Products and Ideas (India) Pvt. Ltd. Vs. Nilkamal Limited

Prior User Rights and Parallel Imports

Introduction: The case of M/s Products and Ideas (India) Pvt. Ltd. v. Nilkamal Limited and Ors. before the High Court of Delhi engages with the fundamental principle that the sale of genuine goods by an authorized reseller or importer does not amount to trademark infringement. This principle is anchored in the doctrine of international exhaustion, which permits parallel imports and resale of genuine products sourced from the trademark owner. At the heart of this dispute lies the tension between the rights of a registered proprietor claiming exclusivity over a mark and the legitimate right of others to trade in genuine goods sourced from the same original manufacturer.

Factual Background:  The plaintiff, M/s Products and Ideas (India) Pvt. Ltd., is engaged in selling commercial induction cooktops in India under the mark ‘STELLADEXIN.’ The mark was originally adopted by Stella Industrial Co. Ltd., a Chinese company (defendant no. 5), which has been manufacturing electromagnetic household appliances since 1983. The plaintiff claimed to have obtained registrations for the ‘STELLADEXIN’ mark in classes 7, 9 and 11 in India with the consent of defendant no. 5. Initially, the plaintiff and defendant no. 5 entered into an Exclusive Agency Agreement in 2017, subsequently renewed, under which the plaintiff became the exclusive agent for distributing induction cookers under the brand ‘STELLA’ in India. The plaintiff asserted that it has built substantial goodwill in the mark ‘STELLADEXIN’ in India, with an annual turnover exceeding Rs. 16.27 crores for the year 2022-2023.

In June 2024, the plaintiff discovered that the defendants, including Nilkamal Limited (defendant no. 1) and Cambro-Nilkamal Pvt. Ltd. (defendant no. 2), were selling induction cooktops under the mark ‘STELLA,’ which it alleged was deceptively similar to its registered mark and amounted to infringement. Defendant no. 5, however, asserted it had prior rights in the marks ‘STELLA,’ ‘DEXIN,’ and ‘STELLADEXIN,’ and had been selling goods in India since at least 2013 through various distributors, including M/s Mittal International. The plaintiff, according to defendant no. 5, was merely one of the resellers.

Procedural Background:  The suit was filed by the plaintiff seeking a permanent injunction against the defendants to restrain them from selling products under the mark ‘STELLA’ or any mark deceptively similar to ‘STELLADEXIN.’ On 27 August 2024, the Court granted an ex parte ad interim injunction restraining defendants from using the impugned marks and appointed a Local Commissioner to seize goods bearing these marks. Defendant no. 5 later moved an application and was impleaded as a party to the proceedings. Defendant no. 2 also sought vacation of the injunction. After detailed hearings concluding on 13 May 2025, the judgment was reserved and ultimately pronounced on 1 July 2025.

Legal Issue:  The central issue before the Court was whether the sale of original products bearing the mark ‘STELLA’ by defendants, who sourced them directly from defendant no. 5, the prior adopter and manufacturer, amounted to trademark infringement against the plaintiff’s registered mark ‘STELLADEXIN.’?

Discussion on Judgments: The Court examined the scope of Section 30(3) of the Trade Marks Act, 1999, which recognizes the principle of international exhaustion, allowing the import and sale of genuine trademarked goods without infringing the trademark. Reliance was placed on the Division Bench decision in Kapil Wadhwa v. Samsung Electronics Co. Ltd., 2012:DHC:6136:DB, where it was held that the import and sale of genuine goods sourced from the trademark owner abroad does not amount to infringement under Indian law. The Court also referred to Seagate Technology LLC v. Daichi International, 2024:DHC:4193, which applied the same principle, confirming that sale of genuine products by an authorized importer or reseller falls outside the ambit of infringement.

The defendants argued that defendant no. 5 had prior user rights in the marks ‘STELLA,’ ‘DEXIN,’ and ‘STELLADEXIN,’ with documented sales in India since 2013, well before the plaintiff’s first claimed use or trademark registration. They contended that both the plaintiff and defendant no. 2 were merely resellers importing goods from the original manufacturer, defendant no. 5. Defendant no. 5 further argued that its sales were supported by invoices and documents, demonstrating continuous and prior use.

The plaintiff, on the other hand, argued that it had secured trademark registrations in India with defendant no. 5’s consent and that the defendants’ use of ‘STELLA’ was deceptively similar to its registered mark, thereby constituting infringement.

Reasoning and Analysis of the Judge: Court examined the documentary evidence and concluded that defendant no. 5 was indeed the prior adopter and user of the marks since at least 2013, predating the plaintiff’s use and trademark registrations. The Court noted that the plaintiff’s own first agreement with defendant no. 5 was in 2017 and the earliest invoice produced by the plaintiff was also from 2017. Thus, the prior user defence under Section 34 of the Trade Marks Act, 1999, was available to defendant no. 5.

The Court observed that the plaintiff was only one of several resellers authorized to sell defendant no. 5’s products in India. Similarly, defendant no. 2 had documented authorization from defendant no. 5 to import and sell these products. Since the goods being sold by defendant no. 2 and others were genuine and originated from the trademark owner itself, this sale did not constitute infringement.

The Court underscored the settled law that the import and sale of genuine goods by an authorized reseller or importer falls under the principle of international exhaustion recognized in Section 30(3). Consequently, the use of the marks ‘STELLA,’ ‘STELLADEXIN,’ and related marks by defendants did not amount to unauthorized use. The balance of convenience favored the defendants, as an injunction would effectively grant the plaintiff an unjustified monopoly over marks to which it had no exclusive right against the original manufacturer.

Final Decision:  The Court vacated the ex parte interim injunction granted earlier, holding that the plaintiff had failed to establish a prima facie case for restraint. The defendants were permitted to sell goods under the marks ‘STELLA,’ ‘STELLADEXIN,’ and related marks in India, being genuine products originating from defendant no. 5, the prior user and manufacturer.

Law Settled in This Case: The judgment reaffirmed that the sale of original goods in India by an authorized reseller or importer, when the goods are sourced from the genuine trademark owner or prior adopter, does not amount to infringement. The principle of international exhaustion under Section 30(3) protects such import and resale, and mere trademark registration in India by a reseller cannot override the rights of the original manufacturer and other authorized distributors.

Case Title: M/s Products and Ideas (India) Pvt. Ltd. v. Nilkamal Limited and Ors.:Date of Order: 1 July 2025:Case Number: CS(COMM) 715/2024:Neutral Citation: 2025:DHC:5052:Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice Amit Bansal

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

Major League Baseball Properties Inc Vs. Manish Vijay

Bad Faith and Prior User Rights in Trademark Rectification

Introduction:The dispute centers around the international reputation of the petitioner’s mark “BLUE JAYS,” its spillover into India, and the respondent’s adoption of a deceptively similar mark “BLUE-JAY.” The judgment critically examines the interplay between prior user rights, international goodwill, and dishonest adoption, reaffirming established principles that protect well-known marks against misappropriation through bad faith registration.

Factual Background: The petitioner, Major League Baseball Properties Inc., is an intellectual property holding company incorporated in New York, USA, managing trademarks of Major League Baseball (MLB) and its clubs. Since 1976, the petitioner has used the trademark “BLUE JAYS” for the Toronto-based MLB franchise. This mark is registered in various jurisdictions worldwide and used extensively on merchandise, team uniforms, and promotional material. In India, the petitioner filed applications for the “BLUE JAYS” marks in several classes starting as early as 1983, with continued presence through its official websites and broadcast of MLB games accessible in India since the late 1990s.

The respondents, trading as M/s PMS Creations, adopted the mark “BLUE-JAY” in 1998 for readymade garments in Class 25. Their initial explanation for choosing the mark was its association with the North American bird. Later, during rectification proceedings, the respondents advanced a new narrative that the mark was inspired by a resort in Panipat, Haryana, frequently visited by a family member.

Procedural Background:Upon learning of the respondents’ trademark application published in 2003, the petitioner filed a notice of opposition in 2004. However, due to a delay in filing evidence, the Deputy Registrar of Trade Marks deemed the opposition abandoned by an order dated October 8, 2015. The petitioner appealed to the Intellectual Property Appellate Board (IPAB). Following the abolition of the IPAB, the matter was transferred to the High Court of Delhi and numbered as C.A.(COMM.IPD-TM) 152/2022. Subsequently, by order dated September 25, 2023, the High Court permitted the petitioner to pursue rectification of the impugned mark by filing a cancellation petition under Section 57 of the Trade Marks Act, 1999. This led to the present petition challenging the registration of “BLUE-JAY.”

Legal Issue: The principal legal issue before the Court was whether the respondents’ adoption of the mark “BLUE-JAY” was bona fide or tainted by bad faith, and whether such bad faith adoption justified rectification and removal of the mark from the Register under Section 57 of the Trade Marks Act, 1999?

