Wednesday, June 17, 2026

Astral Ltd. Vs. Astral Marketing Syndicate

Brief Legal News Write-Up

Astral Ltd. v. M/s Astral Marketing Syndicate & Anr.
Date of Judgment: 15.06.2026 : Case No.: CS(COMM) 294/2024, I.A. 16193/2025 : Neutral Citation: 2026:DHC:4706 : Court: High Court of Delhi : Hon'ble Judge: Justice Tejas Karia

The Court considered a dispute concerning territorial jurisdiction in a trademark infringement and passing off suit. The case arose from allegations that the defendant was using the mark “ASTRAL” in relation to its products and advertising the same through the online platform Justdial, thereby causing confusion with the plaintiff’s well-known trademark.

The principal question before the Court was whether the Delhi High Court could exercise territorial jurisdiction when the defendant was based in Ahmedabad, but the allegedly infringing products were advertised through an interactive online platform accessible in Delhi and the plaintiff maintained a subordinate office in Delhi.

After examining the material on record and the submissions of the parties, Justice Tejas Karia observed that for deciding an application challenging jurisdiction at the threshold stage, the averments in the plaint must be assumed to be true. The Court held that listings on interactive online platforms such as Justdial, through which customers may access product catalogues, communicate with sellers, and place enquiries, can constitute a part of the cause of action for the purpose of territorial jurisdiction. The Court further emphasized that the plaintiff’s subordinate office in Delhi, coupled with the online accessibility of the defendant’s products in Delhi, was sufficient to confer jurisdiction at this preliminary stage.

Accordingly, the Court dismissed the defendant’s application seeking rejection of the plaint on the ground of lack of territorial jurisdiction while keeping the jurisdictional objections open for consideration at the appropriate stage of the suit.

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

Delhi High Court Holds Justdial Listing and Online Accessibility Sufficient to Confer Territorial Jurisdiction in Trademark Suit

Introduction

The Delhi High Court's decision in Astral Ltd. v. M/s Astral Marketing Syndicate & Anr. is a significant ruling on territorial jurisdiction in trademark infringement and passing off actions involving internet-based commercial activities. As business transactions increasingly move online, courts are frequently required to determine whether digital advertisements, online product listings, and internet-based interactions are sufficient to confer jurisdiction upon a particular court.

The judgment is particularly important for trademark owners, businesses operating through e-commerce and online directories, intellectual property practitioners, and companies seeking to enforce their trademark rights across different jurisdictions. The Court clarified that online commercial presence through interactive platforms may constitute a part of the cause of action and can support territorial jurisdiction even when the defendant's principal place of business is located elsewhere.

The ruling reflects the evolving approach of Indian courts toward internet jurisdiction and reinforces the principle that digital accessibility and online commercial interaction may have important jurisdictional consequences.

Factual and Procedural Background

Astral Ltd. instituted a commercial suit seeking relief against M/s Astral Marketing Syndicate and another for alleged trademark infringement and passing off involving the mark “ASTRAL.”

During the pendency of the suit, Defendant No. 1 filed an application under Order VII Rule 11 read with Section 151 of the Code of Civil Procedure, 1908 seeking rejection of the plaint. The principal ground raised by the defendant was that the Delhi High Court lacked territorial jurisdiction to entertain the suit.

The defendant argued that it carried on business exclusively from Ahmedabad, Gujarat. It was also contended that the plaintiff's principal place of business was situated in Ahmedabad. According to the defendant, no sale of the allegedly infringing products had taken place in Delhi and the mere existence of an online advertisement could not confer jurisdiction.

The plaintiff opposed the application and relied upon its pleadings that the defendant's products were advertised and offered for sale through the online platform Justdial. The plaintiff asserted that the Justdial listing was accessible throughout India, including Delhi, and enabled consumers to access product catalogues, initiate enquiries, communicate with the defendant, and place orders.

The plaintiff further pleaded that it maintained a sales and marketing office in Delhi and that customers within Delhi were likely to be confused by the defendant's use of the impugned mark.

The Court was therefore required to determine whether these pleadings were sufficient to confer territorial jurisdiction at the preliminary stage.

Dispute Before the Court

The central issue before the Court was whether the Delhi High Court possessed territorial jurisdiction to entertain the trademark infringement and passing off suit.

The defendant contended that both parties were based in Ahmedabad and that no actual commercial transaction involving the allegedly infringing products had been shown to have taken place in Delhi. According to the defendant, a listing on Justdial or an online advertisement accessible in Delhi could not by itself create jurisdiction.

The plaintiff argued that the defendant's products were being promoted and advertised through an interactive online platform accessible to consumers in Delhi. The plaintiff further contended that customers in Delhi could communicate with the defendant, access product information, and potentially place orders through the online platform. It was also argued that the plaintiff maintained a subordinate office in Delhi and therefore the Court possessed jurisdiction under Section 134 of the Trade Marks Act, 1999 read with Section 20 of the Code of Civil Procedure.

The Court was therefore called upon to examine whether online accessibility and digital commercial interaction constituted a sufficient part of the cause of action for jurisdictional purposes.

Reasoning and Analysis of the Court

The Court began by reiterating the settled principle that while considering an objection to territorial jurisdiction at the threshold stage, the averments made in the plaint must be accepted as true. The Court emphasized that such objections are examined on the demurrer principle and do not require immediate adjudication of disputed facts.

The Court noted that the plaintiff had specifically pleaded that the defendant's allegedly infringing products were listed and advertised on Justdial and that consumers throughout India, including Delhi, could access those listings. The listings enabled users to access product catalogues, obtain contact details, initiate communication, and send enquiries to the defendant.

The Court relied extensively upon its earlier decision in Sun Pharmaceutical Industries Ltd. v. Artura Pharmaceuticals (P) Ltd., 2025 SCC OnLine Del 8642. In that case, the Court had applied the principles laid down in Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, concerning internet jurisdiction. The Court had recognized the relevance of the “sliding scale test” and the “effects test” for determining whether online activities amount to purposeful availment of a forum.

The Court referred to the observations in Sun Pharmaceutical that a website containing interactive features such as a “Contact Us” page, downloadable product information, and customer communication mechanisms may be sufficient to establish prima facie jurisdiction at the threshold stage.

The Court also relied upon Ravinder Singh v. Regoshin Healthcare (P) Ltd., 2026 SCC OnLine Del 3716, where it had been held that third-party platforms such as Justdial and IndiaMart operate as facilitators for commercial promotion and can contribute to the arising of a cause of action.

Another important precedent considered by the Court was Tata Sons P. Ltd. v. Hakunamatata Tata Founders and Ors., 2022 SCC OnLine Del 2968. In that decision, the Court had observed that targeting customers need not always involve aggressive marketing and that, in appropriate cases, the mere online presence of a website accessible within a territory may be sufficient.

The Court observed that Justdial was not merely a passive directory. The plaintiff had specifically pleaded that the listing enabled customer interaction, access to product catalogues, and communication with the defendant. Such functionality could reasonably be construed as facilitating commercial transactions.

The Court further held that whether actual transactions occurred in Delhi and whether customers in Delhi were genuinely confused were disputed factual issues that could only be resolved after evidence is led during trial.

The Court also considered the plaintiff's reliance on Section 134 of the Trade Marks Act, 1999. The plaintiff maintained a subordinate office in Delhi. Referring to Astral Ltd. v. Ajay Enterprises, 2025 SCC OnLine Del 10065, the Court reiterated that where part of the cause of action arises at a place where the plaintiff has a subordinate office, the courts at that location may also exercise jurisdiction.

The Court rejected the defendant's argument that failure to expressly invoke Section 134 in the plaint deprived the Court of jurisdiction. It held that jurisdiction depends upon substantive legal entitlement and not merely upon citation of statutory provisions.

Final Decision of the Court

The Delhi High Court dismissed the defendant's application seeking rejection of the plaint on the ground of lack of territorial jurisdiction.

The Court held that the pleadings disclosed that part of the cause of action had arisen within Delhi because the defendant's allegedly infringing products were advertised and promoted through an online platform accessible to consumers in Delhi. The Court further found that the plaintiff maintained a subordinate office in Delhi, thereby supporting jurisdiction under the Trade Marks Act and the Code of Civil Procedure.

However, the Court clarified that the defendant's objections regarding territorial jurisdiction were kept open and could be raised at the appropriate stage during the trial. The suit was directed to proceed further in accordance with law.

Point of Law Settled

The judgment reinforces the principle that in trademark infringement and passing off actions involving internet-based activities, online listings on interactive platforms such as Justdial may constitute a sufficient part of the cause of action to confer territorial jurisdiction.

