A contentious trademark dispute before the Delhi High Court between Novartis AG and the “Noviets” group of entities has resulted in the grant of an interim injunction restraining the Defendants from using the mark “NOVIETS.” The case presents a conflict involving allegations of trademark infringement, passing off, unfair competition, dilution, etc, in the pharmaceutical sector where courts consistently apply an enhanced standard due to public health implications. This note discusses the rival submissions of the parties and the Court’s ruling on the interim injunction application.

Background and Plaintiff’s Case

The Plaintiffs, forming part of the globally renowned Novartis Group, asserted longstanding rights in the mark “NOVARTIS,” adopted in 1996 and used extensively across jurisdictions, including India. With a presence in India dating back to 1947, the Plaintiffs emphasized their substantial goodwill, extensive sales, and significant promotional activities.

The “NOVARTIS” mark, serving as a house mark, has acquired distinctiveness and source-identifying significance. The Plaintiffs contended that the Defendants’ mark “NOVIETS,” used in relation to pharmaceutical and veterinary products, is deceptively similar, visually, phonetically, and structurally.

The dispute traces back to October 2020, when the Plaintiffs discovered the Defendants’ trademark application for “NOVIETS.” Despite issuing multiple legal notices and initiating opposition proceedings which led to abandonment of the application, the Defendants continued their use. In January 2024, the Plaintiffs discovered the Defendants’ products bearing the impugned mark on IndiaMart, prompting the present suit.

The Plaintiffs argued that:

1. The marks ‘NOVARTIS’ and ‘NOVIETS’ are deceptively similar and used for identical goods.
2. The Defendants’ adoption is dishonest and intended to ride on the Plaintiffs’ goodwill.
3. In pharmaceutical cases, even a likelihood of confusion is sufficient due to potential public health risks.
4. Interim injunction can be granted even against a registered mark if prior rights are established.

Defendants’ contentions

The Defendants resisted the injunction on several grounds:

1. Lack of territorial jurisdiction, asserting no commercial activity in Delhi and their IndiaMart listing as passive.
2. Distinctiveness of the mark “NOVIETS,” arguing that “NOV” is a generic prefix widely used in the pharmaceutical trade.
3. Bona fide adoption and limited use as a trade name rather than a product mark.
4. Absence of confusion, misrepresentation, or damage, given their localized, offline operations.

Court’s Analysis and Findings

Jurisdiction

At the interim stage, the Court applied the demurrer principle, accepting the plaint’s averments as true. It held that the Defendants’ IndiaMart listing and “Contact Us” page indicating Delhi as a place of business prima facie established purposeful targeting of consumers within Delhi.

The Court observed that the determination of whether the online presence is “passive” or “interactive” involves a mixed question of law and fact and therefore cannot be conclusively decided at the preliminary stage.

Deceptive Similarity and Dishonest Adoption

The Court found a strong prima facie case of deceptive similarity:

1. Both marks share the dominant element “NOV”
2. Structurally and phonetically, “NOVARTIS” and “NOVIETS” are similar.
3. Minor variations were held insufficient to dispel confusion.

Applying the dominant feature test, the Court held that the essential feature of the Plaintiffs’ mark had been appropriated.

The Defendants’ argument that “NOVIETS” was used only as a trade name was rejected, with the Court clarifying that such use does not safeguard against infringement or passing off.

Further, the Court noted the absence of any plausible explanation for the adoption of the mark “NOVIETS,” concluding that the adoption was prima facie dishonest and intended to capitalize on the Plaintiffs’ reputation.

Goodwill, Confusion, and Public Interest

The Plaintiffs successfully demonstrated substantial goodwill and reputation. The Court emphasized that:

1. Actual confusion need not be proven; likelihood of confusion suffices.
2. From the standpoint of an average consumer with imperfect recollection, the marks are nearly indistinguishable.
3. In pharmaceutical cases, stricter scrutiny is warranted due to risks to public health.

Generic Defence Rejected

The Defendants’ argument that “NOV” is generic was dismissed. The Court observed that having themselves sought registration of “NOVIETS,” the Defendants could not simultaneously claim that the mark lacks distinctiveness.

Triple Identity and Balance of Convenience

The Court found the presence of “triple identity”, similar marks, identical goods, and overlapping consumer base, strongly favouring the Plaintiffs.

On the balance of convenience, the Court held that:

1. Continued use by the Defendants would irreparably harm the Plaintiffs’ goodwill.
2. The Plaintiffs had established a strong prima facie case.
3. Irreparable injury would ensue absent interim relief.

Conclusion

The Delhi High Court granted an interim injunction restraining the Defendants from using the mark “NOVIETS” or any deceptively similar mark in relation to pharmaceutical and veterinary products, whether as a trademark or trade name.

The case is a reaffirmation of the enhanced protection accorded to pharmaceutical trademarks and the judiciary’s role in preventing consumer confusion in matters impacting public health.

A recent decision of the Delhi High Court reiterates a fundamental principle of Indian trademark law, prior user rights prevail over statutory registration. In a dispute over the mark “ATHERMAL,” the Court set aside an injunction granted by the District Court and granted interim protection to the party claiming earlier use of the mark.

Background

The appeal arose from an order passed by the Additional District Judge-04, North-West District, Rohini Courts, Delhi. Aggrieved by the order restraining him from using the mark “ATHERMAL,” the Defendant, Amit Bansal, approached the High Court in appeal.

The Respondent/Plaintiff, Amit Garg, had instituted a suit before the District Court claiming that he carried on business under the name M/s Athermal Industries AG, engaged in the manufacture and marketing of various goods. It was further asserted that Respondent No. 2, a proprietorship concern run by his family members, marketed the same range of goods under the subject mark.

According to the Respondents, the mark “ATHERMAL” was honestly conceived and adopted in 2003 through a predecessor. An application for registration of the mark in Class 9 was filed in 2010, which was subsequently granted registration in 2017.

In response, the Appellant/Defendant asserted in the Written Statement that the mark “ATHERMAL” had been in use since 1985 by his predecessor-in-title, Rajinder Kumar Bansal, who carried on business as M/s Ambay Traders and Manufacturers from the same premises. Mr. Bansal, the Appellant’s father, was said to have adopted and used the mark, which the Appellant later continued to use after establishing his own enterprise in 2006 under the name M/s Ambay Industrial Corporation.

Both parties moved applications before the District Court seeking interim injunctions against the use of the mark “ATHERMAL.” By the impugned order, the Court allowed the Plaintiff’s application and rejected the Defendant’s application, thereby restraining the Appellant from using the mark.

