Black Diamond Motors Pvt. Ltd. Vs. Registrar of Trade Marks

Brief Legal News Write-Up

Black Diamond Motors Pvt. Ltd. Vs. Registrar of Trade Marks, Mumbai & Anr.
Date of Judgment: 17.06.2026 : Case No.: Commercial Miscellaneous Petition No. 23 of 2026 with Interim Application No. 2089 of 2026 : Neutral Citation: 2026:BHC-OS:13254 : Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction : Hon'ble Judge: Justice Somasekhar Sundaresan

The Court considered a dispute concerning the scope of the Registrar’s power to extend time for filing evidence in trademark rectification proceedings under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The case arose from allegations that the Registrar had wrongly permitted a rectification applicant to file an affidavit of evidence after a delay of more than three years by invoking powers under Section 131 of the Trade Marks Act.

The principal question before the Court was whether the two-month time limit prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing an evidence affidavit is mandatory or merely directory and whether the Registrar possesses power to extend such time even after expiry of the stipulated period.

After examining the material on record and the submissions of the parties, Justice Somasekhar Sundaresan observed that Rule 45 prescribes a procedural timeline and not an inflexible limitation period. The Court held that Section 131 of the Trade Marks Act empowers the Registrar to extend timelines prescribed under the Rules even after expiry of the original period, provided sufficient cause is shown. The Court emphasized that procedural rules should not defeat substantive rights and that Rule 45 is directory rather than mandatory.

Accordingly, the Court dismissed the challenge to the Registrar’s order and upheld the extension granted for filing the evidence affidavit in the rectification proceedings. The Court affirmed the Registrar’s authority to extend time under Section 131 of the Trade Marks Act in appropriate cases.

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.

Bombay High Court Holds Rule 45 Timeline for Trademark Evidence Is Directory and Extendable Under Section 131 of the Trade Marks Act

Introduction

The Bombay High Court's judgment in Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr. is an important decision concerning procedural timelines in trademark proceedings. The ruling addresses a recurring issue before the Trade Marks Registry—whether failure to file evidence within the period prescribed under Rule 45 of the Trade Marks Rules, 2017 automatically results in loss of rights or whether the Registrar retains discretion to extend time.

The judgment is significant because trademark disputes frequently involve procedural deadlines that can affect valuable commercial rights. The Court's interpretation of Section 131 of the Trade Marks Act, 1999 clarifies the relationship between statutory powers and procedural rules. The decision has substantial implications for trademark proprietors, rectification applicants, opposition parties, intellectual property practitioners, and businesses engaged in trademark litigation.

The ruling also contributes to the ongoing judicial debate regarding whether Rule 45 should be interpreted strictly or whether flexibility is permissible where justice requires extension of time.

Factual and Procedural Background

The dispute arose from competing claims concerning the use of the expression “Black Diamond Motors.” The parties belonged to different factions of the same family business that had separated pursuant to a family settlement effective from 31 March 2014. The petitioner, Black Diamond Motors Pvt. Ltd., was the registered proprietor of Trademark Registration No. 1842386 in Class 12 for “Black Diamond Motors Pvt. Ltd.” registered on 22 July 2009.

Respondent No. 2, Black Diamond Track Parts Pvt. Ltd., initiated rectification proceedings under Section 57 of the Trade Marks Act seeking cancellation of the registered trademark. The petitioner filed its counter-statement, which was served on the rectification applicant on 14 November 2019. Under Rule 45 of the Trade Marks Rules, 2017, the rectification applicant was required to file its evidence affidavit within two months, making the deadline 14 January 2020.

No evidence affidavit was filed within the prescribed period. Instead, an interlocutory application accompanied by the evidence affidavit was filed on 16 March 2024, more than three years later. The Registrar of Trade Marks, by order dated 26 August 2025, allowed the application and accepted the evidence affidavit on record by invoking powers under Section 131 of the Trade Marks Act.

Aggrieved by the Registrar’s order, the petitioner filed the present statutory appeal under Section 91 of the Trade Marks Act before the Bombay High Court.

Dispute Before the Court

The primary issue before the Court was whether Rule 45 of the Trade Marks Rules, 2017 creates a mandatory deadline that cannot be extended after expiry of the stipulated period.

