New Balance Athletics Inc. Vs Astormueller AG

Legal News Update: New Balance Athletics Inc. Vs Astormueller AG and Ors.

​​New Balance Athletics Inc. Vs. Astormueller AG and Ors.:​13-07-2026:​CS(COMM) 962/2025:​2026:DHC:5573:​Hon'ble Ms. Justice Jyoti Singh

​Factual and Procedural Background

​The Plaintiff, New Balance Athletics Inc., is a globally renowned footwear and sportswear manufacturer that has utilized its registered "N" and "N-device" trademarks ("N-marks") on footwear since the 1970s. In India, its registrations date back to 1987. The Defendants, Swiss footwear manufacturer Astormueller AG and its Indian subsidiaries, launched a sneaker line under the brand "NUBEAT" in April 2024. The Defendants used "n:" (lowercase 'n' with a colon) and "nu:beat" logo marks on their footwear, having secured registrations for the same in late 2021 and 2022. The Plaintiff filed the present suit seeking an ad-interim injunction against the Defendants, alleging trademark infringement and passing off, along with rectification petitions challenging the Defendants' registrations.

​Dispute before Court

​The primary dispute before the Court was whether the Defendants' use of the "n:" and "nu:beat" logo marks on footwear was deceptively similar to the Plaintiff's registered and well-known "N" trademarks. Additionally, the Court evaluated whether the registration of the Defendants' marks acted as a statutory bar to the Plaintiff's passing off action and if the elements of passing off were established.

​Reasoning of Judge

​The Judge held that registration of a trademark is not a defense against an action for passing off under common law. Applying the doctrine of prior user, the Court observed that the Plaintiff was the prior user of the "N" marks in India by several decades, establishing massive international and domestic goodwill. Further, the Court applied the "initial interest confusion" test, holding that the lowercase "n" was the dominant part of the Defendants' logo marks, making them deceptively similar to the Plaintiff's upper-case "N". The addition of a colon was deemed insufficient to distinguish the rival marks. Since the parties operate in identical trade channels and target the same consumer base, confusion was highly probable.

​Decision

​The Court allowed the Plaintiff's application for ad-interim injunction. The Defendants, their subsidiaries, and agents were temporarily restrained from manufacturing, selling, importing, or advertising footwear bearing the standalone "n:" logo, the "nu:beat" logo mark, or any other mark deceptively similar to the Plaintiff's registered "N" marks during the pendency of the suit.

​One Important legal principle held in the case

​The right to bring a common law action for passing off remains unaffected by statutory registrations, and a registered proprietor can be successfully restrained from using their registered trademark if a prior user establishes superior goodwill and deceptive similarity under common law principles.

​[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

​Analytical Legal Article on the Judgment

Protection of single-letter trademarks

​Introduction

​The protectability of single-letter trademarks has consistently sparked intense litigation in intellectual property law. In a major development for branding and trademark jurisprudence, the High Court of Delhi addressed this issue in a trademark dispute between two international footwear giants. The case involved New Balance Athletics Inc., an American global sportswear brand, and Astormueller AG, a prominent Swiss footwear company. The dispute centered around the use of stylized single-letter logo marks on athletic footwear. Through this decision, the Court clarified the relationship between registered trademarks and common law remedies, while establishing crucial markers for evaluating deceptive similarity in athletic apparel.

​Factual and Procedural Background

​The Plaintiff, a Massachusetts-headquartered company, commenced its business in 1906. Over the decades, it expanded its footprint globally, designing and selling footwear, clothing, and accessories across more than 120 countries. The Plaintiff adopted the iconic capital letter "N" logo on its athletic footwear in the 1970s. In India, the Plaintiff secured its first trademark registration for the "N" mark in Class 25 on May 18, 1987, and subsequently registered several variations of its shaded "N" device marks. The Delhi High Court had previously declared the Plaintiff's shaded "N" logo, "NEW BALANCE", and "NB" marks as well-known trademarks.

​The Defendants, consisting of a Swiss corporation and its two Indian subsidiaries, trace their footwear manufacturing heritage back to 1928 in Germany. The Defendants launched a new sneaker line under the brand name "NUBEAT" in April 2024. In late 2021 and 2022, the Defendants obtained trademark registrations in India for the word mark "NU:BEAT" as well as device marks featuring a lower-case letter "n" followed by a colon, represented as "n:".

​Upon discovering the Defendants' sneaker listings on e-commerce platforms, the Plaintiff issued cease-and-desist notices and ultimately filed a commercial suit seeking an ad-interim injunction for trademark infringement and passing off. The Plaintiff also initiated cancellation petitions against the Defendants' registrations.

​Dispute Before the Court

​The core legal question was whether the Defendants' stylized "n:" and "nu:beat" logo marks were deceptively similar to the Plaintiff's registered "N" marks, thereby causing public confusion and leading to passing off.

​The Defendants contended that because both parties held valid trademark registrations, an action for infringement under statutory law could not be maintained by one registered owner against another. They argued that their lower-case "n" combined with a stylized colon was visually, structurally, and phonetically distinct from the Plaintiff's sharp, angled capital "N". Furthermore, the Defendants argued that no single entity should be allowed to monopolize a single alphabet of the English language, as it would stifle fair market competition.

​The Plaintiff countered that statutory registration offers no defense to a common law action of passing off. They argued that the lowercase "n" remained the dominant component of the Defendants' mark and that consumers, due to imperfect recollection, would likely perceive the Defendants' shoes as a variant, collaboration, or sub-brand of the Plaintiff's famous sneakers.

​Reasoning and Analysis of the Court

​The Court engaged in a comprehensive evaluation of trademark principles, focusing heavily on the interplay between statutory rights and common law remedies.

​First, the Court addressed the maintainability of the action against a registered trademark holder. Relying on the landmark Supreme Court ruling in S. Syed Mohideen v. P. Sulochana Bai, the Court reaffirmed that common law rights of prior user are superior to registration. The statutory rights granted under trademark law are always subject to the rights of a prior user. Therefore, the registration of the "n:" mark in favor of the Defendants did not bar the Plaintiff from seeking an injunction under the common law tort of passing off.

​Second, the Court analyzed the issue of prior use. The factual matrix clearly demonstrated that the Plaintiff was the prior user of the "N" marks in India, having built immense global and domestic reputation long before the Defendants launched their "NUBEAT" line in April 2024. The Plaintiff's long-standing promotional campaigns, celebrity endorsements, and sports sponsorships had created an exclusive association between the "N" logo and their footwear in the minds of the public.

​Third, the Court addressed the deceptive similarity of the marks using the "initial interest confusion" doctrine, as highlighted in Western Digital Technologies Inc. v. Geonix International Private Limited. Under this doctrine, likelihood of confusion is assessed at the point when a consumer first encounters the goods. The Court found that since both brands sell identical products—sneakers—through the same e-commerce platforms and retail channels to the same class of buyers, the risk of confusion was substantial.

