In a recent order, the Delhi High Court emphasized that plaintiffs seeking injunctive relief must establish a prima facie case and accordingly granted an ex parte ad interim injunction in favor of the plaintiff. The plaintiff alleged that the defendant was using the mark ALLY CENTURY to market and sell products identical to those of the plaintiff, thereby infringing and passing off its CP CENTURY and CPWL CENTURY marks. The plaintiff contended that the defendant had adopted a deceptively similar trademark, trade dress, and artistic work, amounting to trademark infringement, passing off, and copyright infringement. Based on these submissions, the court found a strong prima facie case warranting injunctive relief. The plaintiff became aware of the defendant’s mark in July 2024 during a market survey, discovering that the defendant had recently started using the impugned mark and had filed applications to register the impugned mark on and in relation to identical goods. In August 2024, the plaintiff sent a cease-and-desist letter asserting its longstanding rights in the CENTURY marks since at least 2010. However, the defendant, in its reply, refused to discontinue use of the impugned mark. The plaintiff argued that the defendant’s adoption was dishonest and aimed at exploiting the goodwill and reputation of its well-known mark. The plaintiff also contended that the defendant’s use of identical artistic work and lettering style was deliberately designed to create confusion among consumers. After considering the evidence and arguments, the court found a strong likelihood of confusion and deception due to the similarity between the marks and packaging. It was observed that the defendant had deliberately emphasized CENTURY in its mark to mislead consumers. In light of the plaintiff’s prior use and statutory rights, the court restrained the defendant from manufacturing, selling, or dealing in goods under the impugned mark or any other deceptively similar mark. However, the court clarified that the defendant was free to conduct business using a mark that was not identical or deceptively similar to the plaintiff’s. Click here to read the judgment copy

Recently, the High Court of Delhi issued a permanent injunction, ordering the defendant, Amazon Technologies Inc. (“Amazon”) to pay INR 339.25 crores as damages (including costs) to the plaintiffs, Lifestyle Equities C.V. and Lifestyle Licensing B.V. (hereinafter collectively called “Lifestyle”) for infringing Lifestyle’s registered trademark, Beverly Hills Polo Club Device (“BHPC Device”). Lifestyle initiated a trade mark infringement suit against the defendants, Amazon, Cloudtail India Private Limited (“Cloudtail”)and Amazon Seller Service Private Limited (“Amazon Seller”) alleging unauthorised use of the BHPC Device mark. Lifestyle also alleged that Amazon was manufacturing and selling apparel bearing the mark SYMBOL, featuring a Horse Device mark strikingly similar to the BHPC Device. In October 2020, the court issued an ad-interim injunction, preventing Amazon and its affiliates, Cloudtail and Amazon Seller from using the infringing marks and instructing Amazon to remove the infringing products from the platform. However, Amazon failed to appear before the court, resulting in ex-parte proceedings against it. During the proceeding Cloudtail appeared before court and contended that the damages should be payable by only Cloudtail and not Amazon since, the decision to use the infringing marks was of Cloudtail’s. Further, as per the agreement entered between Amazon and Cloudtail, Cloudtail was liable to indemnify Amazon for any loss arising from any breach on their part. Lifestyle argued that infringing marks with respect to present suit were not a part of this agreement therefore, both Amazon and Cloudtail are liable to pay damages. Considering the admission by Cloudtail, in March 2023, the court decreed the suit in favour of Lifestyle restraining Cloudtail and Amazon permanently from using BHPC Device mark. The Hon’ble Court noted Amazon cannot be absolved from its liabilities. Further, the court granted damages of ₹4,78,484 payable by Cloudtail, which was 20% of Cloudtail’s total infringing sales revenue of ₹23,92,420 and also damages to the tune of $38.78 million, as on date equal to ₹336,02,87,000.00/ payable by Amazon. The court also treated Amazon Seller as an intermediary and removed it from the list of parties, as it assured the court it would take down infringing listings upon instruction.   Lifestyle Equities CV & Anr. versus Amazon Technologies, Inc. CS(COMM) 443/2020 Click here to read the judgment copy

