Intellectual Property Rights - July 2026

Delhi High Court Holds Justdial Presence Adequate to Invoke Territorial Jurisdiction in Trademark Proceedings

Summary

In Astral Ltd. v. M/s Astral Marketing Syndicate & Anr., CS (COMM) 294/2024, the Delhi High Court dismissed an application seeking rejection of the plaint for lack of territorial jurisdiction. The Court held that, at the stage of considering an objection under Order VII Rule 11 of the Code of Civil Procedure, the averments in the plaint must be accepted as true. It further observed that an interactive listing on a third-party platform such as Justdial, through which consumers can access product catalogues, initiate enquiries, and contact the Defendant, is sufficient to prima facie confer territorial jurisdiction in an internet-based trademark dispute. The Court also held that the Plaintiff’s subordinate office in Delhi constituted an additional basis for invoking the Court’s jurisdiction under Section 134 of the Trade Marks Act, 1999.

Facts of the Case

The Plaintiff, Astral Ltd., instituted a suit for trademark infringement and passing off against M/s Astral Marketing Syndicate and another in relation to the Defendants’ use of the mark “ASTRAL”. The Plaintiff asserted that the Defendants were advertising and offering their products through an interactive listing on the Justdial platform, which was accessible to customers across India, including Delhi. According to the Plaintiff, consumers in Delhi could access the Defendants’ catalogue, communicate with them through the platform, and place enquiries or orders, thereby giving rise to a part of the cause of action within the territorial jurisdiction of the Delhi High Court.

The Defendants filed an application under Order VII Rule 11 of the Code of Civil Procedure seeking rejection of the plaint on the ground that the Delhi High Court lacked territorial jurisdiction. They contended that both parties had their principal places of business in Ahmedabad, that the Defendants carried on business exclusively from Ahmedabad, and that no actual sale or commercial transaction involving the alleged infringing goods had taken place in Delhi. According to the Defendants, the mere presence of a Just-dial advertisement or directory listing was insufficient to confer jurisdiction.

The Plaintiff opposed the application, submitting that the Justdial listing was interactive in nature and enabled customers in Delhi to access the Defendants’ products, initiate communications and place enquiries. The Plaintiff also relied upon the existence of its subordinate office in Delhi to invoke the jurisdiction of the Court under Section 134 of the Trade Marks Act read with Section 20 of the Code of Civil Procedure.

Issue before the Court

Whether the Delhi High Court possessed territorial jurisdiction to entertain the trademark infringement and passing off suit on the basis of the Defendants’ interactive Justdial listing accessible in Delhi and the Plaintiff’s subordinate office in Delhi, despite both parties having their principal places of business in Ahmedabad.

Findings of the Court

The Court reiterated that while considering an application challenging territorial jurisdiction at the threshold stage, the averments contained in the plaint must be accepted as true under the demurrer principle. The Plaintiff was therefore not required to establish its jurisdictional assertions through evidence at this preliminary stage.

The Court observed that, in trademark infringement and passing off actions, the cause of action arises where the alleged confusion or deception occurs or where the Plaintiff suffers injury. Referring to its earlier decisions in Sun Pharmaceutical Industries Ltd. v. Artura Pharmaceuticals (P) Ltd., Ravinder Singh v. Regoshin Healthcare

(P) Ltd., and Tata Sons P. Ltd. v. Hakunamatata Tata Founders, the Court held that an interactive third-party platform such as Justdial may confer territorial jurisdiction where it enables consumers to access product information, download catalogues, initiate chats or enquiries, and contact the Defendant for commercial purposes.

The Court found that the Plaintiff had specifically pleaded that the Defendants’ products were advertised and promoted through an interactive Justdial listing accessible to consumers in Delhi. The listing enabled prospective customers to view the product catalogue, communicate with the Defendants and submit enquiries, thereby facilitating commercial transactions. At the preliminary stage, these pleadings were sufficient to establish that part of the cause of action had arisen within the territorial jurisdiction of the Delhi High Court.

