Delhi High Court Holds That Trademark Proprietor Cannot Claim Monopoly Over Entire Class of Goods

Summary

The Delhi High Court clarified that trademark protection extends only to the specific goods within the class for which the mark is registered, and a proprietor cannot claim exclusivity over all goods in that class merely because of a similar mark, particularly when not using the mark for those goods.

Introduction

This appeal challenges the judgment of the Patiala House District Court, which dismissed the Appellant's application for interim injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. The underlying suit seeks permanent injunction restraining the Respondent from using the trademark "PRUEASE" (Impugned Mark) on the ground that it is deceptively similar to the Appellant's trademark "PRO-EASE" (Subject Mark). Both marks are registered in Class 5 of the Trade Marks Registry, but are used for entirely different product categories within that class.

Background and Facts

The Appellant conceived and adopted the Subject Mark "PRO-EASE" in 2012 for use in relation to sanitary napkins, sanitary towels, sanitary pads, menstruation pads, menstruation briefs, sanitary panties, panty liners for hygienic or menstrual purposes, deodorizing agents and refresheners, panty shields for hygienic or menstrual purposes, menstruation tampons, sanitary wipes, paper wipes impregnated with sanitizers, paper wipes impregnated with disinfectants, and allied and other cognate goods. The Respondents, on the other hand, adopted the Impugned Mark "PRUEASE" in 2017 for medicinal and pharmaceutical preparations specifically intended for treating constipation, containing the active pharmaceutical ingredient Prucalopride.

Appellant's Contentions

The Appellant contended that the learned District Judge failed to appreciate that the Appellant is entitled to extend the use of the Subject Mark to allied and cognate goods, including pharmaceuticals for treating menstrual cramps and other related conditions. The Appellant argued that the Respondents cannot be permitted to adopt a deceptively similar mark merely on the basis that the Appellant is not presently using its trademark for those particular pharmaceutical goods. The Appellant further submitted that as the registered proprietor of the Subject Mark in Class 5, it is entitled to protection against the Respondents' unauthorized use, and that the Respondents cannot claim proprietorship over a similar mark within the same class.

Respondent's Contentions

The Respondents submitted that they independently conceived and adopted the Impugned Mark for medicinal and pharmaceutical preparations and have been continuously using it since 2017 without interruption. They contended that the element "PRU" in their mark is derived from the active pharmaceutical ingredient Prucalopride, while "Ease" denotes ease or relief from constipation. According to the Respondents, infringement requires a likelihood of confusion among the public, which is neither probable nor possible in the present case, as no reasonable consumer would confuse a sanitary pad with a pharmaceutical product intended for constipation relief.

The Respondents also argued that the Appellant is not entitled to discretionary relief due to suppression of material facts, including the Respondents' user affidavit demonstrating use of the Impugned Mark since 2017. They further submitted that the Appellant concealed its own earlier position in its reply to the Examination Report and in the counter-statement before the Registry, wherein it had expressly stated that sanitary napkins, pharmaceutical goods, and ayurvedic medicines are distinct, and that concurrent use of the marks would not cause confusion. The Respondents contended that the Appellant is estopped from approbating and reprobating and cannot now take a contradictory stand.

The Respondents emphasized that although the parties' goods fall under Class 5, they are entirely distinct and cannot be regarded as allied or cognate. The goods move through different trade channels, and there is no likelihood of confusion or even initial interest confusion due to their inherently different nature. They asserted that they have no intention of using the Impugned Mark for sanitary pads, napkins, or related goods, which is evident from their withdrawal of oppositions filed against the Appellant's applications for such goods. Additionally, the Respondents sought deletion of "hygiene and sanitary preparations" from the specification of goods in their own trademark application for the Impugned Mark, demonstrating their bona fides.

High Court's Analysis and Findings

The Delhi High Court observed that there is no dispute regarding the nature of the parties' respective goods. The Appellant uses the Subject Mark for sanitary napkins, sanitary towels, pads, and related feminine hygiene products, whereas the Respondents use the Impugned Mark for a pharmaceutical preparation intended to relieve constipation. The Court held that these goods are neither allied nor cognate. It agreed with the findings of the learned District Judge that the nature, purpose, trade channels, and consumer base of the respective goods are entirely distinct, leaving no likelihood of confusion arising from the concurrent use of the marks.

