Aravind Laboratories Vs Manoj Agrawal

Introduction:

The enforcement of trademark rights requires a delicate balance between protecting a brand owner's goodwill and preventing the improper monopolization of generic terms. In intellectual property law, registering a combined trademark does not automatically grant exclusive rights over every individual word forming part of that mark. This principle is particularly vital when a registered mark consists of a distinctive prefix paired with a common or generic term. The judgment addresses this core issue in the context of trademark cancellation proceedings, emphasizing that statutory protection extends to the mark as a whole rather than its non-distinctive components.

Factual and Procedural Background:

The petitioner, Aravind Laboratories, is a registered proprietor of various trademarks incorporating the prefix EYETEX. Among these, the petitioner registered the word mark EYETEX DIVYA under Registration Number 527085 in Class 3 on March 29, 1990, claiming user rights dating back to October 1, 1989. This mark is utilized primarily for liquid kumkum, kumkum paste, powder, and sticker forms. The overall turnover of the petitioner reached 275.67 crores for the year 2022-23, with promotional expenses of 25.55 crores across its product range.

Respondent Number 1, Manoj Agrawal, obtained registration for a device mark incorporating the word DIVYAM under Registration Number 4615334 in Class 3. The device mark features the word DIVYAM written in a stylized manner with the letter I shaped like a flame, accompanied by the footnote Your Complete Divinity Store. The registered description of goods encompasses items used for rituals, including dhoop batti, agarbatti, havan samagri, poojan samagri, turmeric, kumkum, pooja oil, pooja ghee, ganga jal, chandan, and vibhooti.

The petitioner filed a commercial miscellaneous petition seeking rectification and cancellation of the respondent's mark under Sections 47 and 57 of the Trade Marks Act, 1999. Service of notice on Respondent Number 1 was completed through substituted service as permitted by an order dated November 13, 2025, supported by a service affidavit dated December 4, 2025. Due to the non-appearance of Respondent Number 1, the matter proceeded ex parte.

Dispute Before the Court:

The primary legal dispute centered on whether the proprietor of a registered composite mark, EYETEX DIVYA, could claim exclusive rights over the word DIVYA or its derivatives like DIVYAM to cancel a subsequent registered device mark.

The petitioner argued that the respondent's mark DIVYAM was devoid of distinctive character under Section 9(1)(a) and likely to cause deception or public confusion under Section 9(2)(a) of the Trade Marks Act, 1999. The petitioner further asserted that the mark was identical or deceptively similar under Section 11(1)(a), registered in bad faith under Section 11(10)(ii), and liable to be restrained under the law of passing off pursuant to Section 11(3)(a). Additionally, the petitioner claimed non-use of the mark under Section 47 and alleged serious injury under Section 57. The core contention was that consumers might mistakenly believe the respondent's ritual products were an extension of the petitioner's established brand.

Respondent Number 1 did not appear to contest the proceedings. The Court was required to evaluate the statutory merit of the cancellation request based on the material presented by the petitioner.

Reasoning and Analysis of the Court:

The Court engaged in a statutory analysis of Section 17 of the Trade Marks Act, 1999, which governs the effect of registration of parts of a mark. Under Section 17(1), registration confers exclusive rights to the use of the trademark taken as a whole. Section 17(2) explicitly provides that where a mark contains a part that is not separately registered, or contains matter common to the trade or of non-distinctive character, registration does not confer an exclusive right in that specific part.

The Court observed that all of the petitioner's registered marks rely on the prefix EYETEX to provide distinctiveness. The word DIVYA was never registered independently as a standalone mark by the petitioner. The Court reasoned that DIVYA and its variant DIVYAM are generic terms originating from Sanskrit meaning divine, naturally associated with devotional and ritual goods. Allowing the petitioner to monopolize DIVYA or DIVYAM based on its registration of EYETEX DIVYA would improperly grant exclusive rights over generic and descriptive words.

Evaluating absolute grounds under Section 9, the Court held that the respondent's mark is a stylized device mark containing distinctive visual elements, including a flame design and a specific descriptive footnote. Consequently, it could not be held devoid of distinctive character under Section 9(1)(a). Furthermore, no likelihood of public confusion or deception existed under Section 9(2)(a) or Section 11(1)(a), as the petitioner operates in the cosmetics field while the respondent registered goods for pooja rituals. Visually, phonetically, and structurally, the two marks remain distinct.

Regarding passing off and bad faith under Section 11(3)(a) and Section 11(10)(ii), the Court found no evidence that the respondent adopted the mark to trade upon the petitioner's goodwill. Because the petitioner possessed no monopoly over the word DIVYA, it could not qualify as an aggrieved person entitled to invoke rectification under Section 47 or Section 57.

The Court placed reliance on the Supreme Court ruling in Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., (2018) 9 SCC 183, which established that generic or mythological terms used in stylized logos alongside additional words do not cause deceptive similarity when viewed in totality. The Court also referenced an earlier decision involving the petitioner, M/s Aravind Laboratories v. Modicare, 2011 SCC OnLine Mad 847, where the Madras High Court rejected an infringement claim regarding the word DAZZLER because the registered mark was EYETEX DAZZLER as a whole, confirming that un-registered individual components receive no anti-dissective exclusivity.

Final Decision of the Court:

The High Court dismissed Commercial Miscellaneous Petition (L) No. 17853 of 2025. The Court concluded that the petitioner failed to establish valid legal grounds for rectification or cancellation of Respondent Number 1's registered device mark DIVYAM under Sections 47, 57, 9, or 11 of the Trade Marks Act, 1999. No order as to costs was passed against the non-appearing respondent.

Point of Law Settled:

This judgment reaffirms the statutory mandate of Section 17 of the Trade Marks Act, 1999, establishing that registration of a composite trademark confers exclusive rights only over the mark as a whole. A brand owner cannot claim a monopoly over a generic, descriptive, or un-registered constituent word merely because it forms part of a registered compound mark with a distinctive prefix. Furthermore, to qualify as an aggrieved person for rectification under Sections 47 and 57, the applicant must demonstrate a legitimate legal injury rather than an untenable claim to exclusive rights over generic terms.

Title of the Case: Aravind Laboratories Vs Manoj Agrawal and Anr.

Date of Judgment: July 16, 2026

Case Number: Commercial Miscellaneous Petition (L) No. 17853 of 2025

Neutral Citation: 2026:BHC-OS:17853

Name of Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction in its Commercial Division)

Name of Hon'ble Judge: Hon'ble Mr. Justice Somasekhar Sundaresan

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 Aravind Laboratories v. Manoj Agrawal and Anr. (Commercial Miscellaneous Petition (L) No. 17853 of 2025, decided on July 16, 2026), the High Court of Bombay considered a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999. The petitioner, owner of EYETEX DIVYA, sought cancellation of respondent's registered device mark DIVYAM. The court held that under Section 17, registration of a composite mark confers exclusive rights only over the mark as a whole. The petitioner could not claim a monopoly over generic variants like DIVYA or DIVYAM. Finding no deceptive similarity or public confusion, the High Court dismissed the petition.

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4. Section 17 Trade Marks Act: Registration Grants Rights to Mark as a Whole
5. Bombay High Court Dismisses Rectification Seeking Rights Over Generic Terms
6. Eyetex Divya vs Divyam: High Court Ruling on Trademark Dissection
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8. Trademark Rectification and Aggrieved Person Status: Bombay HC Insights
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In this matter, the Title of the Case is Aravind Laboratories v. Manoj Agrawal and Anr.; the Date of Judgment is July 16, 2026; the Case Number is Commercial Miscellaneous Petition (L) No. 17853 of 2025; the Neutral Citation is 2026:BHC-OS:17853; the Name of Court is High Court of Judicature at Bombay; and the Name of Hon'ble Judge is Hon'ble Mr. Justice Somasekhar Sundaresan.

S. Prasannan Vs. Controller General of Patents,

Introduction:

The integrity of intellectual property rights often hinges on strict adherence to statutory procedures by administrative authorities. In trademark jurisprudence, the protection of a registered mark depends not only on the vigilance of the proprietor but also on the mandatory duties imposed by law on the trademark registry. This judgment addresses a crucial administrative oversight concerning the renewal of a trademark. The decision reinforces the principle that procedural safeguards designed to protect intellectual property owners must be strictly observed, holding that administrative authorities cannot penalize a proprietor or remove a registered mark without fulfilling their mandatory statutory obligations.

Factual and Procedural Background:

The petitioner operates a small enterprise named Vayalar Invention Centre, which manufactures Water Level Controllers under the brand name VIC. On 05.07.2005, the petitioner applied for the registration of the trademark VIC under Application Number 1368879. The trademark was subsequently registered under Certificate Number 682755 dated 26.02.2008, effective from the application date of 05.07.2005 for a period of ten years, thereby expiring on 05.07.2015.

