Keep up with the ever changing world of IP with SpicyIP’s Weekly Review! A quick glance at last week – finding the real “Burger King” saga continues now at the Supreme Court, ED’s involvement in the Shankar-Tamilnandan copyright case, right to health and compulsory licensing for rare disease medicine Risdiplam. 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
Finding the Real “Burger King”: Identical Marks & Prior Use in the Pune Eatery Case
It has been 14 years since the ‘Burger King’ trademark dispute began in India, still with no end in sight. The SC has recently stayed the Bombay HC order restraining the Pune-based eatery named “Burger King” from using its trade name, on a suit filed by the US Burger King Corporation. Tanishka Goswami explores the arguments on identical use and prior use of the mark by the Pune-based eatery.
MHC stays ED’s move to attach Shankar’s assets under PMLA in connection with the 15-year-old Robot copyright dispute with writer Arur Tamilnandan. The inclusion of copyright infringement in an anti-money laundering statute sounds a little strange, right? Anjali Tripathi and Praharsh Gour examine this anomaly and explain why having copyright infringement under the PMLA is a bad idea.
Right to Health and the Issue of Compulsory Licensing for Exorbitantly Priced Risdiplam
Rare disease medicine access has taken centre stage yet again as the SC has stayed the Kerala HC judgment in Seba PA v. UOI—which directed the Central Government to bear the cost of one month’s treatment for the petitioner suffering from Spinal Muscular Atrophy. Dr. Prabhat Kumar Saha argues why the government should invoke critical measures in light of its obligations under the Right to Health.
Dhanush – Nayanthara Copyright Saga Update: No Interim Relief, Yet No Mediation?
The Dhanush – Nayanthara copyright saga has thrown together yet another interesting angle! What happens if a party pleads urgency while asking for interim relief as a reason for bypassing mediation, only for it to later turn out to be non-urgent? Is this a gap in the law? Bharathwaj Ramakrishnan writes on this development.
Case Summaries
Vst Industries Limited vs Asd Tobacco Private Limited & Anr on 6 March, 2025 (Delhi High Court)
The petitioner, filed the petition to remove the respondent’s registration for the mark “CHUMS” from the Trade Mark Register. The petitioner alleged that the mark, which was registered in 2018, was phonetically and visually similar to the petitioner’s mark “CHARMS”, which they had registered in 1982. The respondent did not appear despite service.The Court considered the petitioner’s evidence and held that the two marks were substantially similar. Accordingly, the Register was directed to be rectified.
The plaintiff,, filed for summary judgment and permanent injunction against trademark infringement. It was alleged that the plaintiff’s mark “RAMADA”, was being infringed by the defendants’ deceptively similar marks “CLUB RAMADA”, “CLUB RAMADA VACATION”, and others. It was further alleged that the defendant operated a website where it falsely affiliated itself with the plaintiff’s hotels. In 2020, the plaintiff issued legal notice to the defendants. The defendants replied; however, the infringements continued, despite the plaintiff obtaining interim injunctions in its favour multiple times. In 2024, the parties moved to mediation, which also proved unsuccessful. In the present application, the defendant was placed ex parte. The court considered the defendant’s conduct and wilful disobedience of court orders, and held that the case qualified for summary judgement under Order XIII-A of the Commercial Courts Act, since the defendant had no prospect of defending their case. Accordingly, the Court granted the permanent injunction.
The plaintiff filed a copyright and trademark infringement suit alleging that the defendants were selling counterfeit water purifier spares under deceptively similar marks – ‘AQUAGUARD’ and ‘ACTIVE COPPER MAXX.’ The Court noted that defendant no.1 failed to contest the case despite multiple opportunities and was found to have deliberately copied the plaintiff’s branding, leading to consumer deception. In light of this, the Court granted a permanent injunction, awarded damages of ₹3,00,000, and emphasized that infringers cannot evade legal consequences simply by avoiding court proceedings.
Star India Private Limited & Anr. vs Stream2Watch.Pk & Ors. on 3 March, 2025 (Delhi High Court)
The plaintiff sought a permanent injunction against several rogue websites illegally streaming the ICC Men’s T20 World Cup 2024, violating their exclusive broadcast and copyright rights. The Delhi High Court found that the defendants were knowingly infringing and causing financial harm by diverting revenue from legitimate platforms. Since the defendants failed to contest the case, the court ruled in favour of the plaintiffs, issuing a permanent injunction and reinforcing the principle that unauthorized digital broadcasting erodes the value of exclusive rights.