​The Court rejected the Defendants' argument that the addition of a colon suffix distinguished their mark. It was noted that the lowercase letter "n" remained the dominant visual element. If the Defendants' own explanation to the Trademark Registry—that the colon represented the letter "B" to make the mark read as "NB"—was accepted, the deceptive similarity became even more glaring, as "NB" is also a well-known registered mark of the Plaintiff. The Court concluded that the minor typographical differences would not prevent an ordinary purchaser with imperfect recollection from believing there was an association between the two brands.

​Final Decision of the Court

​The Court allowed the Plaintiff's application for temporary injunction. While the Court found the word mark "NUBEAT" itself to be sufficiently distinct, it temporarily restrained the Defendants, their directors, partners, and distributors from manufacturing, marketing, selling, or advertising any footwear bearing the standalone "n:" logo, the "nu:beat" logo mark, or any other trademark deceptively similar to the Plaintiff's registered "N" marks during the pendency of the suit.

​Point of Law Settled

​This judgment reaffirms that trademark registration does not act as an absolute shield against a common law action of passing off. A prior user who has cultivated extensive public goodwill can successfully enjoin a subsequent registered proprietor if the subsequent mark is found to be deceptively similar. Additionally, the ruling highlights that the dominant portion of a composite or stylized single-letter mark will be the primary benchmark for assessing deceptive similarity, and minor structural additions, such as punctuation marks, will not escape the application of the initial interest confusion doctrine.

​Case Details

​Title of the Case: New Balance Athletics Inc. Vs. Astormueller AG and Ors.

Date of Judgment: 13-07-2026

Case Number: CS(COMM) 962/2025

Neutral Citation: 2026:DHC:5573

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

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

​Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

​Headnote of the Judgment

​In New Balance Athletics Inc. v. Astormueller AG and Ors. [CS(COMM) 962/2025], the Delhi High Court addressed a trademark dispute concerning single-letter logo marks on footwear. The Plaintiff, a prior user of the famous "N" and "N-device" trademarks, sought an ad-interim injunction against the Defendants' use of the "n:" and "nu:beat" logo marks. The Defendants argued that their statutory registrations and structural differences barred the action. Resolving the interim application, the Court held that registration is not a defense to a common law passing off action. Applying the prior user doctrine and the initial interest confusion test, the Court determined that the lowercase "n" was the dominant part of the Defendants' logos, creating deceptive similarity. Consequently, the Court granted an ad-interim injunction restraining the Defendants from using the impugned logo marks during the pendency of the suit.

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3. ​Passing Off Wins Over Registered Mark: Analyzing New Balance v. Astormueller AG
4. ​Initial Interest Confusion: How the Delhi HC Evaluated Deceptive Similarity in Footwear Marks
5. ​New Balance v. Astormueller: Delhi High Court Restrains Use of Deceptive 'n:' Logo
6. ​Can Trademark Registration Shield Against Passing Off? Delhi HC Says No
7. ​The Battle of the 'N' Logos: Intellectual Property Lessons from Delhi High Court's Latest Ruling
8. ​Trademark Injunction Granted: New Balance Successfully Defends Its Well-Known Logo in India
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B.L and Company Vs. Registrar of Trade Marks

 B.L and Company Vs. Registrar of Trade Marks:13.07.2026 : C.A.(COMM.IPD-TM) 69/2025: Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Factual and Procedural Background

The appellant filed an appeal under Section 91 of the Trade Marks Act, 1999 read with Rule 125 of the Trade Marks Rules, 2017. This appeal challenged an order dated 28.07.2025 passed by the respondent refusing the registration of the trademark B.I.A. under Application No. 6082938 in Class 06. The registration was refused by invoking Section 11(1) of the Act on the grounds that a similar valid mark blac with a similar classification of goods under Application No. 5763264 already existed on the register, and the deceptive similarity would lead to a likelihood of public confusion. During the pendency of the proceedings, the appellant filed an amendment application dated 16.04.2025 for a correction in the description of goods.

Dispute before Court

The dispute before the court concerned whether the respondent erred in refusing the registration of the trademark by ignoring the appellant's amendment application for correcting the description of goods. The appellant contended that the goods in the original application were not identical, similar, allied, or cognate, and that the amendment application ought to have been considered.

The respondent countered that a comparison of the rival goods revealed an overlap, making them allied and cognate. The respondent further argued that the proviso to Rule 37 of the Trade Marks Rules, 2017 prohibits any amendment in an application that has the effect of substantially altering the trademark or substituting a new specification of goods not included in the original filing, relying on the Division Bench precedent in Landmark Crafts Limited v. Romil Gupta.

Reasoning and discussion of Judge

The judge examined the application filed by the appellant for amendment or correction in the description of goods. The court observed that there was no doubt that the proposed changes constituted a substantial alteration and the goods described in the second application fell into a completely different class. Consequently, by virtue of Rule 37 of the Trade Marks Rules, 2017 and the legal principles established by the Division Bench in Landmark Crafts Limited v. Romil Gupta, the court found no fault in the respondent's decision to disallow the correction or amendment.

Decision

Following the court's observation regarding the impermissibility of the amendment, the counsel for the appellant sought permission to withdraw the appeal with liberty to file a fresh application for registration of the mark B.I.A. for a different description of goods falling under a different class. The court, without entering into the merits of the case, disposed of the appeal as withdrawn, granting the requested liberty in accordance with the law.

Important legal priciple held

Under the proviso to Rule 37 of the Trade Marks Rules, 2017, an applicant is prohibited from making any amendment to a trademark application that has the effect of substantially altering the trademark applied for or substituting a new specification of goods or services that was not included in the original application as filed.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Trademark Class Amendment and Refusals under Section 11 of Trademarks Act 1999

Introduction

The legal framework governing intellectual property rights plays a pivotal role in maintaining market fairness and preventing consumer confusion. In the realm of trademark law, conflicts often arise when an applicant seeks to register a mark that closely resembles an existing registered trademark. A significant aspect of this administrative process is the limitation placed on amending an application once it has been filed. This article explores a recent decision by the High Court of Delhi that underscores the strict boundaries governing amendments to trademark specifications and highlights the procedural recourse available to applicants when their applications conflict with pre-existing marks.

Factual and Procedural Background

The controversy originated from an application filed by an appellant seeking the registration of the trademark B.I.A. under application number 6082938 in class 06. The statutory framework involved primarily includes Section 91 of the Trade Marks Act, 1999, which provides the right to appeal against decisions of the registrar, and Rule 125 of the Trade Marks Rules, 2017. The respondent, acting as the trademark registry, rejected this application through an order dated July 28, 2025. The refusal was grounded in Section 11(1) of the Trade Marks Act, 1999, which prohibits the registration of marks that are deceptively similar to earlier registered marks for identical or similar goods, thereby posing a likelihood of public confusion. The registry cited a pre-existing valid registered mark, blac, under application number 5763264, which also covered similar goods. Seeking to overcome this rejection, the appellant filed an interim application on April 16, 2025, attempting to correct and amend the description of its goods. When the registry refused the registration, the appellant approached the High Court of Delhi to challenge the refusal order.