Appellant’s Contentions Before the High Court

The Appellant argued that the mark “ATHERMAL” was coined and adopted in 1985 by his father, Mr. Rajinder Kumar Bansal, who extensively used it for welding-related goods, including welding apparatus, cables, regulators, transformers, machines, tools and welding safety glasses.

When the Appellant commenced his own business in 2006 under M/s Ambay Industrial Corporation, he continued using the mark with his father’s permission, operating from the same premises and issuing invoices under the mark.

The Appellant further contended that:

1. The Respondents had commenced business only in October 2011, making it improbable that they had used the mark earlier.
2. The Appellant had filed trademark applications for “ATHERMAL” in 2011 in Classes 9 and 7, which were still pending before the Trademarks Registry.
3. Several examination reports issued by the Registry cited the Appellant’s applications as conflicting marks against the Respondents’ applications.
4. In response to those examination reports, the Respondents argued that the Appellant’s mark was visually, structurally and phonetically different, thereby acknowledging the existence of the Appellant’s mark.

The Appellant also alleged that the invoices filed by the Respondents to establish prior use were forged and illegible.

Respondents’ Submissions

The Respondents maintained that Respondent No. 1 commenced business under the subject mark in 2003 through Respondent No. 2, M/s Shiva Traders, a family proprietorship run by his mother, Ms. Asha Rani. According to them, rights in the mark were transferred through an oral family settlement.

They further argued that:

1. The Appellant’s claim of use since 1985 was unsupported by documentary evidence.
2. No assignment deed existed transferring the mark from Mr. Rajinder Bansal to the Appellant.
3. The Appellant’s trademark applications claimed use only from 2006, indicating that the Appellant was neither the prior applicant nor prior user.
4. The Respondent had secured registration of the subject mark in 2017, while the Appellant’s applications remained pending.
5. The Appellant attempted to amend the user date from 2006 to 1985 in 2018, which is belated and a substantial change.

The Respondents also alleged that the Appellant’s invoices were fabricated and argued that there was no evidence of use after 1999, suggesting abandonment.

High Court’s Analysis and Findings

The High Court examined two principal issues: (i) alleged inconsistency in the Respondents’ stand before the Trademarks Registry and the Court, and (ii) the competing claims of prior use.

The Appellant contended that the Respondents had earlier asserted before the Trademarks Registry that the marks were dissimilar and therefore could not now claim deceptive similarity in the suit. However, the Court observed that although the Appellant’s mark had been cited against some applications of the Respondents, it had not been cited against the subject mark in Class 9, which formed the basis of the present suit. Consequently, the principle of approbate and reprobate did not apply in the circumstances.

The Court then examined the rival claims of prior use. The District Court had accepted the Respondents’ claim of use since 2003, while rejecting the Appellant’s claim on the ground that the Appellant had not produced a formal assignment deed from his predecessor and that his trademark applications were still pending.

The High Court found this reasoning erroneous. It noted that the Appellant had produced invoices dating back to 1990, showing use of the mark through his predecessor, Mr. Rajinder Kumar Bansal. At the same time, the Respondents’ claim of rights in the mark was based on an oral family settlement, which had been accepted by the Trial Court without similar scrutiny.

In view of the documentary material placed on record, the Court held that the Appellant had made out a prima facie case of prior use since at least 1990. The Court reiterated the settled principle that prior user rights prevail over registration, and therefore the Appellant’s earlier use was prima facie superior to the Respondent’s registered mark, which claimed user only from 2003.

Decision

In light of these findings, the High Court allowed the appeal and set aside the order of the District Court. The Court restrained the Respondent/Plaintiff from using the subject mark “ATHERMAL” or any mark deceptively similar to it in relation to welding goods during the pendency of the suit.

Comment

This ruling reinforces the well-established principle of trademark law that prior user rights prevail over statutory registration. By recognising the Appellant’s prima facie evidence of earlier use of the mark “ATHERMAL,” the Court emphasised that actual market use and commercial goodwill carry greater weight than mere registration, particularly at the interim stage.

The Division Bench of the Delhi High Court recently dismissed the appeal filed by Star Smith Export Private Limited and upheld the interim injunction granted in favour of A. O. Smith Corporation in a trademark infringement dispute. The dispute concerned the defendants’ use of the mark “STAR SMITH” in relation to products such as geysers, water heaters and purification systems. The plaintiffs contended that the impugned mark was deceptively similar to their well-known and registered trademark “AO SMITH.” The Court observed that “SMITH” constituted the dominant element of the competing marks, and considering the identical nature of goods, overlapping trade channels and the likelihood of consumer confusion, the use of the mark “STAR SMITH” was likely to mislead consumers. The Court also took note of the plaintiffs’ prior use and established reputation in India, which predated the defendants’ adoption of the impugned mark.

Accordingly, the appeal was dismissed and the defendants were restrained from using “STAR SMITH” as a trademark, corporate name or domain name. The Court further directed the defendants to change their corporate name and domain name within the timelines prescribed by the Court. RNA Technology and IP Attorneys represented A.O. Smith Corporation in this matter.

In a significant ruling concerning pharmaceutical trademark infringement, the Bombay High Court granted interim relief in favour of Laboratoires Griffon Private Limited, restraining the Defendants from using the marks “GLYNET” and “GLYZET” or any other mark deceptively similar to the Plaintiffs’ registered trademarks “GLIMET” and “GLIMET DS.” The Court also directed initiation of perjury proceedings against Defendants and imposed ₹50 lakh as costs, citing their breach of undertakings and false statements on oath.

Background of the Dispute

The Plaintiffs are the registered proprietors of the trademarks “GLIMET” and “GLIMET DS” in Class 05 for pharmaceutical preparations used in the treatment of diabetes. Plaintiff No. 2, a sister concern of Plaintiff No. 1, has been granted a limited, non-exclusive licence to manufacture and sell products under these marks under the supervision of Plaintiff No. 1.

In 2021, the Plaintiffs instituted a suit before the Bombay High Court against the Defendants and ZeeLab Generic Pharmacy challenging the use of the mark “GLYNET.” The suit was disposed of by an order dated March 11, 2021, after the Defendants made a statement before the Court that they would discontinue the use of “GLYNET” and any of its variants and take steps to withdraw their pending trademark applications.

The Defendants also informed the Court that certain stock bearing the impugned mark had already entered the market. Accordingly, the Court granted them 90 days to clear the existing stock, after which any unsold goods were to be destroyed or repackaged after removing the impugned marks. In view of the undertaking given by the Defendants, the suit was decreed in favour of the Plaintiffs, who chose not to press their claim for damages.

Plaintiffs’ allegations in the present suit

The Plaintiffs later discovered that the Defendants had continued manufacturing and selling products under the mark “GLYNET,” in violation of the undertaking recorded by the Court. They also found that the Defendants had adopted a new mark, “GLYZET,” for an identical pharmaceutical product used for the treatment of diabetes.

