Case: Manchu Vishnu Vardhan Babu Alias Vishnu  Manchu vs. Arebumdum & Ors Citation: I.A. 40391/2024 in CS (COMM) 828/2024 Coram: HMJ Mini Pushkarna The Delhi Hight Court has issued an order restraining third-party infringers from exploiting personality/ publicity rights of well-known Telegu actor and film producer, Vishnu Manchu. It was Mr. Manchu’s case that the defendants’ use of Artificial Intelligence tools to morph/superimpose Mr. Manchu’s face and to create his images and/or audio-video clips, which were in bad taste, resultantly damaged Mr. Manchu’s reputation. Mr. Manchu claimed that creation of audio and visual content using his personality traits, such as, his name, voice, image or its likeness and any other attributes of his personality, without his consent not only infringes on his personality rights but such use in bad taste also prejudiced his honour and dignity. Mr. Manchu, accordingly, approached the Court to restrain misappropriation of his personality/ publicity rights and to protect his distinctive persona. Mr. Manchu also sought for a John Dow order against unidentified infringers for exploiting and violating his personality rights. The Court ruled that, Mr. Manchu has demonstrated a prima facie case for grant of permanent injunction and would suffer an irreparable loss if no injunction is granted. Accordingly, the Court granted an interim injunction in Mr. Manchu’s favour, directed Department of Telecommunications; Ministry of Electronics, Information Technology and YouTube to suspend/takedown all infringing links/websites/contents. Click here to read the judgement copy.

Recently, the Delhi High Court granted an interim injunction in favor of Mankind Pharma Limited (“Plaintiff”), against Aquakind Labs LLP and Ors. (“Defendants”) in a trade mark dispute. The Plaintiff, a well-established player in the pharmaceutical industry, is the proprietor of MANKIND and KIND-formative marks, and has obtained registrations for the MANKIND mark across classes and has come to be recognized as a well-known mark. As per the Plaintiff, the Defendants have adopted and, are using the AQUAKIND mark on and in relation to pharmaceutical products, in an attempt to mooch off the goodwill and reputation subsisting in the MANKIND and KIND-formative marks and, forge a nexus between the two entities. The Plaintiff contended that such an infringement is likely to mislead the public about the origin of the impugned goods. The court observed that the Plaintiff has presented a prima facie case for protecting its MANKIND and KIND-formative marks, and that the Plaintiff may suffer irreparable harm in the absence of an ex-parte injunction. In addition, the court noted the general public associates the KIND-formative marks with the Plaintiff alone, and that the Defendant’s adoption and use of the AQUAKIND mark is likely to cause consumer confusion. Accordingly, the court prohibited the Defendants from using the AQUAKIND mark and/or similar trade marks till the next date of hearing. Mankind Pharma Limited vs. Aquakind Labs LLP & Ors. CS(COMM) 958/2024 Click here to read the judgement copy

Mother Sparsh Baby Care Pvt. Ltd. v. Aayush Gupta & Ors. C.O. (COMM.IPD-TM) 84/2024 & CS(COMM) 129/2022, Judgment dt. October 28, 2024 The Delhi High Court has, in a suit and rectification petition filed by Mother Sparsh Baby Care Pvt. Ltd. (“Mother Sparsh”), permanently restrained one Aayush Gupta, the user and registrant of the mark PLANTPOWERED Device, from infringing Mother Sparsh’s prior registered PLANT POWERED Device marks. The court also allowed the rectification petition filed by Mother Sparsh for removal of the trade mark PLANTPOWERED Device from the Register of Trade Marks. Mother Sparsh contended that Mr. Gupta’s PLANTPOWERED Device mark is identical to its registered trade marks and that the goods covered by the rival marks are also identical, hence, confusion and deception is bound to arise in the course of trade. Mother Sparsh further argued that it has been using its registered marks since the year 2019. On the other hand, Mr. Gupta, while also claiming use since 2019, was able to produce documents only from 2020. Mother Sparsh further submitted that upon coming across Mr. Gupta’s registration for the PLANTPOWERED Device mark, it had sent a legal notice to Mr. Gupta, in reply to which Mr. Gupta filed a false complaint of trade mark infringement with the e-commerce platform, Amazon, which resulted Mother Sparsh’s products being de-listed, and caused substantial losses. Mother Sparsh further alleged that, at the interim stage, the court took note of the fact that Mr. Gupta had filed invoices and documents, which appeared fabricated, to show use of his mark since 2020. Lastly, Mother Sparsh contented that considering Mr. Gupta’s mala fide conduct, litigation costs ought to be awarded to Mother Sparsh. The court noted that Mr. Gupta and the other defendants’ right to file written statements had been closed, they have been proceeded ex-parte, and as such, the contentions in the plaint are deemed to be admitted. The court held that the rival marks are aurally, visually, structurally and conceptually similar and cannot be distinguished from each other. Further, since the goods are the same, consumer confusion is bound to arise. The court also observed that the defendants’ conduct was questionable, and has caused losses to Mother Sparsh, and as such, it is entitled to costs. The court, accordingly, decreed the suit in Mother Sparsh’s favour, allowed the rectification petition, and awarded litigation costs amounting to INR 7 lakhs to Mother Sparsh. Click here to read the judgement copy  