The Court further held that the Plaintiff’s subordinate office in Delhi provided an independent basis for invoking jurisdiction under Section 134 of the Trade Marks Act. Relying upon its earlier decision in Astral Ltd. v. Ajay Enterprises, the Court clarified that where part of the cause of action arises both at the place of the Plaintiff’s principal office and at the place of its subordinate office, the Plaintiff may institute the suit before either court. The Court also rejected the Defendants’ contention that the Plaintiff’s failure to expressly invoke Section 134 in the plaint defeated jurisdiction, observing that the omission to cite a statutory provision does not extinguish jurisdiction that otherwise exists in law.

Held

The Delhi High Court dismissed the Defendants’ application under Order VII Rule 11 of the Code of Civil Procedure. It held that the plaint disclosed sufficient facts to prima facie establish territorial jurisdiction, having regard to the Defendants’ interactive Justdial listing accessible in Delhi and the Plaintiff’s subordinate office within the territorial jurisdiction of the Court. However, the Court clarified that the Defendants remained at liberty to raise the issue of territorial jurisdiction during trial, where it would be decided on the basis of evidence.

Conclusion

The judgment reinforces the evolving principles governing territorial jurisdiction in internet-based trademark disputes by recognising that interactive third-party platforms such as Justdial may constitute a sufficient nexus with a forum where consumers can access product information and initiate commercial interactions. The decision also reiterates that jurisdictional objections under Order VII Rule 11 are to be determined on the basis of the pleadings alone and that the existence of a subordinate office, coupled with a part of the cause of action arising within the forum, enables a trademark proprietor to invoke jurisdiction under Section 134 of the Trade Marks Act. The ruling reflects the Delhi High Court’s continued liberal approach towards protecting trade-mark owners in the context of online commercial activity.

Madras High Court Clarifies the Scope of Contractual Permission in the “Beardsell” Corporate Name Dispute

 Summary

In Beardsell Polymers Pvt. Ltd. & Ors. v. Beardsell Limited, Original Side Appeal (Commercial Appellate Division) No. 128 of 2022, the Division Bench of the Madras High Court upheld a decree restraining Beardsell Polymers Pvt. Ltd., Beardsell Equipments Pvt. Ltd. and their promoters from using the corporate name “Beardsell” for their businesses. The Court held that the Memorandum of Understanding (MoU) executed between the parties in 2003 permitted the incorporation of only one company, namely Beardsell Eastern Pvt. Ltd., to carry on the transferred EPS business. The subsequent incorporation of additional companies using the “Beardsell” name exceeded the scope of the contractual permission and amounted to passing off. The Court further clarified that while delay may amount to laches, it does not, by itself, constitute acquiescence.

Facts of the Case

The Respondent, Beardsell Limited, has been engaged in the manufacture and sale of industrial products, including expanded polystyrene (EPS), insulation products and prefabricated structures. The Respondent claimed to have adopted the corporate name “Mettur Beardsell Ltd.” in 1969 and subsequently adopted the corporate name “Beardsell Limited” in 1983. It claimed extensive goodwill and reputation in the mark “Beardsell”.

In 2003, the Respondent entered into a MoU with the fourth Appellant, Bhagawan Das Mohta, for the sale of its EPS business in the Eastern region of India. Under Clause 14 of the MoU, the Respondent agreed to issue a no objection certificate to facilitate the incorporation of a new company through which the transferred business would be carried on. Pursuant thereto, the Respondent issued a no-objection certificate permitting the incorporation of Beardsell Eastern Pvt. Ltd., the third Appellant.

Subsequently, the fourth Appellant incorporated two additional companies, namely Beardsell Polymers Pvt. Ltd. and Beardsell Equipments Pvt. Ltd., using the “Beardsell” name.

The Respondent contended that these companies had been incorporated without its consent and that their use of the “Beardsell” corporate name was likely to mislead consumers into believing that they were associated with the Respondent.