The Court clarified that at the stage of deciding jurisdictional objections under Order VII Rule 11 CPC, the pleadings must be accepted as true and disputed factual issues concerning actual sales, commercial transactions, or consumer confusion should ordinarily be left for trial.

The decision further confirms that where a plaintiff maintains a subordinate office within a jurisdiction and part of the cause of action arises there, the courts at that location may exercise jurisdiction under Section 134 of the Trade Marks Act, 1999 read with Section 20 CPC.

Case Details:

Title of the Case: Astral Ltd. Vs. Astral Marketing Syndicate & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: CS(COMM) 294/2024, I.A. 16193/2025

Neutral Citation: 2026:DHC:4706

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tejas Karia

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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Astral Ltd v Astral Marketing Syndicate: Delhi HC on Online Jurisdiction in Trademark Cases
Can Justdial Listings Confer Court Jurisdiction? Delhi High Court Answers
Delhi HC Clarifies Territorial Jurisdiction in Online Trademark Infringement Cases
Interactive Websites and Trademark Litigation: Key Delhi High Court Ruling
Delhi High Court on Internet Jurisdiction and Trademark Infringement
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Territorial Jurisdiction in E-Commerce Trademark Disputes Explained
Delhi HC Reaffirms Online Accessibility Test in Trademark Litigation
Trademark Infringement and Digital Commerce: Analysis of Astral Ltd Judgment
Delhi High Court on Section 134 Trade Marks Act and Online Sales Platforms
Internet-Based Trademark Disputes and Jurisdiction: Important Delhi HC Decision

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Headnote of the Judgment:

Astral Ltd. v. M/s Astral Marketing Syndicate & Anr., Delhi High Court, CS(COMM) 294/2024, Neutral Citation 2026:DHC:4706, decided on 15.06.2026. The defendant sought rejection of the plaint under Order VII Rule 11 CPC on the ground that the Delhi High Court lacked territorial jurisdiction because both parties were based in Ahmedabad. The plaintiff relied upon the defendant's Justdial listing, accessibility of the alleged infringing products in Delhi, and the plaintiff's subordinate office in Delhi. The Court held that interactive online listings capable of facilitating customer enquiries and commercial interaction can constitute part of the cause of action. Finding prima facie territorial jurisdiction in Delhi, the Court dismissed the application while keeping jurisdictional objections open for determination at the trial stage.

Infographic Thumbnail Prompt:

Create a professional legal news YouTube thumbnail featuring the Delhi High Court building, trademark symbols (™), digital commerce graphics, and an online marketplace interface resembling Justdial. Display bold headlines: “DELHI HC ON ONLINE JURISDICTION”, “JUSTDIAL LISTING CAN CONFER JURISDICTION”, and “ASTRAL TRADEMARK CASE”. Include visuals showing a website listing, customer enquiry forms, digital shopping icons, maps connecting Ahmedabad and Delhi, scales of justice, and legal documents. Highlight phrases such as “Trademark Infringement”, “Online Accessibility”, “Territorial Jurisdiction”, and “E-Commerce Litigation”. Use a modern legal-tech design with blue, gold, white, and red accents suitable for lawyers, businesses, and trademark professionals. Emphasize the intersection of trademark law and digital commerce. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

DRS Logistics (P) Ltd. & Another Vs. Google India Pvt. Ltd.

Brief Legal News Write-Up

M/s DRS Logistics (P) Ltd. & Another v. Google India Pvt. Ltd. & Ors.
Date of Judgment: 15.06.2026 : Case No.: CS(COMM) 1/2017, I.A. 18605/2025 : Neutral Citation: Not Available in Judgment : Court: High Court of Delhi : Hon'ble Judge: Justice Tejas Karia

The Court considered a dispute concerning alleged contempt and violation of earlier judicial directions relating to the use of trademarks in online advertisements and keyword advertising. The case arose from allegations that Google and related entities continued to permit third parties to use the plaintiffs’ trademarks, including “AGARWAL”, “AGGARWAL PACKERS AND MOVERS” and “DRS Logistics”, in sponsored advertisements despite earlier court orders.

The principal question before the Court was whether the defendants had willfully disobeyed previous judgments by permitting the use of the plaintiffs’ trademarks in advertisement text, titles, URLs, and keyword-based search advertising.

After examining the material on record and the submissions of the parties, Justice Tejas Karia observed that the operative directions contained in the earlier judgments were confined to investigation of complaints concerning the use of trademarks as keywords and did not impose any obligation upon the defendants to proactively monitor all advertisements for use of the plaintiffs’ trademarks. The Court held that no willful disobedience of the earlier judgments had been established, emphasizing that contempt jurisdiction cannot be invoked where the directions are capable of more than one interpretation and the alleged conduct is not clearly contemptuous.

Accordingly, the Court dismissed the contempt application and directed that if the plaintiffs identify future advertisements using their trademarks in advertisement text, titles, or URLs, they may notify the defendants, who shall investigate and take appropriate action in accordance with their policy.

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

Delhi High Court Dismisses Contempt Plea Against Google in Trademark Keyword Advertising Dispute

Introduction

The Delhi High Court has delivered an important judgment clarifying the scope of contempt proceedings arising from trademark disputes involving online advertising and search engine platforms. The decision in M/s DRS Logistics (P) Ltd. & Another v. Google India Pvt. Ltd. & Ors. addresses the increasingly significant issue of how trademark rights interact with keyword-based digital advertising.

The case is particularly relevant for trademark owners, technology companies, online advertising platforms, digital marketers, intellectual property practitioners, and businesses that rely on internet visibility for customer acquisition. The judgment clarifies the extent of obligations imposed upon online intermediaries and emphasizes that contempt proceedings cannot be used to expand the scope of earlier judicial directions.

The ruling also provides valuable guidance regarding keyword advertising, trademark enforcement in the digital environment, intermediary liability, and the standards required to establish willful disobedience of court orders.

Factual and Procedural Background

The plaintiffs, M/s DRS Logistics (P) Ltd. and another, instituted a commercial suit seeking protection of their trademarks, including “AGARWAL,” “AGGARWAL PACKERS AND MOVERS,” and “DRS Logistics.” The suit sought reliefs relating to trademark infringement, passing off, and unfair competition.

During the pendency of the suit, the Court passed a judgment dated 30.10.2021 in applications filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The Court directed Google and the concerned defendants to investigate complaints made by the plaintiffs regarding the use of their trademarks and variations as keywords resulting in diversion of internet traffic. The Court further directed that if infringement or passing off was found, appropriate action should be taken to restrain advertisers and remove or block offending advertisements.

The defendants challenged the judgment before a Division Bench through FAO(OS)(COMM) 2/2022 and FAO(OS)(COMM) 22/2022. By a common judgment dated 10.08.2023, the Division Bench declined to interfere with the directions issued by the Single Judge.

Subsequently, the plaintiffs conducted searches in June 2025 and claimed that third-party sponsored links continued to appear when searches were made using the plaintiffs’ trademarks. According to the plaintiffs, these sponsored advertisements resulted in diversion of traffic and consumer confusion.

The plaintiffs issued a notice dated 17.06.2025 alleging violation of the earlier judgments. Thereafter, they filed the present application under Order XXXIX Rule 2A CPC and Section 12 of the Contempt of Courts Act, 1971 seeking initiation of contempt proceedings against Google and related defendants for alleged willful disobedience of the earlier judgments.

The defendants opposed the application and asserted that they had complied with the directions contained in the earlier judgments and that no contempt was made out.

Dispute Before the Court

The primary controversy before the Court concerned the true scope of the earlier judgments passed in 2021 and 2023.

The plaintiffs argued that Google and the other defendants had undertaken before the Court that the plaintiffs’ trademarks would not appear in advertisement text, advertisement titles, or URLs of third-party advertisements. According to the plaintiffs, continued appearance of such advertisements amounted to deliberate and willful disobedience of the earlier judicial directions.

The defendants, on the other hand, contended that the earlier judgments dealt primarily with the issue of trademark use as keywords. They argued that the judgments required investigation of complaints received from trademark owners and did not impose any obligation to proactively monitor and block every advertisement appearing on the platform.

The Court was therefore required to determine whether the earlier directions extended beyond keyword advertising and whether the defendants had committed willful contempt by permitting the plaintiffs’ trademarks to appear in advertisement text, titles, or URLs.

Reasoning and Analysis of the Court

The Court carefully examined the operative portions of the judgments dated 30.10.2021 and 10.08.2023.

The Court observed that the directions contained in the earlier judgments specifically required the defendants to investigate complaints made by the plaintiffs concerning use of the plaintiffs’ trademarks as keywords. The directions further required investigation of the overall effect of advertisements and removal or blocking of advertisements found to be infringing.

