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

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

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

     1. Compromising Trade Secrets and Proprietary Data:

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

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

     2. Infringement on Software and Copyrighted Works

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

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

     3. The Need for IP-Aware Forensic Protocols

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

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

Conclusion

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

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

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

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

Background

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

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

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

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

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

The Plaintiff’s Case

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

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

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

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

The Defendant’s Submissions

The Defendant opposed the appeal on both limitation and merits.

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

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

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

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

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

Prior Use: 1971 Claim Not Established

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

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

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

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

Is “DIGESTO” Descriptive and Common to the Trade?

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

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

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

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

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

The Fresh Registration Did Not Confer Monopoly Over “DIGESTO”

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

The Division Bench rejected this contention.

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

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

Deceptive Similarity: Marks Must Be Compared as a Whole

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

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

The respective trade dresses were also found to be distinct.

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

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

Balance of Convenience and Irreparable Injury

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

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

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

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

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

The appeal met its most significant obstacle on limitation.

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

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

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

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

Key Takeaways

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

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

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

When does the new drug-warning requirement apply?

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

What triggers the warning?

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

How paragraph 2(h) differs from the earlier test

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

A warning is not a safe harbour

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

Scope of the warning requirement: what remains unclear?

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

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

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

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

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

Other certification touchpoints that remain relevant

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

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

Implications for filmmakers and producers

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

Theatrical and OTT releases require separate analysis

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

Conclusion

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

Introduction

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

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

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

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

Background

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

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

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

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

The Defendant challenged the order before the Division Bench.

The Defendant’s Case: Suppression of Prior Use

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

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

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

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

The Plaintiff’s Response

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

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

The Defendant did not challenge the Registrar’s order.

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

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

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

The Division Bench rejected the Defendant’s suppression argument.

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

The Registrar had made two significant findings:

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

These findings had never been challenged.

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

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

Prior Use Cannot Be Considered in Isolation

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

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

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

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

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

Its challenge was confined essentially to the alleged suppression.

Subsequent Application: The Question of Estoppel

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

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

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

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

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

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

No Material Suppression by the Plaintiff

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

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

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

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

Findings on Similarity Remained Undisturbed

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

The learned Single Judge had found that:

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

These findings remained unchallenged in the appeal.

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

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

Key Takeaways

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

The High Court of Kerala, in an appeal arising from a trademark infringement and passing-off dispute, reaffirmed the importance of assessing competing trademarks from the perspective of their overall commercial impression, rather than by dissecting individual elements. The Court found that the prominent adoption of the registered mark “STAR” by former employees of the Plaintiff, who subsequently commenced an identical business, raised a strong prima facie case of trademark infringement and likelihood of consumer confusion.

The Court accordingly set aside the order of the Additional District & Sessions Court-IV, Thrissur, which had refused interim protection, and granted an injunction restraining the Defendants from using “STAR” or any deceptively similar mark in relation to their business.

Background of the Dispute

The Plaintiff, Star Pipes, is a partnership firm engaged in the manufacture and marketing of PVC and UPVC pipes, sanitary installations, etc.

The Plaintiff claimed longstanding use of the trademark “STAR”, with its business under the trade name dating back to 1984. Its “STAR” trademark was registered in 2020 and, according to the Plaintiff, was the first mark in South India to receive ISI quality certification in 1988. Over the years, the business expanded across several States in India and to Dubai, enabling the “STAR” mark to acquire considerable goodwill and reputation.

Defendants 1 and 2 were former employees of the Plaintiff. After leaving the Plaintiff’s employment, they established STAR KINGS POLYMERS PVT. LTD., carrying on business in the same field.

The Plaintiff alleged that the Defendants had deliberately adopted a mark prominently featuring “STAR” to create an association with the Plaintiff and to pass off their products as those of Star Pipes. According to the Plaintiff, the adoption was objectionable because the Defendants were former employees and were fully aware of the Plaintiff’s registered trademark and established market presence.

The Plaintiff therefore instituted a suit before the Additional District & Sessions Court-IV, Thrissur, alleging trademark infringement, passing off and related violations and sought an interim injunction restraining the Defendants from using “STAR” in connection with their business. However, the District Judge rejected the application for interim injunction, leading the Plaintiff to approach the High Court of Kerala in appeal.