Discussion on Judgments: The petitioner cited Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624, and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, to establish that international reputation and prior worldwide use of a trademark can override local registration if there is sufficient spillover into India. It relied on B.K. Engineering v. Ubhi Enterprises, AIR 1985 Delhi 210, and Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11, to demonstrate that deceptive similarity can cause confusion among consumers.

To highlight the element of bad faith, the petitioner referred to BPI Sports LLC v. Saurabh Gulati & Anr., 2023:DHC:2920, Kia Wang v. The Registrar of Trade Marks & Anr., 2023:DHC:6684, and Abdul Rasul Nurallah Virjee and Jalalluddin Nurallah v. Regal Footwear, 2023 SCC OnLine Bom 10. These cases collectively underscore that adoption of a mark without honest intention or to ride on the reputation of another constitutes bad faith.

The respondents, in contrast, cited Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd., (2018) 2 SCC 1, arguing the petitioner lacked spillover reputation in India and had no valid registration in Class 25. They also cited Trustees of Princeton University v. Vagdevi Educational Society, 2023:DHC:6420, and Pioneer Nuts & Bolts v. Goodwill Enterprises, ILR (2010) 1 Delhi 738, to assert the importance of proving actual reputation and usage in the Indian market.

The petitioner in rejoinder emphasized the Supreme Court’s ruling in Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., (2016) 2 SCC 672, reaffirming that the right of a prior user, including a worldwide prior user, is superior to that of a registered proprietor who is a subsequent user.

Reasoning and Analysis of the Judge: Court observed that the respondents initially stated in their counter statement before the Trade Marks Registry that the mark “BLUE-JAY” was inspired by the North American bird. However, during rectification proceedings, they introduced an entirely new explanation linking the mark to a local resort, which the Court found inconsistent and an afterthought. The Court held that adoption tainted by dishonesty cannot be legitimized by subsequent use or volume of sales.

The Judge recognized the petitioner as the undisputed prior worldwide user of the “BLUE JAYS” mark, with presence in India through online platforms and media coverage since the mid-1990s. The respondents’ adoption came 22 years later, with no cogent evidence explaining the choice of a nearly identical mark.

Citing Neon Laboratories Ltd., Milmet Oftho Industries, and Whirlpool, the Court reaffirmed that the rights of a prior user override those of a subsequent user, even if the latter has obtained registration. The Judge highlighted that bad faith, as explained in BPI Sports LLC, consists of unfair practices lacking honest intention, and when the purpose of adopting a mark is found dubious, registration must be canceled.

Final Decision: The Court concluded that the respondents’ adoption of “BLUE-JAY” was not bona fide but rather aimed to exploit the petitioner’s reputation. The Court directed the Registrar of Trade Marks to cancel and remove the registration of “BLUE-JAY” (application no.815236 in Class 25) from the Register of Trade Marks. The petition was accordingly allowed without costs.

Law Settled in This Case:  This case settles that even absent a valid registration in the same class, a prior adopter and worldwide prior user with spillover reputation in India can succeed in rectification proceedings if the subsequent adopter’s mark is deceptively similar and tainted by bad faith. The judgment reinforces that bad faith, evident from inconsistent explanations or dishonest intentions, is fatal to maintaining a trademark registration.

Case Title: Major League Baseball Properties Inc Vs. Manish Vijay & Ors.:Date of Order: July 01, 2025: Case Number: C.O. (COMM.IPD-TM) 279/2023: Neutral Citation: 2025:DHC:5103: Name of Court: High Court of Delhi at New Delhi:Name of Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

Crocs Inc. USA Vs Bata India Ltd.-C Hari Shankar

Doctrine of Passing Off in relation to registered Design

Introduction: This case revolves around the pivotal question of whether a passing off action can be sustained in relation to a design that had earlier been protected under the Designs Act, 2000 but whose registration has since expired. Crocs Inc. USA initiated suits against multiple footwear companies alleging passing off of its distinctive footwear shape, asserting that its design had acquired independent goodwill and recognition in the minds of consumers. The learned Single Judge dismissed the suits on the ground that the shape in question was previously a registered design, and therefore, to claim trade dress rights in it, the plaintiff had to establish “something extra” beyond the registered design. The Division Bench of the Delhi High Court examined the legal tenability of this reasoning and reversed the Single Judge's decision, settling critical principles of intellectual property law.

Factual Background: Crocs Inc. USA was the registered proprietor of Design No. 197685 dated 28 May 2004 under the Designs Act, 2000. The design related to a specific configuration of footwear, which Crocs claimed had become globally recognized as a source identifier. Upon expiry of the design’s statutory protection, Crocs filed multiple suits against companies such as Bata India, Liberty Shoes, Relaxo Footwear, Aqualite, Bioworld, and Action Shoes. The grievance of Crocs was that these defendants had copied the unique configuration of its footwear, thereby misrepresenting their goods as those of Crocs, amounting to common law passing off. Crocs asserted that even though the statutory protection under the Designs Act had expired, the shape had, through extensive use and market presence, attained independent goodwill protectable under trademark law as trade dress.

Procedural Background: Crocs instituted a series of suits for passing off before the Delhi High Court. The suits were: CS (Comm) 569/2017, 1415/2016, 903/2018, 906/2016, 571/2017, and 905/2016. The learned Single Judge, by a common judgment dated 18 February 2019, dismissed all suits as not maintainable. The Judge held that Crocs had failed to show any features beyond the registered design to support its claim of trade dress. Consequently, Crocs preferred Regular First Appeals (OS) (Comm) 22 to 27 of 2019 challenging the dismissal. Additionally, a related matter involving Dart Industries Inc. was also clubbed, namely FAO (OS) (Comm) 358/2019. 

Legal Issue: The central legal issue was whether a passing off action based on trade dress could be maintained after the expiry of statutory design protection, and specifically, whether the claimant was required to demonstrate elements “in addition” to the registered design to sustain such a claim.

Discussion on Judgments:The learned Single Judge relied on the Five-Judge Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 256 (2019) DLT 1 (FB), and interpreted it to mean that once a shape or configuration was registered as a design, it could not later be protected as a trademark unless there was “something extra” beyond the registered design. The Single Judge also considered the Full Bench ruling in Mohan Lal v. Sona Paint & Hardware, 200 (2013) DLT 322 (FB), to support the view that passing off and design infringement are conceptually distinct and should be based on different grounds.

The Division Bench, however, undertook an in-depth examination of both Mohan Lal and Carlsberg. It observed that the majority in Mohan Lal had permitted a passing off action even in respect of a product whose design was previously registered under the Designs Act, so long as goodwill, misrepresentation, and likelihood of confusion were established. The Bench clarified that Carlsberg did not override Mohan Lal, and the proposition requiring “something extra” beyond the registered design was not an accurate representation of law. The Court emphasized that once design protection lapses, common law remedies are not extinguished, and trade dress rights can be enforced based on consumer association and market goodwill.

Reasoning and Analysis of the Judge: The Division Bench found that the Single Judge had misapplied the principle laid down in Mohan Lal and had read too much into certain paragraphs of Carlsberg which were merely explanatory. The Bench held that passing off is an independent tort that safeguards goodwill and prevents consumer deception, irrespective of prior design registration. The fact that the design was once protected under the Designs Act does not bar the claimant from asserting trade dress rights after its expiry.

The Court clarified that the requirement of proving “something extra” beyond the registered design was not a valid precondition to sustain a passing off action. What matters is whether the shape or configuration, regardless of its history under design law, has come to denote the source of the product in the minds of the public. If the public associates the shape exclusively with Crocs, that is sufficient to establish trade dress. The Court also underscored the principle that intellectual property regimes under the Designs Act and Trademark Law can operate sequentially, and not necessarily exclusively, especially once design rights lapse.

Final Decision:  The Division Bench allowed all the appeals filed by Crocs. It set aside the judgment of the learned Single Judge dated 18 February 2019 and held that the passing off suits were maintainable. The Court remanded the matters back for adjudication on merits in accordance with law.

Law Settled in This Case:  The law settled in this case is that a trade dress claim can be validly founded on a design previously registered under the Designs Act, once the statutory design protection has lapsed. The requirement of demonstrating “something extra” beyond the registered design is not a legal necessity. A shape that has acquired goodwill and functions as a source identifier may be protected under the common law of passing off, even if it had earlier been registered as a design.

Case Title: Crocs Inc. USA Vs. Bata India Ltd.: Date of Order: 1 July 2025:Case Numbers: RFA (OS) (Comm) 22/2019, 23/2019, 24/2019, 25/2019, 26/2019, 27/2019; FAO (OS) (Comm) 358/2019: Neutral Citation: 2025:DHC:5037-DB:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

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

Media Monks Multimedia Holding Vs. Pachala Murali Krishna

Evaluating Trans-Border Reputation and Bad Faith Adoption in Indian Trademark Law

Introduction:This case pertains to a dispute over trademark rights between an internationally reputed digital advertising company and an Indian entity claiming local registration. It addresses critical issues of prior use, trans-border reputation, deceptive similarity, and bad faith adoption in the context of rectification petitions filed under the Trade Marks Act, 1999. The adjudication undertaken by the Hon’ble High Court of Madras serves as a significant pronouncement in trademark law jurisprudence, especially in evaluating conflicting claims of domestic registration and international goodwill.