Accordingly, the Respondent instituted a suit for passing off, permanent injunction, delivery up, rendition of accounts and damages.

The learned Single Judge partly decreed the suit by restraining all Defendants except Beardsell Eastern Pvt. Ltd. from using the “Beardsell” corporate name and directed the destruction of infringing materials after a transition period of 120 days. The claims for damages and rendition of accounts were declined. Aggrieved by the decree, the Defendants preferred an intra-court appeal before the Division Bench.

Issue before the Court

Whether the 2003 Memorandum of Understanding and the no-objection certificate authorised the Appellants to incorporate multiple companies using the corporate name “Beardsell”, and whether the Respondent’s delay in instituting proceedings amounted to acquiescence barring a passing off action.

Findings of the Court

The Division Bench held that the rights of the parties were governed primarily by the terms of the 2003 Memorandum of Understanding. On a plain reading of Clause 14, the Court found that the agreement contemplated the incorporation of only one new company to carry on the transferred EPS business. This intention was reflected in the language of the agreement, which consistently referred to “a new company” in the singular. The Court held that the MoU could not be interpreted to permit the purchaser to establish multiple companies using the “Beardsell” name.

The Court rejected the Appellants’ contention that the transfer of goodwill and the issuance of the no-objection certificate conferred unrestricted rights to use the “Beardsell” corporate name. It observed that while the Respondent had permitted the incorporation of Beardsell Eastern Pvt. Ltd., no similar permission had ever been granted for Beardsell Polymers Pvt. Ltd. or Beardsell Equipments Pvt. Ltd. Consequently, the incorporation and use of these additional entities exceeded the scope of the contractual arrangement between the parties and amounted to passing off.

On the issue of acquiescence, the Court distinguished mere delay from legal acquiescence. Although the Respondent became aware of the incorporation of the additional companies several years before filing the suit, it had objected to their incorporation before the Registrar of Companies and had never accepted or encouraged their continued use of the “Beardsell” name.

Therefore, while there was delay and laches in instituting the suit, the essential ingredients of acquiescence were absent. The Court reiterated that acquiescence requires positive conduct amounting to consent or encouragement, which was not established in the present case.

The Court also agreed with the Single Judge’s decision to refuse damages and rendition of accounts, observing that the delay in initiating proceedings justified denying those monetary reliefs, while still protecting the Respondent’s proprietary rights through injunctive relief.

Held

The Division Bench dismissed the appeal and affirmed the judgment of the Single Judge. It upheld the permanent injunction restraining Beardsell Polymers Pvt. Ltd., Beardsell Equipments Pvt. Ltd. and the other Appellants, except Beard-sell Eastern Pvt. Ltd., from using the corporate name “Beardsell” or any deceptively similar mark. The Court also upheld the direction requiring delivery and destruction of infringing materials after 120 days and affirmed the award of litigation costs of ₹2,00,000 in favour of the Respondent. The refusal to grant damages and rendition of accounts remained undisturbed.

Conclusion

The judgment highlights that contractual permission to use another’s trade name or corporate name must be interpreted strictly in accordance with the terms of the agreement and cannot be expanded by implication. It further reinforces the distinction between delay and acquiescence in passing off actions, reiterating that mere inaction or lapse of time does not extinguish proprietary rights unless accompanied by clear conduct indicating consent. The decision serves as an important reminder that goodwill transferred under a commercial arrangement does not automatically confer unrestricted rights to exploit another party’s corporate name beyond the express scope of the parties’ agreement.

Madras High Court Expounds the Scope of the Bolar Exception in Patent Infringement Litigation

 Summary

In Novartis AG & Anr. v. Venkata Narayana Active Ingredients Pvt. Ltd., C.S. No. 282 of 2018, the Madras High Court held that the protection under Section 107A of the Patents Act, 1970 (the Bolar exception) is available only where the manufacture, use, sale, export or import of a patented invention is solely for purposes reasonably related to obtaining regulatory approval. The Court held that the burden of proving the applicability of Section 107A lies upon the party invoking the exception. Mere assertions that exports were for research and development were held to be insufficient in the absence of evidence demonstrating a genuine nexus with regulatory approval. Consequently, the Court held that the Defendant's manufacture and export of the patented Active Pharmaceutical Ingredient (API) infringed the Plaintiffs' patent.