Dispute Before the Court

The core legal question requiring adjudication was whether the trademark registry erred in refusing the registration of the appellant's mark by failing to consider the amendment application for correcting the description of goods. The appellant contended that the goods in its original application were entirely distinct from those covered by the cited registered mark, arguing they were neither identical nor allied. The appellant further argued that its application to amend the description of goods should have been factored into the registry's decision-making process. 

On the other hand, the respondent argued that a direct comparison of the rival goods revealed a substantial overlap, making them allied and cognate in nature. The respondent strongly maintained that the proposed amendment could not be permitted under the law because it sought to substantially alter the original application by moving the goods into a different classification, which is explicitly barred by the prevailing statutory rules.

Reasoning and Analysis of the Court

In analyzing the conflict, the court focused heavily on the statutory boundaries governing the amendment of trademark applications. The primary focus turned toward Rule 37 of the Trade Marks Rules, 2017. The proviso to this rule explicitly proscribes any amendment to a trademark application if it has the effect of substantially altering the trademark or substituting a new specification of goods or services that was not part of the initial filing. Upon examining the appellant's amendment application, the court found that the proposed changes did indeed constitute a substantial alteration, effectively attempting to shift the goods into a completely different class. 

To fortify this reasoning, the court relied on an authoritative precedent established by its own Division Bench in the case of Landmark Crafts Limited versus Romil Gupta trading as Sohan Lal Gupta and Another, 2026 SCC OnLine Del 762. In that precedent, the Division Bench firmly ruled against allowing amendments that fundamentally change the scope or classification of the goods specified in the original application. Applying this legal principle, the court concluded that the trademark registry committed no legal error in ignoring or disallowing the amendment, as accepting it would violate the statutory mandate of Rule 37.

Final Decision of the Court

Faced with the court's clear analysis regarding the impermissibility of the amendment, the legal counsel for the appellant chose not to pursue the merits of the appeal further. Instead, the appellant sought permission to withdraw the appeal while requesting the liberty to file a brand-new application for the registration of the trademark B.I.A. specifying a different set of goods falling under a different classification. The court accepted this request. Without making any final observations on the ultimate merits of the trademark's eligibility, the court officially disposed of the appeal as withdrawn and granted the appellant the liberty to file a fresh application in accordance with the law.

Point of Law Settled

This judgment reaffirms an essential procedural rule in intellectual property practice: applicants cannot use the amendment mechanism to bypass objections by substantially altering their classification of goods after an application is filed. The legal principle reaffirmed is that the proviso to Rule 37 of the Trade Marks Rules, 2017 operates as a strict statutory bar against amendments that substitute or fundamentally change the specification of goods or services beyond what was originally requested. This ensures that the integrity of the trademark register is maintained and prevents applicants from retroactively modifying their claims to defeat valid objections raised under Section 11 of the Trade Marks Act, 1999.

Title of the Case:  B.L and Company Vs Registrar of Trade Marks

Date of Judgment: 13.07.2026

Case Number: C.A.(COMM.IPD-TM) 69/2025

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

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

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In the case of  B.L and Company Vs. Registrar of Trade Marks, before the High Court of Delhi, the appellant challenged an order refusing the registration of its mark B.I.A. due to deceptive similarity with the registered mark blac under Class 06. The appellant sought to rely on an amendment application altering its description of goods. The Court observed that Rule 37 of the Trade Marks Rules, 2017 strictly prohibits amendments causing substantial alterations or introducing new specifications of goods outside the original application. Consequently, the appellant chose to withdraw the appeal, and the Court disposed of the matter as withdrawn, granting liberty to file a fresh application under a different class.

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Loreal SA Vs. Vekariya Nikunj

Delhi High Court Allows Amendment of Plaint to Include Trademark Infringement Post Registration

Loreal SA Vs. Vekariya Nikunj Arvindbhai: 13.07.2026:CM(M)-IPD 21/2026: 2026:DHC:5627: Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Factual and Procedural Background

The petitioner adopted the trademark Garnier Bright Complete and its unique trade dress in September 2020 for facial and cosmetic products. Discovering that the respondents were manufacturing and selling identical cosmetic items under confusingly similar marks like Garuda Bright Complete 30x and 6 Drops Bright Complete 3x, the petitioner filed a commercial suit seeking a permanent injunction based on passing off and dilution. The Trial Court granted an ex parte ad interim injunction on 16.05.2024. 

While the litigation was ongoing, the petitioner trademark application was granted registration on 20.04.2025. The petitioner then moved an application under Order VI Rule 17 of the Code of Civil Procedure on 01.07.2025 to add the factum of registration and the statutory relief of infringement. The Trial Court dismissed this application on 10.02.2026 on the ground that the original plaint lacked assertions about the pending application and that registration formed a completely separate cause of action. This prompted the petitioner to approach the High Court.

Dipute before Court

The central issue before the Court was whether a plaintiff who initially filed a suit for passing off can be allowed to amend the plaint to add a claim for trademark infringement when the underlying trademark gets registered during the pendency of the legal proceedings.

Reasoning and discussion of Judge

The Judge observed that procedural rules exist to secure the ends of justice rather than entrap litigants in technicalities. Under Order VI Rule 17 of the Code of Civil Procedure, amendments necessary for determining the real question in controversy should be allowed at any stage of the proceedings. 

The Court noted that the action for trademark infringement arose out of the exact same set of facts, competing marks, and cosmetic products as the initial passing off claim. Rejecting the amendment would force the petitioner to launch separate proceedings, leading to an unnecessary multiplicity of suits. The subsequent event of registration directly enhanced the petitioner's rights, and the omission of any mention of the pending application in the initial plaint did not alter the core structure of the original grievance.

Decision

The High Court quashed and set aside the impugned order dated 10.02.2026. The application under Order VI Rule 17 of the Code of Civil Procedure was allowed, and the Trial Court was directed to take the amended plaint on record and proceed in accordance with the law.

Important legal priciple held

An action for passing off can be effectively telescoped into an action for trademark infringement via a plaint amendment if the registration of the trademark is obtained during the pendency of the suit, provided the basic factual matrix, rival marks, and products remain identical.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Incorporation of Infringement Relief on the basis Trademark Registration which was filed post filing of Passing off Suit

Introduction:

The integration of subsequent statutory rights into an ongoing common law lawsuit forms an essential aspect of efficient intellectual property litigation. The High Court of Delhi recently dealt with this interface, evaluating whether a plaintiff can transition a passing off lawsuit into a trademark infringement action midway through the litigation. The ruling reaffirms a strong judicial preference for substantive justice over rigid technicalities, clearing the path for litigants to consolidate their evolving statutory claims without facing the burden of multiple parallel lawsuits.

