Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Introduction:

This case relates to a dispute between Havells India Limited and Panasonic Life Solutions India Pvt. Ltd. over allegations of design infringement and passing off. Havells India Limited, the plaintiff, alleged that Panasonic infringed its registered designs for ceiling fans under its ENTICER and ENTICER ART series and simultaneously passed off its goods as those of Havells. The case explores the interplay between statutory design rights and common law remedies of passing off.

Detailed Factual Background:

Havells India Limited is the registered proprietor of several ceiling fan designs, including its ENTICER, ENTICER ART, and ENTICER ART-NS STONE series. These designs feature unique attributes such as minimalistic rectangular ornamentation with metallic borders on the fan blades, chamfered edges, and concave curves towards the motor, among other distinctive features. The plaintiff has invested significantly in the marketing and promotion of these designs, with cumulative sales of approximately Rs. 527.48 Crores and a promotion budget of Rs. 12.91 Crores for 2020-21.

In March 2022, Havells discovered that Panasonic was about to launch its VENICE PRIME series of ceiling fans, which allegedly copied the essential and distinctive features of the ENTICER series. The Plaintiff argued that Panasonic's VENICE PRIME fans were visually similar and likely to confuse customers, leading to an action for both infringement of design rights and passing off.

Detailed Procedural Background

The plaintiff filed CS(COMM) 261/2022 before the Delhi High Court, seeking an injunction against Panasonic from manufacturing, marketing, or selling ceiling fans that were identical or deceptively similar to Havells’ registered designs. The case also involved an application under Order XXXIX Rules 1 and 2 CPC for interim relief. Panasonic challenged the maintainability of the composite suit on the grounds that infringement of registered design and passing off claims could not be pursued together. Panasonic further alleged that Havells’ designs lacked novelty and were liable to be cancelled.

Issues Involved in the Case:Whether a composite suit for infringement of registered design and passing off is maintainable?Whether Havells' claims for statutory design infringement and common law passing off are mutually destructive?

Detailed Submissions of Parties:

The plaintiff contended that the VENICE PRIME fans by Panasonic copied the essential features of the ENTICER and ENTICER ART series, amounting to infringement under the Designs Act, 2000, and passing off. It asserted that under settled law, particularly the decision in Mohan Lal v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980, a registered design owner could simultaneously claim relief for passing off.

Panasonic argued that the plaintiff could not pursue both claims in one suit, relying on Carlsberg Breweries A/S v. Som Distilleries, 2018 SCC OnLine Del 12912, and Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del). Panasonic also argued that Havells' designs lacked novelty, citing prior art and third-party publications to suggest that the registered designs were common in the trade.

Detailed Discussion on Judgments Cited by Parties; Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 SCC OnLine Del 1980: This Full Bench decision held that an action for passing off could be pursued along with a design infringement claim, provided the passing off claim extended beyond the registered design into the overall trade dress. Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912: The Five-Judge Bench ruled that a composite suit for design infringement and passing off is maintainable under Order II Rule 3 CPC. However, it also reaffirmed that a design per se used as a trademark could render the design registration vulnerable.  Dart Industries Inc. v. Vijay Kumar Bansal, 2019 (80) PTC 73 (Del): This judgment interpreted Carlsberg to suggest that a passing off claim could not coexist with a design infringement action. However, the Single Judge in the present case noted that this view was not binding as it conflicted with Carlsberg's Full Bench decision. RB Health (US) LLC & Ors. v. Dabur India Ltd., 2020 (84) PTC 492 (Del): This case reiterated the "classical trinity" test for passing off – goodwill, misrepresentation, and damage. Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65: The Supreme Court recognized that even in the absence of malice, a likelihood of confusion suffices for a passing off action.Whirlpool of India Ltd. v. Videocon Industries Ltd., 2014 SCC OnLine Bom 565: This Bombay High Court judgment held that distinct get-up and trade dress are protectable under common law.

Detailed Reasoning and Analysis of Judge:The Court held that a registered design holder could bring simultaneous claims for design infringement and passing off, provided the passing off action was based on the overall trade dress and not restricted to the registered design per se. The Court observed that both statutory infringement and passing off protect different commercial interests – the former safeguards design novelty, while the latter prevents customer confusion due to misrepresentation.  The Court found that Havells' claims were not mutually destructive but were alternative claims permissible under civil procedure rules. On the issue of novelty, the Court rejected Panasonic’s argument that marble patterns are common and cited estoppel principles because Panasonic itself had applied for a similar design registration. The Court also rejected the claim that Havells suppressed material facts regarding pending cancellation proceedings, noting that no official cancellation notice had been received from the Controller of Designs.  Applying the "classical trinity" test, the Court held that Havells had a strong prima facie case based on its established goodwill and reputation, the likelihood of deception due to Panasonic's VENICE PRIME series, and the potential damage to Havells' business.

Final Decision:

The Court granted an interim injunction restraining Panasonic and its associates from manufacturing, marketing, or selling ceiling fans under the VENICE PRIME series or any other fans that were deceptively similar to Havells' ENTICER ART series during the pendency of the suit.

Law Settled in this Case:

A composite suit for infringement of a registered design and passing off is maintainable, and such claims are not inherently mutually destructive. The decision reaffirmed the legal position laid down by the Full Bench in Carlsberg and Mohan Lal that a passing off claim can coexist with a design infringement claim, provided the passing off is based on a broader trade dress.

Case Title: Havells India Limited Vs Panasonic Life Solutions India Pvt Ltd

Date of Order: 31 May 2022

Case No.: CS(COMM) 261/2022

Neutral Citation: 2022 SCC OnLine Del 1863

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Justice Jyoti Singh

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

PepsiCo Inc.Vs. Parle Agro Private Limited

Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination 

Introduction:

This case involves a trademark infringement suit between two global FMCG giants, PepsiCo Inc. and Parle Agro Private Limited, relating to the tagline "For The Bold." The case primarily focuses on the alleged infringement of PepsiCo's registered trademark by Parle Agro’s use of the phrase in relation to its beverage product "B Fizz". PepsiCo seeks a permanent injunction restraining Parle Agro from using the allegedly infringing tagline, claiming exclusive rights over the registered trademark “For The Bold” under Class 30. Parle, in turn, challenges the validity of PepsiCo’s trademark registration, contending that the tagline is descriptive and lacks distinctiveness.

Factual Background:

PepsiCo is the registered proprietor of the trademark "For The Bold" under Class 30, which includes snack foods like tortilla chips. PepsiCo introduced this tagline globally in 2013 with its DORITOS range and began using it in India in 2015. The tagline is heavily associated with PepsiCo’s DORITOS brand, emphasizing bold flavors and adventurous experiences. PepsiCo claims substantial sales and advertisement expenditure for DORITOS in India, with significant market recognition and goodwill attached to the “For The Bold” mark.

In October 2020, Parle Agro launched its product "B Fizz," a malt-flavored fruit juice-based beverage. PepsiCo discovered that Parle’s marketing prominently used the tagline "Be The Fizz! For The Bold!" on its products and advertising campaigns. PepsiCo alleges that the tagline is deceptively similar to its registered mark and amounts to infringement under Section 29 of the Trade Marks Act, 1999.

Procedural Background:

PepsiCo filed CS (COMM) 268/2021 before the Delhi High Court, seeking a permanent injunction against Parle Agro and an interlocutory injunction through IA 7170/2021 under Order XXXIX Rules 1 and 2 of the CPC. In response, Parle Agro filed IA 9591/2021 under Section 124(1)(a)(ii) of the Trade Marks Act, seeking leave to initiate rectification proceedings challenging the validity of PepsiCo’s trademark registration.

Issues Involved in the Case:

Whether Section 124 requires only prima facie plea of invalidity of registered Trademark or a detailed examination of plea of invalidity of registered Trademark?

Submission of Parties:

PepsiCo argued that its tagline "For The Bold" has acquired distinctiveness and goodwill due to its long and consistent use on DORITOS products. The mark is arbitrary in relation to tortilla chips and deserves the highest protection. It also argued that Parle’s use of “For The Bold” in its advertising campaign and product packaging creates a false association with PepsiCo and constitutes trademark infringement and passing off.

