In a recent judgment, the High Court of Calcutta addressed a dispute concerning infringement of trademark, copyright, and passing off, brought forth by ITC Limited (“ITC”).    ITC, the proprietor of the well-known trademark GOLD FLAKE and its associated trade dress since 1905, brought an action against Pravin Kumar and eight other respondents (“Respondents”) for selling cigarettes under the mark GOLD STAG with nearly identical trade dress through an inextricably connected network of companies. After an ad interim injunction, granted in favour of ITC, the Respondents filed applications to vacate the order and to revoke the court’s dispensation from mandatory pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015. ITC argued that owing to use of the word GOLD for over a century, it had become an essential feature of its mark and acquired a secondary meaning exclusively associated with its products. ITC contended that the Respondents were acting as co-conspirators and had been working surreptitiously to sell counterfeit cigarettes, which constituted infringement and passing off. The Respondents contended that ITC could not claim a monopoly over the laudatory word GOLD, especially since ITC’s own registrations contained disclaimers to that effect. They denied any similarity between the rival products’ trade dress and device and argued that the suit was not maintainable against a registered proprietor of the GOLD STAG mark.   The Court ruled largely in favour of ITC and dismissed the application to revoke the dispensation from mediation, since ITC had sufficiently pleaded urgency. While the court held that ITC’s claim of infringement based exclusively on the word GOLD was unacceptable at the prima facie stage and would require trial, it found a clear case of trade dress and copyright infringement. The court also noted that the year of first publication claimed by the Respondents was 2013, showing the ‘Mandatory graphical warning’ rule, which had only come into force on April 1, 2016, which goes to the root on the veracity of the documents in favour of the Respondents. The court found striking similarities in get-up, colour scheme, and presentation, constituting trade dress infringement, inter alia, under section 2(c) of the Copyright Act 1957. Finding a strong prima facie case and the balance of convenience in ITC’s favour, the court confirmed the interim injunction and dismissed the Respondents’ applications to vacate the order and revoke the mediation waiver. ITC Limited Vs. Pravin Kumar & Ors. (Case Number: IP-COM/12/2025), judgement dated June 20, 2025 Read the judgement copy here  

In a recent decision, the Delhi High Court in Zeria Pharmaceutical Co. Ltd. v. Controller of Patents (C.A.(COMM.IPD-PAT) 452/2022) addressed the hurdles of patenting intermediate compounds in India. The court upheld the rejection of a divisional application for a new intermediate compound, reinforcing strict standards for pharmaceutical patents. What Are Intermediate Compounds? In pharma, intermediates are chemical compounds formed along the path to making the final drug. They’re the essential building blocks, but not the end product itself. Case in Brief Zeria sought a patent for a novel intermediate compound used in making medicines. The claimed compound differed from known ones by a minor structural change which is swapping an ethoxy group for a methoxy group. Patent Office’s Objections The Patent Office raised two main objections: a. Section 3(d): Zeria didn’t provide data showing that the intermediate led to a final medicine with improved therapeutic efficacy over existing ones. b. Section 2(1)(ja): The claimed compound did not show an inventive step, as the structural modification was considered obvious to a skilled person. Court’s Observations The Court found that the claimed compound was just a minor variation of what’s already known. It emphasized that, under Section 3(d), it’s not enough to show small changes or better process yields. The law requires data proving enhanced therapeutic efficacy in the final drug. On inventive step, the Court agreed that simply changing one chemical group for another was a routine modification, not an inventive leap. Key Takeaway If you’re seeking a patent for an intermediate compound, remember: You must show that it results in a final drug with better therapeutic benefits and not just a marginally different molecule or a more convenient process. Zeria Pharmaceutical Co. Ltd. v. Controller of Patents (C.A.(COMM.IPD-PAT) 452/2022) Read the judgement copy here

