Recently, in an appeal filed by the appellant, Karan Rathore, the Delhi High Court overturned an order passed by the Trade Marks Registry (“Registry”) dismissing an opposition filed by the appellant against an application filed by the respondent, Shivam Rathore. The appellant is the registered owner of the mark JBR Device, which covers motor parts in Class 12. In July 2020, the appellant’s predecessor-in-interest formally authorized the respondent to use the appellant’s mark for selling goods on e-commerce websites. Subsequently, the appellant discovered that the respondent had filed the impugned application to register the word mark JBR, covering car covers, bike covers, and vehicle covers in Class 12. The appellant filed an opposition against the impugned application. The Registry, subsequently, passed an order dismissing the opposition. The appellant had, in the appeal, argued that his mark was coined and adopted in the year 2000 by his predecessor-in-interest, and was validly assigned to the appellant in May 2023. The appellant further argued that the impugned mark prominently incorporates his mark, which has been in use long before the adoption of the impugned mark. The appellant argued that the Registry erroneously passed the order ruling that the rival goods are different. The respondent submitted that the appellant has the exclusive right to use his mark but cannot claim exclusivity over the term ‘JBR’. The respondent further argued that the rival goods are different, and submitted that if a proprietor deals with only one or some of the goods under a trade mark and has no bona fide intention to trade in or manufacture other goods falling under the same class, such registration needs to be rectified by confining it to the specific goods. The court observed that it is a matter of record that the appellant’s mark has been in use since the year 2000 and further added that on a comparison of the rival marks, it can be clearly seen that the impugned mark incorporates the prominent feature of the appellant’s mark. Regarding the question of similarity between the rival goods, the court held that it is a well-established principle in law that an owner of a mark is always entitled to expand its goods and services, as a natural consequence in expansion of its business. Further, the court held that, when the rival goods (automobile motor parts v. car covers, bike covers, and vehicle covers) are perceived from commercial and business point of view, there could be confusion in the minds of the purchasing public that the rival goods stem from the same trade source. Karan Rathore vs. Registrar Of Trade Marks & Anr. [C.A.(COMM.IPD-TM) 23/2024 & I.A. 9027/2024], pronounced on January 17, 2026 Read the judgement copy here.
CANVA IS SWEATING, HERE’S WHY?
The Delhi High Court’s Division Bench has now pronounced its decision in Canva Pty Ltd & Ors v. RxPrism Health Systems Pvt Ltd & Anr, a significant moment for patent enforcement in the Indian SaaS and tech ecosystem, it is a wake-up call for both SaaS startups and IP practitioners navigating India’s evolving software-patent landscape. RxPrism, holder of Indian Patent IN 360726 for a system and method for creating and sharing interactive content through a layered architecture (background media, PiP overlay, and a CTA or interaction layer), had earlier secured an interim injunction from the Single Judge against Canva’s “Present & Record” feature. Canva challenged this order in appeal. The Division Bench has: The Court analysis in detailed technical claim construction, examined prior art, patented methods and expert evidence, and reiterated that even limited infringing use can distort market expectations and licensing opportunities. In other words, low usage numbers do not dilute the patentee’s right to effective interim protection. This signals a maturing judicial approach where backend architecture, data flow, and functional equivalence are central to infringement assessment. Most importantly, the ruling underscores that software-enabled inventions are enforceable in India when tied to demonstrable technical effects, and that Indian courts are prepared to engage with the complexity of modern digital systems. It will be interesting to see how this order shapes the way global SaaS companies localise and roll out features for India in an active patent landscape where enforcement is increasingly real. [Canva PTY Ltd. & Ors. V. RxPrism Health Systems Pvt. Ltd. & Anr. – FAO(OS) (COMM) 211/2023, CM APPLs. 49322/2023, 49325/2023, 63761/2023 & 63762/2023] Read the judgement copy here.