The Plaintiffs placed online orders in July 2021 for products advertised under the mark “GLYZET.” However, the goods delivered bore the mark “GLYNET.” Although the invoices referred to the product as “GLYZET,” the packaging prominently displayed “GLYNET,” and the products bore a manufacturing date of May 2021, indicating continued production even after the Court’s earlier order.

According to the Plaintiffs, the adoption of “GLYZET” was merely an attempt to make minor alterations to their mark “GLIMET.” The substitution of the letters “I” and “M” with “Y” and “Z” did not eliminate the likelihood of confusion, particularly since the competing products were pharmaceutical preparations intended for the same therapeutic purpose.

The Plaintiffs also alleged that the Defendants had made false statements on oath by claiming that the use of “GLYNET” had ceased after the order dated March 11, 2021 and that the impugned products were manufactured prior to that date.

Defendants’ Submissions

The Defendants argued that the earlier suit had not been decided on merits but had merely been disposed of on the basis of their recorded statement before the Court. They also submitted that once the present suit was filed and ex parte ad-interim relief was granted, they had discontinued the use of the mark “GLYZET.”

They further contended that:

1. The marks “GLYZET” and “GLIMET” were visually, structurally and phonetically distinct.
2. The packaging of the rival products was different, eliminating the likelihood of confusion.
3. The mark “GLYZET” had been honestly adopted, with “GLY” referring to the active pharmaceutical ingredient Glimepiride and “ZET” derived from the Defendants’ corporate name “ZEM.”
4. The manufacturing date printed on the strips was May 2020, prior to the Court’s earlier order, and the endorsement “Read as GLYZET-PM2 Tablets” indicated that there was no intention to breach the undertaking.

Court’s Findings

After examining the record and the rival marks, the Court held that the Plaintiffs had established a strong prima facie case for interim relief.

The Court observed that the Plaintiffs were the registered proprietors of the marks “GLIMET” and “GLIMET DS,” and the Defendants were already aware of these rights due to the earlier litigation.

Dishonest Adoption

The Court rejected the Defendants’ explanation for the adoption of “GLYZET.” It observed that if the mark had genuinely been derived from Glimepiride and the corporate name “ZEM,” the resulting mark would logically have been “GLYZEM.” The adoption of “GLYZET” therefore appeared to be a deliberate attempt to imitate the Plaintiffs’ mark “GLIMET.”

Deceptive Similarity

The Court held that “GLYZET” was deceptively similar to “GLIMET.” Both marks shared the same prefix “GL” and suffix “ET,” had similar lengths and structures, and were phonetically similar.

The substitution of “IM” with “YZ” was considered a minor variation that would not dispel confusion, particularly in the context of oral prescriptions and sales of medicines in India.

Stricter Approach for Pharmaceutical Products

The Court emphasized that a higher degree of caution is required in cases involving pharmaceutical products, as confusion between medicines can pose serious risks to public health. Even a possibility of confusion between competing medicinal products is sufficient to justify the grant of an injunction.

Breach of Undertaking and False Statements

The Court also found that the Defendants had breached the undertaking recorded in the order dated March 11, 2021 by continuing to manufacture and sell products under “GLYNET.” Documentary evidence indicated that products bearing the mark had been manufactured in May 2021, well after the Court’s order.

Further, the Court concluded that certain Defendants had made false statements on oath regarding the cessation of use of the impugned mark, thereby misleading the Court.

Relief Granted

In view of these findings, the Court granted an interim injunction restraining the Defendants from manufacturing, selling, advertising, or dealing in pharmaceutical products under the marks “GLYNET,” “GLYZET,” or any other mark deceptively similar to the Plaintiffs’ registered trademark “GLIMET.”

The Court also directed that appropriate action be initiated against the Defendants for perjury for making false statements on oath.

Additionally, considering the Defendants’ breach of undertaking, continued infringement, and misleading conduct, the Court imposed exemplary costs of ₹50 lakh payable to the Plaintiffs.

Conclusion

The ruling reiterates the strict standards applied by courts in pharmaceutical trademark disputes, where even minor variations between competing marks may not be sufficient to avoid confusion. It also highlights that breach of undertakings given to the court and false statements on oath can attract serious consequences, including perjury proceedings and substantial monetary costs.

The rapid proliferation of artificial intelligence technologies has ushered in an era of synthetically generated information (SGI), encompassing deepfakes, AI altered audio-visual content, and algorithmically manipulated media that blurs the line between reality and fabrication. In response, the Ministry of Electronics and Information Technology (MeitY) on 10th Feb amended the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) and brought in new Amendment Rules, 2026 (Amendment Rules). The Amended Rules became effective from February 20, 2026, these changes mark India’s first comprehensive statutory framework for SGI, prioritizing transparency, swift enforcement, and accountability amid rising misinformation threats.

The objective of these rules is to address exponential digital growth from 250 million to over 1 billion internet users in less than a decade outpacing digital literacy, fuelling SGI driven scams. These varied from financial scams to celebrity impersonation, false endorsements and offering merchandise bearing celebrity names etc. The Delhi and Bombay High Courts in last one year has witnessed a flurry of personality rights cases involving SGI impersonations, underscoring judicial consensus on harm and injury arising out of such SGI impersonations.

Definition of Synthetically Generated Information (SGI)

The cornerstone of the Amendment Rules lies in the introduction of the definition of “synthetically generated information” under Rule 2(1)(wa), a novel definition absent in the original 2021 framework. SGI is defined as any audio, visual, or audio-visual content that is “artificially or algorithmically created, generated, modified or altered using a computer resource” in a manner that depicts or conveys information appearing authentic but which a reasonable person would perceive as realistically depicting persons, events, or scenes that have not occurred. Exclusions carve out bona fide uses, such as routine photo/video editing, academic/research content, watermarking for branding, or AI training data devoid of realistic impersonation.

This precise delineation, addresses ambiguities in prior rules while targeting high-risk deepfakes including, but not limited to, realistic forgeries often used for electoral manipulation, defamation, or non-consensual pornography. MeitY further clarifies that the focus is multimodal (images, audio, video) and not just textual content, narrowing the scope to perceptible harms. However, platforms/intermediaries fear overbroad interpretations could interfere against legitimate generative AI tools, potentially stifling innovation without clear technical standards for the term “realistic depiction”.

Labelling and Meta Data Obligations for Intermediaries

1. Amendments to Rule 3(1) impose stringent due diligence on intermediaries, particularly Significant Social Media Intermediaries (SSMIs) with over 5 million users. Rule 3(3) mandates prominent disclosure of SGI at upload, prohibiting users from removing or suppressing labels/metadata. Intermediaries must ensure all SGI is embedded with unalterable metadata or unique identifiers tracing origin, provenance, and alterations, while deploying algorithms to detect and prevent non-disclosure.
2. Rule 4(1A), inserted for SSMIs, elevates user declarations from mere endeavours to mandatory verification i.e. platforms are directed to confirm SGI disclosures before publication and reject non-compliant uploads. The Rules emphasize upon a clear and prominent marking visible to recipients underscoring permanence and mandating that no intermediary may facilitate label stripping. Non-compliance risks forfeiture of safe harbour immunity under Section 79(1) of the Information Technology Act, 2000, exposing platforms to vicarious liability for user generated SGI violations.

Accelerated Takedown Regime and Grievance Redressal

1. A paradigm shift emerges in enforcement timelines with clear obligation on SSMIs to acknowledge complaints upon actual knowledge received by i) an order of a court of competent jurisdiction or ii) a reasoned intimation from the authorised officer of the Appropriate Government or its agency. SSMIs must remove/disable access or issue warnings within three hours to the publisher for unlawful SGI, slashing the prior 36-hour window.
2. Grievance officers are also now required to acknowledge complaints within twenty-four hours and resolve issues within seven days (halved from 15). The Rules also specifies that the intermediaries are required to deploy reasonable and appropriate technical measures like automated detection to ensure that unlawful/prohibited SGI must be prevented under Rule 3(3)(a)(i) such as child in sexually explicit manner (CSEAM), sexually explicit content or non-consensual intimate imagery.

Challenges for Intermediaries/Businesses

1. The labelling requirement for SGI highlights a shift to proactive obligations, akin to EU AI Act watermarking. However, the lack of grace periods for tech upgrades could burden the SMEs disproportionately.
2. Businesses apprehend the three-hour clock as operationally unfeasible without 24/7 human-AI hybrids, risking erroneous takedowns and free speech under Article 19(1)(a).
3. The amendments explicitly link SGI lapses to its breach of due diligence requirement. The Amendments to Rule 3(2) specify that failure to expeditiously remove flagged content post-notice voids protection as an intermediary. Resultantly incentivizing over removal.
4. MeitY has clarified that the application of the Rules is platform wide, and not per-post, which could lead to platforms pre-emptively censoring ambiguous content to mitigate risks.
5. While advancing transparency, the new Rules raises certain implementation hurdles. Technical feasibility of metadata persistence across edits/sharing chains remains unaddressed with no government provided tools are being offered under the new Amendment to The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.
6. The overall cost burden of implementation and talent shortages for compliance teams may have an impact on innovation with resources being allocated towards compliance.

Conclusion

While free speech curtailment and operational infeasibility challenges remain, such criticisms overlook India’s scam epidemic such as use of SGI for “digital arrest” frauds exploiting low literacy users. The 2026 Amendments indicate a proactive, SGI-centric evolution of India’s intermediary liability framework, mandating labelling, verification, and ultra-swift takedowns to combat AI-fuelled misrepresentation and misinformation. By tethering compliance to safe harbour survival, the Amended Rules would compel platforms to internalize harms, fostering a safer digital ecosystem. Yet success of the new regime would hinge on clarificatory guidelines, technical aids, and judicial guardrails to balance innovation with rights. Policymakers must monitor efficacy through annual reports, refining ambiguities lest overregulation stifles the very openness AI promises.

In every patent infringement case, the most important exercise is a careful comparison between the patent claims and the infringing product or process. The claims define the exact scope of the patentee’s rights. Therefore, infringement cannot be decided by broadly comparing two products or by looking at general similarities. The court must compare the infringing product strictly with the claims, as they are properly interpreted.

Claims define the monopoly

Indian courts have consistently held that claims define the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively and purposively in light of the specification, without enlarging, rewriting, or substituting their language. The scope of the claims must remain consistent for both validity and infringement.

Claim construction comes first

The first stage, namely claim construction, is a matter of law. The court must identify the essential elements of the claims. Only thereafter can the claims be compared with the impugned product or process, which is a mixed question of law and fact.

Element-by-element comparison

Infringement is established by comparing the claimed elements with the infringing product. Essential features must be identified and mapped against the impugned feature. The exercise is a claim-to-product comparison, not a comparison of the plaintiff’s and defendant’s products.

Doctrine of equivalents

An infringer cannot escape liability by minor or insubstantial changes. Where elements differ insignificantly, the doctrine of equivalents applies. Trivial or cosmetic variations do not defeat patent rights if the essential elements are appropriated.

The decision in Canva Pty Ltd & Ors. v. Rxprism Health Systems Private Limited & Anr., is a recent example where the Delhi High Court closely examined whether this disciplined claim-to-product comparison was properly carried out while granting an interim injunction.

The present case was originally brought by RxPrism Health Systems Private Limited (Plaintiff), being engaged in providing technology products for social selling and social commerce to business organizations for digital customer engagement. The Plaintiff asserted ownership of Indian Patent No. IN360726 titled “A system and a method for creating and sharing interactive content rapidly anywhere and anytime” against Canva Pvt Ltd (Defendant), an Australian technology company operating a globally used online design and content-creation platform under the brand name CANVA. The dispute in the present proceedings arises from the Plaintiff’s allegation that Canva’s feature titled “Present and Record” infringes the suit patent by enabling users to create presentations containing a video overlay, along with certain interactive elements.

Cause of action

The Plaintiff became aware of the Defendant’s “Present and Record” feature in June 2021and undertook a technical assessment, which indicated that the feature incorporated the essential elements of the suit patent.

Over the following two and a halfmonths, the Plaintiff engaged with the Defendant, sharing patent details, providing claim mapping analyses, outlining the alleged technical overlap, and proposing a commercial license. The Plaintiff states that it responded to all requests in good faith with a view to reaching an amicable resolution.

Notwithstanding these efforts, the Defendant allegedly continued to commercially exploit the impugned feature in India without a license. The Plaintiff therefore concluded that an amicable resolution was not feasible and instituted the present suit seeking injunctive relief and other remedies under the Patents Act, 1970.

Decision of Single Judge (Delhi High Court)

The Single Judge compared the suit patent claims with Canva’s “Present and Record” feature. Based on the Plaintiff’s claim charts, screen recordings, and presentations, the Court noted that Canva allowed uploading slides, recording a PiP video overlay, integrating interactive CTA elements, and generating cloud-hosted links, reproducing the layered multimedia architecture of the suit patent.

The Defendant argued that Canva lacked three layers, that CTA elements were embedded, PiP movement was browser dependent, and editing was limited. The Court rejected these as mere tactical distinctions, holding that “slight variations in implementation do not absolve infringement.” Evidence showed Canva permitted independent slide modification and server-side layered editing.