Parle Agro contended that "For The Bold" is a descriptive phrase and not inherently distinctive. It argued that PepsiCo does not use "For The Bold" as a primary identifier of its goods, as other slogans such as "Snack Boldly" and "Bold Crunch" have also been used. Parle claimed that PepsiCo’s mark falls under Sections 9(1)(a), 9(1)(b), and 9(1)(c) and lacks distinctiveness. Parle further contended that their beverage and PepsiCo’s tortilla chips fall in different classes (Class 32 vs. Class 30) and there is no likelihood of confusion.

Discussion on Judgments Cited by Parties:

Parle cited Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, for the proposition that balance of convenience is critical when deciding interim injunctions, especially when the defendant’s product has been in the market for a considerable time. Parle relied on Marico Ltd. v. Agro Tech Foods Ltd., 174 (2010) DLT 279 (DB), to argue that courts can assess the validity of the plaintiff’s mark even at the interlocutory stage. Parle also referred to Nestlé India Ltd. v. Mood Hospitality Pvt Ltd., 168 (2010) DLT 663 (DB), to assert that trademarks must be compared as wholes without dissecting them. Stokely Van Camp v. Heinz India Pvt Ltd., 171 (2010) DLT 16 and Stokely Van Camp v. Heinz India Pvt Ltd., MANU/DE/3132/2010, were cited to contend that words like "bold" have descriptive characteristics and are widely used in common parlance. PepsiCo cited Bata India Ltd v. Chawla Boot House, 2019 SCC OnLine Del 8147, to argue that even suggestive marks are entitled to registration and protection under the Trade Marks Act. PepsiCo emphasized Section 31, which provides that registration is prima facie evidence of validity. PepsiCo also invoked the triple identity test from earlier jurisprudence to show that Parle’s tagline subsumes PepsiCo’s mark, creating a likelihood of confusion.

Reasoning and Analysis of the Judge:

The Court noted that Section 31 grants presumption of validity to registered trademarks, but such presumption is rebuttable. Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination. The Court held that Parle’s challenge to the validity of PepsiCo’s trademark under Section 9(1)(a) to (c) was prima facie tenable. The Court found that Parle had pleaded that the mark was descriptive, lacked distinctiveness, and had become customary in trade, thus satisfying the threshold of "prima facie tenability" under Section 124(1)(ii).The Judge observed that the tagline "For The Bold" was explained by PepsiCo as describing the bold flavors and adventurous spirit of DORITOS chips, potentially indicating its descriptive nature.The Court also agreed that the difference in trade channels and product classes (beverages vs. snacks) between Parle’s and PepsiCo’s products raised a genuine question regarding the likelihood of confusion.The Judge held that the Court could not conclusively decide the issue of distinctiveness or descriptiveness without a full trial, but the pleadings were sufficient to allow Parle to file rectification proceedings.The Court rejected PepsiCo’s argument that Parle could not proceed with rectification without leave of Court, noting that Parle had already filed rectification proceedings (C.O. (COMM IPD TM) 5/2021) independently.

Final Decision:

The Court allowed IA 9591/2021 filed by Parle under Section 124(1)(a)(ii) and directed that the trial of CS (COMM) 268/2021 be stayed pending the outcome of Parle’s rectification petition before the IPD (Intellectual Property Division) of the Delhi High Court. The Court deferred any decision on PepsiCo’s interlocutory injunction (IA 7170/2021) under Order XXXIX Rules 1 and 2 CPC, allowing Parle to proceed with its rectification challenge.

Law Settled in This Case:

Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination .This case reiterates that while registration grants prima facie validity under Section 31 of the Trade Marks Act, defendants can raise a prima facie tenable plea under Section 124(1)(a)(ii) to challenge the validity of the mark. It clarifies that descriptive marks or phrases that lack distinctiveness or have become customary in trade may face successful rectification challenges under Section 9(1)(a)-(c) of the Trade Marks Act.The judgment also reinforces that interlocutory injunctions under Order XXXIX require the Court to balance equities, particularly where rectification proceedings are pending.

Case title: PepsiCo Inc. & Anr. vs. Parle Agro Private Limited

Date of order: 18 September 2023

Case No.: CS(COMM) 268/2021

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Dr. Smita Naram Vs Registrar of Trademarks

Fact of the Case:

Dr. Smita Naram filed an opposition against the trademark application for the mark "AYURSHAKTI" filed by respondent no.3 in 1996. The opposition was dismissed by the Trademark Registry under Rule 56(4) of the Trademark Rules, 2002 for alleged non-prosecution, following claims that the appellant failed to attend scheduled hearings. The appellant, however, contended that she never received the hearing notices and challenged the dismissal.

Procedural Background in Brief:

The appellant filed the opposition on 8th October 2003 and submitted her evidence by affidavit on 5th July 2004. After a gap, hearing notices were issued by the Registry in 2015 and 2016. The appellant filed RTI applications seeking dispatch details of the counter-statement and hearing notices. While the Registry claimed notices were dispatched, the appellant submitted RTI responses from the Post Office indicating non-receipt. Despite the appellant seeking adjournments, the opposition was dismissed by the Registry on 5th April 2016 for non-appearance.

Reasoning of Court:

The Court observed that the appellant had actively pursued the opposition since 2003, making it unlikely that she would abandon the matter at the hearing stage. Further, the Court noted discrepancies based on the appellant’s RTI responses, suggesting that hearing notices may not have been received. Given that the trademark application was still pending due to other oppositions, the Court held that it would be just and fair to restore the appellant’s opposition.

Decision:

The Court set aside the impugned order dated 5th April 2016 and restored the appellant’s opposition. The Trademark Registry was directed to issue a fresh hearing notice and decide the opposition on merits.

Case Details:

Case Title: Dr. Smita Naram Vs Registrar of Trademarks and Ors

Date of Order: 5th March 2025

Case Number: C.A.(COMM.IPD-TM) 106/2022

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

YC Electric Vehicle Vs Bhuvneesh Kapoor

Fact of the Case:

YC Electric Vehicle, India’s leading e-rickshaw manufacturer and registered proprietor of the marks "YATRI" and "YC," discovered that Bhuvneesh Kapoor (proprietor of Two Friends Auto Electric Co.) was using marks such as "SAHYATRI" and "YATRI" on e-rickshaws and product listings on platforms like IndiaMart. The plaintiff alleged that this use was confusingly similar to its trademarks and amounted to trademark infringement, passing off, and copyright violation.

Procedural Background in Brief:

The plaintiff filed a suit seeking a permanent injunction along with ancillary reliefs. The Delhi High Court granted exemption from pre-institution mediation and other procedural exemptions. The defendant was duly served via email and social media-linked contacts but remained unrepresented. The plaintiff presented evidence of prior use, trademark registration, and instances of the defendant's deceptive use of similar marks.

Reasoning of Court:

The Court found that the plaintiff was the prior and continuous user of the "YATRI" and "YC" marks since 2014, with strong goodwill and nationwide recognition in the e-rickshaw industry. The defendant’s marks "SAHYATRI" and "YATRI" were found to be deceptively similar and likely to cause confusion among the relevant class of consumers, particularly considering the low literacy and awareness levels of the target market. The Court also observed the mala fide intent of the defendant, who had directly targeted the plaintiff’s distribution network.

Decision:

The Court granted an ex parte ad-interim injunction restraining the defendant, its affiliates, and agents from using the impugned marks "YATRI," "SAHYATRI," or any mark deceptively similar to the plaintiff's "YATRI" and "YC" trademarks. The defendant was also restrained from using these marks as trade names, domain names, or in any other commercial capacity.

Case Details:

Case Title: YC Electric Vehicle vs Bhuvneesh Kapoor Proprietor of Two Friends Auto Electric Co.

Date of Order: 5th March 2025

Case Number: CS(COMM) 200/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Mini Pushkarna

Panasonic Holdings Corporation Vs Ashok Kumar

Fact of the Case:

Panasonic Holdings Corporation (Japan) and its Indian subsidiary, Panasonic Life Solutions India Pvt. Ltd., filed a suit against Ashok Kumar and others for infringing their registered trademark "ANCHOR" and associated device marks. The plaintiffs alleged that the defendants were manufacturing and selling counterfeit electrical packaging materials and products, including electric wires, bearing the plaintiffs' well-known mark "ANCHOR" and copying their trade dress, leading to consumer deception and reputational damage.