The Single Judge of the Delhi High Court had recently restrained the Defendants, Sammaan Capital Limited and Ors. (part of the Indiabulls Group) from using the trade marks SAMMAAN and SAMMAAN CAPITAL which the Plaintiff, Svamaan Financial Services Pvt. Ltd., alleged to be similar to their SVAMAAN trade mark. However, the Division Bench of the Delhi High Court on February 18, 2025, stayed the operation of the judgment till the disposal of the appeal filed by the Defendants. The Plaintiff is an RBI registered non-banking finance company, incorporated in 2017, that operates under the trademark SVAMAAN and provides services such as micro-finance loans for business, education, and medical emergencies. In contrast, the Defendants, which were previously known as Indiabulls, changed their corporate name to SAMMAAN/ SAMMAAN CAPITAL in July 2024, and applied for trademark registration under these names, despite being notified of the Plaintiff’s prior use of SVAMAAN. The Plaintiff argued that the Defendants were attempting to infringe on its SVAMAAN trademark by using similar names for similar services, providing loans. On February 10, 2025, the Delhi High Court ruled in favor of the Plaintiff and restrained the Defendants from using the SAMMAAN and SAMMAAN CAPITAL trade marks. The court concluded that the trade marks were phonetically and structurally similar, and the differences between the marks were not significant enough to avoid confusion in the market. It was also noted that consumers, irrespective of their background, might be misled into believing the Defendants’ services were connected with the Plaintiff’s. The court rejected the Defendants’ argument that they offered larger ticket loans, differing from the Plaintiff’s micro-loans, as the services were still related and could cause confusion. The court also rejected the Defendants’ argument that the SVAMAAN trade mark is publici juris in relation to financial services. However, on February 18, 2025, the Division Bench of the Delhi High Court stayed the Single Judge’s order pending the appeal. The stay was granted on the conditions that the Defendants include the caption “formerly known as Indiabulls” and a statement that they are not connected with the Plaintiff, prominently on all their advertisements and promotional campaigns. The Division Bench has yet to make a final ruling on the appeal. Svamaan Financial Services Private Limited v. Sammaan Capital Limited & Ors., CS (COMM) 871 of 2024, judgment dated February 10, 2025; and Sammaan Finserv Limited v. Svamaan Financial Services Pvt. Ltd. and Ors., FAO(OS) (COMM) 26/2025, judgment dated February 18, 2025 Click here to read the injuction Click here to read the appeal document

A Division Bench of the Delhi High Court, in a review of one of the appeals stemming from a judgement that decided two appeals, held that the review of the judgement concerning one appeal is maintainable and, on the merits, the court held that portmanteau marks can be protected and granted an injunction against the use of the mark DISPOSAFE. The judgement arises from a review filed by Disposafe Health & Life Limited & Ors. (“Disposafe”), against the judgement which decided two appeals filed by Disposafe, namely, (1) against a single judge’s order in a suit filed by it against Hindustan Syringes & Medical Devices Ltd.’s (“Hindustan”), whereby the single judge vacated the injunction granted against Hindustan’s use of the DISPOSAFE mark, and (2) against a single judge’s order in a suit filed by Hindustan, whereby the single granted an interim injunction against Disposafe’s use of the marks DISPOCAN and other DISPO formative marks. In the appeals, by way of a common judgment, the Division Bench had limited the injunction granted against Disposafe to the marks DISPOCANN and DISPOVAN, holding that the word DISPO is publici juris. This aspect of the judgement was not challenged under review and the review was filed on the grounds that, while the Division Bench has recorded several findings in favour of Disposafe, it failed to pass an operative order of injunction against Hindustan’s use of the DISPOSAFE mark. On maintainability, Hindustan’s counsel asserted that, in the event the Division Bench finds that there is an error apparent, it may recall the judgement entirely, and place both the appeals for rehearing, but ought not to make an order only in one appeal, while disposing of the review petition. The Division Bench dismissed this argument and observed that Disposafe’s review concerns only one appeal and does not involve a partial review of both appeals. On merits, the bench observed that portmanteau words are, per se, not incapable of protection. Accordingly, the bench held that while the word DISPO is publci juris, the term DISPOSAFE can be protected. After perusal of the evidence filed by Disposafe, the bench held that Disposafe is the prior user of the mark DISPOSAFE and has made out a case for grant of injunction against Hindustan’s use of the DISPOSAFE mark and allowed the review petition. Disposafe Health & Life Limited & Ors. v. Rajiv Nath & Anr. [FAO(OS)(COMM) 272/2018] Judgement dated February 28, 2025 Click here to read the judgement copy