Recently, a Division Bench of the Delhi High Court allowed six appeals filed by Crocs Inc. against prominent footwear manufacturers in India viz Bata, Liberty, Relaxo, Aqualite, Action Shoes and Bioworld, in a passing-off action. The appeal overturned the single judge’s order which had dismissed Crocs’ suits on the ground that once a design is registered under the Designs Act, the entity cannot separately claim passing off. Essentially, the single judge had opined that Crocs was attempting to assert a “double monopoly” by invoking both statutory design rights and common law protection. Crocs appealed, arguing that registration under the Designs Act does not extinguish its common law goodwill in its clog’s trade dress. The Division Bench stressed that passing-off is an independent common law remedy whose availability can be curtailed only by express statutory exclusion, something neither the Trade Marks Act nor the Designs Act provides. It found the single judge had misinterpreted the Carlsberg case which merely cautions that, at trial, a plaintiff must prove goodwill in more than the bare design, but it does not bar the suit at inception. Whether Crocs relies solely on the registered design or on broader get-up is a factual matter requiring evidence. Accordingly, the division bench set aside the impugned judgment and allowed all six appeals with no order as to costs. The ruling revives Crocs’ passing-off claims, affirming that design registration does not, by itself, negate common law rights in a product’s trade dress, and that Indian IP law permits dual protection i.e., registration under the Designs Act and passing-off relief, provided the appellant/plaintiff proves reputation, misrepresentation, and likelihood of damages. The court further acknowledged that even if a design has some functional elements, it can still acquire distinctiveness over time. When consumers come to associate a particular shape or configuration with a specific brand, it merits protection that extends beyond mere technical design registration. The court stated that a passing off claim does not need extra or new features apart from the registered design. The design itself, once distinctive, is sufficient to establish misrepresentation. The defendant footwear manufacturers will now face trial on allegations that their foam clogs misrepresent origin by imitating Crocs’ distinctive trade dress. M/S CROCS INC USA v. M/S BATA INDIA & ORS. (2025:DHC:5037:DB) Read the judgement copy here

In a significant ruling, the Bombay High Court has set aside the Registrar of Trade Marks’ refusal to register Yamaha Hatsudoki Kabushiki Kaisha’s (“Yamaha”) trademark ‘WR’ filed under Class 12. The Registrar had rejected the application under Section 11(1) of the Trade Marks Act, 1999, citing potential likelihood of confusion with Honda Motor Company Limited’s (“Honda”) trademark ‘WR-V’, which is also registered under the same class. Yamaha, a globally recognized manufacturer of motorcycles and marine products, had applied for registration of the ‘WR’ mark for its motorcycle range, asserting prior adoption since 1990 and global registrations. Yamaha contended that ‘WR’ was associated exclusively with its two-wheeler and three-wheeler products, while Honda’s ‘WR-V’ is related to cars, and therefore the marks served distinct market segments. It also relied on its international reputation and long-standing use of the mark as grounds for registration and demonstrated, while placing relevant material on record, that both the marks have concurrently existed over various international jurisdictions. In response, the Registrar defended the refusal, citing Section 11(1) and asserting that registration of ‘WR’ could mislead consumers due to the similarity in the marks and that Yamaha had not shown sufficient reasons to override the statutory bar under Section 11(1)(b). The Court, while acknowledging the possibility of confusion between the marks at first glance, held that the Registrar’s order was not well-reasoned, cryptic and failed to consider Yamaha’s evidence of long-standing international use, concurrent registrations in multiple jurisdictions, and the application of the proviso to Section 20(1). It emphasized that in special circumstances, a mark may be advertised before acceptance to allow public opposition and fair scrutiny, and Yamaha’s global presence and brand equity met that threshold. The Court also underscored that it cannot overlook the settled position of law laid down by the Hon’ble Supreme Court in London Rubber Co. Ltd. v. Durex Products Inc., where special circumstances were considered for permitting registration under Section 12, despite the marks in question being identical. Although that decision pertained to the applicability of Section 12, it reaffirms the principle that the coexistence of similar or even identical marks on the Trade Marks Register is not unprecedented. Accordingly, the Bombay High Court quashed the impugned order dated 20 May 2021 and directed the Registrar to advertise Yamaha’s ‘WR’ application before acceptance under Section 20(1). This decision reinforces the legal recognition of transborder reputation, the need for reasoned administrative orders, and the role of special circumstances in trademark registration proceedings. Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trade Marks, 2025 SCC OnLine Bom 2332 Read the judgement copy here