A significant aspect of the Court’s reasoning was its analysis of the statement recorded in the order dated 22.01.2020. During those proceedings, Google had stated that, under its advertising policies, third parties were not permitted to use another proprietor’s trademark in advertisement text or advertisement titles and that the policy would be implemented in favour of the plaintiffs.

The Court noted that because of this statement, the plaintiffs had confined the controversy in the injunction proceedings to the issue of trademark use as keywords. Consequently, the earlier judgments were focused on keyword advertising rather than on the use of trademarks in advertisement text, advertisement titles, or URLs.

The Court held that the operative directions ultimately granted were narrower than the broad reliefs originally sought by the plaintiffs. While the plaintiffs had sought extensive restrictions on use of their trademarks, the final directions only required investigation of complaints relating to keyword usage.

The Court further emphasized the settled principles governing contempt jurisdiction. Reliance was placed upon Sudhir Vasudeva v. M. George Ravishekaran, (2014) 3 SCC 373, wherein the Supreme Court held that only explicit and self-evident directions contained in a judgment can form the basis of contempt proceedings.

The Court also referred to Ram Kishan v. Tarun Bajaj & Ors., (2014) 16 SCC 204, Three Cheers Entertainment Private Limited v. CESE Limited, (2008) 16 SCC 592, and Anil Ratan Sarkar & Ors. v. Hirak Ghosh & Ors., (2002) 4 SCC 21. These authorities reiterate the principle that contempt proceedings are not maintainable where two reasonable interpretations of a court order are possible and where willful disobedience is not established.

The Court additionally relied upon Jiva Institute of Vedic Science and Culture & Anr. v. Puneet Chhatwal & Ors., CCP(O) 33/2022 in CS(COMM) 602/2016, which recognized that the understanding of the alleged contemnor regarding the scope of the order is a relevant factor in determining whether contempt has occurred.

Applying these principles, the Court concluded that the judgments did not impose any obligation upon the defendants to proactively monitor all advertisements or independently prevent every possible use of the plaintiffs’ trademarks in advertisement text, titles, or URLs. Rather, the relevant policy framework contemplated action upon receipt of complaints.

The Court nevertheless clarified that the defendants remained bound by their recorded statement that trademark use in advertisement text, advertisement titles, and URLs would not be permitted under their policy and that complaints concerning such usage would be investigated and addressed.

Final Decision of the Court

The Delhi High Court dismissed the contempt application.

The Court held that the plaintiffs had failed to establish any willful disobedience or violation of the directions contained in the earlier judgments. It found that the operative directions related primarily to the use of trademarks as keywords and did not require proactive monitoring of advertisement text, titles, or URLs.

The Court further noted that the impugned URLs referred to in the application had already been removed following the plaintiffs’ notice and pursuant to subsequent court orders.

The Court granted liberty to the plaintiffs to notify the defendants if they discover future advertisements using the plaintiffs’ trademarks in advertisement text, titles, or URLs. Upon receiving such complaints, the defendants were directed to investigate and take appropriate action in accordance with their policies as expeditiously as possible.

Point of Law Settled

The judgment clarifies that contempt jurisdiction cannot be invoked to expand or reinterpret the scope of an earlier judicial order. Only clear, explicit, and self-evident directions can form the basis of contempt proceedings.

The Court reaffirmed that where a judicial order is reasonably capable of more than one interpretation, contempt proceedings cannot succeed unless willful disobedience is clearly established.

In the context of online trademark enforcement, the judgment further clarifies that directions requiring investigation of complaints regarding keyword advertising do not automatically impose a broader obligation upon online platforms to proactively monitor and prevent every instance of trademark use in advertisement text, titles, or URLs. Such obligations must arise either from specific judicial directions or from the platform’s own policies and complaint-handling mechanisms.

Case Details:

Title of the Case: DRS Logistics (P) Ltd. & Another Vs. Google India Pvt. Ltd. & Ors.

Date of Judgment/Order: 15.06.2026

Case Number: CS(COMM) 1/2017, I.A. 18605/2025

Neutral Citation: Not Available in Judgment

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tejas Karia

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

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Delhi High Court Dismisses Contempt Plea Against Google in Trademark Advertising Case
Trademark Keyword Advertising: Delhi HC Clarifies Scope of Google’s Obligations
DRS Logistics v Google India: Delhi High Court on Trademark Use in Online Ads
No Contempt by Google in Trademark Keyword Advertising Dispute, Says Delhi HC
Delhi HC Explains Limits of Contempt Jurisdiction in Trademark Cases
Online Trademark Enforcement and Keyword Advertising: Key Delhi HC Ruling
Delhi High Court on Trademark Use in Ad Titles, Ad Text and URLs
Google Not Liable for Contempt in DRS Logistics Trademark Dispute
Delhi HC Clarifies Distinction Between Trademark Keywords and Advertisement Content
Important Delhi High Court Judgment on Intermediary Liability and Trademark Protection
Trademark Owners and Online Ads: Lessons from DRS Logistics v Google
Delhi High Court Reaffirms Complaint-Based Enforcement in Trademark Advertising Disputes

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Headnote of the Judgment:

M/s DRS Logistics (P) Ltd. & Another v. Google India Pvt. Ltd. & Ors., Delhi High Court, CS(COMM) 1/2017, decided on 15.06.2026. The plaintiffs filed an application under Order XXXIX Rule 2A CPC and Section 12 of the Contempt of Courts Act alleging that Google and related entities violated earlier judgments concerning use of the plaintiffs’ trademarks in online advertising. The Delhi High Court held that the operative directions in the earlier judgments were confined to investigation of complaints regarding trademark use as keywords and did not impose a proactive monitoring obligation concerning advertisement text, titles, or URLs. Finding no willful disobedience of the earlier orders, the Court dismissed the contempt application while permitting the plaintiffs to report future violations for action under the defendants’ policies.

Infographic Thumbnail Prompt:

Create a professional legal news YouTube thumbnail focused on a landmark Delhi High Court judgment involving Google, trademark law, online advertising, and keyword advertising disputes. Show the Delhi High Court building in the background along with digital advertising and search engine graphics. Prominently display the text: “DELHI HC RULES ON GOOGLE ADS”, “TRADEMARK KEYWORD DISPUTE”, and “NO CONTEMPT FOUND”. Include visual elements such as Google-style search results, sponsored advertisements, trademark symbols (™), scales of justice, legal documents, and a courtroom setting. Highlight phrases like “Keyword Advertising”, “Trademark Protection”, and “Online Ads Liability”. Use a modern legal-tech design with blue, white, red, and gold accents. The thumbnail should convey the intersection of technology, intellectual property, and court regulation of digital advertising. Include visual cues showing distinction between “Keywords” and “Ad Text”. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

Anuj Bindal Messrs Aggarwal Rice and Oil Mills Vs. Union of India

Brief Legal News Write-Up

Anuj Bindal Messrs Aggarwal Rice and Oil Mills v. Union of India & Anr.
Date of Judgment: 15.06.2026 : Case No.: C.O. (COMM.IPD-TM) 120/2025 : Neutral Citation: 2026:DHC:4707 : Court: High Court of Delhi : Hon'ble Judge: Justice Tejas Karia

The Court considered a dispute concerning substitution of a party in a trademark rectification petition following an alleged assignment of the disputed trademark during the pendency of the proceedings. The case arose from allegations that Respondent No. 2 assigned the trademark “DOUBLE KABOOTAR BRAND” to his wife through an Assignment Deed and sought substitution on that basis despite the validity of the trademark being under challenge in rectification proceedings.

The principal question before the Court was whether the assignee could be substituted in place of the registered proprietor when the assignment was under scrutiny and the application for recording the assignment before the Trade Marks Registry remained pending.

After examining the material on record and the submissions of the parties, Justice Tejas Karia observed that the timing of the assignment, the filing of Form TM-P, and the surrounding circumstances created serious doubts regarding the bona fides of the transaction. The Court held that unless and until the Trade Marks Registry recognizes the assignee as the subsequent proprietor of the mark, substitution in the rectification proceedings would be premature. The Court emphasized that the registered proprietor continued to remain on the Register and that the alleged assignee could not claim substitution merely on the basis of a pending assignment application.

Accordingly, the Court dismissed the substitution application while granting liberty to the applicant to seek substitution at an appropriate stage if the assignment is recognized by the Trade Marks Registry in accordance with law.

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

Delhi High Court Refuses Substitution of Alleged Assignee in Trademark Rectification Proceedings Until Assignment Is Recognized by Trade Marks Registry

Introduction

The Delhi High Court's decision in Anuj Bindal Messrs Aggarwal Rice and Oil Mills v. Union of India & Anr. addresses an important procedural issue in trademark litigation concerning assignments executed during the pendency of rectification proceedings. The judgment examines whether an alleged assignee can immediately replace the registered proprietor in pending proceedings solely on the basis of an assignment deed when the assignment has not yet been formally recognized by the Trade Marks Registry.

