ADDITIONAL CASE LAWS (Chapters 7,8,9 & 10)

TRADEMARKS
Ambalal Sarbhai Enterprises Distinctiveness of the trademark "PROMIX" 288
Ltd. v. Tata Oil Mills Co. Ltd. Facts:
 The applicant (Ambalal Sarbhai Enterprises) sought to register the trademark "PROMIX".
 The respondent opposed the registration, citing that "PRO" was a commonly used prefix in trade.
Held:
 The Bombay High Court held that:
o Despite the presence of many trademarks using the prefix "PRO", the term "PROMIX" was a
coined and distinctive word.
o The applicants had specifically coined "PROMIX", and it was not previously known in trade.
o The applicants were proprietors of a series of marks with the prefix "PRO", giving them
further strength in asserting distinctiveness.
Conclusion:
 The mark "PROMIX" was held to be distinctive and registrable under the Trade Marks Act.
 Mere presence of similar prefixes in other trademarks does not bar registration if the overall mark
is original and unique.
Durga Dutt Sarma v. Key Legal Principle: 288
Navaratna Pharmaceutical  Length of use of a trademark is a material factor in determining whether a mark has acquired
Laboratories and Kaviraj distinctiveness.
Pandit Durga Dutt Sharma v.  A mark that may not initially be inherently distinctive can acquire distinctiveness over time through
Navaratna Pharmaceuticals continuous and exclusive use in trade.
Laboratories Held:
 The Kerala High Court (1962) and subsequently the Supreme Court (1965) affirmed that:
o Long and consistent use of a mark in commerce can lead it to be associated by the public
with a particular source or origin.
o Such association helps a trademark achieve distinctiveness, making it eligible for statutory
protection even if it was initially descriptive or non-distinct.
Conclusion:
 Time and usage play a crucial role in establishing the distinctiveness of a trademark under Indian
law.
 A trademark that has been in longstanding use is more likely to gain legal recognition and

protection.
F. Hoffmann La Roche & Co. Key Issue: 288
Ltd. v. Geoffrey Manners & Whether the trademark “DROPOVIT” is descriptive or invented, and whether it qualifies for registration and
Co. Pvt. Ltd. protection under trademark law.
Held:
 The Supreme Court held that “DROPOVIT” is an invented word, not merely descriptive.
 Although it may be derived from familiar English words, the combination forms a new, original
word that does not immediately suggest the source words to an ordinary English-speaking person.
 Because it is a coined or invented term, “DROPOVIT” is distinctive and eligible for registration and
protection as a trademark.
 The trademark cannot be removed from the register merely on the ground that it is not descriptive.
Legal Principle:
 A word created by combining familiar components can be distinctive and protectable if the
resulting term is not commonly used or immediately recognizable as descriptive.
 Invented words are inherently distinctive and enjoy a stronger presumption of trademark
protection.
S.M. Dychem v. Cadbury  The Supreme Court held that while some similarities between trademarks may exist, overall 293
India Ltd. dissimilarity in the essential features can defeat a claim of infringement.
 Upon first impression, the Court found that the differences between the two marks were more
prominent and visually striking than any resemblance.
 The essential features of both marks were distinct.
 Importantly, the Court clarified that in an infringement action:
 If essential features are copied, intention to deceive or cause confusion is irrelevant.
 Even without intent, false representation can amount to infringement.
 However, in this case, the overall impression created by the defendant’s mark was not confusing.
 The Court concluded that the High Court was right in favouring the defendant, as the totality of the new
mark did not mislead or confuse.
 Thus, a new trademark that incorporates elements from an existing mark but creates a visibly different
overall impression may not amount to infringement.
Hearst Corp. v. Dalal Street  The case dealt with trademark infringement concerning the magazine title ‘Esquire’. 293
Communication Ltd.  The plaintiff, Hearst Corporation:
 o Was the registered owner of the trademark ‘Esquire’ since 1942.
o Had been publishing a monthly magazine under this name since 1933.
o Also held copyright in the script, get-up, and style of the trademark presentation.
 The defendant, from October 1994, began publishing a monthly magazine titled ‘Esquare’.
 The Court laid down the conditions for infringement:

1. Plaintiff must be the registered proprietor of the mark.

2. Defendant must use a deceptively similar mark.
3. The defendant’s use must be in relation to goods/services for which the plaintiff’s mark is
registered.
4. The use must occur in the course of trade, not accidentally.
 The Court found that ‘Esquare’ was deceptively similar to ‘Esquire’, especially given the same industry
(magazine publishing).
 The similarity could cause confusion among readers, harming the plaintiff’s brand identity.
 Thus, it was held that the defendant's act amounted to trademark infringement.
Pianotist Co. Ltd. (1906) 23  Core Issue: Trademark infringement—similarity in names/marks used for similar goods or services. 293
RFC 774, Roche & Co. v.  Legal Test for Infringement:
Manners & Co. (P) Ltd., AIR  Courts must assess whether there is an overall similarity between the two marks.
1970 SC 2062, and the  This includes visual resemblance and phonetic similarity.
Esquire v. Esquare  The comparison must be made from the perspective of the average consumer with imperfect
recollection.
 Observation by the Court:
 The defendant’s magazine covers were seemingly designed to attract male interest, just like the
plaintiff’s.
 The mark ‘Esquare’ was phonetically similar to ‘Esquire’.
 This similarity was likely to confuse unwary customers, leading them to believe the two publications
were related.
 Imitation and Bona Fides:
 The Court also considered whether the defendant’s mark was an imitation, which would indicate
lack of bona fides.
 Intent to imitate, though not necessary, can strengthen a claim of infringement.
 Ruling:
  The Court found sufficient phonetic and visual similarity.
 Injunction granted restraining the defendant from continuing to use the mark ‘Esquare’.
Brooke Bond India v. C. 1. Plaintiff: Owner of the registered trademark "Taj Tea". 293
Patel & Co., 1993 IPLR 220 2. Defendant: Used the mark "Taj Tea" on tea packets in India.
(Cal.) 3. Court’s Finding: This amounted to infringement of the plaintiff’s registered trademark.
4. Defendant’s Offer: Willing to change the colour scheme and get-up of the packaging.
5. Court’s View: Despite the offer, an interim injunction was granted.
6. Principle: Mere willingness to modify packaging is not sufficient to prevent legal consequences of
infringement.
7. Focus: Use of the registered mark itself, not just visual similarity, justified injunction.
Cox Distillery v. McDowell & 1. Plaintiff: Owner of the registered trademark including the word “DIPLOMAT”. 293
Co., 1999 PTC 507
2. Defendant: Marketed COX DIPLOMAT Premium Whisky.

