasting were legally valid?

Reasoning and Analysis of the Judges:

1. Protection from Arrest:

The court acknowledged that multiple FIRs based on identical allegations could amount to harassment.

It granted interim protection from arrest in all current and any future FIRs regarding the same incident.

2. Balancing Free Speech and Law:

The court noted that freedom of speech is not absolute and must be exercised within legal bounds.

However, criminal law should not be misused to target individuals selectively.

3. Restrictions on Further Content:

To prevent further controversy, the court barred Allahabadia from airing any content on YouTube or other platforms until further notice.

4. Conditions for Cooperation:

Allahabadia was directed to cooperate with the investigation and was not allowed to have legal counsel present during police questioning.

He was required to surrender his passport and seek court permission before leaving India.

Decision of the Judges:

1. Interim protection from arrest was granted in all existing FIRs and any future ones based on the same allegations.

2. No new FIRs related to the "India’s Got Latent" episode could be registered.

3. Allahabadia was prohibited from airing any new content until further court orders.

4. He was required to surrender his passport and cooperate with the investigation.

Havells India Limited Vs Cab Rio Industries

Case Title: Havells India Limited Vs Cab Rio Industries

Date of Order: February 17, 2025

Case No.: CS(COMM) 995/2024 & I.A. 44614/2024

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

Facts of the Case:

Havells India Limited, a well-established electrical equipment manufacturer, filed a suit against Cab-Rio Industries, alleging trademark infringement and passing off of its trademark "REO." Havells, which has been using the "REO" mark since 2012, contended that Cab-Rio's use of the mark "CAB-RIO" was misleading and aimed at unfairly benefiting from Havells' market reputation.

The plaintiff highlighted that the "REO" mark was registered and declared a "well-known trademark" by a previous court order. The defendants, however, argued that their mark "CAB-RIO" had been in use since 2017 and was also registered under Class 9. They claimed that "CAB" in their name was an abbreviation for "cables."

Issues:

1. Whether Cab-Rio's use of the mark "CAB-RIO" infringed upon Havells' trademark rights?

2. Whether the adoption of "CAB-RIO" constituted passing off?

3. Whether the similarity in phonetics and structure between "REO" and "CAB-RIO" was likely to cause confusion among consumers?

4. Whether Havells' prior use of "REO" gave it superior rights over Cab-Rio?

Reasoning and Analysis of the Judge:

1. Prior Use & Goodwill:

The court determined that Havells had prior use of the "REO" mark since 2012, while Cab-Rio only began using "CAB-RIO" in 2017.

Havells' extensive sales turnover (₹946.86 crore in 2023-24) and advertising expenditures demonstrated strong brand recognition.

2. Deceptive Similarity & Phonetics:

The court found that "REO" and "CAB-RIO" were phonetically and structurally similar.

The word "RIO" in Cab-Rio’s mark was prominently similar to "REO," leading to potential consumer confusion.

3. Bad Faith Adoption:

The defendants failed to provide a credible explanation for adopting "RIO" in their brand name.

Their marketing materials suggested an attempt to capitalize on Havells' established reputation.

4. Likelihood of Confusion:

The court ruled that electrical products are often purchased by workers or builders who may not analyze minor distinctions in brand names.

The similarity was sufficient to cause confusion among consumers with imperfect recollection.

Decision of the Judge:

The court granted an interim injunction restraining Cab-Rio from using "CAB-RIO" or any similar mark in relation to electrical cables and wires.

Sammaan Finserv Limited Vs. Svamaan Financial Services Private Limited

Case Title:Sammaan Finserv Limited & Sammaan Capital Limited v. Svamaan Financial Services Private Limited & Ors.

Date of Order:18 February 2025

Case No.: (FAO(OS) (COMM) 26/2025)

Court:High Court of Delhi at New Delhi

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

Facts of the Case:

A Single Judge had previously granted an injunction restraining Sammaan Finserv Limited and Sammaan Capital Limited from using, advertising, or displaying marks that are identical or deceptively similar to the respondent Svamaan Financial Services Private Limited’s registered “SVAMAAN” marks. The dispute centers on whether the appellants’ adoption of the “SAMMAAN” marks infringes on the respondent’s rights. The appellants contend that the marks are distinct—citing differences in pronunciation, visual appearance, and the sophistication of their consumer base—while the respondent argues that the similarity between “SAMMAAN” and “SVAMAAN” is likely to mislead consumers in the financial services sector.

Issues Raised:

1. Whether the “SAMMAAN” marks are deceptively similar to the respondent’s “SVAMAAN” marks.

2. Whether there exists a likelihood of consumer confusion in the financial loan market.

3. Whether the interim injunction granted by the Single Judge should continue to operate pending the final disposal of the appeals.

Reasoning and Analysis:

Trademark Similarity and Consumer Perception:

The Court reviewed multiple tests—including phonetic analysis (the Pianotist test) and assessments of visual and conceptual similarity—to determine whether the marks could deceive the average consumer. Although the appellants argued that differences such as “SVA” versus “SAM” distinguish the marks, the Court noted that in the context of financial services, where consumers may not scrutinize subtle differences, confusion remains a distinct possibility.

Balance of Convenience:

Both parties presented arguments regarding the potential irreparable harm. The appellants highlighted their long-term use of the marks and the severe business impact of an injunction. In contrast, the respondent underscored its prior registration and longstanding reputation associated with the “SVAMAAN” marks. The Court emphasized that while serious questions of merit exist, the balance of convenience favours maintaining the status quo until a final decision is reached.

Procedural Considerations:

Given that the substantive issues would be addressed on final disposal, the Court focused on the immediate need to preserve the existing state of affairs. The interim order was aimed solely at preventing any premature alteration of the market position that could lead to irreversible harm.

Decision of the Judge (Interim Order):

The Court disposed of the interim applications and The status quo to remain in force until the appeals are finally disposed of. 

Visa International Ltd. Vs. Visa International Service Association

Case Title:Combined Appeals in IPDTMA No. 82 of 2023, IPDTMA No. 83 of 2023 (Visa International Ltd. v. Visa International Service Association & Anr.) and IPDTMA No. 1 of 2024 (Garden Silk Mills Private Limited v. Rajesh Mallick & Ors.)

Date of Order:August 2, 2024

Case No.:IPDTMA No. 82 of 2023; IPDTMA No. 83 of 2023; IPDTMA No. 1 of 2024 (IA No. GA-COM 1 of 2024)

Court:High Court at Calcutta (Original Side – Commercial Division)

Judge:Hon’ble Justice Krishna Rao

Facts of the Case:

The appellants challenged orders passed in trademark opposition proceedings by contractual Associate Managers of the Trade Marks Registry. In IPDTMA Nos. 82 and 83 of 2023, the impugned order dated September 16, 2023, was issued by Mr. Shraman Chattopadhyay in an opposition against trademark application No. 1363190 (Classes 06 and 35). In IPDTMA No. 1 of 2024, a similar challenge was raised against an order dated October 6, 2023, passed by Mr. Saurabh Dubey concerning the registration of the mark “HANDLOOM GARDEN” in Class 35. The appellants contended that these Associate Managers, engaged on a contractual basis with clearly limited terms (with Mr. Chattopadhyay’s engagement ending on May 31, 2023), were not empowered to exercise quasi‑judicial functions in such proceedings.