The petitioner argued that judicial precedents, particularly Sun Pharma Laboratories Ltd. v. Dabur India Ltd., 2024 SCC OnLine Del 813 and Mahesh Gupta v. Registrar of Trademarks, 2024 SCC OnLine Del 1750, established that the timeline under Rule 45 is mandatory and that failure to comply results in abandonment of the right to file evidence. According to the petitioner, the Registrar lacked jurisdiction to revive a right that had already been lost.

The respondent argued that Rule 45 merely prescribes a procedural timeline and that Section 131 expressly grants power to extend time prescribed by the Rules. Reliance was placed on Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks, 2006 SCC OnLine Guj 620 and Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55. The respondent contended that the Registrar’s discretionary power survives even after expiry of the original deadline.

Reasoning and Analysis of the Court

The Court undertook a detailed examination of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. It observed that Section 131 empowers the Registrar to extend time prescribed for doing any act, except where the Act itself expressly excludes such extension. The Court noted that Section 131 specifically permits extension even after expiry of the original period.

The Court distinguished between timelines prescribed directly by the statute and timelines prescribed by subordinate legislation. According to the Court, Parliament consciously used different language in various provisions of the Trade Marks Act. While certain statutory deadlines cannot be altered, timelines created through subordinate legislation remain subject to the Registrar’s discretionary powers under Section 131 unless specifically excluded.

The Court disagreed with the reasoning adopted in Mahesh Gupta and related decisions to the extent they suggested that every timeline prescribed under the 2017 Rules automatically assumes the character of a mandatory statutory limitation. The Court held that such an interpretation would unduly restrict the operation of Section 131.

The judgment relied extensively upon Sahil Kohli v. Registrar of Trade Mark, 2018 SCC OnLine IPAB 55, where the Intellectual Property Appellate Board held that deletion of specific extension provisions from Rule 45 did not extinguish the Registrar’s statutory power under Section 131. The Court expressly endorsed this reasoning and agreed that Section 131 continues to provide a mechanism for extension of time.

The Court also referred to the Supreme Court’s decision in Rohan Builders (India) (P) Ltd. v. Berger Paints (India) Ltd., (2025) 10 SCC 802, while interpreting analogous language concerning extension of time. The Supreme Court had emphasized that courts should not judicially create limitation periods where the legislature has deliberately refrained from prescribing them. The Bombay High Court found the reasoning directly applicable to Section 131.

Further, the Court observed that Rule 45 functions as an administrative procedural provision rather than a strict limitation provision. Since Section 131 itself authorizes extension even after expiry of the prescribed period, requiring applications for extension to be filed before expiry would amount to adding words to the statute.

The Court also examined Rule 109 and rejected the argument that the one-month cap on extension prevented consideration of delayed applications. It held that the one-month extension operates from the date of the Registrar’s order granting extension and does not prohibit filing of extension applications after expiry of the original period.

Finally, the Court observed that procedural rules exist to facilitate adjudication and should not be interpreted in a manner that defeats substantive rights unless the legislature clearly mandates such consequences.

Final Decision of the Court

The Bombay High Court upheld the Registrar’s order permitting the rectification applicant to place its evidence affidavit on record despite the delay. The Court concluded that Rule 45 of the Trade Marks Rules, 2017 is directory and that the Registrar possesses jurisdiction under Section 131 of the Trade Marks Act to extend time even after expiry of the original period.

The appeal filed by Black Diamond Motors Pvt. Ltd. was consequently rejected and the Registrar’s exercise of discretion was sustained. The rectification proceedings were allowed to continue with the evidence affidavit remaining on record.

Point of Law Settled

The judgment settles that the timeline prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing evidence in opposition and rectification proceedings is directory and not mandatory.

The Court clarified that Section 131 of the Trade Marks Act confers substantive statutory power upon the Registrar to extend procedural timelines prescribed under the Rules, including after expiry of the original period, where sufficient cause exists.

The decision also emphasizes that subordinate legislation cannot be interpreted in a manner that nullifies a statutory discretionary power expressly granted by Parliament. The ruling is likely to have substantial impact on trademark opposition and rectification proceedings across India where parties seek condonation of delay and extension of procedural timelines.

Case Details:

Title of the Case: Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr.

