Keep up with the ever changing world of IP with SpicyIP’s Weekly Review! A quick glance at last week – analysis of wrongful obtainment in the Indian patent landscape, discussing Delhi High Court’s jurisdiction in ANI vs OpenAI, and the implications of a MoU between screen writers and music composers. This and much more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights
Moving Towards a ‘Wrongful Obtainment’ Standard Part – I
‘Wrongful obtainment’ is a less explored area of patent law in the Indian context. Patent Office orders have partially answered what it means to wrongfully obtain a patent but are inconsistent in adjudicating wrongful obtainment claims. Assessing these orders, Bharathwaj Ramakrishnan looks at the UK Patent law to discuss its relevance in streamlining the wrongful obtainment analysis in India.
Moving Towards a ‘Wrongful Obtainment’ Standard Part – II
Continuing his discussion on ‘Wrongful Obtainment’, in Part II Bharathwaj Ramakrishnan discusses how the Indian patent regime can move towards introducing a 4 step ‘Wrongful Obtainment’ Standard.
ANI vs OpenAI: Why Delhi High Court Has Jurisdiction
While OpenAI has argued that the DHC does not have jurisdiction to entertain the suit filed by ANI, a close look at the Copyright Act and CPC says otherwise. The relevant sections allow the plaintiff to file a suit before a Court within whose jurisdiction he resides, carries on business or works for gain. Bharathwaj Ramakrishnan discusses this issue.
The Mad HC single bench upheld the dismissal of a patent application but curiously analyzed only one objection from the Controller’s dismissal and deemed the rest unnecessary to be evaluated. Although this ‘judicial economy’ may seem efficient, Tejaswini Kaushal writes why this may not be the best way forward.
Major news concerning the rights of screenwriters, lyricists, and composers! Recently, the Screen Writers Association (SWA) and the Music Composers Association of India (MCAI) signed an MoU asserting the claims of music composers and lyricists for equitable credit and revenue sharing. This is in addition to the talks between SWA and some big production houses to have a standardized agreement for screenwriters. Praharsh Gour and Suhani Chhaperwal write on these developments discussing the key terms of these agreements.
Other Posts
NLSIU’s Indian Journal of Law and Technology (IJLT) is inviting submissions for Volume 21 of the Journal and the IJLT Blog, on a rolling basis. For more details please take a look at their call for submissions in the post.
Centre for Research in Innovation Law for Shared Prosperity, BITS Law School is inviting applications for their Innovation Law and Policy Fellowship. The last day to send your applications is April 1, 2025. For more details see their call for applications in this post.
WIPO PCT-Madrid Roving Seminars 2025
The Indian Patent Office, along with WIPO, is organising Roving Seminars at six different locations as a part of WIPO’s efforts to promote awareness regarding IP protection and innovation globally through the Patent Cooperation Treaty (PCT) and the Madrid System. There is no registration fee for any of the seminars. Read the post for more details.
Case Summaries
Abbott Healthcare Private Limited vs Vinsac Pharma on 17 February, 2025 (Delhi High Court)
Abbott Healthcare sued two defendants for trademark and copyright infringement, claiming they deceptively copied its well-known LIMCEE Vitamin C tablets by selling LIMEECEE with similar packaging. The Delhi High Court, citing clear evidence of imitation and bad faith, held that the defendants sought to unlawfully benefit from Abbott’s goodwill, particularly during COVID-19 when demand for Vitamin C surged. The Court emphasized that consumer confusion in pharmaceuticals poses serious public health risks and, finding no real defense from the defendants, granted a permanent injunction, ordered the takedown of infringing listings, and awarded Rs. 2,00,000 in damages.
Disposafe Health & Life Ltd & Ors vs Rajiv Nath & Anr on 28 February, 2025 (Delhi High Court)
Disposafe Health & Life Care sought an injunction against Hindustan Syringes for using the trademark DISPOSAFE, claiming prior use and risk of passing off. A single judge bench of the Delhi High Court initially denied the injunction, but the injunction was later granted by the division bench. However, in a review petition, the appellant submitted that the DB order is not an operative one despite concluding that the respondent must be restrained. Recognizing this omission as a clear error, the Court passed an interim injunction order, restraining Hindustan from using DISPOSAFE during the trial, emphasizing that trademarks require protection to prevent consumer confusion and unfair advantage.
The plaintiffs, proprietors of the registered trademark “Hotel Empire,” filed a suit seeking a permanent injunction, damages, and destruction of infringing materials against the defendant, who operated a restaurant named “French Empire.” The Court dismissed the suit, holding that the plaintiffs failed to establish their legal standing, as they could not establish that the trademark assignment deed was registered in their favour. Additionally, the Court found that “Empire” was a generic term and that the defendant’s use of “French Empire” was bona fide under Section 35 of the Trade Marks Act. Consequently, the plaintiffs’ claims for infringement, passing off, and damages were rejected.