Key Observations from the Pro-Tem ruling in Dolby v. Lava directing Security Deposit of over INR 20 crores The pro-tem order by the Hon’ble Delhi High Court directing Lava to furnish a security deposit of over INR 20 crores is an important milestone in the evolving Indian regime for standard-essential patents (SEPs) and FRAND licensing. The following eight (8) key considerations were instrumental in arriving at the ruling: The Court clarified that a pro-tem security order is distinct from an injunction as it does not stop Lava’s business but ensures that Dolby is not left without protection while litigation is pending. This approach balances the equities when determining SEP disputes, especially given the long timelines for trial. The Court held that, at the pro-tem stage, it need not conduct an “in-depth” exploration of essentiality and validity. Instead, a prima facie finding is sufficient, especially where: Lava’s negotiation tactics in delaying counteroffers, seeking endless information, and raising new technical objections only in court were characterized as “patent holdout.” Key takeaway – Parties who stall or avoid bona fide FRAND negotiations may face adverse consequences at interim stages. The Court rejected Lava’s argument that expired patents shouldn’t be covered by the pro tem order. Since all the patents were valid when Dolby initiated negotiations (and Lava’s delays caused their expiry), Lava was held liable for the whole portfolio for the relevant period. The Court accepted Dolby’s licensing rates, finding them in line with rates for other similarly situated licensees. Lava’s INR 5.13 per device counteroffer was found to lack any economic or documentary basis. Dolby provided evidence of Lava’s financial liabilities and ongoing regulatory issues. The Court found it prudent to secure Dolby’s interests now, to avoid the risk of an uncollectible judgment after trial. The Court reaffirmed that the SEP holder is not required to disclose confidential third-party licensing agreements at the pro tem stage, and implementers must make their own FRAND assessments and counteroffers. The Court ordered the security deposit to cover all sales from December 2018 (when Dolby first asserted its patents), rejecting Lava’s request to limit liability to the post-suit period. This order is a clear message – Conduct, Compliance & Good Faith Are Critical.   Dolby International Ab & Anr vs Lava International Limited,CS (COMM) 350/2024 Read the full judgement copy here.

In a landmark judgment clarifying the law on homonymous Geographical Indications (“GIs”), the High Court of Delhi recently adjudicated on the long-standing dispute between Chilean and Peruvian producers over the rights to the name PISCO. The petitioner, a Chilean association of Pisco producers challenged an Intellectual Property Appellate Board (“IPAB”) order that had granted a GI registration for PISCO to Peru without any geographical qualifier. The central issue was whether The Geographical Indications of Goods (Registration and Protection) Act, 1999 permits the registration of homonymous GIs, which are indications that sound or spell alike but denote products from different geographical regions. The court’s analysis centered on the prohibition of deceptive GIs under Sections 9(a) and 9(g) of the Act, and the specific provisions for registering homonymous GIs under Section 10 of the Act The petitioner argued that as both Chile and Peru have a legitimate and historical claim to PISCO, granting an unqualified registration to Peru would be deceptive to consumers under Section 9(a) of the Act. They contended that the matter should be governed by Section 10 of the Act, requiring the use of identifiers (i.e., “Chilean Pisco” and “Peruvian Pisco”) to ensure equitable treatment and avoid confusion. Peru, in response, argued for exclusive rights, contending that the Chilean product was an “illegitimate misappropriation” of the authentic Peruvian PISCO. They asserted that there was no geographical contiguity between the Pisco-producing regions in the two countries and that there was no scope for confusion as their spirit is sold simply as “Pisco” worldwide without any prefix, establishing it as the sole origin. The court first distinguished the principles of GI law from trade mark law, noting that the IPAB had erroneously applied the trade mark concept of “prior use” to determine the GI’s origin. The court clarified that GIs are tied to the unique characteristics of a region, not necessarily to which country used the name first. It held that since both nations produce distinct versions of PISCO, granting a blanket registration to Peru would indeed fall foul of Section 9(a) of the Act as it would mislead consumers. The court ruled that the correct legal path was through Section 10 of the Act, which explicitly allows for the protection of homonymous GIs, citing the domestic example of “Banglar Rasogolla” and “Odisha Rasagola” as a precedent for allowing such co-existence with geographical qualifiers. In conclusion, the court set aside the IPAB’s order. This judgment provides essential clarity on the treatment of homonymous GIs in India, affirming that the GI framework is robust enough to protect multiple legitimate geographical indicators for the same product, thereby ensuring fair treatment for all legitimate producers and preventing consumer deception. Asociacion De Productores De Pisco A.G. v. Union Of India & Ors. W.P.(C)-IPD 17/2021, CM 139/2022 & CM 59/2023 