Issues Raised:

1. Authority to Exercise Quasi‑Judicial Powers:

Whether contractual Associate Managers are empowered under the Trade Marks Act, 1999 to pass quasi‑judicial orders in opposition proceedings.

2. Validity of Orders Beyond Contractual Period:

Whether orders passed by officers after the expiry of their contractual engagement are legally valid.

3. Delegation of Judicial Functions:

Whether the delegation of administrative functions under Section 3 of the Trade Marks Act extends to the exercise of judicial functions in trademark matters.

Reasoning and Analysis of the Judge:

Statutory Interpretation:

The Court examined Sections 3 and 18 of the Trade Marks Act, 1999. While the Act permits the Central Government to delegate administrative functions to various officers, quasi‑judicial powers must be exercised independently by a properly empowered officer. The delegation intended by the Act does not extend to passing judicial orders.

Contractual Limitations:

The Court noted that Mr. Shraman Chattopadhyay’s offer of engagement explicitly stated that his appointment could not continue beyond May 31, 2023. Since his order was passed on September 16, 2023, it was rendered ultra vires. Similarly, the legitimacy of Mr. Saurabh Dubey’s appointment as Associate Manager was questioned.

Organizational Structure:

The recruitment rules and the organizational structure of the Trade Marks Registry were examined, and no post of “Associate Manager” was found to be authorized to exercise quasi‑judicial functions. This supported the appellants’ claim that such officers lack the requisite jurisdiction.

Precedential Support:

Relying on established case law that holds an act void ab initio if passed by an unauthorized officer, the Court reasoned that orders passed under such circumstances automatically collapse without the need for a separate quashing order.

Decision of the Judge:

The impugned orders passed by Mr. Shraman Chattopadhyay (dated September 16, 2023) and Mr. Saurabh Dubey (dated October 6, 2023) were set aside and quashed. The appeals in IPDTMA Nos. 82, 83 of 2023 and IPDTMA No. 1 of 2024 were allowed. The matter was remanded to the Registrar, Trade Marks, with instructions to have the case reconsidered afresh by a competent officer after affording an opportunity of hearing to all parties. The Registrar or the designated officer is further directed to dispose of the matter within six months from the receipt of this order. 

Md. Islamuddin Vs. S S Kapoor

Case Title: Md. Islamuddin v. S S Kapoor

Date of Order: November 1, 2022

Case No.: CM(M) 1137/2022 & CM APPL. 45868/2022

Neutral Citation: 2022/DHC/004587

Court: High Court of Delhi at New Delhi

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

Facts of the Case:

The petitioner, Md. Islamuddin, filed a suit in January 2021 against S S Kapoor and later sought to introduce additional documents—three invoices (dated June 9, July 27, and December 30, 2018) and a handwritten document (dated January 4, 2018)—allegedly containing an admission of liability by the respondent. These documents were not filed initially due to difficulties during the COVID-19 pandemic. The District Judge (Commercial Courts) had earlier rejected the application to include these documents, questioning their genuineness. 

Issues Raised:

1. Whether the petitioner could validly seek to introduce additional documents beyond those filed with the plaint.

2. Whether the application, although filed under Order VII Rule 14 CPC (an incorrect provision for a commercial suit), should instead be treated under Order XI Rule 1(5) CPC as amended by the Commercial Courts Act.

3. The extent to which procedural non-compliance should affect substantial justice in evidentiary matters.

Reasoning and Analysis of the Judge:

Procedural Misfiling and Liberal Construction: The judge noted that although the petitioner filed the application under the wrong provision (Order VII Rule 14 CPC), Supreme Court precedents (e.g., in Sudhir Kumar and related cases) allow such applications to be treated under Order XI Rule 1(5) CPC, provided there is a sufficient cause for the delay.

Focus on Reasonable Cause: Emphasis was placed on whether the petitioner could demonstrate “reasonable cause” for not filing the documents earlier—not on the documents’ evidentiary value at the initial stage.

Substantial Justice Over Technicalities: Citing the lenient approach endorsed in earlier judgments (such as Sugandhi v. P. Rajkumar), the judge maintained that procedural technicalities should not obstruct the pursuit of truth and justice, especially when the alleged failure was due to pandemic-related difficulties.

Non-Issue of Genuineness at This Stage: The court clarified that at the stage of permitting additional documents, it is not required to decide on the genuineness of the documents; the primary consideration is whether sufficient cause exists for their delayed filing.

Decision of the Judge:

The court allowed the petitioner to place the additional documents on record, subject to the petitioner paying costs of ₹15,000 to the respondents within four weeks. Furthermore, the court permitted the respondent to file an additional or amended written statement if required to address these documents. The petition was thereby disposed of with no order as to costs against the respondent. 

Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Case Title:Wonderchef Home Appliances Pvt. Ltd. v. Shree Swaminarayanan Pty Ltd.

Date of Order:January 27, 2025

Case Number:COMM. ARBITRATION PETITION NO. 791 OF 2024

Neutral Citation:2025:BHC-OS:1340

Court Name:High Court of Judicature at Bombay

Judge:Justice Somasekhar Sundaresan

Facts of the Case:

The dispute arises from a Distribution Agreement dated December 26, 2017, which included an arbitration clause.

Wonderchef Home Appliances Pvt. Ltd., the petitioner, sought an injunction against its distributor, Shree Swaminarayanan Pty Ltd. (Australia), for making disparaging statements.

The respondent had allegedly sent emails criticizing Wonderchef’s products and the handling of their business relationship, potentially damaging the brand’s reputation.

Wonderchef argued that these statements violated Clause 12.2(c) of the Agreement, which required the distributor to maintain a favorable image of the brand.

Issues Raised:

1. Whether the respondent’s emails constituted disparagement and breach of contract.

2. Whether an interim injunction (gag order) could be issued under Section 9 of the Arbitration and Conciliation Act, 1996.

3. How to balance commercial free speech with contractual obligations of maintaining brand reputation.

Reasoning & Analysis by the Court:

Free Speech vs. Contractual Obligation: The court acknowledged that commercial speech is part of free speech and cannot be easily curtailed.

Lack of Concrete Evidence of Damage: The judge noted that Wonderchef, being a reputed brand promoted by a celebrity chef, was unlikely to suffer significant harm from the respondent’s emails.

Scope of Section 9 Powers: The court agreed that interim relief could be granted to protect the subject matter of arbitration, particularly since Clause 12.2(c) explicitly required the respondent to maintain a positive brand image.

Past Arbitration Attempts: The court observed that the respondent had proposed arbitration in 2023, but Wonderchef had not responded positively.