Plaintiff’s Case Before the High Court

The Plaintiff contended that the Trial Court failed to appreciate the nature of the dispute and the circumstances surrounding the Defendants’ adoption of the impugned mark.

The Trial Court had erroneously proceeded on the basis that “STAR” was not a unique mark. The Defendants themselves had not raised such a contention before the Trial Court.

The Plaintiff further submitted that even where a mark contains generic or descriptive elements, it may acquire distinctiveness, goodwill and reputation arising from extensive use.

The Trial Court erred by dissecting the rival marks into their individual elements rather than assessing them in their entirety, contrary to the anti-dissection rule.

As former employees who had subsequently entered the same line of business, the Defendants had deliberately adopted the essential and dominant feature of the Plaintiff’s mark to capitalise upon its existing goodwill and market recognition.

Defendants’ Defence

The Defendants resisted the appeal, contending that their trademark was materially different from the Plaintiff’s mark.

They relied upon the distinctive presentation of their mark, which included a crown device above the letter “R” and the words “KINGS POLYMERS”. These additional elements sufficiently distinguished their mark from the Plaintiff’s “STAR” mark.

“STAR” was a generic and commonly used word, and Plaintiff could not claim a monopoly over it.

Their business was small and had limited turnover. The Plaintiff had claimed only Rs. 50,000 as compensation, which demonstrated that the Plaintiff had not suffered any substantial loss.

They had applied for registration of their trademark and denied having any dishonest intention to pass off their products as those of the Plaintiff.

High Court’s Analysis

A significant factor considered by the Court was the relationship between the parties. Defendants 1 and 2 were former employees of the Plaintiff and were therefore aware of the Plaintiff’s registered “STAR” trademark and its business.

Having subsequently established a company carrying on business in the same line of activity, the Defendants adopted a mark in which “STAR” featured prominently.

“STAR” remained the dominant feature

The Defendants sought to distinguish their mark on the basis of differences in font, capitalisation, the crown device and the words “KINGS POLYMERS”.

The Court, however, found that these modifications did not sufficiently distinguish the competing marks. Despite the additional elements, “STAR” remained the prominent and essential feature of the Defendants’ mark.

The Court held that the Defendants’ mark was a colourable imitation, as minor visual changes could not disguise the appropriation of the Plaintiff’s essential and dominant feature.

Overall commercial impression and likelihood of confusion

The Court also rejected an approach based upon a meticulous comparison of individual components of the rival marks.

The competing marks had to be considered from the perspective of the overall commercial impression they created in the minds of consumers.

The Court noted that the parties operated in the same market with overlapping products and customers, making the similar mark likely to cause confusion or an impression of business association.

Importance of Prior Employment and Knowledge

The fact that the Defendants were former employees assumed considerable significance in the Court’s assessment of their adoption of the mark.

Their subsequent entry into the same business while adopting a mark prominently incorporating “STAR” strengthened the Plaintiff’s case that the adoption was not coincidental.

Prima Facie Case, Balance of Convenience and Irreparable Injury

The High Court found a strong prima facie case of trademark infringement, noting the Plaintiff’s longstanding business since 1984 and registration of the “STAR” trademark in 2020, which established substantial goodwill and reputation. The balance of convenience favoured the Plaintiff, as continued use of the mark by the Defendants could cause consumer confusion and damage the reputation of the Plaintiff’s mark.

Decision

The High Court allowed the appeal and set aside the order of the Additional District & Sessions Court-IV, Thrissur. The High Court granted an interim injunction restraining the Defendants from manufacturing, selling or dealing in products under the mark “STAR” or any similar or deceptively similar mark pending disposal of the suit.

Comment

The decision reiterates that adding decorative elements or additional words cannot overcome deceptive similarity when the dominant feature of an established mark is adopted in the same field of business. The Defendants’ prior employment and knowledge of the Plaintiff’s mark further strengthened the case for interim protection, particularly given the potential for consumers to perceive the impugned mark as an extension or associated brand of the Plaintiff.

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.