Recently, while quashing a case against an accused engaged in manufacturing and sale of garments under a fake Puma label, the Punjab and Haryana High Court ruled that there can be no copyright in the manufacturing and sale of garments. The accused was charged under Sections 63 and 65 of the Copyright Act, 1957, for allegedly infringing the copyright of Puma. Later, the trial court framed additional charges under Sections 103 and 104 of the Trade Marks Act, 1999. The court, while examining Section 13 of the Copyright Act, clarified that ‘manufacture of sale of garments’ does not fall under the purview of Section 13. The court opined that simply making and selling garments does not come under the categories mentioned under Section 13 of the Copyright Act unless the garments include original artistic elements, in which case they may qualify for copyright protection. The court also found that the investigation done in the case was in violation of Section 115 (4) of the Trade Marks Act, as it ought to be conducted by a police officer of a rank not below that of a Deputy Superintendent of Police. The investigating officer is bound to seek the opinion of the Registrar of Trade Marks before carrying out the investigation. In light of the above, the court quashed the proceedings and ruled that the prosecution under both the Copyright Act and the Trade Marks Act is invalid. Cause Title: Arun Kumar v. State of Punjab & Anr. [2024:PHHC:155158] Click here to read the judgement copy

The Delhi High Court recently dismissed Gensol Electric Vehicles Pvt. Ltd.’s (“Gensol”) application for temporary injunction against Mahindra Last Mile Mobility Limited (“Mahindra”). Gensol sought to prevent Mahindra from using the eZEO or ZEO marks, which Gensol deemed similar to its EZIO mark for electric vehicles. Gensol claimed to have coined the EZIO mark in 2022 and filed an application to register it in June 2023. It tested its first electric vehicle under the EZIO mark in January 2024. However, before launching its vehicles, Gensol discovered Mahindra’s advertisement for launching a new commercial electric four-wheeler under the EZEO mark in September 2024. Mahindra argued that eZEO stood for ‘Zero Emission Option’, and that the use of the MAHINDRA house mark clearly differentiated their products. Mahindra also contended that it was a prior user of the eZEO mark, having commenced use since September 2024, whereas Gensol had not launched its vehicle in the market yet. However, in order to address the dispute, it was willing to use the ZEO mark without the letter ‘e’, along with the MAHINDRA house mark. The court noted that the MAHINDRA ZEO mark was sufficiently distinct from Gensol’s EZIO mark, and that Gensol lacked market goodwill since its vehicles were not yet launched. Moreover, Mahindra publicly disclosed its vehicles under the eZEO mark before Gensol launched its vehicles under the EZIO mark. The court also considered that consumers purchasing these high-end vehicles do not make impulsive decisions, and typically conduct thorough research, and are unlikely to be confused. It also distinguished the target consumers since Gensol is offering an electric passenger vehicle, whereas Mahindra is offering an electric commercial vehicle The court also determined that, in the automobile industry, cars are identified by the manufacturer’s name. Therefore, it emphasized that the presence of the house mark MAHINDRA would effectively differentiate it from Gensol’s vehicles. Accordingly, based on these findings, the court ruled in favour of Mahindra, and dismissed Gensol’s application for an interim injunction. Gensol Electric Vehicles Pvt. Ltd. v. Mahindra Last Mile Mobility Limited, CS(COMM) 849/2024, Judgment dated January 13, 2025 Click here to read the judgement copy