Factual Background:The petitioner, Media Monks Multimedia Holding B.V., a digital media and advertising company founded in 2001 and based in the Netherlands, has been using the trademark “MEDIAMONKS” globally as a domain name, trade name, and service identifier. The company claimed to have a presence in India since 2015 and presented evidence of global registrations, including those under the Madrid Protocol. The petitioner alleged that its mark was inherently distinctive and had acquired a trans-border reputation owing to extensive use and international recognition.

The first respondent, Pachala Murali Krishna, registered the marks “MEDIA MONK” and “MEDIA MONK LABEL” in India in 2009 under Classes 09, 16, and 35. The respondent asserted that the term “Media Monk” was derived from his personal moniker and was honestly adopted for his advertising business. The petitioner contended that these registrations were deceptive, confusingly similar, and made in bad faith, warranting rectification under Sections 47, 57, and 125 of the Trade Marks Act, 1999.

Procedural Background:The petitioner initiated six rectification petitions under various trademark classes, seeking cancellation of the respondent’s registrations. The matter proceeded before the High Court of Madras after issues were framed by the Court on 08 December 2023. The parties led evidence through affidavits, cross-examinations, and documentary records, with both oral and documentary evidence forming a substantial part of the trial. After hearing counsels and evaluating pleadings, the Court reserved judgment on 21 April 2025 and pronounced its decision on 26 June 2025.

Legal Issue:The primary legal issues involved were whether the petitioner was the prior adopter and user of the mark “MEDIAMONKS” globally and in India, whether the marks registered by the respondent were deceptively similar, whether they were adopted in bad faith, and whether the petitioner had acquiesced in the respondent’s use of the marks, thereby barring rectification?.

Discussion on Judgments:The petitioner relied heavily on Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624, where the Supreme Court held that the first user of a trademark in the world market may be entitled to protection even if not first used in India. This supported the petitioner’s case that global goodwill deserves legal recognition in India.

In Hardie Trading Ltd. and Another v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, the Supreme Court held that proposed-to-be-used applications could establish intention to use and that locus under Section 57 should be liberally interpreted to preserve the purity of the register.

The petitioner also cited Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, where the Court acknowledged that even domain names could acquire the status of trademarks if associated with business goodwill.

To substantiate the relevance of trans-border reputation, the petitioner placed reliance on multiple judgments including Laxmikant V. Patel v. Chetanbhat Shah, (2002) 24 PTC 1 (SC), Austin Nichols & Co. v. Arvind Behl, 2005 SCC OnLine Del 1276, and Rolex SA v. Alex Jewellary Pvt. Ltd., 2014 SCC OnLine Del 1619.

Conversely, the respondent cited Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, to argue that the territoriality principle limits the application of trans-border reputation unless there is concrete evidence of prior reputation in India.

Reasoning and Analysis of the Judge:The Court evaluated the petitioner’s international presence and recognition as evidenced by registrations, domain use since 2001, and participation in global projects. It noted that the mark “MEDIAMONKS” was coined and distinctive, comprising an unusual combination of generic English terms.

Upon comparing the marks, the Court found “MEDIA MONK” and “MEDIA MONK LABEL” deceptively similar to “MEDIAMONKS”, both phonetically and conceptually. The judge adopted the test of an average consumer with imperfect recollection and held that the essential features of the rival marks overlapped.

The Court also found that the first respondent had knowledge of the petitioner’s business and domain presence. Evidence from the respondent’s cross-examination showed familiarity with digital media platforms and awareness of global market players. The explanation given by the respondent—that he was called “Media Monk” by his peers—was deemed unconvincing and a post-rationalisation. The judge held that the adoption of the mark by the respondent was not bona fide but tainted with bad faith.

In addressing the argument of acquiescence under Section 33, the Court ruled that mere constructive notice through the trademark journal was insufficient to establish the petitioner’s knowledge. It also noted that the bad faith adoption excluded the application of Section 33 altogether. Delay alone, without acquiescence, could not defeat the rectification claim as per settled law.

Final Decision:The High Court allowed all six rectification petitions and directed the Registrar of Trademarks to cancel the entries relating to Trade Mark Nos. 1846455, 1846456, 1846457, 1846458, 1846459, and 1846460. The Court granted 60 days from the date of the order for compliance. No order as to costs was passed.

Law Settled in This Case:This judgment reaffirms the principle that prior global use of a trademark, accompanied by trans-border reputation and distinctive character, can justify rectification of later Indian registrations made in bad faith. It confirms that a composite test of similarity, business overlap, and consumer perception governs deceptive similarity. Further, the Court clarified that bad faith adoption nullifies defenses under Section 33 of the Trade Marks Act, and delay alone cannot bar rectification when public interest in maintaining register purity is at stake.

Case Title: M/s Media Monks Multimedia Holding B.V. v. M/s Pachala Murali Krishna and Another:Date of Order: 26 June 2025:Case Number: (T)OP(TM) Nos. 368 to 370, 460, 461 & 464 of 2023:Neutral Citation: 2025:MHC:1473:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

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

Selle Royal Group Vs. Ace Footmark (P) Ltd.

Case Title: Selle Royal Group Vs. Ace Footmark (P) Ltd.:Date of Order: 28 May 2025:Case Number: C.O. (COMM.IPD-TM) 196/2022:Neutral Citation: 2025:DHC:4526:Name of Court: High Court of Delhi:Name of Judge: Hon’ble Mr. Justice Saurabh Banerjee

Selle Royal Group, an Italian bicycle accessories manufacturer, filed a petition seeking cancellation of the trademark "FIZIFREAK" registered by Ace Footmark, alleging it was deceptively similar to their well-known mark "fi’zi:k", used since 1995 globally and in India since 2004, and also similar to their European trademark "FREE:K".

The petition originated before the Intellectual Property Appellate Board and was transferred to the High Court after the Board’s abolition. The respondent's mark "FIZIFREAK" was registered in 2017 for footwear but expired in 2024 and was not renewed. The respondent did not appear before the Court despite service of notice, and was proceeded against ex parte.

The central dispute was whether "FIZIFREAK" was deceptively similar to the petitioner’s coined and reputed marks "fi’zi:k" and "FREE:K", amounting to passing off, and whether it should be removed from the Register of Trademarks.

The Court noted the petitioner’s prior and global use of the mark, its reputation in India since 2004, and the phonetic and structural similarity between the marks. It found the respondent’s conduct to be mala fide and noted their history of attempting to register similar marks to well-known brands.

The Court directed the cancellation of the trademark "FIZIFREAK" from the Register of Trademarks and held that its adoption was dishonest and intended to exploit the goodwill of the petitioner’s marks.

Anugraha Castings Vs Anugraha Valve Castings Limited

Case Title: Anugraha Castings Vs Anugraha Valve Castings Limited:Date of Order: 28 January 2025:Case Number: C.M.P. No. 1969 of 2025 :Name of Court: High Court of Judicature at Madras:Name of Judge: Hon’ble Chief Justice K.R. Shriram and Hon’ble Mr. Justice Senthilkumar Ramamoorthy

The respondent, Anugraha Valve Castings Limited, filed a suit against Anugraha Castings and another for permanent injunction and other reliefs, alleging unauthorized use of a deceptively similar trademark and trade name in the same line of business. The Commercial Court at Coimbatore passed an ex parte ad-interim injunction on 20 January 2025, restraining the appellants from using the word "Anugraha" in their business. The appellants challenged the order before the High Court.

The dispute involved the legality and necessity of the ex parte order, particularly in light of the respondent's prior knowledge of the appellants' use of the name since 2018 and the absence of any pressing urgency.

The High Court discussed that the trial court had exceeded the relief sought and that no emergent situation was demonstrated to justify an ex parte injunction. It referred to the Supreme Court’s judgment in Maria Margarida Sequeira Fernandes v. Erasmo Jack De Sequeira, (2012) 5 SCC 370, reiterating that ex parte orders must be passed only in cases of real urgency with specific justification, and after due consideration of pleadings and documents.

The Court stayed the impugned ex parte injunction, holding that it was harsh, procedurally unjustified, and passed without sufficient cause or urgency, causing undue hardship to the appellants.

IndiaMART Intermesh Ltd. Vs. PUMA SE

Introduction: The case of IndiaMART InterMESH Ltd. Vs. Puma SE addresses the critical interface between trademark protection under the Trade Marks Act, 1999 and intermediary liability under the Information Technology Act, 2000. The principal dispute revolved around whether the inclusion of a registered trademark in the drop-down menu for product listings on an online platform amounts to infringement and if the operator of such a platform can seek immunity under the safe harbour provisions of the IT Act. This case examines the obligations of digital intermediaries when enabling product descriptions that involve reputed trademarks and clarifies the applicability of safe harbour protection in such contexts.

