Delhi High Court | C.O. (COMM.IPD-TM) 122/2025

Decision: August 17, 2026

The article discusses rectification petition filed by Dr. Reddy’s Laboratories Limited (Dr Reddy’s) under Section 57 of the Trade Marks Act, 1999, seeking cancellation of Razenta Pharmaceuticals Private Limited’s (Razenta) registered trademark DAPLOGIN in Class 5. Dr. Reddy’s contended that DAPLOGIN is deceptively similar to its prior registered trademark DAPLO, with both marks being used for Dapagliflozin-based anti-diabetic medicines. After hearing both sides, the Delhi High Court allowed Dr. Reddy’s petition and directed cancellation of the DAPLOGIN registration.

Background

Dr. Reddy’s adopted and commenced use of the trademark DAPLO in 2020 for pharmaceutical products containing Dapagliflozin, used in the treatment of Type-2 Diabetes Mellitus. Dr. Reddy’s holds valid trademark registrations in India and other jurisdictions, and the mark DAPLO has acquired substantial goodwill and market recognition.

Razenta applied for and obtained registration of DAPLOGIN under Registration No. 5208898 on a “proposed to be used” basis. The mark was published in the Trade Marks Journal on June 17, 2024, and registered on November 1, 2024. Dr. Reddy’s claimed that it became aware of the registration only in March 2025, when Razenta’s product appeared on the Tata 1MG platform and the registration was reflected in the Trade Marks Registry records. It then filed the present cancellation petition under Section 57 of the Trade Marks Act, 1999.

Key Issues

1. Whether DAPLOGIN is deceptively similar to DAPLO.
2. Whether registration of DAPLOGIN for identical pharmaceutical goods is likely to cause confusion among consumers.
3. Whether DAPLO or the prefix “DAP” is common to the trade/publici juris.

Dr. Reddy’s Arguments/Submissions

1. Dr. Reddy’s is the prior adopter, user and registered proprietor of the mark DAPLO since 2020, and therefore enjoys superior statutory and common law rights.
2. DAPLO is a coined mark with no dictionary meaning and does not describe or identify the salt composition of the product, namely Dapagliflozin.
3. DAPLOGIN is deceptively similar to DAPLO and is used for identical pharmaceutical goods.
4. The rival marks must be compared as a whole. DAPLOGIN wholly incorporates DAPLO and merely adds the suffix ‘GIN’. Since both products contain the same API, Dapagliflozin, and are prescribed for Type-2 Diabetes Mellitus, Dr. Reddy’s argued that confusion was likely.
5. Registration of DAPLOGIN violated Sections 9(1)(a), 9(2)(a) and 11(1) of the Trade Marks Act, 1999, as the mark lacked distinctiveness and was likely to deceive or cause confusion among medical professionals and patients.
6. Relying on the Supreme Court’s Cadila judgment, Dr. Reddy’s argued that pharmaceutical trademarks must be assessed using a stricter standard because confusion may adversely affect patient safety.

Razenta’s Arguments/Submissions

1. Razenta denied that DAPLOGIN was deceptively similar to DAPLO and asserted that the two marks had co-existed in the market without any instance of confusion. It further claimed that its adoption of DAPLOGIN was honest and bona fide, having adopted the mark on November 14, 2021.
2. Razenta submitted that DAPLOGIN was coined by taking the first three letters, ‘DAP’, and the last five letters, ‘LOZIN’, from ‘Dapagliflozin’, with a slight modification by substituting the letter ‘Z’ with ‘G’. It contended that the suffix ‘GIN’ rendered DAPLOGIN distinctive and distinguishable from DAPLO, both visually and phonetically.
3. Razenta also relied on other medicinal products sold under marks or brand names derived from the salt/molecule Dapagliflozin, including registered marks using DAPLO with additional suffixes. These included products used to treat Type-2 Diabetes Mellitus, such as DAPLOCAR-L, DAPLOYD, DAPLOSKY M and DAPLOSE.
4. Razenta argued that DAP/DAPLO was common to the pharmaceutical trade and therefore incapable of exclusive appropriation by Dr. Reddy’s.
5. It submitted that the suffix ‘GIN’ sufficiently distinguished DAPLOGIN from DAPLO and removed any likelihood of confusion.
6. Razenta further contended that, as both products were prescription medicines, the possibility of consumer confusion was minimal.
7. Razenta maintained that its registration was valid and that Dr. Reddy’s cancellation petition disclosed no sufficient grounds for removal of the mark from the Register.

Court’s Reasoning and Decision

The Court held that DAPLO and DAPLOGIN are deceptively and phonetically similar, and that both marks are used for medicines intended for the treatment of diabetes.

1. The Court observed that DAPLOGIN incorporates all five letters of DAPLO, and that the addition of the suffix ‘GIN’ does not sufficiently reduce the overall similarity between the marks.
2. The Court found that the dominant element of DAPLOGIN is ‘DAPLO’, which is identical to Dr. Reddy’s earlier mark. It noted that, in the pharmaceutical sector, the first syllable or prefix of a mark often carries significant identifying force. Accordingly, the visual and phonetic similarity between the marks was not displaced merely by the addition of ‘GIN’ as a suffix.
3. Since both products are used for treating the same disease, contain the same API, Dapagliflozin, and Dr. Reddy’s also markets extensions and variants of DAPLO, the Court held that a person of average intelligence and imperfect recollection could mistakenly perceive DAPLOGIN as belonging to, or being associated with, Dr. Reddy’s.
4. The Court rejected Razenta’s contention that DAPLO was publici juris, common to the trade, or generic, and noted that:
   1. DAPLO is a coined and distinctive mark, conceived by Dr. Reddy’s by combining ‘DAP’ and ‘LO’. It does not form a prefix, suffix, abbreviation, or short name of the API Dapagliflozin. Since Razenta itself used ‘DAP’ or ‘DAPLO’ as part of DAPLOGIN, it could not claim that either expression was generic.
   2. Merely citing four marks containing the prefix ‘DAPLO’, without any evidence of actual market use, was insufficient to dilute the distinctiveness of DAPLO or prevent Dr. Reddy’s from seeking cancellation of identical or deceptively similar marks, particularly for pharmaceutical products.
5. Relying on the Supreme Court’s Cadila judgment, the Court noted that DAPLOGIN is deceptively similar to DAPLO, an earlier registered trademark, and that the rival products are identical, contain the same API, and are used for treating Type-2 Diabetes Mellitus. Since the products are prescription drugs, the Court held that there existed a likelihood of confusion and deception.
6. On this basis, the Delhi High Court allowed the cancellation petition and cancelled the registration of the mark DAPLOGIN under No. 5208898 in Class 05. The Court directed the Registrar of Trade Marks to rectify the Register of Trade Marks within six weeks, in the interest of maintaining the purity of the Register.