Recently, a Division Bench of the Delhi High Court, while dismissing an appeal, upheld its single judge order to restrain Rajasthan Aushdhalaya Pvt. Ltd. (“Appellant”) from manufacturing and marketing tablets under the mark LIV- 333, owing to its deceptive similarity to the LIV.52 mark registered in favour of Himalaya Global Holdings Ltd. & Himalaya Wellness Company (“Respondents”).   The Respondents had initiated a civil suit against the Appellant alleging, inter alia, trademark infringement, pursuant to which an ad interim injunction was granted in May 2024 and the court issued an ex-parte order restraining the Appellant from using the mark LIV-333. Owing to the Appellant’s failure to file its written submissions within the stipulated time, the single judge in February 2025, granted permanent injunction against the Appellant and imposed costs to the tune of Rs. 10.9 lakhs and damages of Rs 20 lakhs on the Appellant for continued infringement, despite an injunction.   Counsel for the Appellant submitted that the prefix ‘LIV’, in ‘LIV.52’ was merely an abbreviation for ‘liver’ and that the term ‘LIV’ is publici juris and no one can claim exclusivity over it. He also submitted that there is no visual similarity between the marks ‘LIV.52’ and ‘LIV-333’. On the other hand, the Respondent’s counsel stated that there is no error in the judgment and the Appellant could not adopt the mark ‘LIV-333’ as the Respondent’s ‘LIV.52’ was a household mark and had been in the market since 1930.   Rejecting the contentions of the Appellant regarding the LIV.52 mark being generic, the court highlighted that the mark LIV.52 is coined and invented, and that its adoption is unique to the Respondents. Further, the court stated that the term LIV forms the essential and dominant part of the mark and mere addition of the numeral ‘333’ was deemed insufficient to render the rival marks dissimilar. The court upheld the initial interest confusion test and emphasised that even a minimal degree of confusion in case of pharmaceutical goods can have serious consequences on public health. Lastly, the court opined that if the rival marks are deceptively similar, a case of infringement is made out. “Added features”, such as the visual dissimilarity between the marks, difference in packaging, price and the like, have no relevance in a claim of infringement. Rajasthan Aushdhalaya Private Limited Vs. Himalaya Global Holdings Ltd & Anr. [RFA(OS)(COMM) 18/2025], pronounced on July 4, 2025 Read the judgement copy here.

In a recent judgment, while injuncting a Rishikesh-based entity from using the mark CORDELIA for hotel/lodging services, the Delhi High Court (“Court”) has observed that luxury cruise services would certainly be allied and cognate to land-locked hotel services and cannot be said to be dissimilar on any count. The Court observed that both cruise and hotels fall under the larger subset of hospitality services and have largely identical target consumers and trade channels. Additionally, the court also re-emphasized the principle that registrations for composite device marks encompass the word elements comprised therein as well. It was the plaintiff’s case that it adopted and was using the Cordelia Cruise device mark (image in the inset artwork) for its sea cruise tourism services since 2020. The Plaintiff owned registrations for its Cordelia Cruise device mark in Classes 39, 41, and 43, since 2021. The Defendant, on the other hand, started using its own versions of marks comprising the word CORDELIA, such as Cordelia Inn/Hotel Cordelia Inn, in respect of its hotel/lodging services based out of Rishikesh, in 2022. Plaintiff alleged that the defendants had usurped the word CORDELIA in its entirety from the plaintiff’s prior used and registered Cordelia Cruise device mark, thereby making the defendant liable for trade mark infringement. Plaintiff also argued that mere replacement of the word “Cruise” with descriptive words such as “Inn” or “Hotel” were not sufficient to distinguish the rival marks. Defendants, on the other hand, contended that “Cordelia” is a generic word used across various industries, and that the plaintiff’s claim of infringement was unfounded since the plaintiff’s trade mark registration was only for the Cordelia Cruise composite device mark as a whole and not for the simpliciter word CORDELIA. The defendants also sought to refute the plaintiff’s allegation of infringement on the ground that they were using the impugned marks only in relation to hotels on land, which are distinct from and cannot be confused with the plaintiff’s sea cruise services. The court dismissed the defendant’s contentions and observed that services of both parties pertain to hospitality services and are also aimed at the same class of consumers and are offered through identical trade channels. The Court also dismissed the defendants’ argument that CORDELIA was a generic or a common word and found this to be unacceptable since the defendant had itself filed a trade mark application for its Cordelia Inn device mark. Lastly, the Court also ruled that it was settled law by way of many previous judgments that words forming part of registered device marks are also protectable of their own accord as trade marks if they constitute the prominent element of the registered mark. Thus, the Court restrained the Defendants from using the infringing Cordelia Inn/Hotel Cordelia Inn marks through both online and offline modes till the disposal of the suit. Waterways Leisure Tourism Pvt. Ltd. v. Mr. Mukesh Prasad Thapliyal & Ors, CS(COMM) 42/2025 Read the judgement copy here.