Procedural Background in Brief:

The plaintiffs filed a commercial suit seeking a permanent injunction, damages, and ancillary reliefs. The Delhi High Court granted an ex parte injunction on 14th February 2025 and appointed three Local Commissioners to seize the infringing goods from the defendants' premises. The plaintiffs were exempted from providing advance notice to the defendants to prevent the removal of counterfeit goods. Summons were issued to the defendants, and the matter was listed for further hearing.

Reasoning of Court:

The Court noted that the plaintiffs had established strong statutory and common law rights over the "ANCHOR" mark, widely used in India since 1996 and associated with high sales turnover and brand recognition. The Court found that the defendants' packaging and use of the mark "ANCHOR" were deceptively similar to the plaintiffs' mark and trade dress, likely to cause confusion among consumers. Additionally, the Court considered public safety concerns, as counterfeit electrical products could result in hazards such as short circuits or fires. The balance of convenience favored the plaintiffs.

Decision:

The Court passed an ex parte ad-interim injunction restraining the defendants from manufacturing, selling, or dealing in products or packaging bearing the plaintiffs’ "ANCHOR" mark or any deceptively similar variant. The Court also appointed Local Commissioners to seize infringing goods from the defendants' premises, authorized them to take inventories and photograph the seized stock, and directed police assistance for the enforcement of the commission.

Case Details:

Case Title: Panasonic Holdings Corporation Vs Ashok Kumar 

Date of Order: 14th February 2025

Case Number: CS(COMM) 126/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Mondal Brothers Enterprises Pvt. Ltd.Vs The Registrar of Trade Marks

Fact of the Case:

Mondal Brothers Enterprises Private Limited, involved in manufacturing tarpaulin, vermi beds, wagon covers, and similar goods, acquired exclusive rights over the trademark "TARPEX" through a Deed of Assignment dated 1st September 2020. The petitioner discovered that respondent no. 3 had registered the mark "TARFLEX Tarp" (Device of Stars) in Class 22, which was deceptively similar to the petitioner’s prior registered mark "TARPEX". The petitioner argued that both marks were phonetically and structurally similar, leading to consumer confusion in the same line of business.

Procedural Background in Brief:

The petitioner filed an application under Sections 47, 57, and 125 of the Trademarks Act, 1999, seeking rectification and cancellation of the impugned mark registered in favor of respondent no. 3. Despite repeated service, respondent no. 3 failed to appear or file any written response. The Registrar of Trade Marks (respondent no.1) did not contest the petition.

Reasoning of Court:

The Court found that Mondal Brothers was the prior adopter and continuous user of the mark "TARPEX" since 2010. The impugned mark "TARFLEX" was found to be phonetically and structurally similar to "TARPEX", creating a likelihood of confusion. The Court noted that respondent no. 3 could not demonstrate any bona fide reason for adopting a similar mark and that the impugned mark lacked distinctive character, violating Sections 9(2) and other provisions of the Trademarks Act. The Court concluded that the impugned registration eroded the goodwill and exclusivity associated with the petitioner’s mark.

Decision:

The Court allowed the petition and ordered the rectification and cancellation of the trademark registration granted in favor of respondent no. 3. 

Case Details:

Case Title: Mondal Brothers Enterprises Private Limited Vs The Registrar of Trade Marks 

Date of Order: 6th March 2025

Case Number: IPDATM/1/2023

Neutral Citation: Not provided

Name of Court: High Court at Calcutta 

Name of Hon'ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur

Cabcon India Limited Vs Godha Cabcon and Insulation Limited

Fact of the Case:

Cabcon India Limited, a long-standing manufacturer and seller of aluminium conductors, cables, and related products, discovered that Godha Cabcon and Insulation Limited had adopted the mark "CABCON" as part of its corporate name and domain name. The plaintiff, who has been using the "CABCON" mark since 1991 and holds valid trademark registrations for the same, claimed that the defendant’s use of "CABCON" and "GODHA CABCON" in the same line of business was likely to cause confusion, amounting to infringement and passing off.

Procedural Background in Brief:

The plaintiff issued a cease-and-desist notice on 30th October 2023, but the defendant did not respond. Subsequently, Cabcon India Limited filed a suit seeking injunction and related reliefs. On 11th March 2024, an ad-interim order was granted by the Court restraining the defendant from using the mark "CABCON" and allowing only the use of "GODHA" without "CABCON." This interim order was later confirmed. Despite service of summons, the defendant failed to appear or file a written statement, prompting the plaintiff to seek a decree under Order VIII Rule 10 CPC.

Reasoning of Court:

The Court observed that the plaintiff was the prior and continuous user of the "CABCON" mark and had established goodwill and reputation in the industry. The defendant’s adoption of an identical and deceptively similar mark for identical goods (conductors and cables) created a high likelihood of confusion among consumers. The Court found that the defendant's conduct, including the use of the disputed mark in its domain name, indicated dishonest intent. Citing precedents on trademark infringement and passing off, the Court found no factual dispute requiring trial.

Decision:

The Court decreed the suit in favor of the plaintiff. A permanent injunction was granted restraining the defendant from using the mark "CABCON" or any deceptively similar variation thereof. The Court also held that the defendant could only use the mark "GODHA" independently.

Case Details:

Case Title: Cabcon India Limited Vs Godha Cabcon and Insulation Limited

Date of Order: 5th March 2025

Case Number: IP-COM/45/2024

Neutral Citation: Not provided

Name of Court: High Court at Calcutta 

Name of Hon'ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur

Pioneer Corporation Vs Mr. Gaurav Kumar

Fact of the Case:

Pioneer Corporation, a Japanese multinational and the registered proprietor of the "PIONEER" trademarks, engaged in manufacturing electronic products globally and in India since 1969, found that multiple defendants were involved in selling counterfeit car audio equipment and accessories under its well-known "PIONEER" marks. These activities were discovered during investigations and confirmed through raids at the defendants’ premises.

Procedural Background in Brief:

The Delhi High Court, on 14th October 2019, granted an ex parte injunction and appointed Local Commissioners, who executed searches on 23rd October 2019. Defendants no. 1 to 14 were eventually impleaded. Defendants no.1, 2, 3, and 9 settled with the plaintiff. Defendants no.4 to 8 and 10 to 14 failed to file written statements and were proceeded ex parte. The plaintiff then sought a decree under Order VIII Rule 10 CPC against the remaining defendants.

Reasoning of Court:

The Court noted that the plaintiff’s "PIONEER" marks are registered in India since 1969 and are globally recognized. The defendants' counterfeit products were visually similar to the plaintiff's goods and used the same marks without authorization. The defendants failed to contest the claims, and the reports of the Local Commissioners, which remained unchallenged, established the defendants' infringing conduct. The Court concluded that the defendants were guilty of trademark infringement and passing off.

Decision:

The Court granted a permanent injunction restraining defendants no.4 to 8 and 10 to 14 from using the "PIONEER" marks. The Court also awarded damages and costs of Rs. 1,50,000/- against each of the remaining defendants, in addition to prior costs borne by the plaintiff for court fees and commissioner fees.

Case Title: Pioneer Corporation Vs Mr. Gaurav Kumar 

Date of Order: 4th March 2025

Case Number: CS(COMM) 571/2019

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Ultratech Cement Limited Vs Sarbjeet Arora Tradi

Fact of the Case:

UltraTech Cement Limited and its affiliate, part of the Aditya Birla Group, alleged that Sarbjeet Arora trading as Lovely Sales Corporation was using the well-known trademark "UltraTech" and an identical yellow-black trade dress for manufacturing and marketing adhesive tapes and related products. The plaintiffs claimed that the defendant's use of the "UltraTech" mark and similar trade dress in allied goods was causing confusion, misappropriating their goodwill, and infringing on their trademark rights.

Procedural Background in Brief:

The plaintiffs issued a cease and desist notice to the defendant in January 2025. Although the defendant initially responded with a willingness to "step down" from using the mark, no compliance was shown, prompting the plaintiffs to file the present suit. On 12th March 2025, the Delhi High Court heard the matter and noted that the defendant had been duly served but had failed to appear.

Reasoning of Court:

The Court found that the plaintiffs are the registered proprietors of over 150 trademarks containing "UltraTech," recognized as a well-known mark since 2011. The Court observed that the defendant's use of an identical mark and a deceptively similar color combination (yellow and black) for adhesive tapes, which are allied and cognate goods to cement products, could cause confusion among consumers. The Court found that the plaintiffs had made a prima facie case of trademark infringement and passing off.