3. Court’s Finding: Found deceptive similarity between plaintiff’s label and defendant’s label.

4. Label Features:

o Similar font and size for the word "DIPLOMAT".

o Included a human figure on the label, just like the plaintiff's.

5. Legal Basis: Held to be infringement under Section 29(1) of the Trade Marks Act.
6. Outcome: Defendant was restrained from using the infringing label.
7. Principle: Visual and thematic similarity in label design and branding can lead to a finding of
trademark infringement, even if the names are not identical.
8. Consumer Perspective: Likelihood of confusion or association was sufficient to warrant injunction.
East and Hosiery Mills Pvt. The Calcutta High Court held that the defendant’s use of the trademark ‘Sacha Moti’ was phonetically 293
Ltd. v. Agarwal Textiles Mills similar to the plaintiff’s mark ‘Moti’, and likely to cause confusion among consumers. The Court rejected
the defendant’s justification that the name was derived from a partner’s father. It ruled that even without
intent to deceive, similar-sounding names can amount to trademark infringement if they harm the
goodwill or market identity of the original brand.
T.V. Venugopal v. Ushodaya Key Issue: 294
Enterprises Ltd., (2011) 4 Whether the use of the trademark “Eenadu” by the appellant for incense sticks infringed upon the
SCC 85 reputation and goodwill of the respondent’s well-known newspaper brand “Eenadu.”
Held:
 The Supreme Court held that the respondent’s mark “Eenadu” had acquired extraordinary
reputation and goodwill in Andhra Pradesh.
 The appellant’s use of the same mark on unrelated products (incense sticks) was a clear attempt to
misappropriate this reputation.
 Such use would mislead consumers into believing that the incense sticks were associated with the
respondent.
 The Court emphasized that unauthorized use of a well-known mark dilutes its goodwill and creates
consumer confusion.
 Therefore, the appellant was not permitted to use the mark “Eenadu.”
Legal Principle:
 No one is allowed to exploit or encroach upon the reputation and goodwill of another's trademark.
 Protection is granted not just to prevent confusion, but also to preserve the proprietary rights and
brand value of well-known trademarks.
Infosys Technologies Ltd. v.  The Delhi High Court held that the defendant’s use of “INFOSYS”—a registered trademark—in its 294
Adinath Infosys Pvt. Ltd. corporate name constituted infringement.
 The word “INFOSYS” was identified as the key feature of the plaintiff’s trademark and brand identity.
 The Court noted that using such a mark could mislead the public and create confusion regarding
affiliation or origin of services.
 The defendant was restrained from using “INFOSYS” or any identical/deceptively similar expression in its
corporate name or in connection with services offered by the plaintiff.
Raj Kumar Prasad & anr vs.  Facts: 294
Abbott Healthcare Pvt Ltd  Abbott Healthcare owns the registered trademark ‘ANAFORTAN’, used extensively since 1988
(through its predecessors).
 Abbott claimed substantial sales and goodwill under this mark.
 The defendants (Raj Kumar Prasad & Alicon Pharmaceuticals) were using the similar mark
‘AMAFORTEN’ for pharmaceutical products containing the same active ingredient (Camylofin
Dihydrochloride).
 Abbott alleged deceptive similarity between ‘AMAFORTEN’ and ‘ANAFORTAN’ and sought an
 injunction.
Key Legal Issues:
 Whether a trademark owner can sue another registered proprietor of a deceptively similar
trademark.
 Whether ‘AMAFORTEN’ is deceptively similar to ‘ANAFORTAN’ in the context of pharmaceutical
products.
Held:
 Appeal dismissed. The Court upheld the injunction granted by the Single Judge.
 Held that under Section 124 of the Trademarks Act, 1999, a registered proprietor can sue another if
the marks are deceptively similar.
 The mark ‘AMAFORTEN’ was visually and phonetically similar to ‘ANAFORTAN’.
 Since the goods are identical (pharmaceuticals), the consumer base and trade channels are the
same, and deceptive similarity could mislead the public.
 Abbott’s longstanding use and established goodwill since 1988 were recognized.
 The defendants' mark was adopted much later (applied in 2009, registered in 2011, and market
entry around 2012), and they had failed to disclose key details about their usage.
Legal Principle:
The Court applied the standard from Wander Ltd. v. Antox India (1990 Supp. SCC 727) and confirmed that
injunctive relief is appropriate when there is clear evidence of deceptive similarity, especially in
pharmaceutical trademarks, where public health and confusion risks are critical.
Pfizer Products Inc vs.  Plaintiff (Pfizer) filed a suit alleging trademark infringement by the defendants. 302
Rajesh Chopra & Ors  Plaintiff claimed the defendants were about to sell infringing goods in Delhi.
 Defendants challenged Delhi court’s territorial jurisdiction, stating they had not sold the goods in Delhi.
 The court had to decide whether the threat or intention to sell infringing goods in Delhi conferred
jurisdiction.
 The court held that a threat of selling infringing goods in Delhi is sufficient to establish jurisdiction.
 Whether the threat is justified or not would be decided later during injunction proceedings or the suit’s
merits.
 For deciding the jurisdiction under Order 7 Rule 10, the court assumed the plaintiff’s allegations and
defendants’ intention to sell in Delhi as true.
 Therefore, the court dismissed the application challenging jurisdiction.
 The decision clarified that mere threat or intention to sell infringing goods in a jurisdiction confers the
 court’s jurisdiction to entertain suit.
Samsung Electronics  Plaintiffs filed a suit for infringement and passing off of the trademark “SAMSUNG.” 307
Company Limited vs. Kapil  The court examined the applicability of Section 30(3) of the Trade Marks Act, 1999.
Wadhwa and Ors.  Section 30(3) provides an exception to trademark infringement.
 It states that selling or dealing in goods in the market is not an infringement if the goods were lawfully
acquired.
 The exception acts as a defense in infringement cases.
 A person using the trademark can claim that the goods were either:
 Lawfully obtained from the market where the trademark owner has put them, or
 Used with the consent of the trademark proprietor.
 This defense based on “exhaustion of rights” or proprietor’s consent completely absolves liability for
infringement.
 The court clarified that Section 30(3) does not grant any additional rights to the user beyond this
defense.
 The provision limits the scope of infringement, focusing on lawful acquisition or consent.
 Therefore, Section 30(3) acts only as a defense to infringement, not as a right to use the trademark
freely.
Kaviraj Pandit Durga Dutt The Supreme Court clarified the distinction between "trademark infringement" and "passing off" as 312
Sharma v. Navaratna follows:
Pharmaceutical 1. Nature of Remedy:
Laboratories o Passing Off: A common law remedy based on the principle of deceit — when someone
misrepresents their goods as those of another.
o Infringement: A statutory remedy available only to the registered proprietor of a
registered trademark to protect their exclusive right to use the mark.
2. Use of Trademark:
o In passing off, it is not essential for the defendant to use the exact trademark of the
plaintiff.
o In infringement, use of the plaintiff’s registered trademark (or something deceptively
similar) is essential.
3. Overlap in Features:
o If the passing off is based on colourable imitation of the registered mark, the facts of both
claims may overlap.
 o However, for infringement, the court must be satisfied that the defendant's mark is visually,
phonetically, or otherwise deceptively similar, indicating imitation.
Key Legal Principle:
 Passing off = deceit-based, common law remedy
 Infringement = statutory, trademark-based remedy
 Similarity in marks is critical for infringement; not necessarily for passing off
Midas Hygiene Industries (P) The Supreme Court laid down the following key principles regarding trademark and copyright 313
Ltd. v. Sudhir Bhatia and infringement:
Ors. 1. Injunction is the norm:
In cases involving infringement of trademark or copyright, courts should ordinarily grant an
injunction to prevent continued misuse.
2. Delay not a defence:
Mere delay in filing a suit does not defeat the right to obtain an injunction if infringement is
established.
3. Dishonest adoption matters:
If the adoption of the mark by the defendant appears prima facie dishonest, the case for an
injunction becomes even stronger.
4. No need to prove confusion (in trademark infringement):
If the defendant’s mark is identical to the plaintiff’s registered mark, the court need not assess
whether it causes confusion or deception.
5. Same test for infringement and passing off:
The test of likelihood of confusion applies equally in both trademark infringement and passing off
cases, as reaffirmed in Ruston & Hornsby Ltd. v. Zamindara Engineering Co., AIR 1969 SC 304.
Key Legal Takeaway:
 Infringement = Injunction usually granted, even if there's delay.
 Identical marks = No need to prove confusion.
 Dishonest use strengthens the case for injunction.

