Copyright infringement is available to the owner of the work, irrespective of registration
Introduction:The case of S. Sudhakar v. M/s. Leela Udhyog, adjudicated by the Madras High Court, represents a significant judicial examination of copyright infringement and passing off in the context of commercial disputes over trademark labels. Heard under C.S. (Commercial) No. 52 of 2024, this case involves a suit filed by the plaintiffs, S. Sudhakar, S. Dhinakar, and M/s. T.M. Karuppiah Nadar Sons, against the defendants, M/s. Leela Udhyog and its partners, for allegedly infringing the plaintiffs’ "TOWER" label used in the sale of dhall. The plaintiffs sought a summary judgment under Order XIII-A of the Code of Civil Procedure, 1908, to secure permanent injunctions against the defendants’ use of the "Eiffel TOWER" label and damages for harm caused by alleged infringement and passing off.
Factual Background: The plaintiffs, S. Sudhakar, S. Dhinakar, and their partnership firm, M/s. T.M. Karuppiah Nadar Sons, based in Chennai, Tamil Nadu, have been using the "TOWER" trademark and its associated artistic label for the sale of dhall since at least 1996. The label, featuring a pictorial depiction of a tower with the word "TOWER" written below in red and a stylized yellow rectangular block with "dhall" in multiple languages, was commissioned in stages between 2011 and 2020, as evidenced by emails from design firms. The plaintiffs claimed significant commercial success, with a turnover of Rs. 183.45 crore in the financial year 2022-23, supported by a chartered accountant’s certificate detailing sales from 2014-15 onward. The defendants, M/s. Leela Udhyog, a partnership firm in Ahmedabad, Gujarat, along with its partners Rajendra Rameshchandra Jain, Rameshchandra Manoharlal Jain, and Vihal Hastimal Jain, were accused of using a deceptively similar "Eiffel TOWER" label for their dhall products. The defendants’ firm was constituted in September 2020, and their FSSAI license was issued in 2022, suggesting they began operations much later than the plaintiffs. The plaintiffs alleged that the defendants’ label copied essential features of their "TOWER" label, constituting copyright infringement and passing off, and sought injunctions and damages of Rs. 25 lakhs, claiming the defendants’ actions were mala fide, particularly after they continued using the label despite agreeing to desist.
Procedural Background:The suit, C.S. (Commercial) No. 52 of 2024, was filed by the plaintiffs before the Madras High Court under Section 55 of the Copyright Act, 1957, and common law principles of passing off, seeking remedies for alleged infringement of their "TOWER" label and passing off by the defendants’ use of the "Eiffel TOWER" label. The plaintiffs filed an application (A. No. 1920 of 2025) for summary judgment under Order XIII-A of the CPC, requesting permanent injunctions to restrain the defendants from using the infringing label and damages for harm to their reputation and business. The defendants, represented by Mr. Asharat Khan and Mr. G.M. Mohharaj, raised objections, including a challenge to the court’s jurisdiction, arguing they operated solely in Gujarat. On 11 March 2024, interim injunctions were granted, and by 5 November 2024, the defendants confirmed they had ceased using the "Eiffel TOWER" label, leading to the interim injunctions being made absolute. An application for joinder of causes of action (A. No. 1214 of 2024) was also allowed on 5 November 2024, with the defendants raising no serious objection. The court, presided over by Justice Senthilkumar Ramamoorthy, delivered its judgment on 8 July 2025, addressing the summary judgment application and the substantive claims.
Core Dispute:The central issue in this case is whether the defendants’ use of the "Eiffel TOWER" label constituted copyright infringement and passing off of the plaintiffs’ "TOWER" label, warranting a summary judgment in favor of the plaintiffs for permanent injunctions and damages. The plaintiffs argued that their label, created between 2011 and 2020, was an original artistic work under the Copyright Act, and that the defendants’ label was a substantial copy, infringing their copyright and misrepresenting their brand, thus satisfying the elements of passing off (misrepresentation, reputation, and injury). They supported their claim with evidence of prior creation, substantial turnover, and the defendants’ later entry into the market. The defendants countered that the court lacked jurisdiction, that their label was distinguishable, and that prior users, including Liberty Oil Mills and Ajmer Food Industries, had used the "TOWER" mark since 1972 and 1995, respectively, challenging the plaintiffs’ claim to originality. They also claimed copyright registration for their label in 2023. The dispute thus turned on the plaintiffs’ ownership of copyright, the similarity of the labels, the elements of passing off, and the appropriateness of summary judgment under Order XIII-A.