Date of Judgment/Order: 17.06.2026

Case Number: Commercial Miscellaneous Petition No. 23 of 2026 with Interim Application No. 2089 of 2026

Neutral Citation: 2026:BHC-OS:13254

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

Name of Hon'ble Judge: Justice Somasekhar Sundaresan

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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4. Landmark Trademark Procedural Ruling by Bombay High Court Explained

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7. Black Diamond Motors v Registrar of Trade Marks: Key IP Law Judgment

8. Bombay High Court Interprets Rule 45 of Trade Marks Rules 2017

9. Extension of Time in Trademark Rectification Proceedings Explained

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11. Bombay HC Rejects Mandatory Interpretation of Rule 45 Timeline

12. Important Trademark Litigation Judgment on Procedural Deadlines

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Headnote of the Judgment:

Black Diamond Motors Pvt. Ltd. v. Registrar of Trade Marks, Mumbai & Anr., Bombay High Court, Commercial Miscellaneous Petition No. 23 of 2026, Neutral Citation 2026:BHC-OS:13254, decided on 17.06.2026. The petitioner challenged the Registrar’s order permitting a rectification applicant to file an evidence affidavit after substantial delay by invoking Section 131 of the Trade Marks Act, 1999. The principal issue was whether the two-month timeline under Rule 45 of the Trade Marks Rules, 2017 is mandatory or directory. The Bombay High Court held that Rule 45 prescribes a directory procedural timeline and that the Registrar possesses statutory power under Section 131 to extend time even after expiry of the prescribed period. Upholding the Registrar’s order, the Court dismissed the challenge and clarified the scope of extension powers in trademark opposition and rectification proceedings.

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Abbott Product Operations AG Vs. Menschlich Healthcare (OPC) Private Limited

Brief Legal News Write-Up

Abbott Product Operations AG v. Menschlich Healthcare (OPC) Private Limited & Anr.
Date of Judgment: 15.06.2026 : Case No.: Commercial Miscellaneous Petition (L) No. 12147 of 2025 with Interim Application (L) No. 14697 of 2025 : Neutral Citation: 2026:BHC-OS:13226 : Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction : Hon'ble Judge: Justice Arif S. Doctor

The Court considered a dispute concerning rectification and cancellation of a pharmaceutical trademark allegedly deceptively similar to a family of well-known registered trademarks. The case arose from allegations that the respondent obtained registration of the trademark “DUPHACHRIT” for pharmaceutical products despite the petitioner's longstanding rights in the “DUPHA” family of marks, including DUPHASTON and DUPHALAC.

The principal question before the Court was whether the registration of “DUPHACHRIT” was liable to be removed from the Register of Trade Marks on the ground that it was deceptively similar to the petitioner’s earlier registered “DUPHA” family of marks and likely to cause confusion in relation to pharmaceutical products.

After examining the material on record and the submissions of the parties, Justice Arif S. Doctor observed that “DUPHA” was the essential and distinctive source identifier of the petitioner’s family of marks and that the addition of the suffix “CHRIT” did not sufficiently distinguish the impugned mark. The Court held that “DUPHACHRIT” was deceptively similar to the petitioner’s registered marks and that the respondent’s adoption of the mark was dishonest and lacking bona fides, emphasizing that a stricter standard applies in pharmaceutical trademark disputes because confusion may adversely affect public health.

Accordingly, the Court allowed the rectification petition and directed that the trademark “DUPHACHRIT” bearing Registration No. 5027549 in Class 5 be rectified, cancelled, and removed from the Register of Trade Marks.

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.

Bombay High Court Orders Cancellation of “DUPHACHRIT” Trademark, Upholds Abbott’s Rights in “DUPHA” Family of Pharmaceutical Marks

Introduction

The Bombay High Court's decision in Abbott Product Operations AG v. Menschlich Healthcare (OPC) Private Limited & Anr. is a significant judgment concerning trademark protection in the pharmaceutical sector. The Court was called upon to determine whether a later registered pharmaceutical trademark could continue to remain on the Register when it closely resembled a long-established family of trademarks used by a leading pharmaceutical company.

The judgment is important because it reiterates the strict standards applicable to pharmaceutical trademarks. Courts have consistently recognized that confusion between medicinal products is fundamentally different from confusion involving ordinary consumer goods. Mistakes in pharmaceutical products may have serious health consequences, making trademark protection in this sector a matter of public interest as much as private commercial rights.

The ruling provides valuable guidance to pharmaceutical companies, trademark owners, intellectual property practitioners, regulatory authorities, and businesses involved in branding medicinal products.