Facts of the Case

The Plaintiffs, Novartis AG and Novartis Healthcare Pvt. Ltd., instituted a patent infringement suit against Venkata Narayana Active Ingredients Pvt. Ltd. alleging infringement of Indian Patent No. 212815 relating to Vildagliptin, an antidiabetic pharmaceutical compound. The Plaintiffs contended that the Defendant had manufactured and exported Vildagliptin API to purchasers in Egypt without authorisation during the subsistence of the patent, thereby infringing their exclusive rights under Section 48 of the Patents Act.

The Defendant admitted manufacturing and exporting the patented API but relied upon Section 107A of the Patents Act, contending that the exports were made solely for research and development purposes to enable regulatory approvals and therefore fell within the statutory Bolar exception. The Defendant also challenged the validity of the patent on several grounds, including alleged non-compliance with Section 8 of the Patents Act and lack of patentability under Section 3(d).

The Plaintiffs disputed these contentions, arguing that the exports were commercial in nature and that the Defendant had produced no evidence demonstrating that the Egyptian purchasers required the API for regulatory approval processes. The Plaintiffs further contended that the Defendant had failed to satisfy the requirements necessary to invoke Section 107A.

Issue before the Court

Whether the Defendant's manufacture and export of the patented Vildagliptin API fell within the protection afforded by Section 107A of the Patents Act, 1970, or constituted infringement of the Plaintiffs' patent.

Findings of the Court

The Court undertook an extensive examination of the legislative history of Section 107A, its origin in the Bolar exception recognised internationally, the TRIPS Agreement, and the legislative intent underlying its incorporation into the Patents Act. It held that Section 107A was enacted to facilitate the timely availability of generic products immediately upon the expiry of patent protection by permitting limited use of patented inventions for obtaining regulatory approvals.

The Court observed that Section 107A is distinct from the research exemption contained in Section 47 of the Patents Act. While Section 47 permits experimental and research use, Section 107A is specifically directed towards activities undertaken for obtaining regulatory approval. The Court identified two essential requirements for invoking Section 107A: (i) the sole purpose of the impugned acts must be compliance with regulatory requirements; and (ii) such acts must be reasonably related to obtaining regulatory approval.

Departing from certain observations of the Delhi High Court in Bayer Corporation v. Union of India, the Court held that Section 107A operates as an exception to patent infringement and, consequently, the burden of establishing its applicability lies on the Defendant invoking the provision. The Court held that a Defendant cannot merely rely upon invoices describing goods as supplied "for research and development purposes"; it must adduce credible evidence demonstrating that the manufacture or export was genuinely undertaken to facilitate regulatory approval. Where exports are made to third-party entities abroad, the evidence should ordinarily establish that the overseas recipient required the patented product for obtaining regulatory approval, such as regulatory requests, documentation, or other supporting material linking the supply to the approval process.

Applying these principles, the Court found that the Defendant had failed to prove that the Egyptian purchasers required the API for regulatory approval or that the exports were reasonably connected with such regulatory purposes. The evidence showed only that the invoices described the supplies as being for research and development, which by itself was insufficient to satisfy the requirements of Section 107A. Accordingly, the Defendant failed to discharge the burden necessary to invoke the statutory exception.

The Court also rejected the Defendant's challenge under Section 8 of the Patents Act, holding that the statutory obligation extends only to disclosure of corresponding foreign patent applications and not prior art generally. The Defendant failed to establish any actionable violation of Section 8. The Court further rejected the challenge under Section 3(d), holding that the Defendant had failed to establish that the suit patent lacked patentability on that ground.