Decision:

The Court granted an ex parte ad-interim injunction, restraining the defendant from using the mark "ULTRATECH" or any deceptively similar mark, trade dress, or get-up on its products or in business dealings. The Court also restrained the defendant from infringing the plaintiffs' copyright in their artistic trademarks and ordered compliance under Order XXXIX Rule 3 CPC within two weeks.

Case Title: Ultratech Cement Limited Vs Sarbjeet Arora Tradi

Date of Order: 12th March 2025

Case Number: CS(COMM) 229/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Mini Pushkarna

TM 25 Holding BV Vs Akhtar Ali

Fact of the Case:

TM 25 Holding BV, a Netherlands-based company and part of the G-Star Group of Companies, is the registered proprietor of the well-known "G-STAR" trademarks globally, including India. The company discovered that Akhtar Ali and other defendants were engaged in manufacturing and distributing counterfeit jeans and apparel using the "G-STAR" and "G-STAR RAW" marks without authorization. The plaintiff alleged that these activities infringed its registered trademarks and copyright-protected logos, leading to reputational and commercial harm.

Procedural Background in Brief:

On 19th December 2023, the Delhi High Court granted an ex parte ad-interim injunction restraining the defendants from infringing the plaintiff's trademarks. Local Commissioners were appointed, who conducted raids at the defendants' premises, recovering large quantities of counterfeit goods. All six defendants failed to file written statements within the statutory period and were proceeded ex parte. Defendant no. 2 had made a statement in court that he had stopped using the infringing marks, but thereafter also stopped appearing.

Reasoning of Court:

The Court noted that the defendants had no credible defence and that the plaintiff had established valid trademark rights over the "G-STAR" marks. The Local Commissioners’ reports confirmed the large-scale counterfeit activity. The Court also highlighted that the defendants’ conduct lacked bona fides and was aimed at riding on the goodwill of the plaintiff's marks. The adoption of identical or deceptively similar marks was found to be deliberate and mala fide.

Decision:

The Court decreed the suit in favor of TM 25 Holding BV, granting a permanent injunction against the defendants. The Court awarded damages and costs totaling Rs. 7,20,000 across defendants no. 1 to 6. The Court also directed that infringing goods and labels be destroyed or used for charitable purposes where applicable.

Case Details:

Case Title: TM 25 Holding BV Vs Akhtar Ali

Date of Order: 13th March 2025

Case Number: CS(COMM) 904/2023

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Mini Pushkarna

Living Media India Limited Vs Telegram

Fact of the Case:

Living Media India Limited and TV Today Network Limited, part of the India Today Group, are publishers of popular magazines such as "India Today", "Business Today", and "Reader’s Digest India". The plaintiffs alleged that several Telegram channels and bots were illegally disseminating pirated versions of their copyrighted magazines and using their registered trademarks without authorization. These infringing activities caused loss of paid subscriptions and financial harm to the plaintiffs.

Procedural Background in Brief:

The plaintiffs filed a suit against Telegram FZ LLC (defendant no.1) and various Telegram channels and administrators (defendants no.2 to 15) in 2022. Initially, Telegram (defendant no.1) assured the Court that it had taken down the infringing channels. The Court subsequently directed Telegram to disclose details of the infringing accounts, which were served via WhatsApp and text messages. Since defendants no.2 to 15 failed to file written statements, they were proceeded against ex parte in September 2024. Telegram complied with all takedown requests, and the matter proceeded to final adjudication.

Reasoning of Court:

The Court found that the plaintiffs had established ownership of the trademarks and copyrights for their publications. The defendants no.2 to 15, by distributing pirated versions of the plaintiffs' magazines and using their marks on Telegram channels, infringed the plaintiffs’ intellectual property rights. The Court observed that the defendants' non-appearance and lack of defence meant the plaintiffs' claims were deemed admitted. The Court further noted that Telegram (defendant no.1) had complied with its obligations and had removed the infringing content.

Decision:

The suit was decreed in favor of the plaintiffs. A permanent injunction was granted against defendants no.2 to 16, restraining them from further infringement. Telegram (defendant no.1) was held bound by its earlier commitments to promptly remove infringing content as notified by the plaintiffs. No additional reliefs were pressed by the plaintiffs.

Case Details:

Case Title: Living Media India Limited & Anr. vs Telegram FZ LLC & Ors.

Date of Order: 3rd March 2025

Case Number: CS(COMM) 120/2022

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Dinesh Kumar Chowdhury Vs The Registrar of Trade Marks

Fact of the Case:

Dinesh Kumar Chowdhury, the appellant, was using the mark "GANRAJ-Chappan Bhog" in connection with his business under the name "Ganraj Papad Udyog." The private respondent no. 2, however, was the registered proprietor and prior user of the trademark "CHAPPAN BHOG" in respect of dried fruits (makhana), claiming use since 2003 and registration since 2011. Respondent no. 2 also owned copyright in the associated artwork. The dispute arose when respondent no. 2 filed a rectification application to remove the appellant’s mark from the trademark register, alleging dishonesty and deceptive similarity.

Procedural Background in Brief:

The Deputy Registrar of Trade Marks, by an order dated 6th August 2024, allowed the rectification application of respondent no. 2 and directed the removal of the appellant’s mark from the register. Aggrieved by this, Dinesh Kumar Chowdhury filed an appeal before the Calcutta High Court under IPDTMA/13/2024 challenging the Deputy Registrar's order.

Reasoning of Court:

The Court noted that respondent no. 2 was the prior user and proprietor of the "CHAPPAN BHOG" mark since 2003. After comparing the labels, the Court found significant similarities in the artwork, color scheme, packaging, and trade dress of both marks. Relying on precedents such as Ciba Ltd. v. M. Ramalingam and Laxmikant V. Patel v. Chetanbhat Shah, the Court emphasized the importance of preventing consumer confusion and protecting honest trade practices. The Court concluded that the appellant’s adoption of the mark was dishonest and likely to cause deception.

Decision:

The Calcutta High Court upheld the Deputy Registrar’s rectification order and dismissed the appeal filed by Dinesh Kumar Chowdhury. No costs were awarded.

Case Title: Dinesh Kumar Chowdhury Vs The Registrar of Trade Marks and Anr

Date of Order: 3rd March 2025

Case Number: IPDTMA/13/2024

Name of Court: High Court at Calcutta 

Name of Hon'ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur

Dominos IP Vs Dominic Pizza

Fact of the Case:

Dominos IP Holder LLC and its affiliate filed a suit against M/s Dominic Pizza and other entities for trademark infringement, passing off, and dilution. The plaintiffs alleged that the defendants were using the marks "Dominic Pizza" and "Domindo Pizza," which are deceptively similar to the plaintiffs' registered marks "Domino's" and "Domino's Pizza." The plaintiffs claimed that this unauthorized use caused confusion among consumers, especially through online platforms like Zomato and Swiggy, where the defendants had listed their infringing businesses.

Procedural Background in Brief:

The plaintiffs filed a commercial suit seeking permanent injunction along with interim relief. The Court granted exemption from pre-institution mediation and advance service due to urgency. The plaintiffs also moved an interim application under Order XXXIX Rules 1 and 2 CPC seeking an ex parte injunction. The Court registered the suit and issued summons to the defendants.

Reasoning of Court:

The Court noted the plaintiffs’ extensive global presence and long-standing use of the "Domino's" mark since 1960. The Court found the adoption of the names "Dominic" and "Domindo" by the defendants to be phonetically and visually similar to the plaintiffs' marks, likely to mislead consumers. The Court also took into account the plaintiffs' claim that the defendants were exploiting online food delivery platforms to attract customers through deceptive listings. The Court accepted that a prima facie case of infringement and passing off was made out.

Decision:

The Court granted an ex parte ad-interim injunction restraining the defendants (nos. 1 to 5) from using the impugned marks "Dominic Pizza" and "Domindo Pizza" or any other deceptively similar mark to the plaintiffs' registered trademarks. The Court also directed Zomato and Swiggy (defendants nos. 6 and 7) to de-list the infringing businesses from their platforms until further orders.