Factual and Procedural Background

The petitioner, Abbott Product Operations AG, filed a petition under Sections 47 and 57 of the Trade Marks Act, 1999 seeking rectification, cancellation, and removal of the trademark “DUPHACHRIT” from the Register of Trade Marks. The impugned trademark had been registered in Class 5 on 1 July 2021 in the name of Menschlich Healthcare (OPC) Private Limited.

The petitioner traced the origin of its rights to the year 1949 when its predecessors coined and adopted the mark “DUPHAR,” derived from the expression “Dutch Pharmaceuticals.” Over the decades, a number of trademarks containing the distinctive element “DUPHA” were adopted and registered, including DUPHAR, DUPHASTON, DUPHALAC, DUPHALAC FIBER, DUPHAPRO, DUPHABEARS, DUPHACHEWS, DUPHAACTIVE, and DUPHAPLUS. These marks collectively came to be known as the petitioner’s “DUPHA family of marks.”

The petitioner's earliest Indian registration dated back to 22 March 1951. The Court noted that products sold under the marks DUPHASTON and DUPHALAC generated substantial sales and enjoyed significant goodwill both in India and internationally. The petitioner also produced evidence of extensive promotional activities and prior enforcement actions undertaken to protect its trademark rights.

In August 2024, the petitioner became aware of the respondent’s registration of “DUPHACHRIT” and issued a cease-and-desist notice seeking voluntary cancellation of the registration. The respondent refused, asserting that the marks were phonetically dissimilar. Consequently, the petitioner instituted rectification proceedings before the Bombay High Court.

Dispute Before the Court

The principal issue before the Court was whether the trademark “DUPHACHRIT” had been wrongly entered on the Register and whether it was liable to be removed under Section 57 of the Trade Marks Act, 1999.

The petitioner argued that “DUPHA” was the dominant and essential feature of its family of marks and that the respondent had merely added the suffix “CHRIT” to create a deceptively similar mark. It was contended that consumers of average intelligence and imperfect recollection would likely associate the impugned mark with the petitioner’s well-known pharmaceutical products. The petitioner further argued that pharmaceutical trademarks are subject to a stricter standard because even a small possibility of confusion may have serious consequences.

The respondent contended that trademarks must be considered as a whole and that “CHRIT” created a distinct commercial identity. It argued that “DUPHA” was common to the pharmaceutical trade, that several third-party marks containing the same prefix existed, and that the petitioner could not claim an exclusive monopoly over the prefix. The respondent also relied upon Section 17 of the Trade Marks Act and argued that rights existed only in the composite marks and not in an isolated component thereof.

Reasoning and Analysis of the Court

The Court undertook a detailed analysis of the principles governing deceptive similarity in pharmaceutical trademarks.

The Court first noted that the petitioner was the prior registered proprietor of numerous “DUPHA” formative marks, many of which had existed for decades. It observed that “DUPHA” was not generic or descriptive and was historically derived from “Dutch Pharmaceuticals.” The Court further emphasized that the products sold under the impugned mark and the petitioner’s mark DUPHASTON contained the same active pharmaceutical ingredient, namely dydrogesterone.

The Court relied extensively upon the landmark decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. The principles laid down in Cadila require consideration of visual, phonetic, and structural similarity, the nature of goods, the class of purchasers, and the circumstances in which products are purchased and consumed. The Court highlighted that Cadila mandates a stricter standard for pharmaceutical products because confusion may adversely affect health and life itself.

The Court also referred to Macleods Pharmaceuticals Ltd. v. Union of India, 2023 SCC OnLine Bom 408, which reaffirmed that even the slightest possibility of confusion in medicinal products warrants judicial intervention and that public interest and purity of the register remain paramount considerations.

While considering the respondent’s argument that marks must be compared as a whole, the Court observed that the dominant feature “DUPHA” immediately connected the impugned mark with the petitioner’s family of marks. The addition of the suffix “CHRIT” was insufficient to eliminate the association created by the distinctive prefix. The Court held that a consumer of average intelligence and imperfect recollection would likely perceive “DUPHACHRIT” as another member of the petitioner’s “DUPHA” family of products.

The Court also rejected the contention that prescription medicines are immune from confusion. Relying on Cadila, it noted that prescription requirements often do not prevent confusion because medicines are frequently sold over the counter, prescriptions may be difficult to read, and human error by doctors or pharmacists cannot be ruled out.