Key Legal Principle: No Monopoly Over Entire Class

The High Court emphasized a critical principle of trademark law: a trademark proprietor cannot claim monopoly over all goods within an entire class, particularly when the proprietor is not using the mark for certain goods falling within that class. This principle prevents trademark owners from warehousing rights over products they do not manufacture or sell, merely because those products fall within the same broad classification. The Court found that the Appellant's registration in Class 5 does not confer absolute rights over all pharmaceutical, sanitary, and health-related products within that class, but only extends to the specific goods for which the mark is actually used.

No Passing Off Established

The Court also found no case of passing off, noting that the packaging, presentation, and overall trade dress of the parties' products do not suggest any possibility of confusion. Consumers purchasing feminine hygiene products would not reasonably confuse them with constipation relief medication, given the entirely different purposes, purchasing contexts, and product characteristics.

Three-Fold Test for Interim Injunction

For the grant of an interim injunction, the Appellant was required to satisfy the three-fold test of: (i) establishing a prima facie case; (ii) demonstrating balance of convenience; and (iii) showing that irreparable harm would result if relief were denied. The Court held that the Appellant failed to establish a prima facie case. It further found that the balance of convenience favoured the Respondents, who had prima facie demonstrated continuous use of the Impugned Mark since 2017—nearly seven years before the filing of the suit.

Bona Fide Adoption and Industry Practice

The Respondents' adoption of the Impugned Mark was found to be bona fide and consistent with pharmaceutical industry practice, wherein parts of the chemical compound name are combined with additional descriptive elements to formulate a coined mark. In this case, the Respondents adopted "PRU" from the active ingredient Prucalopride and added "Ease" to indicate the relief provided by the medication. This method of trademark creation is widely recognized in pharmaceutical branding.

Irreparable Injury Not Established

With respect to irreparable injury, the Court held that the Appellant could always be compensated by damages should it ultimately succeed in the suit, and therefore no irreparable harm was established warranting the extraordinary remedy of interim injunction.

Significance

This judgment reinforces important limitations on the scope of trademark rights and clarifies that registration in a particular class does not grant blanket monopoly over all goods within that class. The decision emphasizes the importance of actual use, distinctiveness of goods, and likelihood of confusion in trademark infringement analysis. It protects legitimate competitors from overbroad trademark claims and ensures that trademark law serves its intended purpose of preventing consumer confusion rather than granting unjustified monopolies. The ruling also highlights the doctrine of estoppel, preventing parties from taking contradictory positions in different proceedings. This case will serve as valuable precedent in disputes involving similar marks used for different goods within the same class, particularly in the pharmaceutical and health products sectors. 

Supreme Court Formulates Two-Pronged Test to Determine Eligibility for Protection Under Designs Act

 

Summary

The Supreme Court of India developed a comprehensive two-pronged test to resolve complexities arising from Section 15(2) of the Copyright Act, providing clarity on whether a work qualifies for protection under the Designs Act and establishing standards for distinguishing artistic works from industrial designs.

Introduction

This appeal concerns a dispute regarding alleged infringement of intellectual property rights relating to the design and manufacture of internal components of Cryogenic Storage Tanks and Distribution Systems mounted on Trailers and Semi-Trailers used for efficient transportation of industrial gases, liquefied natural gas (LNG), and similar substances. On September 24, 2018, Respondent No. 1, Inox India Limited (Inox), filed Trademark Suit No. 3/2019 before the Commercial Court against the Appellants, Cryogas Equipment Private Limited (Cryogas) and LNG Express India Private Limited (LNG Express). Inox alleged that the Appellants infringed two categories of copyright: (i) engineering drawings of LNG Semi-trailers created by Inox (Proprietary Engineering Drawings), and (ii) written details, processes, descriptions, and narrations prepared by Inox employees in developing those drawings (Literary Works). Inox claimed these intellectual property materials were developed to address specific requirements for designing and manufacturing advanced LNG Semi-trailers suitable for Indian road conditions.

Arguments Advanced by the Appellants

The Appellants' counsel contended that LNG and Cryogenic Semi-trailers worldwide are designed in accordance with international standard-setting bodies, including the American Society of Mechanical Engineers (ASME) and the Pressure Equipment Directive (PED). Consequently, all industry participants, including the parties involved, comply with PED requirements and guidelines issued by the Ministry of Road Transport and Highways of India. The Appellants argued that the suit is barred under Section 15(2) of the Copyright Act, as Inox's Proprietary Engineering Drawings are capable of registration under the Designs Act. The Appellants submitted that Inox failed to disclose in its plaint the number of Semi-trailers manufactured through industrial processes. Instead, Inox employed strategic pleading by merely mentioning revenue of ₹122 crores—an attempt to avoid Section 15(2) implications. Given this revenue scale, it is reasonable to infer that Inox produced more than fifty Semi-trailers, thereby attracting the statutory bar under Section 15(2) of the Copyright Act.

Arguments Advanced by the Respondents

The Respondents' counsel refuted these assertions, submitting that the suit concerns two distinct copyright categories: Proprietary Engineering Drawings and Literary Work. Consequently, the reliefs sought are separate in nature, and each intellectual property claim must be evaluated independently, considering its specific attributes and legal implications. They argued that Section 15(2) of the Copyright Act has no application because the Proprietary Engineering Drawings are not capable of registration under the Designs Act, and the Literary Work is not subject to the statutory bar under Section 15(2). The Respondents contended that the Commercial Court erred in treating the Literary Work—which includes details, processes, and descriptions—as merely ancillary to the Proprietary Engineering Drawings. This approach incorrectly presumes that all rights asserted in the plaint are inherently tied to engineering drawings. According to the Respondents, alleged infringement arising from misappropriation of confidential information constitutes a separate legal issue unaffected by Section 15(2). They further argued that the three intellectual property issues raised in the suit are distinct, a fact overlooked by the Commercial Court while allowing LNG Express's application under Order VII Rule 11 of the Code of Civil Procedure.

Supreme Court's Analytical Framework

To resolve this legal conundrum, the Supreme Court examined established jurisprudence and comparative legal frameworks, analyzing: (i) the approach adopted by Indian courts; (ii) factors considered by courts in the United States of America; and (iii) broader international principles illuminating the interplay between copyright and design protection. The Court held that the inquiry cannot proceed on the simplistic assumption that any work not qualifying as an 'artistic work' under the Copyright Act would automatically fall within protection of the Designs Act. Although protection under the Designs Act is of shorter duration than copyright, it is not granted by default and must satisfy specific statutory criteria.

Two-Pronged Test Formulated by the Supreme Court

The Court observed that Indian courts and courts abroad consistently apply the test of 'functional utility' to determine whether a work is eligible for design protection. The Court formulated a two-pronged test to address complexities arising from Section 15(2) of the Copyright Act and to determine whether a work qualifies for protection under the Designs Act:

First Prong: Examine whether the work is purely an 'artistic work' entitled to copyright protection, or whether it is a 'design' derived from an artistic work and subjected to an industrial process, as contemplated under Section 15(2).

Second Prong: If the work does not qualify for copyright protection, apply the test of 'functional utility' to ascertain its dominant purpose and determine whether it qualifies for registration under the Designs Act.

The Court emphasized that this inquiry must be case-specific, guided by statutory provisions, judicial precedents, and comparative legal principles, ensuring that rights under each regime serve their intended objectives without encroaching upon the other. This framework clarifies treatment of works situated at the intersection of copyright and design law, promoting consistency in application of intellectual property rights in India.

Distinction Between Section 15(1) and Section 15(2)

The Court further clarified that Section 15(1) of the Copyright Act applies where a design has been registered under the Designs Act, thereby barring any claim of copyright protection. In contrast, Section 15(2) requires substantive inquiry into whether the drawing in question falls within the ambit of the Designs Act. This necessarily means that a suit cannot be dismissed at the threshold under Order VII Rule 11(d) of the Code of Civil Procedure solely on the basis of the plaint. The central issue remains whether the Proprietary Engineering Drawings constitute 'artistic works' under Section 2(c) of the Copyright Act or fall within the definition of a 'design' under Section 2(d) of the Designs Act—an issue that warrants detailed examination.

Procedural Implications

The Court held that the issue of whether the original artistic work falls within the definition of a 'design' under the Designs Act cannot be determined at the stage of deciding an application under Order VII Rule 11 of the Code of Civil Procedure. At that stage, the court is confined to prima facie examination limited to assessing whether the plaint discloses a cause of action. Determining the true nature of 'Proprietary Engineering Drawings' involves a mixed question of law and fact, which cannot be resolved at a preliminary stage based on superficial or cursory reading of the plaint. Such determination requires full-fledged trial where both parties have opportunity to lead evidence.

Significance

This landmark judgment provides crucial clarity on the intersection between copyright and design law in India. The two-pronged test offers a structured analytical framework for courts, practitioners, and rights-holders to determine whether works qualify for protection under the Copyright Act or the Designs Act. By emphasizing functional utility analysis and requiring case-specific examination, the Supreme Court has ensured that intellectual property regimes operate harmoniously without overlap or conflict. The ruling reinforces that threshold dismissals under Order VII Rule 11 are inappropriate for complex questions involving mixed law and fact, particularly in intellectual property disputes where detailed evidentiary examination is necessary. This decision will significantly influence litigation strategy in copyright and design disputes, ensuring that substantive rights are not defeated by premature procedural determinations. The judgment establishes India's position on applying functional utility tests aligned with international best practices while maintaining fidelity to domestic statutory frameworks.

Madras High Court Affirms Patentability of Computer-Related Innovation Featuring Technical Contribution

 

Summary

The Madras High Court delivered a significant ruling overturning the Patent Office's refusal of a patent application for computer-related invention, clarifying that CRIs are patentable when they demonstrate technical contribution, even without novel hardware.

Introduction

On November 4, 2025, the Madras High Court, through Justice Senthilkumar Ramamoorthy, overturned the Patent Office's rejection of Ab Initio Technology LLC's patent application for "Graphic Representations of Data Relationship." The invention, filed in July 2010, presented a novel method for tracking and representing data lineage in complex data systems. After nearly a decade of examination and amendments, the Patent Office rejected it in July 2020 under Section 2(1)(j) for lacking novelty and inventive step, and under Section 3(k) as a "computer programme per se." The Court's intervention was sought to determine whether the invention constituted a patentable computer-related invention (CRI) with genuine technical effect, or merely excluded software. The ruling provides crucial clarity on interpreting CRIs, inventive step, technical contribution, and the boundaries of Section 3(k) in Indian patent law.

Arguments of the Appellant (Ab Initio Technology LLC)

Ab Initio contended that the Patent Office misunderstood the invention's technical scope. The invention introduced a distinctive mechanism for graphically representing data lineage—tracking how data moves, transforms, and interacts within multi-layered environments—which the cited prior art failed to disclose. The company emphasized that its invention delivered technical improvements: faster data query processing, reduced computation time, and enhanced accuracy in tracking data flows. These constituted a "technical effect" aligned with international jurisprudence (EPO and UK precedents) and the Indian Patent Office's own CRI Guidelines, which recognize CRIs as patentable when demonstrating technical contribution, even without novel hardware. Ab Initio argued that the Patent Office mechanically applied Section 3(k) without analyzing the invention's real-world technological impact. Section 3(k) excludes only pure algorithms devoid of application, not inventions using algorithms to deliver tangible, measurable technical results. The unique structure, architecture, and data-mapping logic were non-obvious to persons skilled in the art, satisfying the inventive step requirement under Section 2(1)(j). Ab Initio sought recognition of the invention as a patentable CRI and reversal of the refusal order.

Arguments of the Respondent (Patent Office)

The Patent Office defended its refusal, asserting the claims were fundamentally software executed through standard computing systems, constituting a computer programme per se. The core function—tracking and displaying data relationships—was an abstract computational method lacking novel hardware or technological transformation. Operating entirely within a computer, the invention fell squarely within Section 3(k)'s prohibitions against algorithms, computer programs per se, mathematical methods, and business methods. The Office maintained that Ab Initio's amendments failed to remedy objections because the underlying method remained software-based instructions implementable by any skilled programmer. The invention also lacked inventive step since prior art already disclosed the general concept of graphically representing data relationships. Any improvement was incidental to algorithmic implementation rather than true technical advancement. The refusal order complied with statutory requirements and sound technical reasoning, warranting no judicial interference.

Court's Judgment

The Madras High Court set aside the refusal order after examining the material, arguments, and statutory provisions, delivering detailed analysis on inventive step and CRI patentability. Addressing Section 2(1)(j) requirements (novelty, inventive step, industrial applicability), the Court noted the Patent Office selectively interpreted prior art without acknowledging Ab Initio's distinctive features. The prior art did not disclose the specific data lineage tracking methodology or the graphical representation mechanism capturing complex dependencies and transformations across systems. A person skilled in the art would not naturally derive these features from prior art, affirming inventive step. The invention introduced unique technical architecture enhancing query response speed and accuracy, constituting industrially applicable improvement.

Regarding Section 3(k), the Court provided important clarification on Indian CRI jurisprudence. Mere software involvement does not automatically disqualify patent protection. Section 3(k) excludes only purely abstract inventions consisting solely of computer programs or algorithms, not software-driven inventions achieving concrete technical effects or technical contributions. Ab Initio's invention offered such contribution by improving processing time, enabling efficient data lineage tracking, and providing sophisticated technical solutions to real-world problems. Citing global CRI patentability trends, the Court clarified that Indian law aligns with the principle that novel hardware is not prerequisite for patenting software-driven inventions. The Court stated that "patent applications in relation to a CRI, even de hors novel hardware or impact on the internal working thereof, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect." The Patent Office incorrectly applied Section 3(k); the refusal was reversed and the patent application directed to be allowed.

Supreme Court Declines to Interfere with Revival of Crocs Inc. USA's Passing Off Suits Against Indian Footwear Manufacturers

 

Summary

The Supreme Court refused to entertain petitions filed by Bata India and Liberty Shoes challenging the Delhi High Court's July 2025 judgment that restored Crocs Inc. USA's passing off suits against several Indian footwear manufacturers, holding that the trial court must independently consider the cases without being influenced by appellate observations.

Background

The dispute stems from Crocs Inc. USA's longstanding litigation before the Delhi High Court alleging that multiple Indian footwear companies—including Bata, Liberty, Relaxo, Action Shoes, Aqualite, and Bioworld Merchandising—copied the shape, configuration, and perforated design of its popular foam clogs. Crocs contended that these elements constitute its trade dress or shape trademark, and that the Indian manufacturers were misleading consumers and benefiting from Crocs' global reputation by producing substantially similar footwear designs.

February 2019 Single Judge Order

In February 2019, a single judge of the Delhi High Court dismissed all six passing off suits at the threshold, holding that Crocs could not maintain passing off actions for the same product configuration that was already protected as a registered design under the Designs Act. The single judge held that allowing passing off protection would effectively extend monopoly rights over features that are governed exclusively by the Designs Act, which provides a limited 15-year term of protection. The judge concluded that once a design is registered, it cannot simultaneously be protected through passing off claims, as this would circumvent statutory limitations and allow indefinite protection of functional or ornamental features.

July 2025 Division Bench Reversal

In July 2025, a Division Bench comprising Justices C Hari Shankar and Ajay Digpaul reversed the single judge's decision, allowing the suits to proceed on the ground that the threshold dismissal required reconsideration. The Division Bench held that the single judge's order was premature and that the substantive merits of Crocs' passing off claims, including the validity of its trade dress rights, consumer confusion, and goodwill associated with the clog design, warranted full trial adjudication. This reversal prompted Bata India and Liberty Shoes to seek relief from the Supreme Court through Special Leave Petitions (SLPs).

Liberty's Arguments Before the Supreme Court

In its petition, Liberty Shoes contended that the Division Bench incorrectly interpreted the Full Bench judgment in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., which established that once a design has been registered under the Designs Act, its protected features cannot concurrently receive passing off protection unless the claimant establishes "something more"—such as trade dress elements extending beyond the registered design itself. Liberty argued that permitting Crocs' passing off suits to proceed would impermissibly create a "dual monopoly," conferring indefinite trademark-style protection on design features that Parliament intended to protect only for a statutorily limited duration under the Designs Act. Liberty further relied on the Full Bench ruling in Mohan Lal v. Sona Paint & Hardwares, which distinguished designs from trademarks by clarifying that designs constitute integral features of goods themselves, whereas trademarks serve as indicators of commercial origin. Importantly, Liberty emphasized that upon expiration of design registration, the protected features enter the public domain and become available for use by competitors, and allowing subsequent passing off claims would frustrate this legislative intent.

Supreme Court's Decision

The Supreme Court Bench comprising Justices Sanjay Kumar and Alok Aradhe dismissed the Special Leave Petitions, observing that the Delhi High Court's Division Bench had merely revived the suits for adjudication by the trial court and had not granted Crocs any substantive relief or made final determinations on the merits of the passing off claims. The Court emphasized judicial restraint, stating: "We are not inclined to entertain this plea. The Delhi High Court has merely restored the suits for consideration by the trial court. We, however, make it clear that the trial court or the learned single judge shall consider the matters uninfluenced by any observations made by the division bench or by the dismissal of these SLPs. Question of law kept open."

Significance

The Supreme Court's refusal to interfere preserves the opportunity for full adjudication of the substantive legal questions surrounding the intersection of design registration and passing off protection. The ruling leaves open critical questions of law, including whether registered designs can simultaneously be protected under passing off principles, the proper application of the "something more" doctrine from Carlsberg, the scope of trade dress protection for functional product features, and the balance between statutory design monopolies and common law rights in trade dress. The trial court must now independently examine these complex issues, including whether Crocs' clog design has acquired secondary meaning extending beyond the registered design, whether consumer confusion exists, and whether the Indian manufacturers' products constitute actionable passing off. This case will have significant implications for the footwear industry and broader IP jurisprudence on the interplay between statutory and common law intellectual property rights in India, particularly concerning the doctrine of dual protection and the public domain consequences of design registration expiry.

India Registers Its First Olfactory (Smell) Trademark: A Historic Milestone in Non-Conventional Trademark Protection

 

Summary

The Indian Trade Marks Registry made history by accepting the country's first olfactory (smell) trademark - a rose-like floral fragrance infused into tyres by Sumitomo Rubber Industries - marking a paradigm shift in Indian trademark law by recognizing non-conventional intangible marks beyond traditional words, logos, shapes, colours, and sounds.

A Historic First for Indian Trademark Law

On November 21, 2025, the Indian Trade Marks Registry achieved a historic milestone by accepting India's first olfactory (smell) trademark: "a rose-like floral fragrance infused into tyres" filed by Sumitomo Rubber Industries. This landmark decision opens an entirely new dimension in Indian intellectual property law, recognizing that trademark protection extends beyond conventional sensory marks such as words, logos, shapes, colours, and even sounds, to encompass intangible non-conventional marks like scent. The acceptance of this olfactory mark represents a significant evolution in the Registry's interpretation of what constitutes a protectable trademark under the Trade Marks Act, 1999, and aligns India with a select group of jurisdictions worldwide that recognize smell as a valid indicator of commercial origin.

Appointment of Amicus Curiae

Recognizing that olfactory trademarks represented uncharted territory in Indian jurisprudence, the Trade Marks Registry appointed Pravin Anand, Advocate as amicus curiae to assist in determining the registrability of scent marks under Indian law. In his submissions, Mr. Anand opined that non-conventional marks such as scents are, in principle, capable of registration under the Trade Marks Act, 1999, provided they satisfy two fundamental statutory criteria: (i) graphic representation as required under Section 2(1)(zb) of the Act, and (ii) distinctiveness sufficient to function as indicators of commercial origin. This legal opinion provided the foundational framework for the Registry's substantive examination of Sumitomo's application.

Critical Evaluation: Graphical Representation Under Section 2(1)(zb)

The first and most formidable challenge in registering an olfactory trademark lies in satisfying the statutory requirement of "graphical representation" under Section 2(1)(zb) of the Trade Marks Act, 1999. Unlike visual or auditory marks that can be depicted through images, text, or musical notation, smells are inherently intangible and resist conventional modes of representation. To overcome this obstacle, Sumitomo Rubber Industries submitted a groundbreaking scientific model developed by researchers from the Indian Institute of Information Technology (IIIT) Allahabad. This model employs advanced sensory analysis techniques to map the "rose-like smell" in a seven-dimensional olfactory space, decomposing the scent into its constituent smell families: floral, fruity, woody, nutty, pungent, sweet, and minty. Each dimension represents the intensity or presence of a particular olfactory characteristic, creating a comprehensive sensory fingerprint of the fragrance.

The Registry meticulously evaluated whether this seven-dimensional representation satisfied the established legal standards for graphic representation, which require that any mark representation must be: clear, precise, self-contained, intelligible, objective, and durable. These criteria were established to ensure that third parties can understand the exact scope of the trademark proprietor's exclusive rights without ambiguity. The Registry concluded that Sumitomo's scientific model met all these requirements. The representation was clear and precise because it quantified specific olfactory characteristics; self-contained because it did not require reference to external samples that might degrade over time; intelligible because it could be understood by persons skilled in sensory analysis; objective because it was based on scientific measurement rather than subjective description; and durable because the mathematical model could be reproduced consistently over time without alteration. This rigorous analysis demonstrates the Registry's commitment to applying traditional trademark principles to novel categories of marks while ensuring legal certainty.

Critical Evaluation: Distinctiveness and Consumer Recognition

The second statutory requirement examined by the Registry was distinctiveness - the capacity of the scent to function as a source identifier distinguishing Sumitomo's tyres from those of competitors. Distinctiveness analysis requires determining whether consumers encountering the mark would perceive it as indicating commercial origin rather than as a functional or ornamental feature of the product. In this case, the Registry found that the rose-like floral fragrance possessed inherent distinctiveness by virtue of its arbitrary relationship to the goods in question. Tyres manufactured from rubber compounds typically emit a characteristic petrochemical odour arising from the vulcanization process and the synthetic materials used in tyre construction. A rose-like floral scent is completely incongruous with consumer expectations for tyre smell - roses and rubber do not naturally correlate in any functional or aesthetic sense.

This arbitrariness is a powerful indicator of distinctiveness in trademark law. The Registry reasoned that precisely because tyre rubber ordinarily smells like industrial rubber, the introduction of a pleasant floral fragrance would immediately stand out to consumers as unusual and memorable. This novelty enhances the scent's capacity to function as a trademark, as consumers are likely to associate the distinctive rose-like smell specifically with Sumitomo Rubber Industries rather than perceiving it as a generic characteristic of tyres generally. The Registry also considered whether the scent might be perceived as merely functional (e.g., masking unpleasant odours) or aesthetic (merely making the product more pleasant). While the fragrance does have these incidental effects, the Registry concluded that its primary significance to consumers would be as a distinctive identifier of source, particularly given Sumitomo's marketing and branding efforts associating the scent with its corporate identity.

Global Context and Comparative Analysis

India's acceptance of its first olfactory trademark places the country among a small but growing number of jurisdictions recognizing scent marks. Internationally, smell trademarks have been registered in the United States, the European Union, and Australia, though they remain rare due to the significant evidentiary burden of demonstrating distinctiveness and providing adequate graphic representation. Notable examples include the registration of a floral fragrance resembling "plumeria blossoms" for sewing thread in the United States, and the scent of fresh cut grass for tennis balls in the European Union (though the latter was subsequently cancelled). The Indian Registry's decision reflects a progressive interpretation of the Trade Marks Act aligned with international best practices while maintaining rigorous standards to ensure only genuinely distinctive scent marks receive protection.

Implications for Indian Trademark Practice

The registration of India's first olfactory trademark has profound implications for trademark practitioners, brand owners, and the Indian intellectual property ecosystem. First, it confirms that Indian trademark law is technologically neutral and capable of accommodating emerging forms of brand identification as commercial practices evolve. Second, it establishes important precedent regarding the standards for graphic representation of non-visual, non-auditory marks, potentially paving the way for other non-conventional marks such as taste, texture, or even digital/virtual marks. Third, it signals to businesses that investment in distinctive sensory branding can be legally protected in India, encouraging innovation in product differentiation strategies beyond traditional visual branding.

Practical Considerations and Challenges

Despite this landmark acceptance, prospective applicants for olfactory trademarks should recognize that registration will remain challenging and fact-specific. Applicants must provide scientifically rigorous graphic representations, demonstrate clear distinctiveness (preferably through evidence of acquired distinctiveness via extensive use), and ensure the scent is not functional or dictated by the nature of the goods. Additionally, enforcement of olfactory trademarks may present practical difficulties, as detecting and proving infringement requires sensory analysis rather than simple visual comparison. Nevertheless, Sumitomo's success demonstrates that with appropriate scientific evidence and legal argumentation, olfactory trademarks are achievable under Indian law.

Significance

The acceptance of India's first olfactory trademark represents a watershed moment in Indian intellectual property law, confirming that trademark protection extends to all forms of sensory perception capable of distinguishing commercial origin. This decision reflects the Registry's sophisticated understanding of modern branding practices and its willingness to apply traditional legal principles flexibly to accommodate innovation. The establishment of clear standards for graphic representation and distinctiveness of scent marks provides valuable guidance for future applications involving non-conventional marks. As businesses increasingly seek to create multisensory brand experiences, this landmark decision ensures that Indian trademark law remains responsive to contemporary commercial realities while maintaining rigorous standards that balance proprietor rights with public interest in competitive markets. The registration opens new frontiers for sensory branding in India and positions the country as a progressive jurisdiction in the global intellectual property landscape.

Case LawNovember 4, 2025

Madras High Court Affirms Patentability of Computer-Related Innovation Featuring Technical Contribution

Court: Madras High Court

Citation: Ab Initio Technology LLC v. The Controller of Patents & Designs

Judge: Justice Senthilkumar Ramamoorthy

Summary

The Madras High Court delivered a significant ruling overturning the Patent Office's refusal of a patent application for computer-related invention, clarifying that CRIs are patentable when they demonstrate technical contribution, even without novel hardware.

Introduction

On November 4, 2025, the Madras High Court, through Justice Senthilkumar Ramamoorthy, overturned the Patent Office's rejection of Ab Initio Technology LLC's patent application for "Graphic Representations of Data Relationship." The invention, filed in July 2010, presented a novel method for tracking and representing data lineage in complex data systems. After nearly a decade of examination and amendments, the Patent Office rejected it in July 2020 under Section 2(1)(j) for lacking novelty and inventive step, and under Section 3(k) as a "computer programme per se." The Court's intervention was sought to determine whether the invention constituted a patentable computer-related invention (CRI) with genuine technical effect, or merely excluded software. The ruling provides crucial clarity on interpreting CRIs, inventive step, technical contribution, and the boundaries of Section 3(k) in Indian patent law.

Arguments of the Appellant (Ab Initio Technology LLC)

Ab Initio contended that the Patent Office misunderstood the invention's technical scope. The invention introduced a distinctive mechanism for graphically representing data lineage—tracking how data moves, transforms, and interacts within multi-layered environments—which the cited prior art failed to disclose. The company emphasized that its invention delivered technical improvements: faster data query processing, reduced computation time, and enhanced accuracy in tracking data flows. These constituted a "technical effect" aligned with international jurisprudence (EPO and UK precedents) and the Indian Patent Office's own CRI Guidelines, which recognize CRIs as patentable when demonstrating technical contribution, even without novel hardware. Ab Initio argued that the Patent Office mechanically applied Section 3(k) without analyzing the invention's real-world technological impact. Section 3(k) excludes only pure algorithms devoid of application, not inventions using algorithms to deliver tangible, measurable technical results. The unique structure, architecture, and data-mapping logic were non-obvious to persons skilled in the art, satisfying the inventive step requirement under Section 2(1)(j). Ab Initio sought recognition of the invention as a patentable CRI and reversal of the refusal order.

Arguments of the Respondent (Patent Office)

The Patent Office defended its refusal, asserting the claims were fundamentally software executed through standard computing systems, constituting a computer programme per se. The core function—tracking and displaying data relationships—was an abstract computational method lacking novel hardware or technological transformation. Operating entirely within a computer, the invention fell squarely within Section 3(k)'s prohibitions against algorithms, computer programs per se, mathematical methods, and business methods. The Office maintained that Ab Initio's amendments failed to remedy objections because the underlying method remained software-based instructions implementable by any skilled programmer. The invention also lacked inventive step since prior art already disclosed the general concept of graphically representing data relationships. Any improvement was incidental to algorithmic implementation rather than true technical advancement. The refusal order complied with statutory requirements and sound technical reasoning, warranting no judicial interference.

Court's Judgment

The Madras High Court set aside the refusal order after examining the material, arguments, and statutory provisions, delivering detailed analysis on inventive step and CRI patentability. Addressing Section 2(1)(j) requirements (novelty, inventive step, industrial applicability), the Court noted the Patent Office selectively interpreted prior art without acknowledging Ab Initio's distinctive features. The prior art did not disclose the specific data lineage tracking methodology or the graphical representation mechanism capturing complex dependencies and transformations across systems. A person skilled in the art would not naturally derive these features from prior art, affirming inventive step. The invention introduced unique technical architecture enhancing query response speed and accuracy, constituting industrially applicable improvement.

Regarding Section 3(k), the Court provided important clarification on Indian CRI jurisprudence. Mere software involvement does not automatically disqualify patent protection. Section 3(k) excludes only purely abstract inventions consisting solely of computer programs or algorithms, not software-driven inventions achieving concrete technical effects or technical contributions. Ab Initio's invention offered such contribution by improving processing time, enabling efficient data lineage tracking, and providing sophisticated technical solutions to real-world problems. Citing global CRI patentability trends, the Court clarified that Indian law aligns with the principle that novel hardware is not prerequisite for patenting software-driven inventions. The Court stated that "patent applications in relation to a CRI, even de hors novel hardware or impact on the internal working thereof, would not be excluded under Section 3(k) if such CRI makes a technical contribution or has a technical effect." The Patent Office incorrectly applied Section 3(k); the refusal was reversed and the patent application directed to be allowed.