Case Details:

Case Title: Dominos IP Holder Vs  Dominic Pizza 

Date of Order: 12th March 2025

Case Number: CS(COMM) 231/2025

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Mini Pushkarna

Puma SE Vs Mahesh Kumar

factual background:

puma se filed a suit against mahesh kumar for trademark infringement, unfair trade practices, and passing off. puma alleged that the defendant was engaged in manufacturing and selling counterfeit shoes using its well-known trademarks, including "puma" and its logo, without authorization. a local commissioner appointed by the court confirmed that counterfeit goods were being sold at the defendant’s premises, along with counterfeit products of other reputed brands like adidas and nike.

procedural background:

the court initially issued an ex-parte ad-interim injunction against the defendant on october 18, 2022, restraining them from manufacturing and selling counterfeit products. the defendant failed to file a written statement within the statutory period, leading to their right to defend being closed on september 18, 2024. the court proceeded with the case ex-parte and considered the plaintiff’s application for summary judgment.

provisions of law referred and their context:

the case primarily relied on the trade marks act, 1999, particularly sections 29(1) and 29(2), which prohibit trademark infringement. the plaintiff also invoked order xiii-a and order viii rule 10 of the code of civil procedure, 1908, to seek a summary judgment, arguing that the defendant had no real prospect of defending the claim. the court also considered section 151 cpc for inherent powers.

judgments referred with complete citation and context:

the court relied on louis vuitton malletier v. capital general store & ors., 2023 scc online del 613, which emphasized that counterfeiting is a serious commercial offense that erodes brand value and deceives consumers. the court also referred to jawed ansari v. louis vuitton malletier & ors., 

manu/deor/136880/2023, which upheld stringent action against counterfeiters. another key case cited was hamdard national foundation (india) v. sadar laboratories pvt. ltd., 2022 scc online del 4523, reinforcing that well-known trademarks require higher protection from infringement.

reasoning of the court:

the court found that the defendant was blatantly manufacturing and selling counterfeit goods using the plaintiff’s trademarks. the local commissioner’s report confirmed the large-scale counterfeiting operation, which also involved other well-known brands. since the defendant failed to defend the case, the court held that there was no genuine dispute requiring trial. it noted that counterfeit goods create consumer deception and harm brand reputation. given the strong evidence against the defendant, the court ruled that summary judgment was appropriate.

decision:

the court decreed the suit in favor of puma se and awarded actual litigation costs of ₹9,00,000, along with damages of ₹2,00,000, payable within three months. the defendant was permanently restrained from manufacturing or selling counterfeit products bearing puma’s trademarks. the court also directed the registry to draw up a decree in favor of the plaintiff.

case details:

case title: puma se vs. mahesh kumar

date of order: february 12, 2025 

case number: cs(comm) 725/2022

neutral citation: 2025:dhc:1552

court name: high court of delhi

hon'ble judge: justice mini pushkarna

Star India Private Limited Vs. Stream2Watch.Pk

Fact of the Case:

Star India Private Limited (plaintiff no.1) and Novi Digital Entertainment Pvt. Ltd. (plaintiff no.2) hold exclusive digital and television broadcasting rights for the ICC Men’s T20 World Cup 2024, under an agreement with the International Cricket Council (ICC). The plaintiffs discovered that several rogue websites, including Stream2Watch.Pk and others, were illegally streaming or making available to the public the plaintiffs’ exclusive content (matches and highlights) without authorization, infringing their copyright and broadcast reproduction rights under Section 37 of the Copyright Act, 1957.

Procedural Background in Brief:

The suit was filed prior to the commencement of the ICC T20 World Cup 2024, seeking a permanent injunction to restrain defendants from unauthorized dissemination of the matches. On 28th May 2024, the Delhi High Court granted an ex parte ad interim injunction in favor of the plaintiffs, restraining the initial set of rogue websites and directing blocking of these websites by ISPs and domain registrars. As further rogue websites were identified, plaintiffs successfully impleaded defendants no.33 to 175. The defendants failed to file written statements within the prescribed period, and no defence was raised.

Reasoning of Court:

The Court noted that the defendants did not contest the suit, and the averments made in the plaint were deemed admitted. The Court found that the defendants' unauthorized dissemination of the ICC T20 World Cup 2024 content resulted in irreparable harm to the plaintiffs by infringing their copyrights and broadcast rights, and eroding the commercial value of these exclusive rights. The Court concluded that no trial was warranted and the suit could be decreed under Order VIII Rule 10 CPC.

Decision:

The Court passed a decree of permanent injunction restraining defendants no.1 to 11 and defendants no.33 to 175 from illegally disseminating or broadcasting plaintiffs' exclusive content through rogue websites. The plaintiffs did not press for damages, as the interim reliefs had already been satisfied.

Case Details:

Case Title: Star India Private Limited & Anr. vs. Stream2Watch.Pk & Ors.

Date of Order: 3rd March 2025

Case Number: CS(COMM) 455/2024

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Eureka Forbes Limited Vs. Mr. Vinod K.

Fact of the Case:

Eureka Forbes Limited, a leading manufacturer and marketer of home appliances including water purifiers, alleged that Mr. Vinod K. and his company were selling counterfeit spares/consumables using the plaintiff's trademarks such as 'AQUAGUARD', 'AQUASFILTER', 'ACTIVE COPPER MAXX', and the slogan 'PAANI KA DOCTOR'. The counterfeit products used identical marks, get-ups, and labels, misleading consumers and infringing upon the plaintiff's intellectual property rights.

Procedural Background (in brief):

The suit was filed on 19th May 2023 seeking permanent injunction and ancillary reliefs. An ex parte ad interim injunction was granted on 23rd May 2023, along with the appointment of Local Commissioners. Infringing products were seized on 26th May 2023. Defendant No. 1 (Mr. Vinod K.) failed to file an effective written statement and was later proceeded ex parte on 11th December 2024. Defendant No. 2 settled the dispute, and the suit was decreed against him on 11th December 2024.

Reasoning of Court:

Defendant No. 1 failed to contest the suit; hence, the averments in the plaint were deemed admitted. The plaintiff proved ownership of well-known trademarks and copyright in artistic works. Evidence, including the Local Commissioner’s report and documents such as sales turnover, trademark and copyright certificates, supported the plaintiff’s claims. The defendant’s use of identical marks and trade dress amounted to trademark infringement, copyright infringement, and passing off. The defendant’s misconduct, including threatening the Local Commissioner, was noted as aggravating conduct.

Decision:

A permanent injunction was granted restraining Defendant No. 1 from using the plaintiff’s marks and get-ups. Damages and costs amounting to Rs. 3,00,000 were awarded to the plaintiff. The suit was decreed in favor of the plaintiff under Order VIII Rule 10 CPC.

Case Details:

Case Title: Eureka Forbes Limited (Formerly Forbes Enviro Solutions Limited) vs. Mr. Vinod K. and Anr.

Date of Order: 4th March 2025

Case Number: CS(COMM) 335/2023

Neutral Citation: Not provided

Name of Court: High Court of Delhi at New Delhi

Name of Hon'ble Judge: Hon'ble Mr. Justice Amit Bansal

Google LLC Vs. DRS Logistics (P) Ltd.

Trademark infringement and Google Ad keywords 

Introduction: The case revolves around whether the use of a trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999 and if Google can claim protection as an intermediary under Section 79 of the Information Technology Act, 2000. DRS Logistics, the plaintiff, alleged that Google allowed third parties to use its trademark "Agarwal Packers and Movers" as a keyword, leading to traffic diversion to competitors' websites. Google contended that using trademarks as keywords did not amount to infringement under the Trade Marks Act and that it was protected under intermediary safe harbor provisions of the IT Act.

Factual Background: Google LLC, a US-based company, operates the Google Search Engine and Google Ads Programme. Its Indian subsidiary, Google India Private Limited, acts as a reseller of the Ads Programme in India. DRS Logistics is engaged in packaging, moving, and logistics services and owns the trademark "Agarwal Packers and Movers", which it claims has gained reputation and goodwill.

DRS alleged that competitors were using its registered trademark as keywords to appear in Google Ads, misleading customers and diverting traffic. The Google Ads Programme allows advertisers to bid for keywords, and Google ranks ads based on Quality Score and Maximum Cost Per Click (CPC). DRS claimed that Google's auction model encouraged trademark misuse for monetary gain.