Factual and Procedural Background:

The case originated when the petitioner adopted the mark Garnier Bright Complete along with its distinctive trade dress in September 2020 for a variety of cosmetic and skincare products. Over years of promotion, the petitioner asserted the establishment of substantial goodwill. 

The dispute arose when the respondents entered the market with identical skincare products bearing the marks Garuda Bright Complete 30x and 6 Drops Bright Complete 3x, causing market confusion. To protect its common law rights, the petitioner filed a commercial suit in 2024 for passing off and dilution, securing an ex parte ad interim injunction on 16.05.2024. 

During the pendency of this litigation, the petitioner trademark application number 6405978 in Class 03, which had been filed on 26.04.2024, was formally registered on 20.04.2025. 

Seeking to update the litigation with this statutory development, the petitioner filed an amendment application under Order VI Rule 17 of the Code of Civil Procedure on 01.07.2025 to introduce claims and reliefs for trademark infringement. The Trial Court, however, dismissed the application on 10.02.2026, stating that the original plaint did not mention the pendency of the application and that the registration introduced an entirely new cause of action with distinct legal parameters.

Dispute Before the Court

The core legal question required the determination of whether a pending passing off suit can be amended to incorporate a new claim for trademark infringement after the statutory registration is granted during the lifespan of the suit. 

The petitioner argued that the competing marks, products, and operational facts remained exactly the same, meaning that denying the amendment would merely create an avoidable multiplicity of proceedings. 

Conversely, the responding parties contended that because the original plaint contained no reference to the pending registration, the grant of registration constituted a separate and distinct cause of action that could not automatically merge into the ongoing litigation.

Reasoning and Analysis of the Court

The Court focused its analysis on the cardinal real controversy test governing amendments under the Code of Civil Procedure. It emphasized that procedural frameworks are designed to facilitate the administration of justice and should not be applied in a hyper-technical manner to defeat legitimate claims. The Court observed that when a cause of action or an enhancement of rights arises from events occurring during the pendency of a suit, amendments ought to be granted liberally, provided the basic structure and complexion of the case remain unaltered. 

The analysis heavily relied on the landmark Supreme Court decision in Rajesh Kumar Aggarwal and Others v. K.K. Modi and Others, (2006) 4 SCC 385, which ruled that courts must take notice of subsequent events to shorten litigation, preserve the rights of the parties, and subserve the ends of justice. 

Additionally, the Court invoked the ruling in Pravesh Narula Trading as M/s. Capital Enterprises v. Raj Kumar Jain Trading as M/s. Bholaram Puranmall and Another, 2024 SCC OnLine Del 7537, alongside the Division Bench precedent in Usha International and Another v. Usha Television Limited, 2002 SCC OnLine Del 306. 

These precedents collectively establish that the fundamental principles of passing off and trademark infringement are inherently similar, allowing a passing off action to be easily telescoped into an infringement action. Since both claims in this dispute rested upon the exact same marks and products, refusing the amendment would run counter to the objectives of judicial economy, forced the plaintiff to file an entirely fresh suit, and needlessly prolonged the resolution of the conflict.

Final Decision of the Court

The High Court set aside and quashed the impugned order dated 10.02.2026 passed by the learned District Judge. The petitioner's application under Order VI Rule 17 of the Code of Civil Procedure was fully allowed. The Court directed the Trial Court to take the amended plaint on record and proceed with the matter, effectively combining the passing off and trademark infringement claims into a single trial. The petition and all associated miscellaneous applications were formally disposed of.

Point of Law Settled

The judgment confirms that the acquisition of a trademark registration during the pendency of a passing off suit constitutes a significant subsequent event that justifies an amendment of the plaint. It settles the rule that an action for passing off can be legally telescoped into an action for trademark infringement under Order VI Rule 17 of the Code of Civil Procedure if the underlying factual matrix, rival marks, and products remain the same. This approach curtails the multiplicity of proceedings, ensures judicial economy, and allows intellectual property owners to seamlessly upgrade their pleadings from common law remedies to statutory protections.

Title of the Case: Loreal SA Vs. Vekariya Nikunj Arvindbhai & Ors.

Date of Judgment: 13th July, 2026

Case Number: CM(M)-IPD 21/2026 

Neutral Citation: 2026:DHC:5627

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

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

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Loreal SA v. Vekariya Nikunj Arvindbhai & Ors., the High Court of Delhi reviewed a Trial Court order that had rejected the petitioner's application to amend its passing off plaint to incorporate a trademark infringement claim after its mark matured into registration during the pendency of the suit. The High Court held that because passing off and infringement claims share an identical factual matrix, rival marks, and products, the subsequent registration is a material supervening event. Allowing the amendment under Order VI Rule 17 of the Code of Civil Procedure serves the interest of justice by preventing a multiplicity of suits. The High Court set aside the impugned order and allowed the amendment.

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Hemendra Rasiklal Ghia Vs. Subodh Mody

The Effect of not taking objection regarding mode of proof at tendering of document

Introduction

  

This judgment from the Bombay High Court addresses a significant procedural issue in civil litigation concerning the timing for deciding objections to the admissibility and proof of oral and documentary evidence. It arose as a reference to a larger bench due to conflicting views among single judges of the court. The decision aims to balance efficiency in trials with fairness to parties, ensuring that evidence is handled properly without unnecessary delays while protecting the right to a just outcome. It explained Failure to raise a prompt and timely objection amounts to waiver of the necessity for insisting on formal proof of a document.

Factual and Procedural Background

 

The reference stemmed from multiple matters, including writ petitions challenging trial court orders on marking documents as exhibits subject to proof and objections to statements in affidavits of examination-in-chief filed under Order XVIII Rule 4 of the Code of Civil Procedure. Key statutory provisions discussed include Order XIII Rules 3, 4, and 6 (dealing with endorsement and rejection of documents), Order XVIII Rule 4 (examination-in-chief by affidavit and recording of cross-examination, with provisos on proof and admissibility), and related provisions in the Bombay Civil Manual. The 2002 amendments to the Code were examined in detail, emphasizing the shift toward affidavits for chief examination and commissioner-recorded cross-examination to expedite trials. Conflicting single judge decisions were referred, leading to the framed question on whether objections should be decided immediately or deferred.

Dispute Before the Court

The core issue was whether courts must rule on objections to the admissibility or mode of proof of evidence right when they are raised during trial, or if such decisions can be postponed until final arguments or judgment. Some parties argued for immediate decisions to avoid wasting time on cross-examination of potentially inadmissible material and to allow parties to cure defects promptly. Others favored deferral to prevent interruptions in trials and promote faster disposal, citing Supreme Court observations from criminal cases. In simple terms, the dispute centered on practical trial management: decide evidence questions early to keep things fair and efficient, or allow evidence on record tentatively and sort it out later to avoid slowing down the process. The court had to reconcile these approaches with the Code's provisions and judicial precedents.