Delhi High Court Upholds ‘REKIN-SP’ Registration; Dismisses Cancellation Petition Under Section 57
Recently, the Hon’ble Delhi High Court refused to cancel the registered trademark, REKIN-SP, of Rekin Pharma Private Limited (“Respondent”) in a cancellation petition filed by Rexcin Pharmaceuticals Private Limited (“Petitioner”). The Petitioner had filed the petition under Section 57 of the Trade Marks Act, 1999 (the “Act”), seeking removal of the Respondent’s registration for the mark, REKIN-SP in Class 5, on the grounds of prior rights and deceptive similarity of the rival marks. It was the Petitioner’s case that it had adopted the mark REXCIN in December 2003 in relation to pharmaceutical goods and has used the mark in relation to such goods since then. The Respondent, on the other hand, was the registered proprietor of the word mark REKIN-SP in Class 5, since May 2017. The Petitioner contended that the mark REKIN-SP was deceptively similar to REXCIN and its registration would cause confusion and dilute the Petitioner’s goodwill. On the other hand, the Respondent argued that the mark REKIN is dissimilar to the Petitioner’s mark and also contended that the Petitioner has no use of its mark in relation to Class 5 goods. From the evidence submitted, the court noted that the Petitioner is only using its trade name, Rexcin Pharmaceuticals Private Limited, on product packaging and the invoices fail to show use of the word REXCIN as a trademark by the Petitioner for pharmaceutical products. It was the court’s opinion that the nature of business carried out by the Petitioner was of trading in the pharmaceutical products, which fall in Class 35. As per the court, such use of the trade name would not constitute use as a trademark for sale of goods under the Act. Here, the court clarified that, as per Section 29(5) of the Act, it entails infringement by use of a registered trademark as a trade name and does not convert use of a trade name into trademark by the proprietor itself. In view of the above, the court held that the question of similarity or deceptive similarity of the marks does not arise for consideration. Accordingly, the court dismissed the petition and upheld the validity of the Respondent’s registered trademark REKIN-SP. On the same grounds, the court also refused to grant interim injunction to the Petitioner. Rexcin Pharmaceuticals P Ltd v. Rekin Pharma P Ltd & Anr. [C.O. (COMM.IPD-TM)-111/2023], pronounced on January 27, 2026. Read the judgment here
Delhi High Court Allows Rectification Petition, Orders Deletion of “ARUN” from “AiC ARUN” for Identical Goods
Recently, the Delhi High Court allowed a trademark rectification petition filed by Satya Paul (“Petitioner”), the proprietor of the trademark ARUN, and directed the rectification of the trademark “AiC ARUN” registered in favour of Alka Industrial Corporation (“Respondent”) by ordering deletion of the word “ARUN” from the trademark. The Petitioner claimed to have adopted the trademark ARUN in 1962 for sewing machines and related parts. The Petitioner relied on multiple registrations obtained from 1976. He also produced extensive material demonstrating long, uninterrupted use, substantial advertising, issuance of caution notices, steady growth in sales figures and successful enforcement actions, to establish the goodwill of the trademark ARUN. As per the Petitioner, the Respondent had wrongfully obtained a registration for AiC ARUN in 2007, on and in relation to identical goods, i.e., sewing machines, in order to exploit the goodwill associated with its trademark ARUN. The Respondent argued that the term ARUN was a common and generic name, and that the prefix AiC created sufficient distinction. It also contended that since the Petitioner had failed to oppose the application at the advertisement stage, it is estopped from challenging the registration granted for the AiC ARUN trademark. The Court rejected the Respondent’s contentions, and held that it was undisputable that the trademark AiC ARUN was granted registration much later than the Petitioner. It also noted that that the Respondent had not produced any evidence to show that the term ARUN was common to the trade, while the Petitioner had placed substantial material demonstrating exclusivity, continuous use, and wide recognition. The Court held that since the dominant element of both trademarks was ARUN, the addition of the prefix “AiC” failed to dispel the likelihood of confusion, especially given the identical goods and overlapping trade channels and consumers. The Court also clarified that failure to file an opposition does not bar a party from seeking rectification of a trademark, as the statutory scheme preserves the right to challenge invalid registrations. Accordingly, the Court directed the deletion of the term ARUN from “AiC ARUN” and also permitted the Respondent to continue using the term “AiC” with any term which is distinct from the Petitioner’s ARUN trademark. Satya Paul v Alka Industries Corp [C.O. (COMM.IPD-TM) 651/2022], judgment dated February 9, 2026 Copy of the judgment can be accessed at:
Delhi High Court Sends a Clear Message on Divisional Patents: Timing Is Everything