Held

The Madras High Court held that the Defendant's manufacture and export of Vildagliptin API did not fall within the protection of Section 107A of the Patents Act because the Defendant failed to establish that the impugned activities were solely and reasonably related to obtaining regulatory approvals. The Defendant's manufacture and export of the patented API therefore constituted infringement of the Plaintiffs' patent. The suit was accordingly decreed in favour of the Plaintiffs.

Conclusion

The judgment is a significant pronouncement on the scope of the Bolar exception under Indian patent law. It clarifies that Section 107A is a narrowly construed statutory exception intended exclusively to facilitate regulatory approvals and not a general exemption for research or commercial exports. The decision places the evidentiary burden upon the party invoking the exception and requires concrete proof demonstrating a genuine regulatory purpose behind the impugned activities. By distinguishing regulatory approval activities from ordinary research and commercial transactions, the ruling provides important guidance for pharmaceutical manufacturers seeking to rely upon Section 107A while reinforcing the balance between patent protection and the timely entry of generic medicines into the market.

Delhi High Court Grants Interim Relief in the “GODFATHER” Whisky Trademark Dispute

Summary

In Devans Modern Breweries Ltd. v. Cartel Bros. Pvt. Ltd. & Anr., CS(COMM) 346 of 2026, the Delhi High Court granted an interim injunction restraining the Defendants from using the mark “GODFATHER” as part of their whisky brand, including the mark “THE GLENWALK GODFATHER’S BY SANJAY DUTT.” The Court held that the Plaintiff had established a strong prima facie case of trademark infringement. It found that beer and whisky are allied and cognate goods, that the Defendants had adopted the essential feature of the Plaintiff’s registered trademark

“GODFATHER”, and that merely incorporating the mark within a composite label did not avoid infringement. The Court further observed that the Defendants’ adoption prima facie cast doubt on their bona fides, particularly as they were aware of the Plaintiff’s prior registrations.

Facts of the Case

The Plaintiff, Devans Modern Breweries Ltd., is the registered proprietor of the trademark “GODFATHER”, which has been used extensively in relation to beer since 1984 and is also registered in Class 33 for alcoholic beverages. The Plaintiff claimed that the mark had acquired substantial goodwill and reputation through extensive sales, advertising, and longstanding use.

The Defendants proposed to market Scotch whisky under the marks “THE GODFATHER” and subsequently “THE GLENWALK GODFATHER’S BY SANJAY DUTT”. The Plaintiff alleged that the Defendants had deliberately adopted the dominant feature of its well known trademark in order to ride upon its reputation and create an association with the Plaintiff’s products.

The Defendants opposed the application for interim injunction by contending that the impugned mark was a composite label in which “THE GLENWALK” and “BY SANJAY DUTT” were the distinguishing source identifiers. They further argued that the Plaintiff’s principal business was beer, whereas the Defendants dealt in whisky, and therefore there was no likelihood of confusion.

Issue before the Court

Whether the Defendants’ use of the marks “THE GODFATHER” and “THE GLENWALK GODFATHER’S BY SANJAY DUTT” in relation to whisky infringed and diluted the Plaintiff’s registered trademark “GODFATHER”, notwithstanding that the impugned mark formed part of a composite label and the goods involved were different alcoholic beverages.

Findings of the Court                                         

The Court held that the Plaintiff had established a strong prima facie case for the grant of an interim injunction.

The Court rejected the Defendants’ contention that beer and whisky were distinct goods incapable of causing confusion. It observed that both products are alcoholic beverages sold through common trade channels, liquor outlets, bars and restaurants, and are regulated under the same statutory framework. The relevant inquiry was not whether consumers would mistake beer for whisky, but whether the goods were allied and cognate in nature. Applying this test, the Court held that beer and whisky were sufficiently connected for the purposes of trademark protection.

