Here is our recap of last week’s top IP developments including summary of the posts on the Lodha trademark dispute, the scrapping of the UGC-Care list, and the escalation of the Nayanthara-Dhanush copyright battle. This and a lot more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Of house marks and family disputes: Taking a look at the Lodha v. Lodha TM battle
Following disagreements over how a family settlement agreement is to be interpreted, the Lodha brothers are tangling over the Lodha trademark. Currently, the court has sent this 5000 crore question to mediation. Yogesh Byadwal looks into this query of family names and trademark disputes in this post!
Reform, Don’t Reject: Here’s Why the UGC-CARE List Should Not Be Scrapped
Several unconfirmed reports have come up about the discontinuation of the UGC Care Journal List. Although plagued with several problems of its own including transparency on the criteria to verify credibility of journals amongst others, discontinuation of the list may be a step back leading to rise of predatory journals and increasing monopoly of global databases. Samridhi Chugh argues that the UGC-Care list is in need of urgent reforms but the cost of discontinuing may be heftier than fixing!
The recent decision by the Chennai Patent Office marks a significant (and possibly the first) application of the 2024 patent amendments regarding the prima facie requirement in pre-grant oppositions (PGOs). Tejaswini Kaushal analyses the broader implications of the amendments, particularly the prima facie analysis before the acceptance of a PGO application.
Kollywood’s Copyright Battle Escalates, But What is the Urgency?
The Madras HC in the Nayanthara-Dhanush copyright battle has decided it has jurisdiction to entertain the infringement suit. The Court also concluded that there was an urgent necessity to hear the suit and decide the issue of interim relief. Yet how was this urgency standard applied? Was the Court correct in adopting trademark standards into a copyright dispute? What is the status of copyrightability of fictional characters and costumes? Bharathwaj Ramakrishnan discusses the latest developments pertaining to the Nayanthara-Dhanush copyright saga.
Understanding Auxiliary Claims and Where They Come From
Auxiliary Claims, a concept from the EPO, refers to a separate set of backup claims filed along with main claims before the Patent Office. Despite not being mentioned under the Patent Act or Rules, Indian Courts have been accepting amendment claims as auxiliary claims. Praharsh Gour discusses this recent trend and highlights the difference between amendments under the Patent Act and the auxiliary claims filed before the EPO.
Other Posts
Commerce Minister Piyush Goyal made this announcement in the inaugural ceremony of Vidhi Pragati: National IP Moot Court Competition, 2025, organized by DPIIT in collaboration with CIIPC and IPR Chair, NLU Delhi.
Whose Copyright Stands Tall? Looking at Saregama India v Vels Film International
The inclusion of a recreated version of the song En Iniya Pon Nilave in the movie “Agathiyaa” gave rise to a copyright infringement suit by Saregama India against Vels Film and composer Ilaiyaraaja. Key questions as to who owns the copyright arose as Saregama India argued that a film’s producer is the first owner of the copyright of all its musical works. Contrary to this, Vels and Ilaiyaraaja argued that the musical work’s original author had copyright on the work. Tanishka Goswami discusses the Court ruling in favour of Saregama and the policy implications of the judgment.
Union Budget 2025-26: What’s in it for Innovation, Tech, Trade and Health?
The FM Nirmala Sitharaman on February 1 presented the Union Budget 2025-26. The budget included key announcements in the innovation, tech, trade, and health sectors including a 20,000 crore investment in R&D and an incoming Jan Vishwas Bill 2.0 amongst others. Md Sabeeh Ahmad looks at the Budget and discusses the key announcements made!
ZEO v/s EZIO: Trademark Lessons on Passing Off and the Use of House Marks
The Delhi HC in Gensol vs Mahindra refused to grant an interim injunction in favor of Gensol. The Court ruled on whether the marks were identical and application of the passing-off test. Tanishka Goswami analyzes the Court’s findings on the importance of house marks in infringement assessment, and the nature of the relevant market!
Case Summaries
Burberry Limited vs Mayank Aggarwal And Ors on 31 January, 2025 (Delhi District Court)
The suit for permanent injunction was filed by the plaintiff restraining from the use of its registered trademark BURBERRY. The plaintiff alleged that the defendants engaged in manufacturing and marketing of clothing and other accessories with the BURBERRY mark. Ex parte ad interim injunction in favour of the plaintiff was granted in order dated 22-12-2018. The interim injunction was made permanent on 08-08-2019. The defendant had filed their written submissions at a later date owing to summons but the Court noted that the plaintiff had not taken any steps to implead the defendant, therefore the written submission cannot be taken into record. Furthermore, defendant 1 and 2 had not participated in the proceedings, and the Court proceeded ex-parte against them. However, the Court rejected the contention by the Plaintiff that since the defendants did not contest the suit, the case of the plaintiff should be accepted. The Court dismissing the suit noted that the plaintiff failed to lead any evidence during trial and failed to prove its case against the defendant.