The Defendant relied on prior art such as Microsoft PowerPoint 2016, Loom, Auto Auditorium, and academic works, and also challenged the patent on grounds of Section3(k) of the Patents Act, insufficiency, lack of clarity, and obviousness.

The Plaintiff’s expert provided claim by-claim mapping. The Defendant’s expert acknowledged overlapping elements. The PCT application by the Defendant showing a similar architecture strengthened the Plaintiff’s prima facie case.

The Court directed Canva to deposit INR50,00,000 (approx. USD 56,000) as security and imposed INR 5,00,000 (approx. USD 5,000) in costs. It held that:

1. A strong prima facie case of infringement exists.
2. The balance of convenience favors an injunction.
3. Denial would cause irreparable harm.

Canva appealed this order before the Division Bench.

Canva contended that the Single Judge erred in applying the novelty test, ignoring essential elements, and mechanically applying the triple test, making the INR 50,00,000 (approx. USD 56,000) deposit disproportionate.

Contentions of Canva

• Incorrect infringement analysis

The Single Judge relied on functional similarity rather than the required element by- element claim comparison. Canva argued that four essential features identified by the Plaintiff were absent in its product.

• Absence of the alleged “third/ sandwiched layer”

1. Canva asserted that the Plaintiff ’s patent hinged on a three-layered architecture: slides, PiP video, and a separate CTA layer;
2. Canva’s system allegedly uses only two layers (slides and PiP), with CTAs embedded in slides, not independent;
3. The patent describes PiP as movable via haptic interaction; however, Canva claimed its PiP is not movable, and any movement is browser dependent, not product based;
4. According to Canva, CTA in its system appears during authoring, while the patent allegedly requires CTA only to appear during playback.

• Claim construction and validity

Canva argued that the Single Judge:

1. Failed to properly construe the claims before applying them;
2. Compared prior art (e.g., PowerPoint 2016 and Loom) with the Plaintiff ’s product instead of the claims;
3. Ignored serious validity challenges (prior art, obviousness, insufficiency, Section 3(k) issues).

Contentions of RxPrism

• Claim-to-product mapping was properly done

The Single Judge explicitly compared the patent claims to Canva’s feature, not product to product. Infringement was found for 40 patent claims (two independent and 38 dependent).

• No “third layer” requirement

The patent never mentions “third layer” or “sandwiched layer;” these were introduced by Canva. Canva’s own expert admitted that “the word layer does not appear in any of the 54 claims.”

• PiP movability is not essential

Movability was a descriptive, not mandatory, element. Evidence, including video demonstrations, showed that Canva’s PiP functions as a foreground overlay.

• CTA visibility during authoring is irrelevant

The claims do not mandate the CTA to be hidden at authoring, and the Defendant’s expert also acknowledged that such a limitation does not exist in the patent.

Principles laid down for claim-to-product mapping by the appellate court and reasons for upholding the injunction in favor of RxPrism.

Correct application of legal principles

The learned Single Judge exercised discretionary jurisdiction in granting interim relief. It is trite law that appellate interference with such discretionary orders is limited and circumscribed. An appeal against an order granting or refusing an injunction is not an appeal on facts, but an appeal on principle.

The threshold question before the Court was not whether a different conclusion could have been arrived at on the same set of facts but whether the methodology adopted by the learned Single Judge conforms to settled principles of patent jurisprudence, and whether the findings suffer from legal infirmity, perversity, or misapplication of law.

Claim construction

The Court observed that the first stage, namely claim construction, is a matter of law. The second stage, comparison with the impugned product or process, is a mixed question of law and fact.

Patent claims defi ne the patentee’s monopoly; what is not claimed is disclaimed. Claims must be construed objectively, purposively, and in light of the specification without enlarging, rewriting, or substituting their language. The scope must remain consistent for validity and infringement; inconsistent narrowing or broadening is impermissible.

Essential features of the suit patent are: (i) layered media architecture with background and foreground media; and (ii) post-creation configurability of interactive elements, including CTAs. The alleged third layer, CTA invisibility, and PiP movability are not essential.

Doctrine of equivalents

Infringement is established by comparing claimed elements with the infringing product. Where elements differ insignificantly, the doctrine of equivalents applies to prevent minor changes from depriving the patentee of the core inventive concept. An infringer cannot escape liability by minor or insubstantial changes.

For product or device patents, infringement by equivalence uses the function-way-result triple test. For process or method patents, the essential element test applies:

1. construe the claims to identify essential elements;
2. compare with the allegedly infringing process;
3. if all elements exist, literal infringement is established;
4. if not, the doctrine of equivalents applies;
5. assess substantial identity of essential elements, steps, and their interactions. Minor or inessential variations do not avoid liability.

Court’s reasons for holding the injunction against Canva

The Court concluded that the Single Judge properly construed the four disputed claims, mapped them to the Defendant’s product, and applied the doctrine of equivalents, treating the absence of a “third/sandwiched layer” or PiP movability as non-essential. CTA functionality via a configuration interface satisfied the claims.

The Court held that, prima facie, all essential inventive steps are present in the Defendant’s product, and the findings are consistent with claim construction and settled infringement principles. Claims 1 and 39 of the suit patent require a layered media architecture with first media as background, second media as foreground PiP overlay, and interactive elements with post-creation configurability. Seven inventive steps (A1, A2, A3, A4, B5, C6, C7) were identified; the Defendant admits A2, A3, and B5, leaving A1, A4, C6, and C7 in dispute. The Single Judge compared these disputed steps with the Defendant’s product, finding layered presentation and PiP present (A1, A4), with movability being non-essential, and that interactive elements and CTAs are configurable through a separate interface and rendered during playback (C6, C7). The so-called “third” or “sandwiched” layer is not required by the claims or specifications, and minor differences such as browser-dependent PiP movement or CTA visibility during authoring do not avoid infringement.

The Court concluded that the learned Single Judge applied claim-to-product comparison, considered prior art, and properly invoked the doctrine of equivalents, holding that trivial or cosmetic differences cannot defeat the patent. Patent validity is assessed by comparing the claims, as construed, with prior art. The Single Judge rejected anticipation from Microsoft PowerPoint 2016, Auto Auditorium, and Loom, noting these lacked layered media, post-creation configurability, and non-merging of streams, which are essential elements of the suit patent. Reliance on the Defendant’s PCT application was only corroborative.

Based on user data, revenue, and lack of assets in India, the order to deposit INR 50,00,000 (approx. USD 56,000) was a reasonable protective measure.

Conclusion

The present judgment reaffirms that overturning an interim injunction requires a serious and structured validity challenge. Claim construction is a matter of law, and infringement is established by comparing the claimed elements with the alleged infringing product, including application of the doctrine of equivalents. Minor or inessential variations do not avoid liability. Appellate interference is limited to cases of perversity, arbitrariness, or misapplication of law.