Morgan Stanley v. Bharat  The respondent registered the domain name [Link] on June 20, 2010. 325
Jain (2010):  The complainant argued that adding the country code top-level domain (ccTLD) “.[Link]” does not make
the domain name different from the complainant’s registered trademark “MORGAN STANLEY.”
 The complainant claimed the disputed domain name is confusingly similar to their trademark.
  The case focused on whether the domain name registration infringed on the complainant’s trademark
rights due to similarity.
Haldiram India (P) Ltd. v. Facts: 333
Berachah Sales Corpn.  Haldiram India Pvt. Ltd. sought protection of its ‘HALDIRAM’ mark and a declaration that it is a
well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

 The Plaintiff has been using the ‘HALDIRAM’/‘HALDIRAM BHUJIAWALA’ mark since 1941,
originating in Bikaner, and has built a vast national and global reputation.

 The mark is used for various food items and has registered trademarks and copyrights over logos,
labels, and packaging (including the Oval-shaped logo with ‘HR’).

 The Defendants incorporated Haldiram Restro Pvt. Ltd. in 2019 and used the ‘HALDIRAM’ mark for
restaurant and hospitality services (Class 43)—a class in which the Plaintiff had no trademark
registration.
Issues:
1. Should ‘HALDIRAM’ be declared a well-known trademark under Section 2(1)(zg)?

2. Can the Defendants be restrained from using ‘HALDIRAM’ in Class 43, where Plaintiff has no
existing registration?
Held:
 The Court declared ‘HALDIRAM’ and the Oval-shaped mark as well-known trademarks, based on:
o Long-standing use (since 1941)
o Global export and recognition

o Cultural and commercial significance

o Strong spill-over reputation, even in regions like West Bengal where the Plaintiff does not
hold exclusive rights

 The Court held that the concept of a “well-known” mark is dynamic, and should adapt to modern
 consumer perception, global branding, and cross-industry goodwill.

 The Defendants were restrained from using the ‘HALDIRAM’ name or deceptively similar marks
even in Class 43, based on the reputation and goodwill of the Plaintiff’s brand.
Key Takeaways:
 A trademark may be protected even outside the classes it is registered in, if it qualifies as a well-
known mark.
 Spill-over reputation and consumer recognition across industries can justify injunctive relief.

 Territorial divisions among brand owners do not affect a court’s power to declare a mark well-
known, if the reputation is broad and well-established.