The Court further held that the Defendants could not rely upon the anti-dissection rule merely because the impugned mark formed part of a composite label. The Plaintiff owned a registered word mark “GODFATHER”, and the word “GODFATHER” continued to remain the essential, dominant and memorable feature of both the Defendants’ original and revised labels. The addition of expressions such as “THE GLENWALK”, “BY SANJAY DUTT”, stylisation, or changes in font size did not materially alter the overall commercial impression created by the impugned mark.

Relying upon the principles governing comparison of trademarks, the Court held that although marks must be considered as a whole, the essential feature doctrine remained relevant as an analytical aid in determining deceptive similarity. Even on a holistic comparison, the dominant impression conveyed by the Defendants’ mark continued to be the word “GODFATHER”, resulting in a likelihood of association with the Plaintiff’s well-established brand.

The Court also noted that the Defendants had applied to register “THE GODFATHER” on a proposed to be used basis and that the Trade strations during examination. Despite being aware of the Plaintiff’s rights, the Defendants persisted in adopting the impugned mark. This conduct prima facie cast serious doubt on the Defendants’ bona fides and supported the Plaintiff’s allegation that the impugned adoption was not bona fide.

The Court further held that the Plaintiff had, prima facie, established a case under Section 29(4) of the Trade Marks Act, 1999. Given the Plaintiff’s extensive reputation in the “GODFATHER” mark, the Defendants’ use was likely to take unfair advantage of, or be detrimental to, the distinctive character and reputation of the Plaintiff’s trademark, notwithstanding that the competing products belonged to different categories of alcoholic beverages.

Held

The Delhi High Court granted an interim injunction restraining the Defendants from using the marks “GODFATHER”, “GODFATHER’S”, “THE GODFATHER”, “THE GLENWALK GODFATHER’S BY SANJAY DUTT”, or any other

mark incorporating the words “GODFATHER” or “GODFATHER’S” in relation to whisky during the pendency of the suit. The Court held that the Plaintiff had established a prima facie case of trademark infringement and that the balance of convenience and likelihood of irreparable injury favoured the grant of interim relief.

Conclusion

The judgment reiterates that beer and whisky constitute allied and cognate goods for the purposes of trademark law and that the anti-dissection rule cannot be invoked to justify appropriation of the essential feature of another’s registered word mark. It reinforces the principle that incorporation of a registered trademark within a composite label will not avoid infringement where the dominant commercial impression continues to be created by the Plaintiff’s mark. The decision also highlights that prior knowledge of an existing registration is an important factor in assessing the bona fides of adoption and demonstrates the Delhi High Court’s continued willingness to protect reputed trademarks against dilution and unfair commercial exploitation across related categories of goods.

Delhi District Court Clarifies that Subsequent Alleged Infringing Products Must Be Addressed in Execution, Not Through a Fresh Suit

Summary

In Kent RO Systems Ltd. v. A N Polymers Pvt. Ltd., CS No. 39 of 2019, the District Court, Patiala House Courts, New Delhi held that a fresh design infringement suit was not maintainable where the Plaintiff had already obtained an injunction decree against the Defendant restraining infringement of the same registered design. The Court held that merely marketing the product complained of under a different name did not create a fresh cause of action. It further held that any subsequent violation of the injunction decree must be addressed through execution proceedings under Section 47 and Order XXI Rule 32 of the Code of Civil Procedure, 1908, and not by instituting a fresh suit. Accordingly, the suit was dismissed as being barred by res judicata read with Section 47 CPC.

Facts of the Case

The Plaintiff, Kent RO Systems Ltd., instituted a suit seeking permanent injunction, delivery up of infringing articles, rendition of accounts and other consequential reliefs against A N Polymers Pvt. Ltd. alleging infringement of its registered Design No. 219309 in respect of water purifiers. The Plaintiff alleged that the Defendant was manufacturing and selling water purifiers under the mark “AQUA LIV”, whose shape deceptively resembled the Plaintiff’s “KENT GRAND+” water purifier, thereby infringing the registered design.

The Defendant opposed the suit and raised a preliminary objection to its maintainability. It contended that the Plaintiff had previously instituted CS (Comm.) No. 900/2016 before the Delhi High Court against the same Defendant involving infringement of the very same registered design. The Delhi High Court had granted a permanent injunction restraining the Defendant from dealing in products infringing Design No. 219309 and had subsequently passed the final decree in respect of the remaining reliefs. According to the Defendant, the present suit was barred by the principles of res judicata and constituted an abuse of the judicial process.

The Plaintiff argued that the earlier proceedings related to a different product sold under the name “AQUA GRAND PLUS+”, whereas the present suit concerned a product marketed as “AQUA LIV”. It was further contended that the earlier judgment was delivered after institution of the present suit, the parties were not identical in both proceedings, and that, in any event, the reliefs of rendition of accounts and delivery up continued to survive independently.

Issue before the Court

Whether a fresh suit alleging infringement of the same registered design was maintainable despite an earlier decree permanently restraining the Defendant from infringing the Plaintiff’s registered design, or whether such suit was barred by res judicata and Section 47 of the Code of Civil Procedure.

Findings of the Court

The Court held that the substance of both proceedings was identical, namely, infringement of the Plaintiff’s registered Design No. 219309. It observed that the earlier decree passed by the Delhi High Court restrained the Defendant and all persons acting on its behalf from dealing in any product infringing the Plaintiff’s registered design. Consequently, merely alleging that the Defendant marketed the product under the name “AQUA LIV” instead of “AQUA GRAND PLUS+” did not give rise to a fresh cause of action where the allegation continued to relate to infringement of the same registered design. The distinction sought to be drawn by the Plain-tiff between the two product names was held to be artificial and incapable of creating a new leg-al dispute.

The Court rejected the Plaintiff’s contention that the parties in the two proceedings were different. It observed that the earlier injunction extended not only to the Defendant but also to its distributors, dealers, stockists, retailers, servants, agents and all persons claiming through or under it. Since the second Defendant in the present suit was admittedly a trader of the first Defendant, the requirement of identity of parties under Section 11 CPC stood satisfied.

The Court further rejected the argument that res judicata was inapplicable because the earlier decree had been passed after institution of the present suit. Referring to Explanation I to Section 11 CPC, it held that a “former suit” means a suit decided prior to the suit under consideration, irrespective of the date on which it was instituted. Accordingly, once the earlier suit had been finally decided before adjudication of the present proceedings, the statutory bar applied.

The Court also held that the Plaintiff’s proper remedy was to seek enforcement of the earlier injunction through execution proceedings. Under Section 47 CPC, all questions relating to execution, discharge or satisfaction of the decree must be determined by the executing court and cannot form the subject matter of a separate suit. The Court observed that the executing court possesses sufficient powers under Order XXI Rule 32 CPC to enforce injunction decrees, including attachment and sale of property where necessary. Permitting successive suits each time the Defendant adopted a different product name would render injunction decrees ineffective and encourage endless litigation.

Held

The District Court held that the present suit was barred by the principles of res judicata read with Section 47 of the Code of Civil Procedure. It held that the Plaintiff’s remedy lay in execution of the earlier injunction decree and not by instituting a fresh infringement suit based upon the same registered design merely because the Defendant marketed the product complained of under a different name. The preliminary issue was there-fore decided in favour of the Defendant, and the suit was held to be not maintainable.

Conclusion

The judgment reinforces that a permanent injunction restraining infringement of a registered design cannot be circumvented by simply changing the name under which the product complained of is marketed. Once a competent court has adjudicated the issue and granted a comprehensive injunction, subsequent allegations concerning continued infringement of the same registered design must ordinarily be addressed through execution proceedings under Section 47 and Order XXI Rule 32 CPC rather than through fresh litigation. The decision underscores the principles of finality of litigation, effective enforcement of injunction decrees and prevention of multiplicity of proceedings by applying res judicata in a practical and purposive manner.

https://ksandk.com/

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.