The Bombay High Court recently adjudicated a trademark dispute between Trackon Couriers Private Limited, the registered proprietor of the ‘TRACKON’ marks, and its former business associate, B.N. Srinivas. The issue arose from the Defendant’s continued use of the mark ‘TRACK-ON’ and allied trade names following the termination of their commercial relationship. Alleging infringement and passing off, the Plaintiff sought interim protection of its statutory and common law rights.

Background

Trackon Couriers Private Limited has been engaged in domestic courier services, international shipping, e-commerce logistics, and supply chain management since 2002. It holds valid and subsisting registrations in Class 39 for several composite label marks containing the word “TRACKON” .

The mark ‘TRACKON’ is a coined expression adopted in 2002. Through continuous and extensive use, it has acquired substantial goodwill and reputation in relation to the Plaintiff’s services.

In 2016, the Plaintiff appointed the Defendant as its business associate to promote its services in Andhra Pradesh and Telangana. By a letter dated May 5, 2016, the Defendant was authorised to operate under the name ‘M/S. Trackon Couriers & Cargo Services’ in those regions. Pursuant to this arrangement, the Defendant and his wife formed a partnership and carried on business under that name between 2016 and 2023.

In October 2023, the Plaintiff called upon the Defendant to cease using ‘TRACKON’ and to change the business name. In correspondence exchanged between October 28, 2023, and November 6, 2023, the Defendant agreed to comply.

However, in September 2024, the Plaintiff discovered that the Defendant had applied to register the mark ‘TRACK-ON EXPRESS’ on a ‘proposed-to-be-used’ basis and had established a new partnership firm under the name ‘Track On Express Logistics.’ A cease-and-desist notice dated September 16, 2024, was issued, followed by a termination notice dated September 19, 2024, formally ending the business association.

Plaintiff’s Case

The Plaintiff contended that:

1. ‘TRACKON’ is a coined and distinctive mark, adopted in 2002, and has acquired significant goodwill through long and continuous use.
2. The essential and dominant feature of its composite registrations is the word ‘TRACKON’ (including its Devanagari representation).
3. Registration of a composite mark confers exclusivity over its essential features, and unauthorised use of such a feature amounts to infringement.
4. The Defendant’s mark ‘TRACK-ON’ is virtually identical and deceptively similar to the Plaintiff’s registered marks, and is used for identical services.
5. The Defendant had earlier used ‘TRACKON’ only as a business associate and had expressly agreed to change its name in 2023.
6. The plea of prior use was unsupported by credible evidence and was contradicted by the Defendant’s July 2024 trademark application, which described the mark as ‘proposed to be used.’
7. There was no documentary evidence establishing any independent proprietorship predating the Plaintiff’s rights.

On these grounds, the Plaintiff submitted that it had established a strong prima facie case and was entitled to interim relief.

Defendant’s Contentions

1. Lack of Territorial Jurisdiction
   It was argued that the Court lacked jurisdiction, as both parties operated outside Mumbai and the alleged acts of infringement occurred elsewhere. Reliance on the Defendant’s website to establish a Mumbai presence was said to be misplaced.
2. Inconsistent Pleadings
   The Defendant contended that the Plaintiff had taken contradictory positions denying permission in the plaint while arguing permissive use during oral submissions.
3. Absence of Written Licence
   It was submitted that even if permissive use were assumed, there was no written agreement as contemplated under the Trademarks Act, 1999, nor any evidence of trade connection or quality control.
4. Suppression of Material Document
   The Defendant alleged suppression of the May 5, 2016 letter, which, according to him, demonstrated the Plaintiff’s knowledge of and consent to use of the name.
5. Acquiescence
   The Defendant argued that the Plaintiff had knowingly allowed use of ‘TRACKON’ since 2016 and had thereby acquiesced.

Plaintiff’s Rejoinder

In response, the Plaintiff submitted that:

1. Jurisdiction was invoked on the basis that a substantial part of the cause of action arose in Mumbai and loss was suffered there.
2. Territorial jurisdiction is a mixed question of fact and law to be determined at trial upon filing of a written statement.
3. The plea of permissive use was not inconsistent; the Plaintiff consistently asserted proprietorship while acknowledging that the Defendant had used the mark during the subsistence of their business association.
4. The plea of acquiescence was untenable in light of the October–November 2023 correspondence and the prompt cease-and-desist notice.
5. The alleged reply dated October 10, 2024, was never received and no proof of delivery was produced.

Court’s Analysis and Findings

The Court held that the Plaintiff is admittedly the registered proprietor of the TRACKON marks, all containing ‘TRACKON’ as their dominant and essential feature. These registrations are valid and unchallenged, entitling the Plaintiff to exclusivity.
It reiterated that unauthorised use of the essential part of a registered composite mark amounts to infringement. Given the Plaintiff’s longstanding use and goodwill, and in the absence of dispute as to similarity of marks or services, the Plaintiff was prima facie entitled to protection.

The Court found:

1. The Defendant had abandoned its plea of prior use during oral arguments.
2. The July 2024 application on a ‘proposed-to-be-used’ basis contradicted any claim of longstanding use.
3. The May 5, 2016 letter referred only to ‘Trackon Couriers & Cargo Services’ and described the Defendant as a business associate acting ‘on behalf of’ the Plaintiff, supporting the case of permissive use rather than independent proprietorship.
4. The Defendant had not denied correspondence in which it agreed to change its name.
5. The plea of acquiescence failed, as the Plaintiff had acted promptly upon discovering the impugned use.

The Court further held that objections on territorial jurisdiction and inconsistent pleadings were misconceived and based on selective readings. Notably, the Defendant had failed to file a written statement within the prescribed time, rendering the Plaintiff’s case uncontroverted at this stage.

Grant of Interim Relief

The Court concluded that:

1. The Plaintiff had established a strong prima facie case.
2. The balance of convenience lay in its favour.
3. Refusal of interim relief would cause irreparable injury.
4. The Defendant would suffer no legitimate prejudice by being restrained from using a mark to which it had no legal entitlement, particularly after having agreed to cease such use.

Accordingly, the Court granted an injunction restraining the Defendant from using the mark TRACKON/TRACK-ON” or any deceptively similar mark pending disposal of the suit.

Comment

The decision underscores the protection afforded to the dominant feature of a registered composite mark and reaffirms that a former business associate cannot, after termination, appropriate a deceptively similar mark for identical services.