The case concerned the unauthorized public performance of copyrighted sound recordings in restaurants and bars operated by the defendants. PPL, claiming ownership over public performance rights via assignments from music labels, alleged infringement after its representatives discovered unlicensed use of its repertoire. The Delhi High Court upheld PPL’s claims, granting an injunction restraining the defendants from using the sound recordings without a license, reasoning that PPL, as an assignee, retains the right to issue licenses despite not being a registered copyright society. The Court rejected the defendants’ argument that PPL’s suit was barred due to a prior Bombay High Court case, finding the present case based on a fresh cause of action.
the plaintiff, owner of the trademark “X’POSE” for apparel, sued the defendant for infringing and passing off its brand name in the hospitality sector through “XPOSE LOUNGE.” The Court found that despite the defendant operating in a different industry (restaurants), its use of the name could mislead consumers, given the plaintiff’s long standing reputation. Relying on Section 29(1) and (4) of the Trade Marks Act, 1999, the Court granted a permanent injunction against the defendant, imposed punitive damages of ₹5,00,000, and ordered the removal of the infringing name from online platforms, reinforcing that a well-established brand retains protection across different industries if consumer confusion is likely.
M/S M A Board Products Pvt Ltd vs Shamnas on 1 March, 2025 (Bangalore District Court)
The plaintiff filed the present suit seeking a permanent injunction for trademark infringement and passing off against the defendant, alleging that the defendant’s mark “Apple Gold” was “similar and identical”. The defendant appeared at previous hearings but did not lead evidence, conduct cross-examination or file a written statement. The plaintiff submitted that it was the owner of the mark and later by assignment and then by seeking a license it is now a permitted user of the mark. Based on the plaintiff’s evidence, the Court held that the “ApplePly” mark stood transferred in favour of AK Clusters. The Court held that the plaintiff failed to discharge their burden with respect to showing that they were a licensed user of the trademark. The suit was dismissed with costs, for want of cause of action.
Tahoe Research Ltd vs The Controller Of Patents on 18 February, 2025 (Madras High Court)
The present appeal was filed against an order rejecting the appellant’s patent application. The appellant had requested the First Examination Report and responded to the objections therein, following which a hearing notice was issued with respect to objections on lack of clarity and novelty. The appellant then annexed its amended independent claim, in which it incorporated certain unobjected features of previous claims. However, the appellant alleged that impugned order denied the patent on grounds of new objections to these features which were not notified in the hearing notice, thereby resulting in the denial of a reasonable opportunity to respond. Moreover, the conclusions on novelty in the order were alleged to be substantially the same as those of the EPO, despite the fact that “independent claim 1” in both applications corresponded to entirely different claims. Upon examination of the impugned order, both these averments were found correct. The Court set aside the order and remanded it for re-consideration.
P.Pandian vs The Registrar Of Trade Marks on 13 February, 2025 (Madras High Court)
The petitioner sought a writ of mandamus directing the Registrar of Trade Marks to allow a renewal application for his expired trademark. Though he applied in 1992, registration was granted only in 2020. Later, he discovered the trademark had expired since 2002 without prior notice, violating Rule 58(3) of the Trade Marks Rules, 2017. Citing Jaisuryas Retail Ventures v. Registrar of Trade Marks, the Court held that renewal applications could be filed anytime before 1 year to the date of expiry of the trademark. Finding similar facts, the Court ruled in the petitioner’s favor and directed the Registrar to allow renewal.
The present case was an appeal against an order rejecting a patent application. The impugned order was passed on 23.04.2024 pursuant to a virtual hearing, but inexplicably relied on a subsequent judgement dated 12.10.2023 in holding that the invention in question was disqualified due to being a diagnostic method under S.3(i) of the Patents Act. The Court held that much like the earlier case of Somalogic Operating Company v. Asst. Controller of Patents, the appellants were denied the opportunity to endeavour to establish that the claimed invention did not stand disqualified as per S.3(i). Accordingly, the impugned order was set aside and the matter was remanded for fresh consideration by a different officer after providing a personal hearing and a reasonable opportunity to the appellants.
Ashok Kumar Gupta Proprietor Of Jai vs Arif Khan on 28 February, 2025 (Delhi High Court)
In Jai Durga Plaster Industries & Sakarni Plaster v. Defendant, the plaintiffs, well-established manufacturers of Plaster of Paris under the “SAKARNI” trademark, sued the defendant for trademark and copyright infringement, alleging that the defendant’s “SIKARNI“ mark was deceptively similar and likely to confuse consumers. The court, noting the phonetic similarity and the defendant’s lack of response despite being served, ruled in favour of the plaintiffs, granting a permanent injunction and awarding ₹1,00,000 in damages. The rationale was that the defendant had dishonestly adopted a near-identical mark, seeking to exploit the plaintiffs’ goodwill, and had no defense to contest the claims.