The ruling is significant for trademark proprietors, assignees, intellectual property practitioners, and businesses involved in trademark transactions. It highlights the importance of registration procedures under trademark law and clarifies that execution of an assignment deed alone may not automatically entitle an assignee to procedural rights in pending litigation.

The judgment also underscores judicial scrutiny of transactions executed during pending disputes, particularly where surrounding circumstances create doubts regarding the genuineness or timing of the transfer.

Factual and Procedural Background

The proceedings arose in a trademark rectification petition concerning the trademark “DOUBLE KABOOTAR BRAND” bearing Registration No. 5574981 in Class 31. The registered proprietor of the trademark was Respondent No. 2, Mr. Tarsem Chand, sole proprietor of M/s R.D. Traders.

An application was filed by Mrs. Sunita Devi under Order XXII Rule 10 read with Section 151 of the Code of Civil Procedure, 1908 seeking substitution of Respondent No. 2 in the rectification proceedings. Mrs. Sunita Devi is the wife of Respondent No. 2. According to the applicant, Respondent No. 2 had executed an Assignment Deed dated 01.08.2025 assigning all rights in the trademark to her. An application in Form TM-P seeking recording of the assignment was subsequently filed before the Trade Marks Registry on 04.08.2025.

The petitioner opposed the application and relied upon an earlier order dated 25.09.2025 in which the Court had observed that the affidavit filed in support of Form TM-P failed to disclose the pendency of the rectification proceedings and appeared ex facie false. The petitioner further argued that the assignment was executed during the pendency of the rectification proceedings and could not confer enforceable rights upon the applicant.

The applicant contended that neither she nor Respondent No. 2 had knowledge of the rectification proceedings when the assignment was executed. It was submitted that the assignment and filing of the relevant documents before the Trade Marks Registry occurred before Respondent No. 2 became aware of the pending proceedings.

The Court was therefore required to determine whether substitution could be permitted at this stage.

Dispute Before the Court

The central issue before the Court was whether the applicant, claiming rights under an Assignment Deed, could be substituted in place of the registered proprietor in a pending trademark rectification petition.

The petitioner argued that the assignment transaction was suspicious, that the affidavit filed before the Registry failed to disclose the pending rectification proceedings, and that the assignment appeared to be an attempt to avoid the consequences of the challenge to the trademark registration.

The applicant argued that the assignment was a genuine transaction executed before acquiring knowledge of the rectification proceedings. It was contended that the Assignment Deed transferred all rights in the trademark and therefore the applicant should be permitted to step into the shoes of the assignor for purposes of the litigation.

The Court had to consider the legal effect of a pending assignment application and determine whether substitution could be granted before recognition of the assignment by the Trade Marks Registry.

Reasoning and Analysis of the Court

The Court carefully reviewed the chronology of events surrounding the assignment. The Assignment Deed was executed on 01.08.2025, the supporting affidavit was attested on 02.08.2025, and Form TM-P was filed before the Trade Marks Registry on 04.08.2025. According to Respondent No. 2, he became aware of the rectification proceedings only on 07.08.2025.

The Court noted that its earlier order dated 25.09.2025 had expressed serious reservations regarding the affidavit filed in support of Form TM-P because it failed to disclose the pendency of the rectification proceedings. Although those observations were made in a different procedural context, they remained relevant while assessing the present application.

A significant aspect of the Court’s analysis concerned the surrounding circumstances. The Court observed that the assignment was executed in favour of the assignor’s wife immediately before the first effective hearing in the rectification proceedings. The Court also noted that counsel appeared for Respondent No. 2 on 08.08.2025 despite absence of prior service, yet no disclosure was made regarding the assignment transaction at that stage. These circumstances, according to the Court, created suspicion regarding the explanation advanced by the applicant and Respondent No. 2.

The Court nevertheless focused on a more fundamental legal issue. It observed that the application seeking recording of the assignment through Form TM-P remained pending before the Trade Marks Registry. Consequently, the Register of Trade Marks continued to show Respondent No. 2 as the registered proprietor of the trademark. Until the Registry formally considered and allowed the application for recording the assignment, the applicant could not be treated as the recognized proprietor of the mark.

The Court held that substitution at this stage would therefore be premature. The legal status of the applicant as proprietor remained contingent upon a decision by the Trade Marks Registry. Unless and until the Registry recorded the assignment and recognized the applicant as proprietor, the registered proprietor continued to be the proper party to the proceedings.

The Court thus concluded that the substitution request could not be granted merely on the basis of an Assignment Deed when the statutory process for recording the assignment had not yet been completed.

Final Decision of the Court

The Delhi High Court dismissed the application seeking substitution of Respondent No. 2 by the applicant in the rectification proceedings.

The Court held that Respondent No. 2 continued to remain the registered proprietor of the trademark and that the applicant could not be substituted until the application in Form TM-P was decided by the Trade Marks Registry and the applicant was formally recognized as proprietor.

The Court granted liberty to the applicant to approach the Court again for substitution if and when the assignment is recognized in accordance with law. The rectification petition was directed to be listed for further proceedings on 20.08.2026.

Point of Law Settled

The judgment clarifies that execution of a trademark assignment deed does not automatically entitle an assignee to substitution in pending litigation where the assignment has not yet been recognized by the Trade Marks Registry.

The decision reinforces the principle that the registered proprietor reflected on the Register of Trade Marks continues to enjoy procedural status in legal proceedings until statutory formalities for recording the assignment are completed.

The ruling also demonstrates that courts may closely scrutinize assignments executed during the pendency of trademark disputes, particularly where the timing and surrounding circumstances raise doubts regarding the bona fides of the transaction.

Case Details:

Title of the Case: Anuj Bindal Messrs Aggarwal Rice and Oil Mills v. Union of India & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: C.O. (COMM.IPD-TM) 120/2025

Neutral Citation: 2026:DHC:4707

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Tejas Karia

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

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Trademark Assignment During Rectification Proceedings: Delhi HC Clarifies Law
Delhi HC Holds Assignee Cannot Replace Registered Proprietor Until Registry Approval
Double Kabootar Brand Trademark Dispute: Key Delhi High Court Ruling
Delhi High Court on Form TM-P and Trademark Assignment Rights
Trademark Rectification Proceedings and Assignment Deeds Explained
Delhi HC Examines Suspicious Trademark Assignment Executed During Litigation
Registered Proprietor Continues Until Assignment Is Recorded, Says Delhi HC
Important Delhi High Court Judgment on Trademark Ownership Transfer
Delhi HC Clarifies Procedural Rights of Trademark Assignees
Trademark Registry Recognition Essential for Substitution in Court Proceedings
Delhi High Court Strengthens Scrutiny of Mid-Litigation Trademark Assignments

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Headnote of the Judgment:

Anuj Bindal Messrs Aggarwal Rice and Oil Mills v. Union of India & Anr., Delhi High Court, C.O. (COMM.IPD-TM) 120/2025, decided on 15.06.2026. The applicant sought substitution in a pending trademark rectification petition on the basis of an Assignment Deed allegedly transferring ownership of the trademark “DOUBLE KABOOTAR BRAND” from the registered proprietor to his wife. The Delhi High Court held that the application for recording the assignment through Form TM-P remained pending before the Trade Marks Registry and that the registered proprietor continued to remain on the Register. Finding that substitution would be premature and noting circumstances that raised doubts regarding the transaction, the Court dismissed the substitution application while granting liberty to renew the request if the assignment is subsequently recognized by the Registry.

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Ace Food Products Pvt. Ltd. Vs. Modern Snacks Pvt. Ltd.

Below is a complete legal news write-up and a comprehensive analytical legal article prepared strictly in the format, tone, and structure requested, based on the judgment in CMA(TM) No. 22 of 2025, Ace Food Products Pvt. Ltd. v. Modern Snacks Pvt. Ltd., decided by the Madras High Court on 10.02.2026.

Ace Food Products Pvt. Ltd. v. Modern Snacks Pvt. Ltd.
Date of Judgment: 10.02.2026 : Case No.: CMA(TM) No. 22 of 2025 : Neutral Citation: 2026:MHC:____ : Court: High Court of Judicature at Madras : Hon'ble Judge: Justice N. Anand Venkatesh

The court considered a dispute concerning the deemed abandonment of a trademark application during opposition proceedings under the Trade Marks Act, 1999. The case arose from allegations that the applicant’s affidavit of evidence was not filed in the prescribed manner and within the stipulated time, leading the Trade Marks Registry to treat the application as abandoned. The principal question before the Court was whether non-compliance relating to filing of affidavit of evidence could result in deemed abandonment of a trademark application.