Puma Se vs Mahesh Kumar on 9 March, 2025 (Delhi High Court)
The plaintiff filed a suit seeking a permanent injunction against a defendant engaged in manufacturing and selling counterfeit footwear bearing its well-known “Puma” trademark. The Delhi High Court, noting the defendant’s failure to file a written statement and the clear evidence of counterfeiting, ruled in favour of the plaintiff, issuing a summary judgment, awarding damages, and imposing litigation costs. The Court emphasized that counterfeiting is a blatant trademark infringement that not only misleads consumers but also erodes brand value, warranting strict legal action.
Dominos Ip Holder Llc & Anr vs M/S Dominic Pizza & Ors on 12 March, 2025 (Delhi High Court)
The Delhi High Court granted various exemptions and passed an ex-parte ad-interim injunction in a case of trademark infringement filed by the renowned brand, Domino’s Pizza. The plaintiffs had sought relief against the defendants who were purportedly using similar names such as “Dominic Pizza” and “Domindo Pizza.” They claimed that these were deceptively similar to Domino’s trademarks and their once popular name, “Dominick’s Pizza.” The court held that Domino’s had a prima facie case, since the actions of the defendants could lead to confusion among the consumers. The court directed the defendants to desist from using the offending names and instructed food delivery websites Zomato and Swiggy to delist infringing restaurants. Other procedural applications were also dealt with, such as exemptions from filing original documents, pre-institution mediation, and advance notice to defendants. The case will be heard on September 2, 2025, with defendants having four weeks to file replies.
The respondent had previously succeeded in an application to remove the registration of the appellant’s mark from the Trademark Registry. The appellant filed the present appeal. The Court examined the record and found that the respondent was the prior user of the mark “CHAPPAN BHOG” since 2011 and registrant of the trademark and copyright in respect of the same. The appellant was using the deceptively similar mark “Ganraj – Chappan Bhog” for selling a product with the same ingredients through the same trade channels. The two products were also similar in terms of artwork, colour scheme and packaging. Thus, the Court held there was no impropriety in the impugned order and dismissed the appeal.
Living Media India Limited & Anr. vs Telegram Fz Llc & Ors. on 3 March, 2025 (Delhi High Court)
The present suit was filed by two companies of the India Today group against Telegram and its channels for the relief of permanent injunction against trademark and copyright infringement, passing off and allied reliefs. The plaintiffs alleged that Telegram allowed users to create third-party applications called bots which operated within the app. These were being used to distribute free e-copies of the plaintiff’s magazines, or to misrepresent channels as the plaintiffs’ official challenge for the same purpose. While Telegram filed a written statement stating that it had taken down the offending channels, the other defendants did not appear despite notice, did not file a written statement and were placed ex parte. The Court held that the situation was appropriate for passing judgement under Order VIII Rule 10, and accordingly decreed the suit in favour of the plaintiffs.
Tm 25 Holding Bv vs Akhtar Ali & Ors. on 13 March, 2025 (Delhi High Court)
The plaintiff, a Netherlands-based company, filed a suit for trademark infringement and passing off concerning its marks “G-Star,” “G-Star Raw,” and “Tm 25”. They alleged that the defendants were using an identical mark in India for similar products. Per contra, the defendants argued prior use; however the Court rejected the defence for lack of documentary evidence. The defendants further challenged the Court’s jurisdiction by arguing that the plaintiff did not have a registered office in India and its trademarks were primarily recognized abroad. The Court, ruled that jurisdiction was established under S.134(2) of the Trade Marks Act and S.20 of the CPC, as the plaintiff’s products were available in India through authorized distributors. Additionally, the plaintiff demonstrated that it had ongoing business interests in India and had taken steps to enforce its trademark rights within India. Accordingly, an interim injunction was granted in favour of the plaintiff.
The plaintiffs sought a permanent injunction against the defendant for trademark infringement, alleging unauthorized use of the well-known UltraTech mark for adhesive tapes and related products. The Court found that the defendant’s use of an identical trademark and trade dress created a high likelihood of consumer confusion, especially given UltraTech’s long-standing reputation in the industry. Granting an ex-parte ad-interim injunction, the Court restrained the defendant from using the UltraTech mark, emphasizing the prima facie case, irreparable loss to the plaintiffs, and balance of convenience in their favor—a clear warning against attempts to ride on the goodwill of established brands.