The Libman Company vs Shankarlal Talasaram Choudhary And on 27 February, 2025 (Delhi High Court)
The plaintiff sued the defendants for passing off its trademark “LIBMAN“ by selling inferior quality mops and brooms under an identical name. Despite being served, the defendants failed to appear or contest the claims, leading the Court to grant a permanent injunction and ₹5,00,000 in damages. The Court reasoned that the defendants’ deliberate imitation of the plaintiff’s brand, including the use of its corporate name and logo, was a dishonest attempt to mislead consumers and exploit the plaintiff’s goodwill.
Cellectis vs The Assistant Controller Of Patents on 28 February, 2025 (Delhi High Court)
The appellant, seeking a patent for an immunotherapy method, faced rejection from the Patent Office on the ground that it fell under Section 3(i) of the Patents Act, which excludes medical treatments from patentability. To address this, the appellant proposed amendments, primarily removing references to treatment and refining claim language. The Court allowed these changes, reasoning that under Section 59 of the Patents Act, amendments are permissible if they remain within the scope of the original claims and do not introduce new subject matter. With the amended claims now accepted, the Court will assess whether they successfully overcome the earlier objections.
Chotiwala Food And Hotels Private vs Chotiwala & Ors. on 27 February, 2025 (Delhi High Court)
The plaintiff, an established Rishikesh-based restaurant brand with decades of goodwill and registered trademarks and copyrights, alleged that several New Delhi restaurants were deliberately using the “CHOTIWALA” name and associated artistic works to mislead consumers and pass off their substandard food as that of the plaintiff. The Court, noting that the defendants failed to contest the suit and admitted the allegations by silence, decreed a permanent injunction against defendants 1, 2, and 3, awarded damages of Rs. 1,00,000 each, and issued a mandatory injunction against defendant 4 to remove infringing listings. The Court held that the defendants’ malicious, calculated use of the plaintiff’s iconic brand not only deceived customers but also irreparably harmed the plaintiff’s long-earned reputation, necessitating swift judicial intervention.
The plaintiff alleged that the defendants are selling counterfeit products using his registered design without authorization. The plaintiff presented clear evidence—including registration certificates, an authorization from the original owner, and examples of infringing online listings—while defendants 6, 8, and 10 failed to contest the suit, leading the Court to proceed ex-parte. Consequently, the Court granted a permanent injunction against the remaining defendants, ordering them to cease all unauthorized use and removal of infringing listings to protect the plaintiff’s design, goodwill, and reputation.
Veekesy Rubber Industries Pvt Ltd. vs Kamal Bansal on 27 February, 2025 (Delhi High Court)
The petitioner, part of the VKC group, sought the removal of the trademark “VKG” registered by the respondent, arguing that it was deceptively similar to its long-standing “VKC” mark used in the footwear business since 1985. The Court found that the respondent failed to provide any evidence of actual use of the “VKG” mark and had likely registered it in bad faith to benefit from the petitioner’s established goodwill. Given the absence of defense and the likelihood of consumer confusion, the Court ordered the removal of the “VKG” trademark from the registry, emphasizing that trademark rights must be built on genuine commercial use, not opportunistic misappropriation.
Kiranakart Technologies Private Ltd vs Mohammad Arshad & Anr. on 3 March, 2025 (Delhi High Court)
Kiranakart Technologies filed a rectification petition seeking the removal of the trademark ‘ZEPTO’ registered by respondent no.1 in class 35, arguing that the mark had not been commercially used despite being registered for nearly eight years. The Court noted that the respondent failed to appear or provide any evidence of use, and as per Section 47(1)(b) of the Trade Marks Act, a mark is liable for removal if it remains unused for five consecutive years. Given the petitioner’s extensive and continuous use of ‘ZEPTO’ since 2021 and the respondent’s lack of bona fide intent, the Court ordered the removal of the impugned mark from the Trade Marks Register.
The appellant challenged the rejection of its patent application for “A System and Method for Regenerating Heat,” arguing that the Controller dismissed it mechanically, citing a new prior art (D-2) at the hearing stage without prior notice or reasoning. The Court found that the impugned order lacked a proper discussion of inventive step, failed to provide reasons, and did not follow the procedural mandate under Sections 13, 14, and 15 of the Patents Act. Accordingly, the Court set aside the order and remanded the matter back to the Controller for fresh adjudication, ensuring due process and a fair hearing.