Factual Background: Puma SE, a reputed global manufacturer of sportswear and accessories, owns several registered trademarks in India, including the word mark “PUMA” and various device marks. Puma operates in India through its subsidiary Puma Sports India Pvt. Ltd. In 2021, Puma noticed listings on the IndiaMART platform offering counterfeit goods bearing its trademark. IndiaMART InterMESH Ltd., the appellant, is the operator of <www.indiamart.com>, an online B2B platform that enables businesses to list products and services for sale. As part of its seller registration process, IndiaMART offers drop-down menus that allow sellers to choose brand names, including “PUMA,” to describe their goods.

Puma contended that counterfeiters were exploiting this drop-down feature to misrepresent fake products as genuine Puma merchandise. It argued that IndiaMART, by allowing such use of the mark “PUMA” in its system, was facilitating and abetting trademark infringement and passing off.

Procedural Background: Puma SE instituted a suit for permanent injunction, damages, and other reliefs before the Delhi High Court, seeking to restrain IndiaMART from using the mark “PUMA” in any manner, including in its drop-down menu for seller listings. The Single Judge of the Delhi High Court passed an order on 03.01.2024 granting interim relief in favour of Puma, holding that IndiaMART's use of “PUMA” in the drop-down menu constituted trademark infringement under Sections 29(1), (2), and (4) of the Trade Marks Act. The Single Judge also held that IndiaMART could not claim protection under Section 79 of the IT Act. Aggrieved by this order, IndiaMART filed an intra-court appeal before the Division Bench of the High Court of Delhi.

Legal Issue: The principal legal issue was whether IndiaMART’s inclusion of the trademark “PUMA” in a drop-down menu for product description constituted “use” of the mark under the Trade Marks Act, 1999, and if so, whether such use amounted to trademark infringement? A related issue was whether IndiaMART, as an intermediary, could claim exemption from liability under Section 79 of the Information Technology Act, 2000?

Discussion on Judgments

The Single Judge heavily relied on the Division Bench decision in Google LLC v. DRS Logistics (P) Ltd. & Ors., 2023:DHC:5615-DB. In that case, the use of registered trademarks as keywords in Google's advertising platform was held to constitute “use” under the Trade Marks Act, and it was held that even backend use (not visible to consumers) could amount to trademark use. This precedent was invoked to support the proposition that IndiaMART’s use of “PUMA” in the drop-down menu amounted to “use in advertising” under Section 29(6)(d) of the Trade Marks Act.

The case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Ors., (2022) 5 SCC 1 was cited by IndiaMART to argue that Section 29(4) of the Trade Marks Act would not apply when the infringing use is for similar goods. The Supreme Court in that case held that Section 29(4) applies only when the infringing goods are dissimilar, and the three cumulative conditions under that section must be satisfied.

Puma also relied on Lifestyle Equities CV & Anr. v. Amazon Technologies Inc. & Ors., 2025:DHC:1231 to demonstrate how online platforms may be held accountable for infringement if they exercise control or benefit from listings that infringe trademarks. However, the Division Bench distinguished this judgment on facts, noting that in Amazon Technologies, the platform directly controlled branding and had commercial ties with the infringing seller, unlike IndiaMART’s hands-off listing process.

Reasoning and Analysis of the Judge: The Division Bench rejected the reasoning of the Single Judge and found that IndiaMART’s platform functioned more as a listing and discovery service rather than an e-commerce website facilitating direct sales. It observed that IndiaMART did not consummate transactions and acted merely as a conduit for third-party listings. The drop-down menu was a user-interface feature aimed at improving product description accuracy and searchability, not an active representation of the goods by IndiaMART.

The Court accepted IndiaMART’s contention that the drop-down feature was intended to reduce typographical errors and facilitate precise classification. It further held that such inclusion of “PUMA” by IndiaMART, without any direct involvement in the sale or advertisement of products, did not constitute use “as a trademark” by IndiaMART. Instead, the seller using the term to describe goods might be infringing, depending on whether the goods were genuine or counterfeit.

The Court emphasized the importance of Section 30(1) of the Trade Marks Act, which allows descriptive use of a trademark for identification purposes, provided it is in accordance with honest practices and does not take unfair advantage. IndiaMART’s use was found to be in line with this defence.

On the question of intermediary liability, the Court examined Section 79 of the IT Act and held that IndiaMART had not abetted, conspired, or aided any unlawful act as required under Section 79(3)(a). The Court found that IndiaMART had standard grievance redressal and takedown procedures and acted on takedown requests, which showed compliance with its obligations under the IT Act and Rules. Therefore, it was entitled to safe harbour protection.

Final Decision: The Division Bench set aside the order of the Single Judge, holding that IndiaMART’s provision of a drop-down menu with the term “PUMA” did not amount to trademark infringement. The Court ruled that IndiaMART did not use the mark “PUMA” as a trademark and that it was not liable for infringement under Sections 29(1), (2), or (4) of the Trade Marks Act. It further held that IndiaMART was protected under Section 79 of the IT Act as an intermediary, having complied with the requirements of due diligence and takedown.

Law Settled in This Case: This case settles the position that the inclusion of a registered trademark as an option in a drop-down menu on an online listing platform does not by itself constitute trademark infringement. It affirms that such use, if intended solely for accurate classification and discovery, falls within the permissible scope under Section 30(1) of the Trade Marks Act. Furthermore, it reinforces that an intermediary that provides listing services and acts upon takedown requests cannot be held liable for third-party infringement, provided it does not exercise editorial control or derive benefit from infringing content. The decision also distinguishes the scope of “use” under the Trade Marks Act from backend functionalities of intermediary platforms and emphasizes the need to contextualize liability based on the nature of the intermediary’s role.

Case Title: IndiaMART Intermesh Ltd. Vs. PUMA SE Date of Order: June 2, 2025 Case Number: FAO(OS)(COMM) 6/2024 Neutral Citation: 2025:DHC: Name of Court: High Court of Delhi Name of Judge: Hon'ble Mr. Justice Vibhu Bakru and Hon'ble Ms. Tara Vitasta Ganju

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

Apex Laboratories Pvt. Ltd. Vs Knoll Healthcare Pvt Ltd

There is difference between a trademark being common on the register and common to trade

Introduction:  This case explores the nuanced distinction in trademark law between a mark being merely common on the register and truly common in actual trade. The High Court of Madras, in deciding the dispute between Apex Laboratories’ mark “ZINCOVIT” and Knoll Healthcare’s mark “ZINOLVITA,” examined whether the plaintiff’s mark, although derived from descriptive elements, had acquired distinctiveness in real-world commerce that merited protection, despite the presence of similar marks on the register.

Factual Background: Apex Laboratories coined and adopted the trademark “ZINCOVIT” in 1988 for vitamin and mineral supplements, combining the words zinc and vitamins. The mark was registered under registration number 487453 and had been used continuously and extensively across India for decades, supported by high sales turnover and strong brand recall. The plaintiff also obtained copyright registration over the artistic work of the product’s packaging. In or about 2014, the defendant Knoll Healthcare adopted the mark “ZINOLVITA,” which also combined references to zinc and vitamins, and initially used packaging closely resembling that of the plaintiff. Apex Laboratories alleged that this created confusion among consumers and amounted to infringement and passing off, particularly given the similar phonetic structure and identical market segment.

Procedural Background:Apex Laboratories instituted C.S. No.355 of 2020 seeking a permanent injunction restraining the defendant from infringing its registered trademark and copyright, along with rectification proceedings O.P.(TM) No.1 of 2023 to remove “ZINOLVITA” from the register. The defendant filed O.P.(TM) No.2 of 2023 seeking to impose a limitation on the plaintiff’s mark by disclaiming exclusivity over the prefix “ZIN,” arguing it was descriptive and common in the trade.

Legal Issue:The central legal issue was whether “ZINCOVIT,” despite containing descriptive elements, had through use and reputation acquired distinctiveness that warranted protection against “ZINOLVITA,” and whether the defendant could defeat the infringement claim by arguing that similar marks were common on the register, even if not common in active trade?

Discussion on Judgments:  The plaintiff cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, to stress the stricter standard for medicinal products, where even small similarities can deceive due to public health implications. The plaintiff also referred to Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd., (2014) 57 PTC 617 (Bom), to assert that long-standing and exclusive use can make a coined mark distinctive, even if it is partly descriptive.

The defendant relied on Marico Ltd. v. Agro Tech Foods Ltd., 2010 SCC OnLine Bom 470, arguing that common descriptive elements cannot be monopolized. The defendant also invoked J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215, where the Supreme Court held that words which are essentially descriptive of the product’s quality or content are generally ineligible for exclusive rights. Both parties discussed Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, on the classic test of deceptive similarity, and Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, emphasizing phonetic and visual similarity.

The Court in its discussion highlighted that merely pointing to the presence of similar marks on the register is insufficient unless it is shown that such marks are actively used in the market and recognized by consumers, as the real question is whether the mark is common in actual trade, not just on paper.