After examining the material on record and the submissions of the parties, Justice N. Anand Venkatesh observed that the statute does not provide for deemed abandonment for procedural lapses in filing evidence and that such a drastic consequence cannot be imposed through subordinate legislation. The Court held that Rule 46(2) of the Trade Marks Rules, 2017 cannot override Section 21 of the Trade Marks Act, 1999, emphasizing that procedural defects should not defeat substantive rights. Accordingly, the Court allowed the appeal, set aside the impugned order of the Registrar of Trade Marks, and directed that the trademark application be proceeded with in accordance with law after granting due opportunity to both parties.

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

Analytical Legal Article

Introduction

Trademark law plays a vital role in protecting brand identity and commercial goodwill. The decision of the Madras High Court in Ace Food Products Pvt. Ltd. v. Modern Snacks Pvt. Ltd. assumes significance as it clarifies the limits of procedural rules in trademark opposition proceedings and reinforces the principle that substantive rights cannot be defeated by procedural technicalities. The judgment is particularly relevant for trademark applicants, businesses, and intellectual property practitioners who frequently encounter delays and procedural objections before the Trade Marks Registry.

Factual and Procedural Background

The dispute arose out of opposition proceedings concerning a trademark application filed by Ace Food Products Pvt. Ltd. After the application was opposed, the applicant filed its affidavit of evidence in support of the application on 01.06.2020. However, the affidavit was not signed and attested, though the applicant expressly stated its undertaking to file a duly signed and attested affidavit when directed.

For a prolonged period, no communication or notice was issued by the Trade Marks Registry calling upon the applicant to rectify the defect. The proceedings remained inactive until the applicant moved an application for expediting the matter. Thereafter, the Registry revived the proceedings and, without addressing its own inaction, rejected the trademark application on 04.07.2025 on the ground of deemed abandonment under Rule 46(2) of the Trade Marks Rules, 2017.

Aggrieved by this decision, the applicant preferred an appeal before the High Court under the Trade Marks Act, 1999.

Dispute Before the Court

The central issue before the Court was whether failure to file a signed and attested affidavit of evidence within the prescribed period could result in deemed abandonment of a trademark application. The applicant contended that the Trade Marks Act, 1999 does not contemplate abandonment for defects in filing evidence and that Rule 46(2), to the extent it prescribes such a consequence, is ultra vires the Act. The respondent and the Registry justified the rejection by relying upon the literal wording of Rule 46(2).

Reasoning and Analysis of the Court

The Court undertook a detailed examination of Section 21 of the Trade Marks Act, 1999, which governs opposition proceedings. It noted that deemed abandonment is expressly provided only in relation to failure to file a counter-statement under Section 21(2). In contrast, Section 21(4), which deals with filing of evidence, does not prescribe abandonment as a consequence of non-compliance.

The Court further referred to Section 132 of the Act, which provides a specific mechanism for treating an application as abandoned due to default, only after issuance of notice and grant of opportunity to the applicant. The absence of any such notice in the present case was held to be fatal.

While examining Rule 46 of the Trade Marks Rules, 2017, the Court held that subordinate legislation cannot override the parent statute. It observed that Rule 46(2), if interpreted to result in deemed abandonment of the entire application, would be inconsistent with the Act and therefore ultra vires. The Court adopted the principle of “reading down” the rule and held that at best, non-compliance with Rule 46(1) could lead to forfeiture of the right to adduce evidence, but not abandonment of the application itself.

The Court also took note of the factual conduct of the Registry, emphasizing that its prolonged inaction and failure to issue any corrective notice could not be used to penalize the applicant. The signed affidavit subsequently filed was held to be a formal continuation of the affidavit already placed on record, especially since the contents remained unchanged and the original deponent had passed away in the interim.

Final Decision of the Court

The High Court allowed the appeal and set aside the order dated 04.07.2025 passed by the Registrar of Trade Marks. The matter was remanded with a direction to proceed with the trademark application in accordance with law after affording due opportunity to both parties. The Registry was directed to pass final orders within six months.

Point of Law Settled

The judgment conclusively settles that non-filing or defective filing of affidavit of evidence in trademark opposition proceedings cannot result in deemed abandonment of the trademark application unless such consequence is expressly provided under the Trade Marks Act, 1999. Procedural rules must yield to substantive statutory provisions, and procedural lapses can at most result in loss of the right to lead evidence, not forfeiture of substantive rights.

Case Details:

Title of the Case: Ace Food Products Pvt. Ltd. Vs. Modern Snacks Pvt. Ltd.
Date of Judgment/Order: 10.02.2026
Case Number: CMA(TM) No. 22 of 2025
Neutral Citation: 2026:MHC:____
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Justice N. Anand Venkatesh

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

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Procedural Lapses Cannot Defeat Trademark Rights: Madras HC
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Ace Food v Modern Snacks: Key Trademark Ruling
Limits of Trade Marks Rules under the Trade Marks Act
Trademark Opposition Proceedings and Evidence Filing
Madras HC Reads Down Rule 46 of Trade Marks Rules
Substantive Rights vs Procedural Defects in Trademark Law
When Can a Trademark Application Be Deemed Abandoned?
Landmark Ruling on Trademark Evidence and Abandonment

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Headnote of the Judgment:

Ace Food Products Pvt. Ltd. v. Modern Snacks Pvt. Ltd., Madras High Court, CMA(TM) No. 22 of 2025, decided on 10.02.2026. Appeal against order of the Registrar of Trade Marks treating a trademark application as abandoned for alleged non-compliance with Rule 46 of the Trade Marks Rules. The Court held that failure to file affidavit of evidence in prescribed form cannot result in deemed abandonment under the Trade Marks Act, 1999. Rule 46(2) was read down to avoid conflict with the Act. Impugned order set aside and matter remanded for fresh consideration.

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Tuesday, June 16, 2026

SC-Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories

Introduction

The decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories is one of the most celebrated and frequently cited judgments in Indian trademark jurisprudence. The case occupies a foundational place in the law relating to trademark infringement and passing off, particularly because it clearly explains the distinction between these two causes of action. Even decades after its pronouncement, courts across India continue to rely upon this judgment while adjudicating trademark disputes.

The case arose from a conflict between two manufacturers of medicinal preparations who were using marks containing the word “Navaratna.” The dispute required the Court to determine whether the registered proprietor of a trademark could prevent another trader from using a deceptively similar mark and whether the standards applicable to infringement and passing off were identical.

The judgment is of immense importance for businesses seeking to protect their brands, intellectual property practitioners advising trademark owners, and courts dealing with trademark disputes. It provides enduring guidance on the scope of statutory trademark rights, deceptive similarity, acquired distinctiveness, and the relationship between infringement actions and passing off actions.

Factual and Procedural Background

The respondent, Navaratna Pharmaceutical Laboratories, was engaged in the manufacture and sale of medicinal and pharmaceutical products. The business had been established around 1926 and initially operated under the name “Navaratna Pharmacy.” In January 1945, the name was changed to “Navaratna Pharmaceutical Laboratories.” From its inception, the business used the mark “Navaratna” in relation to its medicinal products and built substantial goodwill and reputation in the market.

In December 1928, the word “Navaratna” and the name “Navaratna Pharmacy” were registered through a declaration of ownership before the Registrar of Assurances at Calcutta. Subsequently, under the Cochin Trade Marks Act, the respondent obtained registration of the mark “Navaratna” in respect of medicinal preparations on 31 January 1947 and also secured registration of “Navaratna Pharmaceutical Laboratories” on 17 February 1948. The respondent thereafter expanded its business and continuously marketed its products under these marks.

The appellant, Kaviraj Pandit Durga Dutt Sharma, was carrying on business at Jullundur in Punjab and manufactured Ayurvedic pharmaceutical products under the name “Navaratna Kalpa Pharmacy.” He sold his products under the mark “Navaratna Kalpa” and applied for registration of that mark in October 1946. When the application was advertised, the respondent opposed the registration. The opposition succeeded and the appellant’s application was refused.

Following the refusal of registration, the appellant initiated proceedings seeking removal of the respondent’s trademarks from the register. Since a civil suit had already been instituted by the respondent seeking a permanent injunction against the appellant, the Registrar directed the appellant to approach the High Court for rectification of the register. Consequently, the appellant filed a rectification petition before the High Court.

Simultaneously, the respondent instituted a civil suit seeking a permanent injunction restraining the appellant from advertising, selling, or offering medicinal products under any mark containing the word “Navaratna.” The respondent asserted infringement of its registered trademarks and also alleged passing off. The trial court granted relief in favour of the respondent regarding infringement, though issues relating to passing off were separately considered. The High Court affirmed the respondent’s position. The appellant thereafter approached the Supreme Court.