A significant trademark dispute came up for consideration before the Bombay High Court involving Siyaram Silk Mills Ltd., the registered proprietor of the mark “SIYARAM,” and Stanford Siyaram Fashion Private Limited & Ors., which had incorporated the mark into their corporate name and composite label for textile goods. The Plaintiff, asserting long-standing statutory rights, nationwide goodwill, and deliberate dishonest adoption by the Defendants, sought interim relief restraining the Defendants from using the impugned mark. The Court examined the rival contentions and granted an injunction in favor of the Plaintiff.

Background

Siyaram Silk Mills Ltd. was incorporated in June 1978 as a private limited company and converted into a public limited company in 1980. The promoters of the Plaintiff had been using the trademark “Siyaram” in the textile business since 1977, prior to incorporation, for textile goods including suiting and shirting. Over the years, the company secured multiple registrations for the mark, with the earliest dating back to 1984, and built a strong nationwide reputation through extensive sales, media campaigns, and participation in major fashion events.

In June 2007, the Plaintiff discovered that the Defendants had been incorporated as Stanford Siyaram Fashion Private Limited and were using the mark “Apricott – a Product of Stanford Siyaram Fashions Pvt Ltd/ ” in relation to textiles. A cease-and-desist notice issued to the Defendants was ignored, prompting the Plaintiff to file the suit seeking an injunction.

Plaintiff’s Submissions

The Plaintiff argued that:

1. The Defendants’ claim of prior use based on the father of Defendant Nos. 2 and 3 was legally untenable, as Defendant No. 1 was incorporated only in 2006 and no assignment or transfer of the mark or associated goodwill had been evidenced.
2. The Plaintiff held prior statutory rights and registrations that predated any alleged use by the Defendants.
3. The Defendants were fully aware of the Plaintiff’s mark and its goodwill when adopting the name, and the prior store (“Mangaldeep Showroom”) primarily operated as a multi-brand outlet, further evidencing dishonest adoption.
4. There was no delay in filing the suit, as action was taken promptly following the 2007 warning notice.
5. Actual confusion need not be proved for passing off; the incorporation of “Siyaram” in the Defendants’ name and mark for similar goods implied a likelihood of confusion.
6. The claim that “Siyaram” is the name of a Hindu deity and cannot be monopolized is incorrect. The Plaintiff’s long-standing and unchallenged registration since 1986 affords strong statutory protection.

The Plaintiff also produced certified sales and advertising figures demonstrating substantial goodwill and reputation. The Defendants’ own 1992 invoice acknowledging the Plaintiff as an authorized dealer further confirmed the Plaintiff’s established goodwill.

Defendants’ Submissions

The Defendants countered that:

1. No infringement action was maintainable as Defendant No. 1 was the registered proprietor of the composite mark (Apricott – a Product of Stanford Siyaram Fashions Pvt. Ltd) in Classes 24 and 42.
2. Goodwill and reputation must be strictly proved; mere sales figures were insufficient.
3. No instances of actual use, confusion, or deception had been pleaded, and the Plaintiff’s reliance on a composite mark was misplaced.
4. The mark “Siyaram” is a Hindu deity’s name and widely used, hence cannot be monopolized.
5. Alleged acquiescence and delay by the Plaintiff, including inaction between 1992–2005 and abandoned rectification proceedings, barred interim relief.
6. Statutory requirements under the Weights and Measures Act, 1976, and later Legal Metrology rules, further diminished the likelihood of confusion.

Court’s Analysis and Findings

The Court observed:

1. The Plaintiff is the registered proprietor of the word mark “SIYARAM” since 1986, with earlier registrations unchallenged, giving rise to a strong presumption of validity under the Trademarks Act, 1999.
2. The Defendants’ reliance on prior use by a predecessor was untenable; no assignment of the mark or goodwill had been evidenced. Their alleged use in 1992 or incorporation in 2006 came after the Plaintiff’s established statutory rights.
3. Documents revealed that the Defendants knowingly adopted the mark while fully aware of the Plaintiff’s goodwill, constituting prima facie dishonest intent.
4. Even if adoption were honest, it does not excuse infringement or passing off. Use of a corporate name deceptively similar to a registered mark is impermissible.
5. The Defendants hold only a composite label registration, which does not bar a passing-off action.
6. At the interlocutory stage, the Plaintiff had sufficiently established prima facie goodwill and reputation through long-standing use, sales, advertising, and judicial recognition.
7. The argument regarding “Siyaram” as a Hindu deity was untenable; the mark has acquired distinctiveness, and the Defendants are estopped from challenging it.
8. Alleged delay and acquiescence by the Plaintiff were irrelevant in light of the prima facie dishonest adoption by the Defendants.

The Court concluded that the Plaintiff had made out a strong prima facie case for interim relief. The balance of convenience favored the Plaintiff, as continued use by the Defendants would dilute the mark and cause irreparable harm to its goodwill, reputation, and commercial interests.

Conclusion

In light of these findings, the Bombay High Court granted an injunction in favor of Siyaram Silk Mills Ltd., restraining Stanford Siyaram Fashion Private Limited & Ors. from using the mark “SIYARAM” in relation to their business, reinforcing the principle that deliberate appropriation of a well-established mark cannot be permitted, even at the interim stage.

The dispute over the registration of the trademark “AiC ARUN”, in Satya Paul v. Alka Industrial Corporation & Anr., [C.O. (COMM.IPD-TM) 651/2022] unfolded as a classic battle between long standing use of ARUN mark versus a later entrant attempting to justify subsequent adoption by adding a prefix to the mark ARUN. This case lays a simple but critical question Could addition of a prefix truly overshadow a well established trademark? The judgment provides important clarity on how Indian Courts view deceptive similarity, prior rights, dominant features and the limits of modifying an established mark through superficial additions.

Representation of the Competing Marks/Products

Background of the Case:

1. The Petitioner, Satya Paul, filed this cancellation action claiming longstanding and prior rights in the trademark “ARUN” which was adopted by its predecessor-in-interest in 1962 in respect of sewing machines and allied goods. The Petitioner relied on multiple trademark registrations upon covering different regions and classes to demonstrate statutory as well as common law rights.
2. The Respondent, Alka Industrial Corporation, had obtained registration for the mark “AiC ARUN”, arguing that the prefix “AiC” represented the initials of its corporate name.
3. The Petitioner challenged this registration before the Delhi High Court (IPD), arguing that the dominant and essential feature of the Respondent’s mark was “ARUN”, which was identical to its prior registered mark and would cause confusion and deception.
4. The core issue before the Court was whether adding the prefix “AiC” was enough to distinguish the Respondent’s mark from the Petitioner’s long established “ARUN” trademark.