Reasoning and Analysis of the Judge: The court carefully analyzed evidence of the plaintiff’s extensive and continuous use of “ZINCOVIT” since 1988, substantial sales figures, and the market’s association of the mark with the plaintiff’s goods. The Court distinguished between a mark being common on the register—which might only reflect the presence of other registrations that are dormant or unused—and being genuinely common in the trade, meaning widespread and active use by multiple traders leading to dilution of distinctiveness. The defendant failed to show evidence that marks similar to “ZINCOVIT” were widely used in the market and recognized by consumers, rather than being merely registered.

The Court observed that the defendant’s adoption of “ZINOLVITA,” which not only reproduced similar phonetic elements but also initially copied the plaintiff’s packaging design, suggested a deliberate intent to trade on the plaintiff’s goodwill. The judge held that “ZINCOVIT” had acquired distinctiveness as a composite mark through decades of use, and that the defendant’s arguments based on descriptiveness and presence of similar marks on the register could not override evidence of actual consumer association with the plaintiff’s mark.

Final Decision:The Court decreed the suit in favour of Apex Laboratories by granting a permanent injunction restraining the defendant from using “ZINOLVITA” or any deceptively similar mark. It also directed removal of the defendant’s mark from the trademark register, dismissed the defendant’s rectification plea seeking to disclaim exclusivity over “ZIN,” and awarded costs to the plaintiff. 

Law Settled in This Case:The judgment reaffirmed that to weaken a claim of infringement, it is not enough for a defendant to show that similar marks are common on the register; it must be proved that such marks are genuinely common in trade and actively used in the marketplace. The Court clarified that even descriptive or partially descriptive marks can acquire distinctiveness through long, exclusive, and extensive use, making them protectable under trademark law.

Case Title: Apex Laboratories Pvt. Ltd. Vs Knoll Healthcare Pvt Ltd.:Date of Order: 19 June 2025:Case Number: C.S. No.355 of 2020 :Neutral Citation: 2025:MHC:1441:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon'ble Justice Senthilkumar Ramamoorthy

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

Ivy Entertainment Private Limited Vs. HR Pictures

Introduction:   In the bustling world of Indian cinema, where creativity meets commerce, the High Court of Delhi’s judgment on March 27, 2025, in the case of Ivy Entertainment Private Limited versus HR Pictures stands as a testament to the delicate balance between contractual obligations and commercial imperatives. This dispute, revolving around the Tamil film "Veera Deera Sooran," pits a plaintiff seeking to protect its assigned rights against a defendant eager to capitalize on a theatrical release. With stakes running high—Rs. 44 crores already invested and a looming release date of March 27, 2025—the case unfurls a narrative of breached agreements, last-minute legal maneuvers, and judicial intervention.

Detailed Factual Background: The saga begins with a Film Assignment Agreement dated June 19, 2024, between Ivy Entertainment Private Limited (the plaintiff) and HR Pictures (the defendant). The agreement assigned Ivy Entertainment the sole and exclusive rights to "Veera Deera Sooran" in Hindi and North Indian languages, including theatrical, digital, and online rights, in perpetuity, for a consideration of Rs. 51 crores. HR Pictures retained theatrical and linear rights in Tamil and other languages for release in South Indian states (Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Telangana, and Pondicherry) and overseas (except Nepal). The payment was structured in five tranches, with Ivy Entertainment having paid Rs. 44 crores—approximately 40% of the film’s production cost—leaving Rs. 7 crores outstanding, contingent on HR Pictures delivering specified materials. The agreement stipulated that "Before Release Materials" and "Theatrical Release Materials," including the Central Board of Film Certification (CBFC) certificate, be provided to Ivy Entertainment at least 14 days before the release date, a condition deemed the "essence" of the contract. On January 22, 2025, HR Pictures announced a theatrical release on March 27, 2025, via social media, a date Ivy Entertainment later contested as tentative. Despite emails from Ivy Entertainment on March 20 and 21, 2025, urging deferment due to undelivered materials, HR Pictures pressed ahead, securing the CBFC certificate only on March 22, 2025, just five days before the planned release. This set the stage for a legal showdown as Ivy Entertainment sought to protect its investment and exploitation rights.

Detailed Procedural Background: The legal battle commenced with Ivy Entertainment filing CS(COMM) 264/2025 before the High Court of Delhi on March 23, 2025, seeking specific performance of the Assignment Agreement, damages, and rendition of accounts. Alongside the suit, Ivy Entertainment filed I.A. 7657/2025 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), requesting an interim injunction to halt the film’s release on March 27, 2025, and a direction for HR Pictures to render accounts of its distribution contracts. An advance copy was served on HR Pictures on March 21, 2025. The matter was first listed on March 25, 2025, but HR Pictures did not appear, prompting the court to direct re-service and adjourn to March 26, 2025. On March 26, both parties engaged in settlement talks, which failed, and the court heard arguments.

Issues Involved in the Case: The crux of the case revolved around whether Ivy Entertainment was entitled to an interim injunction to defer the film’s release. This hinged on two key questions: Did HR Pictures breach the Assignment Agreement by failing to deliver the requisite materials 14 days prior to March 27, 2025, and by fixing the release date without Ivy Entertainment’s written approval? If so, did Ivy Entertainment establish a prima facie case, balance of convenience, and irreparable injury to justify injunctive relief, outweighing HR Pictures’ claims of financial loss and public expectation?

Detailed Submission of Parties: Ivy Entertainment, argued that HR Pictures’ unilateral decision to release the film on March 27, 2025, violated the Assignment Agreement. He cited Article 1.6.1.3, requiring written approval for the release date, and Articles 1.9, 1.12, and 1.24, mandating delivery of materials 14 days prior, which HR Pictures failed to provide, with the CBFC certificate obtained only on March 22, 2025. Wadhwa emphasized that timely delivery was the agreement’s essence (Articles 2.15 and 4.1), and its breach crippled Ivy Entertainment’s ability to exploit its rights, particularly digital rights critical for negotiation before theatrical release. He referenced Article 1.23, allowing a grace period until April 30, 2025, and Article 18, entitling Ivy Entertainment to injunctive relief. Wadhwa offered to deposit the Rs. 7 crores balance within 24 hours, seeking a four-week deferment, and argued that damages were inadequate under the amended Specific Relief Act, 1963, citing precedents to bolster his case. HR Pictures contended that Ivy Entertainment suppressed material facts, including a February 4, 2025 email and its failure to request materials, suggesting its real issue was an inability to monetize digital rights—a condition absent from the agreement. Kamat asserted HR Pictures’ exclusive South Indian release rights and argued the March 27 date, known since January, was within the March 31, 2025 outer limit (Article 1.23), negating Article 1.6.1.3’s applicability. He highlighted 15,000 pre-sold tickets and distributor losses, claiming Ivy Entertainment’s eleventh-hour approach disentitled it to relief, and quantified damages at Rs. 5 crores as an adequate remedy.

Detailed Discussion on Judgments Cited by Parties and Their Context: Ivy Entertainment relied on Global Music Junction Pvt. Ltd. v. Shatrughan Kumar Aka Khesari Lal Yadav and Others (2023 SCC OnLine Del 5479), where the Delhi High Court Division Bench upheld specific performance in a similar rights assignment dispute, emphasizing that damages are inadequate when losses are hard to quantify (paras 29, 38, 39, 42, 86, 87). The court linked this to the amended Section 14 of the Specific Relief Act, 1963, restricting bars to specific performance. Ivy Entertainment also cited Katta Sujatha Reddy and Another v. Siddamsetty Infra Projects Private Limited ((2023) 1 SCC 355), where the Supreme BID Court rejected damages as an alternative to specific performance unless statutorily barred (paras 43, 51, 54), reinforcing its claim for injunctive relief under Article 18. HR Pictures countered with Warner Bros. Entertainment Inc. and Another v. Harinder Kohli and Others (ILR (2009) I Delhi 722), where a Coordinate Bench denied an injunction in a trademark case due to the plaintiff’s delay, finding no prima facie infringement and balancing convenience against the defendant (para 34). They also cited Reliance Big Entertainment Pvt. Ltd. v. Percept Limited and Another (2009 (108) DRJ 393), where the court refused an injunction when the plaintiff sought to rescind a contract for fraud, not enforce it (para 35), arguing Ivy Entertainment’s late action mirrored such disentitlement. The court additionally referenced Dalpat Kumar v. Prahlad Singh (AIR 1993 SC 276), which outlined the trinity test for interim injunctions, emphasizing protection against irreparable injury pending trial.

