Midway through March as we approach the colourful spring with a post on Pantone’s latest choice for its annual colour of the year! Another post on understanding fair dealing as a component of the copyright system and not central axis. Can the Patent Office reject a patent application on one ground and decline to analyse the rest in the name of efficiency? Post discussing Bombay High Court’s ruling in JFE Steel Corporation v. Controller of Patents & Designs. Case summaries and IP developments from the country and the globe 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 of the Week
White Noise: Pantone’s Cloud Dancer, and the Politics of Colour
Pantone’s latest choice for its annual “Colour of the Year,” titled “Cloud Dancer,” a shade of stark white, has triggered an unusually sharp backlash, revealing that colour is never merely aesthetic. In this post, Anjali Tripathi and Nandita Purvi Durgam explore how colour, standardisation, and intellectual property intersect to shape taste, power, and ownership.
Deciphering the ‘Bona Fide’ Notes of s. 52(1)(za): Bombay HC’s Recent Order in PPL v Yashraj Satwara
In PPL v Yashraj Satwara, the Bombay HC issued an ad-interim injunction in favour of PPL for the unauthorized use of its sound recordings by the defendant in their cafe for a diwali party. One interesting legal point considered was the defence of section 52(1)(za) Copyright Act to bring the ticketed Diwali Party under the ambit of a bona fide religious ceremony. Kartik Sharma discusses the Bombay HC’s rejection of this exception and raises interesting points with respect to the provision’s interpretation, especially in light of the workings of the music licensing business.
India’s Defining Moment on SEPs: The Supreme Court’s Decision Opens the Door for Policy Leadership
The Supreme Court’s order in CCI v. Ericsson has highlighted an important policy question about the respective roles of patent law and competition law in regulating SEPs. Brian Scarpelli argues that this moment calls for policymakers to clarify how competition law and patent law should interact in regulating SEP licensing and enforcing FRAND commitments, especially to protect Indian MSMEs and innovation.
Dealing Away Fair Dealing: The Curious Case of Fair Dealing and Its Infringement
As debates around GenAI and copyright intensify, they also raise a broader question about how we understand fair dealing. Avani Marudwar argues for moving away from treating fair dealing as the central axis of copyright analysis, and instead viewing it as one component within the copyright system as a whole. She suggests that the ongoing GenAI debate presents an opportunity to structurally rethink Indian copyright law along these lines.
From 16 March 2026 to 10 April 2026, Cell for IPR Promotion and Management (CIPAM) under the Department for Promotion of Industry and Internal Trade (DPIIT) is conducting an IPR lecture series titled “Orange Minds” to strengthen awareness and understanding of Intellectual Property Rights (IPR) among students. For more details, please refer to the announcement.
Other Posts
Sufficiency of Disclosure and Patent Rejections
Can the Patent Office reject a patent application on one ground and decline to analyse the rest in the name of efficiency? Using the Bombay High Court’s ruling in JFE Steel Corporation v. Controller of Patents & Designs, Priyam Mitra explores the limits of judicial economy in rejection orders, along with issues relating to insufficient disclosure and foreign prosecution history.
WIPO Academy, the Ministry of Intellectual Property (MOIP), the Korea Invention Promotion Association (KIPA), and the Korea Advanced Institute of Science and Technology (KAIST) are inviting applications for the annual Advanced International Certificate Course (AICC) on Intellectual Property Asset Management for Business Success. Registration for AICC’s IP Panorama 2.0 course is currently open on the KIPO Academy website (kipoacademy.kr) until April 19 (~11:59 p.m. Korea Time). For more details, see their call for applications.
Case Summaries
Rajeev Prakash Agarwal vs Tata Play Limited on 7 March, 2026 (Bombay High Court)
The Plaintiff, an individual astrology consultant using “Astro Dunia” mark sought to injunct Tata Play from operating its DTH astrology channel “TATA PLAY Astro Duniya”. The Bombay High Court held that the plaintiff’s registration was a composite label mark and did not confer exclusivity over the words “Astro Dunia”. Applying the Cadila factors for deceptive similarity, the Court found no resemblance between the rival label marks and noted that the parties offered materially different services, and that Tata Play’s prominent house mark dispelled confusion. Therefore, the Court found no prima facie case of infringement or passing off and dismissed the application for interim injunction.
The Plaintiff sought an injunction restraining the Defendant from publicly using sound recordings from its repertoire in the defendant’s showroom without a licence. The Bombay High Court noted that the plaintiff held assignment based rights to license communication of the sound recordings under Section 30 of the Copyright Act. Based on proven instances of the defendant broadcasting the plaintiff’s songs during visits to the store, the Court found a prima facie case of unauthorized public performance. It granted ad interim injunction restraining further communication of the sound recordings without a licence and directed that the relief continue until the next hearing.
Nec Corporation vs The Controller Of Patents And Designs on 9 March, 2026 (Calcutta High Court)
The Court disposed of a batch of connected appeals concerning whether Graphical User Interfaces (GUIs) qualify as registrable designs under the Designs Act, 2000. The Court held that GUIs are not per se excluded from design protection and may satisfy the definitions of “design” and “article” under Sections 2(a) and 2(d). It rejected objections based on lack of permanence, functionality, or copyright overlap and adopted an updating construction to account for technological developments. The court set aside the Controller’s rejection orders and remanded the applications for fresh consideration.