Reasoning and Analysis of the Court

The court carefully reviewed the statutory framework, particularly the 2002 amendments to the Code of Civil Procedure designed to cut delays in recording evidence. It emphasized that while the legislature sought expedition through affidavits and commissioners, the court retains discretion and responsibility for admissibility decisions under Order XVIII Rule 4(1) proviso. Order XIII provisions require judicial determination of admissibility before endorsement as exhibits. The Civil Manual reinforces prompt handling of documents.  

Precedents played a central role. The court relied on Privy Council cases like Jadu Rai v. Bhubotaran Nandy (16 Indian Appeals 148= 17 Cal 173/186) and Gopal Das v. Sri Thakurji (AIR 1943 PC 83), which stressed deciding admissibility when evidence is tendered to avoid prejudice. Supreme Court authorities such as R.V.E. Venkatachala Gounder v. Arulmigu Viswesaraswamy ((2003) 8 SCC 752), Zaver Chand v. Pukhraj Surana (AIR 1961 SC 1655), Smt. Dayamathi Bai v. K.M. Shaffi (AIR 2004 SC 4082), and others were analyzed for distinguishing between objections on stamp duty, mode of proof, and inherent inadmissibility. These generally favor prompt rulings, with exceptions for truly complex or inherently inadmissible items.  

The court distinguished Bipin Shantilal Panchal v. State of Gujarat (AIR 2001 SC 1158) and State v. Navjot Sandhu (2003) 6 SCC 641), noting their context in prolonged criminal trials and Article 21 rights, making them less directly applicable to civil suits governed by specific CPC rules. It favored consistency with civil-specific precedents and principles like stare decisis. Amendments and Law Commission reports were interpreted using Heydon's rule to advance the remedy of speedy justice without sacrificing fairness. The court stressed that procedure serves justice, allowing limited discretion for deferral in exceptional cases to prevent prejudice, but generally requiring decisions at the appropriate stage to enable parties to remedy defects. For affidavit evidence, objections can often be noted and resolved later, per Ameer Trading Corpn. Ltd. v. Shapoorji Data Processing Ltd. ((2004) 1 SCC 702). Overall, the reasoning promotes efficiency, fairness, and prevention of miscarriage of justice. It clarified that Failure to raise a prompt and timely objection amounts to waiver of the necessity for insisting on formal proof of a document.

Final Decision of the Court

The court answered the reference by holding that objections to admissibility and proof of documents should ordinarily be decided when raised and before exhibition, with specific rules for different categories of objections. For evidence in affidavits under Order XVIII Rule 4, objections can generally be reserved until final judgment. The connected writ petitions and suits were directed to be placed before appropriate benches for disposal in accordance with the clarified law. The reference was thus resolved in favor of a structured, case-sensitive approach favoring prompt decisions in most civil contexts.

Point of Law Settled

This judgment settles that in civil proceedings, objections to the admissibility or mode of proof of documentary evidence must generally be raised and judicially decided at the time of tendering, before marking as exhibits, to allow parties to cure defects and ensure fair trials. Exceptions exist for inherently inadmissible documents or complex issues, where deferral to judgment stage is permissible if it serves justice. For oral evidence in affidavits, objections can more readily be deferred. This clarifies conflicting views, aligns procedure with CPC amendments for expedition, and emphasizes that procedure is a handmaid of justice. It held that failure to raise a prompt and timely objection amounts to waiver of the necessity for insisting on formal proof of a document. It is likely to reduce delays, minimize prejudice, and provide consistent guidance to trial courts, influencing how evidence is handled across civil litigation in the jurisdiction and promoting efficient yet fair dispute resolution.

Title of the Case:Hemendra Rasiklal Ghia Vs. Subodh Mody   

Date of Judgment:16th October 2008  

Case Number:Writ Petition No. 623 of 2005 

Name of Court:High Court of Judicature at Bombay  

Name of Hon'ble Judge:Swatanter Kumar, C.J., V.C. Daga, J. and V.M. Kanade, J.  

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

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

**Headnote of the Judgment:**  

In Mr. Hemendra Rasiklal Ghia Vs. Subodh Mody & connected matters before the Bombay High Court, a larger bench resolved conflicting single judge views on the stage for deciding objections to admissibility and proof of evidence in civil suits. The court examined CPC Orders XIII and XVIII, amendments of 2002, and various precedents. It held that such objections should generally be decided when raised before exhibition of documents, with limited discretion for deferral in exceptional cases, while objections to affidavit evidence can often be reserved till judgment. The reference was answered accordingly, directing matters for disposal per the clarified law. (Word count: 98)  

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Bristol Bakery Vs Grupo Bimbo S.A.B. DE C.V.

Bombay High Court Resolves Cross-Suits Over "Bimbo" Trademark in Bakery Sector

Bristol Bakery Vs Grupo Bimbo S.A.B. DE C.V. & Ors.:6 July 2026 : Interim Application (L) No. 13958 of 2023 in Commercial IP Suit No. 117 of 2025 :BombayHC:Hon'ble Judge: Justice Sharmila U. Deshmukh

Factual and Procedural Background

Bristol Bakery, a Mumbai-based firm, claimed prior use and registration of the "Bimbo" mark for bread and bakery products since 1979. Grupo Bimbo, a Mexican global giant, asserted international reputation since 1943 and Indian registrations from 1993, along with market entry through acquisitions. Both filed suits for infringement and passing off, leading to cross interim applications for injunctions.

Reasoning and discussion of Judge

The Court examined prior use, registrations, trans-border reputation, honest concurrent use, delay, acquiescence, and balance of convenience. It applied principles from Toyota, N.R. Dongre, Milmet Oftho, and other precedents on passing off, well-known marks, and honest adoption. The Court assessed evidence of use, goodwill in India, and found Bristol Bakery as senior user in the local market while recognizing Grupo Bimbo's global standing.

Decision

 

The Court disposed of the interim applications with directions balancing the interests of both parties pending trial,  while allowing both the parties  continued operations, there by mutual co existence at interim stage till the out come of suit proceeding.

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

Global Brand Reputation Vs Local Prior Trademark Use

Introduction: 

A notable trademark battle in the bakery industry reached the Bombay High Court when two parties claimed rights over the mark "Bimbo." One side was a long-established local Mumbai bakery, and the other a major international food conglomerate. The dispute highlighted issues of prior use in India versus global reputation and raised questions about honest adoption, passing off, and injunctions in cross suits.