Mannat Group of Hotels  Plaintiff owns registered trademarks including “MANNAT”, “MANNAT DHABA”, and related logos under 335
Private Limited & Anr. v. multiple classes since 2008.
M/S Mannat Dhaba & Ors  Plaintiff operates Dhabas and eateries located on the Delhi-Chandigarh Highway and has an established
reputation.
 Court appointed a Local Commissioner (LC) to inspect defendant premises and verify use of contested
marks.
 Defendant No.1 (“MANAT DHABA”) refused cooperation with LC and denied similarity to “MANNAT”.
 Defendant No.2 (“New MANNAT DHABA”) acknowledged the court order and informed LC of rebranding
the Dhaba as “MAHADEV DHABA”.
 Defendant No.2’s counsel agreed to file affidavit confirming rebranding and undertaking not to use
plaintiff’s trademarks.
 Defendant No.3 (“SHRI MANNAT DHABA”) admitted originally operating as “DELIGHT AMBROSIA” and
rebranded to compete with others using similar marks.
 Defendant No.4 (“APNA MANNAT DHABA”) took over the Dhaba 2-3 months ago, retained “MANNAT”
branding due to its local popularity.
 Defendant No.4 also runs restaurants under “GREASY GRILLZZ” and applied for registration of
“MANNATT”.
 Court found that plaintiff made out a prima facie case of trademark infringement and passing off.
 Court granted ad-interim injunction (ex parte) against Defendants Nos. 1, 3, and 4 restraining use of
marks “MANNAT”, “MANAT DHABA”, “MANNATT DHABA”, and similar confusing marks.
  Injunction also extended to owners, partners, employees, and all acting on behalf of defendants.
 Court acknowledged defendants’ attempts to rebrand their businesses.
 Defendants were allowed to approach plaintiff’s counsel to settle disputes through rebranding or other
amicable methods.
Key Takeaways:
 Trademark protection extends even in competitive local markets like highway eateries, especially
for longstanding and reputed brands.
 Deceptively similar trade names, even with minor alterations (like “MANAT” or “MANNATT”), are
not permitted when the original mark is well-known and registered.
 Courts may grant ex parte injunctions to protect intellectual property where infringement is
apparent and causes market confusion.
 Rebranding by infringers can be a mitigating factor but must be supported with undertakings and
compliance.
Khadi and Village Industries Summary: 336
Commission v. Mr Ashish Facts:
Singh and Ors., Delhi High  Plaintiff: Khadi and Village Industries Commission (KVIC), a statutory body established under the
Court Khadi and Village Industries Commission Act, 1956.
 KVIC is the registered proprietor of the well-known trademark “KHADI”, used continuously since
1956 on a wide range of products (cosmetics, food items, oils, woolens, etc.) sold via retail,
exhibitions, websites, and e-commerce.
 Plaintiff also operates a mobile app called “KHADI INDIA” and has a significant social media
presence.
 In January 2024, Plaintiff discovered a website “[Link]” promoted via Instagram,
advertising free Ram Mandir prasad delivery against a nominal charge, purportedly linked to the Shri
Ram Temple consecration event.
 Defendants 1 and 2 (Mr. Ashish Singh and M/s DrillMaps India Pvt. Ltd.) operated this site and
marketed products under marks like “KHADI ORGANIC” and “KHADI EARTH”.
 Defendants also sought donations on the site to support their prasad distribution.
 Defendants claimed their marks and website were official and falsely implied affiliation with the Shri
Ram Janmabhoomi Trust.
 Defendants filed a trademark application for “KHADI ORGANIC” shortly before the suit.
 Plaintiff had previously won disputes against Defendants related to domain names confusingly
 similar to Plaintiff’s marks.
Issue:
 Whether the use of “KHADI ORGANIC” and similar marks by Defendants amounts to trademark
infringement and passing off against Plaintiff’s registered “KHADI” marks.
Held:
 The Court found prima facie that Defendants’ marks “KHADI ORGANIC” and associated branding
were deceptively similar to Plaintiff’s registered “KHADI” mark.
 Defendants were attempting to exploit the religious sentiments of the public and the consecration
event to mislead people and raise money, thereby misusing Plaintiff’s goodwill.
 Plaintiff demonstrated a strong prima facie case; balance of convenience and irreparable harm
favored the Plaintiff.
 The Court granted an ex-parte interim injunction restraining Defendants and their associates from:
o Manufacturing, selling, advertising, or exporting any goods/services under the marks
“KHADI ORGANIC” or any mark deceptively similar to “KHADI”.
 Defendant No. 3 was ordered to suspend operation of the domain name “[Link]” and
maintain status quo of ownership.
 Defendants No. 1 and 2 were directed to take down their social media pages using the infringing
marks.
Key Takeaways:
 The Court protects well-known statutory trademarks like “KHADI” from unauthorized use and
deceptive branding.
 Exploiting public trust in religious events to market goods under confusingly similar marks is not
allowed.
 Interim relief can be granted swiftly to prevent irreparable harm caused by trademark infringement
and passing off.
Trent Limited v. Facts: 338
[Link] and Ors.,  Plaintiff: Trent Limited, a reputed company part of the Tata Group, operating major retail chains
Interim Application since 1998.

 Plaintiff owns the registered trademark “ZUDIO” and copyright over its unique artistic work and
trade dress (distinct logo/font).
  Plaintiff alleges Defendants (including [Link]) used the “ZUDIO” trademark, artistic
work, and trade dress without authorization.

 Defendants also allegedly used the Plaintiff’s name and intellectual property to fraudulently offer
fake Zudio franchises.

 In October 2023, a person seeking a franchise paid Rs. 2,65,500 to Defendants but was defrauded.

 Plaintiff claims Defendants acted in bad faith with full knowledge of Plaintiff’s rights,
misrepresenting themselves as Plaintiff’s associates to deceive the public.
Issue:
 Whether Defendants are liable for trademark infringement, copyright infringement, and passing
off by misusing Plaintiff’s mark, artistic work, and trade dress.
Held:
 The Court found that Plaintiff made out a strong prima facie case for infringement and passing off.

 Balance of convenience favored the Plaintiff.

 Not issuing notice to Defendants before granting relief was justified to prevent further harm.

 The Court granted an ex-parte interim injunction restraining Defendants and all related persons
from:

o Using the impugned trademark, artistic work, or trade dress identical or similar to Plaintiff’s
in any form including domain names and websites.

o Infringing Plaintiff’s copyright by copying or displaying the artistic work.

oUsing or continuing the domain name [Link] or any similar domain

incorporating Plaintiff’s mark.
Key Takeaways:
 The Court protects registered trademarks and copyrights from unauthorized use and fraudulent
 exploitation.
 Fake franchise scams using a brand’s IP rights can be stopped via interim relief.
 Strong prima facie evidence and risk of irreparable harm can justify ex-parte injunctions without
prior notice.
Mohan Meakin Limited vs. Facts: 339
Accord Distillers & Brewers  Plaintiff: Mohan Meakin Limited, a leading Indian liquor company, owns famous registered
Pvt. Ltd., Himachal Pradesh trademarks “Old Monk” (since 1971) and “Monk” (since 2008).
High Court
 “Old Monk” is a well-known rum brand, ranked as the third highest-selling rum worldwide and the
largest Indian-made foreign liquor (IMFL).

 The defendant marketed brandy under the mark “Missionary Monks Authentic Pure Xo Brandy”,
which prominently uses the term “Monks.”

 Defendant also applied for trademark registration of this mark, which plaintiff opposed.

 Plaintiff alleged infringement, passing off, unfair competition, and sought permanent injunction,
damages, and rendition of accounts.
Issue:
 Whether the defendant’s use of “Missionary Monks Authentic Pure Xo Brandy” infringed the
plaintiff’s registered trademark “Old Monk” under Section 29(2)(b) of the Trade Marks Act.
Held:
 The Court found a prima facie case in favor of the plaintiff.

 Defendant’s use of the word “Monks” in the mark was found deceptively similar to plaintiff’s “Old
Monk” trademark.

 The Court noted plaintiff’s prior successful actions against similar marks like “TOLD MOM” and
“CRAFTY MONK.”