Dispute Before the Court

The principal issues before the Supreme Court were whether the respondent’s trademarks had been validly registered and whether they had acquired distinctiveness through long and continuous use.

The Court was also required to determine whether the appellant’s use of the mark “Navaratna Kalpa” and the trading style “Navaratna Kalpa Pharmacy” amounted to infringement of the respondent’s registered trademarks.

Another important issue concerned the relationship between trademark infringement and passing off. The appellant argued that the packaging, appearance, colour scheme, and presentation of the parties’ products were different and therefore there was no likelihood of confusion. According to the appellant, the respondent could not claim exclusive rights over the word “Navaratna,” which was allegedly common to the trade.

The respondent, on the other hand, contended that through decades of use the mark “Navaratna” had become exclusively associated with its medicinal products and that the appellant’s adoption of a deceptively similar mark infringed its statutory rights as a registered proprietor.

Reasoning and Analysis of the Court

The Supreme Court began by examining the validity of the respondent’s trademark registrations. The Court noted that the respondent had been using the mark “Navaratna” continuously since the 1920s and had acquired substantial goodwill and reputation. The evidence established that the mark had become identified in the market with the respondent’s pharmaceutical products. The Court therefore accepted the concurrent findings of the lower courts that the mark had acquired distinctiveness through long and extensive use.

The Court rejected the challenge to the validity of registration. It held that a mark which has acquired factual distinctiveness through long user is entitled to protection even if the mark originally consisted of words that may not have been inherently distinctive. The Court observed that actual and continuous market association can transform a mark into a distinctive identifier of commercial origin.

A significant portion of the judgment dealt with deceptive similarity. The Court agreed with the findings of the courts below that the expressions “Navaratna Pharmacy,” “Navaratna Kalpa,” and “Navaratna Pharmaceutical Laboratories” bore sufficient resemblance to create a likelihood of deception or confusion. The test was not whether the marks were identical but whether the resemblance was such that an ordinary purchaser would be likely to associate one trader’s goods with those of another.

The most enduring contribution of the judgment lies in its detailed explanation of the distinction between infringement and passing off. The Court observed that an action for passing off is a common law remedy based on the principle that one trader should not misrepresent his goods as those of another. Passing off is essentially an action founded on deceit and protection of goodwill. By contrast, an action for infringement is a statutory remedy available to the registered proprietor of a trademark.

The Court explained that in an infringement action the focus is on the unauthorized use of a mark that is identical or deceptively similar to the registered trademark. Once the essential features of the registered mark are copied, infringement may be established even if there are differences in packaging, labels, colour schemes, or get-up. In contrast, in a passing off action, the overall presentation of the goods becomes highly relevant because the inquiry is whether consumers are likely to be deceived into believing that one trader’s goods originate from another.

The Court held that the appellant’s argument based on differences in packaging and presentation was relevant primarily to the passing off claim and not to the infringement claim. Where the essential features of a registered trademark have been adopted by another trader, infringement can be established notwithstanding differences in external appearance.

While deciding the matter, the Court discussed the provisions of the Trade Marks Act, 1940 relating to registration, distinctiveness, infringement, and rectification. It analysed the statutory protection granted to registered proprietors and emphasized that registration confers valuable proprietary rights which cannot be lightly undermined.

The Court ultimately found no merit in the appellant’s challenge to the respondent’s registration and upheld the respondent’s right to protect its trademark against infringement.

Final Decision of the Court

The Supreme Court dismissed the appellant’s challenge and upheld the respondent’s trademark rights. The Court affirmed the validity of the respondent’s registrations and held that the respondent was entitled to protection against infringement of its registered trademarks.

The Court concluded that the appellant’s use of marks containing the word “Navaratna” in the manner adopted by him infringed the respondent’s registered trademark rights. The relief granted in favour of the respondent was therefore sustained. The appeals were accordingly dismissed.

Point of Law Settled

The judgment authoritatively establishes the distinction between an action for trademark infringement and an action for passing off.

The Court clarified that infringement is a statutory remedy available to the proprietor of a registered trademark. In such cases, if the essential features of the registered mark have been copied, infringement may be established even if there are differences in packaging, get-up, colour scheme, or presentation.

In contrast, passing off is a common law remedy based on misrepresentation and protection of goodwill. In passing off actions, the overall appearance of the goods and the likelihood of consumer deception assume greater significance.

The judgment also reaffirms that long and continuous use of a mark can result in acquired distinctiveness, thereby entitling the mark to legal protection. This decision continues to serve as a foundational precedent in Indian trademark law and remains one of the most frequently cited authorities on deceptive similarity, trademark infringement, and passing off.

Case Details

Title of the Case: Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories

Date of Judgment/Order: 20 October 1964

Case Number: Civil Appeals Nos. 522 and 523 of 1962

Neutral Citation: AIR 1965 SC 980; (1965) 1 SCR 737

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Chief Justice P.B. Gajendragadkar, Justice J.C. Shah and Justice N. Rajagopala Ayyangar

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

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Navaratna Trademark Case: A Foundational Decision in Indian IP Law
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Trademark Registration and Brand Protection: Lessons from the Navaratna Case
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Supreme Court Clarifies Rights of Registered Trademark Proprietors
Deceptive Similarity and Consumer Confusion in Trademark Litigation

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Headnote of the Judgment

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, Supreme Court of India, Civil Appeals Nos. 522 and 523 of 1962, decided on 20 October 1964. The appellant challenged the validity of the respondent’s registered trademarks containing the word “Navaratna” and contested an injunction granted in favour of the respondent. The Supreme Court upheld the validity of the respondent’s trademark registrations and held that the appellant’s use of “Navaratna Kalpa” infringed the respondent’s registered trademark rights. The Court drew a clear distinction between trademark infringement and passing off, holding that infringement focuses on unauthorized use of the essential features of a registered mark, whereas passing off is based on misrepresentation and protection of goodwill. The appeals were dismissed.

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SC-Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co.

Introduction

The Supreme Court’s decision in Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. is a significant judgment in Indian trademark law dealing with the removal of trademarks from the register on the ground of non-use and the scope of the powers exercised by authorities under the Trade and Merchandise Marks Act, 1958. The case involved the globally renowned trademark “TOSHIBA” and raised important questions regarding whether a registered trademark can be removed from the register merely because it has not been actively used in India for a prolonged period.

The judgment is particularly important for multinational corporations, trademark owners, intellectual property practitioners, and businesses seeking to protect valuable brand assets in India. It clarifies the distinction between different grounds for rectification of trademarks, explains the concept of a “person aggrieved,” and highlights the discretionary nature of rectification proceedings. The ruling also demonstrates how courts must balance the rights of a registered proprietor against the interests of competitors seeking removal of a trademark from the register.

The decision remains an important authority on trademark non-use, rectification proceedings, trademark trafficking, bona fide intention to use, and the protection of internationally recognized marks under Indian law.

Factual and Procedural Background

The appellant, Kabushiki Kaisha Toshiba, a globally recognized Japanese corporation, had obtained registration of the trademark “TOSHIBA” in India as early as 1971 in respect of certain goods, including washing machines and spin dryers. The registrations were renewed periodically and continued to remain valid. The trademark was an invented and distinctive mark enjoying substantial international reputation.

The respondent, Tosiba Appliances Co., subsequently adopted and used the mark “TOSIBA” in relation to certain products falling under Classes 7 and 11 of the classification schedule under the Trade and Merchandise Marks Act, 1958. The respondent sought rectification of the register by filing proceedings under Sections 46 and 56 of the Act, contending that the appellant had not used the trademark in India for a long period and that the registration should therefore be removed.

The Deputy Registrar accepted the respondent’s objections and directed removal of the registration in relation to certain goods. The appellant challenged that decision before the High Court. A learned Single Judge substantially upheld the rectification proceedings, finding that there had been no bona fide use of the trademark in relation to the goods concerned. The Division Bench affirmed the decision.

Aggrieved by the adverse findings, the appellant approached the Supreme Court seeking restoration of its trademark registration and reversal of the rectification orders.

Dispute Before the Court

The central dispute before the Supreme Court revolved around whether the trademark “TOSHIBA” was liable to be removed from the register on account of alleged non-use.

The appellant argued that its registration was validly obtained, continuously renewed, and associated with a globally reputed trademark. It contended that there had never been any intention to abandon the mark. According to the appellant, various circumstances, including restrictions affecting the manufacture and marketing of certain products in India, explained the limited use of the trademark. The appellant further argued that the respondent was not genuinely affected and therefore lacked sufficient grounds to seek removal of the registration.

The respondent contended that the appellant had not used the trademark in India for decades in relation to washing machines and spin dryers. It argued that trademark law does not permit a proprietor to indefinitely retain registrations without actual commercial use. According to the respondent, the registration had become vulnerable to removal under Section 46 of the Act because of prolonged non-use.

The Court was therefore required to determine the scope of Sections 46 and 56 of the Act, the meaning of bona fide intention to use, the significance of non-use, and whether the respondent qualified as a “person aggrieved” capable of maintaining rectification proceedings.

Reasoning and Analysis of the Court

The Supreme Court undertook an extensive examination of the scheme of the Trade and Merchandise Marks Act, 1958. The Court observed that the Act constitutes a complete code governing registration, use, rectification, assignment, and protection of trademarks. It noted that the appellant’s registration had originally been granted in 1971 and had remained on the register through successive renewals.

The Court analysed Section 46, which permits removal of a trademark on grounds of non-use. Particular attention was paid to clauses (a) and (b) of Section 46(1). The Court held that the two provisions operate in distinct fields and are not cumulative. A rectification applicant may rely on either provision independently depending upon the factual circumstances.

The Court explained that Section 46(1)(a) applies where registration was obtained without any bona fide intention to use the trademark and where no bona fide use has in fact occurred. Both elements must coexist. Section 46(1)(b), on the other hand, addresses situations where a continuous period of five years or more has elapsed during which there has been no bona fide use of the trademark. The Court emphasized that the two provisions serve different legislative purposes.

The Supreme Court rejected the argument that the absence of an intention to abandon a trademark automatically establishes bona fide intention to use. It held that the concepts of intention to abandon and bona fide intention to use are distinct and cannot be conflated. Section 46(3), which provides protection where non-use results from special circumstances in trade, was held applicable only to cases under Section 46(1)(b) and not to cases falling under Section 46(1)(a).

While discussing the statutory framework, the Court relied upon American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another, AIR 1986 SC 137, where the distinction between clauses (a) and (b) of Section 46 had been clearly explained. The Court reproduced and endorsed the principle that once the period contemplated under Section 46(1)(b) has elapsed, the original intention to use the trademark becomes irrelevant unless the proprietor can invoke the protection available under Section 46(3).

The Court further observed that trademark registration confers valuable statutory rights. Trademark law seeks to prevent trafficking in trademarks and discourages proprietors from obtaining registrations merely to block others from using marks without any genuine commercial intention. The requirement of bona fide intention to use is therefore central to the statutory scheme.

An important issue concerned the meaning of the expression “person aggrieved.” The Court referred extensively to Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., 2003 (27) PTC 241 (SC). It noted that the phrase has different connotations under Sections 46 and 56. Proceedings under Section 56 involve maintenance of the purity of the register and therefore require a liberal approach to locus standi. Proceedings under Section 46 are more closely linked to private commercial interests.

The Court accepted that the respondent was a person aggrieved because it was engaged in trade, used the mark “TOSIBA,” and had received legal threats from the appellant. Therefore, the respondent had sufficient commercial interest to maintain rectification proceedings.

The Supreme Court also considered several authorities on intermittent use and non-use of trademarks, including Plaza Chemical Industries v. Kohinoor Chemicals Co. Ltd., AIR 1975 Bom 191, Express Bottlers Services Pvt. Ltd. v. Pepsico Inc., Bali Trade Mark (1966 RPC 387 and 1968 RPC 426), and Bulova Trade Mark (1967 RPC 229). These decisions were referred to while examining circumstances where intermittent use may protect a registration from removal.

A crucial aspect of the judgment concerned the exercise of discretion. The Court noted that despite limited evidence of actual use in India, the appellant had maintained registrations, established service centres across India, entered into collaborations, supplied products, and actively sought to protect its trademark rights. The Court observed that the appellant’s conduct demonstrated a continuing interest in preserving and enforcing its rights rather than abandoning the trademark.

The Court also noted findings that the respondent itself never intended to manufacture washing machines or spin dryers. Therefore, removing the appellant’s registration would not serve any meaningful commercial purpose for the respondent. The Court stressed that trademark law should balance competing interests and avoid causing unnecessary prejudice to either side.

The Court further emphasized the exceptional reputation of the “TOSHIBA” mark, describing it as an invented word enjoying substantial recognition. It acknowledged that “TOSIBA” was deceptively similar to “TOSHIBA” and that the appellant would ordinarily be entitled to restrain such use if its registration remained valid.

Ultimately, the Court concluded that the High Court had failed to properly balance the equities and practical realities of the case. It held that the rectification order could not be sustained.

Final Decision of the Court

The Supreme Court allowed the appeal and set aside the judgment of the High Court. The Court held that the circumstances of the case did not justify removal of the appellant’s trademark registration from the register. It found that the approach adopted by the High Court failed to adequately consider relevant factors, including the appellant’s continuing interest in protecting the trademark and the absence of meaningful prejudice to the respondent.

The Court restored the appellant’s position and requested the Delhi High Court to dispose of the pending suit between the parties as expeditiously as possible. No order as to costs was made.

Point of Law Settled

The judgment establishes that rectification proceedings based on non-use of a trademark require careful examination of the statutory requirements under Section 46 of the Trade and Merchandise Marks Act, 1958. Clauses (a) and (b) of Section 46(1) operate independently and address different situations. The protection available under Section 46(3) is confined to cases falling under Section 46(1)(b).

The decision further clarifies that the concept of a “person aggrieved” differs under Sections 46 and 56, and that courts must assess locus standi in light of the purpose of the provision invoked.

Most importantly, the judgment emphasizes that removal of a registered trademark is a discretionary remedy. Even where non-use is established, courts must consider the overall circumstances, including the proprietor’s intention, reputation of the mark, conduct of the parties, and the practical consequences of rectification. The ruling reinforces protection for well-known trademarks while preserving safeguards against trademark trafficking and abuse of registration rights.

Case Details

Title of the Case: Kabushiki Kaisha Toshiba Vs. Tosiba Appliances Co.

Date of Judgment/Order: 16 April 2008

Case Number: Civil Appeal No. 1655 of 2004

Neutral Citation: MANU/SC/0920/2008

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice S.B. Sinha and Justice Cyriac Joseph

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

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Landmark Trademark Judgment on Rectification, Non-Use and Proprietary Rights
Intellectual Property Law Update: Toshiba v. Tosiba Appliances Co.

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Headnote of the Judgment

Kabushiki Kaisha Toshiba v. Tosiba Appliances Co., Supreme Court of India, Civil Appeal No. 1655 of 2004, decided on 16.04.2008. The dispute concerned rectification of the trademark register and removal of the internationally reputed mark “TOSHIBA” on grounds of alleged non-use under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The Registrar and the High Court had directed removal of the registration in relation to certain goods. Allowing the appeal, the Supreme Court held that rectification proceedings require a careful consideration of the statutory requirements, the proprietor’s intention, reputation of the mark, and equitable considerations. The Court found that the impugned rectification order could not be sustained and restored the appellant’s rights while directing expeditious disposal of the related civil suit.

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SC-Jagatjit Industries Limited Vs. Intellectual Property Appellate Board

Introduction

The Supreme Court’s decision in Jagatjit Industries Limited v. Intellectual Property Appellate Board & Others is a significant ruling on the powers of the Registrar of Trade Marks, the scope of rectification proceedings under the Trade Marks Act, 1999, and the relationship between the Registrar’s suo motu jurisdiction and proceedings involving trademark infringement. The judgment addresses an important question concerning the maintenance of the purity of the trademark register and clarifies whether the Registrar’s statutory power to rectify the register on his own motion can be restricted merely because an infringement action involving related trademarks is pending elsewhere.

The case is particularly important for trademark proprietors, licensees, businesses involved in brand protection, intellectual property practitioners, and government authorities administering trademark law. It provides authoritative guidance on the interpretation of Sections 57, 124, and 125 of the Trade Marks Act, 1999 and explains the circumstances in which rectification proceedings must be brought before the Intellectual Property Appellate Board (IPAB) rather than the Registrar. The judgment also highlights the public interest element underlying trademark registration by emphasizing that the trademark register must remain accurate and free from wrongful entries.

The ruling serves as an important precedent in Indian trademark jurisprudence because it balances procedural safeguards available to litigating parties with the Registrar’s independent statutory responsibility to preserve the integrity of the register.

Factual and Procedural Background

The dispute arose in connection with competing claims concerning the validity of a registered trademark and proceedings initiated for rectification of the trademark register. During the course of ongoing trademark-related litigation involving the parties, questions emerged regarding the jurisdiction of the Registrar of Trade Marks to initiate suo motu rectification proceedings under Section 57(4) of the Trade Marks Act, 1999.

