In a recent decision, the Delhi High Court upheld the rejection of a patent application by the Indian Patent Office, reiterating the dual threshold for inventive step under the Indian Patents Act, i.e., not only must an invention demonstrate technical advancement, but it must also be non-obvious to a person skilled in the art (PSITA). The patent application in question related to a process for producing a Ziegler-Natta catalyst (typically used in polymerization processes for making plastics like polypropylene, polyethylene, etc.) using a diether compound as the sole internal electron donor, resulting in phthalate-free polypropylene with a specified molecular weight distribution. The application was rejected by the Patent Office for lack of inventive step as the claimed features were deemed obvious in light of the combined teachings of three prior art documents (D1–D3). On appeal, the applicant argued that the invention provided technical advancement as it offered improved yields, cost efficiency, and reduced impurities, of the resulting catalyst. It was also contended that the cited prior arts related to distinct systems, thereby failing to render the claimed invention obvious. The applicant also argued that the refusal suffered from hindsight bias and lacked proper reasoning. The Court undertook a detailed analysis of the inventive step requirement and the applicable tests for assessing obviousness (including ‘obvious to try’, problem/solution, “could-would”, and the TSM tests). It held that inventive step demands both technical contribution and non-obviousness to a PSITA at the priority date. Critically, the Court found that Given this overlap, the Court concluded that a PSITA, particularly since the subject application’s inventor was also listed as the inventor in D3, would have arrived at the subject application by combining the teachings of D1 and D3. Thus, the subject application did not meet the inventive step requirement. The appeal was accordingly dismissed, and the Controller’s refusal was affirmed. Lummus Novolen Technology Gmbh vs The Assistant Controller Of Patents And Designs [C.A.(COMM.IPD-PAT) 12/2023, judgement dated May 29, 2025]  

In the recent judgment, the Hon’ble Delhi High Court, granted a decree of permanent injunction against M S Hotel Ritz & Ors (“Defendants”) restraining them from infringing the trademarks of The Ritz Hotel Limited & Ors (“Plaintiffs”) and declared the Plaintiffs’ RITZ, RITZ-CARLTON, THE RITZ-CARLTON Device marks as well-known trademarks in respect of hotels and other related services in the hospitality industry.  In November 2023, the Plaintiff discovered that the Defendants were using the RITZ marks for hotel services on their websites. An investigation revealed they were also promoting these services on major travel platforms like MakeMyTrip, Agoda, and Booking.com. The unauthorized use was causing marketplace confusion and generating negative reviews, risking harm to the Plaintiffs’ reputation. Consequently, the Plaintiffs filed a suit against the Defendants seeking a relief of permanent injunction restraining them from infringement of trademarks and passing off their services as those of the Plaintiffs, along with other ancillary reliefs. Post hearing the counsel for the parties and examining the material submitted on record, the court granted a decree of permanent injunction in favor of the Plaintiffs, restraining the Defendants from using any infringing RITZ marks in connection with their hotel services and also directed them to  immediately discontinue the use of the websites www.thehotelritz.com and www.ritz-hotels.com. Further, based on the pleading, the nature and volume of the documents submitted, the Court observed that the long-standing use of  the RITZ, RITZ-CARLTON and THE RITZ-CARLTON Device marks by the Plaintiffs, their widespread geographical presence, public recognition, and their goodwill and reputation due to the extensive promotion, publicity and extensive revenue generated by the Plaintiffs, in India and abroad, have led the RITZ and RITZ-CARLTON marks to attain the status of well-known trademarks. Accordingly, the Court declared the RITZ and RITZ-CARLTON, THE RITZ-CARLTON Device marks as well-known trademarks in respect of hotels and other related services in the hospitality industry within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999. The Ritz Hotel Limited & Ors v. M S Hotel Ritz & Ors., CS(COMM) 8/2025