The Court further relied upon Ciba Ltd. Basle Switzerland v. M. Ramalingam and reiterated that the primary duty of the Court in rectification proceedings is to maintain the purity of the Register and protect the public from confusion. It emphasized that trademark disputes of this nature are not merely contests between rival traders but involve broader public interest considerations.

The Court found that the respondent had failed to provide any convincing explanation for adopting the term “DUPHA,” especially when it was neither descriptive nor generic. Considering the petitioner’s longstanding reputation, the Court concluded that the adoption was dishonest and intended to take advantage of the goodwill associated with the petitioner’s marks.

The Court also rejected arguments based on alleged third-party use, holding that mere entries on the Register do not establish that a mark is common to the trade. It relied upon Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 and Pidilite Industries Ltd. v. Riya Chemy, 2022 SCC OnLine Bom 5077, to hold that the burden of proving extensive third-party use lies on the party asserting it and that a registrant cannot simultaneously claim registration while arguing that the essential feature of the mark is common to the trade.

Final Decision of the Court

The Bombay High Court allowed the rectification petition filed under Section 57 of the Trade Marks Act, 1999.

The Court directed that the entry relating to the trademark “DUPHACHRIT” bearing Registration No. 5027549 in Class 5 be rectified, cancelled, and removed from the Register of Trade Marks. The Court made no order as to costs. The connected interim application was disposed of as a consequence of the final decision.

Point of Law Settled

The judgment reaffirms that in pharmaceutical trademark disputes, courts must apply a stricter standard when assessing deceptive similarity because confusion may affect public health and safety. Even minor variations in suffixes or additional elements may not be sufficient to distinguish a mark where the dominant and source-identifying feature remains substantially identical.

The decision also reinforces the legal recognition of a “family of marks” doctrine in trademark law. Where a trader has established extensive use and reputation in a distinctive series of marks sharing a common element, a later entrant may not adopt that essential feature merely by adding a different suffix or variation.

Further, the judgment emphasizes that the purity of the Register remains a central consideration in rectification proceedings and that dishonest adoption of a well-known trademark element will not be permitted to remain on the Register.

Case Details:

Title of the Case: Abbott Product Operations AG Vs. Menschlich Healthcare (OPC) Private Limited & Anr.

Date of Judgment/Order: 15.06.2026

Case Number: Commercial Miscellaneous Petition (L) No. 12147 of 2025; Interim Application (L) No. 14697 of 2025

Neutral Citation: 2026:BHC-OS:13226

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

Name of Hon'ble Judge: Justice Arif S. Doctor

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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4. DUPHACHRIT Removed from Trademark Register: Key Bombay High Court Judgment

5. Family of Marks Doctrine Upheld in Pharmaceutical Trademark Case

6. Bombay High Court Protects Abbott’s DUPHA Family of Trademarks

7. Pharmaceutical Trademark Confusion and Public Interest: Important Bombay HC Ruling

8. Trademark Rectification Under Section 57: Analysis of Abbott v Menschlich Healthcare

9. Bombay HC Reaffirms Cadila Principles in Pharmaceutical Trademark Disputes

10. Dishonest Adoption of Pharmaceutical Trademark Leads to Cancellation of Registration

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Headnote of the Judgment:

Abbott Product Operations AG v. Menschlich Healthcare (OPC) Private Limited & Anr., Bombay High Court, Commercial Miscellaneous Petition (L) No. 12147 of 2025, Neutral Citation 2026:BHC-OS:13226, decided on 15.06.2026. The petitioner sought rectification and cancellation of the trademark “DUPHACHRIT” under Section 57 of the Trade Marks Act, 1999, alleging deceptive similarity with its long-established “DUPHA” family of pharmaceutical marks. The Bombay High Court held that “DUPHACHRIT” was deceptively similar to the petitioner’s registered marks, that the adoption of the mark was dishonest, and that a stricter standard applies in pharmaceutical trademark disputes due to public health concerns. The Court allowed the petition and directed cancellation and removal of the impugned trademark from the Register of Trade Marks.