 An interim injunction was granted, restraining the defendant and affiliates from using the disputed
mark or any mark similar to “Old Monk” or containing the term “Monk” alone or with other words,
 across all commercial channels.
Key Points:
 The court protected the plaintiff’s well-known trademark from dilution and consumer confusion.
 Use of similar words in related product categories (liquor/brandy) was seen as infringement.
 Prior judgments against similar marks strengthened plaintiff’s case.
Winzo Games Pvt. Ltd. vs. Facts: 340
Google LLC and Ors.  WinZO, the plaintiff, challenged Google’s policy, arguing it:
o Unfairly restricts competition
o Violates consumer protection and intellectual property rights
o Abuses its position as an intermediary under the Information Technology Act
 Google's Defense:
o Policy applies only to DFS and Rummy apps (which are legally recognized as games of skill)
o Not targeted at WinZO specifically
o Alternative app stores are available on Android OS (AOS)
o Warnings are standard safety measures, not discriminatory
Issues:
1. Does the warning with the name "WinZO" amount to use of the trademark in the course of trade
under Section 29(4) of the Trade Marks Act, 1999?
2. Do Google’s actions amount to:
o Trademark infringement?
o Disparagement?
o Inducement to breach of contract?
Held:
1. Trademark Use:
o Google’s warning was generic, not aimed at WinZO specifically.
o The use of 'WinZO' was only for file identification, not in a trademark sense.
o No violation of Sections 29(1), 29(4), 29(6), or 29(8) of the Trade Marks Act.
o No advertising or commercial exploitation of the mark occurred.
2. No Disparagement:
o Google did not compare its services with WinZO’s.
o No promotion of competing services.
o Hence, no disparagement could be established.
 3. No Inducement to Breach of Contract:
o The user decision to download an APK does not constitute a contract with WinZO at that
stage.
o Therefore, Google’s warning cannot induce breach of a non-existent contract.
4. Compliance with IT Rules:
o Google acted in accordance with:
 IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021
 IT (Reasonable Security Practices) Rules, 2011
o Warnings were part of public safety measures, consistent with industry standards.
Conclusion:
 Plaintiff’s claims were rejected.
 The court upheld Google’s actions as lawful, non-discriminatory, and compliant with legal
obligations.
 No infringement, disparagement, or breach of contract was established.

Cable News Network vs.  Plaintiff: Cable News Network (CNN), a globally recognized news broadcaster. 341
CTVN Calcutta Television  Defendant: Calcutta Television Network Pvt Ltd., formerly operating as Uttar Bangla, later using the name
Network Pvt Ltd., Calcutta News and the initials "CN."
 Plaintiff alleged that defendant’s mark, especially the joined letters "C" and "N," closely resembled CNN’s
trademark.
 Plaintiff claimed the defendant intended to mimic CNN’s trademark to benefit from its reputation.
 Defendant contested the infringement claim and challenged the Delhi High Court’s territorial jurisdiction.
 Defendant filed a plea under Order 7 Rule 10 CPC to seek return of the plaint due to alleged lack of
jurisdiction.
 Court examined jurisdiction based on Section 20 of the CPC and Section 134(2) of the Trade Marks Act.
 Court ruled mere accessibility of defendant’s website in Delhi does not establish jurisdiction under Section
20(c) CPC.
 However, significant parts of defendant’s business, like news dissemination via websites and social media,
fell within Delhi jurisdiction under Section 20(b) CPC.
 Plaintiff also conducted business within Delhi jurisdiction, making Section 134(2) of the Trade Marks Act
applicable.
 Court dismissed defendant’s application for return of plaint, confirming Delhi High Court’s jurisdiction.
  On trademark infringement, court found defendant’s logo with joined "C" and "N" deceptively similar to
plaintiff’s logo.
 Despite CNN having an extra "N," court found potential for public confusion and association between the
two entities.
 Both parties provided identical news services via television, increasing the likelihood of confusion.
 Court held that infringement and passing off were established and granted an injunction restraining the
defendant from using the impugned marks.
The Indian Hotels Company “Adoption of the similar trade mark and trade name by the defendants is SUPPLEMENTS
Limited (Plaintiff) Vs. Manoj not only a violation of the rights of the plaintiff, but may also deceive
(Defendant) general unwary consumers and appears dishonest.”
Brief Facts:
 Plaintiff filed a suit before the Delhi High Court alleging that the Defendant had unauthorizedly
used the Plaintiff’s:

o Registered trademarks

o Copyrighted content and photographs from the Plaintiff’s website

 No association existed between the Plaintiff and Defendant, and no permission was granted for the
use of the Plaintiff’s intellectual property.

 The Defendant failed to appear in court or file a written statement.

Relief Sought by Plaintiff:
 Permanent injunction to restrain:
o Trademark infringement

o Copyright infringement

o Passing off

o Dilution and tarnishment of trademarks

  Damages, rendition of accounts, and delivery up of infringing material
Judgment:
 The High Court observed that:
o Defendant has not appeared or filed a defence.
o There is no real prospect of the Defendant defending the claim.

o No purpose would be served by leading ex parte evidence.

 Accordingly, the Court held that the Plaintiff is entitled to a summary judgment under:

o Order XIII-A CPC (for commercial disputes)

o Rule 27 of the Delhi High Court IPD Rules, 2022

 Citing DS Confectionery Products Ltd. v. Nirmala Gupta (2022), the Court reaffirmed:

o Unauthorized use of similar trademarks is dishonest and misleading to consumers.