The petitioner did not receive any statutory notice or intimation regarding the approaching expiration or renewal conditions from the trademark authority. Upon checking the online status of the trademark on 31.08.2017, the petitioner observed that the mark was still displayed as Registered, alongside an alert indicating that the mark was likely to be removed due to non-filing of a renewal request.

Attempts to file the renewal application online failed, leading the petitioner to submit a physical representation on 31.08.2017, accompanied by the prescribed renewal fee of ₹10,000/- via Demand Draft. The Assistant Registrar of Trademarks returned the renewal application via an undated return intimation (No. R & EDP 656), stating that the trademark had expired on 05.07.2017 and could not be renewed. Aggrieved by this rejection, the petitioner approached the High Court of Kerala by filing Writ Petition (Civil) No. 7528 of 2018.

Dispute Before the Court:

The primary question before the court was whether the trademark registry could lawfully refuse a renewal application and remove a trademark from the register when it failed to issue the mandatory statutory notice prior to expiration.

The petitioner contended that Section 25(3) of the Trade Marks Act, 1999, read with Rule 58 of the Trade Marks Rules, 2017, mandates the registry to issue a formal notice in Form O-3/RG-3 informing the registered proprietor of the expiration date and the applicable fee conditions. The petitioner argued that because no such notice was ever sent or received, the registry could not deny the renewal or remove the trademark.

Conversely, the respondents submitted that the petitioner failed to apply for renewal within the time limits prescribed by law. They maintained that the registration had expired on 05.07.2015 and that the renewal application submitted on 31.08.2017 was severely delayed. Consequently, the respondents argued that the return intimation was validly issued and that the mark was no longer eligible for renewal.

Reasoning and Analysis of the Court:

The court undertook a systematic examination of Section 25(3) of the Trade Marks Act, 1999, and Rule 58 of the Trade Marks Rules, 2017. Section 25(3) specifies that the Registrar shall send a notice in the prescribed manner to the registered proprietor prior to expiration, detailing the expiration date and the conditions for fee payment. The statutory proviso explicitly restricts the Registrar from removing the trademark from the register if the renewal application is submitted with the prescribed fee and surcharge within six months following expiration.

Furthermore, Rule 58(1) of the Trade Marks Rules, 2017, lays down that if no renewal application is received, the Registrar shall send a notice in Form RG-3 to the address for service not more than six months before the expiration date. The court noted that these provisions use mandatory statutory language, making the issuance of notice a prerequisite to removing a mark.

Upon reviewing the factual record, the court observed that the authorities failed to issue the mandatory notice in Form O-3 or Form RG-3 to the petitioner prior to the expiration date. The court reasoned that administrative statutory provisions established to safeguard proprietary rights must be complied with strictly by the authorities. In the absence of compliance with the mandatory requirement of issuing a notice under Section 25(3) of the Act and Rule 58 of the Rules, the authorities cannot be permitted to remove the trademark from the register or reject a renewal request on the ground of limitation.

Final Decision of the Court:

The High Court of Kerala allowed the writ petition and set aside the implicit removal and return intimation. The court directed the respondents to issue a fresh statutory notice to the petitioner in full compliance with Section 25(3) of the Trade Marks Act, 1999, and Rule 58 of the Trade Marks Rules, 2017.

The petitioner was directed to submit a fresh application for renewal along with the prescribed fee within the timeframe stipulated in the new notice. The court further ordered the respondents to consider and dispose of the renewal application strictly in accordance with law after affording the petitioner an opportunity of being heard.

Point of Law Settled:

This judgment reaffirms the legal principle that issuing a pre-expiration notice under Section 25(3) of the Trade Marks Act, 1999, read with Rule 58 of the Trade Marks Rules, 2017, is a mandatory statutory duty of the Registrar of Trademarks, not a discretionary administrative function. The failure of the trademark registry to issue this statutory notice prevents the authority from removing the trademark from the register or rejecting a renewal application as time-barred. This principle protects trademark owners from administrative lapses and ensures that procedural safeguards built into intellectual property legislation are rigorously enforced.

Title of the Case: S. Prasannan Vs. Controller General of Patents, Designs and Trademarks & Anr.

Date of Judgment: 24th July 2026

Case Number: WP(C) NO. 7528 OF 2018

Neutral Citation: 2026:KER:53702

Name of Court: High Court of Kerala at Ernakulam

Name of Hon'ble Judge: Hon'ble Mrs. Justice Shoba Annamma Eapen

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 S. Prasannan v. Controller General of Patents, Designs and Trademarks & Anr. (WP(C) No. 7528 of 2018, decided on 24th July 2026), the High Court of Kerala examined whether a registered trademark can be removed for non-renewal when the registry fails to send the statutory notice. The petitioner applied to renew trademark VIC, but the registry rejected the application as expired. The court held that issuing notice under Section 25(3) of the Trade Marks Act, 1999, and Rule 58 of the Trade Marks Rules, 2017, is mandatory. Without such notice, the registry cannot remove the mark. The court allowed the writ petition and directed the registry to issue a fresh notice and process the renewal.

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In this matter, the Title of the Case is S. Prasannan v. Controller General of Patents, Designs and Trademarks & Anr.; the Date of Judgment is 24th July 2026; the Case Number is WP(C) NO. 7528 OF 2018; the Neutral Citation is 2026:KER:53702; the Name of Court is the High Court of Kerala at Ernakulam; and the Name of Hon'ble Judge is Hon'ble Mrs. Justice Shoba Annamma Eapen.

The Bharat Bank Ltd. Vs Employees of The Bharat Bank Ltd

Introduction:

The constitutional ambit of the appellate power of the apex court over special administrative and statutory bodies underwent an authoritative examination in this landmark decision. The central issue revolved around whether an Industrial Tribunal, constituted under labor legislation, qualifies as a tribunal whose decisions can be challenged before the highest constitutional court under its extraordinary leave jurisdiction. Delivered shortly after the adoption of the Constitution, the judgment defined the boundaries of judicial oversight over quasi-judicial authorities, establishing that the rule of law permeates administrative adjudications where rights, liabilities, and duties are determined under statutory frameworks.

Factual and Procedural Background:

The dispute originated when the employees of a commercial banking enterprise submitted various demands regarding service conditions. Following an unfavorable response, the workmen commenced a strike on 9th March 1949. In response, the employer served notices requiring the workmen to resume duties, subsequently discharging several employees between 19th March and 24th March 1949 upon their failure to return.

To resolve these growing industrial disputes, the Central Government issued a notification under Section 7 of the Industrial Disputes Act, 1947, constituting an Industrial Tribunal comprising three members. Multiple matters were referred to this body under Section 10 of the Act, including Item 18 of Schedule II, which pertained to retrenchment and victimization. The proceedings regarding the Delhi branch were heard, culminating in an award dated 19th January 1950. The award found that 26 employees were improperly dismissed, ordered their reinstatement, and specified directions regarding salaries and allowances.

The award was published in the official Gazette on 4th February 1950 and declared binding for one year under Sections 15 and 19 of the Industrial Disputes Act. Significantly, the final award was signed by only two of the three constituted members of the Tribunal. Aggrieved by the award, the bank filed an application for special leave to appeal before the Supreme Court on 1st March 1950.

Dispute Before the Court:

The primary question before the apex court concerned its own jurisdiction under Article 136 of the Constitution. The respondents and the Central Government raised a preliminary objection, arguing that an Industrial Tribunal does not exercise the judicial power of the State and its award is not a judgment, decree, or judicial order, thereby making special leave incompetent.

The Union of India and the employees argued that the expression tribunal under Article 136 should be interpreted narrowly, referring only to bodies acting strictly as courts of justice. They urged that the Industrial Tribunal had no authority to pass an enforceable judgment by its own force, as its award acquired life only when declared binding by the Government under Section 15 of the Industrial Disputes Act. Furthermore, they contended that the Tribunal determines policy and creates new contractual rights rather than deciding existing legal rights according to established legal rules.

Conversely, the employer contended that the term tribunal in Article 136 is used in a wider sense than court. It was urged that the Industrial Tribunal is bound to act judicially, hear evidence, follow standard judicial procedure, and adjudicate disputes affecting valuable financial and civil rights. On the merits, the employer argued that the award was invalid because it was rendered by only two members without proper reconstitution under Section 8 of the Act, and that the finding of victimization was based on no legal evidence.

Reasoning and Analysis of the Court:

The Court carefully analyzed the constitutional schema of Article 136 in contrast with Articles 132, 133, and 134. It noted that while preceding articles restrict appeals to final judgments or orders of High Courts, Article 136 employs language of the widest amplitude, using terms like determination, cause or matter, and tribunal. The deliberate inclusion of tribunal alongside court demonstrates the intent to bring statutory adjudicatory bodies within the appellate oversight of the highest court to prevent miscarriages of justice.