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Create a professional legal news YouTube thumbnail featuring the Bombay High Court building, pharmaceutical branding elements, trademark symbols (™), medicine strips, prescription drug packaging, and legal documents. Prominently display the text: “BOMBAY HC CANCELS DUPHACHRIT”, “ABBOTT WINS TRADEMARK CASE”, and “DUPHA FAMILY OF MARKS PROTECTED”. Include visual comparison of “DUPHASTON”, “DUPHALAC”, and “DUPHACHRIT” with highlighted common prefix “DUPHA”. Show scales of justice, a trademark registration certificate being cancelled, and a red stamp reading “REMOVED FROM REGISTER”. Use a professional legal and pharmaceutical theme with blue, white, red, and gold accents. Emphasize public health concerns, deceptive similarity, trademark rectification, and protection of well-known pharmaceutical brands. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

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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1. Delhi High Court Holds Justdial Listing Sufficient for Territorial Jurisdiction in Trademark Suit

2. Astral Ltd v Astral Marketing Syndicate: Delhi HC on Online Jurisdiction in Trademark Cases

3. Can Justdial Listings Confer Court Jurisdiction? Delhi High Court Answers

4. Delhi HC Clarifies Territorial Jurisdiction in Online Trademark Infringement Cases

5. Interactive Websites and Trademark Litigation: Key Delhi High Court Ruling

6. Delhi High Court on Internet Jurisdiction and Trademark Infringement

7. Justdial Accessibility Creates Cause of Action in Delhi, Says High Court

8. Territorial Jurisdiction in E-Commerce Trademark Disputes Explained

9. Delhi HC Reaffirms Online Accessibility Test in Trademark Litigation

10. Trademark Infringement and Digital Commerce: Analysis of Astral Ltd Judgment

11. Delhi High Court on Section 134 Trade Marks Act and Online Sales Platforms

12. 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.

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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

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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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Suggested SEO Titles:

1. Delhi High Court Dismisses Contempt Plea Against Google in Trademark Advertising Case

2. Trademark Keyword Advertising: Delhi HC Clarifies Scope of Google’s Obligations

3. DRS Logistics v Google India: Delhi High Court on Trademark Use in Online Ads

4. No Contempt by Google in Trademark Keyword Advertising Dispute, Says Delhi HC

5. Delhi HC Explains Limits of Contempt Jurisdiction in Trademark Cases

6. Online Trademark Enforcement and Keyword Advertising: Key Delhi HC Ruling

7. Delhi High Court on Trademark Use in Ad Titles, Ad Text and URLs

8. Google Not Liable for Contempt in DRS Logistics Trademark Dispute

9. Delhi HC Clarifies Distinction Between Trademark Keywords and Advertisement Content

10. Important Delhi High Court Judgment on Intermediary Liability and Trademark Protection

11. Trademark Owners and Online Ads: Lessons from DRS Logistics v Google

12. 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

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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1. Delhi High Court Refuses Substitution Based on Unrecorded Trademark Assignment

2. Trademark Assignment During Rectification Proceedings: Delhi HC Clarifies Law

3. Delhi HC Holds Assignee Cannot Replace Registered Proprietor Until Registry Approval

4. Double Kabootar Brand Trademark Dispute: Key Delhi High Court Ruling

5. Delhi High Court on Form TM-P and Trademark Assignment Rights

6. Trademark Rectification Proceedings and Assignment Deeds Explained

7. Delhi HC Examines Suspicious Trademark Assignment Executed During Litigation

8. Registered Proprietor Continues Until Assignment Is Recorded, Says Delhi HC

9. Important Delhi High Court Judgment on Trademark Ownership Transfer

10. Delhi HC Clarifies Procedural Rights of Trademark Assignees

11. Trademark Registry Recognition Essential for Substitution in Court Proceedings

12. 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.

Infographic Thumbnail Prompt:

Create a professional legal news YouTube thumbnail featuring the Delhi High Court building, trademark registration certificates, legal documents, and the trademark “DOUBLE KABOOTAR BRAND” prominently displayed. Show a visual representation of a trademark assignment deed being scrutinized by a court. Include bold headlines: “DELHI HC REJECTS SUBSTITUTION”, “TRADEMARK ASSIGNMENT UNDER SCANNER”, and “FORM TM-P DISPUTE”. Add scales of justice, Trade Marks Registry imagery, ownership transfer graphics, court files, and a red stamp reading “SUBSTITUTION DENIED”. Use a professional legal theme with blue, gold, white, and red accents. Emphasize trademark ownership disputes, assignment of trademark rights, rectification proceedings, and registry approval requirements. Include visual cues showing transfer from registered proprietor to alleged assignee with a question mark highlighting pending recognition. Use attached image as Image of lawyer in lawyers dress at left bottom corner which should cover 20 % of entire image area.

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.

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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.

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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.

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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

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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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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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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

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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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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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