Decision of the Judge:

The court granted an interim injunction for 90 days, restraining the respondent from making any statements that would violate Clause 12.2(c) of the Agreement.

The injunction was conditional, emphasizing that Wonderchef should initiate arbitration within this period.

The arbitral tribunal would have full authority to assess the truthfulness of the respondent’s claims and decide on further actions.

The court declined to impose permanent restrictions on the respondent’s speech, emphasizing that arbitration should resolve the dispute.

Khadi and Village Industries Commission v. The Registrar of Trade Marks

Case Title:Khadi and Village Industries Commission v. The Registrar of Trade Marks

Date of Order:January 29, 2025

Case Number:COMMERCIAL MISCELLANEOUS PETITION (LODGING) NO. 31636 OF 2023

Neutral Citation:2025:BHC-OS:1308

Court Name:High Court of Judicature at Bombay

Judge:Justice Manish Pitale, H.J.

Facts of the Case:

Khadi and Village Industries Commission (KVIC), a statutory body under the Ministry of MSME, has been using the trademark "KHADI" for various products.

KVIC launched "Vedic Paint", an anti-fungal and anti-bacterial paint made from cow dung, in December 2020 and later rebranded it as "Khadi Prakritik Paint" in January 2021.

KVIC applied for trademark registration of its device mark in Class 2 (paints, varnishes, etc.) on March 4, 2021.

The Registrar of Trade Marks refused the registration on August 17, 2023, under Section 9(1)(b) of the Trade Marks Act, 1999, stating that the mark consisted of words that described the nature and purpose of the product.

KVIC challenged this refusal in the Bombay High Court.

Issues Raised:

1. Whether the Registrar was justified in refusing registration under Section 9(1)(b) of the Trade Marks Act, 1999?

2. Whether a composite device mark should be assessed as a whole rather than breaking it into individual words?

3. Whether KVIC’s prior use and recognition of "KHADI" should influence the trademark registration?

Reasoning & Analysis by the Court:

Device Mark Must Be Considered as a Whole: The court ruled that a device mark should be assessed in its entirety, rather than evaluating individual words within it.

Misinterpretation of Section 9(1)(b): The court found that the Registrar wrongly applied Section 9(1)(b), which applies only when a mark exclusively describes a product. Since KVIC’s mark had a distinct logo, stylization, and branding, it did not fall under this category.

Established Trademark Rights: KVIC had already secured registration for "KHADI PRAKRITIK PAINT", and similar registrations were granted in the past, making this refusal inconsistent.

Recognition of KHADI as a Well-Known Trademark: The Delhi High Court had previously declared "KHADI" as a well-known trademark, strengthening KVIC’s case.

Failure to Consider Prior Rulings: The Registrar ignored Delhi High Court’s order in KVIC v. JBMR Enterprises (2021) and a World Intellectual Property Organization (WIPO) ruling (2022), both favoring KVIC.

Decision of the Judge:

The Bombay High Court set aside the Registrar’s order and directed that KVIC’s application for trademark registration be allowed to proceed.

The court ruled that the Registrar’s reasoning was flawed, and KVIC’s device mark should be registered.

The Registrar was instructed to take further steps toward registration, including advertisement and formal approval.

Floral Colors India Pvt. Ltd. Vs. De Martini Hitkari Fine Products Pvt. Ltd.

Case Title:Floral Colors India Pvt. Ltd. & Ors. v. De Martini Hitkari Fine Products Pvt. Ltd.

Date of Order:January 21, 2025

Case Number:WRIT PETITION NO. 1982 OF 2024

Neutral Citation:2025:BHC-AS:2864

Court Name:High Court of Judicature at Bombay

Judge:Justice Amit Borkar

Facts of the Case:

The petitioners (defendants) had filed a notice of motion before the Trial Court, seeking to convert a summary suit into a commercial suit and transfer it to the Commercial Court under the Commercial Courts Act, 2015.

The plaintiff (respondent) opposed this request, asserting that it had the right to choose the appropriate jurisdiction for its suit.

The Trial Court rejected the petitioners’ request, leading them to file this writ petition before the Bombay High Court.

Issues Raised:

1. Can defendants force a plaintiff to convert a summary suit into a commercial suit?

2. Does the Commercial Courts Act, 2015, mandate the transfer of all commercial disputes to the Commercial Court?

3. What are the limitations of the court’s supervisory jurisdiction under Article 227 of the Constitution?

Reasoning & Analysis by the Court:

Plaintiff’s Right as Dominus Litis: The court reaffirmed the well-established principle that the plaintiff is dominus litis (master of the suit) and has the right to choose the forum and nature of the suit.

No Statutory Mandate for Forced: Conversion: The court clarified that unless a specific law mandates a particular forum, the plaintiff’s choice must be respected. Defendants cannot compel the plaintiff to change the suit’s nature.

Limited Power of the Court: Courts have the power to reject relief or dismiss a suit if it is found to be not maintainable, but they cannot force a plaintiff to change the nature of the suit.

Jurisdiction Under Article 227: The High Court’s supervisory powers are limited to ensuring procedural compliance and do not allow intervention in the plaintiff’s choice of litigation strategy.

Decision of the Judge

The High Court upheld the Trial Court’s decision, confirming that there was no error of jurisdiction in rejecting the petitioners’ request.

The writ petition was dismissed with no order as to costs.

The court reiterated that the plaintiff retains the right to decide the forum and nature of the suit, and the defendants have no authority to alter it.

La Roche Ltd. & Others Vs. Drugs Controller General of India

La Roche Ltd. Vs. Drugs Controller General of India: Patent expiration does not eliminate a company’s right to challenge biosimilar regulatory compliance.

Case Title:F. Hoffmann-La Roche Ltd. & Others Vs. Drugs Controller General of India & Ors.

Date of Order:February 18, 2025

Case No.:CS(COMM) 540/2016 

Neutral Citation:2025:DHC:997

High Court of Delhi

Judge:Hon’ble Mr. Justice Amit Bansal

Introduction: This case revolves around biosimilar drug approvals and allegations of regulatory non-compliance in granting approvals to biosimilar versions of Roche’s patented cancer drugs. The plaintiffs, including F. Hoffmann-La Roche Ltd., challenged the approvals granted by the Drugs Controller General of India (DCGI) to Hetero Drugs Limited and Cadila Healthcare Limited, alleging that these approvals were obtained through inadequate testing and a lack of compliance with the Biosimilar Guidelines, 2012.The case raises significant issues regarding data exclusivity, regulatory oversight, and the role of the judiciary in pharmaceutical patent disputes after the expiration of a patent.

Factual Background:The Plaintiffs and Their Patented Drugs:Roche, along with its subsidiaries, developed two key biological cancer drugs:Bevacizumab (marketed as AVASTIN®) – Used for treating colorectal cancer.Trastuzumab (marketed as HERCEPTIN®, HERCLON™, and BICELTIS®) – Used for breast and gastric cancers.These drugs underwent extensive clinical trials since the late 1990s and received regulatory approvals in India between 2005-2010.