The recent ruling by the United States Court of Appeals for the District of Columbia in Thaler v. Perlmutter has reaffirmed that human authorship is essential for claiming copyright protection for works under the US Copyright Act and upheld the US Copyright Office’s refusal of a copyright application, filed by Dr. Stephen Thaler, for registration of an AI generated artwork. Dr. Thaler filed an application seeking copyright registration of an artwork titled “A Recent Entrance to Paradise”, which was generated by his generative AI software the “Creativity Machine”. In his application, Dr. Thaler listed the Creativity Machine as the sole author of the work and himself as the work’s owner. The Copyright Office denied the application on the ground that the work, admittedly, lacked human authorship. Dr. Thaler challenged this decision, first before Review Board of the Copyright Office, and then before the US District Court for the District of Columbia. Dr. Thaler challenged the human authorship requirement of the US Copyright Office as unconstitutional and also sought to invoke the work-for-hire doctrine to support his clam that his AI software could be recognised as the author of the work. Additionally, Dr. Thaler also claimed that before the District Court for the District Court of Columbia that the artwork is copyrightable because he had provided instructions and directed the AI which led to the generation of the subject artwork. Both the challenges, however, proved unsuccessful, pursuant to which, the matter reached the Court of Appeals. The Court of Appeals has now upheld the District Court verdict and dismissed Dr. Thaler’s appeal, observing that the term “author” under the US Copyright Act can only be stated to mean humans and not machines. The Court interpreted the scheme of the US Copyright Act, relying on the provisions about the existence of copyright being premised on the author’s legal capacity to hold property, the term of the copyright being tied to the author’s lifespan, the inheritance provision empowering the widow/children of the author with certain powers of the author, and so on. Basis these provisions, the Court concluded that the necessary corollary of these provisions could only be that the author is a human being and not a machine. The Court also observed that machines, at best, could only be recognised as tools used by humans in the creative process while creating works, as opposed to being considered creators in their own right. Lastly, the Court refused to consider Dr. Thaler’s alternate argument seeking to claim authorship over the work for himself, observing that Dr. Thaler had himself waived this argument before the District Court and had not even challenged that observation in the appeal. Stephen Thaler v. Shira Perlmutter, No. 23-5233 (D.C. Cir. 2025). Click here to read the judgment copy

The Delhi High Court recently restrained Pritamdas Arora, trading as M/s Medserve (“Defendant”) from manufacturing, selling or dealing in counterfeit medical devices bearing Johnson & Johnson’s (“Plaintiff”) trademarks, SURGICEL, ETHICON and LIGACLIP. Further, the court has awarded Johnson & Johnson damages of INR 3.34 crores (approximately) for the Defendants’ counterfeiting activities. The Plaintiff, through its subsidiary Ethicon, manufactures and sells medical devices bearing the trade marks, SURGICEL, ETHICON and LIGAGLIP, employing a distinctive trade dress for its SURGICEL products. In 2019, following a complaint from a University of Kentucky neurosurgeon regarding irregularities in SURGICEL instruments used during a brain surgery, the Plaintiff discovered that the devices were counterfeit. Investigation revealed that University of Kentucky had procured these counterfeit products from a Florida based entity, which had in turn purchased them from a UAE based entity. The UAE based entity identified the Defendants as the source of the counterfeit products. The Plaintiff’s analysis of the counterfeit products revealed that they were inadequately oxidized, non-sterile and contaminated with bacterial infections. The reports of the local commissions appointed by the court indicated that that the Defendants had sold approximately 2,50,000 counterfeit medical devices between 2017 and 2019 to at least nine (9) countries. The Defendants had engaged third-party manufacturers in Turkey and China to manufacture these counterfeit medical devices. The court also noted that the Defendants were also repackaging expired medical products with counterfeit labels bearing false future expiry dates. Notably, the court condemned the Defendants’ response to complaints about the infections caused due to these counterfeit surgical products, which involved instructing their business associates to resolve such complaints through bribery, demonstrating a blatant disregard for public health and safety. Despite initially attempting to defend their activities by feigning innocence, the Defendants subsequently evaded the court proceedings. Even though the court directed the Delhi Police and Cyber Cell to trace the Defendants and determine their current activities, their attempts were unsuccessful. The court concluded that the Defendants’ conduct demonstrated a premeditated intent to deceive consumers. Consequently, apart from granting a permanent injunction, the court also imposed damages of INR 2.34 crores as compensatory damages, and INR 1 crore as exemplary damages in favour of the Plaintiff. Johnson & Johnson v. Pritamdas Arora T/A M/s Medserve, CS(COMM) 570/2019, judgment dated March 11, 2025 Click here to read the judgment copy