Detailed Reasoning and Analysis of Judge: The court affirmed the Assignment Agreement’s terms: Ivy Entertainment’s exclusive rights in Hindi and North Indian languages for Rs. 51 crores, with Rs. 44 crores paid, and HR Pictures’ retained South Indian rights. The court noted the Rs. 7 crores tranche was conditional on HR Pictures delivering materials (Article 3.1(e)), which it failed to do 14 days prior to March 27, 2025, as required by Articles 1.9, 1.12, and 1.24—admitted breaches, with the CBFC certificate secured only on March 22, 2025. Justice Arora rejected HR Pictures’ claim that Ivy Entertainment needed to request materials, finding the obligation absolute under the agreement’s language, and dismissed the March 24, 2025 offer as non-compliant. She addressed HR Pictures’ implied consent argument, noting the February 4, 2025 email labeled the date tentative, and Article 1.6.1.3 required written approval, absent here, with Article 1.23’s grace period supporting deferment. The court found HR Pictures’ refusal to extend the date, despite receiving Rs. 44 crores, breached the agreement’s essence (Articles 2.15, 4.1), denying Ivy Entertainment simultaneous release rights (Article 2.14). Applying the trinity test from Dalpat Kumar, Justice Arora held Ivy Entertainment established a prima facie case, with balance of convenience favoring it due to unquantifiable losses if digital rights negotiations faltered post-release, against HR Pictures’ manageable four-week delay. Irreparable injury was evident, supported by Global Music Junction and Katta Sujatha Reddy, as damages couldn’t compensate lost bargaining power. The distinguished HR Pictures’ cited cases, noting no trademark or rescission issues applied, and mitigated delay concerns by HR Pictures’ own late appearance.

Final Decision: On March 27, 2025, the court allowed I.A. 7657/2025, granting an injunction restraining HR Pictures from releasing "Veera Deera Sooran" on March 27, 2025, for four weeks, conditional on Ivy Entertainment depositing Rs. 7 crores within 24 hours. Upon receipt, HR Pictures was to deliver materials within 48 hours, with a Court Commissioner overseeing compliance. I.A. 7658/2025 was also allowed, exempting mediation due to urgency. The suit was registered, with timelines set for pleadings.

Law Settled in This Case: The judgment reinforced that timely delivery clauses in film assignment agreements, when deemed essential, must be strictly enforced, and breaches justify injunctive relief over damages, per the amended Specific Relief Act, 1963. It clarified that unilateral release date fixation without agreed consent violates contractual rights, and courts can balance equities by granting limited deferments, ensuring all parties’ interests are protected.

Ivy Entertainment Private Limited Vs. HR Pictures:March 27, 2025:(COMM) 264/2025:High Court of Delhi:Hon’ble Ms. Justice Manmeet Pritam Singh Arora

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.J.R.K's Research and Pharmaceuticals Private Limited Vs. Registrar of Trademarks

Dr.J.R.K's Research and Pharmaceuticals Private Limited Vs. Registrar of Trademarks:Date of Order: 12 June 2025:Case Number: W.P.(IPD) No.8 of 2025:Name of Court: High Court of Judicature at Madras:Name of Judge: Justice Senthilkumar Ramamoorthy

The brief facts are that the petitioner, owner of the trademark “NATURE'S WEALTH RESTORES HEALTH” registered in class 05 under registration number 1061417, sought renewal of the mark for the period 2021–2031. The initial application for renewal had succeeded for the previous term, but the petitioner was later unable to access the portal to file the new renewal request. After filing an RTI application, the petitioner received a reply from the Registrar stating that the renewal request could not be accepted as it had not been filed with the requisite fee.

Procedurally, the petitioner filed this writ petition challenging the Registrar’s letter dated 30.10.2024 rejecting the renewal application and sought a consequential direction to process and accept the renewal. The petitioner argued that the trademark had never been formally removed from the Register, and as long as it remained on the register, the proprietor had a statutory right to seek renewal.

The dispute centered on whether the Registrar could reject the renewal request solely because the application and fee were not simultaneously filed, especially when the trademark had never been officially removed from the register.

In discussion, the Court considered the judgment in Jaisuryas Retail Ventures Private Limited v. The Registrar of Trademarks, 2024:MHC:3109; 2024(100) PTC 25 (Mad), where it was held that a proprietor is entitled to renewal unless the mark has been removed from the register following the procedure under the Trade Marks Act, 1999. Observing that the Registrar had not taken any steps to remove the mark as prescribed by law, the Court concluded that the petitioner’s renewal request ought to have been entertained.

The Court quashed the impugned communication dated 30.10.2024 and directed the Registrar to receive and process the renewal application for the period 2021–2031, subject to payment of requisite fees, within thirty days. The Court also directed that access to the portal be provided or the renewal be accepted in physical form.

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

Mrs. Preeti Vs Vijay Kumar Chopra

Failure to Disclose True Facts and Suppression of Material Information

Introduction: This case study examines how the High Court of Madras, in deciding an interlocutory application for interim injunction in a copyright infringement suit, analyzed the plaintiffs’ conduct, particularly their failure to disclose critical facts and inconsistencies in their pleadings. The judgment underscores that suppression or nondisclosure of material information by a plaintiff can significantly weaken a claim for equitable relief like an injunction, even where there is copyright registration in place.

Factual Background: The plaintiffs, Mrs. Preeti and Mr. Piyush Jain, trading as proprietors of cosmetic businesses under the brand “BEAUTE BLANC,” claimed to be the authors and copyright holders of an artistic work used in the packaging of their products. They obtained copyright registration no. A-130483/2019, which recorded the year of publication as 2014. They alleged that the defendants, Vijay Kumar Chopra and Cura Skin Solutions Pvt. Ltd., copied this packaging design for cosmetic products under the mark “NATUALLY.” To substantiate their claim, the plaintiffs placed on record multiple invoices dated from August 2018 onwards and chartered accountants’ certificates showing turnover figures from later financial years.

Procedural Background: The plaintiffs filed C.S.(Comm.Div.) No.57 of 2025 before the High Court of Madras, accompanied by O.A.No.183 of 2025 seeking an ad-interim injunction to restrain the defendants from manufacturing, marketing or dealing in products bearing the impugned packaging. The defendants contested the application, challenging both the originality of the artistic work and the timeline of its alleged creation and use. The matter came up for decision before Justice Senthilkumar Ramamoorthy.

Legal Issue: The central issue before the Court was whether the plaintiffs had established a sufficiently strong prima facie case for grant of interim injunction, particularly in view of serious questions raised about nondisclosure and suppression of facts material to the determination of copyright ownership and priority of use.

Discussion on Judgments :The plaintiffs relied primarily on Section 48 of the Copyright Act, 1957, which provides that particulars entered in the Register of Copyrights are to be treated as prima facie evidence. They also pointed to an earlier interim injunction granted on 13 February 2020 in O.A.Nos.947 to 949 of 2019 in C.S.No.609 of 2019, in respect of the same artistic work, where a similar defence had been rejected.

The defendants, challenging the credibility of the plaintiffs’ claim and highlighting suppression, cited Federation of Industries of India & another v. Mr. G. Kesavalu Naidu @ Kesavan & another, CS(OS) No.596 of 2007, particularly paragraphs 13 and 24, to argue that copyright registration by itself is insufficient without clear evidence of originality and authorship. They relied on Rediff.Com India Ltd. v. E-Eighteen.Com Ltd., MANU/DE/2202/2013, paragraph 53, to emphasize that proof of prior and independent creation is required beyond mere registration. In Glaxo Orthopedic U.K. Ltd. v. Samrat Pharma, MANU/DE/0257/1983, paragraphs 14 and 15, the Delhi High Court noted that copyright must be shown to subsist through evidence. Camlin Private Limited v. National Pencil Industries, 2001 SCC OnLine Del 1083, paragraph 10, reinforced this view. Tech Plus Media Private Ltd. v. Jyoti Janda & others, 2014 SCC OnLine Del 1819, paragraph 20, was cited to highlight that documentary proof of publication is essential. Finally, M/s. K.B. Hiralal & Sons v. M/s. Kumar Industries & another, 1985 Arbitration Law Reporter 265, paragraphs 9 and 11, reiterated that the presumption from registration is not conclusive and must be corroborated by facts.

Reasoning and Analysis of the Judge: The court observed that while Section 48 of the Copyright Act does create a prima facie presumption of the particulars entered in the Register, this presumption is rebuttable. The plaintiffs claimed the artistic work was published in 2014, yet failed to place on record any concrete evidence of such publication. The invoices they produced dated only from August 2018 onwards, and the chartered accountants’ certificates disclosed turnover figures starting from the financial year 2017-18 for the second plaintiff and 2021-22 for the first plaintiff. This weakened their assertion of first use in 2014.

Critically, the Court noted that the plaintiffs’ pleadings did not fully and candidly disclose that they had already filed an opposition to the defendants’ trademark application on 1 August 2024, while simultaneously claiming in the plaint and supporting affidavit that they became aware of the defendants’ products only in December 2024. This inconsistency was regarded as suppression of a material fact directly relevant to the dispute.

Further, the defendants placed on record evidence showing third parties had been using similar packaging designs from as early as 2017, and produced screenshots from websites like Alibaba indicating that the packaging may have originated from manufacturers in China for distribution by a Hong Kong-based entity. The plaintiffs failed to counter this evidence with proof demonstrating that their creation and use predated that of the defendants or the third parties.

In light of these factors, the Court concluded that the plaintiffs had not shown a strong prima facie case, that there was suppression of material facts which affected the equitable relief sought, and that the balance of convenience did not favour granting an interim injunction. 