Key Takeaway / Analysis

The judgment reinforces the settled principle that pharmaceutical trademarks warrant a higher degree of protection because even a small risk of confusion can have serious implications for patient safety. The Court rightly assessed the overall commercial impression of the rival marks, particularly the fact that DAPLOGIN wholly incorporates the earlier mark DAPLO and is used for a product with the same API and therapeutic purpose.
Equally, the ruling makes clear that a “common to trade” defence cannot rest on the mere existence of third-party registrations. It must be supported by cogent evidence of actual and substantial market use. Overall, the decision is consistent with Cadila and underscores the Court’s patient-safety-first approach in disputes involving medicinal products.

RNA, Technology and IP Attorneys, successfully represented Dr. Reddy’s Laboratories Limited before the Delhi High Court in this matter.

CS(COMM) 904/2026; I.A. 22515/2026

Background

Hindustan Unilever Limited (HUL) filed a commercial suit seeking an interim injunction against Kwick Living (I) Private Limited, which operates under the BECO brand, over its multi-platform advertising campaign, #WarOnWhatsHidden. The campaign featured HUL’s Vim Dishwash Gel and Surf Excel products, their trade dress, and well-known taglines, while claiming that certain ingredients in those products could cause skin irritation and allergic reactions. Consumers were encouraged to switch to BECO products.

BECO also challenged the territorial jurisdiction of the Delhi High Court at the threshold. The Division Bench, after noting BECO’s GST registration and business presence in Delhi as well as hoardings carrying the campaign in Delhi, gave a prima facie finding that the suit was maintainable before the Delhi High Court and remanded the matter for consideration of HUL’s interim injunction application, while keeping the larger reference on jurisdiction open.

Contentions of the Parties

HUL

1. HUL argued that BECO’s campaign amounted to commercial disparagement, trademark and trade dress infringement, and unfair competition.
2. HUL contended that BECO’s advertisements falsely portrayed HUL’s products as unsafe, despite their compliance with applicable regulatory and safety standards.

BECO

1. BECO argued that comparative advertising is lawful and that competitors may use truthful information to highlight product features and ingredients.
2. BECO relied on NABL-accredited laboratory reports and maintained that the advertisements referred only to the potential effects of the ingredients, rather than making absolute claims.

Court’s Ruling

On a prima facie assessment, the Delhi High Court granted an interim injunction in favour of HUL, holding as follows:

1. Overall Impact Test: Even if individual ingredient-level claims may appear accurate in isolation, the combined message of an advertisement may still be misleading if it conveys to an average consumer that the finished products are unsafe in ordinary use.
2. Disparagement Found: The Court found that the juxtaposition of chemical names, percentages, visuals of HUL products, health-risk messaging, and the call to “Switch to BECO” created a prima facie misleading impression that HUL’s products were risky to use, amounting to denigration presented as scientifically verified information.
3. Truth Defence: The Court emphasized that truth cannot be assessed by isolating individual statements; the enquiry must also consider whether the advertisement, when viewed as a whole, conveys a false, misleading, or deceptive message to the average consumer.

The Court issued the following directions:

1. BECO must remove and recall all advertisements under the #WarOnWhatsHidden campaign within one week.
2. BECO must file a compliance affidavit within the following week.
3. The order does not restrict lawful, non-disparaging comparative advertising.

Key Takeaways

1. Comparative advertisements should be assessed by their overall impact on an average consumer; even truthful individual statements may be actionable if the advertisement, viewed as a whole, is misleading.
2. Fear-based advertising that portrays a competitor’s products as unsafe in ordinary use may amount to commercial disparagement.
3. Use of a competitor’s trademarks, trade dress, or taglines in a disparaging context may exceed the limits of permissible comparative advertising.

The Delhi High Court has once again emphasised the importance of long-standing use, statutory presumptions of validity and the likelihood of confusion in pharmaceutical trademark disputes. In an appeal before the Division Bench, the Court declined to interfere with the interim injunction granted by the Single Judge in favour of Zydus Healthcare Limited and its group entities, restraining Alder Biochem Private Limited from using “BIOCHEM” as part of its trademark or trade name.

The Dispute

The plaintiffs, Zydus Healthcare Limited and its group entities, instituted proceedings alleging trademark infringement and passing off against Alder Biochem Private Limited in relation to pharmaceutical, medicinal and allied products.

The plaintiffs claimed longstanding rights in the trademark “BIOCHEM”, tracing its adoption to 1959 by Biochem Pharmaceutical Industries. The business was subsequently incorporated as Biochem Pharmaceutical Industries Ltd. and, in 2017, was amalgamated with the first plaintiff, resulting in the transfer of its intellectual property rights, including the registered BIOCHEM trademark.

The plaintiffs asserted that BIOCHEM had been continuously used for pharmaceutical products for several decades and had acquired substantial goodwill and reputation in the market. Their trademark portfolio included a registered device/label mark incorporating the word BIOCHEM.

The dispute arose when the plaintiffs discovered that Alder Biochem had applied for registration of “ALDER BIOCHEM”, claiming use from January 2019. The plaintiffs issued a cease-and-desist notice, which was resisted by the defendant. A subsequent application for a Class 5 device mark containing ALDER BIOCHEM was also opposed by the plaintiffs before the Trademarks Registry.

The plaintiffs contended that the defendant’s use of ALDER BIOCHEM for pharmaceutical products amounted to infringement and passing off and sought an interim injunction.

The Defendant’s Defence

Alder Biochem contended that it had been incorporated in 2016 and was engaged in contract manufacturing of pharmaceutical and medical products, including soft-gel capsules, inhalers, suppositories, nutraceuticals and food supplements.

The defendant relied upon its domain name, alderbiochem.com, registered in August 2018, and claimed adoption of ALDER BIOCHEM in 2019. It also pointed to applications filed for various Class 5 marks from 2020 onwards.