Recently, the Delhi High Court set aside the Trade Marks Registry’s (“Registry”) refusal of Mocemsa Care’s (“Mocemsa”) application for its “OH THAT! NATURAL” Device mark (“Impugned Mark”), ruling that the mark was distinctive despite consisting of common English words. Mocemsa in the appeal submitted that it had been using the Impugned Mark for products in relation to beauty, skincare, and home fragrances. The trademark application, which claimed use since 2020, was supported by a user affidavit and a single invoice. Registry rejected the application, asserting that the mark lacked distinctiveness, and that one invoice was insufficient to establish that the mark has acquired distinctiveness. Mocemsa further argued that the Impugned Mark, was unique and innovative even though it was composed of common English words. It was further argued by Mocemsa that the distinctiveness of a combination mark cannot be negated by dissecting the mark. The Registry argued that one main reason for refusal of the Impugned Mark was because Mocemsa had filed only one invoice. The court held that even though the Appellant has used common words of the English language, however, the application has been filed for a device mark in which the said words have been used in a composite stylized manner. When viewed as a whole, the mark appears to be a distinctive mark. The court further held that the invoice submitted by Mocemsa was enough considering the fact that there was only one month gap between filing of the application and the use claim.

Recently, the Delhi High Court set aside the Trade Mark Registry’s (“Registry”) order of dismissing Diageo Scotland Ltd.’s (“Appellant”) opposition against the application for the mark CAPTAIN BLUE. As per the Appellant, it is the proprietor of the CAPTAIN family of marks since 2006 which are being used in relation to Class 33 goods, i.e., alcoholic beverages. The Appellant had filed an opposition against an application to register the mark CAPTAIN BLUE, in Class 33, which was filed by Prachi Verma (“Respondent”). The opposition was dismissed by the Registry on the ground that the mark CAPTAIN BLUE, when compared as a whole with the Appellant’s CAPTAIN family of marks, is distinctive. Further, the Registry also relied on the presence of various third-party CAPTAIN-formative marks on the Trade Marks Register. Aggrieved by the Registry’s decision, the Appellant filed an appeal at the Delhi High Court. It was the Appellant’s case that the Registry’s order overlooked the prior statutory and common law rights of the Appellant in its CAPTAIN family of marks. Further, the Appellant submitted that the mark CAPTAIN BLUE incorporated the dominant and source identifying component of the Appellant’s CAPTAIN family of marks. On the other hand, the Respondent maintained the stand that the rival marks are dissimilar.  Here, the court, acknowledged the Appellant’s prior rights in its CAPTAIN family of marks, including the marks CAPTAIN MORGAN GOLD and CAPTAIN MORGAN WHITE. The court was of the opinion that the mark CAPTAIN BLUE of the Respondent is bound to be associated as a variant of the Appellant’s CAPTAIN family of marks and the mere addition of the term BLUE did not add to its distinctiveness. The court also noted that the Respondent did not produce any evidence of actual use or commercial intent to use the said mark at the evidentiary stage of the opposition proceeding, thereby, not providing any commercial justification for the adoption of the mark. Lastly, the court submitted that the Respondent also failed to produce any evidence regarding the mark CAPTAIN being used in the market by other third-parties in relation to Class 33 goods. In light of this, the court directed the Registry to remove the Respondent’s application for the mark CAPTAIN BLUE from the register.  [Diageo Scotland Limited vs. Prachi Verma and Anr., [C.A. (COMM. IPD-TM) 7/2025, judgement dated April 16, 2025] Click here to read the judgment copy