2. The Defendants and Their Biosimilar Approvals:Defendant No. 1: Drugs Controller General of India (DCGI) – The regulatory body that granted approvals for biosimilar versions of Roche’s drugs.Defendant No. 3: Hetero Drugs Limited – Obtained DCGI approval on May 13, 2016, for biosimilar Bevacizumab.Defendant No. 2: Cadila Healthcare Limited – Obtained DCGI approval on October 28, 2015, for biosimilar Trastuzumab.Both defendants launched their drugs in India shortly after approval.

Procedural Background:Roche’s Opposition to Biosimilar Approvals:Roche filed two separate suits in 2016 challenging the approvals granted to Hetero and Cadila.Sought injunctions to stop the marketing of biosimilar versions of its drugs.Alleged non-compliance with clinical trial protocols required under the Drugs and Cosmetics Act, 1940, and the Biosimilar Guidelines, 2012.Interim Injunction and Regulatory Review:The court initially granted temporary relief but allowed Cadila and Hetero to market their drugs with conditions.The DCGI and expert committees reviewed the approvals but upheld their decisions, claiming proper testing procedures were followed.Discovery Applications Filed by Roche (2022):Roche sought disclosure of regulatory documents from DCGI, Cadila, and Hetero under Order XI Rules 12 and 14 CPC.Argued that key documents regarding bioequivalence and safety testing were not provided.

High Court’s Decision on Discovery Applications (2025):The court allowed Roche’s discovery applications, directing the defendants to submit all regulatory documents for judicial scrutiny.

Issues Involved:Whether the approvals granted by DCGI to biosimilar versions of Bevacizumab and Trastuzumab complied with the regulatory framework?Whether Roche had a right to access regulatory documents under discovery proceedings?Whether the defendants’ biosimilars were sufficiently tested to establish bioequivalence with Roche’s drugs?Whether granting approvals without complete clinical trials constituted regulatory misconduct?Whether Roche could claim exclusivity over the test data used to approve biosimilars?

Plaintiffs (Roche’s Arguments):Non-Compliance with Biosimilar Guidelines:Argued that the defendants’ drugs were not properly tested to establish bioequivalence with Roche’s products.The clinical trial phases were incomplete and approval was granted prematurely.Data Exclusivity & Regulatory Secrecy:The defendants failed to submit independent test data and instead relied on Roche’s publicly available data without due process.Regulatory Irregularities in DCGI Approvals:Alleged that the approval process violated Section 122E of the Drugs and Cosmetics Rules, 1945, which mandates stringent testing for new drugs.Judicial Precedents Supporting Document Disclosure:Cited Genentech v. Drugs Controller General of India, 2016 SCC OnLine Del 2572, where the court allowed disclosure of biosimilar approval documents.Cited Roche India v. Drugs Controller General of India, 2016 SCC OnLine Del 2358, where the court found irregularities in biosimilar approvals.

Defendants’ (DCGI, Cadila, Hetero) Arguments:Regulatory Compliance Ensured:The approvals were granted after following due process, including:Preclinical studies.Comparative clinical trials with Roche’s drugs.Expert committee approvals.Data is Confidential and Proprietary:Argued that disclosing regulatory dossiers would give Roche unfair access to competitors’ business secrets.Patent Expiry Eliminates Monopoly:Roche’s patents for these drugs expired in 2013, and it cannot block biosimilars based on regulatory concerns.Judicial Review Not Required for Regulatory Decisions:Courts should not interfere in regulatory approvals unless there is gross violation of law.

Judgment and Analysis:Discovery of Regulatory Documents Permitted:The court relied on M.L. Sethi v. R.P. Kapoor (1972) 2 SCC 427, holding that discovery should be allowed if documents are relevant to the case.Held that Roche had a right to examine all documents used to approve biosimilars.No Prima Facie Finding of Misconduct by DCGIThe court did not find immediate regulatory misconduct but allowed Roche to scrutinize documents to prove its claims.Balance Between Public Interest and Regulatory ComplianceWhile acknowledging public access to cheaper biosimilars, the court emphasized the importance of strict regulatory adherence in the pharmaceutical sector.

Final Decision:DCGI, Cadila, and Hetero were directed to submit all regulatory documents in a sealed cover.Confidentiality Club formed: Only legal representatives and experts could access sensitive data.Court upheld the validity of Roche’s discovery application but did not stay biosimilar approvals.Matter to proceed for trial on regulatory violations and unfair competition claims.

Key Legal Takeaways from the Case:Pharmaceutical companies have a right to scrutinize regulatory approvals through discovery proceedings.Patent expiration does not eliminate a company’s right to challenge biosimilar regulatory compliance.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Mr. Abhishek Sharma Vs. Assistant Controller of Patents and Designs:

Mr. Abhishek Sharma Vs. Assistant Controller of Patents and Designs: Foreign Grant of Patent Irrelevant

Case Title: Mr. Abhishek Sharma & Anr. Vs. Assistant Controller of Patents and Designs

Date of Order: February 13, 2025

Case No.: C.A.(COMM.IPD-PAT) 4/2025

Neutral Citation: 2025:DHC:1002

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Introduction:

This case concerns an appeal filed under Section 117A of the Patents Act, 1970, challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The primary issues in the case revolved around the lack of novelty, lack of an inventive step, and non-patentability under Sections 2(1)(j) and 3 of the Patents Act. Additionally, the appellant sought condonation of a 701-day delay in filing the appeal, which the court refused.

Factual Background:

The appellant, Mr. Abhishek Sharma, filed a patent application (No. 202111053480) on November 21, 2021, titled:"Innovative Change To Solve Any Dispute, Unexpected Business Loss, Closures, Financial Loss, Unexpected Accidents."The subject matter related to the impact of black-colored clothing and accessories on the human brain and external environment.The request for examination (RQ) was converted into an expedited examination under Rule 24C of the Patent Rules on June 7, 2022.The First Examination Report (FER) was issued on June 10, 2022, questioning the novelty, technical merit, and inventive step.A hearing was conducted on September 5, 2022, after which the application was rejected via an order dated November 10, 2022.

Procedural Background: 

The appellants, instead of filing an appeal within the statutory period, engaged in discussions with the Patent Office through its online helpdesk.The first ticket regarding the issue was raised only on August 21, 2024, much beyond the prescribed limitation period.On January 6, 2025, the Patent Office informed the appellants that no further reconsideration was possible, and they should seek legal remedies.The appeal was finally filed before the Delhi High Court with an application for condonation of a 701-day delay in filing.

Issues Involved:Whether the delay of 701 days in filing the appeal should be condoned?

Whether the rejection of the patent application was justified under Section 2(1)(j) and Section 3 of the Patents Act, 1970?

Whether the subject matter of the patent was novel and involved an inventive step?