Factual and Procedural Background:

Bristol Bakery, operating since the 1960s, claimed to have adopted and used the "Bimbo" mark for bread and bakery products since 1979, securing a device mark registration in Class 30 in March 1979. It traced its partnership history and produced sales figures and promotional materials spanning decades. Grupo Bimbo, incorporated in Mexico, adopted the mark in 1943, built a vast global portfolio with over a thousand registrations, and entered India through joint ventures and acquisitions starting around 2017, with products bearing the mark appearing from 2019.  

Both parties filed commercial IP suits alleging infringement and passing off. Bristol Bakery sued upon discovering Grupo Bimbo's products in the market in 2023. Grupo Bimbo filed its suit and contested Bristol Bakery's rights, alleging fraudulent registration and delay. Cross interim applications sought injunctions against each other's use of the mark. The Court heard detailed arguments on evidence of use, reputation, and statutory defenses under the Trade Marks Act, 1999.

Dispute Before the Court

  

The main questions were which party had superior rights to the "Bimbo" mark in India for bakery goods, whether one party's use amounted to infringement or passing off, and whether injunctions should be granted at the interim stage. Bristol Bakery argued it was the prior adopter and registered proprietor in India with continuous local goodwill, and that Grupo Bimbo's global reputation did not automatically extend to India without actual use. Grupo Bimbo contended it had honest global adoption, trans-border reputation, and that Bristol Bakery's registration was vulnerable, with its own later entry supported by substantial investments and publicity. Both sides raised issues of delay, acquiescence, and balance of convenience.

Reasoning and Analysis of the Court

The Court carefully reviewed the evidence of adoption and use by both parties. It noted that Bristol Bakery had a registered device mark since 1979 and produced documents showing long-term business activity in Mumbai. Grupo Bimbo demonstrated strong international presence and Indian registrations from 1993, along with market activities through acquisitions.  

Applying principles from key precedents such as Toyota Jidosha Kabushiki Kaisha Vs Prius Auto Industries Ltd. (2018) 2 SCC 1 on trans-border reputation and passing off, N.R. Dongre vs Whirlpool Corp. 1995 SCC OnLine Del 310 on honest concurrent use, and Milmet Oftho Industries vs Allergan Inc. (2004) 12 SCC 624 on global marks, the Court emphasized territorial aspects of goodwill in India. It considered Section 12 of the Trade Marks Act, 1999 regarding concurrent registration and honest adoption.  

The Court found that while Grupo Bimbo had a coined mark with strong global goodwill, Bristol Bakery established senior user status in the Indian context with evidence of sales and promotion. However, it also acknowledged Grupo Bimbo's legitimate business expansion. On delay and acquiescence, the Court examined when each party became aware of the other's activities. Balance of convenience was assessed to avoid irreparable harm pending full trial, with the Court noting that complete restraint on either long-operating business could cause significant disruption.  

The analysis highlighted that similarity in the essential feature "Bimbo" created potential for confusion, but distinctions in get-up and local market realities were relevant. The Court referred to various decisions on passing off actions, rectification proceedings under Section 124, and the need for clear evidence of goodwill and misrepresentation.

Final Decision of the Court 

The Court disposed of the cross interim applications by a common order. It allowed  co-existence till the out come of suit proceeding. The suits were directed to proceed to full adjudication on the merits.

Point of Law Settled

 

This judgment reinforces that in trademark disputes involving global brands and local users, Indian courts give significant weight to actual prior use and goodwill within India alongside international reputation. It clarifies the application of passing off principles in cross suits and the discretionary approach to interim injunctions to balance equities. Future cases involving similar conflicts will likely see greater emphasis on territorial evidence and practical measures to allow co-existence where possible, promoting fair competition in the market.

Title of the Case:Bristol Bakery versus Grupo Bimbo S.A.B. DE C.V. & Ors. (cross suits)  

Date of Judgment:6 July 2026  

Case Number:Interim Application (L) No. 13958 of 2023 in Commercial IP Suit No. 117 of 2025 with connected matters  

Name of Court:Bombay High Court  

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

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

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

**Headnote of the Judgment:**  

In cross commercial IP suits between Bristol Bakery and Grupo Bimbo over the "Bimbo" trademark for bakery products, the Bombay High Court dealt with interim injunction applications. Bristol Bakery claimed prior Indian use since 1979 with registration, while Grupo Bimbo asserted global adoption since 1943 and Indian market entry. The Court analyzed prior use, reputation, passing off, and balance of convenience, disposing of the applications with partial restraints and directions for co-existence pending trial. (98 words)

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Industria De Diseno Textil SA Vs Registrar of Trademark

Delhi High Court Allows ZARA's Appeal, Rejects Registration of Similar Mark ZORA in Textiles

Industria De Diseno Textil SA Vs Registrar of Trademark :6 July 2026 :C.A.(COMM.IPD-TM) 52/2024:2026:DHC:5373:Hon'ble Judge: Justice Jyoti Singh

Factual and Procedural Background:  

Appellant Industria De Diseno Textil, S.A., owner of the well-known ZARA trademark, opposed the registration of ZORA in Class 24 for fabrics by Respondent No.2. The Registrar dismissed the opposition and allowed registration. ZARA challenged this order before the High Court.

Reasoning and discussion of Judge

 

The Court held that ZARA qualifies for protection as a well-known mark under Section 11(2) of the Trade Marks Act, 1999 even without formal declaration, based on its extensive reputation, sales, and prior judicial recognition. It found ZARA and ZORA deceptively similar when compared as a whole, both phonetically and visually, rejecting the Registrar's dissection approach. The goods were also held to have trade connection. Precedents on anti-dissection, phonetic similarity, and well-known marks were applied to conclude likelihood of confusion and dilution.

Decision

The appeal was allowed. The impugned order of the Registrar was set aside and the opposition was upheld, preventing registration of ZORA.

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

Well-Known Trademark Protection in a Trademark Rectification Proceeding

Introduction:

In a significant ruling on trademark protection, the Delhi High Court addressed the conflict between the globally reputed ZARA brand and a similar mark ZORA sought to be registered for textile fabrics. The case examined key issues of deceptive similarity, well-known marks, and the scope of protection available even for dissimilar goods under Indian trademark law. The judgment provides important guidance on how marks should be compared and the rights of established brands against potential infringers.

Factual and Procedural Background:

Industria De Diseno Textil, S.A., a Spanish company, owns the ZARA trademark, used extensively for fashion clothing and home products including textiles since the 1970s. It has registrations in multiple classes in India, including Class 24, and has built substantial reputation with stores and sales in the country. Respondent No.2 applied for ZORA in Class 24 for various fabrics, claiming use since 2016. The mark was advertised, opposed by ZARA, but the Registrar rejected the opposition in February 2024 and granted registration. ZARA filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Delhi High Court challenging the Registrar's decision.