Procedural Background:DRS filed a suit under Order 39, Rules 1 and 2 of the CPC for an injunction against Google from permitting third parties to use its trademark as keywords. The Single Judge ruled in favor of DRS, holding that using trademarks as keywords constitutes "use" under the Trade Marks Act, 1999 and that Google could not claim safe harbor protection under Section 79 of the IT Act. Google appealed against this decision before the Division Bench of the Delhi High Court.

Issues Involved: Whether the use of a registered trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999? 

Submissions of the Parties: DRS contended that the use of its trademark in Google Ads led to consumer confusion and amounted to passing off. It argued that Google actively promoted the use of trademarks as keywords, allowing competitors to benefit unfairly from DRS’s reputation. DRS also claimed that Google’s Keyword Planner tool encouraged advertisers to select well-known trademarks to maximize ad visibility.

Google argued that the use of a trademark as a keyword did not qualify as use in commerce under the Trade Marks Act, 1999, as it was not visible to consumers. It relied on international decisions, including Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255) and Intercity Group (NZ) Ltd. v. Nakedbus NZ Ltd. (2014 NZHC 124), where courts ruled that using trademarks as keywords does not constitute "use" for infringement claims. Google also asserted that it was a neutral intermediary and could not be held liable for advertisers’ actions under Section 79 of the IT Act.

Discussion on Judgments and Citations:The court examined multiple judgments on keyword advertising. It referred to the European Court of Justice's ruling in Google France SARL v. Louis Vuitton Malletier SA (C-236/08 to C-238/08), which held that using trademarks as keywords could amount to infringement if it caused confusion. The court also cited Rescuecom Corp. v. Google Inc. (562 F.3d 123 (2d Cir. 2009)), where a US court ruled that selling trademarks as keywords constituted use under the Lanham Act.

In contrast, the Australian case of Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255) held that using a trademark as a keyword did not amount to trademark use, as keywords were not visible to consumers. Similarly, in NZ Fintech Ltd. v. Credit Corp Financial Solutions Pty Ltd. (2019 NZHC 654), the New Zealand High Court ruled that Google’s keyword advertising model did not amount to trademark use.

The court distinguished these foreign judgments by emphasizing that Indian trademark law does not require "visual representation" for use. It relied on Hamdard National Foundation v. Hussain Dalal (2013 SCC OnLine Del 2289), where the Delhi High Court recognized "invisible use" of trademarks as a form of infringement. The court also cited Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. (2019 SCC OnLine Del 9061), which held that meta-tags and keywords can infringe a trademark if they divert traffic from the trademark owner.

Reasoning and Analysis of the Judge: The court held that using trademarks as keywords in Google Ads qualifies as "use" under the Trade Marks Act, 1999, as it influences consumer behavior and affects market competition. It rejected Google's argument that keywords were invisible to consumers, stating that the economic function of a trademark is to attract customers, and any unauthorized use that diverts traffic undermines its purpose.

Regarding Section 79 of the IT Act, the court ruled that Google does not qualify as a passive intermediary because it actively participates in ad placement and profits from keyword sales. The court noted that Google curates ads using its algorithms and Keyword Planner tool, making it an active player rather than a neutral intermediary.

The court also emphasized that Google's policies differed across jurisdictions, restricting trademark use in Europe but allowing it in India, thereby failing to exercise a higher duty of care in protecting trademarks.

Final Decision: The court upheld the Single Judge’s ruling and directed Google to:

Investigate complaints regarding unauthorized use of trademarks as keywords. Review whether Google Ads result in trademark infringement or passing off. Remove ads that violate trademark rights. Google was denied safe harbor protection under Section 79 of the IT Act.

Law Settled in This Case: Using trademarks as keywords in Google Ads constitutes "use" under the Trade Marks Act, 1999. Such use can amount to trademark infringement if it misleads consumers or diverts traffic unfairly. Google is not entitled to intermediary protection under Section 79 of the IT Act if it actively participates in ad placement. Invisible use of a trademark (such as in keywords) can amount to infringement if it affects the economic function of the mark.

Case Title: Google LLC Vs. DRS Logistics (P) Ltd. 

Date of Order: August 10, 2023

Case No.: FAO(OS)(COMM) 2/2022 

Neutral Citation: Not specified

Court: Delhi High Court

Judges: Hon'ble Justice Vibhu Bakhru and Justice Amit Mahajan

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Glaxo Smithkline Consumer Healthcare Vs. Amigo Brushes Private Limited

A slight modification of an existing design does not confer exclusive rights.

Introduction:The case of Glaxo Smithkline Consumer Healthcare vs. Amigo Brushes Private Limited & Anr. revolves around an alleged infringement of a registered toothbrush design. The plaintiff, a global healthcare company, sought an interlocutory injunction restraining the defendant from manufacturing, selling, or offering for sale toothbrushes that were claimed to be an obvious and fraudulent imitation of the plaintiff’s registered design. The primary issues in the case were whether the defendant had infringed the plaintiff’s registered design and whether the plaintiff was entitled to an interlocutory injunction.

Factual Background:Glaxo Smithkline Consumer Healthcare, a German company, was engaged in the healthcare sector, including the design and sale of toothbrushes. The company obtained a design registration (No. 183197) dated February 15, 2000, in Class 3 for toothbrushes. The design was claimed to be novel and unique. Under the Designs Act, 2000, this registration granted the plaintiff copyright protection for five years, extendable by two successive periods of five years each. The plaintiff also secured corresponding design registrations in multiple countries.

In 2003, the plaintiff discovered that defendant No. 2, Hindustan Lever Limited (HLL), was selling toothbrushes under the brand name "Pepsodent Cushion," which was alleged to be a fraudulent imitation of the plaintiff's design. The packaging of the toothbrush disclosed that it was manufactured by Amigo Brushes Private Limited, which was initially named as defendant No. 1 in the suit. The plaintiff had previously initiated legal proceedings against HLL in another suit (CS No. 2515/96), where the interim relief was denied. The plaintiff had also filed copyright infringement suits against HLL in the Bombay High Court.

HLL, in its defense, contended that it was merely a marketer of the toothbrushes, not the manufacturer. The toothbrush handles were imported from China by Seema Impex, which supplied them to Amigo Brushes Pvt. Ltd. for bristling and finishing. The final product was then marketed by HLL under its brand. The defendant argued that the plaintiff’s design lacked novelty and was already in the public domain due to prior publication in the British Dental Journal. It also claimed that the plaintiff’s design was primarily functional and thus ineligible for protection under the Designs Act.

Procedural Background:The plaintiff sought a permanent injunction against the defendants, along with interim relief under Order 39, Rules 1 and 2 of the CPC. After service of notice, defendant No. 2, HLL, contested the application, while the plaintiff withdrew its claims against defendant No. 1, Amigo Brushes Pvt. Ltd. The case proceeded against HLL alone. The defendant argued that the suit was bad for non-joinder of necessary parties, including the Chinese manufacturer and the importer, Seema Impex.

The plaintiff contended that it was entitled to interim relief based on the novelty of its design and the defendant’s deliberate imitation. It submitted that the defendant had previously attempted to imitate its designs and was aware of the plaintiff’s rights. The defendant, however, claimed that the plaintiff’s design lacked originality, had been previously published, and was primarily functional. The defendant also argued that the plaintiff had delayed in filing the suit and had misrepresented facts.

Issues Involved: Whether the defendant’s toothbrush was a fraudulent or obvious imitation of the plaintiff’s registered design, amounting to design infringement? 

Submissions of the Parties:The plaintiff argued that its registered design was novel and had not been previously published. It contended that the defendant had knowingly copied its design to deceive consumers. The plaintiff relied on Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) to assert that fraudulent imitation was evident from the similarities in shape, configuration, and ornamentation. It also cited Walker & Co. v. A.G. Scott & Co. (1892 RPC 482) to argue that even an arrangement of well-known parts could constitute a new design.

The defendant countered that the plaintiff’s design lacked novelty and was published in the British Dental Journal before registration, making it unenforceable under Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure (2000 PTC 177). The defendant relied on AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) and Stenor Ltd. v. Whitesides (1946 RPC 81) to argue that functional designs were not protectable. It also cited Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) to contend that mere trade variants did not constitute a new design.