o Failure to defend a suit implies mala fide intent and supports a grant of damages.
Final Orders:
 Permanent injunction granted in Plaintiff’s favour.
 Damages awarded to the Plaintiff.
 Defendant’s non-participation treated as an admission of infringement and mala fides.
 COPYRIGHTS
Ushodaya Enterprises Ltd v.
 Court: Andhra Pradesh High Court, Division Bench 377
T.V. Venugopal  Key Issue: Whether the defendant’s trademark registration could defeat the plaintiff’s copyright claim.
 Facts:
 The defendant had registered a carton design under the Trade Marks Act.
 The plaintiff claimed copyright infringement over the artistic work used on the carton.
 Held:
 The plaintiff’s copyright claim was valid, regardless of trademark registration by the defendant.
 The Copyright Act does not require registration to assert ownership or seek protection.
 Therefore, the plaintiff was justified in alleging infringement of the artistic work.
 Conclusion: Trademark registration does not override copyright protection for original artistic works.
M/s. Video Master &  Court: Bombay High Court 377
Another v. M/s. Nishi  Issue: Whether the grant of satellite broadcasting rights to one party infringes the video playback and
Productions & Others, cable TV rights of another.
 Facts:
 The plaintiff was assigned video playback and cable TV rights.
 The defendant was granted satellite broadcasting rights, which the plaintiff challenged as
 infringement.
 Held:
The Court clarified that communication to the public includes multiple distinct modes (e.g.,
video, cable TV, satellite, etc.).
 These modes are separate and divisible, and rights can be assigned independently to
different entities.
 The existence of one mode's rights with a person does not infringe another's rights over a
different mode.
 Conclusion:
 No infringement occurred since satellite rights and video/cable rights are distinct and can
coexist with different rights holders.
Hindustan Lever Ltd. v.  Court: Bombay High Court 377
Nirma Pvt. Ltd.,  Parties: Hindustan Lever Ltd. (Plaintiff) vs. Nirma Pvt. Ltd. (Defendant)
 Issue: Whether minor differences in a label design are enough to avoid copyright infringement.
 Facts:
 Hindustan Lever alleged that Nirma copied the artistic label used on its product packaging.
 Nirma made some minor changes but retained the overall look and feel of the original label.
 Held:
 The Court held that slight dissimilarities were not sufficient to eliminate the overall visual
similarity.
 The test applied was the impression on an unwary purchaser or the average consumer.
 There was a prima facie case of copyright infringement, as the label was a colourable imitation.
 Conclusion:
 Even small modifications in a substantially similar label do not shield the defendant from copyright
claims if the general impression remains the same.
Eastern Book Company & Parties: Eastern Book Company (Plaintiff) vs. Navin J. Desai (Defendant) 377
Others v. Navin J. Desai & Key Issue: Whether publishing edited versions of Supreme Court judgments entitles the plaintiff to copyright
Another protection.
Facts:
 The plaintiff (Eastern Book Company) published Supreme Court judgments in their law reports (SCC).
 They claimed copyright over the judgments based on editorial work like correcting grammar,
punctuation, and formatting (e.g., paragraph numbering).
  The defendant reproduced the same judgments in another publication, which the plaintiff claimed
was copyright infringement.
Held:
1. No Copyright in Public Domain Content:
o Supreme Court judgments are in the public domain and not copyrightable.
2. No Original Literary Work:
o Minor edits like fixing grammar or punctuation, or adding paragraph numbers, do not
qualify as original literary work.
3. No Monopoly in Common Material:
o Material already in the public domain cannot be monopolized by anyone, even with slight
modifications.
4. Freedom to Use Public Material:
o Anyone can take such public content, improve or modify it, and publish it without infringing
rights.
5. No Prima Facie Case:
o The plaintiff failed to establish copyright in the judgments and hence no infringement
occurred.
o Consequently, no interim relief was granted to the plaintiff.
Godrej Soaps Pvt. Ltd. Vs Parties: Godrej Soaps Pvt. Ltd. Vs Dora Cosmetics Co. 378
Dora Cosmetics Co. Key Issue:
Whether Godrej Soaps Pvt. Ltd. held valid copyright ownership in the artistic work (carton and logo) for its
product "Crowning Glory".
Facts:
 The carton design for "Crowning Glory" was created by an employee of an advertising agency for
and on behalf of the plaintiff.
 The design was produced in the course of employment, under a contract of service, and for
valuable consideration.
 The defendant used a similar carton but failed to produce any evidence to support its use or
ownership.
Held:
1. Ownership by Employment:
Since the work was created by an employee of an ad agency during employment for the plaintiff,
 the plaintiff was the first owner of the copyright.
2. Assignment as a Precaution:
The copyright was also formally assigned to the plaintiff, further reinforcing ownership.
3. Valid Legal Title:
The court held that Godrej Soaps was the legal and equitable owner of the copyright in the carton
and logo.
4. Defendant’s Failure:
The defendant led no evidence to challenge the plaintiff’s ownership.
5. Conclusion:
The plaintiff successfully proved copyright ownership, making its claim valid under the Copyright
Act.
Expar S.A. & Anr. v. Facts: 384
Upharma Laboratories Ltd.  The appellants filed a suit in the Delhi High Court for copyright infringement related to their
& Anr. medicinal product "Maloxine".
 A Single Judge granted an interim injunction.
 On appeal, the Division Bench set aside the injunction and ordered the suit be returned for filing
before a court with proper jurisdiction.
 The appellants challenged this decision in the Supreme Court, primarily questioning the jurisdiction
of the Delhi High Court under Section 62(2) of the Copyright Act.
Key Legal Issue:
 Whether the Delhi High Court had jurisdiction to entertain the suit under Section 62(2) of the
Copyright Act.
Held:
 Appeal Allowed.
 The Division Bench's decision was set aside.
Reasoning:
1. Purpose of Section 62(2):
o It enlarges the plaintiff’s options for choosing jurisdiction, not restricts them.
o It is an additional forum beyond what is provided under Section 20 of the CPC.
2. Appellant No. 2’s Presence in Delhi:
o Appellant No. 2 carried on business in Delhi, and was a plaintiff in the suit.
o Even if not claiming ownership, they were a person instituting the suit, sufficient under
 Section 62(2).
3. Misinterpretation by Division Bench:
o The Division Bench wrongly interpreted that only owners of copyright could invoke
jurisdiction under Section 62(2).
4. On Cease-and-Desist Notices:
o Such notices are not mere notices; under Section 60, they can give rise to a cause of action.
Conclusion:
 The Delhi High Court did have jurisdiction.
 The matter was remanded back to the Division Bench for deciding the appeals on merits.
Novex Communications Pvt. Facts: 392
Ltd. & Phonographic  Plaintiffs sought a perpetual injunction to prevent the defendant from publicly performing or
Performance Ltd. (PPL) Vs. communicating sound recordings (licensed from music producers like Tips, T-Series, Eros, etc.)
Trade Wings Hotels Ltd. without obtaining licenses from Novex or PPL.

 Defendant’s objection: Novex and PPL cannot issue licenses as they are not registered Copyright
Societies under Section 33(1) of the Copyright Act, 1957.
Key Issue:
 Can Novex and PPL grant licenses and seek relief without being registered as Copyright Societies
under Section 33(1) of the Act?

Held:
 Yes, they can seek relief.

Court’s Reasoning:

1. Section 30 of the Act allows copyright owners to grant licenses.

2. Section 33(1) does not override or restrict the owner's right under Section 30.

3. Accepting the defendant’s view would mean Section 33(1) cancels Section 30, which is
impermissible.
 4. The two sections serve different purposes:

o Section 30 deals with owner’s licensing rights,

o Section 33 with copyright societies.

5. Section 34(1)(b) allows owners to withdraw authorization from a copyright society and license
works independently.

6. Therefore, owners (like Novex/PPL) can license works directly even if not registered as a society.
Conclusion:
 Novex and PPL, as copyright assignees/owners, are entitled to issue licenses and seek injunctive
relief, even without being registered as copyright societies.

 Defendant’s objection was rejected.