BIOCHEM was descriptive and non-distinctive. According to the defendant, the expression was a commonly understood abbreviation for “biochemical” or “biochemistry” and was derived from the terms “biology” and “chemistry”.

Numerous businesses used BIOCHEM in their corporate names and that several registered trademarks incorporated the expression. Thus, the plaintiffs could not claim exclusive rights over BIOCHEM as a standalone word.
Registration of a device or label mark conferred protection upon the mark as a whole and did not necessarily confer exclusive rights over individual non-distinctive elements forming part of that mark.

Plaintiffs had deliberately not obtained registration of BIOCHEM as a word mark because the expression was incapable of exclusive appropriation.

The Single Judge’s Decision

The Single Judge found a prima facie case in favour of the plaintiffs and granted an interim injunction restraining Alder Biochem from using BIOCHEM or any deceptively similar mark, including as part of its trade name.

The Court noted that BIOCHEM was the dominant and essential feature of the plaintiffs’ registered mark and that the defendant had adopted the same expression for identical pharmaceutical goods.

The Court also considered the substantial difference in the parties’ commercial activities and sales. The plaintiffs had demonstrated considerably greater sales and longstanding use, whereas the defendant’s evidence of commercial use under ALDER BIOCHEM was substantially more recent.

The Court considered the potential consequences of confusion in relation to pharmaceutical products. The balance of convenience and the possibility of irreparable injury therefore weighed in favour of protecting the plaintiffs’ established trademark rights.

Aggrieved by this order, Alder Biochem preferred an appeal before the Division Bench.

Findings of the Division Bench

Prior Use Favoured the Plaintiffs

Although Alder Biochem had incorporated the expression into its corporate name in 2016 and had registered its domain name in 2018, the Division Bench noted the distinction between use of a corporate name and commercial use of a trademark.

The defendant’s first commercial invoice under ALDER BIOCHEM was only in 2022. In contrast, the plaintiffs had demonstrated use of BIOCHEM dating back to the late 1950s and 1960s.

Consequently, the question of prior use clearly favoured the plaintiffs.

The Court also observed that the defendant operated in the same pharmaceutical sector. Given the plaintiffs’ longstanding use and registrations, it was difficult, at least at the prima facie stage, to accept that the defendant was unaware of the plaintiffs’ rights.

Presumption of Validity

The Division Bench also upheld the reliance placed upon the statutory presumption of validity.

The defendant had not substantively challenged the plaintiffs’ registration or initiated appropriate proceedings seeking cancellation on the ground that BIOCHEM was non-distinctive.

Accordingly, the Court held that the registered mark was entitled to the statutory presumption at the interim stage.
The defendant’s contention that BIOCHEM was descriptive or generic therefore could not, by itself, defeat the plaintiffs’ registered rights at the interlocutory stage. Any claim concerning acquired distinctiveness or the ultimate validity of the mark could be examined on the basis of evidence at trial.

Third-Party Use: Quantity Is Not Enough

The defendant relied upon third-party use of BIOCHEM to contend that the plaintiffs’ rights were weak.

The Division Bench, however, found that the cited third parties were largely operating in unrelated sectors such as chemicals, fertilizers and metals, rather than in the pharmaceutical industry.

Mere existence of businesses or registrations containing BIOCHEM was therefore insufficient to demonstrate that the expression had become common to the trade in pharmaceutical products.

Device Mark Argument

One of the defendant’s principal arguments was that the plaintiffs had registered BIOCHEM only as a device or label mark and therefore could not claim exclusivity over the word itself.

The Division Bench did not accept this argument as a basis for denying interim protection.

The Court recognised that the fact that the plaintiffs’ registration was in device form did not mean that the defendant was free to appropriate the essential and distinctive element of that mark in relation to identical goods.

The Court therefore found that the defendant could not avoid the likelihood of confusion merely by adding the prefix “ALDER” to BIOCHEM.

Anti-Dissection and Dominant Feature Principles

The defendant argued that the competing marks had to be compared as a whole and that BIOCHEM could not be isolated from ALDER BIOCHEM.

The Court accepted that trademarks must ordinarily be considered in their entirety. However, this does not prevent the Court from identifying the dominant or essential feature of a mark when assessing the likelihood of confusion.

In the present case, BIOCHEM was the sole and essential feature of the plaintiffs’ registered mark and had acquired considerable distinctiveness through decades of use. The addition of the word “ALDER” did not sufficiently distinguish the defendant’s mark from the plaintiffs’ established trademark.

Pharmaceutical Products and Likelihood of Confusion

The fact that both parties operated in the pharmaceutical sector further strengthened the plaintiffs’ case.

Trademark confusion in relation to pharmaceutical products can have consequences beyond ordinary commercial confusion. The Court therefore approached the issue keeping in mind the need for greater caution where identical or closely related marks are used for pharmaceutical products.

The defendant’s status as a contract manufacturer did not eliminate the possibility of confusion. The assessment remained one from the perspective of the average consumer possessing imperfect recollection, taking into account the nature of the goods and the overlapping field of trade.

Conclusion

The Division Bench declined to interfere with the Single Judge’s order and dismissed the appeal.

Key takeaway

1. Long and continuous use can transform an expression alleged to be descriptive into a source identifier.
2. A registered mark enjoys the statutory presumption of validity unless successfully challenged. Evidence of third-party use must be relevant to the same or closely connected trade to materially weaken the proprietor’s rights.
3. The anti-dissection principle does not prevent a court from recognising the dominant or essential feature of a mark when assessing deceptive similarity.

The dispute before the Delhi High Court concerns the alleged imitation of HAVELLS by the Defendants through their use of HAVAI on identical electrical goods. The Plaintiffs, Havells India Limited and Ors., allege that the Defendants, Havai Home Products Pvt. Ltd. and Ors., deliberately adopted a similar stylisation, device marks, colour scheme and overall trade dress with the intent of creating a commercial impression closely resembling that of HAVELLS. While the Defendants rely on their HAVAI registrations and dispute any likelihood of confusion, the Court was called upon to determine whether their actual use constituted prima facie trademark infringement or passing off warranting interim protection.

Plaintiffs in the suit contend:

1. Havells India Limited, incorporated in 1983 and tracing its electrical and power-distribution business to 1942, is the proprietor of the HAVELLS trademarks which forms part of its corporate name.
2. A leading FMEG company in India and abroad, it markets high-quality products under brands including Havells, Reo and Crabtree through extensive retail, digital and customer-service channels.
3. Longstanding use, substantial sales, advertising and promotion have generated significant goodwill in the HAVELLS word and device marks, and HAVELLS has been declared a well-known trademark under the Trademarks Act.
4. Defendant No. 1 has applied for registrations of HAVAI in various classes, several on a proposed-to-be-used basis, while Defendant No. 2 markets HAVAI products through the defendants’ website and third-party platforms including Amazon, Flipkart and IndiaMART.
5. The plaintiffs have opposed several applications and allege that an earlier application filed by Defendant No. 2 was assigned to Defendant No. 1, while another was abandoned following opposition. They contend that the defendants are deliberately pursuing HAVAI registrations to undermine Havells’ proprietary rights.
6. A test purchase through Amazon allegedly showed use of HAVAI in a form deceptively similar to HAVELLS, together with incorrect ISI numbers suggesting BIS compliance. The plaintiffs also allege imitation of their device marks, colour scheme, get-up and layout. In particular, the final “I” in HAVAI was stylised to resemble an “L”, making the mark appear closer to HAVELLS, although Defendant No. 1 was not using its registered mark in its original form.
7. The plaintiffs assert that HAVAI and HAVELLS are visually and phonetically similar and are used for identical goods sold through overlapping channels to the same consumers, creating a likelihood of confusion, association, trademark infringement and passing off.
8. The defendants offered no credible explanation for adopting HAVAI or altering the final letter; the explanation that “HAVA” means air did not account for the stylisation or for products unrelated to air, such as immersion rods. Attempts at an amicable resolution failed because the defendants would not sufficiently modify their marks or colour combinations.

Defendants’ contentions

1. The suit lacked a cause of action as they had never used HAVELLS or any deceptively similar mark.
2. Defendant No. 1 is the registered proprietor of HAVAI in various classes and contended that HAVAI and HAVELLS were neither visually, structurally nor phonetically similar. HAVAI also formed part of Defendant No. 1’s company name, which had been approved by the ROC.
3. No BIS violation was established and that all references to “HAVELLS SPARES” had been removed from their website and literature pursuant to their undertaking to the Court.
4. Being the registered proprietors of HAVAI, they could not be sued for infringement by another registered proprietor. Moreover, “HAV” is common to the trade and cannot be monopolised.
5. The Plaintiffs’ passing off claim was based on mere assumptions, with no evidence of actual deception or confusion, such as consumer complaints or surveys.
6. As per the anti-dissection rule, the rival marks must be compared as a whole and on their overall commercial impression, rather than by dissecting individual elements.
7. A mere possibility of confusion is insufficient; the likelihood must be real and tangible and assessed considering factors such as the nature and resemblance of the marks, goods, class of consumers and purchasing methods.

Court’s analysis and findings

1. In the instant case the Plaintiff has established longstanding statutory and common-law rights in HAVELLS and its formative marks, with use dating to 1942, registration from 1955, substantial sales and advertising, and recognition of HAVELLS as a well-known mark.
2. Although the Defendants relied on their registration for HAVAI, the Court noted that registration is no defence to passing off and that the marks actually used differed materially from the registered mark. The Defendants stylized the letter “I” to resemble “L” and adopted device marks, get-up, and colour schemes similar to HAVELLS, making HAVAI visually and phonetically deceptive.
3. The unexplained departure from the registered form was held to be a mala fide misrepresentation intended to associate the Defendants’ products with HAVELLS and cause consumer confusion.
4. As both parties dealt in identical goods, including fans, coolers, and immersion rods, the likelihood of confusion and initial-interest confusion was heightened.
5. Finding a prima facie case, balance of convenience, and risk of irreparable injury in the Plaintiff’s favour, the Court granted a temporary injunction restraining the Defendants from using the impugned HAVAI marks or any mark deceptively similar to HAVELLS during the pendency of the suit.

Comment

The decision underscores that trademark protection extends beyond a mere comparison of registered marks and requires the Court to examine the actual manner of use, overall commercial impression, and likelihood of consumer confusion. Despite the Defendants’ HAVAI registrations, their deliberate stylisation and adoption of a trade dress closely reminiscent of HAVELLS were sufficient to establish a prima facie case of infringement and passing off. The judgment reinforces that minor alterations to a mark or reliance on registration cannot legitimise a deceptive adoption intended to capitalise on the goodwill of an established brand.

The Delhi High Court recently examined the question of territorial jurisdiction in a trademark infringement and passing-off action involving the online presence of the Defendants. The Court considered whether the plaint was liable to be returned under Order VII Rule 10 of the Code of Civil Procedure, 1908 (“CPC”) where the Plaintiff carried on business outside Delhi, but one of the Defendants had its registered office in Delhi and the impugned products were allegedly advertised and offered through websites accessible in Delhi.

The Dispute

The Plaintiff, Ravinder Singh, instituted proceedings against Regoshin Healthcare Pvt. Ltd. and others, alleging trademark infringement and passing off in relation to dietary food supplements, pharmaceutical and medicinal products, veterinary substances and allied goods and services.

The Plaintiff sought an injunction restraining the Defendants from using the impugned marks or any other marks deceptively similar to the Plaintiff’s trademarks, including the artistic work forming part of the marks.

The Defendants challenged the territorial jurisdiction of the Delhi High Court and filed an application under Order VII Rule 10 CPC, seeking return of the plaint for presentation before the court having appropriate jurisdiction.

Defendants’ Contentions

The Defendants argued that the Plaintiff neither resided nor carried on business in Delhi. The documents relied on by the Plaintiff showed that his principal place of business was in Amritsar, Punjab.

Accordingly, the Defendants contended that the Plaintiff could not invoke the additional jurisdiction conferred by Section 134 of the Trademarks Act, 1999.

The Defendants further submitted that no part of the cause of action had arisen in Delhi. They asserted that Defendants No. 1 and 3 neither carried on business nor possessed the requisite drug licence in Delhi and that there was no evidence of any sale of the impugned products in Delhi.

According to the Defendants, a mere apprehension that the products might be sold in Delhi could not confer territorial jurisdiction.

Websites and Online Platforms

The Defendants also disputed the Plaintiff’s reliance on their websites and third-party platforms such as IndiaMART and Justdial.

It was argued that the websites were essentially passive and informational and did not enable consumers to directly purchase the pharmaceutical products.

The Defendants also relied on the absence of a Delhi drug licence to contend that no lawful pharmaceutical transaction could have taken place in Delhi.

Finally, the Defendants disputed the relevance of Defendant No. 1’s Delhi registered office, contending that trademark and passing-off jurisdiction depends upon use of the impugned mark and the existence of commercial activity, rather than merely upon the registered address of a company.

Plaintiff’s Contentions

The Plaintiff submitted that the application under Order VII Rule 10 CPC was misconceived and that the Court was required to examine the plaint on a demurrer.

At this stage, the Court must proceed on the assumption that the material averments in the plaint are true. The Defendants’ defence could not be tested or adjudicated upon while considering whether the plaint should be returned.

The Plaintiff contended that the plaint contained specific averments establishing a territorial connection with Delhi.

These included the following:

1. Defendant No. 1 had its registered office in Delhi;
2. Defendant No. 1 operated a website containing product information and a “Contact Us” page displaying its Delhi office and contact details;
3. Defendant No. 2’s webpages offered the impugned products for sale;
4. the Defendants’ products were advertised and promoted through IndiaMART, Justdial and other online platforms; and
5. these platforms were accessible to potential consumers, dealers and retailers in Delhi.

The Plaintiff therefore argued that at least a part of the cause of action arose within Delhi.

The Plaintiff further alleged collusion between the Defendants in the manufacture, sale and marketing of the impugned pharmaceutical products.

Section 134 of the Trademarks Act: An Additional Forum

The Court found prima facie merit in the Defendants’ objection under Section 134.

Since the Plaintiff carried on business in Amritsar rather than Delhi, the Plaintiff could not rely upon his own place of business to invoke the additional jurisdiction contemplated under Section 134.

However, the Court clarified that this did not end the jurisdictional enquiry.

Section 134 provides an additional forum to a registered trademark proprietor. It does not take away the ordinary jurisdiction available under Section 20 CPC.

Therefore, notwithstanding the inability to invoke Section 134 on the basis of the Plaintiff’s place of business, the suit could still be maintained if the requirements of Section 20(b) or Section 20(c) CPC were satisfied.

Order VII Rule 10: The Test of Demurrer

The Court reiterated the limited scope of an application under Order VII Rule 10 CPC.

The Court is required to examine the plaint as a whole and determine whether, on the basis of the averments made therein, the court lacks territorial jurisdiction.

Consequently, where the plaint contains specific averments which, if proved, would establish territorial jurisdiction, the plaint cannot ordinarily be returned merely because the Defendants dispute those allegations.

Delhi Registered Office and Online Commercial Presence

A significant factor considered by the Court was the presence of Defendant No. 1’s registered office in Delhi.

The plaint specifically pleaded that Defendant No. 1 had its registered office in Delhi and maintained a website containing product listings and a “Contact Us” page displaying its Delhi business details.

The Plaintiff also relied upon product listings on IndiaMART, Justdial and other platforms.
The Court held that these averments could not be ignored at the demurrer stage. Taken at face value, they disclosed a potential connection between the Defendants’ commercial activities and Delhi.

The Court was therefore not persuaded to return the plaint merely because the Defendants disputed whether their websites actually resulted in sales within Delhi.

Mere Website Accessibility vs. Commercial Activity

The decision also highlights an important distinction in determining jurisdiction in online disputes.

Mere accessibility of a website may not, by itself, be sufficient to establish territorial jurisdiction. However, the Court considered the Plaintiff’s pleadings to go beyond mere accessibility.

The plaint referred to:

1. product listings;
2. advertising and promotion of the impugned products;
3. third-party commercial platforms;
4. the Defendants’ business contact details;
5. Defendant No. 1’s Delhi registered office; and
6. an alleged commercial interface with prospective customers.

The Court therefore held that questions concerning the nature and functionality of the websites, their degree of interactivity, whether they solicited customers in Delhi, and whether actual transactions took place were matters requiring evidence.

These issues could not be conclusively determined at the stage of an application under Order VII Rule 10 CPC.

Absence of Drug Licence: A Matter for Trial

The Court also declined to treat the absence of a Delhi drug licence as determinative at the threshold.

The Defendants’ argument was essentially that, without the requisite licence, they could not lawfully sell pharmaceutical products in Delhi and therefore no cause of action could arise there.

However, this contention was treated as part of the Defendants’ substantive defence.

The Plaintiff had specifically pleaded that the Defendants were advertising and offering the impugned products through various online platforms. Whether the Defendants were legally authorised to sell those products, whether actual transactions took place and whether the online presence amounted to purposeful commercial activity were questions that could be examined upon evidence.
The absence of invoices or purchase orders evidencing actual sales in Delhi was therefore insufficient, at the preliminary stage, to defeat the jurisdiction pleaded in the plaint.

Court’s Finding

The Court ultimately held that the plaint contained sufficient averments to establish territorial jurisdiction at the preliminary stage.

Although Section 134 of the Trademarks Act could not independently be invoked on the basis of the Plaintiff’s place of business, jurisdiction could nevertheless be considered under Section 20 CPC.

The specific pleadings concerning Defendant No. 1’s Delhi registered office, its website, product listings, “Contact Us” page and the alleged availability of the impugned products through online platforms such as IndiaMART and Justdial were sufficient to raise a prima facie territorial nexus with Delhi.

The Defendants’ objections concerning the actual nature of the websites, the absence of a drug licence and the absence of evidence of actual sales involved disputed questions of fact.

Such questions could not be conclusively determined while considering an application under Order VII Rule 10 CPC.

Accordingly, the Court declined to return the plaint.

Key Takeaway

The decision reiterates that if the plaint contains specific averments which, if accepted as true, establish that the Defendant carries on business within the jurisdiction or that part of the cause of action arose there, the plaint should not be returned at the threshold.

In online trademark disputes, mere website accessibility may not confer jurisdiction, but product listings, online advertising, customer solicitation, commercial interfaces and a physical business presence may collectively establish a prima facie territorial nexus. Whether such activities resulted in actual sales or targeted consumers is a matter for evidence and trial.

Executive Summary: The Indian Patent Office has introduced a structured framework for the responsible use of artificial intelligence in patent examination. AI may support classification, prior-art searches, translation, technical analysis and drafting, but every output must be treated as preliminary and independently checked. Confidential or unpublished information must not be entered into public AI tools, and AI cannot replace the judgment of an Examiner or Controller. For businesses and patent applicants, the key message is that AI may make examination more efficient, while human oversight, confidentiality and accountability remain essential.

The Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) has issued Guidelines for the responsible use of artificial intelligence in patent examination. The framework seeks to improve efficiency and quality while preserving confidentiality, accountability, consistency and the independent application of mind required from the Examiner or Controller.

Why the Guidelines Matter?

Patent examination involves large volumes of technical and legal material and is often time-sensitive. AI can help examiners organise information, develop search strategies, identify relevant documents and prepare draft communications. The Guidelines are intended to capture these efficiency gains without compromising confidentiality, accuracy, consistency or accountability.

In practical terms, the Guidelines allow AI to support the process, while keeping substantive decisions firmly with the Examiner or Controller.

Where AI May Be Used?

Within this framework, AI may assist with the following patent examination activities:

1. Screening of documents;
2. Patent classification;
3. Prior-art searching;
4. Translation support;
5. Drafting support;
6. Technical comparison; and
7. Knowledge retrieval.

The Guidelines distinguish between public AI tools, which are generally available through consumer-facing platforms, and private AI tools, which operate in controlled environments with stronger safeguards for proprietary or sensitive information.

Key Risks to Manage

Because AI outputs can be influenced by previous interactions, prompt design and model-specific behaviour, different tools may produce materially different results for the same patent application or prior-art material. The Guidelines therefore identify the following key risks:

1. Hallucinations or fabrication of information;
2. Omission of critical claim details;
3. False pattern matching between claims and prior art;
4. Loss of technical context during summarisation or translation;
5. Search and classification drift;
6. Overly broad or narrow interpretations;
7. Lack of transparency in AI reasoning;
8. Confidentiality risks;
9. Misguidance through persuasive but incorrect reasoning;
10. Use of incomplete or outdated information;
11. Bias arising from training data; and
12. Difficulty in understanding specialised patent language and legal nuances.

The Guidelines caution that AI tools may generate non-existent citations, misrepresent judicial precedents, incorrectly map claim features to prior-art disclosures, or provide persuasive conclusions that are technically or legally unsound.

Human Oversight Remains Essential

AI may support the Examiner or Controller, but it cannot replace their judgment. All AI-generated output must be independently reviewed before use, and the human decision-maker remains fully responsible for every official action.

The Guidelines require that all AI-generated outputs be critically assessed for correctness, relevance and appropriateness before adoption in any official process.

Permitted Uses of AI

The Guidelines identify several areas where AI may be used as an assistive tool, subject to appropriate safeguards.

AI may assist in identifying candidate IPC or CPC classifications, generating search terms and concept clusters, extracting claim features for preliminary analysis, supporting translation of foreign-language documents, improving the language and structure of draft communications, identifying legal and technical references, conducting preliminary novelty or inventive-step assessments, identifying potential clarity issues and assisting with sufficiency reviews.

These uses are subject to safeguards. Classification, searches, translations and citations must be independently checked, and any conclusions on novelty or inventive step must be based on the Examiner’s own analysis.

The Guidelines further observe that even sophisticated AI systems can produce inconsistent results. The annexures provide examples where different AI models generated different classification codes, different search vocabularies and even contradictory novelty analyses for the same patent claim, thereby illustrating the continuing necessity of human evaluation.

Prohibited Uses

The Guidelines expressly prohibit the following uses of AI:

1. Entering unpublished patent applications, confidential office material or internal records into public AI tools;
2. Using AI as a substitute for the Examiner’s or Controller’s judgment on substantive matters such as novelty, inventive step, sufficiency, clarity, industrial applicability or unity of invention;
3. Issuing FERs, hearing notices, decisions or official communications solely on the basis of AI-generated outputs;
4. Relying upon AI-generated citations without independent verification from authentic sources;
5. Using AI-generated content in official communications without review and validation; and
6. Allowing AI to make decisions affecting the rights of applicants, patentees or third parties.

The Guidelines stress that confidentiality concerns are particularly significant in relation to unpublished patent applications and that care must be taken to avoid disclosure of such material through public AI systems.

Governance and Internal Controls

To promote responsible use of AI, the Guidelines contemplate the establishment of governance mechanisms that may include record-keeping of AI usage, oversight committees, approval of AI tools, periodic policy review, quality monitoring, training programmes and audit mechanisms. Training initiatives may specifically focus on understanding AI limitations, confidentiality risks, prompt discipline, hallucination detection and verification of AI-assisted outputs.

What This Means for Businesses?

The Guidelines should support a more efficient and technology-enabled patent examination process, particularly for searching, classification, translation and document review. Businesses should nevertheless expect patentability assessments and official decisions to remain human-led. Applicants should continue to submit clear, accurate and well-supported patent specifications, protect confidential information carefully, and avoid assuming that AI-generated analysis will be accepted without independent verification.

The content and images are drawn from the guidelines issued by the CGPDTM (ZN0Nk7Z9dXPr0C5vu3zjj1c8cPsRfX1SlxORk0Ke.pdf)

The Calcutta High Court, in a dispute concerning the use of the mark “PRO” in relation to footwear falling under Class 25, considered whether the use of “PRO BALANCE” by Aditya Birla Lifestyle Brands Limited and its associates amounted to infringement and passing off of Khadim India Limited’s registered “PRO” trademark. The Court, while considering the Plaintiff’s application for interim relief, examined the significance of the registered word mark, the essential-feature doctrine, the competing claims of prior use and the Defendant’s challenge to the validity of the registration.

Plaintiff’s Case

1. Khadim India Limited manufactures and sells shoes of various types and materials under the registered word mark “PRO”. The mark was registered in June 2005, pursuant to an application filed in June 1997, in which the Plaintiff had claimed proposed use.
2. According to the Plaintiff, it had continuously used the “PRO” mark since 1997 and, over the years, had developed substantial market identity, goodwill and reputation in relation to footwear sold under the mark.
3. The Plaintiff alleged that Defendant was selling identical or similar footwear bearing the word “PRO”, including products marketed under the expression “PRO BALANCE”. It was contended that the Defendant’s adoption and use of “PRO”, whether independently or in conjunction with another word, appropriated the essential feature of the Plaintiff’s registered trademark.
4. The Plaintiff accordingly asserted that the Defendant’s use constituted infringement of its registered trademark as well as passing off and sought an ad interim injunction restraining the Defendant from manufacturing, marketing or selling footwear bearing “PRO”.

Defendant’s Contentions

1. The Defendant contended that it had been using “PRO BALANCE” since 2023 and had acquired substantial international reputation and public recognition in relation to the mark. It argued that, despite being aware of the Defendant’s use, the Plaintiff had waited for more than three years before approaching the Court in July 2026.
2. Relying upon newspaper advertisements and other materials evidencing its market presence since 2023, the Defendant argued that there was no urgency warranting the grant of an interim injunction and sought an opportunity to file its affidavit before any interim order was passed.
3. A substantial part of the Defendant’s defence concerned the validity of the Plaintiff’s “PRO” registration. It was contended that “PRO” was a generic and non-distinctive expression and that its registration as a word mark was therefore invalid.
4. The Defendant further argued that the use of “PRO” in conjunction with the word “BALANCE” did not amount to infringement, particularly since the overall get-up, customer base, pricing and product range of the parties’ products were different. It also asserted that there was no likelihood of confusion and that no case of passing off could arise merely because the Defendant used the common word “PRO” with additional matter.
5. The Defendant also relied upon alleged honest use and the existence of several third parties using “PRO” in relation to similar products.
6. On the issue of validity, the Defendant submitted that the Court ought to frame an issue regarding the validity of the Plaintiff’s registration, direct the Defendant to institute appropriate rectification proceedings within a prescribed period and keep the interlocutory proceedings in abeyance pending such proceedings.

Plaintiff’s Reply

1. In response, the Plaintiff contended that the addition of the word “BALANCE” could not save the Defendant from a finding of infringement. According to the Plaintiff, adding a prefix or suffix to the registered mark “PRO” did not authorise the Defendant to appropriate the essential feature of the registered mark.
2. The Plaintiff further argued that the question of invalidity of a registered trademark could not simply be conclusively determined in an interlocutory proceeding. Where validity was challenged at the interim stage, a heavy burden lay upon the Defendant to rebut the statutory presumption arising from the subsisting registration.
3. The Plaintiff therefore maintained that its registration, coupled with its longstanding use and substantial reputation, established a strong prima facie case in its favour.

Court’s Analysis

1. The Court found that “PRO” constituted the essential feature of the Plaintiff’s registered trademark. The fact that the Defendant used the expression as part of “PRO BALANCE” did not, at the prima facie stage, take the Defendant outside the scope of the Plaintiff’s trademark rights.
2. The Court attached significance to the Plaintiff’s longstanding use of “PRO” since 1997, its registration since 2005 and the substantial sales and market presence relied upon by the Plaintiff. These factors, according to the Court, demonstrated that “PRO” had acquired a distinctive identity in the relevant footwear market.
3. The Defendant had entered the market subsequently and had failed, at the interim stage, to demonstrate that its use of “PRO” would not result in confusion or association. Given that the competing products were footwear falling within the same product category, the Court found a sufficient basis to conclude that the Defendant’s use was likely to cause confusion.
4. The Court consequently found that the Plaintiff had established a strong prima facie case of trademark infringement as well as passing off.

Challenge to Validity

1. The Defendant’s contention that “PRO” was generic or non-distinctive was also considered in the context of the Plaintiff’s subsisting registration.
2. The Court did not accept that such a challenge, by itself, was sufficient to defeat the Plaintiff’s claim for interim protection. The Defendant’s challenge to the validity of the registration did not, at that stage, displace the rights flowing from the existing registration, particularly in view of the Plaintiff’s longstanding use and the evidence of substantial commercial exploitation of the mark.
3. Thus, the Defendant’s proposed reliance upon rectification proceedings did not provide a sufficient basis for permitting continued use of “PRO” during the pendency of the interlocutory proceedings.

Balance of Convenience and Interim Relief

1. The Court found that the balance of convenience overwhelmingly favoured the Plaintiff. Permitting the Defendant to continue using “PRO”, whether independently or with a prefix or suffix, was likely to prejudice the Plaintiff’s statutory and common-law rights and could result in further confusion and multiplicity of proceedings.
2. Accordingly, the Court restrained the Defendant from manufacturing or selling Class 25 products bearing the word “PRO”, whether used alone or in conjunction with a prefix or suffix.
3. At the same time, the Court permitted the Defendant to dispose of its existing unsold stock bearing “PRO” for a period of six months, subject to the Defendant providing the Plaintiff with detailed particulars of such stock within three weeks.
4. The Defendant was also directed to take steps to remove the relevant products bearing “PRO” from online platforms within three months.

Conclusion

The decision reinforces the principle that, in assessing infringement of a registered word mark, the Court will examine whether the allegedly infringing use appropriates the essential and distinctive feature of the registered mark. The mere addition of another word, such as “BALANCE” does not necessarily immunise the subsequent mark from an infringement claim.

The decision is also significant for its treatment of a validity challenge at the interlocutory stage. A defendant seeking to overcome the rights flowing from a subsisting registration cannot merely assert that the registered mark is generic or non-distinctive; the challenge must be substantiated sufficiently to displace the prima facie rights arising from registration.

On the facts before it, the Calcutta High Court considered the Plaintiff’s longstanding use, registration, market presence and reputation in “PRO”, coupled with the Defendant’s subsequent adoption of “PRO BALANCE” for similar footwear, sufficient to warrant interim protection.

The ruling therefore underscores the continuing importance of prior use, registration, the essential-feature test, likelihood of confusion and the statutory protection afforded to registered trademarks in determining interim relief in trademark infringement proceedings.

Shipra Alisha Philip, Managing Associate at RNA, participated in the seminar on “DPDP Compliance: From Policy to Practice”, organised by the PHD Chamber of Commerce and Industry in New Delhi on 21st August 2026.

The seminar offered insightful discussions on various aspects of data protection compliance, including data mapping, consent management, data governance, lawful processing, purpose limitation, data minimisation, security safeguards, vendor governance, accountability, and technology-enabled compliance. The event concluded with an engaging exchange between the speakers and participants, offering valuable perspectives on developing responsible, secure, and future-ready data protection programmes and effectively transitioning from policy development to practical compliance implementation.