The Delhi High Court applies prosecution history as an estoppel in a patent infringement analysis to prevent a patentee from using the doctrine of equivalents (DoE) to recapture subject matter surrendered from the literal scope of a claim during prosecution. The ruling emerged from an interim injunction application filed by Crystal Crop Protection Limited, seeking to restrain Safex Chemicals India Limited and its affiliates from infringing its patent (No. 417213) titled “Weedicidal Formulation and Method of Manufacture thereof.” The asserted patent comprised a herbicidal composition containing Clodinafop, Metribuzin, a surfactant, a dyeing agent or pigment, and a safener. The dyeing agent or pigment’ was absent in the infringing product. So, to establish infringement, the patentee averred that the ‘dyeing agent or pigment’ was non-essential and an optional feature of the asserted patent. And that, the absence of the ‘dyeing agent or pigment’ in the Defendants’ product did not rule out infringement by equivalence. In response, the Defendants contended that the ‘dyeing agent or pigment’ was explicitly included as an essential feature in the patent claims and played a vital role by enabling visual identification of treated areas. Since their products did not employ the ‘dyeing agent or pigment’ there was no infringement – literal or by equivalence. The Court noted: – In infringement analysis by DoE, the test is whether the variant achieves substantially the same result in substantially the same way as the patented invention – Upon examining the claims, complete specification, and prosecution history, it was found that the ‘dyeing agent or pigment’ was an essential element of the patented invention and that the grant was given based on the uniqueness of the invention owing to the presence of the ‘dyeing agent or pigment’. So, later in the infringement suit, the patentee cannot take a contrary stand – one cannot approbate and reprobate. – Once the patentee includes a feature in the independent claim(s) and assigns it a vital role during prosecution, it cannot subsequently argue the feature is non-essential. The principle of prosecution estoppel was applied in the infringement assessment. – The ‘dyeing agent or pigment’ performed a specific function in the patented invention; it solved a problem identified in the prior art and was directly tied to one of the objectives of the invention. The absence of the ‘dyeing agent’ would alter not only the formulation but also the very objective and utility of the invention. Accordingly, the absence of ‘dyeing agent or pigment’ in the infringing product, causes the infringement by equivalence allegation to fail.   The decision highlights the importance of claim drafting and consistent characterization of essential features during patent prosecution. Further, it underscores that patentees are bound by their submission(s) during prosecution, highlighting the critical role of prosecution history estoppel. Crystal Crop Protection Ltd. v. Safex Chemicals India Ltd. & Ors., CS(COMM) 196/2024

The Division Bench of the Delhi High Court recently set aside an impugned order restraining the appellant, IndiaMart Intermesh Ltd., from offering prospective sellers the option to use the mark PUMA as a search option in the drop-down menu displayed during the registration process on its platform. By way of background, the respondent, Puma SE, had filed a suit seeking a permanent injunction to restrain the appellant, IndiaMart Intermesh Ltd., from using, facilitating, or offering the PUMA mark as a brand suggestion, keyword, or search term to third-parties on its website. The respondent also sought to restrain the appellant from using the PUMA mark in any manner that would amount to infringement or passing-off of its trade marks. Additionally, the respondent prayed that the appellant be directed to remove all counterfeit listings, and to refrain from displaying any product images bearing its trade marks without due diligence. In the impugned order, the Single Judge had restrained the appellant from including the PUMA mark as a search option in the drop-down menu presented to sellers at the time of registration. The Division Bench observed that the Single Judge had proceeded on the premise that the appellant functioned as an e-commerce platform facilitating direct purchase and sale of goods. The Bench clarified that the appellant is merely a facilitatory B2B listing platform that enables buyers to connect with sellers.    The Bench further noted that sellers were not compelled to choose from the drop-down menu options and had the liberty to manually enter specific descriptions of their goods. Notwithstanding, the Bench emphasized that there was no dispute as to the appellant’s obligation to make reasonable efforts to ensure that sellers do not list any infringing or counterfeit products. Further, the Bench held that the mere availability of the option for a seller to select a brand name in the drop-down menu could not, prima facie, be construed as aiding or abetting infringement. Accordingly, the Bench was of the opinion that the appellant could not be restrained from enabling sellers to describe their products using brand names or trade marks on its B2B portal, provided that the appellant continued to exercise reasonable diligence in mitigating infringement.    In light of the above, the Bench set aside the impugned order to the extent it barred the appellant from offering the PUMA mark as a search option in the drop-down menu. However, the Bench upheld the direction requiring the appellant to promptly remove all infringing listings featuring the PUMA mark.   IndiaMart Intermesh Ltd. v. Puma SE [FAO(OS) (COMM) 6/2024, CM APPL. 2216 & 2219 of 2024] Click here to read the judgement copy.