The Delhi High Court’s ruling in Yangtze Memory Technologie Co. Ltd. v. Union of India & Anr. delivers a sharp procedural reminder for patent applicants: the right to file a divisional application ends the moment the parent patent is granted. The Court holds? Interpreting Section 16(1) of the Patents Act, 1970, the Court reaffirmed that a divisional application may be filed only “at any time before the grant of the patent.” Once the patent is granted, the window closes – conclusively. The judgment clarifies the strict procedural boundaries governing divisional applications under Indian patent law and signals a heightened emphasis on applicant responsibility during prosecution. Applicant’s Procedural Burden: The applicant sought to file a divisional application five days after the parent patent had already been granted, relying on an earlier conditional submission stating that it would be willing to file a divisional application if unity of invention objections were sustained. The statutory responsibility to seek division under Section 16(1) rests exclusively with the applicant. The right to file a divisional must be affirmatively exercised prior to grant; it cannot be presumed, inferred, or preserved through conditional statements. No Corresponding Duty on the Controller: The Court rejected this position, firmly holding that the onus to file a divisional application rest squarely on the applicant. While the statutory scheme permits divisional filings either voluntarily or pursuant to a unity objection raised by the Controller, the Court clarified that the procedural framework does not impose any obligation on the Controller to keep the prosecution window open or defer grant merely because an applicant expresses a prospective or contingent intention to file a divisional application. Binding Effect of Prosecution Conduct: Notably, the ruling also echoes the principle of prosecution history estoppel. The applicant had successfully argued that its claims constituted a single inventive concept in order to secure grant of the parent patent. Having obtained that benefit, the applicant’s subsequent attempt to file a divisional application was viewed as impermissible. The Court characterised this conduct as a “conscious election,” reiterating that parties cannot approbate and reprobate during patent prosecution. Beyond its immediate facts, the judgment delivers a clear lesson; Divisional applications are not fallback safety nets. They must be filed proactively during prosecution-not reactively after grant. Conditional statements or post-grant reconsideration cannot revive statutory rights. For patent applicants and IP strategists, this judgment underscores a simple but critical principle: divisional strategy must be timely, deliberate, and aligned with prosecution positions from the outset. Yangtze Memory Technologie Co. Ltd. v Union of India & Anr. [W.P.(C)-IPD 10/2025], judgment dated February 3, 2026 Copy of the judgment can be accessed at:
Delhi High Court Flags Procedural Lapse, Orders Removal of Copyright for Imitative Artwork
Recently, the High Court of Delhi, directed the Registrar of Copyrights to remove the copyright registration obtained by Vijay Keshav Wagh (“Respondent”) for the artistic work titled “SHREE SAKSHAT” since it copied the TIGER beer logo owned by Heineken Asia Pacific Pte. Ltd. (“Petitioner”). It was the Petitioner’s case that the Respondent’s artistic work clearly incorporates the Petitioner’s identical artistic work of its mark TIGER. The Petitioner also claimed that mere addition of the letter V in the backdrop of TIGER, and the words ‘SHRI’ (in Hindi) on top and ‘SAKSHAT’ (in English) at the bottom of the letter V do not substantially change the character or nature of work. As such, the Respondent’s artistic work infringes the Petitioner’s original work which enjoys protection in India by virtue of the Berne Convention. On the other hand, the Respondent argued that no exclusive rights can be claimed on the TIGER logo since there are several brands who use the mark TIGER or its logo, and, therefore, the word TIGER and its logo are diluted. The court was of the opinion that the Petitioner’s TIGER logo has been entirely copied by the Respondent. In this regard, the court noted a procedural lapse by the Trade Marks Registry in adhering to the mandate of the Copyright Act and the Rules. The court observed that the Copyright Act requires the applicant to declare that no trademark application or registration exists for any mark that is deceptively similar to the artistic work. In addition, it also requires the Trade Marks Registry to issue a mandatory search certificate confirming that no conflicting marks exist on the register. The court observed that the mandatory requirement of the law was not effectively carried out. The mandatory search certificate issued by the Trade Marks Registry before the copyright registration did not include the Petitioner’s previously registered TIGER trade marks. This oversight prevented the Registrar of Copyrights from adequately assessing whether the work claimed by the Respondent was original or not. Accordingly, the court directed the Registrar of Copyrights to remove the Respondent’s artistic work from the register. Heineken Asia Pacific Pte. Ltd vs. Mr. Vijay Keshav Wagh and Ors. [CO(COMM.IPD-CR) 18/2023 & I.A. 23338/2023] Copy of the Judgment can be accessed at Facebook X-twitter Linkedin Link
When a Duck Neck Bottle Enters the Public Domain: Harpic vs Godrej case, A Wake-Up Call from the Calcutta High Court
The Calcutta High Court’s decision in Reckitt Benckiser v. Godrej gives an important reminder: a company cannot use branding law to keep a monopoly over a bottle shape after its design protection has run out. Reckitt Benckiser, known for its widely recognized Harpic toilet cleaner, had earlier secured design protection over its distinctive “duck neck” bottle. This design, functional and visually identifiable, enjoyed exclusivity for a limited statutory period. However, once the design registration expired, Godrej introduced its “Spic” toilet cleaner in a bottle featuring a similar bent-neck configuration. With no subsisting design rights, Reckitt turned to trademark and trade dress law, asserting rights over the overall “look and feel” of its product packaging. The High Court cancelled an earlier order that had stopped Godrej from using its bottle. It made three key points: Therefore, once the time‑limited protection for a bottle shape ends, competitors can use similar shapes, as long as they do not copy the total look of the product so closely that customers are misled about who is selling it. Copy of the Judgment can be accessed at Facebook X-twitter Linkedin