Discussion on Judgments and Citations:The court analyzed precedents cited by both parties. AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) held that functional features dictated solely by necessity cannot be protected as designs. This was applied to reject the plaintiff’s claim that the thickness of the handle was novel. Stenor Ltd. v. Whitesides (1946 RPC 81) emphasized that small mechanical variations do not create a new design and was used to counter the plaintiff’s argument that its toothbrush had a unique aesthetic appeal. Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) established that a design must be truly original, not just a variation of existing products, leading the court to find that the plaintiff’s handle was merely a trade variant. Smithkline Beecham Consumer Healthcare GmbH v. G.D. Rathore (2002 PTC 243 (Del)) had previously denied an injunction for a similar toothbrush due to lack of distinctiveness, which the court followed. Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) was cited by the plaintiff to argue fraudulent imitation, but the court found the comparison unpersuasive.

Reasoning and Analysis of the Judge:The court ruled that the plaintiff’s design was primarily functional and lacked originality. The court held that the plaintiff’s claim was limited to the handle grip, which was a necessary functional component and not a standalone article under Section 2(a) of the Designs Act, 2000. The thickness of the handle was dictated by ergonomics, making it unprotectable under AMP Incorporated v. Utilux Proprietary Ltd. Prior publication in the British Dental Journal invalidated the claim of novelty. The plaintiff had suppressed material facts regarding previous cases where similar claims were rejected. The defendant’s product had minor differences, making it distinguishable.

Final Decision: The court refused to grant an interlocutory injunction, stating that the plaintiff had not established a prima facie case. The balance of convenience was in favor of the defendant, and the plaintiff would not suffer irreparable harm since it was not selling the toothbrush in India. The suit was not dismissed but was set for trial on merits.

Law Settled in This Case: Functional designs are not protectable under the Designs Act, 2000. A design must have an aesthetic appeal beyond mere utility. Prior publication can invalidate a design registration. If a design has been publicly disclosed before registration, it loses novelty. Trade variants do not qualify as new designs. A slight modification of an existing design does not confer exclusive rights. Suppression of material facts can disqualify a party from obtaining an interim injunction. Courts expect full disclosure of relevant proceedings.

Case Title: Glaxo Smithkline Vs. Amigo Brushes Private Limited 

Date of Order: December 11, 2003 

Citation: 2004 (28) PTC 1 (DEL) 

Court: Delhi High Court 

Judge: Hon'ble Justice Mahmood Ali Khan

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Diageo Brands Vs Alcobrew Distilleries India Pvt Ltd

The standards for evaluating novelty and originality differ from the standards for determining infringement

Introduction:The case of Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd. before the Delhi High Court concerns the enforcement of rights under the Designs Act, 2000. The plaintiffs alleged piracy of their registered bottle design used for alcoholic beverages. The court examined the fundamental principles governing the assessment of novelty and originality in registered designs vis-à-vis prior art and the criteria for determining infringement under Section 22 of the Designs Act.

Factual Background:The plaintiffs, Diageo Brands B.V. and its Indian licensee United Spirits Ltd., are part of the globally renowned Diageo Group, which manufactures and sells several popular liquor brands. The plaintiffs are the proprietors of a registered design, Design No. 306577, covering the shape and configuration of a 180 ml bottle, referred to as the “Hipster.” The plaintiffs claim that the Hipster bottle, inspired by smartphone aesthetics, has distinctive features including a rectangular shape, symmetrical edges, rounded shoulders, a ‘V’ shaped neck, plateau-like raised front and rear walls, a rimmed rounded cap, and a dimpled bottom.

The defendant, Alcobrew Distilleries India Pvt. Ltd., sells its whisky product “Golfer’s Shot” in a bottle that the plaintiffs allege infringes their registered design. The plaintiffs pointed out that Alcobrew previously sold its 180 ml products in a differently shaped bottle but switched to the alleged infringing design after the success of the Hipster bottle.

Procedural Background:The plaintiffs filed a suit for injunction before the Delhi High Court under Section 22 of the Designs Act, 2000, and also sought to restrain the defendant from using the tagline “Pocket Shot,” allegedly similar to the plaintiffs’ “Pocket Scotch.” The plaintiffs relied on a prior favorable decision in Diageo Brands B.V. & Anr. vs. Great Galleon Ventures Pvt. Ltd., where the same design was protected against a near-identical infringing product. The defendant contested the interim relief application under Order XXXIX Rules 1 and 2 CPC, arguing that the design lacked novelty due to prior publication and that there were clear differences between its product and the plaintiffs’ Hipster bottle.

Issues Involved: Whether the plaintiffs' registered design is novel and original as against prior art?Whether the standards for evaluating novelty and originality differ from the standards for determining infringement?

Submissions of Parties: The plaintiffs argued that the design's novelty had been upheld in Diageo v. Great Galleon and that the defendant’s product imitated all the essential features of the registered design. They further submitted that the comparison between the registered design and prior art is distinct from the assessment of infringement between the registered design and the defendant's product, which is judged from the perspective of the ordinary consumer.  The defendant argued that the Hipster design lacked novelty and was similar to earlier designs such as US Design No. D562138. The defendant also submitted that the differences in the defendant’s product — including dimensions, roundness of edges, and neck shape — were sufficient to avoid infringement.

Discussion on Judgments Cited:  The court referred to multiple judgments to clarify the distinction between novelty analysis and infringement analysis and to identify the legal standards applicable in design law cases.

B. Chawla & Sons vs. Bright Auto Industries, AIR 1981 Delhi 95:Context: Cited by the defendant to establish that novelty must be judged by an “instructed eye,” i.e., an individual aware of prior art and common trade practices. Law laid down: The Delhi High Court held that novelty and originality are to be judged by an instructed person familiar with common trade knowledge. The mere introduction of ordinary trade variants into an old design does not render it new or original.

Negretti & Zambra v. WF Stanley & Co., (1925) 42 RPC 358: Context: Cited by the defendant to argue that for a humble or basic design, infringement requires virtual identity between the registered design and the allegedly infringing product.  Law laid down: The Chancery Division of the UK High Court held that in cases of simple designs, even small differences could be sufficient to defeat an infringement claim. The court emphasized that infringement must be judged “by the eye,” and minor but noticeable variations in appearance could be enough to distinguish two designs.

Phillips v. Harbro Rubber Co., (1920) 37 RPC 233: Context: Referred to reinforce the principle that novelty or originality requires more than mere trade variants and that the instructed eye is the proper standard.Law laid down: Lord Moulton held that a registered design must differ in a substantial manner from prior designs to be considered novel. The instructed eye standard was reaffirmed for novelty analysis.

Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd., 2017 SCC OnLine Del 8125: Context: Relied upon by the defendant to support the argument that infringement of a registered design must be assessed on the basis of an overall visual impression and not by isolating common trade features. Law laid down: The Delhi High Court held that design infringement requires an assessment of the overall appearance of the registered design compared to the alleged infringing design. Features common to the trade or minor variations that do not affect the overall visual impression are not actionable.

Castrol Ltd. v. Tide Water Oil Co. (India) Ltd., 1994 SCC OnLine Cal 303: Context: Referred to by the defendant to argue that not every resemblance amounts to infringement.  Law laid down: The Calcutta High Court held that imitation does not mean duplication, and the comparison must be of the design as a whole. A mere resemblance in certain parts or features is insufficient for infringement.

Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (1910) 27 RPC 498: Context: Cited by the defendant to argue that trivial or infinitesimal variations do not make a design registrable, and that newness must be confined to a substantial and significant part of the design. Law laid down: The court held that for a design to be registrable or to avoid infringement, there must be a substantial and non-trivial difference that creates a distinct identity in the eyes of an instructed person.

Reasoning and Analysis of Judge: The court recognized that the plaintiffs’ registered design had already been upheld as valid in Diageo v. Great Galleon. However, the court clarified that the standards for determining novelty and infringement differ. For novelty, the court emphasized that the standard is the “instructed eye,” aware of prior art and trade practices. Infringement, however, is determined from the perspective of the ordinary consumer or purchaser, i.e., whether the general public perceives the two designs as visually similar.