The Division Bench of Delhi High Court dismissed an appeal filed by RSPL Health Pvt. Ltd. (“Appellant”), challenging the decision of the Ld. District Judge, who had earlier refused to grant interim injunction against Sun Pharma Laboratories Limited (“Respondent”). The suit was based on the Appellant claiming trade mark infringement and passing off owing to Respondent’s use of the PRUEASE mark (used for tablets treating constipation), on the ground of that it is deceptively similar to Appellant’s PROEASE mark (used for sanitary napkins). RSPL Health Pvt. Ltd. contended that it adopted the PROEASE mark in 2012 for sanitary napkins, and intends to expand its product range under the same mark. It further claimed statutory rights over PROEASE and related formative marks in Class 5. In response, the Respondent submitted that the PRUEASE mark was coined in 2017 by combining “PRU” (from the active pharmaceutical ingredient, Prucalopride) and “Ease” (denoting relief). It was contended that the mark had been used continuously and in good faith since its adoption.  The District Judge had refused interim relief in favour of RSPL Health Pvt. Ltd. on the ground that the goods in question, i.e., sanitary napkins and a prescription drug, were entirely dissimilar, had different trade channels, packaging, and consumer base, making confusion unlikely. Upholding the reasoning, the Division Bench held that the rival products were neither allied nor cognate. The court noted trademark protection cannot extend to unrelated goods merely because they fall under the same class. It further held that RSPL Health Pvt. Ltd. had failed to make out a prima facie case, as the nature, usage, and consumer base of the products were entirely distinct. The Court also dismissed the Appellant’s argument regarding prospective expansion under the PROEASE mark as speculative. Moreover, the court took note of the Respondent’s assurance that it had no intention of expanding the PRUEASE mark to sanitary napkins. The Court also found that the Respondent’s adoption of the PRUEASE mark to be bona fide and concluded that no likelihood of consumer confusion or passing off had been demonstrated. Accordingly, the appeal was dismissed. RSPL Health Pvt. Ltd. v. Sun Pharma Laboratories Limited & Anr. [FAO (COMM) 65/2025], judgment dated June 12, 2025.

The Delhi High Court recently set aside the refusal of patent application by the Indian Patent Office, reiterating the procedural rigor required for objections under Section 3(d) of the Patents Act, particularly in pharmaceutical inventions. The appeal was filed by Taiho Pharmaceutical Co. Ltd. against the refusal of Indian Patent Application No. 7283/DELNP/2014 titled “Novel Piperidine Compound or Salt thereof.” The Patent Office had rejected the application on grounds of lack of inventive step (Section 2(1)(ja)) and non-patentability under Section 3(d). The Court, however, found that: The Court held that: This judgment reinforces the procedural safeguards surrounding Section 3(d) objections, especially in pharmaceutical patents, and affirms that ambiguous citations of prior art cannot form the basis of a valid rejection. Taiho Pharmaceutical Co Ltd vs The Controller Of Patents, (H.C. Delhi May 15, 2025), C.A. (COMM.IPD-PAT) 6/2022. Read the judgement copy here.