Johnson & Johnson vs Pritamdas Arora T/A M/S Medserve & Anr on 11 March, 2025 (Delhi High Court)
the plaintiff sued the defendants for counterfeiting its medical products, including falsifying expiry dates and selling non-sterile devices. The Delhi High Court granted a permanent injunction, awarded ₹3.34 crores in damages, and allowed the destruction of counterfeit goods. The Court emphasized that counterfeiting medical products is not just a trademark violation but a grave threat to public health and safety. It stressed that such actions erode consumer trust, put lives at risk, and warrant strict deterrence through exemplary damages to prevent future misconduct.
Pioneer Corporation vs Mr. Gaurav Kumar & Ors. on 4 March, 2025 (Delhi High Court)
The plaintiff, a Japanese electronics company, filed a suit seeking a permanent injunction against multiple defendants engaged in counterfeiting its PIONEER-branded car audio products. The Delhi High Court, noting the defendants’ failure to contest the suit, granted a permanent injunction, awarded ₹1.5 lakh in damages per defendant, and imposed costs due to the scale of counterfeiting. The Court emphasized that counterfeiting not only harms brand reputation but also misleads consumers, making strict legal action necessary to deter such unlawful practices.
The plaintiff sought an injunction against the defendant for allegedly infringing and passing off his ‘JANGEER’ trademark in agricultural implements. The Delhi High Court held that both parties had registered trademarks and long-standing use of their respective names, making an infringement claim unsustainable. However, as an interim arrangement, the Court restricted the defendant from using ‘JANGIR’ or ‘JANGEER’ and required him to use ‘JANGID’ only in its registered form, balancing both parties’ rights while awaiting a full trial.
Cabcon India Limited vs Godha Cabcon And Insulation Limited on 5 March, 2025 (Calcutta High Court)
The plaintiff sought an injunction against the defendant for passing off and infringing on its registered “CABCON” mark. The defendant was allegedly using the mark “GODHA CABCON”. Vide an ad interim order confirmed on April 22, 2024, the defendant was allowed use of the mark “GODHA” but without “CABCON”. The defendant had not participated in the proceedings. The court undertook a comprehensive analysis of the elements required to ascertain passing off and infringing and passed a decree of injunction in favour of the plaintiff.
Mondal Brothers Enterprises Private Limited vs The Registrar Of TradeMarks And Ors on 6 March, 2025 (Calcutta High Court)
The petitioner acquired the trademark “TARPEX” through a deed of assignment from the marks original owner, and then sought the cancellation of the mark “TARFLEX” registered with one of the respondents. The petitioner then argued that the mark “TARFLEX” was deceptively similar to their prior mark “TARPEX” that they used for tarpaulin and related products since 2010. The court found that the petitioner was the prior adopter of the mark, and that the impugned mark was phonetically and structurally similar, which as highly likely to cause confusion regarding the products origins. The court ruled in favor of the petitioner, ordering cancellation of the “TARFLEX” registration due to its deceptive similarity and potential to dilute the goodwill of the petitioner’s mark.
Panasonic Holdings Corporation & Anr vs Ashok Kumar & Ors on 14 February, 2025 (Delhi High Court)
The plaintiff filed a case against the defendants who were manufacturing counterfeit products bearing the “ANCHOR” trademark. The plaintiffs established their longstanding ownership of the mark, whcih they used since 1963 internationally, and demonstrated substantial business revenue. The court found that the defendants were creating identical packaging with the plaintiffs’ trademark and granted an ex-parte interim injunction restraining defendants from using the “ANCHOR” mark. The court appointed three Local Commissioners to visit the defendants’ premises, search for and seize infringing products, make inventory, and collect documentation. The case is scheduled for follow-up hearings on April 2 and July 23, 2025.
Yc Electric Vehicle vs Bhuvneesh Kapoor Proprietor Of Two Friends Auto Electric Co. on 5 March, 2025 (Delhi High Court)
The plaintiff filed a suit against a defendant for using their previously acquired and registered mark, “YATRI” and “YC” trademarks, for electric rickshaws and vehicles. They claimed to have built substantial goodwill as India’s largest e-rickshaw manufacturer. In December 2024, they discovered the defendant using “SAHYATRI” and “YATRI” marks for identical products, with evidence showing the defendant prominently displaying “YATRI” on vehicles and online listings. The court found it to be an act of deliberate infringement designed to confuse consumers (predominantly uneducated rickshaw drivers) and granted an ex-parte interim injunction restraining the defendant from using the impugned marks in any manner. The case is scheduled for further hearing on August 21, 2025.
Other IP Developments
International IP Developments
(Thanks to Anushka, Diya and Suhani for the case summaries)