Dispute Before the Court

The core questions were whether ZARA and ZORA are deceptively similar and whether ZARA's well-known status entitles it to block ZORA's registration even if the goods are argued to be dissimilar. ZARA contended that the marks are phonetically and visually close, likely to confuse consumers, and that its brand deserves broad protection due to reputation. Respondent No.2 argued the marks differ in prefixes, goods and trade channels are distinct, and ZARA lacks formal well-known declaration, so no violation occurs. The parties differed on the proper test for mark comparison and the applicability of dilution principles.

Reasoning and Analysis of the Court  

The Court carefully examined Section 11 of the Trade Marks Act, 1999, which deals with relative grounds for refusal of registration. It clarified that Section 11(2) protects well-known marks against similar marks for dissimilar goods if registration would take unfair advantage or harm the earlier mark's distinctive character or repute. The Court held that no formal declaration is required for such protection; entitlement based on reputation evidenced under Section 11(6) and the definition in Section 2(1)(zg) suffices.  

On similarity, the Court applied the anti-dissection principle, emphasizing that marks must be compared as a whole rather than broken into parts. It relied on the Supreme Court's decision in Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, where overall impression matters more than minor differences. Other important precedents included Encore Electronics Ltd. v. Anchor Electronics & Electricals Pvt. Ltd., 2007 SCC OnLine Bom 147, on phonetic similarity; South India Beverages Pvt. Ltd. v. General Mills Marketing & Anr., 2014 SCC OnLine Del 1953, reinforcing holistic comparison; and cases like Essco Sanitations v. Mascot Industries, Ajanta Pharma, and Sulphur Mills where small vowel changes did not prevent a finding of deceptive similarity.  

The Court found ZARA and ZORA share structural, visual, and phonetic similarities, with common "RA" ending and only a minor vowel difference that average consumers with imperfect recollection might overlook. It also noted trade connections in the textile and bag manufacturing sector. ZARA's extensive global and Indian presence, sales figures, and prior recognition as well-known in earlier litigation strengthened its case. The Registrar's approach of dissecting marks and ignoring well-known status was held erroneous.

Final Decision of the Court 

The Court allowed the appeal, set aside the Registrar's order dated 08.02.2024, and upheld ZARA's opposition. Registration of the ZORA mark was rejected.

Point of Law Settled

The judgment reaffirms that well-known marks under Section 11(2) do not require prior formal declaration for opposition purposes if reputation is established. It strengthens the holistic comparison test for deceptive similarity and extends robust protection to reputed brands against marks that could dilute their value, even in related trade channels. This is likely to guide future oppositions, discourage opportunistic registrations, and encourage stricter scrutiny by the Trade Marks Registry in similar cases involving famous brands.

Title of the Case:Industria De Diseno Textil SA Vs Registrar of Trademark    

Date of Judgment:6 July 2026  

Case Number:C.A.(COMM.IPD-TM) 52/2024  

Neutral Citation: 2026:DHC:5373 

Name of Court:High Court of Delhi  

Name of Hon'ble Judge:Justice Jyoti Singh  

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

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

**Headnote of the Judgment:**  

In Industria De Diseno Textil, S.A. v. Registrar of Trade Marks & Anr., the Delhi High Court allowed an appeal under Section 91 of the Trade Marks Act, 1999. The appellant challenged the Registrar's dismissal of opposition to the mark ZORA in Class 24. The Court held ZARA as entitled to well-known mark protection without formal declaration and found ZORA deceptively similar to ZARA on holistic comparison. It set aside the Registrar's order and upheld the opposition, preventing registration of ZORA. (128 words)

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SC-Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products

Rasiklal Manickchand Dhariwal. Vs. M.S.S. Food Products case:A party that has forfeited its right to cross-examine witnesses or advance oral arguments through non-appearance cannot demand a fresh hearing from a successor judge

Introduction:

The administration of civil justice requires a delicate balance between giving parties an adequate opportunity to present their case and preventing the abuse of judicial processes through deliberate delays. Legal strategies often involve a series of procedural applications that can inadvertently or intentionally stall the final resolution of a dispute. The Supreme Court of India handled these competing themes in a significant decision involving two prominent business entities locked in a trademark dispute. The case provides critical clarity on the boundaries of procedural rights under civil law, particularly when a party defaults in appearance or seeks to prolong litigation despite clear judicial directions for time-bound disposal.

Factual and Procedural Background:

The dispute originated when M.S.S. Food Products filed a lawsuit against Dhariwal Industries Limited and Rasiklal Manikchand Dhariwal in the court of the First Additional District Judge at Mandaleshwar, Madhya Pradesh. The plaintiff sought a declaration that the defendants had no right to use the trademark Manikchand for selling pan masala, gutka, supari, or similar products, claiming it was deceptively similar to their own mark, Malikchand. The plaintiff also sought a perpetual injunction and an accounting of profits.

According to the plaintiff, the business under the brand name Malikchand was initially started in 1959-1960 by Prabhudayal Choubey, who later assigned the trademark to his son in April 1986. The mark was subsequently assigned to another proprietor in April 1992, who eventually transferred it to the plaintiff on April 1, 1996. The plaintiff alleged that the defendants later began selling similar products under the phonetically identical name Manikchand, thereby passing off their goods as those of the plaintiff.

The defendants contested the claim, denying that any business was run under the name Malikchand since 1959. They argued that they had applied for the registration of Manikchand in 1966, named after the father of the second defendant, and had been using it continuously. They asserted that the plaintiff had forged documents to ride on their established goodwill and had filed a separate lawsuit in the Bombay High Court in 2004 against the plaintiff.

The trial court framed multiple factual and legal issues, including additional issues under Section 10 and jurisdiction under the Code of Civil Procedure, 1908. In March 2004, an ad-interim ex-parte injunction was granted to the plaintiff, which was made absolute in April 2004. The High Court dismissed the defendants' appeal against this injunction in May 2004 but explicitly directed the trial court to conclude the trial expeditiously, preferably within six months. The defendants challenged this before the Supreme Court, which dismissed their petition in February 2005, reiterating that the trial must be completed within six months from that date.

Despite these clear mandates, the defendants filed numerous interlocutory applications, including requests for rejection of the plaint, discovery, and production of documents, which were progressively dismissed by the trial court. On February 28, 2005, when the defendants' counsel refused to cross-examine the plaintiff's witnesses, the trial court closed the right to cross-examine and scheduled the matter for March 17, 2005. On that date, no one appeared for the defendants. 

Consequently, the trial court ordered the suit to proceed ex-parte, heard the plaintiff's arguments, and closed the case for judgment.

Although the matter was reserved, a change in the presiding officer occurred when a new judge assumed charge in August 2006. The defendants filed further applications to set aside the ex-parte order, which were dismissed. Ultimately, the trial court decreed the suit in favor of the plaintiff on March 7, 2007, restraining the defendants from using the mark and directing them to submit accounts of profits. The High Court affirmed this decree in August 2008 but modified the relief concerning accounts by awarding a token monetary relief of eleven lakh rupees.