In a recent order, the Bombay High Court dismissed a petition filed by TikTok Limited (“TikTok”) challenging an order of the Registrar of Trade Marks Registry, Mumbai (“Registrar”), refusing TikTok’s application for inclusion of the mark TikTok in the list of well-known trade marks. The Registrar had refused TikTok’s application on the basis of the ban imposed on TikTok’s application by the Government of India. TikTok, on the other hand, argued that the Registrar’s order was passed without any application of mind, where the extensive material placed on record regarding TikTok’s rights were not even referred to in the order by the Registrar. It was TikTok’s case that mere banning of an application, which was done temporarily, cannot be the basis for refusing the well-known application. It was further argued that as per Section 11(9)(i) of the Trade Marks Act, 1999 (“Act”), to determine an application for inclusion of a trade mark in the list of well-known marks, it is not a required that “the trade mark has been used in India or not”. The court acknowledged that while the Registrar did not rely on the correct provisions of the Act while refusing TikTok’s application, it has noted correctly that the Government of India exercised power under the provisions of the Information Technology Act and the Rules to put a ban on TikTok’s application in India. Further, the court observed that the factors to determine a mark as well-known laid down under Section 11(6) of the Act are merely illustrative and not exhaustive in nature and the Registrar can take into account “any fact which he considers relevant for determining a trade mark as a well-known trade mark”. Therefore, the court was of the opinion that the factor taken into consideration by the Registrar was relevant and is covered under the purview of Section 11(6) of the Act. The court opined that since TikTok’s application bearing the mark TikTok was banned in India, the mark cannot be included in the list of well-known trade marks. Accordingly, TikTok’s petition was set aside and the Registrar’s order refusing TikTok’s well-known application was upheld.

Recently, the Gauhati High Court declined to interfere with an order passed by the Trial Court in an appeal filed by Jay Baba Bakreswar Rice Mill Private Limited (“Jay Baba”) challenging the ex parte ad-interim injunction restraining Jay Baba from infringing Lunia Marketing Private Limited’s (“Lunia”) artistic work/copyright “ARHAM” and/or using similar trade dress. The Trial Court held that Lunia is the rightful owner of the copyrighted trade dress, which had acquired enormous goodwill and reputation over time. The Trial Court, after analysing the rival trade dress, held that Jay Baba’s sac trade dress was deceptively similar to Lunia’s artistic work/copyright, and granted the ex parte ad-interim injunction. At the appellate stage, Jay Baba asserted that the impugned order suffers from several infirmities, including, (a) failure to appreciate that the parties had been exchanging correspondences, and thus improper waiver of mandatory requirement of pre litigation mediation, (b) Lunia’s copyright/artistic work was incapable of registration as it comprises of generic and religious symbols, including a Swastik and terms like 100% PURE, BRAND, SORTEX, and BPT RICE, (c) the essential features of the rival trade dress are dissimilar (ARHAM v. JAY BABA),  and (d) filing of the suit by Lunia in Gauhati despite both parties doing business in Kolkata. Lunia responded that the trial court has rightly waived the requirement of pre-litigation mediation since the suit involved urgency. Referring to the rival artistic work/copyright in the sac, Lunia contended that Jay Baba had no explanation for using the same trade dress as Lunia. The appellate court rejected Jay Baba’s procedural objections regarding jurisdiction, noting that Lunia had a place of business at Gauhati, and regarding the non-compliance with mandatory pre-litigation mediation, noting urgent reliefs being sought after Jay Baba’s refusal to comply with Lunia’s prior correspondence. On merits, the appellate court observed that there was a requirement to protect Lunia since Jay Baba’s use of the impugned trade dress had caused great inconvenience to Lunia, the relief sought was urgent in nature, and Lunia would have suffered irreparable loss. The court reiterated the well-established principle that appellate courts should not interfere unless the Trial Court’s discretion is exercised arbitrarily, capriciously, or perversely and upheld the impugned order, finding no arbitrariness or perversity in the exercise of discretion. Jay Baba Bakreswar Rice Mill Private Limited v. Lunia Marketing Private Limited And Ors. [FAO No. 8/2025] Read the judgement copy here.