In assessing the nature of an Industrial Tribunal, the majority held that although it is not a civil court in the conventional sense, it possesses all the essential attributes and trappings of a court. The statutory scheme under the Industrial Disputes Act, 1947, along with procedural rules, requires the Tribunal to take evidence on oath, enforce witness attendance, compel document production, allow cross-examination, and hear legal counsel. These procedural duties establish that the body functions as a judicial adjudicator rather than a mere executive or administrative authority.

Addressing the objection concerning Section 15 of the Industrial Disputes Act, the Court observed that where the Government is not a party, it has no discretion to alter, modify, or reject the award; it is statutorily mandated to declare the award binding. The underlying determination that alters rights or imposes liabilities is made exclusively by the Tribunal. The executive declaration merely gives operational enforceability to a completed judicial act.

The Court examined key foreign and domestic precedents on judicial power and administrative bodies. It referred to the English decision in Rex v. Electricity Commissioners, (1924) 1 KB 171, to hold that a proceeding does not lose its judicial character simply because its outcome requires executive confirmation or approval. The Court also reviewed Australian constitutional cases, including Waterside Workers Federation v. J.W. Alexander Ltd., (1918) 25 CLR 434, and Rola Co. (Australia) Pty. Ltd. v. The Commonwealth, (1944) 69 CLR 185, along with the Privy Council decision in Shell Co. of Australia v. Federal Commissioner of Taxation, (1931) AC 275. It observed that definitions under foreign federal constitutions based on rigid separation of powers do not restrict the specific phraseology of Article 136. The judgment also cited the Federal Court ruling in Western India Automobile Association v. Industrial Tribunal, (1949) FCR 321, acknowledging that while industrial tribunals can modify contracts and grant novel reliefs, they remain bound to act within statutory parameters and comply with principles of natural justice.

On the procedural challenge under the Industrial Disputes Act, the Court scrutinized Sections 7, 8, and 16. Section 16 mandates that the award must be in writing and signed by all members. Where a three-member tribunal hears the matter, an award signed by only two members without formal reconstitution of the tribunal by Government notification under Section 8 is defective. Proceeding to issue an award without the participation or signature of the third member violates peremptory statutory instructions and invalidates the determination. Additionally, making findings of victimization without supporting testimony, sworn affidavits, or basic evidentiary material violates basic principles of natural justice.

Final Decision of the Court:

By a majority decision, the Supreme Court overruled the preliminary objection regarding jurisdiction, holding that special leave applications against determinations of Industrial Tribunals are maintainable under Article 136 of the Constitution.

On the merits, the Court set aside the award concerning Item 18 of the reference due to fatal procedural defects, specifically the absence of signatures from all three members of the un-reconstituted Tribunal and the lack of proper legal evidence supporting the findings. The matter was remitted to the Tribunal, which was directed to re-adjudicate the specific dispute in accordance with law and natural justice. The appeal was accordingly allowed to this extent, with parties directed to bear their own costs.

Point of Law Settled:

This landmark decision settled the foundational rule that the term tribunal in Article 136 of the Constitution of India is not restricted to ordinary civil or criminal courts. Any statutory body or authority invested with the quasi-judicial power of the State to determine disputes, affect legal rights, or impose liabilities while following a judicial procedure falls within the appellate jurisdiction of the Supreme Court.

The judgment established that administrative and statutory tribunals must adhere strictly to their governing provisions and basic principles of natural justice. Arbitrary procedures, lack of legal evidence, or non-compliance with mandatory requirements regarding the composition and signing of awards by tribunal members vitiate the proceedings, exposing them to corrective judicial review under the extraordinary constitutional powers of the apex court.

Title of the Case: The Bharat Bank Ltd. Vs Employees of The Bharat Bank Ltd., Delhi

Date of Judgment: 26th May 1950

Case Number: Civil Appeal No. XXXIV of 1950

Neutral Citation: 1950 INSC 29 [or 1950 AIR 188 / 1950 SCR 459]

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Hiralal J. Kania, C.J., Saiyid Fazal Ali, M. Patanjali Sastri, Mehr Chand Mahajan, and B.K. Mukherjea, JJ.

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 Bharat Bank Ltd. Vs. Employees of The Bharat Bank Ltd., Delhi (Civil Appeal No. XXXIV of 1950, decided on 26th May 1950), the Supreme Court of India examined whether an Industrial Tribunal constituted under the Industrial Disputes Act, 1947, falls within the appellate scope of Article 136. The Court held by majority that Industrial Tribunals exercise quasi-judicial functions of the State, making their determinations appealable under Article 136. On the merits, the Court set aside the impugned reinstatement award because it was signed by only two of the three constituted members without formal reconstitution under Section 8, and lacked supporting legal evidence, remitting the matter for fresh adjudication.

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10. Legal Analysis: The Bharat Bank Ltd v Employees of Bharat Bank Ltd

In this matter, the Title of the Case is The Bharat Bank Ltd., Delhi v. Employees of The Bharat Bank Ltd., Delhi; the Date of Judgment is 26th May 1950; the Case Number is Civil Appeal No. XXXIV of 1950; the Neutral Citation is AIR 1950 SC 188 / 1950 SCR 459; the Name of Court is the Supreme Court of India; and the Name of Hon'ble Judge is Hiralal J. Kania, C.J., Saiyid Fazal Ali, M. Patanjali Sastri, Mehr Chand Mahajan, and B.K. Mukherjea, JJ.

Nahar Industrial Enterprises Ltd. Vs Hongkong & Shanghai Banking

Introduction:

The intersection between the jurisdiction of ordinary Civil Courts and special statutory tribunals frequently raises complex procedural questions in Indian jurisprudence. A recurring issue of significant legal importance is whether a High Court or the Supreme Court possesses the power to transfer an independent civil suit filed by a borrower against a bank or financial institution to a Debt Recovery Tribunal to be tried as a counterclaim or joint trial alongside the bank’s recovery application. This fundamental question, alongside the broader constitutional and statutory limits of tribunalization, formed the core theme of the landmark judgment delivered by the Supreme Court of India in the dispute between a corporate entity and a multinational banking corporation.

Factual and Procedural Background:

The controversy originated from transactions under an International Swaps and Derivatives Agreement. On 1 November 2006, the appellant debtor entered into a globally standardized Master Agreement published by the International Swaps and Derivatives Association with the respondent bank to undertake foreign exchange derivative transactions for hedging risk exposures. Out of ten transactions executed under the agreement, six were settled, matured, or expired, yielding an aggregate sum of 1.87 crore rupees to the debtor, and an additional 13 lakh rupees under two subsequent swap references dated 13 July 2007.

By 2 April 2008, four foreign exchange derivative transactions remained outstanding. On 3 April 2008, the debtor issued a letter purporting to disclaim and repudiate two specific derivative transactions dated 26 July 2007 and 30 July 2007. Subsequently, the debtor instituted a suit before the Civil Judge (Junior Division) at Ludhiana, marked as Civil Suit No. 108 of 2008, seeking a declaration that the two disputed derivative contracts were void and illegal as being violative of the Foreign Exchange Management Act, 2000, and Reserve Bank of India circulars. On 5 April 2008, the Civil Court passed an ad-interim order directing both parties to maintain status quo regarding the contracts.

Despite the status quo order, the respondent bank issued a termination notice on 12 April 2008 terminating the pending transactions. Thereafter, on 15 April 2008, the bank filed an original application under Section 19 of the Recovery of Debts Due to Banks and Financial Institutions Act, 1993 before the Debt Recovery Tribunal-III at Mumbai for recovery of dues under the other remaining transactions. On 24 April 2008, the bank filed another application before the same Debt Recovery Tribunal seeking recovery of dues under the disputed transactions dated 26 July 2007 and 30 July 2007.

The bank then filed a transfer application under Section 24 of the Code of Civil Procedure, 1908 before the High Court of Punjab and Haryana at Chandigarh. By an order dated 15 September 2008, the High Court allowed the transfer application, ordering the transfer of the civil suit pending in the Ludhiana Civil Court to the Debt Recovery Tribunal at Mumbai to be tried in the form of a counterclaim. Aggrieved by this decision, the debtor approached the Supreme Court. Connected transfer petitions were also filed by various banks seeking similar cross-border transfers. The Supreme Court stayed the operation of the High Court judgment and the proceedings before the tribunal while issuing notice.