The Madras High Court recently upheld a decision by the Trade Marks Registry in favour of Sumar Chand Nahar, trading as M/s. Paragon Engineers (“Respondent”), rejecting the appeal of Paragon Polymer Products Private Limited (“Appellant”) to deny the registration of the Respondent’s trade mark ‘PARAGON + a flying bird’ device in Class 9. The Appellant had filed an opposition against the registration of the Respondent’s above-noted mark, citing similarities between the Respondent’s mark and the Appellant’s PARAGON mark, which had been in use since 1975 on and in relation to footwear. The Appellant also relied on a 2017 order in which the Trade Marks Registry had recognized its mark as a well-known mark. The Respondent countered by asserting that it had been using the PARAGON-formative mark on and in relation to electric motor starters since 1986. Additionally, the Respondent had obtained registration for a similar mark in Class 7, to which the Appellant had not raised any objections. The Respondent further argued that the target consumers of the rival parties are distinct, thereby minimizing any potential for confusion. The Trade Marks Registry ultimately accepted the Respondent’s arguments. Dissatisfied with the ruling, the Appellant filed an appeal with the Madras High Court. During the appeal, the Appellant contended that the Trade Marks Registry had erred by disregarding the well-known status of its mark. The Court acknowledged the Appellant’s mark as well-known, but noted that such recognition was only granted in 2017. Therefore, the Appellant could not leverage its well-known status to challenge a mark that had been in use since 1986. The Court emphasized that no mark is inherently well-known; it must earn that recognition over time. Allowing the retrospective application of well-known status could unfairly penalize honest, concurrent users in the market. The Court concluded that the benefits associated with a well-known mark could not be applied retroactively. Paragon Polymers Product Private Limited vs. Sumar Chand Nahar and Ors., [(T)CMA(TM) No. 80 of 2023, judgement dated January 7, 2025] Click here to read the judgement copy

Delhi High Court rules that a revocation petition survives even for an expired patent if an infringement suit seeking damages is pending. A single judge of the Delhi High Court held that the mere fact that the Petitioner, Macleods Pharmaceuticals Ltd’s (“Macleods”), had raised a defence of patent invalidity in an infringement suit filed by the Respondent No. 2, Boehringer Ingelheim Pharma GmbH & Co. KG(“Boehringer”), or that the patent lapsed during the proceedings, does not render the revocation petition either untenable or infructuous, and dismissed the two motions filed by Boehringer seeking dismissal of the revocation petition. Boehringer asserted that the prayers sought in the revocation petition and the infringement suit pending before another High Court, are similar, and hearing of the revocation petition could lead to conflicting judgements. It was further argued that since the patent had lapsed, no cause of action survived for the continuation of the revocation petition. Macleods countered Boehringer’s assertions and stated that a defence of invalidity in an infringement suit does not directly result in the revocation of a patent, whereas a revocation petition does, and hence both are different. As regards the revocation becoming infructuous post the patent’s lapse, it was argued that if the claim for damages continues in an infringement suit even after the lapse, the revocation petition shall survive too. As regards the first issue, after analyzing the provisions under the patent law, the court held that the scope and the effect of a revocation petition is totally different from that of a defence of invalidity in an infringement suit. The court, in this regard, noted that, once a revocation petition is allowed, the patent is effaced from the Register of Patents, whereas a judgement/decree regarding invalidity of a patent in an infringement suit merely provides a right to the defendant in the suit to take further steps for rectification of the Register of Patents. On the second issue, the court concurred with Macleods’ averments and held that since Boehringer’s infringement suit is still active and seeks damages for infringement of the lapsed patent during its validity, the cause of action for the revocation petition persists. In light of the above, the court found no merits in Boehringer’s motions to dismiss the revocation petition and dismissed both motions. Macleods Pharmaceuticals Ltd v. The Controller of Patents & Anr. [C.O.(COMM.IPD-PAT) 38/2022] Judgements dated January 15, 2025 Click here to read the judgment copy

In a recent judgment passed by the Delhi High Court in the case of DCM Shriram Limited vs. Mr. Amreek Singh Chawla & Ors., the court stressed upon the obligations cast on parties, which seek equitable reliefs such as ex parte and/or ad interim injunctions, to approach the court with sincerity, and vacated the ex parte ad interim injunction granted previously in the matter in favour of the plaintiff.   It was the plaintiff’s case that the defendants were using SARTAJ 303 and SARTAJ 404 marks, and a gunny bag packaging, for marketing and selling products identical to those of the plaintiff, thereby constituting trade mark infringement and passing off of the plaintiff’s SHRIRAM SUPER 303 and SHRIRAM SUPER 304 trade marks and packaging. Based on the plaintiff’s pleadings, the plaintiff was able to obtain an ex parte ad interim injunction against the defendant. Pursuant to execution of the local commission proceedings at its premises, the defendants moved the court for setting aside the injunction order. The defendants argued that the plaintiff had suppressed material facts since it had misrepresented the date when the cause of action for the subject matter of the suit arose for the first time. The defendants pointed out that, contrary to plaintiff’s assertion that cause of action first arose only in October 2024, it had, in fact, arisen in the year 2018, when the plaintiff complained of the use of the mark SARTAJ 303 for wheat seeds by the defendant’s distributors, vide a letter sent in November 2018. The defendants also challenged the injunction order contending that the numerals ‘303’ and ‘404’ are incapable of distinguishing any goods as they represent varieties of wheat seeds notified by the government. In its judgment, the court took exception to the plaintiff misrepresenting when the cause of action arose in the matter in the plaint and observed that the letter dated November 2018, which had been brought on record by the defendants for the first time, established that the cause of action pleaded by the plaintiff in the suit was incorrect. The court emphasized on the duty cast upon the plaintiffs, who seek equitable reliefs such as injunctions, to approach the court with clean hands. In light of the plaintiffs’ above-noted suppression of the 2018 letter, which contained reference to the defendants’ use of the impugned marks and packaging, the court vacated the injunction and directed that the defendants were free to sell the seized products henceforth. DCM SHRIRAM LIMITED VS. MR AMREEK SINGH CHAWLA & ORS. [CS(COMM) 990/2024 & I.A. Nos. 1208-1209/2025] Click here to read the judgement copy