Recently, Apex Laboratories Pvt. Ltd. (“Plaintiff”), the manufacturer of a pharmaceutical product under the mark ZINCOVIT (registered since 1988), filed a suit for trademark and copyright infringement and passing off against Knoll Healthcare Pvt. Ltd. (“Defendant”), alleging that its ZINOLVITA mark and packaging, also for a pharmaceutical product, imitated the Plaintiff’s distinct device of fruit and vegetables. Both parties filed petitions for rectification; the Plaintiff sought the removal of the Defendant’s registration for the mark ZINOLVITA, while the Defendant sought to impose a limitation on the Plaintiff’s exclusive right over the word ‘ZINC’. The Plaintiff argued that it was the prior user and registered proprietor of the ZINCOVIT mark, that had acquired immense goodwill and distinctiveness through three decades of continuous use, and that Defendant’s adoption of the deceptively similar mark and identical packaging was dishonest. The Defendant argued that ZINCOVIT is a weak and descriptive mark, being a portmanteau of the words ‘zinc’ and ‘vitamin’, and the Plaintiff could not claim a monopoly over these common terms. Further, it argued that the word ZINC is common to trade. The court ruled in favour of the Plaintiff, and held that although the mark ZINCOVIT might not be inherently distinctive, it had acquired distinctiveness through extensive and prolonged use since 1990 (the earliest evidence of use, furnished by the Plaintiff). The court found the Defendant’s mark ZINOLVITA to be deceptively similar to ZINCOVIT, noting that the Defendant’s initial adoption of a nearly identical packaging demonstrated a dishonest intent. Moreover, the court found that without proof of actual market presence, mere production of the search report of third-party ZINC-formative marks is insufficient to support the defence that ZINCOVIT has become common to trade. Consequently, the suit was decreed, and a permanent injunction was granted restraining the Defendant from using the ZINOLVITA mark. The court allowed the Plaintiff’s rectification petition, directing the removal of the ZINOLVITA mark from the register. The Defendant’s petition to impose a limitation on the Plaintiff’s registration was disposed of as unnecessary, with the court clarifying that trademark rights apply to the mark as a whole, as per the provisions of the Trade Marks Act. Lastly, the Defendant was directed to pay costs of INR 4,00,000 to the Plaintiff. Apex Laboratories Pvt. Ltd vs Knoll Healthcare Pvt Ltd C.S.(Comm. Div.) No.355 of 2020, judgement dated 19.06.2025

The Calcutta High Court, in Andreas Gutzeit v. Controller General of Patents  (IPDPTA/7/2024), set aside the rejection of a patent application concerning a “Blood Flow Control System and Method for In-vivo Imaging,” highlighting the necessity for a well-explained decision when assessing claim amendments under Section 59 of the Patents Act. The patent applicant sought to amend the claims from method claims to system claims following a First Examination Report (FER), citing similar grants in other major jurisdictions. The Patent Office rejected the application solely on the ground of non-compliance with Section 59, holding that the amendment broadened the scope from a method to a system claim, which is not permissible. The Court found that: The Court reaffirmed that amendments are only permissible if they do not introduce new matter or broaden the scope of the original claims. Any change must be supported by the original disclosure. The rejection order was set aside as unsustainable for want of a well-explained decision. The matter was remanded to the Patent Office for a fresh decision, with a clear direction to provide an opportunity of hearing and decide within eight weeks. Patent Offices must give detailed, reasoned orders when rejecting or allowing claim amendments, especially under Section 59. Unsupported or unexplained refusals cannot stand. Andreas Gutzeit v. Controller General of Patents  (IPDPTA/7/2024)