Whether the rejection was in line with established judicial precedents?

Submissions by the Parties

Appellant's Submissions: Condonation of Delay: The appellant argued that the delay in filing the appeal was due to continuous engagement with the Patent Office via the Open House Helpdesk portal.Patentability:The invention had been granted a patent in Germany, implying its novelty and inventive step.The invention provided a technical solution related to human cognition and the effect of colors on decision-making.The rejection was based on an incorrect interpretation of Section 2(1)(j).Inventive Step & Novelty:The black-colored wearing items proposed had a specific scientific effect.

The Examiner’s conclusion was incorrect as it did not consider the application in its entirety.

Respondent's Submissions:Delay in Filing:The appellant failed to provide a valid justification for the inordinate delay of 701 days.Raising a ticket on an online portal does not extend the statutory limitation for filing an appeal.Lack of Novelty & Inventive Step:The black-colored wearing items claimed were already in public use and lacked novelty.The invention was not a technical advancement but merely a psychological theory.No scientific data or experimental results supported the claims.Non-Patentability under Section 3:The alleged invention was an abstract theory and fell within the prohibitions under Section 3(a) and Section 3(c) of the Patents Act.The claim lacked technical features, making it ineligible for a patent under Section 10 of the Act.

The Court examined both the procedural delay and merits of the patent rejection separately.

1. Delay in Filing Appeal:

The period of limitation for filing an appeal against a decision of the Patent Office is three months, with an additional discretionary extension of one month. The Court rejected the appellant's argument that online communication with the Patent Office justified the delay.Reliance was placed on precedents where engagement with administrative authorities did not constitute sufficient grounds for condonation of delay.

2. Merits of the Patent RejectionNon-Patentability under Section 2(1)(j): The Court agreed with the Controller that the subject matter was merely a color-based concept without technical merit.Failure under Section 3(a) & 3(c):The claim was a formulation of an abstract theory, making it unpatentable.It lacked technical structure or industrial applicability.

3.Lack of Novelty and Inventive Step:

The appellant failed to provide any scientific basis or experimental validation for the claimed effects of black-colored wearing items.The invention did not solve a technical problem, a key requirement under patent law.

4.Foreign Grant of Patent Irrelevant: 

The Court noted that the appellant did not file any documentary proof of the German patent, nor was there any evidence that it met the standards of Indian patent law.

5.Final Decision:

The delay of 701 days in filing the appeal was not condoned.

The patent rejection was upheld, affirming the Assistant Controller’s order.

The appeal was dismissed both on procedural grounds and on merits.

Legal Principles Settled in this Case:

Engagement with administrative bodies does not extend the limitation period for appeals.

Abstract theories or psychological effects without technical features are non-patentable under Section 3(a) and Section 3(c) of the Patents Act, 1970.

A mere grant of a foreign patent (e.g., in Germany) does not automatically imply patentability in India unless compliance with Indian patent law is demonstrated.

Lack of scientific evidence and experimental data to support claims can lead to rejection under Section 2(1)(j) for lack of novelty and inventive step.

The scope of an invention must be clearly defined in claims; vague assertions without technical details will not be allowed under Section 10.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Corn Products Refining Co. Vs. Shangrila Food Products Ltd., [1960] 1 S.C.R. 968:

Corn Products Refining Co. Vs Shangrila Food Products Ltd: Trade Connection and Trademark Confusion

Case Title:Corn Products Refining Co. Vs Shangrila Food Products Ltd.

Date of Order:October 8, 1959

Citation:AIR 1960 SC 142

Name of Court:Supreme Court of India

Name of Judges:Justice A.K. Sarkar, Justice J.L. Kapur, and Justice S.K. Das, H.J.

Introduction:This case revolves around a trademark dispute under the Trade Marks Act, 1940, where Corn Products Refining Co., a U.S.-based company, opposed the trademark registration of "Gluvita" by Shangrila Food Products Ltd. The core issue was the phonetic and visual similarity of "Gluvita" to the already registered mark "Glucovita," leading to concerns about deception or confusion among consumers. The Supreme Court of India ultimately ruled in favor of Corn Products Refining Co., emphasizing the importance of trade reputation and the likelihood of consumer confusion.

Factual Background:Parties Involved:Appellant (Corn Products Refining Co.): A U.S. corporation that had registered the mark "Glucovita" in India under Class 30 for glucose powder mixed with vitamins and under Class 5 for infant and invalid foods.Respondent (Shangrila Food Products Ltd.): An Indian manufacturer of biscuits that applied for the registration of "Gluvita" under Class 30.

Trademark Dispute:Shangrila Food Products Ltd. applied for the registration of "Gluvita" on November 5, 1949, under Class 30.Corn Products Refining Co. opposed this application, arguing that:The name "Gluvita" was deceptively similar to "Glucovita."The public might be misled into believing that "Gluvita" biscuits were associated with or manufactured by Corn Products Refining Co.

Registrar’s Decision:The Registrar found that:"Gluvita" and "Glucovita" were not phonetically or visually similar.The goods (glucose powder vs. biscuits) were not of the same description.There was no likelihood of confusion or deception.Consequently, the Registrar allowed the registration of "Gluvita."

Procedural Background:

Appeal to Bombay High Court (Single Judge - Desai, J.):Corn Products Refining Co. challenged the Registrar’s decision before the Bombay High Court.Justice Desai ruled in favor of Corn Products Refining Co., holding that:The marks were deceptively similar.The appellant had acquired significant goodwill and reputation in the Indian market.The registration of "Gluvita" should be denied under Section 8(a) of the Trade Marks Act, 1940.

Division Bench Appeal in Bombay High Court (Chagla, C.J. & Shah, J.):Shangrila Food Products Ltd. appealed against Desai, J.’s decision.The appellate bench ruled in favor of Shangrila Food Products Ltd., reasoning that:The reputation of "Glucovita" was limited to trade circles and not to the general public.The common elements "Gluco" and "Vita" were used in various trade marks and thus did not necessarily indicate an association with Corn Products Refining Co.The registration of "Gluvita" was restored.

Appeal to the Supreme Court:Corn Products Refining Co. then appealed to the Supreme Court of India.The Supreme Court reversed the decision of the Division Bench and restored the order of Desai, J., ruling in favor of Corn Products Refining Co.

Issues Involved:

1. Whether "Glucovita" and "Gluvita" were deceptively similar?

2. Whether the reputation of the "Glucovita" trademark extended beyond trade circles to the general public?

3. Whether the presence of other trademarks with common prefixes or suffixes ("Gluco" and "Vita") affected the likelihood of deception or confusion?

4. Whether the trade connection between glucose and biscuits was sufficient to cause confusion among consumers?

Submissions of the Parties:

Appellant (Corn Products Refining Co.):"Glucovita" had gained substantial reputation and goodwill in India, not just in trade circles but also among the general public.The marks were phonetically and visually similar, and their usage could deceive or confuse consumers.Glucose was used in biscuit manufacturing, thereby establishing a trade connection between the two products.The appellate court erred in holding that reputation must be confined to knowledge of the manufacturer rather than the product.

Respondent (Shangrila Food Products Ltd.):"Glucovita" was known only within trade circles, not to the general public.The market contained many trademarks with "Gluco" and "Vita," reducing the distinctiveness of "Glucovita."The Registrar correctly held that glucose powder and biscuits were different products and did not belong to the same class.

Discussion on Cited Judgments:The Court referred to several landmark cases on trademark similarity and consumer confusion, including:

In re: Smith Hayden & Coy. Ltd. [(1945) 63 R.P.C. 97]:Applied to test phonetic and visual similarity between trademarks.The Court rejected the Registrar's reliance on this case, holding that mere omission of "co" was insufficient to avoid confusion.

Edward Hack’s "Black Magic" Case [(1958) R.P.C. 91]:Related to trade connection between different goods.The Court drew parallels to show that biscuits and glucose had a similar trade connection, increasing the likelihood of confusion.

Ladislas Jellinek’s "Panda" Case [(1963) R.P.C. 59]:Shoe polishes and shoes were held to be trade-connected.The Court extended this reasoning to glucose and biscuits.

Reasoning and Analysis:

Similarity of Marks:The Supreme Court found that "Glucovita" and "Gluvita" were phonetically and visually similar.The minor difference of "co" was insufficient to distinguish them.

Reputation Among General Public:Contrary to the appellate bench’s view, the Supreme Court held that "Glucovita" was widely known among the Indian public, supported by advertising and sales in small retail packs.

Trade Connection Between Products:Since glucose is an ingredient in biscuits, a consumer might assume that "Gluvita" biscuits were manufactured by the makers of "Glucovita" glucose.

Impact of Other Trademarks:The Court held that mere registration of similar trademarks with "Gluco" or "Vita" did not prove their use in the market or their reputation.The onus was on Shangrila Food Products Ltd. to prove market usage of such marks, which they failed to do.

Final Decision:

The Supreme Court ruled in favor of Corn Products Refining Co.

The appellate judgment was set aside, and the decision of Desai, J. was restored.

"Gluvita" was not allowed to be registered as a trademark due to its deceptive similarity to "Glucovita."

Key Legal Principles Established:

• Phonetic and visual similarity is a critical factor in determining deceptive similarity in trademarks.Reputation of a trademark is not confined to trade circles but extends to the general public through advertising and sales.
• A trade connection between products can contribute to consumer confusion even if the goods are not identical.
• The presence of similar marks on the register does not prove their market usage or impact on consumer perception.The burden of proving the market reputation of similar marks lies on the party relying on them.
• This judgment remains a significant precedent in Indian trademark law concerning the assessment of likelihood of confusion and deceptive similarity in trademark disputes.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Pianotist Co.'s Application, (1906) 23 R.P.C. 774

Pianotist Co.'s Application:Test of deceptive Similarity and consumer intelligence

Case Title:Pianotist Co.'s Application

Date of Order:9th November 1906

Neutral Citation:(1906)23 R.P.C. 774

Court:High Court of Justice, Chancery Division (United Kingdom)

Judge:Justice Parker, H. J. 

Introduction:The case of Pianotist Company Ltd. (1906) is a landmark ruling in trademark law, establishing key principles for assessing deceptive similarity in trademarks. The dispute arose when Pianotist Company Ltd. applied for the registration of the trademark "Neola" for a piano-playing musical instrument. The Orchestrelle Company, proprietors of the registered trademark "Pianola," opposed the registration on the grounds of deceptive similarity. The case laid down the famous "Pianotist Test" for determining the likelihood of confusion between two trademarks.

Factual Background:

• 1. Initial Application: Pianotist Company Ltd. applied for the registration of "Neola" as a trademark in 1905.
• 2. Opposition: Orchestrelle Company opposed the registration, arguing that "Neola" closely resembled "Pianola," leading to potential consumer confusion.
• 3. Decision by Comptroller of Trade Marks: The Comptroller ruled against the opposition and permitted the registration of "Neola."
• 4. Appeal to High Court: Orchestrelle Company appealed the decision before Justice Parker, leading to a detailed examination of the likelihood of confusion between the two marks.

Issues Involved in the Case:

• 1. Whether "Neola" was deceptively similar to "Pianola" and likely to cause confusion among consumers.
• 2. Whether the nature of goods and the class of customers influenced the likelihood of confusion.
• 3. Whether the trade mark "Neola" was chosen with the intent to exploit the goodwill associated with "Pianola.

Submissions of the Parties:

Arguments by Orchestrelle Company (Opponents of Registration):

• 1. "Neola" bore a strong phonetic resemblance to "Pianola," particularly due to the common "ola" suffix.
• 2. Consumers could be misled into believing "Neola" was a variant or product extension of "Pianola."
• 3. The large-scale success of "Pianola" had created an association of the "ola" suffix with their products.
• 4. Given the growing market for mechanical pianos, allowing "Neola" to be registered would unfairly benefit Pianotist Company by capitalizing on the reputation of "Pianola."

Arguments by Pianotist Company Ltd. (Applicants for Registration):

• 1. "Neola" and "Pianola" were distinct words in terms of both pronunciation and spelling.
• 2. The suffix "ola" was common in musical instruments, and no monopoly over it should be granted.
• 3. The consumers of mechanical pianos were literate, knowledgeable, and unlikely to be confused.
• 4. The design and function of "Neola" were sufficiently different from "Pianola," reducing the risk of mistaken identity.

Discussion on Precedents and Citations in the Judgment:

1. Field Ltd. v. Wagel Syndicate, 17 R.P.C. 266:In this case, "Savoline" was found to infringe "Savonol," establishing that minor phonetic differences do not eliminate the likelihood of confusion.The argument was used by Orchestrelle Company to support their claim that "Neola" and "Pianola" were deceptively similar.

2. Kutnow’s Trade Mark, 10 R.P.C. 401:This case established that a trademark should be refused registration if it was "reasonably calculated to deceive."The respondents argued that their trademark was not intended to deceive, distinguishing it from the Kutnow case.

3. Re Farrow’s Trade Mark, 7 R.P.C. 260:This precedent established that trademarks should be compared in their entirety rather than in isolated components.The Court applied this principle to evaluate "Neola" and "Pianola" as whole words.

Reasoning and Analysis by Justice Parker:

1. The "Pianotist Test" for Trademark Similarity:Justice Parker laid down a structured approach to determine the likelihood of confusion:Compare the visual and phonetic similarity of the marks.Consider the nature of the goods to which the trademarks apply.Evaluate the type of customers likely to buy the goods.Assess the surrounding circumstances, including market conditions and purchasing habits.

2. Application of the Test in This Case:The Court acknowledged some phonetic similarity between "Neola" and "Pianola."However, the class of customers for these musical instruments were educated and discerning, reducing the likelihood of confusion.The difference in product functionality (Pianola being an attachment, Neola being an integrated instrument) further minimized confusion.

3. Intent Behind the Choice of "Neola":The Court found no evidence that "Neola" was chosen to exploit the reputation of "Pianola."It was acknowledged that "ola" was a common suffix in musical instrument trademarks.

4. Final Conclusion:Since confusion was unlikely among the relevant consumer base, "Neola" was allowed to be registered as a trademark.The appeal by Orchestrelle Company was dismissed. 

Final Decision:The High Court upheld the decision of the Trade Marks Comptroller and dismissed the appeal."Neola" was permitted to proceed with registration as a trademark.Costs were awarded against the Orchestrelle Company.

Law Settled in this Case:

The Pianotist Test for Deceptive Similarity:Trademarks should be assessed based on visual, phonetic, and conceptual similarity.The nature of goods and the intended customers should be considered.Surrounding market conditions influence the likelihood of confusion.

Trademark Protection Is Not Absolute:Common word components cannot be monopolized unless they have acquired distinctiveness.The suffix "ola" was deemed too generic to be exclusively owned by Orchestrelle Company.

Consumer Intelligence Matters:When dealing with high-value, specialized products, courts assume customers exercise caution before purchasing.This differs from fast-moving consumer goods, where brand confusion is more likely.

Honest Concurrent Use:If a trademark is created and used in good faith, mere phonetic resemblance does not justify refusal of registration.

Conclusion:The Pianotist Case remains a cornerstone in trademark law, particularly in assessing deceptive similarity and consumer perception. The "Pianotist Test" continues to guide courts worldwide in evaluating trademark disputes, ensuring a balanced approach between brand protection and fair competition.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Amritdhara Pharmacy Vs. Satya Deo Gupta

Amritdhara Pharmacy Vs. Satya Deo Gupta:The test of an "average man with imperfect recollection

Case Title:Amritdhara Pharmacy Vs. Satya Deo Gupta

Date of Judgment:27th April 1962

Case No.:Civil Appeal No. 22 of 1960

Citation: AIR 1963 SC 449

Court:Supreme Court of India

Judges:Justice S.K. Das, Justice M. Hidayatullah, Justice J.C. Shah, H. J. 

Introduction:The case of Amritdhara Pharmacy vs. Satya Deo Gupta is a landmark judgment in Indian trademark law, particularly concerning the principles of deceptive similarity and acquiescence under the Trade Marks Act, 1940. The central issue revolved around the registration of the trademark "Lakshmandhara" and whether it bore a deceptive resemblance to the pre-existing registered mark "Amritdhara." The Supreme Court’s judgment provided crucial guidance on determining the likelihood of confusion in trademarks and the effect of acquiescence on a claim of exclusivity.

Factual Background:Amritdhara Pharmacy had been using the trade name "Amritdhara" for a medicinal preparation since 1901, formally registering it as a trademark.Satya Deo Gupta, the respondent, applied for the registration of "Lakshmandhara" as a trademark for a similar medicinal preparation in 1950.The appellant, Amritdhara Pharmacy, opposed the registration on the ground that "Lakshmandhara" was deceptively similar to "Amritdhara" and could cause confusion among consumers.The respondent contended that:"Lakshmandhara" had been in use since 1923.The words "Amrit" and "Dhara" were common in Hindi and could not be monopolized.The term "Lakshmandhara" had gained distinctiveness through long usage.

Procedural Background:The Registrar of Trade Marks ruled that "Lakshmandhara" was deceptively similar to "Amritdhara" but permitted its registration in Uttar Pradesh due to the acquiescence of Amritdhara Pharmacy. Both parties appealed to the Allahabad High Court:The High Court ruled in favor of the respondent, holding that there was no likelihood of confusion and allowing the registration for the entire country.Aggrieved by the High Court’s decision, Amritdhara Pharmacy appealed to the Supreme Court of India.

Issues Involved in the Case:Whether "Lakshmandhara" was deceptively similar to "Amritdhara" under Sections 8 and 10(1) of the Trade Marks Act, 1940?

Submissions of the Parties:

Petitioner (Amritdhara Pharmacy):"Lakshmandhara" was phonetically and visually similar to "Amritdhara," likely to deceive the public. The common use of "dhara" in both trademarks led to consumer confusion.3. The Registrar rightly limited the respondent’s trademark to Uttar Pradesh due to acquiescence, but the High Court erred in permitting nationwide registration.

Respondent (Satya Deo Gupta):"Amritdhara" and "Lakshmandhara" were different in meaning and pronunciation. The word "Dhara" was a common term and could not be monopolized. "Lakshmandhara" had been in use since 1923, showing honest concurrent use.There was no evidence of actual deception or confusion.

Discussion on Judgments and Precedents Cited:

Pianotist Co.'s Application, (1906) 23 R.P.C. 774:Established the test for deceptive similarity:Consider the look and sound of the words. Consider the nature of goods they represent.Consider the class of customers purchasing them.The Supreme Court applied this test and found that an "unwary purchaser" with "imperfect recollection" might be deceived by the similarities.

Corn Products Refining Co. Vs. Shangrila Food Products Ltd., [1960] 1 S.C.R. 968:Held that trademark similarity must be assessed from the perspective of an average consumer with an "imperfect recollection."Applied by the Supreme Court to determine that "Lakshmandhara" could confuse consumers.

William Bailey (Birmingham) Ltd.’s Application, (1935) 52 R.P.C. 137:Stated that trademarks should be considered in their entirety, not just by comparing individual components.The Supreme Court emphasized that the words "Amritdhara" and "Lakshmandhara" should be compared as wholes.

Reasoning and Analysis of the Supreme Court:

Deceptive Similarity:The Court found phonetic and visual similarities between "Amritdhara" and "Lakshmandhara."The products were of the same type (medicinal preparations).The test of an "average man with imperfect recollection" indicated a likelihood of confusion.The High Court erred in splitting the words and analyzing their etymological meanings.

Acquiescence:The Supreme Court upheld the Registrar’s finding that Amritdhara Pharmacy had acquiesced to the use of "Lakshmandhara" in Uttar Pradesh since 1923.However, this did not justify national registration.The limitation to Uttar Pradesh was a reasonable condition imposed by the Registrar.

Final Decision:The Supreme Court set aside the High Court’s judgment and restored the order of the Registrar of Trade Marks."Lakshmandhara" could only be registered for sale in Uttar Pradesh and not the entire country.

Law Settled by the Case:

Test for Deceptive Similarity: The likelihood of deception must be assessed from the perspective of an ordinary purchaser with imperfect recollection.

Comparison of Trademarks: Words in a trademark should be considered as a whole, not merely by their individual components.

Acquiescence in Trademark Law: Long-standing inaction by a trademark owner may limit their ability to challenge a later trademark but does not automatically justify national registration.

Honest Concurrent Use: Even long usage of a trademark does not override the principle of deceptive similarity if confusion is likely.

Conclusion:The Supreme Court’s decision in Amritdhara Pharmacy vs. Satya Deo Gupta reaffirmed fundamental principles of trademark law, particularly deceptive similarity and the role of acquiescence. The judgment is significant in shaping Indian jurisprudence on trademarks, balancing the rights of prior trademark owners with the interests of subsequent users.

This case continues to serve as a reference point in intellectual property law, guiding courts in assessing deceptive similarity and determining when acquiescence bars relief in trademark disputes.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

American Home Products Corporation Vs Mac Laboratories Private Limited

American Home Products Corporation Vs Mac Laboratories Private Limited:Permitted use by a registered user and Trademark Trafficking 

Case Title:American Home Products Corporation Vs Mac Laboratories Private Limited & Anr.

Date of Order:30 September 1985

Case No.:Civil Appeal No. 2159 of 1969

Citation:1986 AIR 137, 1986 (1) SCC 465

Name of Court:Supreme Court of India

Name of Judge(s):Justice D.P. Madon and Justice Amarendra Nath Sen, H. J. 

Introduction:The case of American Home Products Corporation vs Mac Laboratories Private Limited & Anr. is a landmark judgment in Indian Trademark law, addressing critical questions regarding the registration and usage of trademarks by foreign proprietors through registered users. It deals with whether a foreign proprietor of a trademark can register a mark with the sole intent of using it through a registered user, a crucial issue affecting multinational corporations operating in India.

The case also explores the doctrine of "trafficking in trademarks", analyzing whether permitting a trademark to be used by a registered user without the proprietor's own use constitutes trafficking, which is against the policy of the Indian trademark system.

Factual Background:American Home Products Corporation (AHP), a US-based company, was engaged in the manufacture and marketing of pharmaceutical products through its division Whitehall Laboratories.

AHP had a subsidiary relationship with an Indian company, Geoffrey Manners & Co. Ltd., in which it held 40% shareholding.

In 1956, AHP introduced an anti-histamine drug named ‘Dristan’ in the US and later obtained trademark registrations for ‘Dristan’ in various countries.

In 1957, AHP entered into a technical collaboration agreement with Geoffrey Manners, providing manufacturing formulae, technology, and exclusive licensing rights to produce and sell its pharmaceutical products, including ‘Dristan,’ in India.

On August 18, 1958, AHP filed an application to register ‘Dristan’ in India under the Trade Marks Act, 1940.

The trademark was registered on June 8, 1959.

On October 22, 1961, Geoffrey Manners launched ‘Dristan’ in India.

Meanwhile, Mac Laboratories applied for registration of the trademark ‘Tristine’ in 1960. AHP opposed this application on the grounds that ‘Tristine’ was deceptively similar to ‘Dristan.’ However, the Assistant Registrar ruled in favor of Mac Laboratories.

Procedural Background:

1. Mac Laboratories filed an application for rectification of the trade mark ‘Dristan,’ seeking its removal from the register.

2. The Registrar of Trade Marks dismissed the application.

3. Mac Laboratories appealed to the Calcutta High Court, which ruled in its favor, holding that AHP had no bona fide intention to use ‘Dristan’ itself and had not actually used it.

4. The Division Bench of the High Court affirmed the decision, leading AHP to file an appeal before the Supreme Court.

Issues Involved in the Case:

1. Can a proprietor of a trademark register it with the sole intent of using it through a registered user?

2. Whether the words "proposed to be used by him" under Section 18(1) of the Trade and Merchandise Marks Act, 1958, include a proposed use by a registered user?

3. Whether such a trademark registration amounts to "trafficking in trademarks"?

4. Whether there was a bona fide intention on the part of AHP to use the trademark ‘Dristan’?

5. Whether ‘Dristan’ was deceptively similar to ‘Bistan’ and ‘Tristine’?

Submission of the Parties:

Arguments by American Home Products Corporation (Appellant):

1. Legal Fiction Under Section 48(2) – The company argued that permitted use of a trademark by a registered user should be considered use by the proprietor.

2. Intention to Use – It contended that an intention to use through a registered user is a legitimate intention.

3. No Trafficking in Trademarks – AHP asserted that its agreement with Geoffrey Manners was genuine and not a case of selling trademark rights for profit.

4. Foreign Investment Restrictions – Given India's foreign investment policies, direct manufacturing by AHP was impossible, and collaboration with an Indian entity was the only viable way to use the trademark.

Arguments by Mac Laboratories (Respondent):

1. Proposed Use Must Be by Proprietor – It argued that Section 18(1) only allows registration when the applicant intends to use the mark itself or through agents and servants but not through a registered user.

2. Trafficking in Trademarks – Mac Laboratories claimed that AHP’s registration amounted to trademark trafficking because AHP had no real intention of using the mark itself.

3. Deceptive Similarity – It also contended that ‘Dristan’ was deceptively similar to ‘Bistan’ and ‘Tristine’, causing confusion in the market.

Discussion on Judgments Cited:

1. Pussy Galore Trademark Case (1967) RPC 265 – This English case held that registration of a trademark without an intent to use it constitutes trafficking, but the Supreme Court ruled that the Indian law was different.

2. Re American Greetings Corp.'s Application (1983) 2 All ER 609 – This case defined the requirement for a real trade connection between the registered proprietor and the registered user.

3. Batt’s Case (1898) 2 Ch. D 432 – The Supreme Court relied on this case to conclude that a bona fide intention to use the trademark through a registered user suffices.

Reasoning and Analysis of the Court:

1. Legal Fiction Applies – The Supreme Court held that Section 48(2) creates a legal fiction whereby use by a registered user is deemed to be use by the proprietor.

2. Intention to Use Through Registered User is Valid – The court ruled that the applicant need not personally use the trademark but can use it through a registered user.

3. No Trafficking in Trademarks – Since AHP had a real trade connection with Geoffrey Manners, there was no trafficking in the ‘Dristan’ trademark.

4. No Deceptive Similarity – The court held that ‘Dristan’ was not deceptively similar to ‘Bistan’ or ‘Tristine’.

5. Errors in High Court’s Judgment – The Supreme Court found that the Calcutta High Court misinterpreted Indian law by relying too much on English precedents. 

Final Decision:

The Supreme Court reversed the High Court’s decision.

The trademark ‘Dristan’ was upheld, and Mac Laboratories’ rectification application was dismissed.

AHP’s right to use ‘Dristan’ through a registered user was validated.

Key Legal Principles Settled:

Permitted use by a registered user constitutes use by the proprietor under Indian law.

A proprietor can register a trademark with the intent to use it through a registered user.

"Trafficking in trademarks" applies only when there is no genuine trade connection between the proprietor and the registered user.

A trademark need not be personally used by the proprietor to remain valid.

A registered trademark cannot be removed solely due to non-use for a short duration.

This case remains a landmark ruling in Indian Trademark Law, shaping the legal framework for multinational companies seeking to register and protect trademarks in India.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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