Universal City Studios LLC & Facts: 393

Ors. v. [Link] &  Plaintiffs include major Hollywood studios such as Universal, Warner Bros., Columbia, Netflix,
Ors. Paramount, and Disney.
 They own copyrights in a wide range of audiovisual content (films, shows, series).
 The defendants were running rogue websites (e.g., [Link]) offering unauthorized
streaming, downloading, and viewing of plaintiffs' copyrighted content.
 Plaintiffs alleged copyright infringement and massive monetary losses.
Issue:
 Whether the court can restrain rogue websites, including future/mirror/variant sites, from
unauthorized dissemination of copyrighted works.
Held:
 The Delhi High Court granted a ‘Dynamic+ injunction’ against the infringing websites.
 Plaintiffs were permitted to:
o Block mirror, redirect, or alphanumeric variants of the infringing websites.
o Add new infringing domains as defendants through simple applications.
o Seek protection for future works if infringement is anticipated.
 Reasoning:
 Online piracy is rampant and courts must respond proactively and effectively.

 Referenced the Bombay High Court decision in Applause Entertainment v. Meta Platforms, which
supported similar injunctions.

 Recognized the hydra-headed nature of rogue sites—blocking just one version is insufficient.

 Highlighted the need for global coordination, since such websites often evade domestic injunctions
using VPNs or new domains.
Conclusion:
 The court issued a Dynamic+ injunction:

o A forward-looking remedy allowing plaintiffs to block current and future infringing

websites.
o Aims to protect copyright holders from irreparable harm, especially upon the release of
new content.
Bhaktivedanta Book Trust, Facts: 394
India vs.  The Plaintiff, Bhaktivedanta Book Trust, was founded by A.C. Bhaktivedanta Swami Prabhupada,
[Link] & Ors. the founder of ISKCON and a prominent spiritual leader.

 The Trust owns copyrights in Swami Prabhupada’s literary and spiritual works, which include
interpretations, summaries, and translations of Hindu scriptures like the Bhagavad Gita and
Bhagavatam.

 These works are published in various formats (books, e-books, audiobooks) and languages, and form
a primary source of income for the Trust to fund its charitable activities.

 The Defendants include websites, mobile apps, and social media platforms that reproduced large
parts of the Plaintiff’s copyrighted works without authorization, including complete books and
commentaries.
Issue:
Does reproduction and dissemination of the Plaintiff’s interpretations and adapted spiritual works by third-
party platforms amount to copyright infringement, even though the original scriptures are public domain?
Held:
✅ Yes, the acts constitute copyright infringement.
Court’s Reasoning:
 Original scriptures like the Bhagavad Gita and Bhagavatam are in the public domain, and no
copyright can be claimed over them in their raw form.

 However, transformative works such as:

o Translations

o Interpretations (Tatparya)

o Summaries (Anuvaad)

o Prefaces, covers, and explanatory notes

are original works protected under the Copyright Act.

 The Defendants copied verbatim from such copyrighted works of Srila Prabhupada, not just the raw
scriptures.

 The unauthorized sharing of these works on websites, apps, and social media caused loss of
revenue to the Trust and risked dilution of their copyrights.
Conclusion:
 A prima facie case of copyright infringement was established.

 An ex parte ad-interim injunction was granted in favor of the Plaintiff.

 Defendants were restrained from printing, reproducing, or sharing the Plaintiff’s copyrighted works
in any form (print, digital, social media, apps).
 [Link] was directed to block the domain [Link].

 Infringing apps were ordered to be taken down from relevant platforms.

INDUSTRIAL DESIGNS
Pentel Kabushiki Kaisha &  A mere superficial difference in design does not make a product new or original. 423
Anr. v. M/s Arora Stationers  Novelty of form or shape alone is insufficient to establish originality.
& Ors.  Novelty requires either:
o A new element, or
o A new arrangement/position of an existing element compared to prior art.
 However, a combination of previously known designs can be registered if the overall visual impact
of the combination is new and distinctive.
Simmons v. Mathieson &  For a design to be considered original, it must: 423
Cold  Originate from the mental conception of its creator.
 Be expressed in a new physical form that did not exist before.
 Show originality in a substantial way—not just trivial or minor changes.
 Novelty is to be assessed through the eyes of an "instructed person":
 Someone familiar with the common trade knowledge and practices in the relevant field or class of
articles.
Summary: Jayson Industries Facts: 431
& Anr. vs. Crown Craft  Plaintiff No. 1 owns registered designs for a bucket, mug, and tub (registered in Feb 2020).
(India) Pvt. Ltd.  Plaintiff No. 2 manufactures and markets these products.
 Novelty in the registered designs was claimed in their shape, configuration, and surface pattern—
particularly vertical ribs and fang-like structures on the handle.
 Plaintiffs alleged that Defendant copied their registered designs, amounting to design piracy under
Section 22(1) of the Designs Act, 2000.
Defendant’s Arguments:
 Challenged the novelty and originality of Plaintiffs' designs.
 Claimed that the designs were not new, already existed in prior art, and were mere trade
variations.
 Argued that unlike trademarks, registered designs do not enjoy a presumption of validity.
 Submitted evidence (brochures and prior registrations) to show similar existing designs.
Issues:
1. Did the defendant’s products infringe the plaintiffs' registered designs?
2. Do the plaintiffs’ designs lack novelty or originality?
Held:
 The term "new" is not defined, but "original" under Section 2(g) means:
 o The design must originate from the author.
o It may involve old elements used in a new application.
 The Designs Act protects visual features applied to a product, not just abstract ideas.
 Novelty is judged by the visual appeal to the eye ("eye test").
 The Court found that:
o Defendants made a credible challenge to the novelty of the plaintiff's designs.
o The ribs and flanges were already present in earlier designs (prior art).
o Thus, plaintiffs’ designs may not be sufficiently novel or original.
TTK Prestige Ltd. vs. Gupta  Plaintiff sought a permanent injunction and damages. 432
Light House  Defendant argued that:
o The suit design lacked novelty and originality.
o The handi design is traditional and well-known, thus not registrable.
o The design is purely functional.
Issues:
1. Is the plaintiff’s design valid under the Designs Act?
2. Does the defendant’s product infringe the registered design?
3. Is the suit maintainable if the registered design has expired?
Held:
 The court observed that the plaintiff’s cooker has a distinctive bulging mid/lower section, giving it a
unique aesthetic appeal, different from traditional cookers.
 A design can be both functional and aesthetic—this does not disqualify it from registration.
 The plaintiff’s design was held to be visually distinctive and not merely functional.
 The defendant’s product was found to be obviously imitative of the plaintiff’s registered design—
amounting to design piracy under Section 22(1).
 However, the court noted the design expired on 13 December 2019, and thus injunction cannot be
granted anymore.
 The only surviving claim was damages:
o Defendant was directed to submit earnings details, certified by a CA, within four weeks.
o Plaintiff was granted liberty to claim damages based on those earnings.
Atomberg Technologies Facts:
Private Limited vs. Luker  Plaintiff: Atomberg Technologies, registered owner of design dated 8 Sept 2018 for the Renesa
Electric Technologies Private Ceiling Fan.
Limited,  Defendant: Luker Electric, obtained registration for Size Zero Fan 1 and 2 on 21 March 2022.

