The Madras High Court has reaffirmed the expansive protection accorded to well-known trademarks, dismissing an appeal against the refusal of registration of FEDEXO in Class 1. Finding that the impugned mark substantially incorporated the well-known mark FEDEX, the Court rejected the appellant’s claims of honest adoption and prior use. It further held that the use of FEDEXO for dissimilar goods, in the absence of due cause, would amount to taking unfair advantage of and causing detriment to the distinctive character and reputation of FEDEX.

Background

The appellant, Inexo Cast Metal Solutions Pvt. Ltd. filed the appeal challenging the order passed by the Assistant Registrar of Trademarks, Chennai, allowing the Opposition and refusing registration of the mark FEDEXO in Class 1.

The appellant, engaged in the manufacture and sale of foundry materials, filed an application in November 2009 for registration of FEDEXO, claiming use since September 2007. During examination, the Registry raised an objection citing the earlier mark FEDEX500 registered for enzymes. The appellant disputed the similarity between the marks, questioned the validity of the cited registration and relied on its claimed honest adoption and continuous use.

Following advertisement of the application, the first respondent Federal Express Corporation opposed the application, asserting its prior adoption, use and registrations of FEDEX in India since 1984. The opponent contended that FEDEX was a well-known trademark and that FEDEXO was deceptively similar, with its registration likely to take unfair advantage of and cause detriment to the distinctive character and reputation of FEDEX.

The appellant maintained that FEDEXO was an independently coined mark derived from “FED”, referring to feeder materials, and “EXO”, referring to exothermic sleeves. It disputed FEDEX’s well-known status and contended that the parties operated in different commercial fields.

The Assistant Registrar rejected the appellant’s claim of continuous use since September 2007, noting its earlier statement that the mark had been modified from FEDEX to FEDEXO. Having recognised FEDEX as a well-known trademark and found FEDEXO deceptively similar, the Registrar allowed the opposition and refused registration.

Aggrieved by the decision, the appellant approached the High Court.

Appellant’s Submissions

1. FEDEX and FEDEXO were visually, phonetically and commercially distinct and that the marks ought to be compared as a whole.
2. There could be no likelihood of confusion, as the appellant’s specialised foundry products were entirely different from the respondent’s transportation services, with distinct consumers and trade channels.
3. The Registrar had mechanically relied on FEDEX’s well-known status without examining the extent of its reputation in the appellant’s market.
4. FEDEXO had been honestly adopted in 2009, deriving from “FED” and “EXO”, and relied on the absence of actual confusion or infringement proceedings for several years.
5. FEDEX was formally recognised as a well-known trademark only in February 2024, and such recognition could not retrospectively invalidate the appellant’s earlier adoption.

Respondent’s Submissions

1. FEDEX was a prior adopted, extensively used and registered trademark, enjoying well-known status and protection across classes. FEDEXO, by reproducing FEDEX in its entirety with the addition of the letter “O”, was deceptively similar.
2. The appellant had initially adopted FEDEX and modified it to FEDEXO only after receiving a third-party objection. Its explanations for the adoption of the mark were alleged to be afterthoughts, unsupported by contemporaneous documents.
3. The extensive use, registrations, advertising, turnover, awards and international judicial recognition established that FEDEX had acquired substantial reputation in India well before 2009.
4. The appellant’s inconsistent explanations and lack of invoices evidencing use before May 2010 demonstrated dishonest adoption and absence of due cause.

Court’s Analysis and Findings

• Similarity between FEDEX and FEDEXO

The Court rejected the appellant’s contention that the marks were visually and phonetically distinct. It observed that FEDEXO reproduced the registered mark FEDEX in its entirety, with only the addition of the letter “O”.

Applying the test of comparison from the perspective of a purchaser of average intelligence and imperfect recollection, the Court held that the marks were substantially similar.

• Well-known status of FEDEX prior to 2009

The Court held that the formal recognition of FEDEX as a well-known trademark in February 2024 did not preclude it from having acquired such status before the appellant’s application was filed in November 2009.

The respondent’s evidence of extensive use in India and internationally since 1984, registrations, advertising, turnover, awards and foreign judicial recognition sufficiently established its reputation and well-known status prior to 2009.

The subsequent inclusion of FEDEX in the Registry’s list of well-known trademarks merely recorded a status that had already been acquired. As the appellant failed to establish honest prior adoption of FEDEXO, the Court answered this issue in favour of the respondent.

• Honest adoption, due cause and bad faith

The Court rejected the appellant’s claim of honest and independent adoption.

Although the appellant relied on its use of other marks incorporating the prefix “FED” and claimed that FEDEXO was derived from feeder materials and exothermic sleeves, its own correspondence indicated that it had initially used FEDEX and subsequently modified the mark to FEDEXO following an objection from a third party.

The claim of continuous use since September 2007 was also contradicted by the appellant’s correspondence and invoices, the earliest of which referred to FEDEXO only in May 2010.
The Court took note of the unexplained discrepancies and the repeated assertion of the earlier user claim in the appellant’s pleadings and supporting documents, finding them indicative of bad faith.

• Protection of well-known marks across dissimilar goods

The Court acknowledged that the appellant’s foundry-related goods in Class 1 were dissimilar to the respondent’s goods and services in Classes 12, 16 and 39, and that the parties operated in different commercial fields. However, it held that such dissimilarity did not preclude protection o0f a well-known mark.

Given that FEDEXO substantially incorporated the distinctive and well-known mark FEDEX, its use without due cause would take unfair advantage of, and be detrimental to, the distinctive character and reputation of FEDEX.

• Actual confusion, examination report and other contentions

The Court rejected the appellant’s reliance on the absence of actual confusion or separate infringement proceedings over several years.

It held that proof of actual confusion was not indispensable and it independently protects well-known trademarks against unfair advantage and detriment to their distinctive character or reputation.

The Court also noted that the respondent had initiated opposition proceedings in 2013. The omission of FEDEX from the examination report did not prevent the respondent from opposing the application.

Decision

The Madras High Court dismissed the appeal and confirmed the order passed by the Assistant Registrar of Trademarks, refusing registration of FEDEXO in Class 1.

Takeaway

1. The decision reinforces the broad protection available to well-known trademarks against the use of substantially similar marks even in relation to dissimilar goods and services.
2. The formal recognition as a well-known trademark is not necessarily the point at which such status arises; the underlying reputation and goodwill may be established through evidence of prior use and recognition.
3. Claims of honest adoption and prior use must be supported by consistent and contemporaneous evidence.
4. The absence of actual confusion, the existence of different trade channels or the omission of a prior mark from the examination report will not, by themselves, overcome the protection afforded to a well-known trademark.

The Madras High Court was called upon to adjudicate a trademark dispute between RPG Enterprises Limited and RPG Marble Private Limited in a rectification petition instituted under Section 57 of the Trademarks Act, 1999, challenging the registration of the mark

Background

RPG Enterprises Limited filed the rectification petition challenging the registration of the impugned mark in Class 42. The Registrar of Trademarks was impleaded as the first respondent, while RPG Marble Private Limited and its Directors were arrayed as the other respondents.

The Petitioner asserted that its trademark “RPG”, used extensively since 1979, had acquired substantial goodwill and reputation and was exclusively associated with the Petitioner and its group companies, attaining the status of a well-known trademark. It contended that the impugned mark incorporated “RPG” as its dominant and distinctive element, rendering it deceptively similar to the Petitioner’s mark and likely to cause confusion or suggest a commercial association. The Petitioner further alleged that the registration diluted the distinctiveness of its mark and conferred an unfair advantage upon the Respondents and therefore sought its removal from the Register for having been made and remaining there without sufficient cause.

Petitioner’s Submissions

1. Dominant mark: “RPG” is identical to the petitioner’s well-known mark, and the addition of “Marble Pvt. Ltd.” does not distinguish it.
2. Wrong entry: The respondents’ marble and granite business falls under Class 19, not Class 42, rendering the registration improperly classified under Section 57(2).
3. Dishonest adoption: The respondents allegedly adopted “RPG” to imitate the petitioner’s mark, and the claimed derivation from the directors’ initials did not establish bona fide adoption or attract the own-name defence.
4. Insufficient evidence of use: The respondents failed to substantiate their claimed use since 7 April 2000, with certain invoices not bearing the impugned mark.
5. Reputation and commercial nexus: The petitioner’s longstanding rights and reputation in “RPG”, recognised as a well-known mark and included in the Registrar’s list on 29 May 2023, warranted protection even against use for dissimilar goods having a commercial nexus.
6. Delay and acquiescence: The petitioner disputed the alleged 2002 notice, claiming knowledge of the respondents’ use only in 2017, and argued that delay did not bar rectification of a dishonestly obtained registration.
7. Public interest: The registration was a wrong entry made without due cause, and its removal was necessary to protect the petitioner’s rights and maintain the purity of the Trademarks Register.

Respondents’ Submissions

1. “RPG” was independently coined from the initials of the respondents’ directors and had been continuously used since April 2000, generating substantial goodwill in marble, granite, stones and allied products.
2. The respondents’ business was distinct from the petitioner’s, whose registrations covered Classes 5, 9, 12, 16 and 30, whereas the impugned mark was registered in Class 42.
3. The mark “RPG Marble Pvt. Ltd.” had to be considered as a whole, taking into account its stylised “R” and distinctive blue-and-beige colour combination.
4. The petitioner allegedly knew of the respondents’ use since 2002 but initiated rectification proceedings only in 2017, attracting delay, laches, waiver and acquiescence.
5. The petitioner had allegedly suppressed material facts regarding the 2002 legal notice, despite its own annual report identifying the law firm involved.
6. The petitioner’s recognition of “RPG” as a well-known trademark in 2023 could not retrospectively invalidate a mark adopted in 2000 and applied for in 2006.
7. The petitioner had no registration in Class 42 and failed to establish sufficient reputation or distinctiveness in “RPG” at the time of the respondents’ adoption.
8. The respondents contended that the Class 42 registration resulted from the Registry’s examination and should not prejudice their bona fide adoption.
9. The petitioner’s 2018 civil suit, dismissed for non-prosecution with restoration pending, was relied upon to demonstrate a lack of diligence and entitlement to discretionary relief.

Court’s Findings and decision

1. The Court examined whether the rectification petition was barred by waiver, delay, laches and acquiescence under Section 33 of the Trademarks Act.
2. The respondents relied on a legal notice dated 13 February 2002 to establish the petitioner’s prior knowledge, despite the rectification petition being filed only in 2017.
3. The petitioner denied knowledge of the 2002 notice, claiming it discovered the infringement in 2017 and that delay alone could not defeat its trademark rights.
4. The Court found the petitioner’s witness evasive during cross-examination, particularly regarding the law firm that issued the 2002 notice, which was identified as the petitioner’s legal adviser in its 2016–17 Annual Report.
5. The Court concluded that the petitioner had prior knowledge since 2002 and that its nearly 15 years of inaction amounted to acquiescence, attracting the bar under Section 33.
6. Accordingly, the petition was dismissed without detailed examination of the remaining issues.

Comment

The decision underscores that prolonged inaction despite prior knowledge of an allegedly infringing trademark can prove fatal to rectification proceedings, with acquiescence under Section 33 emerging as a decisive bar to relief.

The Delhi High Court, in a dispute between ASR Market Ventures Private Limited (ASR) and Fitship Private Limited (Fitship), examined whether prior adoption of a trademark, without demonstrable use as a source identifier and independently established goodwill, could sustain a passing-off claim and justify rectification of a rival registration. The dispute concerned the mark FITFEAST, which ASR claimed to have adopted in 2017 for nutrition and wellness-related services, while Fitship used the mark for protein-rich snacks and other food products.

Background

ASR claimed to have adopted FITFEAST in 2017 for nutrition, healthy food and wellness-related services, including customised meal plans, nutritionist services and other fitness solutions. It asserted that extensive promotional activities, commercial collaborations and business operations had generated substantial goodwill and common law rights in the mark.

Fitship, on the other hand, operated a business involving health-focused food products, including protein bars, chips, shakes and peanut butter. It adopted FITFEAST in 2021, allegedly inspired by its founder’s personal health and weight-loss journey and subsequent interest in nutrition and protein-rich foods. Fitship applied for registration of a FITFEAST device mark in Class 30 on a proposed-to-be-used basis, and the mark was subsequently registered.

ASR challenged the registration, alleging dishonest adoption, likelihood of confusion and false association between Fitship’s products and its nutrition and wellness services. It sought rectification of Fitship’s registration, principally on the ground that the registration was contrary to the law of passing off.

ASR’s submissions

ASR contended that it was the honest prior adopter and proprietor of the coined mark FITFEAST, having used it continuously since 2017. It argued that Fitship, being engaged in the same industry, was aware of its goodwill and nevertheless adopted an identical or deceptively similar mark for allied and cognate goods.

ASR relied on its claimed commercial activities, revenues, promotional expenditure and collaborations to establish goodwill and reputation. It further contended that the overlapping consumer base, trade channels and increasing convergence between fitness services and nutritional products created a likelihood of confusion and false association. It also relied on mixed Instagram search results as evidence of the parties’ overlapping online presence and the potential dilution of its claimed distinctiveness.

Fitship’s submissions

Fitship denied that ASR had established prior trademark use or independent goodwill in FITFEAST. It maintained that its adoption in 2021 was bona fide, following trademark, domain-name and online searches that allegedly revealed no relevant prior rights or significant use by ASR.

Fitship emphasised that ASR’s business was predominantly conducted under FITPASS, with FITFEAST appearing merely as one of several additional services offered under the FITPASS umbrella. It argued that ASR’s documents did not establish independent commercial use of FITFEAST as a source identifier and that the revenue and marketing figures relied upon related to its overall business rather than the impugned mark.

Fitship further contended that ASR had applied to register FITFEAST only in 2025, years after its claimed adoption, and had failed to establish the essential elements of passing off, goodwill, misrepresentation and damage.

Court’s Findings and Analysis

• Trademark use must identify the commercial source

The Court emphasised that use of a mark cannot be considered in isolation. It must be demonstrated that the mark is used in a manner that identifies the source of the goods or services and distinguishes them from those of others. For a passing-off claim, the claimant must establish that its use of the mark as a badge of origin generated sufficient goodwill before the rival’s adoption.

The Court reiterated that priority of adoption, by itself, is insufficient. Even where adoption is earlier, the claimant must establish actual use and consequent goodwill as of the relevant date.

• FITPASS, rather than FITFEAST, was the principal source identifier

On examining the evidence, the Court found that ASR consistently advertised, promoted and provided its services under FITPASS. FITFEAST appeared only as a reference to one of several additional services and was frequently presented as “FITFEAST by FITPASS.”

The Court noted that FITFEAST services were bundled with FITPASS subscription plans and accessed through ASR’s FITPASS website and mobile application. ASR’s social media presence and third-party collaborations were also predominantly associated with FITPASS. Consequently, the evidence did not establish that consumers independently associated FITFEAST with ASR as the source of the relevant services.

The Court also found it significant that ASR had not produced separate revenue figures, marketing expenditure or sales invoices demonstrating commercial activity under FITFEAST as an independent trademark.

• Documentary evidence did not establish independent goodwill

The Court examined the documents relied upon by ASR to establish use since 2017, including internal emails, standees, brochures, corporate posters and news articles. It found that these materials either lacked evidence of actual commercial use or referred to FITFEAST as an additional service offered under FITPASS.

The third-party agreements relied upon by ASR were similarly insufficient. Only six agreements predated Fitship’s adoption of the mark, and even these did not establish use of FITFEAST as an independent trademark. The subsequent agreements could not substantiate the existence of prior goodwill as of the relevant date. The awards relied upon by ASR were also associated with FITPASS rather than FITFEAST.

Accordingly, the Court concluded that ASR had failed to demonstrate independent goodwill or an exclusive consumer association with FITFEAST.

• Passing off and bad-faith adoption were not established

In the absence of independently established goodwill in FITFEAST, ASR could not sustain its passing-off claim. The Court also rejected ASR’s allegation of bad faith taking into account Fitship’s searches before adoption and the fact that ASR applied for registration only in 2025.

The Court found that ASR’s evidence did not establish the requisite prior trademark use and goodwill to support its challenge to Fitship’s registration.

Decision

The Court held that ASR had failed to establish independent goodwill and reputation in FITFEAST before Fitship’s adoption of the mark in 2021. Finding that ASR’s business was predominantly conducted under its umbrella mark FITPASS, the Court dismissed the passing-off claim and the rectification petition.

Comment

The decision underscores the importance of distinguishing between use of a mark as a trademark and its mere appearance as a feature or service description under a dominant house mark. Businesses seeking to enforce common law rights should maintain contemporaneous evidence demonstrating independent use, including invoices, sales figures, advertising expenditure and consumer recognition attributable specifically to the mark in question.

The Delhi High Court Division Bench, in an appeal against an ex-parte ad-interim injunction granted by a learned Single Judge, vacated the injunction in a trademark dispute involving NUREWIRE and RewireX, used for nutraceutical products. The Bench found that the Plaintiff had wilfully suppressed material facts concerning its prior knowledge of the Defendants’ adoption of the impugned mark, thereby creating a false sense of urgency to secure interim relief without notice.

Emphasising the duty of full and frank disclosure, particularly in commercial suits seeking ex-parte relief, the Court dismissed the interim injunction application, imposed costs of ₹2 lakh and directed the release of the seized products.

Background

The Plaintiff, Celagenex Research (India) Pvt. Ltd., is the registered proprietor of NUREWIRE in Class 5 since June 2020. Defendant No. 1, Nugenesys Pharmaceuticals Pvt. Ltd., adopted RewireX for competing nutraceutical products and applied for its registration in March 2025. The products were launched in March 2026.

Defendant No. 2, Mr. Shoyeb Abdul Gafoor Mandlekar, was a founding director, Vice President and Chief Financial Officer of the Plaintiff and held 99% of its founding shareholding. He resigned in October 2024, shortly before Defendant No. 1 was incorporated.

Significantly, the Plaintiff issued a cease-and-desist notice dated 29 October 2025, calling upon the Defendants to withdraw their trademark application and cease the impugned use. It also filed objections to the application before the Trademarks Registry in January 2026.

However, when the Plaintiff subsequently instituted the suit, it asserted that it had first become aware of the impugned mark in May 2026. The earlier notice and objections were not expressly disclosed in the plaint, synopsis or list of dates. The learned Single Judge nevertheless granted an ex-parte ad-interim injunction and appointed a Local Commissioner, observing that the circumstances surrounding the adoption of RewireX did not inspire confidence.

Aggrieved, the Defendants appealed to the Division Bench.

Appellants’ submissions

1. The Appellants contended that the injunction should not have been granted without notice or an opportunity of hearing. The Plaintiff had known of their adoption of RewireX since October 2025, and its assertion of first knowledge in May 2026 had created a false sense of urgency.
2. They also challenged the procedural validity of the order, alleging that adequate reasons for granting ex-parte relief had not been recorded and that the returnable date exceeded the prescribed 30-day period.
3. On merits, the Appellants argued that the competing products contained different active pharmaceutical ingredients (APIs) and were distinguishable. They further submitted that the learned Single Judge had found the rival trade dresses not deceptively similar.
4. The Appellants disputed the authenticity of the alleged appointment letter relied upon by the Plaintiff, asserting that Defendant No. 2’s signatures had been forged and that he had never been employed by the Plaintiff. They also challenged his description as an erstwhile distributor. Further, circulation of the injunction order among retailers and distributors had allegedly caused reputational and commercial harm.

Respondent’s submissions

1. The Plaintiff maintained that the omission to disclose the notice dated 29 October 2025 and the subsequent objections was an inadvertent oversight. It argued that the notice followed discovery of the Defendants’ trademark application and did not establish knowledge of actual commercial use.
2. According to the Plaintiff, the Defendants launched their products only in March 2026, and it became aware of such use in May 2026, following which it promptly approached the Court.
3. The Plaintiff asserted that RewireX infringed its registered NUREWIRE mark, particularly because the products and trade channels were identical or closely related, creating a likelihood of consumer confusion. It further indicated that discontinuation of RewireX would resolve the dispute.

Court’s Analysis and Findings

• Suppression of material facts

The principal issue before the Division Bench was the consequence of the Plaintiff’s failure to disclose its earlier notice and objections when seeking ex-parte relief.

The Court noted that the notice dated 29 October 2025 and the objections filed in January 2026 established the Plaintiff’s knowledge of the Defendants’ adoption of RewireX well before May 2026. It rejected the explanation that the omission was inadvertent or that these documents were immaterial.

As a commercial suit, the Plaintiff was required to disclose all material facts and documents, including under the Statement of Truth. Although copies of the notice and objections were included among the filed documents, they were not properly identified in the index or expressly highlighted in the pleadings, synopsis or list of dates. They were effectively “tucked away” in the record.

The Bench held that the Plaintiff had wilfully suppressed material facts and misled the Court regarding the date of its knowledge of the impugned mark.

• False urgency and invalidity of ex-parte relief

The Court found that the non-disclosure materially affected the grant of the injunction. By portraying May 2026 as the date of first knowledge, the Plaintiff created a false sense of urgency and influenced the Court to grant relief without notice.

Had the earlier notice and objections been disclosed, the learned Single Judge might have directed short notice to the Appellants instead. The Plaintiff’s exemption from advance service of the paper-book further undermined an important procedural safeguard.

While recognising that ex-parte injunctions and the appointment of Local Commissioners may be justified in appropriate cases involving counterfeiting or passing off, the Bench emphasised that such discretion must be exercised on the basis of full and frank disclosure.

The material non-disclosure, coupled with the failure to record adequate reasons for dispensing with notice, rendered the impugned order unsustainable.

1. Pre-institution mediation

The Bench also considered the Plaintiff’s prior knowledge concerning pre-institution mediation in commercial disputes not contemplating urgent interim relief.

The Court held that the earlier notice and objections were material to the Plaintiff’s request for exemption from mediation. Given the chronology and the parties’ prior business relationship, the Plaintiff should have addressed the mediation requirement rather than seeking exemption on the basis of urgency without disclosing the earlier steps.

The exemption had thus been obtained through suppression of material facts.

• Pattern of non-disclosure and responsibility under the Statement of Truth

The Division Bench took note of two earlier suits involving the same filing counsel in which Courts had recorded concerns regarding suppression or non-disclosure. In one matter, costs of ₹10 lakh had been imposed, although subsequently set aside by consent following settlement. Another involved the suppression of a cease-and-desist notice.

The Bench also criticised the practice of filing material documents under a generic “COLLY” heading without expressly identifying their significance. Considering the three suits collectively, it found a recurring pattern of non-disclosure concerning the true date on which the cause of action arose.

The Court rejected the explanation of inadvertence, finding that the circumstances indicated deliberate and wilful suppression intended to secure an ex-parte order. It emphasised that responsibility for the Statement of Truth rested with the litigant as well as counsel. The Plaintiff, having signed the Statement of Truth, was equally accountable for the omissions.

The decision reinforces that a party seeking equitable relief, particularly without notice to its opponent, must approach the Court with complete candour and utmost good faith.

• No overriding public-interest justification

The Court found no overriding public-interest justification for continuing the injunction. The Appellants’ products were manufactured under an FSSAI licence, sales were subject to GST regulation, and no prima facie public-health risk had been demonstrated. The dispute was essentially commercial.

In these circumstances, the injunction could not be sustained in the face of the Plaintiff’s material non-disclosure.

Decision

The Division Bench vacated the ex-parte ad-interim injunction, dismissed the interim injunction application, directed payment of ₹2 lakh in costs to the Delhi High Court Legal Services Committee, and ordered the release of the seized products, permitting the Appellants to dispose of them.

Key Takeaways

1. Material correspondence and prior proceedings must be expressly disclosed when seeking urgent relief; merely including documents among annexures may not suffice.
2. The chronology of knowledge is critical to assessing urgency and compliance with pre-institution mediation requirements.
3. The duty of candour extends to the litigant who verifies the pleadings through the Statement of Truth.

The Bombay High Court, in proceedings under Section 9 of the Arbitration and Conciliation Act, 1996, has restrained a former franchisee from using “KIDZEE”, “KIDGEE” or any deceptively or phonetically similar name after the expiry of her franchise agreement with Zee Learn Limited. The Court held that regulatory permission to operate a school under a new name could not override contractual restrictions or revive an expired franchise. The decision highlights the importance of the overall commercial context, prior franchise relationship and likelihood of continued association when assessing the use of a deceptively similar mark.

Background

Zee Learn Limited had granted the Respondent, Beauty Singh, a franchise to operate a KIDZEE centre at Bisunpur, Koderma, under a Franchise Agreement dated 20 January 2014. The six-year agreement expired in January 2020, following which the Respondent was required to cease using the Petitioner’s intellectual property and the KIDZEE trademark.

The Petitioner subsequently alleged continued use of the KIDZEE name and issued a legal notice, followed by a police complaint and FIR. The Respondent thereafter adopted the name “KIDGEE” for the school. Zee Learn contended that the new name was deceptively and phonetically similar to KIDZEE and enabled the Respondent to retain the goodwill and association developed during the franchise period.

The Parties’ Contentions

Zee Learn argued that the Respondent’s right to use KIDZEE and the associated intellectual property was limited to the subsistence of the franchise. Following expiry, the Respondent could neither use the mark nor adopt a similar name suggesting continuing affiliation with the Petitioner.

The Petitioner further emphasised that the Respondent continued to operate from the same locality and for the same educational activity and had adopted KIDGEE after six years of operating under KIDZEE. The similarity between the two names, it was argued, could lead parents and members of the public to believe that the Respondent continued to be associated with Zee Learn.

The Respondent contended that she had ceased using KIDZEE after becoming aware that the franchise had expired and had subsequently obtained Government permission and UDISE (Unified District Information System for Education) registration to operate under the name KIDGEE School. She also argued that “KID” was a common element and that the Petitioner could not claim exclusive rights over it.

Court’s Findings

The Court considered the dispute to be fundamentally contractual, arising from the Respondent’s continued use of KIDZEE or a deceptively similar name after expiry of the Franchise Agreement.

A significant aspect of the decision was the Court’s treatment of the Government permission obtained by the Respondent. The Court held that such permission operated in a different field and could not override the contractual obligations undertaken by the Respondent. Regulatory recognition to operate a school under the name KIDGEE could not revive the expired franchise.

The Court also rejected the suggestion that the presence of the common element “KID” resolved the issue. The assessment had to be made in the context of the overall circumstances, including the similarity between KIDZEE and KIDGEE, the six-year franchise relationship, the same educational activity and the same locality.

The Court found a prima facie case of continuing prejudice. In its view, the adoption of KIDGEE after the Respondent had operated as a KIDZEE franchisee for six years could indicate an intention to retain the earlier association and potentially affect the Petitioner’s goodwill and reputation.

Relief

The Respondent was restrained from using KIDZEE, KIDGEE or any deceptively or phonetically similar name or representation suggesting continuing association with Zee Learn. She was also directed to remove such names from the school premises, advertisements, uniforms, stationery, websites, social media and other materials.

The Court additionally directed preservation and disclosure of relevant admission, fee, financial and promotional records from 20 January 2020 onwards. However, it declined the Petitioner’s request for a ₹7.85 crore bank guarantee and appointment of a Court Receiver, leaving questions of damages and monetary liability for determination by the arbitral tribunal.

Key Takeaways

1. Expiry of a franchise means more than cessation of the licensed mark: A former franchisee may also be prohibited from adopting a similar name which creates an impression of continuing affiliation.
2. Regulatory permission does not override contractual obligations: Government or regulatory approval to operate under a particular name cannot revive an expired franchise or nullify contractual restrictions.
3. Similarity must be examined in context: The Court did not examine “KID” in isolation. The prior six-year franchise relationship, similarity of the names, identical business activity and the locality were relevant to assessing the likelihood of continued association.
4. The surrounding circumstances can be as important as the marks themselves: Where a former franchisee adopts a similar mark immediately after the franchise relationship ends, the history of the relationship may materially influence the Court’s assessment of deceptive similarity and goodwill.

Comment

The decision serves as a useful reminder that a former franchisee cannot necessarily escape post-termination restrictions simply by replacing the franchisor’s mark with a slightly altered name. Where the new name, viewed against the history of the franchise and the nature of the parties’ businesses, is capable of preserving the earlier association, contractual restrictions and trademark-related concerns may continue to have significant consequences even after the franchise itself has expired.

Artificial intelligence is increasingly used in advertising to edit content, create virtual influencers and synthetic voices, personalise messaging, and produce realistic product demonstrations. As AI-generated content becomes more sophisticated, consumers may find it difficult to distinguish between authentic depictions and content that has been generated or materially altered using AI.

When does AI-generated content need to be labelled?

ASCI bases the labelling assessment on the nature of the communication and the risk that consumers may be misled or harmed. Brands should consider the following questions together:

1. Whether the SGC is central to the advertisement’s persuasive messaging, or if it materially influences the consumer’s purchase decisions?
2. If unlabelled, will the SGC and its manner of use mislead consumers about the product’s claims, performance or benefits?
3. Would the absence of a disclosure create a false or misleading claim regarding the benefit or performance of the product/service?

Prohibited content and mandatory disclosure

ASCI distinguishes between prohibited content, content requiring disclosure and uses for which no label is required. Advertisements that are illegal, infringe rights, make misleading claims or otherwise violate the ASCI Code remain non-compliant even if they carry an AI label. Separately, labelling is mandatory where SGC materially influences consumer decisions and its non-disclosure would mislead consumers. This includes advertisements using synthetic influencers or ambassadors; digitally replicating a real person’s face or voice, even with consent, for personalised messaging; depicting fabricated events, settings or situations relevant to product performance; demonstrating a product that does not yet exist; or using synthetic sound effects that are highly relevant to a product’s core features. Where an AI service recommends a product because the recommendation has been sponsored by a brand, the commercial relationship must be disclosed through a label such as “Sponsored by [Brand]”. Other permissible labels include “Audio/Video created using AI” and “Audio/Video enhanced using AI”, although brands may use alternative wording that accurately informs consumers.

When no label is required

ASCI has also clarified that labelling is not required where SGC has no material impact on a consumer’s ability to make an informed choice. This category includes routine editing and minor enhancements, such as colour correction, lighting adjustments, noise reduction, standard blemish removal and copy refinement, provided they do not alter the substance or core claims of the advertisement. It also covers decorative backgrounds and ambient elements unrelated to the product’s actual capabilities or promise; administrative and text uses undertaken in good faith without creating false records; accessibility features such as subtitles, closed captions, translations and accurate audio descriptions; and obviously unrealistic or fantastical content that an ordinary consumer would not understand as depicting reality.

The Guidelines were published on 17 September 2026 and will take effect upon the expiry of three months from that date.

What does this mean for advertisers and digital platforms?

For brands, advertising agencies, influencers and other stakeholders involved in advertising, the Guidelines add a distinct SGC assessment to the advertising review process. The practical task is to identify how SGC has been used, determine whether it affects a claim or purchasing decision, and decide whether the content is prohibited, requires disclosure or falls within the no-labelling category. Stakeholders should therefore consider:

1. identifying the extent and manner in which SGC has been used in an advertisement prior to publication. This may involve tracking edits made to video or audio content and requiring those involved in its production to appropriately flag the use of SGC;
2. determining whether the SGC materially contributes to a claim or is likely to influence a purchasing decision. Stakeholders may refer to the assessment questions and examples in the Guidelines when evaluating whether a particular use of SGC requires labelling. Where the position remains unclear, further legal or compliance review may be appropriate;
3. using an appropriate disclosure where required under the Guidelines and ensuring that its presentation complies with the ASCI Code’s disclaimer requirements, where applicable;
4. ensuring that AI-generated product demonstrations and representations are supported by facts;
5. obtaining appropriate consent before digitally replicating an individual’s likeness or voice; and
6. clearly identifying sponsored recommendations made through AI systems.

These requirements are particularly relevant to digital advertising, where content can be generated, adapted and personalised rapidly and at scale. Compliance processes may therefore need to account not only for the original advertisement, but also for materially different AI-generated versions, personalised variants and sponsored recommendations delivered through AI systems. Advertisers and platforms should also ensure that disclosures remain clear when content is reformatted, redistributed or displayed across different interfaces.

What may require further clarity?

Although the Guidelines provide an assessment framework and illustrative examples, their application may still raise questions about when SGC materially influences a consumer’s decision. The concept is not separately defined, and its application will depend on the nature of the claim, the product or service being advertised, and the likely effect of the synthetic representation on consumer understanding. For example, if SGC used in an advertisement for a fairness cream makes the depicted skin tone appear marginally brighter than the substantiated result, the issue may be whether that alteration changes the consumer’s perception of product efficacy. Similarly, if SGC depicts a vehicle’s braking distance as marginally shorter than its actual braking distance, the representation may require scrutiny even where braking performance varies with external conditions. These examples illustrate that materiality may turn not merely on the extent of the alteration, but on whether it affects a claim or attribute that is significant to the purchasing decision. More complex uses of SGC are therefore likely to require fact-specific legal and compliance review.

A consumer-centric framework

The Guidelines are ultimately consumer-centric. They seek to provide additional information where technology may blur the distinction between an actual event, person or product experience and a synthetic representation. By requiring disclosure where SGC may materially influence consumer understanding, while exempting uses that do not affect informed choice, the framework seeks to promote transparency without creating unnecessary label fatigue.

For advertisers, the practical message is that increasing use of AI must be matched by a proportionate review of what has been generated or materially altered, how consumers are likely to understand the representation, whether the underlying claim is substantiated, and whether consent has been obtained where necessary. That review should lead to a clear determination: whether the content is prohibited, requires an effective disclosure, or falls within the no-labelling category. Labelling is a transparency measure, not a defence to an advertisement that is otherwise misleading, harmful or non-compliant with the ASCI Code. This framework is likely to become an increasingly important part of advertising compliance as synthetic and personalised content becomes more common across digital media.

In the landmark judgment Justice K.S. Puttaswamy v. Union of India, the Supreme Court made clear that the state cannot intrude into personal privacy without meeting a three-part test. The intrusion must have a valid legal basis, pursue a legitimate state aim, and be proportionate to that purpose. In other words, the state can access private information only when the intrusion is necessary and no more extensive than required.

Yet India still has no single, codified law governing digital searches, seizures, and state surveillance. The Digital Personal Data Protection framework gives government agencies broad exemptions on grounds such as state security and public order. As a result, investigators continue to rely largely on general procedural powers, including Section 94 of the Bharatiya Nagarik Suraksha Sanhita (previously Section 91 of the Code of Criminal Procedure). Most discussions around this regulatory gap focus, understandably, on privacy and civil liberties. However, broad powers to access digital devices can affect more than personal information. They may also expose trade secrets, proprietary software, copyrighted source code, proprietary algorithms, confidential business records, and other commercial sensitive information that may have no connection to the investigation.

Three areas show why this matters in practice: (a) the exposure of trade secrets and proprietary data, (b) the treatment of copyrighted software and digital works, and (c) the lack of forensic safeguards designed with intellectual property in mind.

     1. Compromising Trade Secrets and Proprietary Data:

A digital seizure often captures more than personal communications Laptops, servers, and cloud repositories may also contain the core assets of a business or creative enterprise. For technology companies, research institutions, and creators, that can include trade secrets, proprietary algorithms, unpatented designs, and confidential business strategies.

Without a codified protocol that limits the scope of state access, law-enforcement agencies may create complete mirror images of storage devices. Those copies can sweep in commercially valuable information that is unrelated to the investigation, particularly where the governing framework does not require necessity and proportionality safeguards. Once the information enters state custody, there may be no clear confidentiality guarantee or adequate protection against unauthorised disclosure.

     2. Infringement on Software and Copyrighted Works

The same concern arises in digital forensic investigations involving databases and software repositories. Seizing a complete copy may expose copyrighted source code and other protected digital assets. If the law does not clearly limit the scope and duration of access, investigators may retain a wide view of the structure and contents of proprietary software systems.

From an intellectual property standpoint, unguided data collection can lead to unauthorised copying, disclosure, or mishandling of copyrighted material. Broad public-order exemptions from ordinary data-protection obligations may also leave creators with limited statutory remedies if their intellectual property is compromised during a criminal investigation.

     3. The Need for IP-Aware Forensic Protocols

India therefore needs a comprehensive statutory framework for digital searches and seizures conducted by law-enforcement authorities. To meet the constitutional test and protect privacy and intellectual property, the legal framework should include practical safeguards at every stage, including the collection, review, storage, sharing, and return of digital evidence, and ensure that access is lawful, necessary, and proportionate.

1. Targeted data extraction instead of blanket imaging: Investigating Officers in a criminal prosecution and Local Commissioners appointed in a civil case should extract only the data that is demonstrably relevant to the investigation, rather than copying entire devices. Technical tools such as cryptographic hash verification can then be used to confirm authenticity and integrity. Together, these measures would better reflect the requirements of necessity and proportionality.
2. Trade-secret confidentiality safeguards: The law should require proprietary information to be identified, segregated, securely stored, and accessible only to authorised persons. Where digital evidence contains commercially sensitive intellectual property, courts should also be able to review it in camera i.e. without the public, press, or outside observers present
3. Chain-of-custody accountability: Access to seized commercial digital assets should be logged, and every stage of their handling should be auditable. Unauthorised disclosure or misuse should attract clear statutory consequences.

Conclusion

India’s current, largely uncodified approach to state access to digital data may fall short of constitutional privacy standards and creates real risks for businesses, innovators, and creators. A clear law-enforcement data framework, grounded in the Puttaswamy principles of legality, necessity, and proportionality, would do more than protect individual rights. It would also reduce the risk that trade secrets and copyrighted material are misused or disclosed, and help build confidence in India’s digital innovation ecosystem.

The Delhi High Court, in a recent judgment of its Division Bench, considered the interplay between prior use, descriptive marks, third-party use, deceptive similarity, and limitation in a passing-off dispute concerning the marks HASLAB’S DIGESTO and DIGESTO PLUS.

The appeal was preferred by Hahnemann Scientific Laboratory India Pvt. Ltd. against the order of the District Judge (Commercial Court)-01, Patiala House Courts, New Delhi, which had declined to continue an interim injunction against Meera Rastogi trading as Hahnemann Memorial Laboratory.

The Division Bench dismissed the appeal, principally on the ground of limitation, while also finding no infirmity in the Trial Court’s assessment of prior use, deceptive similarity, balance of convenience and irreparable injury.

Background

The Plaintiff is engaged in the manufacture, marketing and sale of homoeopathic medicines and preparations. Its group concern, M/s Hahnemann Scientific Laboratory (India), claimed to have bona fide adopted and commenced use of the trademark HASLAB’S DIGESTO in 1971.

The mark was subsequently registered in Class 5 in 1986, claiming use since 1971. However, the registration expired in 1993 and was not renewed.

The Defendant was also engaged in the manufacture and sale of homoeopathic medicines and used the mark DIGESTO PLUS. Its application for the mark in Class 5 was pending.

The Plaintiff claimed that it became aware of the Defendant’s use of DIGESTO PLUS only in May 2024 and thereafter instituted a suit for passing off. The Trial Court initially granted an ex parte ad-interim injunction and appointed a Local Commissioner.

After the Defendant entered appearance and filed its written statement, the Trial Court reconsidered the matter and set aside the injunction. It found, inter alia, that the Plaintiff had failed to establish misrepresentation or likelihood of deception.

The Plaintiff’s Case

Before the Division Bench, the Plaintiff contended that it was the prior adopter and user of HASLAB’S DIGESTO since 1971 and that the Trial Court had erred in questioning its claim merely because documentary evidence of continuous use between 1981 and 2007 was unavailable.

It argued that the Defendant’s mark DIGESTO PLUS was deceptively similar to HASLAB’S DIGESTO, since both products were pharmaceutical preparations sold through similar trade channels to the same class of consumers.

The Plaintiff further contended that “DIGESTO” was suggestive rather than descriptive and that the Trial Court had wrongly treated the expression as publici juris. According to the Plaintiff, mere third-party registrations or search results could not establish actual market use of the term.

The Plaintiff also relied upon its fresh registration for HASLAB’S DIGESTO, granted in March 2026, claiming use since 1971. An application was thereafter filed seeking amendment of the plaint to incorporate the subsequent registration.

The Defendant’s Submissions

The Defendant opposed the appeal on both limitation and merits.

It contended that the appeal had been filed 76 days beyond the prescribed period and that no sufficient cause had been shown for condoning the delay.

On merits, the Defendant submitted that the suit was essentially one for passing off, as the Plaintiff had no subsisting registration when the Trial Court passed the impugned order. The subsequent registration could not retrospectively convert the dispute into an infringement action.

The Defendant relied upon documentary evidence demonstrating use of DIGESTO PLUS since 1980, including invoices and regulatory documents.

It was argued that the Plaintiff’s claimed user date of 1971, appearing in its trademark applications, was merely an assertion unsupported by evidence of continuous commercial use, sales, goodwill or reputation.

The Defendant further relied upon the fact that, during registration of the Plaintiff’s earlier mark, the Plaintiff had accepted a disclaimer in respect of the word “DIGESTO”.

Prior Use: 1971 Claim Not Established

The Division Bench found no reason to interfere with the Trial Court’s finding that the Plaintiff had failed to establish continuous commercial use of HASLAB’S DIGESTO between 1981 and 2007.

Although the Plaintiff claimed use since 1971, the earliest sales invoice produced before the Court was from 2007. The Bench noted that the Plaintiff could not identify any documentary material contradicting the Trial Court’s finding.

In contrast, the Defendant had produced material indicating use of DIGESTO PLUS since at least 1980.

Thus, at the interlocutory stage, the Defendant had succeeded in establishing a stronger case regarding prior use, while the Plaintiff’s claim of use since 1971 remained unsupported by evidence.

Is “DIGESTO” Descriptive and Common to the Trade?

The Plaintiff argued that DIGESTO was suggestive and capable of distinguishing its pharmaceutical products. The Division Bench, however, found merit in the Trial Court’s assessment that the expression was common to the trade in relation to digestive preparations.

Particular importance was attached to the 1986 disclaimer. When the Plaintiff’s earlier registration was granted, the Registrar had required a disclaimer in respect of the word DIGESTO. The Plaintiff had not disclosed the circumstances leading to the disclaimer or placed the relevant prosecution history before the Court.

The Court observed that the circumstances and effect of the disclaimer would require examination at trial. Nevertheless, the fact that the Registrar had required the disclaimer in 1986 indicated that DIGESTO was considered common to the trade, and that exclusivity over the expression was not intended to be conferred upon the Plaintiff.

The Defendant had also produced search material showing third-party use and applications involving DIGESTO-formative marks dating back several decades, including an application for the word DIGESTO itself as early as 1946.

These circumstances justified the Trial Court’s prima facie conclusion that DIGESTO was common to the trade in relation to digestive medicines.

The Fresh Registration Did Not Confer Monopoly Over “DIGESTO”

The Plaintiff sought to rely upon its subsequent registration, to contend that the earlier findings concerning the descriptive nature of DIGESTO had effectively been superseded.

The Division Bench rejected this contention.

The Court pointed out that the subsequent registration was for the composite mark HASLAB’S DIGESTO, and not for the solitary word DIGESTO. Therefore, the registration did not, by itself, establish exclusive rights over the word DIGESTO.

The Court also left open for trial the question whether the Registrar, while granting the later registration, had been aware of the disclaimer in the earlier registration and had consciously chosen not to impose a similar limitation. The documents relied upon by the Registrar in accepting the claimed user date since 1971 would require examination.

Deceptive Similarity: Marks Must Be Compared as a Whole

On the issue of deceptive similarity, the Division Bench reiterated the settled principle that rival marks must be assessed as a whole, having regard to their overall visual, phonetic and conceptual impression.

Applying this test, the Court found no infirmity in the Trial Court’s conclusion that HASLAB’S DIGESTO and DIGESTO PLUS were not deceptively similar.

The respective trade dresses were also found to be distinct.

The Court further held that the mere presence of the common and descriptive expression DIGESTO in both marks could not, by itself, justify a finding of deceptive similarity.

Thus, notwithstanding the fact that both parties operated in the pharmaceutical field, the overall comparison did not disclose a likelihood of confusion sufficient to warrant an interim injunction.

Balance of Convenience and Irreparable Injury

The Court also upheld the Trial Court’s findings on balance of convenience and irreparable injury.

Since the Defendant had prima facie established use of DIGESTO PLUS since 1980, while the Plaintiff could not establish use since its claimed date of 1971, the balance of convenience favoured the Defendant.

Granting an injunction would prevent the Defendant from continuing a mark which, on the material available at the interlocutory stage, it had been using for several decades.

The Court also noted that the Plaintiff’s assertion that it became aware of the Defendant’s use only in 2024 raised questions requiring examination at trial.

Limitation: The Subsequent Registration Could Not Revive a Time-Barred Appeal

The appeal met its most significant obstacle on limitation.

The statutory period for filing the appeal had lapsed and it was instituted with a delay of 76 days.

The Plaintiff relied principally upon the subsequent grant of registration as the explanation for the delay.

The Division Bench held that the subsequent registration, by itself, could not constitute “sufficient cause” for condoning the delay.

The Court clarified that the subsequent registration could not be used to overcome the limitation bar or to seek reconsideration of an order which had already been passed on the basis of the Plaintiff’s passing-off claim.

Key Takeaways

1. Prior use must be proved by credible evidence; a claimed user date alone is insufficient.
2. Descriptive elements cannot readily be monopolised, particularly where third-party use and historical records establish their common nature.
3. Deceptive similarity is assessed by the overall impression of the rival marks, not by isolating a common descriptive element.
4. Limitation remains critical in commercial appeals: a later trademark registration does not automatically justify condonation of delay or reopen a decision that has attained finality.

India’s revised film-certification guidelines largely preserve the existing certification framework, but one change is likely to matter in practice: scenes involving narcotic drugs or psychotropic substances must now carry a prescribed statutory warning. For filmmakers and producers, the point is not merely editorial. Drug-related scenes may now require early compliance review during scripting, editing and post-production, even where the scene is intended to discourage substance abuse.

Issued by the Ministry of Information and Broadcasting on 16 September 2026 under Section 5B(2) of the Cinematograph Act, 1952, the revised guidelines supersede the 1991 guidelines, subject to actions already taken or omitted before supersession.

When does the new drug-warning requirement apply?

The key takeaway is that the warning operates as an additional compliance layer. It does not replace the substantive certification test, and it does not cure a depiction that otherwise breaches the guidelines.

What triggers the warning?

Paragraph 2(h) requires any scene depicting or involving the consumption, use or trafficking of narcotic drugs or psychotropic substances to carry the prescribed statutory warning: “Illicit Narcotics Destroy Health and Guarantees Imprisonment. Say No to Drugs.” The breadth of the trigger is important. The warning requirement is not limited to scenes that glamourise or justify drug use; it may also apply where the depiction is cautionary, incidental or central to the storyline.

How paragraph 2(h) differs from the earlier test

The earlier guidelines, and paragraph 2(f) of the revised guidelines, focus on whether a scene encourages, justifies or glamorises drug addiction. Paragraph 2(h) is different. It creates a separate warning requirement for scenes depicting or involving narcotic drugs or psychotropic substances, even where the scene does not promote drug use. A film that portrays the harmful consequences of addiction may therefore still need to carry the warning.

A warning is not a safe harbour

Conversely, the inclusion of the warning does not make a scene permissible, and a scene that breaches the certification guidelines still remains a problem even with the warning on it. Structurally, paragraph 2(h) is also the only limb of paragraph 2 that requires something to be added to a film. Every other limb tells the Board what to keep out.

Scope of the warning requirement: what remains unclear?

The result is a seemingly simple obligation with several open questions. The revised guidelines prescribe the wording of the warning, but they do not fully explain when, how or to which pending films it must be applied.

Scope: Paragraph 2(h) applies to scenes “depicting or involving” the consumption, use or trafficking of narcotic drugs or psychotropic substances, but the guidelines do not define either expression. The obvious reference point is the Narcotic Drugs and Psychotropic Substances Act, 1985, although the revised guidelines do not expressly incorporate that statute. This leaves room for difficult cases: a character taking prescribed psychotropic medication, a brief visual reference to drug use, or even a spoken reference with no visual depiction. The prescribed warning refers to “illicit narcotics”, but the trigger itself is not expressly confined to illicit use.

Presentation of the prescribed warning: The guidelines prescribe the wording of the warning but do not specify its duration, placement, font size or language. This is likely to matter most for dubbed, regional-language and multilingual releases, where producers may need clarity on whether the warning should appear in the language of the film, in English, or in both. Until the CBFC issues directions or settles a practice, these presentation choices may need to be assessed on a case-by-case basis.

Applicability to pending applications before the CBFC: The revised guidelines supersede the 1991 guidelines while preserving actions taken or omitted before supersession. They do not, however, expressly say how the new warning requirement applies to films already submitted for certification but awaiting a decision. The position is also unclear for films that have already been certified but are yet to be released.

For producers with films at different stages of certification or release, clarity on the application of the revised requirement would be particularly relevant.

Other certification touchpoints that remain relevant

The drug-warning requirement is the principal new compliance point, but it sits within a wider certification framework that continues to shape how films are assessed. The following existing touchpoints remain relevant for producers, particularly when drug-related scenes intersect with age classification, public order, courtroom depictions, national symbols or film titles.

1. Age-based certification categories: Paragraph 5(b) retains the UA 7+, UA 13+ and UA 16+ classifications introduced under the Cinematograph (Amendment) Act, 2023 and the Cinematograph (Certification) Rules, 2024, and later incorporated into the 1991 Guidelines through a 2025 amendment. Paragraph 5(a) also continues to require that a film certified for unrestricted public exhibition be suitable for family viewing. This is where paragraph 2(h) may have practical significance. A drug-related scene may not automatically determine the certification category, but it may invite closer scrutiny under the family-viewing standard and affect whether the film is treated as suitable for U, UA or A certification.
2. Public order and State interests: Paragraphs 2(p) to (s) remain unchanged and continue to require that films do not call into question India’s sovereignty and integrity, jeopardise State security, strain friendly relations with foreign States or endanger public order.
3. Courtroom depictions: Paragraph 2(t) prohibits visuals or words involving defamation or contempt of court. The explanation further extends the scope of “contempt of court” to scenes that tend to create scorn, disgrace or disregard of rules, or undermine the dignity of the Court, in accordance with the Contempt of Courts Act, 1971. This provision assumes particular significance for courtroom dramas, where the portrayal of judges or judicial proceedings in an unflattering light may attract scrutiny.
4. National symbols and emblems: Paragraph 2(u) permits their depiction only in accordance with the Emblems and Names (Prevention of Improper Use) Act, 1950. Producers should also be mindful of related legislation governing the use and depiction of national symbols.
5. Film titles: Paragraph 6 remains unchanged. The CBFC must continue to scrutinise titles to ensure they are not provocative, vulgar, offensive or otherwise contrary to the certification guidelines.

Implications for filmmakers and producers

For filmmakers and producers, the revised guidelines add a compliance check that should be considered during scripting, editing and post-production. Drug-related scenes now require two separate assessments: first, whether the depiction is permissible under the certification guidelines; and second, whether it attracts the prescribed warning. This distinction is especially important where drug-related content is integral to the storyline, even if the scene is intended to discourage substance abuse.

Theatrical and OTT releases require separate analysis

Further, the revised guidelines have been issued in exercise of the Central Government’s powers under Section 5B(2) of the Cinematograph Act, 1952 and govern the CBFC’s certification of films for public exhibition. Their application should, therefore, be distinguished from the separate regulatory framework governing content made available on over-the-top (OTT) platforms under the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021. Producers intending to release films across theatrical and digital platforms should assess the applicable requirements for each mode of exhibition or distribution rather than assume that the revised CBFC guidelines apply uniformly across all platforms.

Conclusion

The revised guidelines retain much of the existing film-certification framework, but paragraph 2(h) introduces a distinct compliance point for drug-related scenes. Until the CBFC’s practice develops, filmmakers and producers should identify such scenes early, assess whether the warning is triggered, and consider how the warning will be presented across theatrical, dubbed and regional-language versions. Early review may reduce the risk of avoidable cuts, last-minute modifications or certification delays.

Introduction

An unchallenged order of the Trademarks Registry can have significant consequences in subsequent infringement and passing off proceedings. This was underscored by a Division Bench of the Delhi High Court in an appeal arising from an ex-parte ad-interim injunction restraining the use of DYNAFRESH against the registered trademark DYNA.

The appeal was principally founded on an allegation of suppression. The Defendant contended that the Plaintiff had failed to disclose 45 GST-paid invoices allegedly evidencing use of DYNAFRESH since June 2021, and that this omission was material because the Plaintiff had represented the Defendant’s adoption as recent.

The Division Bench rejected the contention. Of particular significance was the fact that the Defendant’s earlier user-based application for DYNAFRESH had already been rejected by the Trademarks Registry on the ground that the mark was phonetically and visually similar to DYNA and that the Defendant had failed to substantiate its claimed user. That order had never been challenged.

The Court held that the subsequent reliance on invoices could not overcome the effect of the earlier final order.

Background

Anchor Consumer Products Private Limited, proprietor of the registered trademark DYNA, instituted proceedings against Jagdish Dahyalal Patel alleging trademark infringement and passing off in respect of DYNAFRESH.

The Plaintiff contended that DYNA was the dominant and distinctive element of DYNAFRESH and that the Defendant’s products also bore similarities in colour scheme and overall trade dress.

The learned Single Judge found that the Plaintiff had established substantial goodwill and reputation in DYNA through its sales, advertising and celebrity endorsements. The Court further found that the Defendant’s adoption of DYNAFRESH was not bona fide and that the similarity between the competing marks, coupled with overlapping goods and trade channels, was likely to cause confusion and deception.

An ex-parte ad-interim injunction was accordingly granted.

The Defendant challenged the order before the Division Bench.

The Defendant’s Case: Suppression of Prior Use

The Defendant’s principal grievance was that the Plaintiff had suppressed a material fact.

It contended that DYNAFRESH had been used since June 2021, and not merely from 2026 as allegedly suggested in the plaint. Reliance was placed on 45 GST-paid invoices, which, according to the Defendant, demonstrated continuous prior use.

The Defendant argued that the Plaintiff had access to these documents and ought to have disclosed them before seeking an ex-parte injunction. Had the invoices been disclosed, it was contended, the learned Single Judge may have concluded that the Defendant was not a recent adopter and that an opportunity of hearing should have been afforded before granting interim relief.

The Defendant therefore sought interference with the injunction on the ground of suppression of material facts.

The Plaintiff’s Response

The Plaintiff disputed the allegation of suppression and pointed to the Defendant’s earlier trademark application for DYNAFRESH, filed in 2022 claiming use since 29 February 2020.

That application had been rejected by the Registrar of Trademarks. The Registrar found DYNAFRESH to be phonetically and visually similar to DYNA and covering similar goods, with a likelihood of confusion. Significantly, the Defendant had also failed to substantiate its claimed user since 29 February 2020 despite being given opportunities to do so.

The Defendant did not challenge the Registrar’s order.

The Plaintiff contended that this unchallenged order was crucial to the Defendant’s claim of bona fide adoption. It further pointed out that the Defendant had subsequently filed another application for DYNAFRESH without properly disclosing the earlier adverse order.

The Plaintiff also relied upon Amazon listings from 2021, 2022 and 2025, which had already been placed before the learned Single Judge and which demonstrated that the Defendant’s use of DYNAFRESH was not unknown to the Court.

Division Bench: The Registrar’s Order Changed the Evidentiary Landscape

The Division Bench rejected the Defendant’s suppression argument.

The Court attached considerable significance to the fact that the Defendant’s earlier application for DYNAFRESH had already been rejected by the Registrar and that the order had attained finality.

The Registrar had made two significant findings:

1. the competing marks were phonetically and visually similar, with a likelihood of confusion; and
2. the Defendant had failed to substantiate its claimed use of DYNAFRESH from 29 February 2020.

These findings had never been challenged.

The subsequent reliance on 45 GST invoices therefore could not, in the Court’s view, displace the effect of the Registrar’s order.

The Division Bench effectively treated the Registrar’s unchallenged findings as a significant obstacle to the Defendant’s attempt to establish bona fide adoption through the invoices.

Prior Use Cannot Be Considered in Isolation

An important feature of the decision is that the Court did not treat the alleged prior use as determinative merely because invoices existed.

The Defendant sought to use the invoices to establish use from 2021. However, its earlier application had claimed an even earlier user date of 29 February 2020, which the Registrar had found to be unsupported.

The Court therefore had before it not merely a question of whether the Defendant had invoices dating from 2021, but also an earlier quasi-judicial finding that the Defendant had failed to substantiate its claimed prior use.

The Court held that the Registrar’s findings, including the finding of similarity between DYNAFRESH and DYNA, remained unaffected by the invoices.

This was particularly important because the Defendant had not challenged the learned Single Judge’s substantive findings regarding deceptive similarity, the Plaintiff’s goodwill and reputation, or the lack of bona fides in adoption.

Its challenge was confined essentially to the alleged suppression.

Subsequent Application: The Question of Estoppel

The Division Bench also took note of the Defendant’s subsequent application for DYNAFRESH.

The Court found it significant that the Defendant had failed to disclose the earlier Registrar’s order while pursuing the subsequent application.

The earlier order had not merely rejected the claimed user. It had also found that DYNAFRESH conflicted with the registered DYNA mark.

According to the Division Bench, the Defendant could not disregard this earlier adverse determination and proceed with a subsequent application for the same mark as though the earlier proceedings had not occurred.

The Court therefore regarded the second application as ex-facie lacking in bona fides and liable to be tested against the doctrine of estoppel.

The failure to place the Registrar’s order before the Division Bench further weakened the Defendant’s case.

No Material Suppression by the Plaintiff

The Court also rejected the allegation that the Plaintiff had concealed the Defendant’s use of DYNAFRESH.

The existence of the Defendant’s use was not entirely absent from the material before the learned Single Judge. The Plaintiff had produced Amazon listings dating from 2021, 2022 and 2025.

Thus, the Court found that the Plaintiff had not withheld material information concerning the Defendant’s use of the mark in a manner that would justify setting aside the ex-parte injunction.

More importantly, the alleged invoices could not overcome the earlier Registrar’s findings regarding the Defendant’s failure to substantiate its claimed user and the conflict between the competing marks.

Findings on Similarity Remained Undisturbed

The Division Bench also noted that the Defendant had not challenged the substantive findings which had formed the foundation of the injunction.

The learned Single Judge had found that:

1. DYNA was the dominant and eye-catching element of DYNAFRESH;
2. “FRESH” appeared in a smaller and differently stylised manner;
3. the competing products exhibited similarities in colour scheme and trade dress;
4. the Plaintiff possessed substantial goodwill and reputation in DYNA;
5. the Defendant’s adoption was not bona fide; and
6. the common trade channels and overlapping consumers created a likelihood of confusion and deception.

These findings remained unchallenged in the appeal.

Consequently, even apart from the alleged suppression, the Court found that the Registrar’s earlier finding regarding the similarity of DYNAFRESH and DYNA provided substantial support for the continuation of interim protection.

The Division Bench accordingly dismissed the appeal and allowed the ex-parte ad-interim injunction against DYNAFRESH to stand.

Key Takeaways

1. Alleged prior-use invoices cannot override a final adverse finding of the Trademarks Registry concerning the same mark.
2. A party cannot disregard an earlier adverse Registry order when relying on the same mark; full disclosure of prior proceedings is essential.
3. Suppression must relate to a material fact; where prior use is already before the Court, additional invoices may not justify vacating an injunction.
4. An unchallenged Registry finding of phonetic and visual similarity can significantly influence bona fide adoption, likelihood of confusion, and interim relief.