Petitioner’s Contentions:

1. Prior and Continuous Use: The Petitioner is the prior adopter and user of the trademark “ARUN”, first adopted by its predecessor in interest in 1962 for sewing machines and allied goods and has been used by it continuously for several decades.
2. Multiple Statutory Registrations: The Petitioner holds multiple trademark registrations for the mark “ARUN” across different classes and geographical regions, strengthening its statutory rights.
3. Reputation, Goodwill and Acquired Distinctiveness: Through extensive use, marketing, and sale of sewing machines, the mark “ARUN” has acquired substantial reputation, goodwill and distinctiveness in the trade.
4. Deceptive Similarity and Overall Imitation: The Respondent’s trademark “AiC ARUN” is phonetically and deceptively similar, with “ARUN” remaining the dominant and essential element. A bare comparison of the marks, labels, and packaging of the sewing machines show clear imitation, strengthening the grounds for revocation.
5. Prefix “AiC” Does Not Avoid Confusion: The Petitioner contended that mere addition of the prefix “AiC” does not mitigate the ambit of “deceptive similarity” since consumers primarily identify the mark through the essential element “ARUN”.
6. Triple Test for Likelihood of Confusion Satisfied:
   1. Deceptive Similarity: The competing marks share the primary and distinctive component “ARUN”.
   2. Identical/similar Class of Goods: Both parties manufacture sewing machines and parts, falling under identical/closely related classes.
   3. Common/Identical Consumer Base and Trade Channels: The consumers, traders, and commercial channels are identical, increasing the likelihood of confusion. The Petitioner asserted that the Respondent’s mark is likely to deceive or confuse the purchasing public, warranting cancellation.
7. Overlapping Geographical Area of Sales: The Petitioner asserted that both parties operate and market their sewing machines within the same geographical regions, resulting in a direct overlap of trade territories.

Respondent’s Contentions:

1. No Deceptive Similarity Between the Marks: Respondent No. 1 argued that a bare comparison of the two trademarks, labels, trade dress, and packaging shows that the marks “ARUN” and “AiC ARUN” are completely distinct and not deceptively similar. They contended that although the consumer base and goods may be similar, that alone cannot entitle the Petitioner to seek revocation.
2. Prefix “AiC” Creates Clear Distinction: Respondent No. 1 argued that the prefix “AiC” (standing for Alka Industrial Corporation) is a prominent distinguishing element, making the two marks entirely different.
3. “ARUN” is a Common, Generic and Publici Juris Name: Respondent No. 1 contended that the name/mark “ARUN” is common and generic, widely used by several manufacturers for the same goods i.e., sewing machines and cannot be monopolized by the Petitioner.
4. Lawful and Unopposed Registration for “AiC ARUN”: Respondent No. 1 submitted that that its trademark application underwent regular statutory processes. The Petitioner did not file any opposition within the statutory period of 4 months. Consequently, having failed to oppose at the appropriate stage, the Petitioner cannot now seek cancellation of the registered mark.
5. Honest and Bonafide Adoption and Use: Respondent No. 1 argued that they had honestly adopted the mark “AiC ARUN” and is a bonafide user, with user being more than 3 months prior to their application date.
6. Marks, Labels, Packaging and Trade Dress Are Distinct: Respondent No. 1 relied upon a detailed comparative chart highlighting:
   1. Different prefixes
   2. Different fonts / styles
   3. Different colour schemes
   4. Different wrappers and packaging
   5. ISO certification appearing only on Respondent’s products
   6. Distinct manufacturer names

It argued that these differences eliminate any likelihood of confusion.

1. No Commercial Harm to Petitioner: Respondent No. 1 argued that its business is a small enterprise compared to the Petitioner’s. It submitted that a comparison of sales figures from FY 2007-08 to 2024-25 show that Petitioner’s sales have steadily increased, proving that its mark did not impact the Petitioner’s business.

Court’s Ruling and Observations:

1. Prior Adoption and Longstanding Use Established: The Court held that the Petitioner had placed on record overwhelming documentary evidence proving that the Petitioner was established in 1960 and the trademark “ARUN” was coined, adopted, and used since 1962 through its predecessor in interest. The Court noted several trademark registrations dating back to 1976, 1984 and 2001, which clearly showed prior statutory rights.
2. Geographic Proximity Supported Likelihood of Confusion: The Court noted that both parties were operating in close proximity i.e., the Petitioner in Jalandhar and Respondent No. 1 in Ludhiana, both in the State of Punjab, enhancing the probability of confusion among consumers.
3. Deceptive Similarity Between “ARUN” and “AiC ARUN” Established: The Court found that the impugned mark “AiC ARUN” retained “ARUN” as its dominant and essential feature, making the addition of the prefix “AiC” insufficient to avoid deception. The “triple test” for deceptive similarity was satisfied.
4. Respondent’s Argument That “ARUN” Is Generic Rejected: The Court rejected the Respondent’s claim that “ARUN” is generic or publici juris. The Court emphasized that the Petitioner had demonstrated long, exclusive, and widespread use and had successfully enforced its rights in the past, proving distinctiveness in the sewing machine trade.
5. No Bona Fide Adoption: The Court held that the Respondent adopted “AiC ARUN” with knowledge of the Petitioner’s established reputation, evidencing mala fides.
6. Failure to Oppose Not a Bar: The Court clarified that the Petitioner’s failure to oppose the Respondent’s mark at the publication stage does not bar rectification proceedings. Statutory remedies remain available where prior rights and deceptive similarity are clearly established.
7. Evidence Shows Clear Possibility of Consumer Confusion: Comparing the trade dress, and sales channels, the Court found significant similarity and concluded that consumers were likely to be misled.
8. Court’s Final Decision – Rectification Ordered: The Court directed rectification of the Respondent’s mark “AiC ARUN”, specifically ordering the deletion of the word “ARUN” from Respondent No. 1’s trademark, given its deceptive similarity and the Petitioner’s established prior rights.

Our Comment:

The key learnings from this decision

1. A plea of “common to trade” or publici juris must be supported by solid market evidence, not assertions alone. Long-standing exclusive use can overcome even arguably descriptive names.
2. Minor additions, whether prefix or suffix, do not sanitize infringement when the core of the registered mark is copied.
3. There is no permanent estoppel merely due to non-filing of opposition. A party may still seek cancellation/rectification even if it missed the opposition window.

We are delighted to share that Suvarna Pandey and Shipra Alisha Philip proudly represented RNA, IP Attorneys at the 19th Annual Global IP Convention (Global IP Convention (GIPC) 2026) held in Bengaluru, India on 4–5 February 2026.

The event brought together leading professionals from across the intellectual property ecosystem, providing a valuable platform for insightful discussions, knowledge exchange, and meaningful networking. Our team was delighted to engage with fellow practitioners, industry experts, and stakeholders, and to contribute to conversations shaping the evolving IP landscape.