 Atomberg claimed the defendant’s designs were fraudulent imitations of its own and filed for
interim relief.
 The defendant argued that Atomberg’s fan design was already in the public domain, and
differences existed in features like canopy, rod, and packaging.
Issue:
 Has the defendant’s registered design infringed upon the plaintiff’s registered ceiling fan design?
Judgment:
 The "look and feel" and "appeal to the eye" test must be applied in design infringement matters.

 Court found that Atomberg's own designs (as publicly shown) were very similar to the registered
design, making the claim of novelty and originality weak.

 The plaintiff’s design was considered a mere trade variant, with only slight and trivial differences
from pre-existing designs.

 Even assuming the defendant copied the design, the plaintiff failed to show “something more”, like
false representation or deception, to justify interim relief.

 Packaging and branding differences further diluted the plaintiff’s claim of passing off.

 Conclusion: Plaintiff failed to establish a strong prima facie case; thus, no interim relief was
granted. The court dismissed the application for temporary injunction.
Summary: Havells India Ltd. Facts: 434
vs. Panasonic Life Solutions  Plaintiff: Havells India Ltd., a reputed electrical goods company, owns registered ceiling fan designs
India Pvt. Ltd. & Ors. under the ENTICER and ENTICER ART (Nature Series) collections.
 Design Registrations: No. 280666 (Design 2016) and No. 328605 (Design 2020).
 Defendants: Panasonic Life Solutions and others launched VENICE PRIME series of ceiling fans,
allegedly identical/deceptively similar to Havells’ designs.
 Havells claimed design infringement, passing off, and unfair competition under the Designs Act,
2000, asserting that the defendant copied patterns, motifs, placement, colour schemes, and overall
 get-up.
Issues:
1. Whether the defendant’s fan design infringes the plaintiff’s registered designs?
2. Whether a passing off claim is valid when trademark rights in design are also asserted?
Court’s Observations & Reasoning:
 Relied on Kemp & Co. v. Prima Plastics: test is whether the two designs are visually similar to the
eye.
 Cited Wander Ltd. v. Antox India: Courts consider stage of defendant’s business; if the defendant
recently started, the balance tilts in favour of the plaintiff.
 Marble/stone motifs used by defendant were not common in the fan industry until Havells
introduced them.
 Defendant’s claim of prior use (in 2020) was not substantiated.
 Court found dishonest adoption and prima facie misrepresentation intended to mislead consumers
and capitalize on Havells’ goodwill.
 Packaging, shape, patterns, and design were too similar to be coincidental.
Judgment:
 Prima facie case made out by Havells.
 Balance of convenience lies in plaintiff's favour.
 Irreparable harm would result without an injunction.
 Interim injunction granted:
Defendants and their agents were restrained from manufacturing, selling, or promoting the VENICE
PRIME ceiling fans or any similar fans that imitate the ENTICER ART series (including designs, layout,
motifs, and trade dress) during the pendency of the suit.
GEOGRAPHICAL INDICATIONS
Trading Corporation of Cause of Action: 472
Pakistan (P) Ltd. & Ors. vs. Plaintiffs sought to restrain India from permitting export of rice under the name “Super Basmati”, arguing:
Union of India o It would pass off the reputation of Pakistani Super Basmati rice.
o The Government of India’s Gazette Notification dated 24 May 2006 permitting such export
was challenged.
o Plaintiffs claimed rights in the “Super Basmati” name as part of their trans-border
reputation.
Relief Sought:
1. Permanent injunction against India exporting rice under the “Super Basmati” name.
2. Restraining India from using “Super Basmati” to avoid misappropriation of the plaintiffs' GI-linked
reputation.
Defendant’s Position:
 India has registered “Basmati” as a Geographical Indication (GI) under GI Act, 1999 (Application No.
145, granted on 15 February 2016).
 The Ministry of Agriculture Notification (18 September 2017) restricts seed production of GI-tagged
Basmati rice to specific Indian states (Delhi, Punjab, Haryana, parts of UP, J&K).
Court's Observation & Judgment:
 Plaintiffs ceased to appear and the suit had not been actively pursued since 2020.
 Given the lack of prosecution and the Defendant’s documented position on GI protection and
geographical boundaries, the Court held that:
“No further orders are called for in the present suit.”
 Accordingly, the Court:
o Dismissed the suit for non-prosecution
o Disposed of all pending applications

Scotch Whisky Association Background: 473

vs. J.K. Enterprises and Ors, o GI application for Scotch Whisky (No. 151) was filed on 5 January 2009; GI granted on 23
MISC. PETITION September 2010.

o SWA filed a suit for GI infringement in 2020.

o The Commercial Court held (via order dated 28 October 2021) that the suit was
maintainable only if an “Authorised User” (AU) was impleaded under Section 21 of the GI
Act.
Legal Issue:
 Can a Registered Proprietor (RP) maintain a GI infringement suit without joining an Authorised
User (AU)?
 How should the word “and” in Section 21(1)(a) of the GI Act be interpreted — conjunctively (both
RP and AU must sue together) or disjunctively (either RP or AU can sue)?
Court’s Findings:
 The GI Act and Rules clearly establish that an RP has an independent legal right to maintain a GI
infringement suit, even without the AU.

 Section 21(1)(a) gives both RP and AU the right to obtain relief; they are distinct categories, and
one is not dependent on the other.

 Interpreting the word “and” in Section 21(1)(a) as “or” is necessary to avoid making the RP’s rights
subordinate to those of an AU.

 This interpretation aligns with settled legal principles (e.g., Gujarat Urja Vikas Nigam Ltd. v. Essar
Power Ltd.) allowing contextual interpretation of “and”/“or”.

 The RP (SWA), being the original applicant (“Bhagirathi” of the GI tag), cannot be excluded from
enforcing rights merely due to lack of AU involvement.

 The GI status of Scotch Whisky is internationally recognised, including in India and the UK, and its
misuse could lead to commercial harm and reputational damage.

 The suit cannot be dismissed at this stage as lacking cause of action — whether actual infringement
 or loss has occurred is subject to trial.
Judgment:
 The High Court set aside the Commercial Court's view that the suit was maintainable only upon
impleadment of AU.

 Held that the RP can maintain the suit independently under Section 21 of the GI Act.

 Remanded the matter for trial to determine actual infringement, damages, and other claims.