Final Decision:The Court declined to grant the ad-interim injunction sought by the plaintiffs due to the failure to disclose true facts and suppression of material information that went to the root of the plaintiffs’ claim. The application was disposed of with a direction to the defendants to file quarterly accounts of sales pending the suit.

Law Settled in This Case: The judgment reiterates that copyright registration under Section 48 of the Copyright Act creates only a rebuttable presumption and does not replace the requirement to prove authorship, originality, and prior publication with credible, independent evidence. It affirms that a plaintiff seeking equitable relief must come to court with clean hands; suppression or failure to candidly disclose material facts, especially facts central to the claim, can defeat the plea for interim injunction even in intellectual property disputes.

Case Title: Mrs. Preeti Vs Vijay Kumar Chopra :Date of Order: 23 June 2025:Case Number: O.A.No.183 of 2025 in C.S.(Comm.Div.) No.57 of 2025:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon'ble Justice Senthilkumar Ramamoorthy

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

Preeti & Anr. Vs. Vijay Kumar Chopra

Case Title: Mrs. Preeti Vs Vijay Kumar Chopra :Date of Order: 23 June 2025:Case Number: O.A.No.183 of 2025 in C.S.(Comm.Div.) No.57 of 2025:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon'ble Justice Senthilkumar Ramamoorthy

The brief facts are that the plaintiffs, proprietors of cosmetic businesses, claimed copyright over the artistic work used on the packaging of their brand “BEAUTE BLANC,” registered under copyright registration number A-130483/2019 with year of publication stated as 2014. They alleged that the defendants had copied this packaging design in selling identical cosmetic products.

Procedurally, the plaintiffs filed a commercial suit for infringement and moved an interlocutory application seeking an ad-interim injunction to restrain the defendants from using the impugned artistic work during the pendency of the suit. Both sides presented documentary evidence, including invoices, certificates, screenshots, and import documents.

The dispute centered on whether the plaintiffs had established a strong prima facie case of prior authorship, original publication in 2014, and continuous use, as required to secure an interim injunction in copyright matters, especially when defendants alleged the design itself was generic or sourced from third parties.

In discussion, the Court noted that under Section 48 of the Copyright Act, registration creates only a presumption and not conclusive proof of copyright. While the plaintiffs relied on invoices and accountants’ certificates, the earliest evidence dated from 2018 onwards and did not conclusively show publication in 2014. The defendants produced evidence suggesting similar packaging was in use by others from as early as 2017 and pointed out inconsistencies between plaintiffs’ pleadings and their prior opposition to defendants' trademark application.

The Court ultimately found that the plaintiffs did not make out a strong prima facie case justifying an interim injunction. It declined to grant the injunction but directed the defendants to maintain and file quarterly accounts of sales of products using the impugned packaging to safeguard plaintiffs’ interests pending trial.

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

Rupali P. Shah Vs. Adani Wilmer Limited

A Party is not allowed to argue a case, what is not pleaded.

Introduction: This case revolves around a fundamental principle of civil procedure: that a party is not permitted to advance arguments at the stage of final hearing which have no foundation in its pleadings. In Rupali P. Shah Vs. Adani Wilmer Limited and others, the Bombay High Court confronted this very proposition, addressing whether the plaintiff, after having pleaded that the defendants’ exploitation of copyright was impermissible due to expiry of the assignment agreements, could instead argue at final hearing that exploitation through digital or non-physical mediums was never contemplated in the agreements, thereby amounting to infringement. The judgment illustrates the intersection of contract interpretation, copyright law, and the strict discipline of pleadings in civil litigation.

Factual Background: The dispute arose from seven cinematographic films produced by O.P. Ralhan between 1963 and 1983, containing musical works and songs over which he held copyright. O.P. Ralhan assigned rights under various agreements dated between 1962 and 1980 to the predecessor of defendant no.2. Upon his death in 1999, those rights devolved upon his daughter, the plaintiff Rupali P. Shah, by virtue of a probated Will of 2013. Over the years, royalty payments were made by defendant no.2, which eventually assigned those rights to itself. In December 2011, the plaintiff noticed that defendant no.1 had used a song from the film 'Talash' in a commercial advertisement. Defendant no.1 claimed it had obtained a license from defendant no.2, which in turn claimed absolute rights to exploit the works.

Procedural Background: The plaintiff filed Commercial IP Suit No.101 of 2012 before the Bombay High Court seeking a perpetual injunction restraining the defendants from infringing her copyright, alongside reliefs for damages and accounts. An interim injunction was refused by the Single Judge on 8 May 2012, who found a prima facie case in favour of the defendants. The Court framed ten issues on 20 March 2013, and the matter proceeded to trial, including oral and documentary evidence. During the final hearing, the plaintiff’s counsel shifted emphasis from the pleaded case that the assignments had expired to the argument that the assignments never covered exploitation through digital and non-physical mediums.

Legal Issue: The central legal issue before the Court was whether the plaintiff could argue, at the stage of final hearing, a ground that was absent from her pleadings—specifically, that the assignments covered only physical mediums like gramophone records and therefore exploitation in digital or non-physical mediums infringed her copyright. In essence, the Court examined whether the plaintiff's arguments had to remain confined to what was pleaded.

Discussion on Judgments: The plaintiff relied heavily on Cohen v. Paramount Pictures Corporation, 845 F.2d 851 (2nd Cir. 1988) and Raj Video Vision v. K. Mohan Krishnan, 1998-2-L.W.718 (Madras High Court) to argue that rights not contemplated when the agreements were executed could not be treated as assigned. Further reliance was placed on Adani Gas Ltd. v. Union of India, (2022) 5 SCC 210; Dattatraya Govind Mahajan v. State of Maharashtra, (1977) 2 SCC 548; K.S. Paripoornan v. State of Kerala, (1994) 5 SCC 593; Padma Srinivasan v. Premier Insurance Co. Ltd., (1982) 1 SCC 613; and Kingfisher Airlines Ltd. v. CCI, 2010 SCC OnLine Bom.2186 to support arguments on retrospective application of amendments and the legal effect of provisos.

Conversely, defendant no.2 relied on Udhav Singh v. Madhav Rao Scindia, (1977) 1 SCC 511; Ram Sarup Gupta v. Bishun Narain Inter College, (1987) 2 SCC 555; and Mohammed Abdul Wahid v. Nilofer, (2024) 2 SCC 144 to contend that a party cannot argue beyond its pleadings. In support of interpreting contracts by reading clauses together and the significance of parties' conduct, the defendants cited Ramkishorelal v. Kamal Narayan, 1962 SCC OnLine SC 113; Namburi Basava Subrahmanyam v. Alapati Hyma Vathi, (1996) 9 SCC 388; State of Orissa v. Damodar Das, (1996) 2 SCC 216; M. Arul Jothi v. Lajja Bal, (2000) 3 SCC 723; Prentice Hall India Pvt. Ltd. v. Prentice Hall Inc., 2002 SCC OnLine Del.549; Delhi Development Authority v. Durga Chand Kaushish, (1973) 2 SCC 825; and Sahebzada Mohammad Kamgarh Shah v. Jagdish Chandra Deo Dhabal Deb, 1960 SCC OnLine SC 107. Additionally, they argued that the earlier interim order dated 8 May 2012, which had interpreted the agreements as granting wide rights, was binding, citing SK. Bhikan v. Mehamoodabee, (2017) 5 SCC 127; S. Ramachandra Rao v. S. Nagabhushana Rao, 2022 SCC OnLine SC 1460; and Arjun Singh v. Mohindra Kumar, [1964] 5 S.C.R. 946.

Reasoning and Analysis of the Judge:The Court observed that the plaintiff's pleadings were clear: her case was based on expiry of the assignment agreements over time, and not on the nature of mediums covered by those agreements. The plaintiff’s attempt at final hearing to pivot to an argument about non-physical mediums was found to be beyond the scope of her pleadings and therefore impermissible. The Court applied the settled principle that what is argued must be founded in the pleadings, so that the opposing party is not taken by surprise, citing Supreme Court authorities.

The Court closely analyzed the 1967 agreement and found it used expansive language, specifically, clause 10, which granted the assignee the “sole right of production, reproduction, sale, use and performance (including broadcasting) throughout the world by any and every means whatsoever.” Interpreting the contract as a whole, the Court held that these words reflected an intention to assign rights in perpetuity across all mediums, including those then unknown.

The plaintiff’s reliance on subsequent amendments to the Copyright Act and foreign judgments was rejected because the agreements had to be interpreted in the statutory context existing when they were executed. The Court further considered the parties’ conduct, noting that royalty payments had been accepted over many years and that the plaintiff’s father, in his Will, bequeathed rights consistent with a belief in perpetual assignment.

Final Decision: The Court dismissed the suit, holding that the plaintiff failed to prove infringement and that defendant no.2 had perpetual rights to exploit the works across all mediums. Defendant no.1 was also found to have acted under a valid license and thus was not liable. The Court reaffirmed that a party cannot be allowed to argue what is not pleaded.