Wildcraft India Limited vs Ahmed Ali on 30 January, 2025 (Delhi HC)
The suit for permanent injunction was filed by the plaintiff restraining from the use of its registered trademark ‘HYPA’, ‘HYPASHIELD’ and ‘W95’. The plaintiff alleged that the defendant is engaged in similar business as the plaintiff using the aforesaid marks. Since the defendant did not file a written submission, the Court proceeded ex-parte. The Court noted that the defendant has copied the plaintiff’s registered and well-known trademark. The Court in a summary judgment passed a decree of permanent injunction against the defendant and also awarded damages amounting to Rs. 5,00,000.
Naidu Hall Family Store vs Moham Retail Private Limited on 6 January, 2025 (Madras HC)
The suit for permanent injunction was filed by the plaintiff restraining from the use of its registered trademark ‘Naidu Hall’. The plaintiff alleged that the defendant is engaged in the same goods as the plaintiff and has entirely imitated the trademark ‘Naidu Hall’ on its products. The defendant replied that there is delay in filing the present even though the plaintiff had knowledge of the defendant’s business. Additionally, the defendant claimed suppression of facts by the plaintiff, since the defendant has a business arrangement with one of the legal heirs of the plaintiff’s family. The defendant argued that the legal heir has assigned the aforesaid mark to the defendants but has not been impleaded in the suit. The Court considered several issues including the ownership of the trademark as well as the similarity in the trademark used by the defendant. The Court concluded that there was no infringement by the defendant, adding that both the logos are distinct, and that the suit of the plaintiff is liable to be dismissed on account of not impleading the necessary parties.
Johnson & Johnson Pte. Ltd. vs Mr. Abbireddi Satish Kumar & Ors. on 4 February, 2025 (Delhi HC)
The application to reject the plaint was filed by the defendant on the ground that the Court had no territorial jurisdiction. The suit was filed by the plaintiff seeking permanent injunction for the use of the registered mark, “ORSI” by the defendant as found on a website. The defendant argued that the business of the plaintiff is mainly concentrated in Andhra Pradesh, Odisha, and Tami Nadu. The defendant also argued that the said website is not used by the defendant and belongs to a former employee of the defendant. The Court, rejecting the arguments by the defendant, stated that orders on the website can be made from any place including Delhi, and the products on the website carry the manufacturing information of the defendants. Therefore, dismissing the application, the Court held that it has jurisdiction for the suit.
S. Charanjit Singh vs S. Gurdeep Singh on 31 January, 2025 (Delhi District Court)
The suit for permanent injunction was filed by the plaintiff restraining from the use of a mark identical/deceptively similar to its registered trademark BASANT. The defendants allegedly used the trademark NEW BASANT and engaged in the same genre of business. Interestingly, the defendant’s firm was founded by one of the employees of the plaintiff’s firm, who had also filed an opposition to the trademark registration of ‘BASANT’ by the plaintiff, but amicably settled later. The defendant argued that the ‘NEW BASANT’ mark has been registered separately as a trademark. On the contrary, the plaintiff argued that since there didn’t exist any exclusive right on words like NEW, the remaining portion left (i.e. BASANT) was the main part of the trademark. The Court held that the addition of the word NEW did not make substantial difference since the prominent word where confusion was likely to arise was BASANT. The geographical location and line of business being similar as well, the Court granted a decree of permanent injunction in favour of the plaintiffs.
C. Prakash vs M/S. Ayngaran International Media Pvt on 27 January, 2025 (Madras HC)
The suit has been filed for declaration of copyright ownership of Internet rights for the films “Vasuki”, “Shenbaga Kottai” and “Dubai Rani” and permanent injunction preventing infringement of the said internet rights. The plaintiff claimed that they had acquired exclusive rights to exploit, hire, license, and public exhibition of the Film through the internet from the producer of the dubbed film. And alleged that the defendant had uploaded various scenes from the aforesaid movies on its YouTube channel. The Court noted that upon examination of evidence it is clear that the defendants have been broadcasting copyrighted content on its YouTube channel amounting to infringement. However, the Court also noted that the plaintiff did not show damages of Rs. 5,00,000 as claimed in the plaint. Therefore, the Court declared the plaintiff as the copyright owner of the films, granted a permanent injunction in favour of the plaintiff and against the defendant, and awarded damages of Rs. 25,000.
Jupeng Bio (Hk) Limited vs The Controller Of Patents And Designs on 4 February, 2025 (Madras HC)
The appellant challenged an order rejecting a patent for a claimed invention titled ‘Control of Conductivity in Anaerobic Fermentation’. The defendant had raised objections on non-patentability and lack of clarity and conciseness. The Court, considering the submission of the parties, concluded that the defendant had failed to consider and record findings on the contention of the appellant on claimed invention results. The Court therefore remanded the matter for reconsideration.