RNA has proudly participated as the Knowledge Partner at the India IP Advantage Summit 2026, organized by the Trade Promotion Council of India (TPCI) in New Delhi.

As part of our collaboration with TPCI, RNA authored the report, “From India to the World: IP Strategy, Market Access and Risk Management for Exporters,” which was launched in the presence of Prof. Dr. Unnat P Pandit, Controller General of Patents, Designs and Trade Marks, Registrar of Copyrights and Geographical Indications, Government of India.

Our Founding Partner, Mr. Ranjan Narula, also moderated an engaging session “The Authorship Crisis & the Creative Economy”, examining the evolving impact of AI on ownership, copyright and authorship. A key theme was navigating legal, ethical, and economic challenges that businesses face with growing use of AI-assisted creations.

Daleep Kumar, Meenal Khurana, Riya Raman and Chandan Kumar from RNA team had engaging discussion with delegates and policymakers, and dignitaries at the summit on the intersection of IP, AI, innovation and global market access. Thanks to everyone who contributed to the insightful discussions.

Background of the Case

The appeal arose from the refusal of Indian Patent Application No. 468/DELNP/2008 titled “Method and Arrangement for Optimising the Operational Times and Cell Change Performance of Mobile Terminals.”

During the proceedings, the Court noted that despite the existence of Section 3(m), there were no clear guidelines on how Patent Office examiners should determine whether a claim relates to a mental act. To promote consistency in examination practice, the Court sought assistance from an Amicus Curiae and formulated detailed guidelines for assessing Section 3(m) objections.

Understanding Section 3(m)

Section 3(m) excludes from patentability:

“a mere scheme or rule or method of performing mental act or method of playing game.”

According to the Court, the provision covers four categories:

1. A mere scheme for a mental act;
2. A mere rule for a mental act;
3. A mere method of performing a mental act; and
4. A method of playing a game.

The Court explained that mental acts generally include activities such as calculation, reasoning, evaluation, cognition, judgment, logic and discriminative thinking.

Section 3(m) Is Independent of Novelty and Inventive Step

The Court clarified that an invention may be novel and inventive yet still be excluded under Section 3(m). Accordingly, objections under Section 3(m) must be assessed independently of novelty and inventive step requirements.

Claims Must Be Examined as a Whole

The Court emphasised that claims must be assessed as a whole rather than by isolating individual features or steps. The focus should be on the overall invention and the monopoly being claimed, rather than on a particular analytical or computational step in isolation.

This principle is particularly relevant to inventions involving software, artificial intelligence, communication systems, signal processing and control systems, where technical features often coexist with analytical processes.

The Seven-Step Test for Examining Section 3(m) Objections

To bring clarity and consistency to examination practice, the Court laid down the following framework:

Step 1: Construe the Claim

Interpret the claim from the perspective of a person skilled in the art, in light of the specification but without importing limitations from the specification into the claim.

Step 2: Product Claims Are Generally Outside Section 3(m)

Genuine apparatus or device claims defined by physical features are generally not “schemes, rules or methods” and therefore typically fall outside Section 3(m).

Step 3: Identify What the Claim Monopolises

For process claims, determine the exclusive right being claimed by reading the claim as a whole.

Step 4: Apply the Mental Act Test

The key question is:

Could a person infringe the claim by doing nothing more than thinking, reasoning, calculating, judging or deciding?

If the answer is yes, the claim is likely to be excluded under Section 3(m).

However, Section 3(m) would generally not apply where the claim:

1. recites physical means integral to performing the method;
2. requires interaction between physical components, including hardware and software; or
3. produces a tangible output or technical result.

Step 5: Token Physical Additions Are Insufficient

Merely adding post-solution activities such as displaying, presenting or printing information will not overcome a Section 3(m) objection if the substance of the invention remains a mental act.

Step 6: Keep Section 3(m) Separate from Novelty and Inventive Step

Section 3(m) must be assessed independently and should not be influenced by considerations of novelty, inventive step or obviousness.

Step 7: Distinguish Section 3(m) from Section 3(k)

Computer-implemented inventions should not be rejected under Section 3(m) merely because they involve a computer. Where applicable, such claims must be separately assessed under Section 3(k).

Illustrative Examples Provided by the Court

To aid consistent application of Section 3(m), the Court provided several examples:

1. A claim directed solely to logically deriving a Sudoku solution would fall within Section 3(m), even if the final solution is printed on paper.
2. A method for selecting the optimum arrangement of fuel bundles in a nuclear reactor may also be excluded where it involves only evaluation and selection without physical implementation.
3. In contrast, inventions involving sensors, fuel-heating devices, engine control units, modulators, circuits, buses, record carriers, hardware-software interaction or tangible outputs generally fall outside Section 3(m).
4. Computer-implemented methods requiring simulations should be examined under Section 3(k) rather than Section 3(m).

Conclusion

The Delhi High Court’s decision provides the first structured framework for examining Section 3(m) objections. The focus is now firmly on whether the claimed invention, viewed as a whole, amounts to no more than a mental act.

To overcome a Section 3(m) objection, applicants should demonstrate that the claimed invention:

1. incorporates physical means or components integral to its operation;
2. involves meaningful technical implementation, including hardware-software interaction where applicable;
3. produces a tangible output or technical effect; and
4. cannot be performed solely through human thought, reasoning, calculation or decision-making.

The judgment also confirms that claims should not be dissected into individual steps when assessing Section 3(m). The analysis must instead focus on the invention as a whole and on the actual monopoly claimed. Applicants should therefore ensure that their specifications and claims clearly emphasise the invention’s technical implementation, the physical interaction of its components and the practical technical outcome achieved.

The Court’s reasoning also aligns with European patent practice. Under Article 52(2)(c) EPC, methods for performing mental acts are excluded from patentability ‘as such’. The EPO has consistently held that processes capable of being carried out entirely within the human mind fall within the exclusion, while claims directed to a technical implementation or producing a technical effect are assessed on their technical merits. The Delhi High Court’s focus on distinguishing a mere mental process from a patent-eligible technical invention therefore reflects a principle long recognised in European patent jurisprudence.

This comparison is particularly strong because both the EPO and the Delhi High Court are attempting to distinguish abstract cognitive activity from technical innovation, rather than imposing a blanket exclusion on inventions that involve human decision-making.