Law Settled in This Case: The judgment reaffirmed that a party must remain within the boundaries of its pleadings and cannot spring new grounds at final hearing. It also settled that, in interpreting copyright assignments, especially older agreements, courts will consider the language of the agreement as a whole, the parties’ conduct, and the context of the law at the time of execution, rather than subsequent statutory amendments or later technological developments.

Case Title: Rupali P. Shah Vs. Adani Wilmer Limited and others:Date of Order: 11 June 2025:Case Number: Commercial IP Suit No.101 of 2012:Neutral Citation: 2025:BHC-OS:8516:Name of Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division:Name of Judge: Justice Manish Pitale

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

KG Marketing India Vs Rashi Santosh Soni

Introduction: This case study delves into the dispute between KG Marketing India (the appellant) and Rashi Santosh Soni & others (the respondents) concerning allegations of forgery, fabrication of documents, and the misuse of a trademark “SURYA.” The matter primarily concerns the appropriate legal proceedings for handling forged evidence filed in court, and the Court’s authority to initiate criminal proceedings under Section 340 of the Criminal Procedure Code (CrPC). The Delhi High Court's judgment underscores the importance of truthfulness in legal pleadings and demonstrates the Court’s powers to impose costs and direct criminal complaints against dishonest conduct during litigation.

Factual Background: KG Marketing India claimed prior rights and extensive use of the trademark "SURYA" since 2016, supported by newspaper advertisements. These advertisements were relied upon in its suit to establish prior user rights and branding dominance. The appellant filed a civil suit, CS (COMM) No. 18/2023, which included the newspaper advertisements as evidence, supported by a Statement of Truth affirming their authenticity. Subsequently, the respondents challenged the genuineness of these documents, asserting that they were fabricated and produced with malicious intent to secure an interim injunction favoring the appellant’s market position. The respondents alleged that the advertisements used by the appellant in the court proceedings were forged and that the appellant had intentionally misrepresented facts.

Procedural Background: Initially, the Court granted an ex-parte ad-interim injunction in favor of the appellant and authorized a search and seizure of allegedly infringing goods. However, the respondents later filed I.A. 10033/2023 under Order XXXIX Rule 4 of the CPC, alleging that the documents filed by the appellant were maliciously fabricated for the purpose of securing the injunction. The Court found merit in this contention and vacated the interim relief, dismissing the appellant’s application. Subsequently, the respondents filed a cross-suit seeking to restrain the appellant from using the mark “SURYA,” and to prove the alleged forgery, they provided original newspapers dated 17.06.2016 and 12.07.2017 to establish that the advertisements relied upon were fabricated. During the proceedings, the Court considered whether proceedings under Section 340 of the CrPC should be initiated against the appellant for allegedly filing forged documents and false statements.

Legal Issue: The principal legal issue in this case is whether the Court has the authority to initiate proceedings under Section 340 of the CrPC against a party who files forged documents and makes false statements supporting their case, particularly in the context of fabricated evidence in a civil suit? The case raises questions about the nature of proof admissible in trademark disputes, the limits of the Court’s power to take suo-motu cognizance of forgery, and the sanctity of Statements of Truth filed in pleadings, especially when they are allegedly false and fabricated.

Discussion on Judgments: The parties cited multiple judgments to substantiate their respective arguments. The appellant referred to the Supreme Court’s decision in Ashok Gulabrao Bondre v. Vilas Madhukarrao Deshmukh (2023) 9 SCC 539, which clarified interpretations surrounding forgery and the Court’s jurisdiction under Section 340 of the CrPC, especially when relating to documents filed in court. The respondent’s counsel relied on the earlier Supreme Court decision in Mahadev Bapuji Mahajan & Anr. v. State of Maharashtra, 1994 Supp (3) SCC 748, which clarified that criminal proceedings can be initiated even if the offence preceded the registration of a complaint, thus establishing that the Court has the power to act upon suspicion or evidence of forgery, regardless of the procedural stage.

Additionally, the Court referred to Iqbal Singh Marwah and Ors. v. Meenakshi Marwah, (1981) 4 SCC 523, where the Supreme Court discussed the interpretation of Section 195 of the CrPC concerning offences related to documents produced in court. The decision clarified that where offences involve an act committed in respect of a document that was produced or given in evidence during proceedings, a complaint by the court would be necessary. The Court examined whether the production of forged documents with falsified Statements of Truth warranted criminal action under Section 340 of the CrPC, emphasizing the importance of truthfulness in court pleadings.

Reasoning and Analysis of the Judge: The learned Judge analyzed the available judgments and the facts of the case to arrive at a reasoned conclusion. The Court noted that the documents relied upon by the appellant were explicitly admitted to be forged and fabricated, and these false documents were filed along with the suit to obtain interim relief. The Court further observed that the Statement of Truth filed affirming the genuineness of these documents was false, which undermines the integrity of the judicial process. Referencing the Supreme Court’s decision in Ashok Gulabrao Bondre, the Court clarified that the offence of forgery committed in respect of documents filed in a court proceeding is prosecutable under Section 340 of the CrPC. The Court emphasized that it has the authority to cause a complaint to be filed if it is satisfied that a false statement or forged document has been deliberately filed, thereby obstructing the course of justice. The Court acknowledged that filing forged evidence under the guise of genuine documents is a serious offence, warranting criminal action along with appropriate costs to deter such misconduct.

Furthermore, the Court highlighted that the filing of false pleadings violates the principles of honesty and fair dealing in litigation. It reinforced that the Court can initiate proceedings suo-motu or upon an application to ensure that falsehoods do not undermine judicial integrity. The Court, therefore, imposed costs on the appellant and directed the Registrar General to lodge a criminal complaint, affirming its jurisdiction to enforce accountability for litigatory misconduct.

Final Decision: The Court dismissed the appeal, upheld the order directing the Registrar General to lodge a complaint with the Judicial Magistrate under Section 340 of the CrPC, and imposed a cost of ₹2,00,000 on the appellant. The Court declared that the appellant’s conduct in filing forged documents and false Statements of Truth was unjustifiable and amounted to an abuse of the judicial process. The scheduled hearing was canceled, and the appellant was directed to deposit the imposed costs with the Delhi High Court Legal Services Committee within four weeks. This decision reaffirmed the Court’s authority to act against falsification and forgery in proceedings and underscored the importance of honesty in presenting evidence.

Law Settled in This Case: This case establishes that if a party files forged or fabricated documents in court, supported by false affidavits or Statements of Truth, the Court has the authority to initiate criminal proceedings under Section 340 of the CrPC against the offending party. The decision clarifies that the Court can act suo-motu in such cases, emphasizing that the integrity of judicial proceedings depends on honest and truthful conduct of parties. The case also emphasizes that the imposition of costs serves as a deterrent against misconduct, and that the disposal of forged evidence can have both civil and criminal consequences.

Case Title: KG Marketing India Vs Rashi Santosh Soni & Others Date of Order: August 23, 2024 Case Number: RFA(OS)(COMM) 16/2024 Neutral Citation: 2024:DHC:6385-DB: Name of Court: Delhi High Court Name of Judge: Hon'ble Mr. Justice Vibhu Bakhru and Hon'ble Mr. Sachin Datta

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

Rupali P. Shah Vs. Adani Wilmer Limited

Case Title: Rupali P. Shah v. Adani Wilmer Limited and others:11 June 2025:Commercial IP Suit No. 101 of 2012:2025:BHC-OS:8516:High Court of Judicature at Bombay:Name of Judge: Justice Manish Pitale

The brief facts are that the plaintiff, daughter of late O.P. Ralhan who produced seven films between 1963 and 1983, claimed rights over musical works forming part of those films. Her father had assigned rights to the predecessor of defendant no.2 by agreements executed in the 1960s and 1970s. After his death and probate of his Will, the plaintiff alleged that defendant nos.1 and 2 exploited these works beyond the period permissible under the agreements.

Procedurally, after notices and exchange of communications between the parties regarding royalty payments and scope of rights, the plaintiff filed the present suit in 2012 seeking injunction, damages, and accounts against the defendants for alleged copyright infringement. An interim injunction was refused by the Single Judge in 2012, issues were framed, evidence led, and the matter proceeded to final hearing.

The dispute centered on whether the original assignment of rights was perpetual and included exploitation by all mediums, or was limited to physical mediums like gramophone records, so that digital exploitation amounted to infringement.

In discussion, the court held that while the plaintiff’s pleadings focused on expiry of the time-limited agreements, her arguments later shifted to claiming the rights were limited only to physical mediums. The court found that the assignment agreements, particularly the 1967 agreement, used wide expressions such as “by any and every means whatsoever,” showing that the assignor had granted broad and perpetual rights to the assignee, which included exploitation by later-developed mediums.

The decision dismissed the suit, holding that the defendants had perpetual rights to exploit the works by any means and there was no infringement. It also upheld that defendant no.1 had lawfully used the song under licence from defendant no.2, and rejected the plaintiff’s claim for damages and accounts.

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