Dispute Before the Court

The principal legal and factual controversies before the Supreme Court focused on procedural propriety and the validity of an ex-parte decree delivered by a successor judge. The core question was whether the trial court committed a fatal error by ordering the suit to proceed ex-parte and whether a successor judge could validly deliver a judgment based on arguments heard by a predecessor judge without offering a fresh oral hearing to the parties.

The defendants contended that a judgment delivered by a judge who did not personally hear the final arguments violates the foundational principle of natural justice that the person who hears a matter must decide it. They argued that because they had appeared on subsequent dates before the judgment was formally pronounced, their right to participate and argue the merits of the case could not be completely extinguished. Furthermore, they asserted that the examination-in-chief submitted by the plaintiff via affidavits could not be considered valid evidence under the law because the witnesses did not physically enter the witness box to formally confirm those affidavits in an appealable case.

Conversely, the plaintiff argued that the Code of Civil Procedure explicitly empowers a successor judge to take up a case from the stage left by their predecessor. They maintained that the defendants had repeatedly disrupted and delayed the trial despite explicit instructions from the High Court and the Supreme Court for a speedy disposal. The plaintiff stated that the defendants deliberately forfeited their rights to cross-examination and oral arguments through their own non-cooperative conduct, meaning they could not later complain about a lack of opportunity.

Reasoning and Analysis of the Court

The Supreme Court undertook a meticulous examination of the procedural provisions governing the trial of civil suits, specifically focusing on Order XVIII Rule 2, Order XVIII Rule 15, and Order XX Rule 1 of the Code of Civil Procedure, 1908. The court clarified that the hearing of a suit is a comprehensive process that begins with the production of evidence and concludes with the pronouncement of judgment, rather than being limited merely to oral arguments.

Addressing the contention that one who hears must decide, the court noted that while this principle is strictly applicable to quasi-judicial administrative forums, its application within civil suits is moderated by express statutory provisions. The court highlighted Order XVIII Rule 15, which acts as a special provision designed to handle situations where a judge is prevented by death, transfer, or other causes from concluding a trial. This rule explicitly allows a successor judge to deal with any evidence recorded by their predecessor and to proceed with the suit from the precise stage at which it was left. The court observed that the phrase from the stage at which his predecessor left it is wide enough to encompass a stage where evidence has been closed and arguments have been heard, thereby preventing the entire process from being undone.

The court distinguished the precedent from the Madras High Court in the case of American Baptist Foreign Mission Society versus Jaladi Ayyappaseti, reported at 48 Indian Cases 859, noting that it involved the death of a party prior to the conclusion of arguments where legal representatives were not brought on record, which did not touch upon Order XVIII Rule 15. Instead, the court expressed its agreement with the principle articulated by the Lahore High Court in Harji Mal versus Devi Ditta Mal, reported at Air 1924 Lahore 107. The Lahore High Court had established that Order XVIII Rule 2 gives an option to parties to argue their case when evidence is conducted, and if they deliberately choose not to avail themselves of this privilege, they do so at their own peril.

Regarding the validity of evidence by way of affidavit, the court analyzed the interaction between Order XVIII Rule 4 and Order XVIII Rule 5. The court referred to its earlier ruling in Ameer Trading Corporation Limited versus Shapoorji Data Processing Limited, reported at 2004 1 SCC 702, which affirmed the Bombay High Court's position in F.D.C. Limited versus Federation of Medical Representatives Association India, reported at Air 2003 Bombay 371. The court clarified that the expression in every case in Order XVIII Rule 4 means that the examination-in-chief must be submitted via affidavit in both appealable and non-appealable cases. The court explicitly rejected the notion that a witness must enter the box merely to formally confirm an affidavit that has already been sworn before a competent officer. Since the plaintiff's witnesses were present and the defendants voluntarily refused to cross-examine them on the appointed date, the evidence was legally complete and admissible.

The court also dismissed the defendants' reliance on Order IX Rule 7, explaining that once a suit is fully heard and closed for judgment, an application to set aside an ex-parte order has no application because an adjournment for pronouncing judgment is not an adjournment for the hearing of the suit. This position was backed by the landmark three-judge bench decision in Arjun Singh versus Mohindra Kumar, reported at 1964 5 SCR 946, which ruled that there is no legal gap between the reservation of judgment and its pronouncement that would allow a defaulting party to reset the clock.

Final Decision of the Court

The Supreme Court found no merit in the challenges raised by the appellants and determined that the trial court did not act arbitrarily or illegally. The conduct of the defendants demonstrated a clear pattern of filing endless interlocutory applications to obstruct the time-bound mandate given by the judiciary. The court ruled that the procedure adopted by the trial court was entirely consistent with the provisions of the Code of Civil Procedure. Consequently, the Civil Appeal was dismissed. The court upheld the concurrent findings and the modified decree passed by the High Court of Madhya Pradesh, which protected the plaintiff's trademark rights. The appellants were ordered to bear the costs of the proceedings, which were quantified at fifty thousand rupees.

Point of Law Settled

The judgment reaffirms and clarifies two critical procedural principles under the Code of Civil Procedure, 1908. First, it establishes that under Order XVIII Rule 15, a successor judge is fully empowered to deliver a judgment based on the record left by a predecessor judge, including situations where the case has been closed for judgment after ex-parte arguments. A party that has forfeited its right to cross-examine witnesses or advance oral arguments through non-appearance cannot demand a fresh hearing from a successor judge. Second, the ruling settles that in appealable cases under Order XVIII Rule 4, an examination-in-chief submitted via affidavit constitutes valid legal evidence once the witness is made available for cross-examination, and there is no separate requirement for the witness to enter the box solely to formally confirm the affidavit text. This minimizes procedural redundancies and reinforces judicial efficiency against dilatory litigation tactics.

Title of the Case: Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products

Date of Judgment: 25.11.2011

Case Number: Civil Appeal No. 10112 of 2011 (Arising out of SLP (Civil) No. 27180 of 2008)

Citation: 2011 (13) SCALE 183

Name of Court: The Supreme Court of India

Name of Hon'ble Judge: Aftab Alam and R.M. Lodha, JJ.

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

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Headnote of the Judgment:

Rasiklal Manickchand Dhariwal and Anr. Vs. M.S.S. Food Products, Supreme Court of India, Civil Appeal No. 10112 of 2011. The appeal arose from an ex-parte trademark decree affirmed by the Madhya Pradesh High Court restraining the defendants from using the mark Manikchand due to deceptive similarity with Malikchand. The defendants contended that the decree delivered by a successor judge without a fresh oral hearing was a nullity and challenged the validity of evidence filed by affidavit. The Supreme Court held that under Order XVIII Rule 15 of the CPC, a successor judge can validly proceed from the stage left by their predecessor, and a party defaulting in appearance forfeits its right to oral arguments. The court also affirmed that examination-in-chief on affidavit is valid evidence. The appeal was dismissed with costs.

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