Discussion on Judgments:The plaintiffs and defendants relied on judicial precedents to support their positions, focusing on copyright infringement, passing off, and summary judgment principles. The plaintiffs cited ITC Limited v. Ganesh Flour Mills (unreported, but referenced in the context of the Madras High Court), emphasizing that copying the essential features of a proprietor’s trademark or trade dress constitutes infringement and passing off, supporting their claim that the defendants’ label replicated key elements of their "TOWER" label. They also relied on Mohan Goldwater Breweries Private Limited v. Khoday Distilleries Private Limited (MANU/TN/0555/1976), specifically paragraph 25, to underscore the importance of protecting distinctive trade dress to prevent consumer confusion and harm to goodwill. The defendants did not cite specific judgments but referenced notices of opposition by Liberty Oil Mills Ltd. and Ajmer Food Industries Private Limited, which claimed use of the "TOWER" mark since 1995 and 1972, respectively, to challenge the plaintiffs’ claim to prior use and originality. The court itself relied on Godaddy.com LLC v. Puravankara Projects Limited (2022 (91) PTC 440 (Mad)), where Justice Senthilkumar Ramamoorthy formulated principles for summary judgment under Order XIII-A, emphasizing that the applicant must show the counterparty has no real prospect of success and that no compelling reason exists for a trial. This precedent guided the court’s analysis of whether the defendants’ defenses were illusory and whether the plaintiffs’ claims could be resolved summarily.
Reasoning and Analysis of the Judge:Justice Senthilkumar Ramamoorthy delivered a meticulous judgment, addressing jurisdiction, copyright infringement, passing off, and the summary judgment application. On jurisdiction, the court noted that Section 62(2) of the Copyright Act allows suits to be filed where the plaintiff carries on business, confirming jurisdiction since the plaintiffs operated in Chennai. The defendants’ jurisdictional objection was further weakened by their lack of serious opposition to the joinder application and their consent to interim injunctions, indicating acquiescence. On copyright infringement, the court examined the plaintiffs’ evidence, including emails from 2011 and 2020 documenting the creation of their "TOWER" label, establishing their ownership under the Copyright Act. The defendants’ copyright registration of 2023, claiming creation in 2020, was deemed prima facie evidence under Section 48 but was rebutted by the plaintiffs’ earlier documentation and the defendants’ formation in 2020 and FSSAI licensing in 2022, suggesting they could not have used the label before the plaintiffs. The court found the defendants’ label to be a substantial copy, replicating the tower depiction, red "TOWER" text, and yellow rectangular block, differing only in minor elements like the word "Eiffel" and the absence of "dhall" in Malayalam.
For passing off, the court applied the classical trinity test (misrepresentation, reputation, and injury), finding that the plaintiffs’ extensive sales (Rs. 183.45 crore in 2022-23) and invoices from 1996 established reputation and goodwill, while the defendants’ label was likely to mislead consumers, causing injury. The defendants’ evidence, including a 2011 invoice from an unrelated entity and a 2023 communication, was insufficient to establish prior use or a credible defense. Applying the Godaddy.com principles, the court concluded that the defendants had no real prospect of defending the claims for injunctions, as their defenses were illusory, and no compelling reason warranted a trial for these reliefs. However, the claim for special damages of Rs. 25 lakhs required oral evidence to assess mala fide intent and quantum, leading the court to defer this issue under Rule 6 of Order XIII-A, which allows partial summary judgment.
Final Decision:On 8 July 2025, the Madras High Court allowed the plaintiffs’ application for summary judgment (A. No. 1920 of 2025) in part, summarily decreeing C.S. (Commercial) No. 52 of 2024 with respect to the prayers for permanent injunctions against copyright infringement and passing off (clauses (a) to (d) of paragraph 36 of the plaint). The court deferred the claim for special damages, finding that it required oral evidence to determine entitlement and quantum. The plaintiffs were entitled to costs, to be finalized upon resolution of the damages claim.
Law Settled in This Case:This case reinforces the application of Section 55 of the Copyright Act, 1957, clarifying that remedies for copyright infringement are available to the owner of the work, irrespective of registration, provided ownership is established through evidence of creation. It underscores that prima facie evidence of copyright registration under Section 48 can be rebutted by prior creation documents, emphasizing the importance of documentary evidence in establishing authorship. The judgment also affirms the classical trinity test for passing off, requiring misrepresentation, reputation, and injury, and highlights the significance of trade dress in establishing consumer confusion. Additionally, it strengthens the use of Order XIII-A of the CPC for summary judgment in commercial disputes, allowing courts to dispose of claims summarily when the defendant’s defense lacks real prospect of success and no trial is warranted, while permitting partial adjudication when certain issues, like damages, require further evidence.
Case Title: S. Sudhakar Vs Leela Udhyog
Date of Order: 8 July 2025
Case Number: C.S. (Commercial) No. 52 of 2024
Neutral Citation: 2025:MHC:1634
Name of Court: Madras High Court
Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
