| 1 | The suit should be stayed because, if the Commercial Court decrees it summarily under Order XIII-A, the pending appeal against the interim order would become infructuous “The only contention of Mr. Khan is that, if the learned Commercial Court allows the application under Order XIII-A and decrees the suit summarily, this appeal would become infructuous.” Para 5 (submission) | “The mere fact that an appeal against an interim order is pending, cannot be a basis to stay the suit, unless there is some challenge to the manner in which the suit itself is proceeding.” Para 6, Shasmith Technologies Pvt Ltd v. Max Healthcare Institute Ltd, FAO (COMM) 111/2024, decided 28.03.2025, 2025:DHC:2180-DB non-IP / unspecified commercial matter |
| 2 | PPL, as the owner of the assigned sound recordings, is entitled in law to permit their exploitation on its own terms “PPL is entitled, in law, to permit exploitation of the sound recordings, of which it is the legitimate owner, on its own terms.” Para 17.3 (submission) | “We, therefore, are unable to accept the principle that PPL was entitled, without either registering itself as a copyright society or becoming a member of any registered copyright society, to issue licenses in respect of the sound recordings assigned to it under Section 18(1) of the Copyright Act.” Para 24.1, Azure Hospitality Pvt Ltd v. Phonographic Performance Ltd, FAO(OS) (COMM) 41/2025, decided 15.04.2025, 2025:DHC:2561-DB |
| 3 | A voluntary licensor acting under Section 30 is subject to no fetter and may license its works on its own terms “A voluntary licensee acts under Section 30, and there is no fetter on such a licencee providing licenses for the work in which he holds copyright on its own, uncanalized, terms.” Para 17.5 (submission) | “Thus, the right conferred by Section 30 is also made subject to Section 33(1).” Para 22, Azure Hospitality Pvt Ltd v. Phonographic Performance Ltd, FAO(OS) (COMM) 41/2025, decided 15.04.2025, 2025:DHC:2561-DB |
| 4 | The proviso to Section 33(1) preserves intact the assignee-owner's right to license works assigned to it, as these are 'its own works' “PPL’s contention is that the proviso to Section 33(1) preserves, intact, its right to grant licences in respect of its own works.” Para 19.26 (submission) | “which expression has necessarily to be contradistinguished with the works of which he claims ownership merely as an assignee under Section 18(2)” Para 21(ix), Azure Hospitality Pvt Ltd v. Phonographic Performance Ltd, FAO(OS) (COMM) 41/2025, decided 15.04.2025, 2025:DHC:2561-DB |
| 5 | The plaintiff's registered trade mark had 'died' through disuse and could not found an infringement action “on account of disuse, the trademark asserted by Pneumo Care had died, and could not constitute a basis for infringement action” Para 17 (submission) | “Without having the mark removed from the register, however, we are clear in our mind that no one can infringe the mark and, thereafter, plead, as a defence to infringement, that the mark had "died" by non-user.” Para 21.5, Oxygun Health Pvt Ltd & Ors v Pneumo Care Health Pvt Ltd & Anr, RFA(COMM) 271/2025, decided 13.05.2025, 2025:DHC:3897-DB |
| 6 | The learned Single Judge could not have broken up the features of the defendant's new design when comparing it with the registered designs; the article had to be seen as a whole vis-à-vis the registered design. “Mr. Mehta contends that the learned Single Judge could not have broken up the features of design of the new proposed self-inking stamp of the respondent while effecting a comparison with the registered designs of the appellant.” Para 8 (submission) | “While we are aware of the principle regarding comparison of rival marks as a whole in trade mark law, there is no such inflexible principle in design law.” Para 9, Trodat GmbH & Anr v. Addprint India Enterprises Pvt Ltd & Anr, FAO(OS) (COMM) 93/2025, decided 20.05.2025, 2025:DHC:4270-DB |
| 7 | The damages to which the plaintiff is entitled need not be specifically computed and claimed in the pleadings. “Mr. Pachnanda sought to submit that the damages to which the Plaintiff is entitled need not be specifically computed and claimed in the pleadings.” Para 137 (submission) | “The basis for the claim for damages are, at all costs, to be contained in the pleadings of the Plaintiff. It cannot be reserved for evidence. It is a legal truism that evidence cannot traverse the pleadings.” Para 138, Amazon Technologies Inc v. Lifestyle Equities CV & Anr, RFA(OS)(COMM) 11/2025, decided 01.07.2025, 2025:DHC:5036-DB |
| 8 | In view of the proviso to Order VII Rule 2 CPC, no amendment of the plaint was needed to enhance a claim relating to mesne profits or damages. “He, however, submits that in view of the proviso to Order VII Rule 2 of the CPC, there was no need for such amendment, where the claim related to mesne profits or damages.” Para 100 (submission) | “In that view of the matter, the proviso to Order VII Rule 2 of the CPC would not apply, and the main provision, which requires the precise claim to be quantified in the suit, would apply with all force.” Para 176, Amazon Technologies Inc v. Lifestyle Equities CV & Anr, RFA(OS)(COMM) 11/2025, decided 01.07.2025, 2025:DHC:5036-DB |
| 9 | Order VII Rule 7 CPC supported the award of damages in excess of the amount claimed in the plaint. “Mr. Pachnanda also relies, in this context, on Order VII Rule 7 of the CPC.” Para 98 (submission) | “Order VII Rule 7, plainly, does not apply, as it exempts a plaintiff from requiring to claim “general or other relief”, apart from the specific relief sought in the plaint.” Para 177, Amazon Technologies Inc v. Lifestyle Equities CV & Anr, RFA(OS)(COMM) 11/2025, decided 01.07.2025, 2025:DHC:5036-DB |
| 10 | As suit papers had been forwarded to the defendant before and after issuance of summons, it had deliberately absented itself and could not complain of being proceeded ex parte, though formal service of summons was not shown. “In these circumstances, Mr. Pachnanda’s submission is that the learned Single Judge was correct in holding that Amazon Tech deliberately absented itself from the proceedings and cannot, now, therefore, seek to raise a grievance that it was proceeded ex parte.” Para 171 (submission) | “No amount of service, on the defendant, of the papers relating to the suit, by the plaintiff, absent actual summons issued by the suit, can compel a defendant, in law, to enter appearance. The law does not permit a defendant to be proceeded ex parte, even before summons in the suit are served on it.” Para 173, Amazon Technologies Inc v. Lifestyle Equities CV & Anr, RFA(OS)(COMM) 11/2025, decided 01.07.2025, 2025:DHC:5036-DB |
| 11 | Since the infringing logo appeared on the same apparel that bore the licensor's SYMBOL brand, the licensor could not distance itself from liability for infringement. “Inasmuch as the infringing logo also figured on the same t-shirts, he submits that Amazon Tech could not distance itself from liability in the matter.” Para 95 (submission) | “In our considered view, the said plea, which has apparently found favour with the learned Single Judge in the impugned judgment, has no basis in law.” Para 144, Amazon Technologies Inc v. Lifestyle Equities CV & Anr, RFA(OS)(COMM) 11/2025, decided 01.07.2025, 2025:DHC:5036-DB |
| 12 | As the marks are practically identical, Section 29(2)(c) read with Section 29(3) applies and confusion must be presumed. “Mr. Anand submits that the present case attracts Section 29(2)(c)” Para 19.3 (submission) | “Any difference between the rival marks, howsoever infinitesimal, would exclude the applicability of Section 29(2)(c).” Para 25.1.13, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 13 | Having never used CONTIN per se despite its registration, the plaintiff cannot maintain an infringement action based on that registration. “Having obtained a trademark registration for the mark CONTIN, Mr. Gupta points out that the appellant has, in fact, never used CONTIN as its registered trademark for any product.” Para 20.5 (submission) | “registration, even by itself, assures the appellant of the right to relief against infringement. Use of the registered trademark is not necessary.” Para 25.9.10, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 14 | As registered proprietor of the CONTIN family of marks, the plaintiff is entitled to an injunction against every person using CONTIN as part of the name of a pharmaceutical preparation. “the appellant is entitled to maintain an action for infringement against every person who uses CONTIN as part of the name of his pharmaceutical preparation and is entitled to an injunction against such use.” Para 19.6 (submission) | “Even if, therefore, the benefit of the family of marks principle is extended to the appellant, the sequitur cannot be that the appellant would be entitled to an injunction against the use, by every third party, of CONTIN as a part of any trade mark, whether for pharmaceutical preparations or otherwise.” Para 25.11.13, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 15 | Because the drugs are Schedule H drugs dispensed only on prescription, there is no likelihood of confusion. “Registered medical practitioners are classically supposed to know their job and, therefore, there was no likelihood of confusion.” Para 20.6 (submission) | “the mere fact that the products may be Schedule H drugs, or may be differently priced, does not mitigate the possibility or likelihood of confusion.” Para 26.2.9, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 16 | The suit was barred by delay and laches and ought to have been dismissed on that ground alone (cross-objections). “are both hit by delay and laches and ought to have been dismissed even on that sole ground.” Para 20.1 (submission) | “delay and laches on a plaintiff’s part cannot disentitle a plaintiff to injunction, where infringement is found to have taken place.” Para 24.14, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 17 | The plaintiff acquiesced in the respondents' continued use of FEMICONTIN, which acquired reputation over time, so no injunction can be granted. “the appellant is guilty of acquiescence, as it has allowed the respondent to continue to use the impugned FEMICONTIN mark and acquired a reputation by such usage over a period of time.” Para 20.2 (submission) | “Firstly, the later trade mark, i.e. the trade mark which the plaintiff desires to see injuncted, must be a registered trade mark. FEMICONTIN is not a registered trade mark.” Para 28.2.5, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 18 | No monopoly can be granted over a mark that combines a generic prefix (FE) with a descriptive suffix (CONTIN). “the Court cannot grant a monopoly, to the appellant, over a mark which is merely a combination of a generic prefix and a descriptive suffix.” Para 20.3 (submission) | “The issue of whether the appellant’s FECONTIN-F mark is descriptive, suggestive or otherwise, is actually irrelevant, insofar as the aspect of infringement, and the appellant’s right to injunction against the respondents, is concerned.” Para 26.1.7, Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd, RFA(OS)(COMM) 8/2023, decided 01.07.2025, 2025:DHC:5039-DB |