On April 21, 2025, the Supreme Court stayed the direction issued by the Division Bench of the Delhi High Court requiring Azure Hospitality Private Limited (“Azure”) to make payment to Phonographic Performance Limited (“PPL”) based on the tariff rates prescribed by the only registered copyright society in India, Recorded Music Performance Limited, if it intends to play any songs from PPL’s repertoire in its hotels and restaurants. The Supreme Court also clarified that the order passed by the Single Judge of the Delhi High Court will remain inoperative for the time being. The dispute originated from a civil suit filed by PPL seeking permanent injunction to restrain Azure from using PPL’s sound recordings in its outlets without obtaining the necessary license. The Single Judge held that PPL, as the owner of the copyrighted works, possesses the inherent right to license those works – a right that cannot be curtailed by the Section 33 of the Copyright Act. Consequently, the court restrained Azure from using PPL’s copyrighted works until the final adjudication of the suit. On appeal, the Division Bench sided with Azure, holding that while PPL is indeed the owner of the sound recordings, its commercial licensing activity falls within the scope of “carrying on the business” as envisaged under Section 33(1) of the Act. According to the Bench, this provision mandates that such business can only be conducted by a registered copyright society or through membership in one. The Division Bench also noted that accepting the contrary view—such as that of the Bombay High Court in suits involving Novex Communications Pvt. Ltd., which held that registration as a copyright society is not mandatory for owners granting licenses—would render the core of Section 33(1) redundant. In order to balance the equities, the Division Bench modified the Single Judge’s order and directed Azure to pay license fees to PPL based on RMPL’s tariff rates, as if PPL were a member of RMPL. The proceedings before the Supreme Court, challenging the Division Bench’s ruling, are currently pending final adjudication. Azure Hospitality Pvt. Ltd. v. Phonographic Performance Ltd., SLP(C) No. 10977/2025 and FAO(OS)(COMM) 41/2025 Click here to read the judgment copy Click here to access the SLP Order

Recently, the Delhi High Court set aside the Trade Mark Registry’s (“Registry”) order where the Registry refused the application filed by Mankind Prime Labs Private Limited (“Mankind”) for the mark CROSSRELIEF in Class 5. The Court ruled that, CROSS is common in the medical industry and is considered publici juris, thereby not subject to monopoly. Hence, the Court found that the mark CROSSRELIEF is visually and structurally distinct from the cited marks in the Examination Report. The application for the mark CROSSRELIEF filed on a ‘proposed to be used’ basis, had been rejected by the Registrar of Trade Marks on the ground that the mark was deceptively similar to earlier marks and was likely to cause confusion under Section 11(1) of the Trade Marks Act, 1999 (the “Act”). Challenging this decision, Mankind contended that CROSSRELIEF is a coined and arbitrary term, being a portmanteau of CROSS and RELIEF, and has no dictionary meaning. It was argued that the mark is inherently distinctive and should be considered as a whole, rather than being dissected into its individual elements. Mankind also submitted that CROSS is a common term in the medical industry, descriptive in nature, and publici juris, and therefore, there can be no monopoly over it. Mankind further argued that there exist discernible differences between the mark CROSSRELIEF and the cited mark(s) in the Examination Report, when assessed as a whole. Hence, refusal of the mark on the grounds of Section 11(1) of the Act, is misplaced and unfounded. The Court concurred with Mankind’s submissions and reiterated the principle that a composite trademark must be evaluated in its entirety. The Court held that the mark CROSSRELIEF, being arbitrary and not a dictionary term, was not only fanciful but also distinctive in nature when viewed as a whole. The Court added that term CROSS is common in the medical industry and publici juris, over which no one can claim monopoly. Hence, while comparing the marks, the consumers are likely to ignore such common elements in the marks i.e., CROSS and will focus on the distinctive element. In conclusion, the Court set aside the impugned order dated 17.10.2023 passed by the Registrar and allowed the mark CROSSRELIEF to proceed for registration. However, it clarified that such registration would not confer exclusive rights over the individual terms CROSS or RELIEF in isolation. [Mankind Prime Labs Private Limited Vs. Registrar of Trade Marks. [C.A (COMM.IPD-TM) 7/2024, I.A. 1990/2024 – Stay & I.A. 1991/2024 – Exp] Click here to read the judgment copy