The Delhi High Court recently denied interim relief to Broad Peak Investment Holdings Limited (“Plaintiff”) which alleged trademark infringement and passing off of its BROAD PEAK mark by Broad Peak Capital Advisors LLP (Defendant). The Plaintiff claimed that it had used the BROAD PEAK mark since 2006, with its earliest registration in Singapore and UK dating back to 2007. It further asserted that it had provided investment advisory services in India since the year 2008, relying on email communications with Indian entities from that year. It had obtained registration for the BROAD PEAK mark in 2017 on a ‘proposed to be used’ basis since it could not trace its earlier use documents. The Defendant, on the other hand, claimed honest adoption and extensive use of the BROAD PEAK mark since 2016. It had also obtained registration for the BROAD PEAK mark in 2017, claiming use since August 2016. The court noted that the Plaintiff’s registration was filed after the Defendant’s adoption of the BROAD PEAK mark in India. Furthermore, since the Plaintiff’s registration was based on a ‘proposed to be used’ claim and it had not amended the certificate to show prior use, the Plaintiff had effectively admitted not using the mark before 2017 in India. Accordingly, the court was not convinced that the Defendant’s use of the mark constituted trademark infringement. Moreover, the court observed that the evidence relied on by the Plaintiffs to establish prior use of the mark ‘BROAD PEAK’ in India was limited to a few transactions only, and did not establish any reputation or goodwill of the Plaintiff in the Indian market. The court noted that sporadic use of the mark in India is insufficient to establish reputation and goodwill in the mark in India. The Defendant, however, demonstrated an honest adoption of the mark in 2016. Given that both parties were offering services to sophisticated corporate entities, the court concluded that confusion was unlikely. It also held that the documents showing actual confusion in the market had to be proved by the Plaintiff in trial. Accordingly, based on these findings, the court ruled in favour of the Defendant, and dismissed the Plaintiff’s application for an interim injunction. Broad Peak Investment Holdings Ltd. and Anr. v. Broad Peak Capital Advisors LLP and Anr. CS(COMM) 45/2024, judgment dated January 20, 2025 Click here to read the judgement copy

The Delhi High Court has, in a suit for an injunction filed by Verizon Trademark Services LLC & Ors. (“Plaintiffs”), granted an ex-parte ad interim injunction, restraining Verizon Careers & Ors. (“Defendants”) from using the Plaintiffs’ registered and well-known trademark ‘VERIZON’, including, as a part of its corporate name, domain name, www.verizon-careers.com, and email address, careers@verizon-careers.com. The Plaintiffs aver that they are among the world’s leading providers of, inter alia, communications, information technology and security products and services, and their trademark VERIZON has previously been declared as a well-known mark in an earlier case.   The Plaintiffs claimed that the Defendants had fraudulently posed as the Plaintiffs or as being affiliated with them, creating a fictitious recruitment process under the former corporate name of the  Plaintiffs, Verizon India Private Limited, the VERIZON logo mark, as well as the domain name. The Defendants allegedly used the Plaintiffs’ name and marks to conduct interviews, issue fraudulent offer letters, and demand money from candidates for completing a supposed certification course. The Plaintiffs contended that the candidates may fall prey to these fraudulent activities, resulting in financial losses and further damage to the Plaintiffs’ reputation. The court, after considering extensive arguments, ruled in favour of the Plaintiffs, stating that a prima facie case has been made out on behalf of the Plaintiffs. Further, since the Defendants failed to appear despite being served in advance, the court granted granted an ex-parte ad interim injunction in favour of the Plaintiffs. Further the court directed proforma Defendants to lock and suspend the impugned domain name and email addresses, and to disclose all relevant details about the Defendants to the Plaintiffs and by affidavit to the court. Verizon Trademark Services LLC & Ors. v. Verizon Careers & Ors. CS(COMM) 15/2025 Click here to read the judgment copy