Dispute Before the Court:

The primary legal issue presented for adjudication was whether a High Court or the Supreme Court has the power under Sections 22, 23, 24, or 25 of the Code of Civil Procedure, 1908, or under Section 31 of the Recovery of Debts Due to Banks and Financial Institutions Act, 1993, or under Article 142 of the Constitution of India, to transfer a pending civil suit from a Civil Court to a Debt Recovery Tribunal.

The debtor argued that the jurisdiction of ordinary Civil Courts is plenary under Section 9 of the Code of Civil Procedure and cannot be ousted without an express statutory provision. It was submitted that a Debt Recovery Tribunal is not a Civil Court, nor is it subordinate to the High Court within the structural hierarchy of Section 3 of the Code. Consequently, procedural provisions governing transfers between Civil Courts cannot apply. The debtor relied on established precedent stating that an independent suit filed by a borrower cannot be transferred to a tribunal as a counterclaim without the consent of the borrower.

In response, the bank contended that the claims of the bank and the debtor arose out of the same underlying Master Agreement and were inextricably linked. The bank submitted that the definition of debt under Section 2(g) of the 1993 Act encompasses liabilities arising from business activities, which fall exclusively within the domain of the tribunal. It was argued that post-2000 and 2004 statutory amendments to Section 19 of the Act, the tribunal possessed full jurisdiction to adjudicate set-offs and counterclaims. The bank asserted that the Courts possessed inherent powers or constitutional jurisdiction under Article 142 to direct transfers to prevent multi-forum litigation and avoid conflicting judicial outcomes.

Reasoning and Analysis of the Court:

The Supreme Court undertook a detailed statutory analysis of the Code of Civil Procedure, 1908, and the Recovery of Debts Due to Banks and Financial Institutions Act, 1993. Analyzing Section 9 of the Code, the Court observed that the jurisdiction of a Civil Court is plenary in nature and covers all civil disputes unless expressly barred or impliedly excluded by statute. Sections 17 and 18 of the 1993 Act bar the jurisdiction of Civil Courts solely in respect of applications initiated by banks and financial institutions for the recovery of debts. The statute contains no provision barring a borrower from initiating an independent suit against a bank in a Civil Court, nor does it confer jurisdiction on the tribunal to entertain independent suits filed by debtors.

The Court examined the statutory mechanics of Section 31 of the 1993 Act, noting that automatic transfer of cases from Civil Courts to the tribunal was strictly restricted to proceedings pending on the date the Act came into force. The statute contains no express provision authorizing the transfer of subsequent civil suits to the tribunal.

Addressing the procedural transfer provisions under Sections 22, 23, 24, and 25 of the Code, the Court held that these powers apply exclusively to transfers from one Civil Court to another Civil Court. Reaffirming the legal framework established in prior binding rulings, the Court clarified that Section 23 of the Code is merely a procedural forum-specifying provision, whereas Section 25 contains substantive power.

To evaluate whether a Debt Recovery Tribunal could be considered a Civil Court for transfer purposes, the Court examined the fundamental attributes of judicial forums. It held that while all Courts are tribunals, all tribunals are not Courts, and a tribunal having the trappings of a Court does not automatically transform into a Civil Court. Civil Courts belong to an established judicial hierarchy governed by Section 3 of the Code and regional civil court statutes, with full appeal structures to High Courts. Conversely, tribunals under the 1993 Act are sui generis statutory bodies governed by principles of natural justice rather than the full rigor of the Code or the Indian Evidence Act, 1872. They cannot pass a decree, but can only issue recovery certificates, and their processes lack full-fledged civil trial mechanics. Consequently, tribunals do not fall within the hierarchy of Civil Courts subordinate to the High Court under Section 3 of the Code.

The Court extensively reviewed precedent regarding the transfer of independent suits. It addressed three major decisions:

In United Bank of India v. Abhijit Tea Co. Pvt. Ltd. (2000) 7 SCC 357, the Court had allowed the transfer of a debtor's suit on the premise that the claims were inextricably connected and constituted a counterclaim under Section 19.

In Indian Bank v. ABS Marine Products (P) Ltd. (2006) 5 SCC 72, a coordinate Bench clarified Abhijit Tea, ruling that an independent suit filed by a borrower can be transferred to a tribunal to be tried as a counterclaim only if two mandatory conditions are met conjunctively: first, the subject matter of the two proceedings must be inextricably connected; and second, both parties, specifically including the borrower, must expressly consent to the transfer.

In State Bank of India v. Ranjan Chemicals Ltd. (2007) 1 SCC 97, another coordinate Bench had held that joint trials could be ordered without party consent under inherent powers.

Analyzing these conflicting authorities, the Supreme Court held that Ranjan Chemicals failed to observe judicial discipline. Under established principles of precedent articulated in Union of India v. Raghubir Singh (1989) 2 SCC 754 and Central Board of Dawoodi Bohra Community v. State of Maharashtra (2005) 2 SCC 673, a coordinate Bench is bound by earlier decisions of equal Bench strength. If Ranjan Chemicals disagreed with Indian Bank, its only lawful recourse was to refer the matter to a larger Bench rather than departing from it. The Court confirmed that the two requirements outlined in Indian Bank—inextricable connection and express consent of both parties—are conjunctive and must both be satisfied.

Finally, regarding Article 142 of the Constitution of India, the Court held that extraordinary constitutional powers cannot be exercised to bypass express statutory provisions or to oust the statutory jurisdiction of Civil Courts without legal authority. Statutory rights of appeal enjoyed by litigants in ordinary civil suits, which might otherwise be burdened by onerous pre-deposit requirements under tribunal appeals, cannot be stripped away indirectly.

Final Decision of the Court:

The Supreme Court allowed the civil appeal, setting aside the judgment and order dated 15 September 2008 passed by the High Court of Punjab and Haryana in Transfer Application No. 186 of 2008. The order transferring the civil suit from the Civil Court at Ludhiana to the Debt Recovery Tribunal at Mumbai was quashed. The civil suit before the Civil Judge (Junior Division), Ludhiana was restored to its original file to proceed in accordance with law. The connected transfer petitions filed by banks seeking cross-transfers of civil suits to tribunals were dismissed.

Point of Law Settled:

This judgment firmly establishes that neither a High Court nor the Supreme Court has the statutory power under Sections 22 to 25 of the Code of Civil Procedure, 1908, to transfer an independent civil suit pending before a Civil Court to a Debt Recovery Tribunal. A Debt Recovery Tribunal is a specialized tribunal and not a Civil Court subordinate to the High Court within the scheme of Section 3 of the Code. The jurisdiction of Civil Courts over independent suits filed by borrowers is plenary and remains unbarred by Sections 17 and 18 of the 1993 Act. An independent suit instituted by a borrower against a bank can be transferred to a Debt Recovery Tribunal to be tried as a counterclaim or joint proceeding only if the subject matter is inextricably connected and both parties, including the borrower, explicitly consent to such transfer.

Title of the Case: Nahar Industrial Enterprises Ltd. Vs Hongkong & Shanghai Banking Corporation

Date of Judgment: 29 July 2009

Case Number: Civil Appeal No. 4796 of 2009 (Arising out of SLP (C) No. 24715 of 2008) with Transfer Petition (C) Nos. 1195, 1196, and 1207-1209 of 2008

Neutral Citation: NCW072009996

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Justice S.B. Sinha and Justice Asok Kumar Ganguly

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 Nahar Industrial Enterprises Ltd. v. Hongkong & Shanghai Banking Corp., Civil Appeal No. 4796 of 2009, decided on 29 July 2009, the Supreme Court of India examined whether a High Court or the Supreme Court possesses the power to transfer an independent civil suit pending in a Civil Court to a Debt Recovery Tribunal. The High Court of Punjab and Haryana had transferred a borrower's civil suit from Ludhiana to the Debt Recovery Tribunal at Mumbai. Reversing the High Court order, the Supreme Court held that a Debt Recovery Tribunal is not a Civil Court subordinate to the High Court under Section 3 of the Code of Civil Procedure, 1908. Sections 22 to 25 of the Code do not empower Courts to transfer civil suits to tribunals. An independent suit can only be transferred with the explicit consent of the borrower. The appeal was allowed.

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The Title of the Case is Nahar Industrial Enterprises Ltd. v. Hongkong & Shanghai Banking Corporation; the Date of Judgment is 29 July 2009; the Case Number is Civil Appeal No. 4796 of 2009; the Neutral Citation is NCW072009996; the Name of Court is Supreme Court of India; and the Name of Hon'ble Judge is Justice S.B. Sinha and Justice Asok Kumar Ganguly.

Associated Cement Companies Ltd. Vs. P. N. Sharma

Introduction:

The fundamental boundaries of appellate jurisdiction and judicial power under the Constitution of India form a pivotal domain of administrative and constitutional jurisprudence. A recurring point of adjudication involves determining which statutory bodies or state departments qualify as tribunals under Article 136(1) of the Constitution. The landmark ruling of the Supreme Court of India in Associated Cement Companies Ltd. v. P. N. Sharma addressed this precise conceptual framework. The dispute arose when a corporate entity challenged a State Government order passed in an appellate capacity under state welfare officer recruitment rules. The Supreme Court undertook an exhaustive analysis to define the essential tests that transform an executive or administrative authority into a judicial tribunal, while simultaneously evaluating the contractual and statutory rights surrounding employee discharge.

Factual and Procedural Background:

The appellant company operated multiple cement factories, including the Bhupendra Cement Works at Surajpur within the State of Punjab. Under Section 49(1) of the Factories Act, 1948, read with the Punjab Welfare Officers Recruitment and Conditions of Service Rules, 1952, the company was required to employ a Welfare Officer. The first respondent was appointed to this post on March 2, 1956. The formal letter of appointment contained express contractual stipulations stating that the employee was subject to transfer across any unit of the company and that his services could be terminated by giving one month's notice or one month's salary in lieu thereof.

Having served across various units, the first respondent was posted at Bhupendra Cement Works on June 26, 1960. Subsequently, the management ordered his transfer to the Kymore Works in Madhya Pradesh. The employee expressed reluctance and failed to report to the transferred location. Following prolonged correspondence, the employer issued a letter on September 26, 1961, informing him that due to his failure to join at Kymore, his services stood terminated with one month's salary in lieu of notice alongside accrued dues.

Aggrieved by this termination, the first respondent filed an appeal before the State of Punjab, designated as the appellate authority under Rule 6(6) of the 1952 Rules. Upon receiving notice, the employer submitted its written statement disputing the maintainability and merits of the appeal. On July 4, 1962, the State Government issued an appellate order in the name of the Governor of Punjab, directing the immediate reinstatement of the first respondent. The employer then approached the Supreme Court of India by seeking special leave to appeal against the State Government's order under Article 136(1) of the Constitution.

Dispute Before the Court:

The proceedings before the Supreme Court raised both preliminary jurisdictional objections and core substantive questions on statutory interpretation.

The preliminary objection raised by the employee questioned the competence of the appeal under Article 136(1) of the Constitution. It was contended that the State Government, while exercising appellate administrative powers under Rule 6(6) of the 1952 Rules, did not constitute a tribunal. The employee argued that Article 136(1) applies strictly to courts or tribunals possessing traditional judicial characteristics, which the executive government lacked.

On the merits, the employer raised two primary contentions. First, it argued that the second proviso to Rule 6(3)—which required the prior concurrence of the Labour Commissioner before imposing major punishments—was ultra vires Section 49(2) of the Factories Act, 1948, as it exceeded the rule-making power to regulate conditions of service. Second, the employer asserted that the statutory appeal under Rule 6(6) was entirely incompetent because the termination was a simple bona fide discharge in terms of the employment contract, rather than a punitive dismissal or termination intended as a punishment.

Reasoning and Analysis of the Court:

The Court engaged in a comprehensive statutory analysis regarding the scope of Article 136(1) and the statutory scheme of the Factories Act, 1948. In addressing the preliminary jurisdictional challenge, the Court delineated the distinct roles played by courts, administrative authorities, and tribunals. The Court observed that while courts form part of the ordinary hierarchy of civil judicature, tribunals share the essential characteristic of being invested with the inherent judicial power of the State.

Evaluating various judicial doctrines, the Court noted that the presence or absence of the traditional trappings of a court—such as the power to compel witness attendance or enforce formal procedural rules—is not the decisive criterion. The primary and essential test is whether the adjudicating authority has been constituted by a statute or statutory rule and entrusted with the State's inherent judicial function to resolve a dispute between contesting parties. The Court emphasized that where a statute creates a forum to determine a legal controversy featuring a clear assertion and denial of rights, an obligation to act judicially is created. Because Rule 6(5) and Rule 6(6) confer appellate authority on the State Government to render a final and binding decision affecting civil rights, the State Government functions as a tribunal under Article 136(1).

Examining the validity of Rule 6, the Court rejected the employer's contention that the rule was ultra vires. The Court held that the phrase conditions of service in Section 49(2) of the Factories Act, 1948, carries wide import. Conditions of service encompass the terms under which employment may be brought to an end, including statutory safeguards designed to secure tenure. Requiring prior concurrence from the Labour Commissioner or providing an appellate mechanism to prevent arbitrary dismissals falls squarely within the rule-making mandate of the State Government.

However, on the application of Rule 6(6) to the facts, the Court found in favor of the employer. The statutory appellate remedy under Rule 6(6) is explicitly restricted to instances where a punitive measure enumerated under Rule 6(3), specifically dismissal or punitive termination, has been inflicted. The Court analyzed the contractual stipulations in the letter of appointment dated March 2, 1956, and the termination letter dated September 26, 1961. The employer had exercised its explicit contractual right to terminate employment by offering one month's salary in lieu of notice.

The Court observed that every discharge from service does not automatically constitute a punishment. While courts reserve the right to look behind the formal surface of an order to check for hidden punitive intent or mala fides, the record demonstrated that the employer acted bona fide. When the employee declined to carry out the transfer to Kymore, the employer deliberately chose to issue a simple order of discharge to avoid casting any slur on the employee's record. Because the discharge was non-punitive, Rule 6(3) was un-attracted, rendering the employee's appeal to the State Government incompetent and the resulting reinstatement order completely void for lack of jurisdiction.

Final Decision of the Court:

The Supreme Court rejected the preliminary objection regarding maintainability, holding that the State Government exercising appellate powers under Rule 6(6) acts as a tribunal under Article 136(1) of the Constitution. On the substantive merits, the Court held that the employee's termination was a simple contractual discharge and not a punishment under Rule 6(3). Consequently, the appeal preferred before the State Government was incompetent. The Supreme Court allowed the appeal filed by the company and set aside the appellate order of reinstatement passed by the State Government on July 4, 1962, on the ground that it was passed without jurisdiction. The parties were directed to bear their own costs.

Point of Law Settled:

This judgment firmly establishes the foundational test for defining a tribunal under Article 136(1) of the Constitution of India. It settles that an authority qualifies as a tribunal if it is constituted by a statute or statutory rule and invested with the inherent judicial power of the State to adjudicate civil rights and disputes between parties, irrespective of whether it possesses the formal trappings of a court. Additionally, the ruling clarifies that statutory rules restricting employee dismissal fall within the ambit of conditions of service under factory legislation. However, statutory appellate remedies designed for punitive actions cannot be invoked in cases of bona fide simple contractual discharge.

Title of the Case: Associated Cement Companies Ltd. v. P. N. Sharma and Another Date of Judgment: 09.12.1964 Case Number: Civil Appeal No. 44 of 1964 Neutral Citation: 1965 AIR 1595 / 1965 SCR (2) 366 Name of Court: Supreme Court of India Name of Hon'ble Judge: P.B. Gajendragadkar C.J., M. Hidayatullah J., J.C. Shah J., S.M. Sikri J., and R.S. Bachawat J.

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:

Associated Cement Companies Ltd. Vs. P. N. Sharma and Another, Supreme Court of India, Civil Appeal No. 44 of 1964, decided on 09.12.1964. The employer challenged an order of the State Government passed under Rule 6(6) of the Punjab Welfare Officers Recruitment and Conditions of Service Rules, 1952, reinstating a Welfare Officer whose services were terminated via contractual discharge. A preliminary objection was raised that the State Government was not a tribunal under Article 136(1). The Supreme Court held that the State Government exercising statutory appellate power acts as a tribunal as it is invested with the State's judicial power. On merits, the Court held that a bona fide contractual discharge is not a punishment, making the statutory appeal incompetent. The appeal was allowed and the reinstatement order was set aside.

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6. Supreme Court Ruling on Conditions of Service Under Factories Act 1948
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8. Legal Analysis of Associated Cement Companies Ltd v PN Sharma 1964
9. Maintainability of Special Leave Petitions Against State Appellate Orders
10. Trappings of a Court Not Decisive for Tribunal Status: Supreme Court

The Title of the Case is Associated Cement Companies Ltd. v. P. N. Sharma and Another, the Date of Judgment is 09.12.1964, the Case Number is Civil Appeal No. 44 of 1964, the Neutral Citation is 1965 AIR 1595 / 1965 SCR (2) 366, the Name of Court is Supreme Court of India, and the Name of Hon'ble Judge is P.B. Gajendragadkar C.J., M. Hidayatullah J., J.C. Shah J., S.M. Sikri J., and R.S. Bachawat J.

Italfarmaco SPA Vs. Deputy Controller of Patents

Introduction:

The maintainability of intra-court appeals within High Courts often presents complex statutory interplay, particularly when specialized intellectual property legislation intersects with commercial court laws. The dispute in this case involves an Italian company seeking to challenge an order of a single judge of the High Court that had affirmed the rejection of its patent application. The fundamental question was whether an intra-court appeal lies before a Division Bench of the High Court under Clause 15 of the Letters Patent against a judgment rendered by a single judge sitting in statutory appeal under Section 117A of the Patents Act, 1970. This ruling comprehensively clarifies the relationship between the Letters Patent, the Patents Act, 1970, and the overriding nature of Section 13 of the Commercial Courts Act, 2015.

Factual and Procedural Background:

The appellant, Italfarmaco SPA, an Italian entity, filed patent application number 10810/CHENP/2012 before the Patent Office. The Deputy Controller of Patents and Designs passed an order under Section 15 of the Patents Act, 1970, refusing the grant of the patent. Aggrieved by this rejection, the appellant preferred a statutory appeal under Section 117A of the Patents Act, 1970, before the High Court of Madras. This appeal was registered as Civil Miscellaneous Appeal CMA(PT) No. 45 of 2023. By an order dated December 20, 2024, the learned single judge dismissed the appeal and upheld the decision of the Deputy Controller.

Desiring to challenge this decision further within the High Court, the appellant lodged an Original Side Appeal, registered under SR number OSA(CAD)SR. No. 72443 of 2025, before the Commercial Appellate Division. The appeal was instituted under Section 13 of the Commercial Courts Act, 2015, read with Clause 15 of the Letters Patent. Upon scrutiny, the High Court Registry raised a maintainability objection, questioning how an intra-court appeal under Clause 15 of the Letters Patent could be maintained against a judgment passed in a civil miscellaneous appeal that arose from an administrative statutory tribunal order. The matter was placed before the Division Bench on December 12, 2025, to determine the maintainability of the appeal.

Dispute Before the Court:

The core legal question before the Court was whether an intra-court appeal before a Division Bench is maintainable against a judgment delivered by a single judge exercising appellate jurisdiction under Section 117A of the Patents Act, 1970, in conjunction with Section 13 of the Commercial Courts Act, 2015, and Clause 15 of the Letters Patent.

The appellant argued that the order passed by the single judge in the civil miscellaneous appeal should be treated as an order-in-original. It was contended that because the single judge was evaluating the correctness of the decision of the Deputy Controller of Patents and Designs, the nature of the proceedings was akin to a writ petition, thereby attracting the intra-court appeal remedy under Clause 15 of the Letters Patent. The appellant also relied on Section 13 of the Commercial Courts Act, 2015, pointing out that intellectual property disputes regarding patents are classified as commercial disputes under the law, thereby entitling the aggrieved party to file an appeal before the Commercial Appellate Division. Conversely, the statutory framework indicated that Section 13 of the Commercial Courts Act, 2015, strictly limits appellate remedies and overrides any contrary provisions contained in the Letters Patent.

Reasoning and Analysis of the Court:

The Court engaged in a detailed statutory analysis of Section 117A of the Patents Act, 1970, Section 13 of the Commercial Courts Act, 2015, and Clause 15 of the Letters Patent. The Court emphasized that in the absence of an explicit statutory provision conferring a right of intra-court appeal, no such appeal can be entertained.

The Court observed that Section 117A of the Patents Act, 1970, specifically creates an appellate forum before the High Court against decisions of the Patent Office. In the present dispute, the Deputy Controller of Patents and Designs passed an order under Section 15 of the Patents Act, 1970, and the appellant appropriately exercised its statutory remedy under Section 117A before a single judge of the High Court.

Addressing the appellant’s reliance on the Commercial Courts Act, 2015, the Court acknowledged that disputes concerning patents fall within the definition of a commercial dispute under Section 2(1)(xvii) of the Act. However, the Court highlighted that the Commercial Courts Act is a special enactment whose appellate scheme is specifically defined under Chapter IV.

Analyzing Section 13 of the Commercial Courts Act, 2015, the Court noted that while Section 13(1A) allows appeals from judgments or orders of a Commercial Division to the Commercial Appellate Division, this right is governed and limited by the proviso to Section 13(1A) as well as Section 13(2). The proviso restricts appeals to only those orders specifically enumerated under Order XLIII of the Code of Civil Procedure, 1908, or Section 37 of the Arbitration and Conciliation Act, 1996. Crucially, Section 13(2) contains an express non-obstante clause stipulating that notwithstanding anything contained in any other law or the Letters Patent of a High Court, no appeal shall lie from any order or decree of a Commercial Division or Commercial Court otherwise than in accordance with the provisions of the Commercial Courts Act.

The Court concluded that Section 13 of the Commercial Courts Act, 2015, intentionally overrides the Letters Patent. Consequently, Clause 15 of the Letters Patent cannot be invoked to bypass the statutory limits imposed by Section 13. The Court emphasized that stretching or expanding the scope of the Commercial Courts Act beyond its explicit language would defeat the very objective of the statute, which aims at streamlined and expedited commercial dispute resolution. Since an appeal under Section 117A of the Patents Act, 1970, is a statutory first appeal heard by a single judge, no second intra-court appeal lies to a Division Bench under the guise of the Letters Patent or the Commercial Courts Act.

Final Decision of the Court:

The High Court affirmed the maintainability objection raised by the Registry. The Court held that the intra-court appeal under Clause 15 of the Letters Patent read with Section 13 of the Commercial Courts Act, 2015, was not maintainable against the judgment of the single judge passed under Section 117A of the Patents Act, 1970. Accordingly, the Original Side Appeal filed at the SR stage, bearing OSA(CAD)SR. No. 72443 of 2025, was rejected.

Point of Law Settled:

This judgment reaffirms the principle that Section 13(2) of the Commercial Courts Act, 2015, expressly overrides Clause 15 of the Letters Patent. Where a single judge of a High Court decides a statutory appeal under Section 117A of the Patents Act, 1970, no further intra-court appeal lies before a Division Bench or the Commercial Appellate Division. The judgment clarifies that the appellate framework under Section 13 of the Commercial Courts Act, 2015, is exhaustive, and parties cannot create an additional layer of intra-court appeal using the Letters Patent when the statutory scheme does not provide for one.

Title of the Case: Italfarmaco SPA Vs. Deputy Controller of Patents & Designs Date of Judgment: 12.12.2025 Case Number: OSA.(CAD)SR. No. 72443 of 2025 Neutral Citation: Not Available in Source Order Name of Court: High Court of Judicature at Madras Name of Hon'ble Judge: Justice S.M. Subramaniam and Justice C. Kumarappan

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:

Italfarmaco SPA v. Deputy Controller of Patents & Designs, High Court of Judicature at Madras, OSA.(CAD)SR. No. 72443 of 2025, decided on 12.12.2025. The appellant filed an intra-court appeal under Section 13 of the Commercial Courts Act, 2015, read with Clause 15 of the Letters Patent, challenging an order of a single judge passed under Section 117A of the Patents Act, 1970. The Registry raised an objection regarding maintainability. The High Court held that Section 13(2) of the Commercial Courts Act expressly overrides the Letters Patent. Since an intra-court appeal against an order passed in a statutory appeal under Section 117A is not provided under Section 13 of the Commercial Courts Act or Order XLIII of the CPC, the appeal was held not maintainable and was rejected.

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5. Italfarmaco SPA v. Deputy Controller of Patents: Key Takeaways on Patent Appeals
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8. Madras High Court Rejects Intra-Court Appeal in Patent Grant Rejection Case
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The Title of the Case is Italfarmaco SPA v. Deputy Controller of Patents & Designs, the Date of Judgment is 12.12.2025, the Case Number is OSA.(CAD)SR. No. 72443 of 2025, the Neutral Citation is Not Available in Source Order, the Name of Court is High Court of Judicature at Madras, and the Name of Hon'ble Judge is Justice S.M. Subramaniam and Justice C. Kumarappan.

Cipla Limited Vs Union of India

Third Party has no locus in Trademark Renewal Proceeding

Introduction:

The procedural mechanics governing trademark restoration and renewal often present intricate questions regarding the locus standi of third parties. When a registered trademark is removed from the register due to non-renewal and subsequently restored by the Trade Marks Registry following judicial intervention, third parties operating in the same domain frequently seek to intervene. The High Court of Delhi examined these principles in a dispute involving the trademark NO DARAR in Class 5. The court addressed whether a third party alleging prejudice has a legal right to be impleaded in a writ petition concerning the administrative restoration and renewal of a trademark between the registered proprietor and the Trade Marks Registry.

Factual and Procedural Background:

The petitioner, Cipla Limited, filed a writ petition seeking a writ of mandamus or certiorari directing the respondents, including the Union of India and the Trade Marks Registry, to restore its trademark registration bearing application number 1694972 for the mark NO DARAR in Class 5, which had been registered on February 7, 2011. The petitioner further sought permission to file an application for the renewal of the said trademark.

During the initial proceedings, the Central Government Standing Counsel appearing for the Registrar of Trade Marks submitted that although the statutory O-3 Notice was uploaded on the official website, its dispatch tracking report was untraceable. Consequently, without adjudicating the dispute on merits, the High Court disposed of the writ petition , permitting the petitioner to submit an application for restoration and renewal along with the prescribed fees within two weeks, directing the Registrar to proceed in accordance with law.

The petitioner subsequently filed an application seeking modification of the order , pointing out that the Trade Marks Registry had updated the status of the trademark application on its official website from Removed to Registered. Taking note of the Registry's compliance, the High Court disposed of the modification application on May 30, 2025, as withdrawn, observing that no further directions were necessary since the mark was reflected as registered.

Thereafter, an applicant third party challenged the order dated May 14, 2025, before the Supreme Court of India via Special Leave Petition SLP(C) No. 24856/2025. The Supreme Court disposed of the SLP on August 29, 2025, observing that the applicant was not a party before the High Court and granting liberty to the applicant to file an appropriate application before the High Court to demonstrate how the order caused grave prejudice. Pursuant to this liberty, the applicant filed two interlocutory applications before the High Court: CM 298/2025 under Order I Rule 10 of the Code of Civil Procedure, 1908, seeking impleadment as a party, and CM 299/2025 under Section 151 of the Code of Civil Procedure, 1908, seeking recall of the order dated May 14, 2025. Arguments on these applications were heard, leading to the judgment dated July 27, 2026.

Dispute Before the Court:

rights of a third party to intervene in writ proceedings dealing strictly with administrative renewal and restoration of a trademark between the proprietor and the Registry.

The applicant argued that the Supreme Court’s order dated August 29, 2025, conferred an absolute right to be heard on the merits of the dispute rather than merely seeking leave to demonstrate locus standi. Relying on Rule 60 of the Trade Marks Rules, 2017, the applicant contended that the restoration and renewal of the petitioner’s mark were carried out without following statutory due process. The applicant asserted that it was a necessary and proper party because the restoration perpetuated the petitioner's trademark to the severe prejudice of the applicant’s commercial interests.

Conversely, the petitioner and the Trade Marks Registry contended that the core issue in the writ petition pertained strictly to the administrative bilateral relationship between the registered proprietor and the Registry regarding non-service of the mandatory O-3 notice. They submitted that the petition involved a right in personam. They asserted that a third party is a rank outsider to renewal proceedings and has no locus standi to seek impleadment in a disposed-of writ petition. The proper statutory remedy for any aggrieved third party, they argued, was to file an independent rectification application under the Trade Marks Act rather than intervening in administrative renewal matters.

Reasoning and Analysis of the Court:

The High Court undertook an analysis of the statutory framework governing party impleadment under Order I Rule 10(2) of the Code of Civil Procedure, 1908. The Court emphasized that for a party to be added to a proceeding, its presence must be necessary to enable the court to effectually and completely adjudicate upon and settle all questions involved in the suit. Reaffirming settled procedural jurisprudence, the Court noted that a necessary party is one without whom no effective order can be made, whereas a proper party is one whose presence is indispensable for a complete and final decision.

In evaluating the facts, the Court observed that the writ petition was confined to the administrative non-action or procedural lapses of the Trade Marks Registry regarding the restoration of Application No. 1694972 in Class 5. The petitioner had raised no assertions, grounds, or prayers against any third party. Consequently, the matter pertained exclusively to a right in personam between the trademark owner and the statutory authority. The Court held that the applicant was a rank outsider with no direct connection to the subject matter of the writ petition.

Addressing the applicant’s reliance on the Supreme Court’s order, the High Court clarified that the Supreme Court had merely granted liberty to the applicant to approach the High Court and establish whether it was a necessary and proper party. The order did not automatically grant impleadment or bypass the threshold requirements of Order I Rule 10 of the Code of Civil Procedure.

Regarding the applicant’s contention that the Registry failed to follow Rule 60 of the Trade Marks Rules, 2017, and that the order dated May 14, 2025, allowed the Registry to perpetuate the mark, the Court held that these submissions pertained to subsequent actions taken by the Registry. Such subsequent administrative steps fell outside the scope and jurisdiction of the disposed-of writ petition. The Court held that the applicant was estopped from challenging subsequent administrative acts through interlocutory applications in a closed writ proceeding.

To reinforce its reasoning, the Court relied on the decisions in  Epsilon Publishing House Pvt. Ltd. v. Union of India & Ors., 2017 SCC OnLine Del 10607 (affirmed by the Division Bench in 2018 SCC OnLine Del 7625) and the Division Bench ruling of the Bombay High Court in Motwane Private Limited v. Registrar of Trade Marks & Anr., 2024 SCC OnLine Bom 661. These precedents established that trademark renewal is strictly a matter between the Trade Marks Registry and the registered proprietor. The question of considering third-party rights at the stage of renewal or restoration does not arise. If a third party is aggrieved by the registration or restoration of a trademark, its remedy lies in initiating independent rectification proceedings as provided under the statute, rather than seeking to participate in the renewal process.

The Court acknowledged the legal principles laid down in precedents cited by the applicant, including M/s. Chopra Hotels Private Limited v. Harbinder Singh Sekhon & Ors., 2026 INSC 335, Prabodh Verma & Ors. v. State of Uttar Pradesh & Ors., (1984) 4 SCC 251, and Times Publishing House Limited v. The Assistant Registrar of Trade Marks & Ors., W.P.(C) No. 23545/2005 (order dated December 14, 2006). However, the Court distinguished them on facts, holding that the applicant failed to show their applicability to a bilateral administrative renewal dispute.

Final Decision of the Court:

The High Court dismissed the application for impleadment under Order I Rule 10 of the Code of Civil Procedure, 1908 (CM 298/2025) and the application for recall under Section 151 of the Code of Civil Procedure, 1908 (CM 299/2025). The Court held that the applicant failed to establish its status as a necessary or proper party. Consequently, the application seeking a stay of the order dated May 30, 2025 (CM 297/2025) was also dismissed as nothing survived for adjudication. The Court made no order as to costs and clarified that the applicant remained at liberty to pursue appropriate statutory remedies, such as rectification proceedings, in accordance with law.

Point of Law Settled:

This judgment reinforces that trademark restoration and renewal proceedings before the Trade Marks Registry, as well as writ petitions challenging administrative defaults in such processes, constitute matters strictly in personam between the registered proprietor and the Trade Marks Registry. Third parties have no locus standi to intervene or seek impleadment under Order I Rule 10 of the Code of Civil Procedure, 1908, in proceedings concerning trademark renewal or restoration. Any third party aggrieved by the restoration or continued presence of a trademark on the register must exhaust independent statutory remedies, such as filing a rectification application under the Trade Marks Act, rather than interrupting bilateral administrative or judicial proceedings regarding renewal.

Title of the Case: Cipla Limited Vs Union of India & Ors.

Date of Judgment: July 27, 2026

Case Number: W.P.(C)-IPD 23/2025 

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Saurabh Banerjee

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:

Cipla Limited v. Union of India & Ors. (W.P.(C)-IPD 23/2025, High Court of Delhi, Judgment dated July 27, 2026). The petitioner filed a writ petition seeking restoration and renewal of its trademark NO DARAR in Class 5 due to untraceable O-3 notice dispatch records, which was disposed of permitting renewal steps. An applicant third party sought impleadment under Order I Rule 10 CPC and recall of the order, alleging prejudice. The High Court dismissed the applications, holding that trademark renewal is strictly a matter in personam between the proprietor and the Registry. Third parties are neither necessary nor proper parties in renewal writ petitions and must pursue independent statutory rectification remedies.

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N.Ranga Rao & Sons Vs. Sree Annapoorna Agro Foods

Trademark Protection Beyond Allied Goods

Introduction:

The protection of trademarks under intellectual property jurisprudence often faces complex questions when a widely recognized mark used for one class of products is adopted by another trader for completely different, non-competing goods. The dispute between an established manufacturer of incense sticks and a regional producer of edible vegetable oils highlights the delicate statutory balance between actual product similarity, well-known brand reputation, and trademark dilution. The judgment rendered by the Division Bench of the High Court of Judicature at Madras offers a crucial examination of trademark protection under Section 29(4) of the Trade Marks Act, 1999, which extends rights over registered marks against their unauthorized use on dissimilar goods.

Factual and Procedural Background:

The plaintiff, originally founded in 1948 as a proprietary concern, was subsequently converted into a partnership firm and ultimately incorporated as a private limited company in 2014. The business initially adopted the trademark CYCLE in the year 1954 primarily in relation to agarbathies and incense sticks. Over several decades of continuous, extensive commercial use, nationwide advertising, and substantial sales turnover, the brand expanded globally to export markets spanning over forty countries. Additionally, the plaintiff obtained registrations for the trademark CYCLE and its corresponding cycle device under various classes, including Classes 29 and 30 in respect of food products, on a proposed-to-be-used basis.

The defendant, a business operating under the trade name Sree Annapurna Agro Foods in Erode, commenced manufacturing and marketing edible vegetable oils under the identical trademark CYCLE and a cycle device in the year 2009. Upon learning of the defendant's commercial use of the mark in Class 29, the plaintiff instituted a commercial suit, C.S. No. 259 of 2017, before the Single Judge of the High Court of Judicature at Madras. The suit prayed for permanent injunctions to restrain trademark infringement and passing off, rendition of accounts of profits, surrender and destruction of offending labels and dies, and costs.

On August 17, 2021, the learned Single Judge dismissed the suit with costs. The trial Court observed that the distinctiveness built by the plaintiff pertained specifically to Cycle Brand Agarbathies rather than the standalone word CYCLE. It further reasoned that CYCLE, being a common dictionary word, could not confer a broad monopoly over all product classes; that incense sticks and edible oils were neither allied nor cognate goods; that the plaintiff failed to show actual commercial use in Classes 29 and 30; and that the defendant was the prior user of the mark specifically in the domain of edible oils. Aggrieved by this dismissal, the plaintiff preferred an appeal, O.S.A.(CAD) No. 3 of 2022, under Order 13 Rule 1 of the Commercial Courts Act read with Clause 15 of the Letters Patent. The appeal was heard and reserved on June 24, 2026, and judgment was pronounced on July 28, 2026.

Dispute Before the Court:

The primary legal and factual questions presented before the High Court revolved around whether a proprietor of a renowned mark for a specific category of goods can restrain another entity from using the identical mark on completely different, non-allied products.

The plaintiff contended that its trademark CYCLE had been continuously used since 1954 and had attained secondary meaning and distinctiveness, elevating it to the status of a well-known mark. It argued that under Section 29(4) of the Trade Marks Act, 1999, protection extends to dissimilar goods if the registered mark enjoys reputation in India and the unauthorized use takes unfair advantage of or dilutes its distinctive character without due cause. The plaintiff asserted that the defendant offered no plausible or honest explanation for adopting the identical word mark and cycle device, meaning the adoption was dishonest and aimed at piggybacking on the plaintiff's reputation.

Conversely, the defendant argued that the plaintiff had only ever utilized the mark for incense sticks and agarbathies, whereas its registrations under Classes 29 and 30 were merely on a proposed-to-be-used basis and vulnerable to cancellation for non-use. The defendant asserted that CYCLE is a generic dictionary word incapable of monopolization across all consumer categories. Furthermore, because edible oils and agarbathies appeal to different senses, namely taste versus smell, and are completely non-cognate, the defendant claimed there was no possibility of public confusion. The defendant maintained that it was the prior commercial user of the mark in the edible oil category, having used it continuously since 2009.

Reasoning and Analysis of the Court:

The Division Bench undertook a thorough evaluation of the statutory framework, evidentiary records, and established legal precedents to assess whether the trial Court erred in dismissing the suit.

Addressing the defendant's contention regarding the word CYCLE being a generic dictionary term, the Bench reaffirmed the settled position of law that common or descriptive words can, through long, continuous, and extensive commercial use, acquire a strong secondary significance. Once a mark transcends its primary ordinary meaning and becomes exclusively associated in the public mind with a specific business, it earns full statutory protection against unauthorized adoption. To reinforce this legal proposition, the Court analyzed the decision of the Supreme Court of India in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147, where the word Mahindra was protected due to decades of acquired distinctiveness despite competing claims. It also referred to T.V. Venugopal v. Ushodaya Enterprises Ltd. and Another, (2011) 4 SCC 85, where the Supreme Court held that even a descriptive term like Eenadu was entitled to strong protection against a third party attempting to ride on its goodwill, even in non-identical product categories.

The Court scrutinised the trial Court's reliance on the argument that incense sticks and edible oils are not cognate or allied goods. The Bench explained that while product similarity is a critical consideration in classical infringement and passing off actions, Section 29(4) of the Trade Marks Act, 1999, specifically caters to situations involving dissimilar goods or services. Under Section 29(4), infringement occurs if three conditions are satisfied: first, the rival mark is identical or similar to the registered mark; second, the mark is used for dissimilar goods or services; and third, the registered mark holds a reputation in India such that the unauthorized use without due cause takes unfair advantage of, or is detrimental to, its distinctive character or repute.

To clarify the evolving cross-product scope of passing off and trademark protection, the Court relied on the Full Bench judgment of the High Court of Calcutta in Sony Kabushiki Kaisha v. Mahaluxmi Textile Mills, 2009 SCC OnLine Cal 531. The Full Bench had overruled older rigid authorities, holding that in modern commerce, consumers often assume that a reputed brand expanding into different product categories originates from the same source. Thus, absolute dissimilarity of goods does not automatically defeat a protection claim if the mark carries substantial reputation and its unauthorized use causes dilution or consumer association.

Evaluating the evidence, the Bench noted that the plaintiff had established continuous adoption since 1954, backed by registered certificates, widespread nationwide advertising, international exports, and prior court rulings recognizing the mark's extensive goodwill. Consequently, the distinctiveness belonged to the mark CYCLE itself and was not strictly limited to agarbathies.

On the question of whether the defendant had due cause under Section 29(4), the Bench evaluated the testimony of the defendant's sole witness. During cross-examination, the witness admitted that the defendant operated under various brand names over time but failed to produce any documentary evidence or state in the written statement any specific reason why the mark CYCLE was adopted in 2009 for edible oils. There was no connection between the word CYCLE and the defendant's name, family background, or geographic origin. In the absence of a bona fide explanation, the adoption of an identical mark with a similar cycle device was deemed to be without due cause, intended to take unfair advantage of the plaintiff's established reputation.

However, the Court distinguished between statutory infringement under Section 29(4) and the common law remedy of passing off. It observed that passing off requires misrepresentation in the course of trade leading to actual deceit or confusion regarding the origin of goods. Given the complete absence of proof of actual consumer deceit and the disparate nature of the trade channels, the claim for passing off was not made out. Similarly, the claim for rendition of accounts of profits was rejected due to lack of evidence quantifying any financial gains derived by the defendant.

Final Decision of the Court:

The Division Bench partly allowed the appeal, setting aside the judgment and decree dated August 17, 2021, passed in C.S. No. 259 of 2017. The Court granted a permanent injunction restraining the defendant, its agents, dealers, distributors, or any person acting on its behalf from manufacturing, marketing, advertising, selling, or dealing in edible oils or any other goods under the trademark CYCLE, the cycle device, or any other mark identical or deceptively similar to the plaintiff's registered mark.

Point of Law Settled:

This judgment reaffirms that under Section 29(4) of the Trade Marks Act, 1999, a registered trademark possessing a established reputation in India is protected against unauthorized adoption even on completely dissimilar or non-cognate goods. The ruling establishes that when an identical mark is adopted by a subsequent user for different products, the burden rests squarely on the defendant to prove honest, bona fide adoption supported by due cause. A mere claim of arbitrary choice or prior use within an unrelated product class, without a plausible explanation connecting the choice to the user's business, does not constitute due cause and cannot override the statutory rights of a reputed mark against trademark dilution and unfair advantage.

Title of the Case: N.Ranga Rao & Sons Private Ltd. Vs. Sree Annapoorna Agro Foods

Date of Judgment: 28/07/2026

Case Number: O.S.A.(CAD) No. 3 of 2022

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon'ble Mr. Justice P. Velmurugan and Hon'ble Mrs. Justice K. Govindarajan Thilakavadi

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:

N.Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods (O.S.A.(CAD) No. 3 of 2022, High Court of Judicature at Madras, Judgment dated 28/07/2026). The appellant, a long-standing manufacturer of incense sticks under the registered trademark CYCLE since 1954, challenged the trial Court's dismissal of its suit against the respondent for using the identical mark and device for edible oils since 2009. The High Court held that under Section 29(4) of the Trade Marks Act, 1999, protection extends to dissimilar goods when a mark enjoys reputation and the adoption lacks due cause. Because the respondent failed to offer a bona fide explanation for adopting the identical mark, the adoption was deemed to unfairly exploit the appellant's reputation. The appeal was partly allowed, granting a permanent injunction and destruction of offending materials while rejecting passing off and monetary claims.

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