Applying this distinction, the court noted that while the Hipster design may be novel vis-à-vis the prior art, such as D562138, the question of infringement depended on whether the defendant’s Golfer’s Shot bottle was substantially similar to the Hipster design in the eyes of an ordinary buyer.The court carefully compared the two designs and found visible differences in the neck shape, shoulder configuration, dimensions, and finish of the bottles. It held that such differences would be perceptible to an ordinary consumer and would likely dispel confusion.

Once the Court finds that the distinguishing features in the suit design vis-à-vis prior art, on the basis of which the suit design claims originality and novelty, are also applicable to the impugned design vis-a-vis the suit design, the impugned design has necessarily to be treated as novel and original vis-à-vis the suit design. That conclusion, if arrived at, would rule out, altogether, the allegation of piracy.

The court rejected the plaintiffs’ argument that similarities in broad elements such as the “hip flask shape” or the rimmed cap were sufficient to establish piracy. The court held that these were common to the trade and not exclusive to the plaintiffs' registered design.

Final Decision: The court dismissed the plaintiffs’ interim injunction application, holding that the plaintiffs failed to establish a prima facie case of piracy under Section 22(1) of the Designs Act. However, the court allowed the suit to proceed to trial for full adjudication based on evidence.

Law Settled in this Case: The court clarified that the novelty of a registered design is to be assessed from the perspective of an instructed eye aware of prior art and industry practices. In contrast, design infringement or piracy under Section 22(1) must be evaluated from the viewpoint of the ordinary consumer, based on the overall visual impression of the two designs. For humble or basic designs, infringement will only be found where the defendant’s design is nearly identical to the registered design, with minor differences being sufficient to avoid liability.Common trade features such as basic shapes or standard configurations cannot be monopolized through a registered design and cannot by themselves form the basis of an infringement claim.

Case Title: Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd.

Date of Order: 19 December 2022

Case No.: CS(COMM) 30/2022 

Neutral Citation: 2022/DHC/005661

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Devi Pesticides Private Ltd. Vs Shiv Agro Chemicals Industries

A registered trademark enjoys statutory protection and cannot be diluted merely by adding a prefix

Introduction: The case of Devi Pesticides Private Ltd. vs. Shiv Agro Chemicals Industries is a notable decision concerning trademark infringement and passing-off within the agrochemical industry. The dispute arose when Devi Pesticides Private Ltd. (the plaintiff), a company engaged in the manufacture and sale of fertilizers and flowering stimulants under the trademark "BOOM PLUS," alleged that Shiv Agro Chemicals Industries (the defendant) was selling similar products under the trademark "SUPER BOOM," resulting in confusion among consumers, particularly illiterate farmers.

Factual Background:The plaintiff, Devi Pesticides Private Ltd., has been in the business of manufacturing fertilizers and flowering stimulants since 1985 and has been using the trademark "BOOM PLUS" since 1987. The trademark "BOOM PLUS" was registered under Trademark No. 473179 in Class 1 on June 5, 1987, and the registration has been periodically renewed. Additionally, the plaintiff has four other registered trademarks associated with "BOOM PLUS." The plaintiff's products are well-established in the market, with significant annual sales of approximately one crore rupees, supported by regular advertising expenditure.

In July 2004, the plaintiff discovered that the defendant, Shiv Agro Chemicals Industries, was marketing fertilizers and flowering stimulants under the trademark "SUPER BOOM." The plaintiff claimed that "SUPER BOOM" was deceptively similar to "BOOM PLUS" and could cause confusion among the target consumers, who were mostly farmers with limited literacy.

Procedural Background:The plaintiff filed a suit for perm anent injunction against the defendant before the Madras High Court, seeking to restrain the defendant from infringing its registered trademark "BOOM PLUS" and from passing off its goods as those of the plaintiff. Along with the suit, the plaintiff filed two applications for interim injunction in O.A. Nos. 904 and 905 of 2004 in C.S. No. 862 of 2004.

The defendant filed a counter affidavit contesting the plaintiff's claims, asserting that the word "BOOM" was generic and commonly used in the agrochemical industry and that there was no similarity or likelihood of confusion between "BOOM PLUS" and "SUPER BOOM."

The learned Single Judge dismissed both applications for interim injunction on April 26, 2005, concluding that there was no visual or phonetic similarity between the two marks. Aggrieved by the order, the plaintiff preferred appeals before the Division Bench of the Madras High Court.

Issues Involved:Whether the use of "SUPER BOOM" by the defendant was deceptively similar to "BOOM PLUS" and amounted to passing off?

Submissions of Parties: The plaintiff contended that it had established substantial goodwill and reputation associated with its registered trademark "BOOM PLUS" since 1987. It argued that the defendant's use of "SUPER BOOM" was phonetically similar to "BOOM PLUS" and could cause confusion, particularly among the targeted consumers who were mostly illiterate farmers. The plaintiff also relied on its status as a prior user and owner of a registered trademark to assert exclusive rights under Section 28 of the Trademarks Act, 1999. It was further submitted that the addition of the word "SUPER" did not distinguish the defendant's mark from the plaintiff’s.

The defendant countered that "BOOM" was a common and descriptive term used widely in the industry and lacked distinctiveness. It argued that the defendant's mark "SUPER BOOM" was visually and structurally different from "BOOM PLUS," and the two marks would not cause any confusion. The defendant further submitted that it had been using "SUPER BOOM" in the market for several months and had its independent goodwill.

Discussion on Judgments Cited:The plaintiff relied heavily on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the Supreme Court emphasized that phonetic similarity is a significant factor in determining trademark infringement, particularly when the goods are intended for consumption by illiterate or semi-literate people. The Court held that in cases of medicinal products or products used by ordinary people, the test of likelihood of confusion must be applied stringently.The court also referred to Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980, where it was held that if there is clear imitation or deceptive similarity, further evidence of actual confusion is not required. Another precedent considered was Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, where the Supreme Court held that if prima facie facts support the claim of infringement or passing off, an injunction should ordinarily be granted to protect the plaintiff’s goodwill and proprietary rights.

Reasoning and Analysis of Judge: The Division Bench analyzed the phonetic similarity between "BOOM PLUS" and "SUPER BOOM" and found that the dominant part of both marks was "BOOM," which could lead to consumer confusion, especially among the rural population. The court emphasized that phonetic similarity alone could suffice to establish infringement and passing off when the target consumers were illiterate farmers.The court noted that the plaintiff’s mark "BOOM PLUS" was a registered trademark since 1987, whereas the defendant's use of "SUPER BOOM" was recent and unregistered. The court rejected the defendant’s argument that "BOOM" was a generic term, emphasizing that a registered trademark enjoys statutory protection and cannot be diluted merely by adding a prefix such as "SUPER."The court observed that the products of both parties were identical (fertilizers and flowering stimulants) and shared common marketing channels, increasing the likelihood of confusion. The court further invoked Section 29(5) of the Trademarks Act, 1999, which clarifies that using a registered trademark as part of a trade name or business name also constitutes infringement.The court held that the Single Judge erred in disregarding the phonetic and conceptual similarities between the marks and failed to appreciate the likelihood of deception.

Final Decision:The Division Bench allowed the appeals, set aside the order of the learned Single Judge, and granted interim injunctions in favor of the plaintiff. The defendant was restrained from using the trademark "SUPER BOOM" or any other deceptively similar mark until the disposal of the suit.

Law Settled in this Case:The judgment reaffirmed that phonetic similarity is a critical determinant in trademark infringement and passing off actions, particularly where the target consumers are from vulnerable sections of society such as farmers or the unlettered public.  The decision clarified that a registered trademark holder has statutory rights to prevent the use of deceptively similar marks, even if the defendant appends common adjectives like "SUPER" to the infringing mark.The judgment highlighted that Section 29(5) of the Trademarks Act, 1999, widens the scope of infringement to include situations where the registered trademark is used as part of the business name or trade name.The court emphasized that the balance of convenience and irreparable injury in trademark disputes must be weighed carefully, especially when prior user rights and consumer protection are involved.

Case Title: Devi Pesticides Private Ltd. Vs Shiv Agro Chemicals Industries

Date of Order: 18 April 2006

Case No.: C.S. No. 862 of 2004

Neutral Citation: (2006) 2 MLJ 834, 2006 (32) PTC 434 (MAD)

Name of Court: Madras High Court

Name of Judge: Justice P. Sathasivam, Justice J.A.K. Sampathkumar.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi