20 JUNE 2024
NIVEA prevails in trade dress dispute as Delhi High Court cements comparative advertising boundaries
The Delhi High Court has shed light on the boundaries of comparative advertising in a trade dress dispute over NIVEA’s Crème face cream, highlighting the courts’ role in safeguarding consumer interests. Businesses and rights holders should be cautious to operate within these limitations when marketing their products.
Authors:
Jessica Kaur Sahni
18 APRIL 2024
Delhi High Court restricts tech company from selling refurbished hard-drive disks in reverse passing off case
In a dispute between several tech companies, the Delhi High Court has intervened to restrain the defendant from reselling hard-drive disks. The decision highlights the interplay between proprietary rights and consumer interest, as well as the process of determining a product’s true origin.
Authors:
Aarti Aggarwal
11 APRIL 2024
Delhi High Court addresses implications of legislation governing trade name changes following a finding of infringement
In Sanofi v Zanofi, the Delhi High Court has ruled on the phonetic similarity of trademarks and trade names. In its assessment of the requirements involved in changing such names, the court clarified the interplay between the Trade Marks Act 1999 and Companies Act 2013 for the first time.
Authors:
V Mohini and Pragati Agrawal
21 MARCH 2024
Delhi High Court rules that trademark registrar has no power to extend evidence-filing period
In a pharma trademark spat, the Delhi High Court has emphasised the fixed nature of opposition timeline rules in India, providing much-needed clarity on the legal provisions relating to opposition proceedings.
Authors:
Sonal Goel
14 MARCH 2024
KVIC loses out on interim relief in cultural symbol infringement dispute
In a case involving traditional Indian textiles, the Delhi High Court has shed light on the challenges in safeguarding cultural heritage marks against commercial misuse and the heavy burden of proof on the plaintiff to prove that a registration is invalid.
Authors:
Shrabani Rout
07 MARCH 2024
Delhi High Court denies interim injunction to Lotus Herbal in product branding dispute
Cosmetic company 82°E has prevailed in an infringement suit brought by Lotus Herbal alleging likelihood of confusion. The Delhi High Court’s decision sheds light on the complexities of product branding and clarifies the distinction between characteristic descriptions and brand identifiers.
Authors:
Bisman Kaur and Sonal Goel
29 FEBRUARY 2024
Infringement spat between two paint rivals highlights limits of using common words as trademarks in India
The High Court of Calcutta has clarified when common words can be used as registered trademarks. The dispute between two paint companies illustrates how use of regular words by other industry players can impact a business’s exclusive trademark rights.
Authors:
Sonal Goel
15 FEBRUARY 2024
Scotch Whisky GI infringement case clarifies independent rights of registered owners following Madhya Pradesh High Court ruling
The Scotch Whisky Association has filed an infringement suit that sheds light on the interaction between registered owners and authorised users of geographical indications when it comes to the right to sue in India.
Authors:
Aarti Aggarwal
08 FEBRUARY 2024
Premier League appeal victory highlights principles of composite mark comparison
The Delhi High Court has favoured the Football Association Premier League in an appeal brought by textile company Premier Mills. The decision sheds light on the laws that govern the comparison of composite trademarks in India and how they can be applied in disputes.
Authors:
Bisman Kaur
05 OCTOBER 2023
Delhi High Court sheds light on when SEO keyword use becomes infringement
The question as to what extent a company can use another’s trademarks as search engine keywords has long troubled brand owners. The Delhi High Court has provided some useful clarity in a case involving Google Ads.
Authors:
Aarti Aggarwal and V Mohini
21 SEPTEMBER 2023
China Bistro clarifies principles of trademark similarity and disclaimers
The Delhi High Court has found that phonetic similarity trumps visual dissimilarity in a trademark infringement case between food industry rivals. While the defendant Wow Momo Foods is defeated in this instance, the main suit is still ongoing.
Authors:
Jessica Kaur Sahni
14 SEPTEMBER 2023
How to navigate 'hush' branding disputes
In the somewhat taboo realm of menstrual hygiene products, a trademark dispute illuminates the convergence of statutory rights and social mores and the crucial role that courts can play in resolving matters where such competing needs collide.
Authors:
Sonal Goel
07 SEPTEMBER 2023
Google keyword ruling indicates evolving trademark jurisprudence in digital realm
The Delhi High Court has ruled that since Google monetises its keyword suggestion tool, its use of trademarks as keywords constitutes advertising under the Trademarks Act. It also compromises its claim to safe-harbour immunity, which is offered to intermediaries under the Information Technology Act.
Authors:
Aarti Aggarwal
17 AUGUST 2023
Delhi High Court ruling stresses that brands can still be deemed likely to deceive the public despite offering different services
The Delhi High Court has passed a permanent injunction against New Balance Immigration for its use of a name and domain that is deceptively similar to New Balance Athletics. Although these brands do not operate in the same or even similar markets, the court found that there was significant likelihood of confusion, and that the defendant’s adoption of the name was neither honest nor carried out in good faith.
Authors:
Radha Khera
10 AUGUST 2023
Critical GI lessons from influential K-Swiss dispute as Trademark Act demands increasingly careful consideration from applicants
The effects of the K-Swiss dispute before the Trademark Office are still being felt across India today, as absolute grounds of refusal under the Trademark Act are being more seriously deliberated. The office’s decision sheds light on the nuances of proving whether a trademark constitutes a geographical indication.
Authors:
Rashmi Singh
27 JULY 2023
Delhi High Court decision opens door for broader comparative advertising methods
In Reckitt Benckiser v Wipro, the Delhi High Court held that Wipro’s Santoor advertisement did not disparage Reckitt’s Dettol product, despite the former’s counsel admitting that it intentionally referenced Dettol in its commercial. The judgment reaffirms the broad limits of comparative advertisements in India.
Authors:
Sonal Goel
20 JULY 2023
Delhi High Court highlights key requirements for awarding trademarks with well-known status and protection
A high-profile dispute between a popular airline and the registrar of trademarks clarifies the steps needed to secure a place on India’s prized List of Well-Known Trademarks.
Authors:
Tanmay Joshi
15 JUNE 2023
Trademarks Registry’s inconsistent approach to examination exposed in phonetic similarity dispute
In a recent education-sector spat, the Delhi High Court has overturned the Trademark Registry’s grant decision, directing it to improve its examination practice by conducting both word mark and phonetic searches for similar marks.
Authors:
Samta Mehra and Shrabani Rout
18 MAY 2023
Influencer dispute highlights need to regulate denigrating content featuring brands
The High Court of Calcutta’s ruling on the row between a juice producer and an influencer underlines the lack of legislative clarity on differences between the honest use of a mark as part of free speech and disparaging use on social media.
Authors:
Sonal Goel
11 MAY 2023
Decision sidesteps anti-dissection rule to insist that trademark components matter
The Delhi High Court’s analysis of a trademark conflict involving media conglomerate BCCL emphasises the shared, dominant feature of competing marks, which could well prove seismic for owners of marks with common characteristics.
Authors:
Dhruv Goel
27 APRIL 2023
Alcohol labelling spat highlights jurisdictional limits
The Delhi High Court’s ruling on the conflict between competitors in India’s alcoholic beverages industry sheds light on the influence of jurisdictional restraints on where plaintiffs can file suits and whether a court can hear them.
Authors:
Syed Abbas Askari
20 APRIL 2023
Use of reverse confusion theory proves increasingly popular
In trademark disputes between junior and senior users of shared or similar marks, the reverse confusion theory is emerging as a helpful argument for Indian rights holders fighting possible infringers that enjoy a larger market share and greater public awareness.
Authors:
Jessica Kaur Sahni
06 APRIL 2023
Repeat showdowns between Swiggy and GoDaddy shed light on key aspects of intermediary liability
In battles before the High Court of Bombay, the two companies drew attention to the nature of a domain registrar’s intermediary liability for infringement of another entity’s trademark in the lead-up to the impending Digital India Act.
Authors:
Tanmay Joshi
16 MARCH 2023
Bicycle dispute clarifies range of protection for numeral trademarks
The Delhi High Court’s ruling on the conflict between two bicycle manufacturers highlights the importance of a numeral mark’s arbitrary nature and spells out key principles for resolving similar disputes.
Authors:
Udayvir Rana
09 MARCH 2023
Subway emerges victorious in battle against copycat
Following an unsuccessful attempt against Suberb, a former franchisee turned copycat competitor, Subway’s victory on appeal highlights the extent of the fast-food giant’s reputation, goodwill and the strength of its comprehensive IP portfolio.
Authors:
Suyash Malhotra
23 FEBRUARY 2023
Appeal makes sense of contrary submissions before Trademarks Registry and Delhi High Court
A fresh appeal from a two-judge bench weighs the plaintiff’s attempts to claim that the defendant’s trademark “is deceptively similar” to its own against its previous declaration before the Trademarks Registry that there was “no likelihood of confusion” between the two marks.
Authors:
Udayvir Rana
16 FEBRUARY 2023
Recurring tyre dispute shines spotlight on the strength of proprietary rights
The Delhi High Court has affirmed that a tyre tread pattern can function as a source indicator, thus meaning that it qualifies for protection against copycat products.
Authors:
CA Brijesh
09 FEBRUARY 2023
Playing card spat highlights that prior rights are a winning hand
An opposition before the Indian Trademark Opposition is a powerful example of how proof of prior rights through registration and use can be used to defeat new entrants, even if they have managed to make inroads into the market.
Authors:
Shivam Vikram Singh
15 DECEMBER 2022
WIPO Indicators and EAC report show India’s trademark landscape is in excellent health
The growth of the IP sector is pivotal to India's ascension as an economic superpower. Recent data demonstrates a highly encouraging boom in Indian trademark filings, however, the country now faces challenges in expanding its capacity to process applications.
Authors:
Radha Khera
10 NOVEMBER 2022
“Food, glorious food”: cooking up trademark rights in India
No law currently outlines protection of culinary intellectual property in India, so restaurants and chefs must instead rely on two palatable alternatives to enforce their IP rights.
Authors:
Dhruv Goel and Radha Khera
13 OCTOBER 2022
Delhi High Court finds KHADI and charkha logo marks to be well known
Over the last few months the Khadi & Village Industries Commission has won multiple successes before the Delhi High Court enforcing its rights to the KHADI mark, including an award of Rs1 million and costs of Rs200,000 following an infringement claim.
Authors:
Bisman Kaur and Shrabani Rout
15 SEPTEMBER 2022
E-commerce platform’s suggested-seller function leads to finding of passing off
An online seller has scored an important point against a major Indian e-commerce site before the Delhi High Court. The site has a function that suggests users visit other sellers’ pages, which, in this case, promoted the products of unrelated third-party sellers that were taking advantage of the plaintiff’s brand.
Authors:
Bisman Kaur
11 AUGUST 2022
Shaping the law: high court clarifies requirements for shape marks
A recent case has prompted the Delhi High Court to reiterate the necessity for shape marks ― which have a notoriously high threshold for registration ― to have a secondary meaning.
Authors:
Samta Mehra
27 JULY 2022
Supreme Court elevates copyright infringement to a serious non-bailable offence
New interpretation of copyright law makes infringement a cognisable, non-bailable offence for which an individual can be arrested. The effect of this strong ruling on creative freedom remains to be seen.
Authors:
Dhruv Goel
21 JULY 2022
Courts examine keyword advertising as trademark infringement
Indian courts are deciding whether using a registered trademark as a keyword on the Google Ads service amounts to use of a mark, and, if so, whether this provides an unfair advantage by misleading consumers.
Authors:
Udayvir Rana
07 JULY 2022
Spotlight on the right-to-repair movement and IP rights in India
The growing right-to-repair movement is demanding that manufacturers stop suppressing consumer and third-party repairs; however, manufacturers claim that this will force them to reveal proprietary technology and that poor-quality repairs will create brand dilution. Trends in India favour access to quality goods at free market prices.
Authors:
Shrabani Rout
16 JUNE 2022
Landmark interpretation could bring significant changes to Indian trademark practice
In a recent ruling, the deputy registrar concluded that the processing of a trademark application can be expedited at any stage up to its final disposal by filing a suitable application at the appropriate time. The decision has wide-ranging ramifications and is bound to come up for analysis again sooner rather than later.
Authors:
Bisman Kaur