The plaintiffs sought to restrain the defendant from importing and dealing in hard disk drives bearing the plaintiffs’ registered trademarks, which had originally been sold by the plaintiffs to Original Equipment Manufacturers abroad and were later removed from equipment and resold by the defendant. The Division Bench of the Delhi High Court upheld the earlier single judge order, and dismissed all appeals. The Court held that “reverse passing off” is not an actionable tort under Indian trademark law. On infringement, it ruled that since respondents removed the original marks before sale, no “use” of the registered trademark occurred under Section 29. Furthermore, it affirmed the principle of international exhaustion, finding the HDDs were lawfully acquired as no resale proscription existed once they reached the end of life stage. Lastly, the Court maintained the Single Judge’s directions requiring full disclosure on packaging to prevent consumer deception.
The court decided against the Plaintiff in a trademark dispute between related companies using the mark “ELDER.” The plaintiff had obtained an ex parte ad-interim injunction restraining the defendant’s use of the mark. The Court found that the plaintiff had grossly suppressed material facts and misled the Court while seeking the injunction. Additionally, the plaintiff had failed to establish a prima facie case for a temporary injunction. It had taken inconsistent positions before different forums and was merely a contract manufacturer for EPL and later appearing to infringe EPL’s “ELDER” trademark after the company’s liquidation. Holding that such nondisclosure justified interference, the Court vacated the ad-interim injunction, dismissed the plaintiff’s application, ordered return of seized goods, and imposed ₹1,00,000 costs on the plaintiff.
Novo Nordisk A/S vs Dr Reddys Laboratories Limited & Anr. on 9 March, 2026 (Delhi High Court)
The court dismissed the appeal against refusal of an interim injunction in a patent infringement suit concerning Semaglutide which is used for diabetes treatment. The Court held that Dr. Reddy’s Laboratories had raised a credible challenge to the patent’s validity and that the invention was prima facie obvious in light of the earlier genus patent (IN’964). The Court also noted that the patent was due to expire within two months which made interim relief inappropriate and therefore declined to interfere with the Single Judge’s order.
Solariz Healthcare Private Limited vs The Deputy Registrar on 4 March, 2026 (Madras High Court)
The Court dismissed a writ petition challenging an order issued by the Mumbai Trade Marks Registry on the ground of lack of jurisdiction. The petitioner argued that only the Chennai office, as the appropriate office under Rule 4 of the Trade Marks Rules, 2017, could examine the application. The Court rejected this contention, holding that Section 3(2) of the Trade Marks Act, 1999 permits the Registrar to authorise other officers to perform such functions and that Section 18 does not confine examination to the appropriate office. The petition was dismissed without costs, with liberty to pursue a statutory appeal.
J Nithyanandham vs M/S M.V.S.Gramany And Sons on 2 March, 2026 (Madras High Court)
The Court dismissed an application under Section 8 of the Arbitration and Conciliation Act, 1996, seeking reference of a suit alleging trademark infringement of “J.S. Madras Snuff” and passing off through the marks “M.V.S. Gramany and Sons” and “J.S. Madras Snuff” to arbitration. It held that the arbitration clause in the partnership deed applied only to disputes between partners concerning partnership affairs, whereas the alleged infringer was a non-signatory. Since a non-signatory cannot be compelled to arbitrate without consent, the Court refused to refer the dispute to arbitration and found it unnecessary to decide the broader question of arbitrability of IP disputes.
Lahari Recording Co. P. Ltd vs Jain Television on 6 March, 2026 (Madras High Court)
The Court dismissed appeals alleging infringement of satellite television rights in the Telugu version of Roja. The plaintiff, Lahari Recording, had acquired theatrical exhibition rights through a 1992 agreement and sought to restrain the defendant from satellite telecasting the film, claiming exclusivity. Interpreting Sections 17 and 18 of the Copyright Act, the Court held that the agreement assigned only territorial theatrical rights, not satellite broadcasting rights. As the producer remained the first owner of the satellite rights, the defendant’s independent acquisition of those rights was valid, leaving the plaintiff with no enforceable claim.
Crocodile International Pte. Ltd vs La Chemise Lacoste on 9 March, 2026 (Delhi High Court)
The Court upheld an injunction against Crocodile International for infringing Lacoste’s trademark and copyright. Crocodile argued its left-facing logo differed from Lacoste’s right-facing one and relied on a 1983 co-existence agreement and a 1985 letter permitting use in India. The Court held the 1983 agreement applied only to five countries (excluding India), and the 1985 letter was non-binding. Moreover, under Section 29 of the Trade Marks Act, the marks were conceptually identical and caused “initial interest confusion.” While passing off failed for lack of proven goodwill, the Court found copyright infringement of Lacoste’s 1927 artistic work, upheld the rendition of accounts, and set aside costs.
Heineken Asia Pacific Pte. Ltd vs Mr. Vijay Keshav Wagh on 10 March, 2026 (Delhi High Court)
The Court allowed a petition under Section 50 of the Copyright Act, 1957, directing rectification of the Register of Copyrights by expunging the registration for the artistic work “SHREE SAKSHAT.” The petitioner, Heineken Asia Pacific, argued that the respondent’s logo copied its well-known TIGER beer device mark, first published in 2005 and protected internationally and in India. The Court found that the tiger device was substantially copied and remained the dominant feature despite additions such as a “V” and the words “Shri Sakshat.” It also noted procedural lapses under Section 45 and Rule 70 of the Copyright Rules, 2013, and a false declaration regarding publication.
Other IP Developments
International IP Development
(Thanks to Gurnoor, Khushi, and Shubham for the case summaries.)