M/S.Woltop India Pvt. Ltd vs Union Of India on 20 February, 2025 (Madras High Court)
The plaintiff filed a writ petition seeking to transfer the rectification petitions, against multiple parties, from the Ahmedabad Trademarks Registry to the Madras High Court. The plaintiff had also instituted a civil suit against these parties alleging trademark infringement and passing off. The Court held that the power of trademark rectification is specifically exercisable by the High Court with appellate jurisdiction over the registry where the trademark was originally registered. Further, allowing petitions to be filed in any High Court could lead to jurisdictional challenges. Eventually, the writ petitions were disposed of by declining the transfer. However, it stated that Woltop could file the petitions before the Gujarat High Court.
Platinex Db Bathware India Pvt Ltd vs Prateek Gupta on 3 March, 2025 (Delhi District Court)
The plaintiff alleged that the defendant’s trademark was phonetically similar to their existing “DB” and “D&B” trademarks,. The plaintiff argued that they have a substantial market presence, invested significantly in advertisements, and have developed considerable goodwill. They also claimed they owned a similar domain name and were registered proprietors of various “DB” and “D&B” trademarks and copyrights. The Court determined that the defendant’s mark, although being phonetically similar to the plaintiff’s, also caters to the same class of consumers that the plaintiffs do. Hence, the Court issued an interim injunction restraining the defendant from producing products bearing ‘DB’ or similar marks.
Rajesh Bhargava vs Shailender Gupta on 28 February, 2025 (Delhi District Court)
The plaintiff filed the suit against the defendant for allegedly infringing his ‘Jolly’ trademark, used for hardware products since 1944. The defendant began using ‘Zoly’ in 2012, which the plaintiff argued could mislead consumers due to phonetic similarity. The Court found that the competing marks were similar and rejected the defense that ‘Jolly’ was a common name, ruling it was distinctive in hardware. Based on the above, the Court restricted the production of ‘Zoly’ and ordered the defendant to surrender all goods bearing the mark to the plaintiff.
Basf Se vs Joint Controller Of Patents And Designs and Ors. on 7 March, 2025 (Calcutta High Court)
The petitioner challenged the respondent’s denial of its patent application on grounds of delay and consequent violation of principles of natural justice, as well as on the merits of the order. The application was filed in 2007, and was rejected after approximately 18 years, leaving only one year until the term of the subject application expired. The Court held that the delay was so obvious as to be deliberate, and a violation of natural justice. On merits, the impugned order rejected the application on grounds of obviousness, lack of inventive step and insufficiency of disclosure. The Court observed that the Controller did not rely on documents proving technical advantage, incorrectly applied the tests of obviousness, and reached antithetical findings about the application having both a lack of inventive step and insufficient disclosure. Accordingly, the impugned order was set aside and remanded to be re-heard by a different hearing officer.
The plaintiff, a magazine for IT professionals, sued for passing off its trademarks “Silicon India,” “www.siliconindia.com,” and “CIO Review.” The first defendant allegedly used similar marks—“Silicon Review,” “www.siliconreview.com,” and “CEO Review”—and copied content, causing confusion and revenue loss. The defendants denied all claims and argued the suit lacked necessary parties. The court ruled the passing-off test was not met due to no documented losses and also held that the mentioned parties were not the necessary parties and thus dismissed the suit with costs.
Nirav Nimmi Corporation vs Ashish Traders on 7 March, 2025 (Gujarat High Court)
The case was an appeal against the trial court’s denial of injunctive relief for passing off, trademark and copyright infringement. The plaintiff, a proprietary firm, held a registered trademark (“ARJUN”) since 1993 and a copyright for its artistic work, with claimed use since 1978. Simultaneously, the mark was being used by the plaintiff’s father’s firm, which became a partnership in 1983 with the plaintiff as a partner. The firm now became a proprietary firm of the plaintiff’s brother (the defendant). The defendant argued that he was a permitted user under Section 2(1)(r) of the Trade Marks Act, citing his father’s firm’s prior use. Further, he had challenged the plaintiff’s trademark registration, and thus sought a stay under S.124 of the Act. The Court granting interim injunction held that the trial court misapplied S.124, since clause (5) clearly permits interim relief in such a situation. It found no evidence to support the defendant’s claim as a permitted user and ruled that the plaintiff’s registration and market presence established a prima facie case for the interim relief.
Karan Johar v. India Pride Advisory Pvt. Ltd. on 07 March 2025 (Bombay High Court)
The plaintiff, a notable Hindi film director, filed the suit against the defendants seeking reliefs against the violation of his privacy and personality rights by the defendant’s film title “Shaadi Ke Director Karan Aur Johar”. Previously the Court had issued an interim injunction and via this order, the Court refused to lift the same. The Court held that in its prima facie view, using the plaintiff’s name in the film title would violate the plaintiff’s right to commercially exploit his “brand name”. Refusing the alternative suggested by the makers of the film- to include a disclaimer, as being insufficient the Court passed the present order.
Other IP Developments
International IP Developments
(Thanks to Anushka, Diya, Suhani and Praharsh for the case summaries)