In a recent decision, the Calcutta High Court restrained Amara Raja Energy and Mobility Ltd. from using a red and white trade dress, the term “EL,” and a shattered “O” device on its ELITO-branded batteries, in a trade mark infringement and passing-off suit filed by Exide Industries Limited. Exide, active since 1920, claimed exclusivity over its red-coloured trade dress, which has been consistently used across products, packaging, and advertising, and has acquired source significance. It also owns rights over the word “EL” and the shattered “O” device, adopted in the years 1987 and 1973, respectively. The respondent, a key competitor in the battery market, offers its products under the AMARON mark, widely recognized for its green-coloured trade dress. Notably, the respondent had previously, on certain occasions, mocked Exide’s red trade dress in advertisements. In 2020, the respondent launched its ELITO product in blue trade dress for overseas markets but later introduced a red trade dress for the same product in India. The court questioned this shift, especially given the similarities with Exide’s trade dress, to which, the respondent claimed that the blue packaging lacked visual appeal. The court was not convinced, especially as the blue packaging continued abroad while the red was adopted only in India. The court observed that the respondent had deliberately moved closer to the petitioner’s get-up, and reiterated that a court may examine intent when assessing the likelihood of misrepresentation. The overall similarities, including the red coloured trade dress, “EL” prefix, and shattered “O” device, were sufficient to create a likelihood of confusion, particularly in a market like India where many consumers may have limited literacy or brand awareness. Given the respondent’s status as Exide’s primary competitor, the court held it had a heightened duty to act prudently when adopting similar marks, as constructive knowledge could be imputed. The court stressed that while monopoly over a single colour is rarely granted but a trade dress with long and consistent use that acquires secondary meaning is protectable. Noting the respondent’s inconsistent explanations and removal of online material during the hearing, the court found elements of bad faith and granted an injunction with a two-month compliance period. Read the judgement copy here.

The High Court of Delhi in the case of Albemarle Corporation v. Controller of Patents (order dated July 7, 2025) addressed the rights of patent applicants to amend claims during appellate proceedings, offering useful guidance for applicants navigating the Indian patent system. Albemarle Corporation, a US-based specialty chemicals company, had applied for an Indian patent relating to a novel solvent system for dissolving rigid polyurethane foams. The application was initially refused by the Indian Patent Office on grounds of lack of novelty, inventive step, and non-fulfilment of enablement requirements. On appeal, instead of contesting each ground of the refusal, Albemarle submitted a revised “auxiliary” set of claims, narrowing the subject matter to focus solely on the process for cleaning polyurethane foam from articles, as opposed to the broader original claims for the solvent system itself. Key Issues Considered Decision The Indian Patent Office objected to the introduction of amended claims after initial refusal. However, the High Court ruled in favour of Albemarle, holding that: The Court allowed Albemarle’s auxiliary claim set to be taken on record. Further, the Court revived the patent application specifically in the context of the amended claims and directed the Patent Office to conduct a fresh and expedited examination. Implications This order offers reassurance to patent applicants that there remains flexibility to amend claims during appeal, as long as the amendments are substantiated and are within the scope of the original specification. This approach enhances the options available to patent applicants seeking protection in India and is particularly valuable where narrowing claims may overcome prior arts cited and/or any technical objections. Albemarle Corporation vs. The Controller of Patents [C.A.(COMM.IPD-PAT) 19/2022]