The controversy was linked to a trademark infringement and passing-off suit involving the trademark “BLENDERS PRIDE.” In the suit, Jagatjit Industries Limited sought relief against certain defendants alleged to be manufacturing, distributing, selling, and exporting alcoholic beverages under the trademark “BLENDERS PRIDE.” The defendants in the infringement action included Seagram Manufacturing Private Limited and Seagram Distillers Private Limited. Significantly, Austin Nichols, which was associated with the registration under challenge, was not impleaded as a defendant in the infringement suit.

Meanwhile, proceedings were initiated concerning the validity of the trademark registration. A show-cause notice was issued under Section 57(4) of the Trade Marks Act, invoking the Registrar’s suo motu power to rectify the register. Jagatjit Industries challenged the legality of such proceedings, arguing that once circumstances contemplated by Section 125 of the Act existed, the Registrar could not exercise jurisdiction and the matter could only be dealt with by the Appellate Board.

The dispute ultimately reached the Intellectual Property Appellate Board and thereafter the Delhi High Court. The Division Bench of the High Court upheld the view that the Registrar’s suo motu powers remained available notwithstanding the pendency of the infringement litigation. Aggrieved by this conclusion, Jagatjit Industries approached the Supreme Court.

The appeal therefore required the Supreme Court to interpret the statutory framework governing rectification proceedings and determine the extent of the Registrar’s independent powers under the Trade Marks Act, 1999.

Dispute Before the Court

The principal issue before the Supreme Court was whether the Registrar of Trade Marks could exercise suo motu powers under Section 57(4) of the Trade Marks Act, 1999 when circumstances existed that potentially attracted Section 125 of the Act.

The appellant contended that Section 125 creates an exclusive forum for rectification proceedings once an infringement suit involving the validity of a registered trademark is pending. According to the appellant, the non obstante clause contained in Section 125 overrides Section 57 and therefore bars the Registrar from exercising even suo motu powers under Section 57(4). It was argued that any rectification proceeding should be initiated only before the Appellate Board and not before the Registrar.

The respondents, on the other hand, argued that Section 125 applies only to applications for rectification made by parties to an infringement suit and does not affect the Registrar’s independent statutory authority to act on his own motion for maintaining the purity of the trademark register. They submitted that the Registrar’s powers under Section 57(4) serve a broader public purpose and cannot be curtailed merely because related litigation is pending elsewhere.

The Court was therefore required to determine the true scope of Sections 57, 124, and 125 and decide whether the Registrar’s suo motu rectification jurisdiction survives notwithstanding infringement proceedings involving the same or related trademarks.

Reasoning and Analysis of the Court

The Supreme Court undertook a detailed examination of the statutory scheme governing rectification proceedings under the Trade Marks Act, 1999.

The Court first analyzed Section 57, which empowers the Registrar or the Appellate Board to rectify the trademark register. Particular attention was paid to Section 57(4), which authorizes the Registrar to act suo motu for correction of errors and maintenance of the register. The Court observed that this power can only be exercised by the Registrar of Trade Marks himself, who is appointed under Section 3 of the Act. While Assistant Registrars function under the Registrar’s supervision and direction, the statutory power under Section 57(4) remains vested in the Registrar.

The Court then turned to Sections 124 and 125 of the Act. Section 124 deals with situations where, in an infringement suit, the validity of a trademark registration is challenged. The provision requires the civil court to stay proceedings while rectification proceedings are pursued before the appropriate forum. The Court explained that where rectification proceedings are already pending before institution of the infringement suit, they may continue before either the Registrar or the Appellate Board. However, where rectification proceedings are initiated after institution of the suit, they must be filed before the Appellate Board.

While interpreting Section 125, the Court emphasized that the provision specifically refers to applications for rectification made by the plaintiff or defendant in an infringement action. The statutory language indicates that the rectification application contemplated by Section 125 must be made by a party to the infringement suit. Since the rectification proceedings in the present case had not been initiated by a defendant in the infringement suit, the Court held that Section 125 was inapplicable.

The Court rejected the argument that Section 125 completely overrides Section 57, including the Registrar’s suo motu powers under Section 57(4). It held that Section 125 is confined to rectification applications made by litigating parties and does not curtail the Registrar’s independent authority to maintain the integrity of the register.

A major component of the Court’s reasoning concerned the concept of maintaining the “purity of the register.” The Court relied upon the principles articulated in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, where the Supreme Court had recognized that rectification proceedings serve an important public purpose by ensuring that trademarks wrongly entered or wrongly remaining on the register are removed. The Court reproduced extensive observations from Hardie Trading explaining that the expression “person aggrieved” must be interpreted liberally in rectification matters because the public has a legitimate interest in ensuring that the register does not contain wrongful entries.

The Court observed that if the appellant’s interpretation were accepted, situations could arise where a defendant raises a plea of invalidity in an infringement suit but subsequently chooses not to pursue rectification proceedings. In such circumstances, the Registrar would be powerless to remove an improper entry despite a clear statutory responsibility to maintain the register. Such an interpretation would undermine the public-interest objective underlying trademark administration.

The appellant relied heavily upon Whirlpool Corporation v. Registrar of Trade Marks, a decision rendered under the Trade and Merchandise Marks Act, 1958. The Supreme Court carefully examined the Whirlpool judgment and concluded that it turned on its own peculiar facts. In Whirlpool, one of the parties to the litigation had itself initiated rectification proceedings, and the Court was dealing with a different statutory and procedural context. The Court noted that no argument had been advanced in Whirlpool regarding the independent operation of the Registrar’s suo motu powers. Consequently, Whirlpool could not be treated as laying down any principle restricting the operation of Section 57(4).

The Court further analyzed the relationship between Section 107 of the 1958 Act and Section 125 of the 1999 Act. It held that the reference in Section 125 to “an application for rectification of the register” necessarily refers to rectification proceedings under Sections 57(1) and 57(2) and not to the Registrar’s independent exercise of power under Section 57(4). Therefore, even on a literal interpretation, Section 125 does not exclude the operation of Section 57(4).

Having examined the statutory framework, relevant precedents, and the underlying legislative purpose, the Court concluded that the Registrar’s suo motu rectification jurisdiction remains intact and can be exercised independently of the rectification mechanism contemplated under Section 125.

Final Decision of the Court

The Supreme Court upheld the judgment of the Division Bench and dismissed the appeal filed by Jagatjit Industries Limited.

The Court held that Section 125 of the Trade Marks Act, 1999 applies only to rectification applications filed by parties to infringement litigation and does not curtail the Registrar’s independent power under Section 57(4) to initiate rectification proceedings suo motu.

The Court further held that the Registrar’s power to maintain the purity of the trademark register survives notwithstanding pending infringement proceedings and can be exercised where circumstances warrant corrective action.

As a result, the challenge to the Registrar’s jurisdiction failed, and the appeal was dismissed without any order as to costs.

Point of Law Settled

The judgment settles that the Registrar of Trade Marks retains independent suo motu rectification powers under Section 57(4) of the Trade Marks Act, 1999 even where circumstances exist that may otherwise attract Sections 124 and 125 concerning infringement litigation and rectification proceedings.

The decision clarifies that Section 125 applies only to rectification applications filed by parties to infringement suits and does not restrict the Registrar’s statutory responsibility to maintain the purity and accuracy of the trademark register.

The ruling also reinforces the principle that trademark rectification serves a broader public interest beyond the interests of individual litigants. The maintenance of a clean and accurate trademark register is an essential objective of trademark administration, and statutory provisions should be interpreted in a manner that promotes rather than frustrates that objective.

The judgment therefore stands as an important authority on the interaction between rectification proceedings, infringement litigation, and the Registrar’s supervisory powers under Indian trademark law.

Case Details

Title of the Case: Jagatjit Industries Limited Vs. Intellectual Property Appellate Board & Others

Date of Judgment/Order: 2018

Case Number: Civil Appeal arising from the Delhi High Court judgment concerning rectification proceedings under the Trade Marks Act, 1999

Neutral Citation: MANU/SC/1090/2018

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice Rohinton Fali Nariman and Justice Navin Sinha

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

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Public Interest and Trademark Rectification: Jagatjit Industries Case Review

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Headnote of the Judgment

Jagatjit Industries Limited v. Intellectual Property Appellate Board & Others, Supreme Court of India, MANU/SC/1090/2018. The dispute concerned whether the Registrar of Trade Marks could exercise suo motu rectification powers under Section 57(4) of the Trade Marks Act, 1999 when issues relating to trademark validity arose in infringement proceedings. The appellant contended that Section 125 vested exclusive jurisdiction in the Appellate Board. Dismissing the appeal, the Supreme Court held that Section 125 applies only to rectification applications filed by parties to infringement suits and does not restrict the Registrar’s independent power to act suo motu for maintaining the purity of the trademark register. The Court upheld the Registrar’s authority and reaffirmed that rectification proceedings serve an important public-interest function in preserving the integrity of the trademark register.

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