The suit for permanent injunction was filed by the plaintiff restraining from the use of its registered trademark ‘MPP’, ‘System Schroders’, ‘Thelesol’, ‘Theresol’, ‘System Schroders Turen+Tore’. The plaintiff alleged the use of the aforesaid marks by the defendant on its website. The defendant argued that the use of the mark was part of a business arrangement between the plaintiff and the defendant. The Court noted that the plaintiff had permitted the defendant to use its trademark on its website as its agent. The Court dismissed the suit with costs.
Anitha M vs Yanamala Girija on 1 February, 2025 (Bangalore District Court)
The suit has been filed for declaration of the plaintiff as the sole owner over the brand/trade/firm name ‘SERVO POWER SOLUTIONS’, and seeking permanent injunction against the defendant from using the said trade name. The plaintiff alleged that the defendant incorporated a firm by the same name as the plaintiff in the same line of business in 2017. The plaintiff also mentioned that the defendant was a partner with the plaintiff in the firm incorporated in 2013 but the partnership was discontinued. The defendant denied that the plaintiff has been using the same trademark since 2013 and denied adopting a similar or identical trademark. The Court noted that the name ‘SERVO POWER SOLUTIONS’ does not have any trademark and the plaintiff also failed to prove prior use of the mark. Additionally, the Court noted that the trademark application for the aforesaid mark by the plaintiff has been rejected and that the Civil Court cannot declare the plaintiff as a trademark holder after rejection from the authority. The Court also held that both logos are not similar and identical therefore dismissing the suit with costs.
Tractors And Farm Equipment Limited vs Massey Ferguson Corp on 5 February, 2025 (Madras HC)
The Court was rehearing interlocutory applications pursuant to directions issued by the Division Bench of the Court. The application by the plaintiff prayed restraining the defendant from interfering with the use of the brand/trademarks owned by the defendant. The plaintiff and defendant had entered into a JV originally in 1960 and trademark agreement in 1978 and 1994 by way of which the plaintiff was allowed use of the defendant’s trademark in manufacturing and selling under the “MF” mark. The defendant did not exercise quality control on the manufacturing and sale of the products (tractors). In 2024, the defendant terminated the licensing agreement with the plaintiff therefore rendering it ineligible to use the aforesaid trademark. The plaintiff also filed a rectification petition before the TM registry to cancel the defendant’s trademark registration since the plaintiff had on its own carried the mark of the defendant through its product and the defendant had abandoned usage in India. The Court noted that the sudden termination of the licensing agreement and further restriction on use of the trademark would cause huge loss and hardship for the plaintiff. The Court favouring the plaintiff ordered that status-quo, as granted by the division bench, must be maintained.
Ram Chandra Maurya vs Intellectual Property Appellate Board on 6 February, 2025 (Allahabad HC)
The writ petition was filed challenging the order of the Copyright Board with respect to seeking direction against the respondent companies to stop the manufacturing of engines, by using the complainant’s copyrighted literary work. The Board had rejected the petitioner’s complaint, by holding that no case was made out to entertain the complaint under Section 6 of the Copyright Act. The Court held that it does not find any question referable to Section 6 of the Act arising in the complaint of the petitioner. Agreeing with the conclusion of the Copyright Board, the Court dismissed the writ petition noting that a writ petition would not lie to restrain private entities from using copyright of the petitioner.
Anshul Vaish, Partner Rohit Wrapers vs Hari Om And Co. And Anr. on 7 February, 2025 (Delhi HC)
The rectification petition was filed by the petitioner seeking removal of the defendant’s ‘रोहित’ trademark. The petitioner had registered the “Rohit Wrapers” trademark (adopted in the year 2000) and using its variant “Rohit Tubes”, “Rohit Varadan”, “Rohit Gold” and “Rohit Durable” trademarks for its business of PVC pipes. The respondent had first issued a legal notice to the petitioner for infringement and passing off of its registered trademark. The Court held that since the petitioner proved prior use of the aforesaid trademark and since both the marks are phonetically identical to each other, though in different languages, could cause confusion amongst consumers, more so because they are in similar businesses. The Court allowing the petition directed the trade marks registry to cancel the ‘रोहित’ trademark.
Aditya Birla Fashion And Retail Limited vs Friends Inc & Anr. on 7 February, 2025 (Delhi HC)
The suit for permanent injunction was filed by the plaintiff restraining from the use of its registered trademark “PETER ENGLAND”. The defendants were earlier directed by the Court to remove sign boards and usage of the aforesaid mark on their invoices. After compliance, the plaintiff had prayed for the mark “PETER ENGLAND” to be declared well-known. The Court, satisfied that the plaintiff satisfied all principles as laid down under Section 2(1)(zg) of the Trademarks Act, noting that the trademark has been registered for the last two decades, passed a decree in favour of the plaintiff declaring its mark as a well-known trademark.