| 19 | Even on the learned Single Judge's reading, para 43 of Carlsberg would be obiter and not binding. “Mr. Sai Deepak sought to submit, at length, that, even if the interpretation placed by the learned Single Judge on para 43 of the judgment in Carlsberg were to be treated as correct, it would merely constitute obiter and would not, therefore, be binding.” Para 25 (submission) | “We confess that we are inclined to agree with Mr. Rajagopal, to the extent that para 43 of Carlsberg cannot be regarded as obiter, dealing, as it does, with the scope of the passing off action.” Para 25, Crocs Inc USA v. Bata India Ltd & connected matters, RFA (OS) (Comm) 22/2019, decided 01.07.2025, 2025:DHC:5037-DB |
| 20 | Where the parties' goods are neither identical nor allied or cognate, a passing off plaintiff must establish a much higher degree of goodwill, akin to the reputation required under Section 29(4) of the Trade Marks Act. “to succeed in a case of passing off, based on prior use of the concerned mark for goods which were different from the goods in respect of which the defendant used the mark, the degree of goodwill which was required to be established by the plaintiff was much higher” Para 54 (submission) | “The most basic error that this submission suffers from, is in its overlooking the fact that Section 29 of the Trade Marks Act deals with infringement, whereas we are concerned with a case of passing off.” Para 102, VIP Industries Ltd v. Carlton Shoes Ltd & connected matters, FAO(OS) (COMM) 151/2023, decided 01.07.2025, 2025:DHC:5042-DB |
| 21 | Goodwill for passing off must be shown in the mark as used for the particular goods (here, travel luggage), so CSL's goodwill in CARLTON for footwear could not support an injunction against VIP's use for luggage. “He submits that the goodwill earned by CSL in the CARLTON mark, by then, was only with respect to its use for footwear, and the goodwill earned by CSL by such use would not entitled to maintain an action for passing off, against VIP, seeking an injunction against the use of the mark CARLTON by VIP for travel luggage” Para 98 (submission) | “We, therefore, cannot accept Mr. Sibal’s submission that, for a passing off action, the goodwill that is required to be proved is in the name or mark when used in connection with particular goods or services.” Para 114, VIP Industries Ltd v. Carlton Shoes Ltd & connected matters, FAO(OS) (COMM) 151/2023, decided 01.07.2025, 2025:DHC:5042-DB |
| 22 | There are degrees of goodwill: only very famous marks (e.g. Mercedes-Benz, Mont Blanc) have goodwill independent of the goods, while other marks have goodwill only as used with particular goods. “marks such as Mercedes-Benz or Mont Blanc, have acquired such a high degree of goodwill, that the goodwill resides in the mark independent of the goods or services in connection with which it is used.” Para 111 (submission) | “We cannot distinguish between goodwill as applicable to “reputed” marks, as compared to goodwill as applicable to less reputed marks, for the purposes of passing off.” Para 112, VIP Industries Ltd v. Carlton Shoes Ltd & connected matters, FAO(OS) (COMM) 151/2023, decided 01.07.2025, 2025:DHC:5042-DB |
| 23 | CSL was disentitled to injunctive relief because of its delay in suing after VIP's long use of the mark for luggage. “CSL was well aware of the said use and had sat back and allowed VIP to continue to use the mark for 15 years, before seeking to capitalize on VIPs reputation by itself venturing into the travel luggage segment.” Para 59 (submission) | “This issue stands answered, against VIP, by para 16 of the judgment of the Supreme Court in Heinz Italia, on which Mr. Sethi correctly placed reliance” Para 138, VIP Industries Ltd v. Carlton Shoes Ltd & connected matters, FAO(OS) (COMM) 151/2023, decided 01.07.2025, 2025:DHC:5042-DB |
| 24 | Section 17 (anti-dissection) bars the respondents from claiming exclusivity over 'Liv' as part of the composite mark 'Liv.52' “Mr. Upadhyay's contention is that, therefore, no exclusivity could be claimed for 'Liv', as any such claim would violate Section 17.” Para 37 (submission) | “Thus, the anti-dissection rule contained in Section 17 is subject to the dominant part test.” Para 40, Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, RFA(OS)(COMM) 18/2025, decided 04.07.2025, 2025:DHC:5307-DB |
| 25 | 'Liv' is common to the trade, as shown by numerous 'Liv'-formative marks on the Register of Trade Marks, and cannot be monopolised “'Liv', as a part of marks used for pharmaceutical preparations is, therefore, according to him, common to the trade and, therefore, cannot be monopolised by anyone, including the respondents.” Para 56 (submission) | “Mere reference to registrations, present on the Register of the Registrar of Trade Marks, are entirely insufficient in this regard. These registrations do not even indicate actual user of the registered marks.” Para 62, Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, RFA(OS)(COMM) 18/2025, decided 04.07.2025, 2025:DHC:5307-DB |
| 26 | Differences in colour combination, visual appearance, dosage form, price and packaging rule out infringement “The colour combination of the marks, and their visual appearance, are distinct and different.” Para 20 (submission) | “"Added features", such as the visual dissimilarity between the marks, difference in packaging, difference in price, and the like, therefore, are of no relevance to a claim of infringement.” Para 50, Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, RFA(OS)(COMM) 18/2025, decided 04.07.2025, 2025:DHC:5307-DB |
| 27 | The Trade Marks Act must be applied consistently with Article 19(1)(g) and does not confer monopolies “It has to be implemented in accordance with Article 19(1)(g)” Para 22 (submission) | “Article 19(1)(g) certainly does not entitle anyone to, while carrying on its business or profession, do so by infringing the registered trademark of another.” Para 73, Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, RFA(OS)(COMM) 18/2025, decided 04.07.2025, 2025:DHC:5307-DB |
| 28 | Absence of a written statement does not by itself entitle the court to decree the suit under Order VIII Rule 10 without evidence “Mr. Upadhyay also submits that the learned Single Judge was in error in proceeding on the basis of Order VIII Rule 10 of the CPC.” Para 25 (submission) | “it is well settled that, in a matter of trademark infringement, where the comparison is on a word mark to word mark basis, it is the judge's perception which matters, and it is not a matter to be decided by leading of evidence.” Para 68, Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, RFA(OS)(COMM) 18/2025, decided 04.07.2025, 2025:DHC:5307-DB |
| 29 | As the respondent's drug licence stood suspended/cancelled, it could not commercially exploit the registered mark and was therefore not entitled to an injunction. “The submission is that, as the Drug License issued to the respondent stands suspended, the respondent is not in a position to commercially exploit the asserted MARKS GO trademark and, therefore, was not justified in seeking an injunction against the appellant.” Para 2 (submission) | “There is no provision, in the Trade Marks Act, which can deem a registered trademark not to be registered, or divest the proprietor of a registered trade mark from the rights conferred by Section 28(1) as a consequence of such registration, merely because the mark is not in commercial use.” Para 15, Kamal Raheja v. Hahnemann Pure Drug Co., FAO (COMM) 105/2025, decided 08.07.2025, 2025:DHC:5613-DB |
| 30 | Since the plaintiff had pleaded in its plaint and specifications that IN'417 was an improvement over prior art, the initial onus to establish the improvement/novelty lay on the plaintiff “the learned Commercial Court could not be said to have been in error in holding that the initial onus to establish that the suit patent IN’417 was an improvement over the earlier patent held by the appellant was on the appellant.” Para 28 (submission) | “The onus was, therefore, on the defendant to establish that the suit patent lacked novelty vis-a-vis prior art.” Para 60, Mold Tek Packaging Ltd v. Pronton Plast Pack Pvt Ltd, FAO (COMM) 114/2024, decided 11.07.2025, 2025:DHC:5549-DB |
| 31 | If the matter were remanded, the Court should also set aside the original ex parte ad interim order and send the matter back to the Order XXXIX Rules 1 and 2 stage “the case should be sent back to the Order XXXIX stage.” Para 29 (submission) | “we cannot tinker, in this appeal, with the ex parte ad interim order dated 20 December 2023. That order is not under challenge before us.” Para 30, Mold Tek Packaging Ltd v. Pronton Plast Pack Pvt Ltd, FAO (COMM) 114/2024, decided 11.07.2025, 2025:DHC:5549-DB |
| 32 | The suit was bad for want of territorial jurisdiction of the learned Commercial Court. “Ms. Singh also sought to submit that the suit instituted by the respondent was bad for want of territorial jurisdiction.” Para 15.1 (submission) | “the submission of Ms. Singh that the suit was bad for want of territorial jurisdiction is also not tenable in law.” Para 15.8, Suman Devi & Anr v. Rakesh Kumar Sharma, FAO (COMM) 189/2025, decided 25.07.2025, 2025:DHC:6149-DB |
| 33 | As the respondent was transacting business with the appellants, it could not seek an injunction against them. “Ms. Ishtha Singh’s third submission was that the respondent was transacting business with the appellants and could not, therefore, seek an injunction against the appellants.” Para 16.1 (submission) | “Thus, the fact that the respondent may, or may not, have been transacting business with the appellants, is entirely irrelevant while assessing the respondent’s entitlement to injunction.” Para 16.4, Suman Devi & Anr v. Rakesh Kumar Sharma, FAO (COMM) 189/2025, decided 25.07.2025, 2025:DHC:6149-DB |
| 34 | The respondent's non-use of its registered MAYO marks for 30 years after registration disentitled it to an injunction “despite having obtained registrations for the MAYO and MAYO CLINIC marks in 1992, there was no use, by the respondent, of the said marks, for 30 years till 2022.” Para 24.3 (submission) | “Whether the plaintiff uses or does not use the registered mark, is entirely irrelevant.” Para 27.3, Bodhisattva Charitable Trust v. Mayo Foundation for Medical Education and Research, FAO(OS) (COMM) 73/2024, decided 28.07.2025, 2025:DHC:6317-DB |
| 35 | The respondent was disentitled to injunction on the principle of acquiescence under Section 33(1) of the Trade Marks Act “Mr. Sud further sought to submit that the respondent had disentitled itself to any injunctive relief even on the principle of acquiescence,” Para 24.2 (submission) | “In the first place, Section 33, which deals with the effect of acquiescence, applies only to a registered trademark.” Para 28.1, Bodhisattva Charitable Trust v. Mayo Foundation for Medical Education and Research, FAO(OS) (COMM) 73/2024, decided 28.07.2025, 2025:DHC:6317-DB |
| 36 | The appellants' priority of user of MAYO defeated the claim for infringement “Mr. Sud has sought to contend that the appellants enjoyed priority of user, over the respondent, with respect to the mark MAYO.” Para 24.1 (submission) | “Priority of user is not a defence to an action for infringement. It becomes a defence only if it falls within the parameters of Section 34 of the Trade Marks Act.” Para 31, Bodhisattva Charitable Trust v. Mayo Foundation for Medical Education and Research, FAO(OS) (COMM) 73/2024, decided 28.07.2025, 2025:DHC:6317-DB |
| 37 | K. Narayanan v. S. Murali is confined to passing off and does not govern infringement suits founded on the defendant's trade mark application. “He submits that Narayanan was not a case involving infringement of trade mark, but was a case involving passing off.” Para 12 (submission) | “Mr. Bansal’s attempt at seeking to argue that the decision in Narayanan has to be rendered as restricted to passing off does not impress us.” Para 16, Deepak Kumar Khemka v. Yogesh Kumar Jaiswal, RFA(COMM) 381/2025, decided 28.07.2025, 2025:DHC:6176-DB |
| 38 | Until the larger Bench decides the reference made in Abros Sports International v. Ashish Bansal, the Division Bench decision in Raj Kumar Prasad v. Abbott Healthcare (that an infringement action lies against a registered trade mark) continues to be the law. “Till the larger bench pronounces its verdict, Mr. Mehta would seek to contend that Raj Kumar Prasad continues to remain the law.” Para 8.11 (submission) | “We cannot agree. Raj Kumar Prasad was rendered prior to Syed Mohideen. In any event, as Syed Mohideen is a judgment of the Supreme Court, the decision of the Division Bench in Raj Kumar Prasad has to cede place to it.” Para 8.12, Keller Williams Realty, Inc. v. Dingle Buildcons Pvt Ltd & Ors, FAO(OS) (COMM) 120/2022, decided 06.08.2025, 2025:DHC:7395-DB |
| 39 | The respondent contended that, having priority of registration and of use of VAIDRISHI over the appellant's registered mark VAIDYA RISHI, the case was plainly one of infringement and an injunction must follow. “He submits that the case is plainly one of infringement, as the respondent has priority of registration as well as of use of the VAIDRISHI mark over the appellant’s VAIDYA RISHI mark and that, therefore, an injunction must follow.” Para 15 (submission) | “No injunction on the ground of infringement can therefore, be granted.” Para 19.12, M/s Vaidya Rishi India Health Pvt Ltd & Anr v. Suresh Dutt Parashar & Ors, FAO (COMM) 122/2024, decided 07.08.2025, 2025:DHC:6644-DB |
| 40 | Section 35 of the Trade Marks Act applies only to infringement and cannot bar an injunction granted on the ground of passing off, which is a common law tort outside the Act. “Section 35 of the Act has no application, as the present case is of passing off, and relates, therefore, to a tort which is outside the purview of the Act.” Para 32 (submission) | “The submission of Mr. Sagar Chandra that Section 35 does not apply where injunction is being sought on the ground of passing off, is, therefore, not acceptable and is accordingly rejected.” Para 48, Vasundhra Jewellers Pvt Ltd v. Vasundhara Fashion Jewellery LLP, FAO(OS) (COMM) 232/2023, decided 18.08.2025, 2025:DHC:7193-DB |
| 41 | The protection of Section 35 is available only where the defendant uses her or his full name, and not part of it. “the protection under Section 35 is available only where the defendant is using her, or his, full name.” Para 33 (submission) | “Mr. Sagar Chandra’s submission that the protection under Section 35 would be available only if the respondents were to use the full name “Vasundhara Mantri”, therefore, merely has to be stated to be rejected.” Para 53, Vasundhra Jewellers Pvt Ltd v. Vasundhara Fashion Jewellery LLP, FAO(OS) (COMM) 232/2023, decided 18.08.2025, 2025:DHC:7193-DB |
| 42 | A statement made to the Trade Marks Registry in prosecuting an application that was later abandoned cannot operate as estoppel; Raman Kwatra applies only where registration was obtained on the statement. “A statement made before the Trademarks Registry during prosecution of an application for registration, which was ultimately abandoned, according to Mr. Sagar Chandra, cannot operate as estoppel.” Para 69 (submission) | “The fact that, in that case, the application had proceeded to registration, in our view, cannot dilute the applicability of the ratio decidendi of the decision.” Para 73, Vasundhra Jewellers Pvt Ltd v. Vasundhara Fashion Jewellery LLP, FAO(OS) (COMM) 232/2023, decided 18.08.2025, 2025:DHC:7193-DB |
| 43 | The plaintiff, as senior user of VASUNDHRA, was entitled to an injunction against the later user of VASUNDHARA. “the appellant was the “senior user” of the mark VASUNDHRA, as compared to the user of the mark VASUNDHARA by the respondents.” Para 76 (submission) | “The fact that the appellant was the senior user, vis-à-vis the respondents, is irrelevant in a passing off action, sans the existence of sufficient goodwill.” Para 77, Vasundhra Jewellers Pvt Ltd v. Vasundhara Fashion Jewellery LLP, FAO(OS) (COMM) 232/2023, decided 18.08.2025, 2025:DHC:7193-DB |
| 44 | Parenthesised reference numerals in claims cannot be used as aids to construction and do not limit claim scope (relying on Virgin Atlantic v. Premium Aircraft). “Mr. Choubey further submits that the parenthesized numerals in the description of the claims cannot be used as aids to their understanding.” Para 15 (submission) | “we reject, at the very outset and unequivocally, Mr. Choubey‘s contention that numerical references, contained in the complete specifications or in the claims, as granted, can be ignored.” Para 21.1, Jay Switches (India) Pvt Ltd v. Sandhar Technologies Ltd & Ors, FAO(OS) (COMM) 6/2025, decided 19.08.2025, 2025:DHC:7085-DB |
| 45 | The ox-with-grinder motif was common to the trade/publici juris because several registered device marks used it, one dating back to 1973 “there are several registered device marks which incorporate the same motif, of which one dates back to 1973, prior to the first use of the mark by the respondent in 1986.” Para 21(iii) (submission) | “The attempt of Ms. Trehan to contend that the ox-with-grinder logo is common to the trade, by placing on record a plenitude of marks having similar features is legally unsound, for more than one reason.” Para 26.3.1, Madan Lal Purushottam Das Foods Pvt Ltd v B.L. Agro Industries Ltd, FAO (COMM) 234/2025, decided 28.08.2025, 2025:DHC:7772-DB |
| 46 | The ox-with-grinder device was descriptive of the product, so its use was protected by Section 30(2)(a) “Ms. Trehan also sought to contend that the ox-with-grinder logo was descriptive of the nature of the product under which it was sold, viz. extracted mustard oil, and that, therefore, the use of the logo by the appellant could not be treated as infringing, in view of Section 30(2)(a) of the Trade Marks Act.” Para 27.1 (submission) | “The defence under Section 30(2)(a) is available only to descriptive, and not to suggestive, marks.” Para 27.8, Madan Lal Purushottam Das Foods Pvt Ltd v B.L. Agro Industries Ltd, FAO (COMM) 234/2025, decided 28.08.2025, 2025:DHC:7772-DB |
| 47 | Visual differences between the packaging of the rival products negated infringement “Ms. Trehan sought to point out that there is a distinction between the manner in which the two products are packed” Para 28.1 (submission) | “that aspect would be of no relevance while assessing an infringement claim. An infringement claim has to be assessed by comparing mark to mark.” Para 28.1, Madan Lal Purushottam Das Foods Pvt Ltd v B.L. Agro Industries Ltd, FAO (COMM) 234/2025, decided 28.08.2025, 2025:DHC:7772-DB |
| 48 | The plaintiff could not claim exclusivity over the ox-with-grinder image because it lacked distinctiveness “the respondent cannot claim exclusivity over the aforesaid image as it lacks distinctiveness.” Para 26.4.1 (submission) | “Distinctiveness is inherently an issue of fact, based on public perception, and lack of distinctiveness can rarely, if ever, therefore, be cited as a defence to a possible interlocutory injunction in a case of alleged infringement.” Para 26.4.2, Madan Lal Purushottam Das Foods Pvt Ltd v B.L. Agro Industries Ltd, FAO (COMM) 234/2025, decided 28.08.2025, 2025:DHC:7772-DB |
| 49 | The writ petitions challenging the advertisement of the trade mark applications were not maintainable. “the writ petitions were not maintainable,” Para 8 (submission) | “The submission of Mr. Lall that the writ petitions filed by the respondent were not maintainable is, therefore, rejected.” Para 11.17, Ashiana Ispat Ltd v. Kamdhenu Ltd & Ors, LPA 407/2025, decided 03.09.2025, 2025:DHC:7801-DB |
| 50 | Since the appellant was present on all dates and was heard, the absence of formal notice and of an opportunity to file a counter-affidavit caused no prejudice. “the plea that no formal notice, calling upon the appellant to file counter-affidavits to the writ petitions had been issued and no opportunity had, therefore, been granted to them to do so, was without merit, as they were present on all dates of hearing and were given adequate opportunity to advance submissions,” Para 9 (submission) | “An audience before the Judge, or even an opportunity to address arguments, is not a substitute for an opportunity to place one's stand on affidavit.” Para 12.3, Ashiana Ispat Ltd v. Kamdhenu Ltd & Ors, LPA 407/2025, decided 03.09.2025, 2025:DHC:7801-DB |
| 51 | The learned Single Judge rightly exercised suo motu jurisdiction under Article 226, which was absolute and unfettered. “the learned Single Judge had rightly entertained them in exercise of suo motu jurisdiction under Article 226 of the Constitution of India, which was absolute in nature and on which there could be no fetters.” Para 9 (submission) | “Suo motu action is that taken by a Court of its own accord, not at the request of any party. Inasmuch as the impugned order has been passed on writ petitions filed by the respondent, it cannot be said to have been passed in exercise of suo motu jurisdiction.” Para 13.3, Ashiana Ispat Ltd v. Kamdhenu Ltd & Ors, LPA 407/2025, decided 03.09.2025, 2025:DHC:7801-DB |
| 52 | While exercising jurisdiction under Order XXXIX Rules 1 and 2 CPC, the Court could grant an injunction against the tagline even without a formal prayer. “while exercising jurisdiction under Order XXXIX Rules 1 and 2 of the CPC, the learned Single Judge was well within her authority in granting such an injunction even if there was no formal prayer to that effect.” Para 38 (submission) | “In the absence of a formal prayer to that effect, therefore, we are clear that the learned Single Judge could not have injuncted the use of the tagline UNPLUG YOURSELF.” Para 44.2, Exotic Mile v. Imagine Marketing Pvt Ltd, FAO(OS) (COMM) 20/2020, decided 15.09.2025, 2025:DHC:8075-DB |
| 53 | Phonetic similarity is of no consequence where the bulk of sales take place online. “90% of the sales of the products of IMPL and EM admittedly took place online, so that the possibility of consumers being confused between the products on account of any phonetic similarity between boAt and BOULT, it is submitted, hardly exists.” Para 31 (submission) | “We are not convinced with the submission of learned Counsel for EM that phonetic similarity has no relevance where products are sold online.” Para 46.14, Exotic Mile v. Imagine Marketing Pvt Ltd, FAO(OS) (COMM) 20/2020, decided 15.09.2025, 2025:DHC:8075-DB |
| 54 | In the absence of pleadings on similarity of colour, get-up, tagline or product name, the Court could not rely on those features in finding likelihood of confusion. “In the absence of any such assertion in the plaint, it is submitted that the learned Single Judge could not have relied on similarity in the colour of the logos, their get-ups or the perceived similarity in the taglines UNPLUG YOURSELF and PLUG INTO NIRVANA, to support her findings.” Para 25 (submission) | “The Court has, in such a case, to holistically compare the marks and, if a feature common to them is found likely to result in confusion, is bound to so hold, irrespective of whether it is so specifically pleaded, or not.” Para 46.19, Exotic Mile v. Imagine Marketing Pvt Ltd, FAO(OS) (COMM) 20/2020, decided 15.09.2025, 2025:DHC:8075-DB |
| 55 | Respondent 1 (as recorded in the impugned order) contended that the transactions were only between the plaintiff and Defendants 2 to 5 at Mumbai and Respondent 1 was not involved, so that no cause of action arose against it. “it has been submitted that the entire transactions were taking place between the Plaintiff and defendants no. 2 to 5 at Mumbai and defendant no. 1 was nowhere involved in those” Para 13.2 (submission) | “The existence of an independent contract is not necessary for a case of infringement of copyright to exist.” Para 30, Nilesh Girkar v. Zee Entertainment Enterprises Ltd & Ors, RFA(COMM)-251/2025, decided 16.09.2025, 2025:DHC:8281-DB |
| 56 | The plaintiff had effectively complied with Section 12A because the entire inter-connected dispute, including its own claim, was subjected to pre-institution mediation initiated by the defendant; fresh mediation would be duplication. “It is Mr. Kaushik’s contention, however, that the appellant has in fact, exhausted the remedy of Section 12A of the Commercial Courts Act, as the entire dispute between the parties, which would include the dispute forming subject matter of the appellant’s claim against the respondent, has been subjected to mediation.” Para 30 (submission) | “The recourse to pre-litigation mediation which had been set in motion by the respondent cannot, therefore, be said to be in compliance with Section 12A of the Commercial Courts Act, which requires the plaintiff to exhaust the remedy of pre-litigation mediation.” Para 30, Anil Kumar Pitti v. Comsol Energy Pvt Ltd & connected matters, RFA(COMM) 479/2025, decided 22.09.2025, 2025:DHC:8535-DB non-IP / unspecified commercial matter |
| 57 | A suit instituted without Section 12A compliance must mandatorily be dismissed, and the Court could not leave open the remedy of re-institution after compliance. “the learned Single Judge could not have left open the remedy to the appellant to reinstitute the suit after complying with Section 12A of the Commercial Courts Act, as a suit which was instituted without such compliance had mandatorily to be dismissed.” Para 23 (submission) | “That remedy is statutorily available under Order VII Rule 13 of the CPC.” Para 36, Anil Kumar Pitti v. Comsol Energy Pvt Ltd & connected matters, RFA(COMM) 479/2025, decided 22.09.2025, 2025:DHC:8535-DB non-IP / unspecified commercial matter |
| 58 | A registrant who does not use the registered mark for the registered goods is not entitled to claim exclusivity or seek injunction “A trade mark registrant who does not use the registered trade mark, he submits is not entitled to claim exclusivity over the mark or seek injunction against others using that mark or other marks which may be similar thereto.” Para 28 (submission) | “Though this assertion is incorrect on facts, we may first observe that non-user is not a defense against infringement in view of Section 28(1)” Para 43.2.1, Mankind Pharma Ltd v. Brinton Pharmaceuticals Ltd, FAO (COMM) 166/2024, decided 22.09.2025, 2025:DHC:8795-DB |
| 59 | Honest adoption of ACNESCAR as a coined portmanteau describing the product's purpose entitles it to protection “The adoption of the mark ACNESCAR is, therefore, honest and is entitled to protection even on that ground.” Para 31 (submission) | “Innocence is no defence. Infringement is not dependent on mala fides or mens rea.” Para 41.2, Mankind Pharma Ltd v. Brinton Pharmaceuticals Ltd, FAO (COMM) 166/2024, decided 22.09.2025, 2025:DHC:8795-DB |
| 60 | Prosecution history of the plaintiff's application remains relevant even if the mark cited against it was not the defendant's “the prosecution history continues to be relevant, even if the rival mark set up against the mark of the appellant was not that of the respondent.” Para 32 (submission) | “After the judgment of the Division Bench of this Court in Raman Kwatra, this submission cannot survive.” Para 45.2, Mankind Pharma Ltd v. Brinton Pharmaceuticals Ltd, FAO (COMM) 166/2024, decided 22.09.2025, 2025:DHC:8795-DB |
| 61 | Where music is traditionally transmitted orally, authorship of a composition comes into existence once it is expressed in a definite form and fixed in a tangible medium, so the recorded 1978 Amsterdam performance constituted fixation establishing the performers' authorship. “in cases where music is traditionally transmitted orally, authorship and/or ownership in respect of a particular composition comes into existence, once the said composition is expressed in a definite form and fixed in a tangible medium” Para 29 (submission) | “we do not agree with the contention of plaintiff that by singing and performing the Suit Composition at the Royal Tropical Institute, Amsterdam and recording the same, the Junior Dagar Brothers fixed the Suit Composition on a tangible medium, namely the CD mentioned above, which in any manner would be enough to meet the threshold of prima facie establishment of exclusive authorship of Junior Dagar Brothers in view of clear distinction between rights of performers and composer/author.” Para 113, A.R. Rahman v. Ustad Faiyaz Wasifuddin Dagar & Ors, FAO(OS) (COMM) 86/2025, decided 24.09.2025, 2025:DHC:8522-DB |
| 62 | Licensing the publishing and mechanical rights to a record company was possible only if the licensors owned the underlying composition, so the licence itself evidences authorship. “It was argued that such licensing to a third party could only have been undertaken by the Junior Dagar Brothers if they possessed rights in the underlying composition.” Para 65 (submission) | “Even otherwise, private contracts between the respondent and recording companies cannot constitute evidence of authorship, of the Junior Dagar Brothers, of the Shiva Stuti suit composition.” Para 3.7, A.R. Rahman v. Ustad Faiyaz Wasifuddin Dagar & Ors, FAO(OS) (COMM) 86/2025, decided 24.09.2025, 2025:DHC:8522-DB |
| 63 | (Rejected in the concurring opinion) Because the issue involved complex technicalities of Hindustani classical music, the learned Single Judge should not have decided the interim application without the assistance of experts. “Mr. Rajagopal sought to contend that, as the issue was complex and technical, involving complicated details regarding intricacies of Hindustani Classical Music, the learned Single Judge ought not to have adjudicated the matter without requisitioning the assistance of experts.” Para 2.1 (submission) | “The impugned order has been passed at an interlocutory stage. The learned Single Judge has only adjudicated on an application filed by the respondent under Order XXXIX Rules 1 and 2 of the CPC. At this stage, in my opinion, reliance on affidavits of experts should ordinarily be avoided.” Para 2.2, A.R. Rahman v. Ustad Faiyaz Wasifuddin Dagar & Ors, FAO(OS) (COMM) 86/2025, decided 24.09.2025, 2025:DHC:8522-DB |
| 64 | Risdiplam could not be regarded as obvious from the genus patent since it was not among the 835 compounds exemplified there. “Mr. Sethi contends that Risdiplam is not among the 835 exemplified compounds in the genus patent and could, not, therefore, be regarded as ―obvious‖ from the teachings in the genus patent.” Para 20.5 (submission) | “Specific exemplification of the claim in the suit patent, in the complete specifications of the prior art document, is by no means necessary.” Para 20.5, F. Hoffmann-La Roche AG & Anr v. Natco Pharma Ltd, FAO(OS) (COMM) 43/2025, decided 09.10.2025, 2025:DHC:8943-DB |
| 65 | The learned Single Judge could not pass an order concerning URLs not forming subject matter of the lis, without an application by the respondent. “the learned Single Judge could not have passed the impugned order qua URLs which were not subject matter of the lis between the parties, even without an application by the respondent.” Para 19 (submission) | “The appellant could not, to our mind, have directly approached YouTube qua the said eight URLs when the dispute between the appellant and respondent was pending before this Court.” Para 19, ANI Media Pvt Ltd v. Dynamite News Network Pvt Ltd & Anr, FAO(OS) (COMM) 177/2025, decided 29.10.2025, 2025:DHC:9476-DB |
| 66 | The Court should direct that the impugned order be confined to the respondents and not stand in the way of the appellant's litigation against other infringers. “the Court may, at least, direct that the impugned order should be limited to the respondents and would not stand in the way of any lis or litigation that the appellant may have with other infringers who may upload clips which may infringe the appellant’s copyright.” Para 22 (submission) | “We cannot pass any pre-emptory direction, even before any such litigation has come into existence, binding the hands of the Court, which would be ceased of such a lis, if and when it is instituted.” Para 23, ANI Media Pvt Ltd v. Dynamite News Network Pvt Ltd & Anr, FAO(OS) (COMM) 177/2025, decided 29.10.2025, 2025:DHC:9476-DB |
| 67 | Having registered AGN TULIP and thereby claimed distinctiveness, the defendants were estopped from contending that TULIP is generic. “the defendants themselves have registered “AGN TULIP” as a trademark, thereby claiming distinctiveness, and are now estopped from contending otherwise.” Para 36 (submission) | “While the plaintiff is correct that the defendants themselves claimed distinctiveness while registering “AGN TULIP”, however, the inquiry in passing off is not about formal estoppel but about actual reputation.” Para 64, Suparshva Swabs India v. AGN International & Ors, FAO (COMM) 253/2023, decided 03.11.2025, 2025:DHC:9625-DB |
| 68 | Because the parties' goods share the same trade channels and shelves, they are allied and cognate goods, so the plaintiff's goodwill extends to the defendants' goods. “both categories shared the same trade channels, often placed on the same shelves, and target overlapping consumers. Accordingly, they qualify as allied and cognate goods in the minds of the public, thereby creating a substantial likelihood of confusion.” Para 43 (submission) | “The submission of the learned Counsel that the products of the plaintiff and the defendants are retailed through overlapping or the same trade channels such as pharmacies or supermarkets does not, by itself, establish that the reputation of the mark had travelled into the field of perfumery.” Para 63, Suparshva Swabs India v. AGN International & Ors, FAO (COMM) 253/2023, decided 03.11.2025, 2025:DHC:9625-DB |
| 69 | Without a valid word mark registration for QUANTUM, the plaintiff's case could at best be one of passing off “As the appellant had no valid word mark registration for the mark QUANTUM, the case at best could be one of passing off.” Para 13.1 (submission) | “the plaintiff is entitled to claim exclusivity over the word and is also entitled to an injunction against third parties adopting marks of which the same word constitutes the dominant part, in an infringement action.” Para 19.8, Quantum Hi-Tech Merchandising Pvt Ltd v. LG Electronics India Pvt Ltd, FAO (COMM) 22/2022, decided 04.11.2025, 2025:DHC:9630-DB |
| 70 | The anti-dissection rule prohibits splitting the defendant's composite mark GULSHAN-E-KARIM and extracting KARIM for comparison “Ms. Sukumar further submits that the anti-dissection rule prohibited bifurcation of the appellant’s mark GULSHAN-E-KARIM and extraction, from the said mark, of the “KARIM” part.” Para 9.3 (submission) | “The invocation of the anti-dissection principle, by the appellant, is fundamentally misconceived.” Para 14.1, Mohammad Talha v. Karim Hotels Pvt Ltd, FAO (COMM) 82/2025, decided 06.11.2025, 2025:DHC:9713-DB |
| 71 | KARIM is publici juris, being a common expression for the Almighty, and cannot be protected “KARIM, moreover, she submits, is pubici juris, and is a common expression used to refer to the Almighty.” Para 9.7 (submission) | “Distinctiveness is not to be assessed by viewing the plaintiff’s mark in vacuo. It has to be assessed by viewing the mark keeping in mind the manner of its use.” Para 13.2, Mohammad Talha v. Karim Hotels Pvt Ltd, FAO (COMM) 82/2025, decided 06.11.2025, 2025:DHC:9713-DB |
| 72 | The respondent's acquiescence in the appellant's long use disentitled it to injunction “Ms. Sukumar also reiterates the plea of acquiescence.” Para 9.6 (submission) | “Thus, though there was no acquiescence, even on facts, we may observe that mere acquiescence cannot constitute a defence against infringement.” Para 15.5, Mohammad Talha v. Karim Hotels Pvt Ltd, FAO (COMM) 82/2025, decided 06.11.2025, 2025:DHC:9713-DB |
| 73 | Negligence of the appellants' counsel in prosecuting the matter justified condonation of the delay. “the primary ground advanced in the present application, for condonation of delay, is not of fraud on the respondent’s part, but that there was negligence on the part of the Counsel appearing for the appellants in prosecuting the matter.” Para 16 (submission) | “Mere allegations of laxity on the part of Counsel, therefore, cannot constitute a legitimate basis to condone a delay as inordinate as 780 days, especially in a commercial matter.” Para 18, M/s Aggarwal Polymers India & Anr v. M/s Sri Ram Plastochem Pvt Ltd, RFA(COMM) 331/2025, decided 10.11.2025, 2025:DHC:9922-DB non-IP / unspecified commercial matter |
| 74 | Where the infringer withholds financial information, damages can be assessed on a speculative estimation of sales together with the Local Commissioner's findings (relying on Puma SE v. Ashok Kumar). “damages can be assessed based on speculative estimation of sales along with LC’s findings in situations wherein the infringer withholds crucial financial information.” Para 29 (submission) | “it is the plaintiff upon whom the burden of proof lies to prove the estimated damages as claimed in the suit and there cannot be any room for hypothetical or arbitrary estimations.” Para 41, B.C. Hasaram & Sons v. Smt. Nirmala Agarwal, Proprietor of M/s Karmayogi Sharbhang Muni, RFA(COMM) 214/2025, decided 12.11.2025, 2025:DHC:9867-DB |
| 75 | A design must be catchy or capricious, i.e. aesthetically appealing, to be entitled to registration, and the suit designs were invalid for lack of aesthetic appeal. “The asserted suit designs were not appealing to the eye. In order for a design to be entitled to registration, it was required to be catchy or capricious.” Para 13.1(i) (submission) | “Besides, it is not necessary for a design to be registrable, that it must be beautiful or even aesthetically appealing. All that is required is that, it must possess a distinct visual appeal.” Para 19.14.3, Aqualite Industries Private Ltd v. Relaxo Footwears Ltd, FAO(OS)(IPD)-1/2022, decided 18.11.2025, 2025:DHC:10128-DB |
| 76 | There was no piracy because the parties' actual products, compared with each other, were dissimilar. “Finally, Aqualite submitted that the products of Relaxo and Aqualite, when compared to each other, were completely dissimilar in appearance.” Para 8.8 (submission) | “In the first place, the comparison has to be between Aqualite’s footwear and Relaxo’s suit designs.” Para 18.3, Aqualite Industries Private Ltd v. Relaxo Footwears Ltd, FAO(OS)(IPD)-1/2022, decided 18.11.2025, 2025:DHC:10128-DB |
| 77 | The defendant contended that the word OPAL, being the name of a semi-precious stone, was generic and lacking in distinctiveness, so that no monopoly could be claimed over it. “the word “opal” was the name of a semi-precious stone and, therefore, a generic expression lacking in distinctiveness, over which no monopoly could be asserted by anyone.” Para 6.2 (submission) | “Every common word, therefore, is not ipso facto lacking in distinctive character.” Para 15.8, Saurabh Gupta v. Sheopals Pvt Ltd & connected matters, FAO (COMM) 175/2025, decided 26.11.2025, 2025:DHC:10443-DB |
| 78 | The defendant contended that the word OPAL was not coined by the plaintiff. “It was pointed out that the word OPAL was not coined by Saurabh.” Para 6.2 (submission) | “there is no requirement, in the Trade Marks Act, of the mark having to be “original” or “inventive” or “coined” by the proprietor of the mark.” Para 15.11, Saurabh Gupta v. Sheopals Pvt Ltd & connected matters, FAO (COMM) 175/2025, decided 26.11.2025, 2025:DHC:10443-DB |
| 79 | Section 35 of the Trade Marks Act is available only to natural persons, so a business/corporate name cannot claim its benefit (relying on Montari Overseas). “as Chandra Industries is a corporate name, it cannot seek the advantage of Section 35 of the Trade Marks Act, which is available only to natural persons.” Para 19 (submission) | “We are also not in agreement with the contention that the benefit of Section 35 is available only to natural persons. The paragraph from Montari to which Mr. Francis drew our attention does not positively say so.” Para 39, M/s Chandra Engineers v. M/s Multifrig Marketing Co Pvt Ltd, RFA(COMM) 352/2025, decided 09.12.2025, 2025:DHC:11132-DB |
| 80 | The respondent's unregistered BLUE JAYS mark was an 'earlier trade mark' for Sections 11(1) and 11(2), so the deceptively similar BLUE-JAY mark for identical goods should not have been registered. “The respondent sought to contend, both before the learned Single Judge as well as before us, that its BLUE JAYS mark was an “earlier trade mark” for the purposes of Section 11(1) and 11(2) of the Trade Marks Act” Para 11.1 (submission) | “the respondent’s BLUE JAYS mark does not qualify as an “earlier trade mark” for the purposes of Sections 11(1) or 11(2) of the Trade Marks Act.” Para 11.8, Sumit Vijay & Anr v. Major League Baseball Properties Inc & Anr, LPA 475/2025, decided 05.01.2026, 2026:DHC:6-DB |
| 81 | The counter-claimant's prior common law rights from continuous prior use prevail over the appellant's subsequent registration, entitling it to injunction “the appellant’s statutory registration cannot override the respondent’s prior common-law rights arising from long, continuous and bona fide commercial use.” Para 23.2 (submission) | “However, the right to maintain an action for passing off arises only upon proof of goodwill and reputation attached to the mark.” Para 41, Kedar Nath Mishra v. Invision Medi Sciences Pvt Ltd & connected matters, FAO (COMM) 159/2024, decided 13.01.2026, 2026:DHC:352-DB |
| 82 | A finding of goodwill should be treated as implicit from the sales figures and geographical spread recorded by the Commercial Court, even if not expressly recorded “a finding on goodwill must therefore be treated as implicit, even if not expressly recorded.” Para 23.5 (submission) | “in the absence of a specific finding by the learned Commercial Court that such material demonstrated goodwill and reputation in the mark “BONRICH” in favour of the respondent before 29.08.2011, the foundational requirement for sustaining a claim of passing off remains unfulfilled.” Para 47, Kedar Nath Mishra v. Invision Medi Sciences Pvt Ltd & connected matters, FAO (COMM) 159/2024, decided 13.01.2026, 2026:DHC:352-DB |
| 83 | Under the doctrine of patent lexicography, the specification's express definition of picture-in-picture as 'movable through haptic interaction' governs claim interpretation, so the absence of movability in Canva's product negates infringement. “The Defendant contended that this finding violates the doctrine of patent lexicography, under which express definitions in the specification govern claim interpretation.” Para 54 (submission) | “the infringement enquiry must remain tethered to the claims as purposively construed, and not to an isolated descriptive term in the specification being elevated into essential claim limitations.” Para 159, Canva Pty Ltd & Ors v. RxPrism Health Systems Pvt Ltd & Anr, FAO(OS) (COMM) 211/2023, decided 28.01.2026, 2026:DHC:659-DB |
| 84 | That the ex parte ad interim injunction had merged in the order vacating it and therefore could not revive on that order being set aside “that the ex parte ad interim order has merged in the final order and that, therefore, it cannot revive.” Para 22 (submission) | “This is contrary to the basic principles of merger.” Para 22, Neway Industries Pvt Ltd v. Mold-Tek Packaging Ltd & connected matters, FAO (COMM) 235/2025, decided 28.01.2026, 2026:DHC:702-DB |
| 85 | Delay should be condoned because the appellant was pursuing an application under Section 47 CPC for discharge and satisfaction of the decree “submits that the appellant filed an application under Section 47 of the CPC for discharge and satisfaction of the decree passed by the learned Commercial Court.” Para 6 (submission) | “We do not understand how the filing of an application under Section 47 of the CPC can at all be a ground to condone the delay in filing the appeal against the impugned judgment and decree” Para 7, Dilshad v. Kishore Arora, RFA(COMM) 239/2025, decided 29.01.2026, 2026:DHC:822-DB non-IP / unspecified commercial matter |
| 86 | Under Section 29 of the 1958 Act, “same” goods should be read as including similar, allied and cognate goods, so infringement could be made out where the goods are allied. “Mr. Mahabir submits that the word “same”, as used therein, should also be read as including “similar”, so as to include allied and cognate goods.” Para 94 (submission) | “We, therefore, unequivocally reject Mr. Mahabir’s contention that infringement, under the 1958 TMMA, could occur even where the goods of the plaintiff and the defendant are not the same.” Para 123, Thukral Mechanical Works v. P.M. Diesels Private Limited & connected matters, LPA 320/2024, decided 06.02.2026, 2026:DHC:966-DB |
| 87 | The Supreme Court's observation (para 36, Thukral Mechanical Works) that PMD and Thukral were both infringers of Jain's registration was confined to the Section 46 context and could be ignored on the merits, including under Section 56. “These observations, he submits, could not operate as a proscription on the Court examining whether Jain had used the FIELD MARSHAL mark.” Para 97 (submission) | “We cannot, however, endorse his submission that the afore-extracted finding, in para 36, can be ignored when examining the merits of the entire matter” Para 143, Thukral Mechanical Works v. P.M. Diesels Private Limited & connected matters, LPA 320/2024, decided 06.02.2026, 2026:DHC:966-DB |
| 88 | Upholding Thukral's registration necessarily meant PMD's passing off injunction against Thukral could not stand (registration-based argument against the prior user's passing off action). “Mr. Hemant Singh sought to submit that the only, and inexorable, sequitur, to upholding the validity of the substitution of Thukral, in place of Jain, as the registered proprietor of the FIELD MARSHAL mark for centrifugal pumps etc., was that PMD was liable to be injuncted from using an identical mark for centrifugal pumps.” Para 146 (submission) | “The submission is more attractive, facially, than it actually is on merit.” Para 147, Thukral Mechanical Works v. P.M. Diesels Private Limited & connected matters, LPA 320/2024, decided 06.02.2026, 2026:DHC:966-DB |
| 89 | The Order XXXIX application should not have been decided while the appellant's Section 10 CPC application was pending “Mr. Gupta sought to contend that the learned Single Judge ought not to have adjudicated on the respondent's Order XXXIX application when the appellant's application under Section 10 of the CPC was still pending disposal.” Para 58 (submission) | “as the Supreme Court has clearly held that Section 10 merely stays the trial in the suit and does not inhibit the Court from deciding any interlocutory application, including an application under Order XXXIX of the CPC” Para 60, Sauss Home Products Pvt Ltd v. Reckitt Benckiser India Pvt Ltd, FAO(OS) (COMM) 145/2025, decided 07.02.2026, 2026:DHC:1507-DB |
| 90 | Wander v. Antox applies only where an interim injunction was refused, not where it was granted “Mr. Gupta submits that Wander was a case in which the application under Order XXXIX was rejected by the learned Commercial Court and could not, therefore, be applied in a case where the application had been allowed.” Para 45 (submission) | “There can be no question of this Court reading down the above enunciation of the law by the Supreme Court, which is clear.” Para 68, Sauss Home Products Pvt Ltd v. Reckitt Benckiser India Pvt Ltd, FAO(OS) (COMM) 145/2025, decided 07.02.2026, 2026:DHC:1507-DB |
| 91 | As both parties held registrations, Sections 28(3), 30(2)(e) and 31(1) raised triable issues, including honest concurrent use, so no injunction could issue solely on passing off “On merits, Mr. Gupta submits that, as both parties had registered marks, the learned Single Judge ought to have noticed that triable issues, including the issue of honest and concurrent user, arose” Para 39 (submission) | “In view of the non obstante clause with which Section 27(2) commences, no defence under Section 28(2) or 30(2)(e) would be available to one who is guilty of passing off his product as that of another.” Para 77, Sauss Home Products Pvt Ltd v. Reckitt Benckiser India Pvt Ltd, FAO(OS) (COMM) 145/2025, decided 07.02.2026, 2026:DHC:1507-DB |
| 92 | Availability of goods on IndiaMart, a B2B platform with no retail sales, does not confer territorial jurisdiction “it was submitted that IndiaMart is a B2B platform, over which no retail sales can take place.” Para 26 (submission) | “cannot make any substantial difference to this legal position in view of the law as it has developed on the aspect of territorial jurisdiction.” Para 62, Sauss Home Products Pvt Ltd v. Reckitt Benckiser India Pvt Ltd, FAO(OS) (COMM) 145/2025, decided 07.02.2026, 2026:DHC:1507-DB |
| 93 | The defendant had no reason to choose a bird of prey (or a golden-and-blue colour combination) for its mark and packaging, which supported a case of conceptual similarity. “Essentially, he sought to contend that there was no reason why the respondent chose a bird of prey instead of any other bird, or for that matter any other living creature, which was not a bird.” Para 14.7 (submission) | “These, to our mind, are arguments which are completely devoid of force. There can be no fetter on a party representing its product in any manner, so long as the manner of representation does not amount to infringement or passing off.” Para 14.8, Sanjay Gupta and Vinay Gupta v. Vineet Jain, Proprietor of Vijaypal Vineet Kumar and Co, FAO (COMM) 44/2026, decided 11.02.2026, 2026:DHC:1248-DB |
| 94 | CHACHA lacks distinctiveness because it is a vernacular word of common usage meaning 'uncle'. “Her only submission is that “Chacha” is a vernacular word of common usage, which means “uncle”.” Para 56 (submission) | “That, by itself, cannot be the basis for a Court to hold that the mark is lacking in distinctiveness.” Para 56, Chacha Saree Bazar Pvt Ltd & Anr v. Chacha Cloth House, FAO (COMM) 217/2025, decided 12.02.2026, 2026:DHC:1296-DB |
| 95 | CHACHA is common to the trade because several marks use CHACHA as a part. “It has also been sought to be contended that the word CHACHA is “common to trade”. Ms. Pareek seeks to submit that there are several marks which use CHACHA as a part of the mark.” Para 59 (submission) | “The submission, again, reflects an incomplete appreciation of Section 17(2)(b) of the Act, insofar as it proscribes a claim of exclusivity over a part of the composite mark as being common to the trade.” Para 60, Chacha Saree Bazar Pvt Ltd & Anr v. Chacha Cloth House, FAO (COMM) 217/2025, decided 12.02.2026, 2026:DHC:1296-DB |
| 96 | The rival logos are visually completely different, so there is no infringement. “An additional submission which was advanced by Ms. Pareek was that the rival marks are visually completely different from each other.” Para 67 (submission) | “The law, on this issue, stands settled against the respondent by the judgment of the Supreme Court in K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.” Para 68, Chacha Saree Bazar Pvt Ltd & Anr v. Chacha Cloth House, FAO (COMM) 217/2025, decided 12.02.2026, 2026:DHC:1296-DB |
| 97 | Marks must be compared only as whole marks and not on the basis of the common CHACHA feature. “Ms. Pareek, arguing for the respondent, submits that the aspect of infringement or passing off has to be seen by comparing the two rival marks in their entirety, as whole marks, and not on the basis of the common CHACHA feature between them.” Para 24 (submission) | “As the Supreme Court in Pernod Ricard and the Division Bench of this Court in South India Beverages have clarified, this does not amount to re-writing Section 17(2) and permitting vivisection of a composite mark.” Para 47, Chacha Saree Bazar Pvt Ltd & Anr v. Chacha Cloth House, FAO (COMM) 217/2025, decided 12.02.2026, 2026:DHC:1296-DB |
| 98 | Under Section 17(2)(b), registration of a composite mark confers no exclusive right in a part of it, so the plaintiffs could not claim exclusivity over SMITH; the dominant part test violates Section 17(2) and the anti-dissection rule. “registration of a composite mark confers no exclusive rights in a part thereof; hence, the respondents could not claim exclusivity over “SMITH”.” Para 17 (submission) | “This contention is in the teeth of the well-settled principle laid down in Pernod Ricard (supra) and South India Beverages (supra) and is thereby rejected.” Para 49, Star Smith Export Pvt Ltd v. A O Smith Corporation, FAO(OS) (COMM) 216/2025, decided 13.02.2026, 2026:DHC:1306-DB |
| 99 | SMITH, being a common English surname and noun, is descriptive and non-distinctive and cannot be protected. “Being a common English surname and noun, “SMITH” is descriptive and non-distinctive.” Para 16 (submission) | “the Act does not prohibit the use of common or generic words but the ones lacking distinctiveness.” Para 49, Star Smith Export Pvt Ltd v. A O Smith Corporation, FAO(OS) (COMM) 216/2025, decided 13.02.2026, 2026:DHC:1306-DB |
| 100 | Third-party use of SMITH, and the plaintiffs' failure to disclose it, defeat the plaintiffs' claim to exclusivity. “failure to disclose third-party use of “SMITH” misrepresented exclusivity over the said mark, rendering the impugned judgments liable to be set aside” Para 19 (submission) | “The appellants’ claim of third parties using similar marks is devoid of merit, as mere thirdparty use does not dilute respondents’ rights.” Para 50, Star Smith Export Pvt Ltd v. A O Smith Corporation, FAO(OS) (COMM) 216/2025, decided 13.02.2026, 2026:DHC:1306-DB |
| 101 | Revocation presupposes a live patent, so an expired patent cannot be revoked. “the very concept of revocation of a patent ipso facto presumed that the patent was alive. There could be no question of revoking a patent which had already expired.” Para 22 (submission) | “Ergo, and per sequitur, the revocation petition would continue to be maintainable even after the patent, of which revocation is sought, expires.” Para 71, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 102 | There is no authority that revocation of a patent dates back to its grant; revocation merely wipes out the monopoly prospectively. “there is no decision, or authority, to the effect that the revocation of a patent would date back to its grant.” Para 23 (submission) | “the revocation would, in either case, invalidate the very grant of the patent and would date back to the date of grant.” Para 56, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 103 | Relying on para 26 of Aloys Wobben, once an infringement suit is filed the defendant may only raise a Section 107 defence or file a counter-claim, and cannot maintain a revocation petition. “once a plaintiff files a patent infringement suit, the only options with the defendant is to raise an invalidity defence under Section 107 of the Act or prefer a counter-claim if the defendant seeks revocation of the patent. He cannot continue to maintain a revocation petition under Section 64.” Para 25 (submission) | “The observation that a revocation petition cannot be filed after an infringement suit has been instituted is, therefore, clearly not stated as an absolute proposition in para 26, but only if the defendant has already filed a counter-claim in the said suit.” Para 83, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 104 | Allowing the revocation petition to proceed alongside the Section 107 defence in the suit would result in multiplicity of litigation. “allowing it to pursue the revocation petition would merely result in multiplicity of litigation.” Para 26 (submission) | “Dr. Singhvi’s submission that allowing a revocation petition to continue even after an invalidity defence has been raised under Section 107 would result in multiplicity of litigation, therefore, obviously cannot be accepted.” Para 89, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 105 | A Section 107 invalidity defence is in substance a counter-claim, so a revocation petition cannot be maintained alongside it. “a Section 107 defence is essentially in the nature of a counter-claim.” Para 28 (submission) | “Revocation, and an invalidity defence under Section 107, are fundamentally – and obviously – different.” Para 87, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 106 | The concept of “person interested” is dynamic, and no one remains interested in revocation once the patent has expired. “can continue to be interested in a revocation proceeding once the patent of which revocation is sought has itself expired by efflux of time. Once the corpus of the interest does not subsist, he submits, the interest must also perish.” Para 47 (submission) | “The interest of the revocation petitioner, to ensure that the revocation succeeds, therefore, subsists, and he remains a “person interested”.” Para 70, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 107 | The “grant” in the definition of patent subsists only while the patent is alive, so an expired patent is no longer a patent for Section 64. “the grant would subsist only so long as the patent is alive.” Para 48 (submission) | “A patent, once granted, therefore, remains a “patent” under the Patents Act, and does not cease to remain a patent which was granted, even if it expires by efflux of time.” Para 67, Boehringer Ingelheim Pharma GmbH and Co KG v. The Controller of Patents & Anr, LPA 129/2025, decided 24.02.2026, 2026:DHC:1609-DB |
| 108 | The one-month notice period in Rule 100(1) is directory and its breach is fatal only if prejudice results. “Mr. Sai Deepak submits that the period of one month stipulated in Rule 100(1) of the Rules should be treated as directory unless failure to comply therewith results in prejudice.” Para 24 (submission) | “Besides, the plea that the provision is not mandatory absent evidence of prejudice has, to our mind, no legs to stand on.” Para 43, Landmark Crafts Ltd v. Romil Gupta trading as Sohan Lal Gupta & Anr, LPA 575/2025, decided 25.02.2026, 2026:DHC:1674-DB |
| 109 | Having raised no objection before the Deputy Registrar, the registered proprietor was estopped from raising breach of Rule 100(1) in appeal. “By failing to raise any objection in that regard during the hearing, Mr. Sai Deepak submits that the respondent is now estopped from raising the ground.” Para 24 (submission) | “The requirement of compliance with the mandate of Rule 100(1) cannot be subject to any principle of estoppel.” Para 44, Landmark Crafts Ltd v. Romil Gupta trading as Sohan Lal Gupta & Anr, LPA 575/2025, decided 25.02.2026, 2026:DHC:1674-DB |
| 110 | Reading Rule 37 with Rule 25, a fresh user affidavit had to be called for before allowing amendment of the applied-for mark. “it was incumbent on the Dy RTM to call for a fresh user affidavit before allowing the amendment as sought in the application dated 13 December 2018, as it amounted to a substantial alteration in the mark.” Para 21 (submission) | “Mr. Sai Deepak’s submission that the respondent was required to submit a fresh affidavit of user, by juxtaposing Rules 25 and 37 cannot, therefore, be accepted. This submission, to our mind, overlooks the distinction between a substantial, and an insubstantial, alteration of the mark earlier applied for.” Para 58, Landmark Crafts Ltd v. Romil Gupta trading as Sohan Lal Gupta & Anr, LPA 575/2025, decided 25.02.2026, 2026:DHC:1674-DB |
| 111 | Damages beyond the amount claimed in the unamended plaint could not be awarded, and this sole factor entitled the appellants to complete stay of execution; failure to grant it was an error apparent on the face of the record. “This sole factor, according to him, suffices to grant complete stay of execution of the judgment of the learned Single Judge and, in failing to do so, this Court has committed an error apparent on the face of the record.” Para 28 (submission) | “That sole factor by itself, to our mind, may not make out a case for reconsideration of our decision.” Para 37, Surinder Kumar Wadhwa & Anr v. Koninklijke Philips N.V. & connected matters, REVIEW PET. 89/2026 in RFA(OS)(COMM) 13/2025, decided 26.02.2026, 2026:DHC:1781-DB |
| 112 | Under Section 4 of the Contract Act an agreement need not be clear, specific and mutually acknowledged to be binding; a unilateral proposal accepted by a later letter created a binding co-existence agreement for India “an agreement does not need to be “clear, specific, and mutually acknowledged” to be binding” Para 16.7 (submission) | “However, we find that Section 4 must be read in conjunction with Section 7 of the Indian Contract Act, 1872 which stipulates that an acceptance must be absolute and unqualified.” Para 17.60, Crocodile International Pte Ltd v. La Chemise Lacoste & connected matters, RFA(OS)(COMM) 18/2024, decided 09.03.2026, 2026:DHC:1918-DB |
| 113 | The defendants were honest, not dishonest, users and therefore had not infringed “premised the case on the assertion that they were not dishonest users and, therefore, had not infringed the plaintiffs’ rights.” Para 16 (submission) | “We reiterate that innocence is not a valid defence to trademark infringement under Section 29 of the Act.” Para 17.90, Crocodile International Pte Ltd v. La Chemise Lacoste & connected matters, RFA(OS)(COMM) 18/2024, decided 09.03.2026, 2026:DHC:1918-DB |
| 114 | Infringement not made out as plaintiffs led no evidence of actual consumer confusion “It was contended that the plaintiffs failed to provide evidence of actual consumer confusion.” Para 16.9 (submission) | “evidence of actual confusion is not required, and the mere likelihood of confusion is sufficient to establish infringement.” Para 17.89, Crocodile International Pte Ltd v. La Chemise Lacoste & connected matters, RFA(OS)(COMM) 18/2024, decided 09.03.2026, 2026:DHC:1918-DB |
| 115 | Rendition of accounts not warranted absent a fiduciary or direct commercial relationship between the parties “With respect to the rendition of accounts, it was contended that there was no fiduciary or direct commercial relationship between the defendants and the plaintiffs.” Para 16.35 (submission) | “However, Section 135 of the Act does not require a fiduciary relationship to grant such relief.” Para 17.116, Crocodile International Pte Ltd v. La Chemise Lacoste & connected matters, RFA(OS)(COMM) 18/2024, decided 09.03.2026, 2026:DHC:1918-DB |
| 116 | Because Section 30(4) applies, the refurbishers' acts (buying, debranding, refurbishing, rebranding and reselling the HDDs) amount to infringement “The acts of the respondents in (i) buying used and old HDDs of the appellant, (ii) effacing the appellant’s trade marks, (iii) refurbishing the HDDs, (iv) affixing their own brand with new Serial and Model numbers, (v) selling them as new, and (vi) thereby altering and impairing the original condition of the HDDs as sold by the appellant to OEMs, amounts to infringement in view of Section 30(4) of the Act.” Para 82 (submission) | “We cannot agree with Mr. Anand in his submission that, if Section 30(4) would apply, the respondents’ acts would ipso facto become infringing.” Para 129, Western Digital Technologies Inc v. Geonix International Pvt Ltd & connected matters, FAO(OS) (COMM) 146/2024, decided 09.03.2026, 2026:DHC:1908-DB |
| 117 | The respondents committed actionable 'reverse passing off' by misrepresenting the appellants' products as their own “The respondents were misrepresenting the appellant’s products as theirs.” Para 82 (submission) | “no right to sue, or obtain an injunction, on the ground of “reverse passing off”, is available in our jurisprudence, at least in trade mark law.” Para 93, Western Digital Technologies Inc v. Geonix International Pvt Ltd & connected matters, FAO(OS) (COMM) 146/2024, decided 09.03.2026, 2026:DHC:1908-DB |
| 118 | Removing the proprietor's trade marks from the goods is a change in their condition or an impairment under Section 30(4) “Removal of the appellant’s trade marks from the HDDs amounted to change in their condition/impairment within the meaning of Section 30(4) of the Act.” Para 82 (submission) | “We have already opined that the word “changed”, as employed in Section 30(4), has to be read noscitur a sociis with the word “impaired”.” Para 134, Western Digital Technologies Inc v. Geonix International Pvt Ltd & connected matters, FAO(OS) (COMM) 146/2024, decided 09.03.2026, 2026:DHC:1908-DB |
| 119 | Misrepresenting used end-of-life goods as new, manufactured and imported by the respondents, amounts to passing off “by misrepresenting used and end of life HDDs as new, manufactured and imported by the respondents, they were indulging in passing off.” Para 103 (submission) | “If the respondents were doing this, it might amount to cheating the consumers and, perhaps, a ground to proceed under consumer protection law, but it does not constitute “passing off” as understood in trademark jurisprudence.” Para 103, Western Digital Technologies Inc v. Geonix International Pvt Ltd & connected matters, FAO(OS) (COMM) 146/2024, decided 09.03.2026, 2026:DHC:1908-DB |
| 120 | Selling old goods as new without disclosure is a false trade description justifying injunctive relief “Selling the appellant’s old and used HDDs as new without disclosing the date of manufacture, the number of hours of prior use, etc. amounts to false trade description, which is actionable under Section 103 read with Section 2(1)(i) of the Act.” Para 82 (submission) | “No remedy, under Section 135 of the Act, is available on this ground.” Para 141, Western Digital Technologies Inc v. Geonix International Pvt Ltd & connected matters, FAO(OS) (COMM) 146/2024, decided 09.03.2026, 2026:DHC:1908-DB |
| 121 | Since infringement had been referred to a larger Bench and passing off was also pleaded, the Court should proceed to decide the passing off issue. “Mr. Narula’s contention is that as the aspect of infringement has been referred to a larger Bench and he had also pleaded passing off, the Court may proceed to decide the issue of passing off.” Para 7 (submission) | “We are afraid that is not possible.” Para 8, Abros Sports International Pvt Ltd v. Ashish Bansal & Ors, FAO(OS) (COMM) 140/2024, decided 13.03.2026, 2026:DHC:2352-DB |
| 122 | Even assuming the plaintiff's proprietorship over PADAN based on use by its sister concern, no enforceable right survived because the agreement with CAPL had been terminated. “even assuming the Plaintiff’s claim of proprietorship over the mark “PADAN” based on use by its sister concern (CAPL), the agreement with CAPL had been terminated, and therefore no enforceable right survived in favour of the Plaintiff.” Para 26 (submission) | “overlooks the common law remedies available to the Plaintiff and the fact that copyright may exist even without registration.” Para 73, Coromandel Indag Products India Ltd v. Sumitomo Chemical Company Ltd, RFA(OS)(COMM) 22/2025, decided 18.03.2026, 2026:DHC:2260-DB |
| 123 | A composite suit combining a copyright claim with non-commercial claims of defamation and disparagement is not maintainable before the Commercial Court “it was submitted that the plaint is not maintainable as a “composite suit” before the Commercial Court.” Para 29 (submission) | “The explanation provided does not restrict the jurisdiction of the Commercial Courts by proscribing composite suits that involve both commercial and non-commercial claims.” Para 42, TV Today Network Ltd v. News Laundry Media Pvt Ltd & connected matters, FAO(OS) (COMM) 268/2022, decided 20.03.2026, 2026:DHC:2339-DB |
| 124 | Once the defence of truth is raised, no interim injunction can be issued in a defamation action “He contended that, in light of this defence, no interim injunction can be issued against the Defendants.” Para 21 (submission) | “However, we are of the view that an interim injunction cannot be refused merely because these defences have been pleaded.” Para 79, TV Today Network Ltd v. News Laundry Media Pvt Ltd & connected matters, FAO(OS) (COMM) 268/2022, decided 20.03.2026, 2026:DHC:2339-DB |
| 125 | Section 30(3) applies because Respondent 2 bought the goods from SIC, which was the registered owner of the mark in China. “SIC has sought to contend that Section 30(3) would be applicable as Respondent 2 had purchased the goods from SIC, which was the registered owner of the STELLADEXIN mark in China.” Para 49 (submission) | “The submission is unsustainable in law.” Para 49, M/s Products and Ideas India Pvt Ltd v. Nilkamal Ltd, FAO(OS) (COMM) 111/2025, decided 23.03.2026, 2026:DHC:2385-DB |
| 126 | As both the plaintiff and Respondent 2 imported goods from SIC (the prior user), no infringement could lie against Respondent 2. “Inasmuch the appellant and Respondent 2 were both importers of goods bearing the STELLADEXIN mark from SIC, no case of infringement could lie against Respondent 2 either.” Para 11 (submission) | “Import of goods bearing the registered trademarks bearing the registered trademark of another independently constitutes “use” of the registered trademark, within the meaning of Section 29(6)(c)” Para 42, M/s Products and Ideas India Pvt Ltd v. Nilkamal Ltd, FAO(OS) (COMM) 111/2025, decided 23.03.2026, 2026:DHC:2385-DB |
| 127 | That if the facts pleaded in the first plaint could sustain the reliefs claimed in the second suit, there was identity of causes of action and a mere reference to such facts in the first plaint barred the second suit under Order II Rule 2 “The cause of action, he submits, depends on the facts pleaded and if, therefore, the facts pleaded in the first suit could sustain the prayers in the second, there was identity of causes of action between them.” Para 56 (submission) | “Similarity of facts, or even identity of pleadings, and knowledge of the facts pleaded in the second suit at the time when the first suit was filed, would not ipso facto bar the second suit under Order II Rule 2 of the CPC, where the two suits are founded on different causes of action.” Para 97, Castrol Ltd v. Sanjay Sonavane & Ors, RFA(OS)(COMM) 38/2025, decided 20.04.2026, 2026:DHC:3210-DB |
| 128 | The plaintiffs contended that no party can copy an essential or dominant part of another's mark, and that 'Jiva' being the dominant part of their mark, its use by the defendants created a likelihood of confusion. “Mr. Goswami, the learned Counsel for the Plaintiffs, submitted that it is a settled principle that no party can copy an essential or dominant part of another’s trademark.” Para 59 (submission) | “even assuming arguendo that “Jiva” is the dominant part of the Plaintiffs’ mark, the ultimate inquiry must still be the overall impression created by the marks in mind of the average consumer.” Para 60, Ms Anuradha Sharma & Anr v. Jiva Ayurvedic Pharmacy Ltd & Ors, FAO (COMM) 334/2025, decided 21.04.2026, 2026:DHC:3302-DB |
| 129 | Imports effected by private third parties, not the proprietor, cannot establish goodwill attributable to the appellant “The alleged instances of import relied upon by the Appellant are, at best, isolated and sporadic third-party transactions, which cannot constitute commercial use or establish goodwill attributable to the Appellant.” Para 31.17 (submission) | “While it is true that the imports of the Appellant's vehicle were effected by private individuals, this circumstance does not diminish their evidentiary value.” Para 77, Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt Ltd & connected matters, LPA 176/2023, decided 04.05.2026, 2026:DHC:3762-DB |
| 130 | Evidence of reputation is sporadic and insufficient without market penetration “Mere international use or reputation, it was argued, is insufficient to establish spillover reputation within India in the absence of cogent evidence of market penetration or consumer awareness.” Para 31.19 (submission) | “However, this submission proceeds on an incorrect standard. The law does not require massmarket penetration or extensive commercial sales to establish reputation.” Para 80, Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt Ltd & connected matters, LPA 176/2023, decided 04.05.2026, 2026:DHC:3762-DB |
| 131 | Goodwill could not be established because the plaintiff's sales figures were not supported by Chartered Accountant certificates “The defendant has sought to challenge the evidentiary value of these documents on the ground that the sales figures are not supported by CA certificates” Para 102 (submission) | “the law on passing off does not require goodwill to be proved solely through CA certified records.” Para 114, Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Ltd & connected matters, RFA(OS) 138/2013, decided 18.05.2026, 2026:DHC:4402-DB |
| 132 | The plaintiff could not claim passing off in respect of the defendant's domain name without establishing ownership of a domain name “Without properly demonstrating its ownership of the domain name or proving that it had established exclusive rights, the plaintiff could not invoke the principles relating to domain name disputes.” Para 20.51 (submission) | “In an action for passing off, it is not necessary for the plaintiff to demonstrate ownership of an identical domain name. What is required is the existence of goodwill and the likelihood of misrepresentation.” Para 168, Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Ltd & connected matters, RFA(OS) 138/2013, decided 18.05.2026, 2026:DHC:4402-DB |
| 133 | In the absence of evidence of pecuniary loss, no relief of damages or rendition of accounts could be granted “It is further urged that, in the absence of such evidence, no relief by way of damages or rendition of accounts could have been granted.” Para 189 (submission) | “the absence of quantified evidence of loss could at best disentitle the plaintiff to compensatory damages. However, it could not defeat the grant of an order for rendition of accounts and delivery up, once infringement, passing off, and copyright violation have been established.” Para 196, Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Ltd & connected matters, RFA(OS) 138/2013, decided 18.05.2026, 2026:DHC:4402-DB |
| 134 | Public newspaper advertisements announcing the defendant's formulations business, known to the plaintiff, established acquiescence “The defendant further argues that these publications were within the plaintiff's knowledge, and yet the plaintiff took no immediate action.” Para 69 (submission) | “The mere issuance of advertisements or public announcements regarding business activities does not, by itself, constitute a valid defence of acquiescence.” Para 71, Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Ltd & connected matters, RFA(OS) 138/2013, decided 18.05.2026, 2026:DHC:4402-DB |
| 135 | Copyright could not be held to subsist without evidence of originality, identity of the author and date of first publication “the plaintiff had failed to produced evidence regarding the originality of the work, the identity of the author, or the date of first publication, all of which are mandatory requirements under Sections 13, 14, 17 and 18 of the Copyright Act.” Para 20.48 (submission) | “The objection regarding originality is equally misconceived. In the case of artistic works, such as packaging artwork, originality lies in the author's selection, arrangement, layout, colour combination and visual presentation. It does not necessarily require novelty in the patent sense.” Para 183, Reddy Pharmaceuticals Ltd v. Dr. Reddy's Laboratories Ltd & connected matters, RFA(OS) 138/2013, decided 18.05.2026, 2026:DHC:4402-DB |
| 136 | The essentiality certificates/reports were prepared by independent expert patent evaluators and so proved the patents' essentiality to the DVD standard “The ERs have been prepared by independent experts who were patent evaluators.” Para 68(xxi) (submission) | “If that is so, the certificates issued by them would have to be proved in accordance with Section 45 of the Evidence Act.” Para 92, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 18.05.2026, 2026:DHC:4317-DB |
| 137 | As the patentee's witness said he held the test logs and the defendants did not challenge them, the defendants could not complain that the logs were not produced “PW2 also confirmed that he was in possession of detailed logs of the test conducted by him” Para 68(xxvi) (submission) | “It is no answer to contend that once PW2 testified that he was in possession of the logs relating to the infringement analysis purportedly undertaken by him, it was for the Bansals to require him to produce the logs or details of the infringement analysis. The onus, in this regard, was squarely on Philips.” Para 115, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 18.05.2026, 2026:DHC:4317-DB |
| 138 | Having not sought production of third-party licence agreements at trial, the defendants could not complain that there was no evidence of FRAND rates “Having failed to avail of the opportunity to have the third party licence agreement produced during trial, the Bansals could not now seek to claim lack of evidence.” Para 68(xxxv) (submission) | “Despite thus admittedly being in possession of the license agreements executed with third parties, Philips never chose to place any such license agreement on record. Once again, applying Section 114 of the Evidence Act, it would be permissible to draw an adverse inference against Philips” Para 155, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 18.05.2026, 2026:DHC:4317-DB |
| 139 | The exhaustion defence fails because the sellers of the chips were not shown to be licensees of the patentee “Neither letter established that MediaTek was licenced by Philips.” Para 68(xli) (submission) | “This submission cannot sustain, for the simple reason that Section 107A(b) was amended, by the Patents (Amendment) Act, 2002, with effect from 20 May 2003, to do away with the requirement of the dealer, from whom the patented product was purchased, being duly authorised by the patentee to sell or distribute the product.” Para 135, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 18.05.2026, 2026:DHC:4317-DB |
| 140 | Royalty was correctly computed per DVD player because the SEP holder always licensed at the end-product level “The respondents had always licensed at the end product level as per DVD player sold.” Para 68(xlii) (submission) | “That is a commercial decision which, while it may be open to Philips to take, cannot constitute the basis of determination of payable royalty in a litigation premised on a specific patent, claiming a specific device.” Para 166, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 18.05.2026, 2026:DHC:4317-DB |
| 141 | The tax invoices (filed by the defendants) clearly showed that the plaintiff had no cause of action, justifying rejection of the plaint. “However, he submits that these tax invoices would clearly indicate that there is no cause of action on the basis of which the appellant could maintain the suit.” Para 4 (submission) | “It is trite that while exercising jurisdiction under Order VII Rule 11 CPC, a Court cannot look outside the plaint and the documents filed with the plaint.” Para 5, Ankit Gupta v. M/s Ganpati Trading Co & Anr, RFA(COMM) 203/2026, decided 19.05.2026, 2026:DHC:4515-DB non-IP / unspecified commercial matter |
| 142 | As the song was created at the instance of the film producer, the producer became first owner of copyright in the musical work under clause (b) of the first proviso to Section 17. “The disputed song En Iniya Pon Nilave was created by Ilaiyaraaja at the instance of RCA. As a result, RCA was the first owner of the copyright in the musical work under clause (b) of the first proviso to Section 17.” Para 17 (submission) | “Clause (b) does not apply either to sound recordings or to musical works.” Para 27.4, Ilaiyaraaja v. Saregama India Ltd, FAO(OS) (COMM)-52/2025, decided 21.05.2026, 2026:DHC:4556-DB |
| 143 | The composer, in lawful exercise of his copyright in the musical work, could assign to the film producer the right to make an adaptation of the song (as recreated, including its sound recording and lyrics). “Ilaiyaraaja had, therefore, in lawful exercise of the copyright which vested in him in the musical work contained in the disputed song, assigned the right to make an adaptation of the disputed song to VFIL.” Para 15 (submission) | “It did not extend to the lyrical component of, or the sound recording in, the disputed song.” Para 29.6, Ilaiyaraaja v. Saregama India Ltd, FAO(OS) (COMM)-52/2025, decided 21.05.2026, 2026:DHC:4556-DB |
| 144 | Recreation of a sound recording is distinct from adaptation, and the DB judgment wrongly treated recreation as infringing “The emphasis that Ms. Sukumar seeks to place between recreation and adaptation” Para 10 (submission) | “Notably, the Copyright Act does not envisage “recreation” as a distinct specie of activity, which is permissible in law, even if adaptation is not.” Para 10, Mr Ilaiyaraaja v. Saregama India Ltd, REVIEW PET. 256/2026, decided 26.05.2026, 2026:DHC:4893-DB |
| 145 | The respondent sought, by an application under Section 151 CPC, that the appellate judgment be kept in abeyance for eight weeks. “seeks a decision from this Court to keep the judgment dated 18 May 2026 passed by this Court in abeyance for eight weeks.” Para 2 (submission) | “We are, therefore, of the view that the reliance on Section 151 of the CPC is completely misconceived.” Para 12, K K Bansal v. Koninklijke Philips Electronics NV & connected matters, RFA(OS)(COMM) 17/2018, decided 26.05.2026, 2026:DHC:4909-DB |
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