Post analysing the Courts dealing with PILs in service matters as AIPOWA vs. CGPDTM reaches the SC. Is the opt-out mechanism compatible with the Berne Convention? – Lokesh and Yogesh answer this in a two-part post. Another post on whether India should shift the burden of licensing for AI training data from creators to AI companies. This and much more in our weekly roundup of our blog posts, case summaries, and top IP developments in the country and the world. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
The heated battle between the incumbent CGPDTM and AIPOWA has reached the doorsteps of the Supreme Court. With the Court now set to hear the allegations levelled by the officers’ association against the Controller General, Praharsh Gour takes a look at some of these and explains how courts have dealt with such challenges to government officers in the past.
The Great Flip: Is Opt Out a Prohibited Formality under the Berne Convention? Part I
The “opt-out” mechanism has been headlining copyright news since the GenAI litigation. Lokesh Vyas and Yogesh Byadwal in this two part post look into the mechanism and question its compatibility with the Berne Convention. In Part I, they address – is opt-out a prohibited formality for the “enjoyment and exercise” of authors’ rights under Article 5(2) of the Berne Convention?
The Great Flip: Can Opt-Outs be a Permitted Exception? Part II
In the previous part, Lokesh Vyas and Yogesh Byadwal argued in the negative on whether the opt-out mechanism, as claimed in Gen-AI litigations, constitutes a prohibited formality for the “enjoyment and exercise” of authors’ rights under Article 5(2) of the Berne Convention. Continuing from the previous post, they address the second question: Can opting out be permitted as an exception under the three-step test outlined in Article 9(2)?
Reversing the Opt-Out Burden: Why AI Firms Should Bear Licensing Obligations for Training Data
In light of the various copyright disputes concerning AI firms, Tirthaj Mishra argues that India should shift the burden of licensing for AI training data from creators to AI companies. He critiques the ineffectiveness of the opt-out model using robots.txt and proposes a statutory “Duty to License” framework inspired by India’s broadcasting laws under Section 31D of the Copyright Act.
Other Posts
Finally, Relief for Refurbishers! Softening Stance of DHC
In Western Digital Technologies v. Hansraj Dugar, the DHC held that there is no bar against importation of ‘end-of-life’ goods bearing the mark of another entity as long as the refurbished good carries the disclosure (original manufacturer, warranty, specifying the good is used and refurbished). Yogesh Byadwal analyses the recent case, that the Court is softening its stance on infringement when it comes to refurbishers. What explains this shift? How are the Courts doing it? More importantly, what does it mean for the refurbishment industry in India?
SpicyIP Tidbit: Constitutional Challenge to Rule 29(4), Copyright Rules Rejected by the SC
The DHC’s decision in Super Cassettes v. Music Broadcast led to the withdrawal of an SLP challenging the constitutionality of Rule 29(4) of the Copyright Rules before the Supreme Court. The Rule mandates that any broadcasting organization interested in making a sound recording or musical work available to the public should give notice to the owner of the work. What does the DHC decision say? And why was the SLP withdrawn? Check Tanishka’s post to know more about this!
Case Summaries
Lacoste S.A vs Arun Kumar on 28 May, 2025 (Delhi District Court)
The plaintiff filed a suit for permanent injunction and damages against the defendants for allegedly selling counterfeit products with the trademarked ‘LACOSTE’ tag. The Court observed that the plaintiff’s brand was a well-known global brand, and a police raid conducted against the defendants revealed counterfeit goods with ‘LACOSTE’ tags on them. The Court issued a decree of permanent injunction and punitive damages in favour of the plaintiff.
Vikas Electricals India vs Dev Enterprises on 29 May, 2025 (Delhi District Court)
The plaintiff filed a suit for injunction and damages against the defendants for allegedly infringing on their registered trademark ‘FIONA’, which they used for PVC tapes, industrial tapes, adhesive tapes, etc. The Court observed that the plaintiffs were not registered owners of the trademark and instead the registered proprietor of the trademark ‘FIONA’ was the defendant who had been using the trademark uninterrupted since 2019. The Court, thus, dismissed the suit with costs.
Loreal Sa vs Riddhi Gopalbhai Donda on 2 June, 2025 (Delhi District Court)
The plaintiff filed a suit for permanent injunction and damages against the defendants for passing off their products and infringing on the copyrighted art works on the trade dress. The Court observed that the Plaintiff ‘L’OREAL’ owned a number of well-known popular skincare and haircare brands and the Defendant had adopted deceptively similar trademark, trade dress, combination of colours along with copyrighted art works for their products in the same business of skincare and haircare, which caused monetary loss to the plaintiff. A decree of injunction and damages of 2 lakh was issued on behalf of the plaintiff.
Nike International Limited vs Nitin Bansal on 31 May, 2025 (Delhi District Court)
The plaintiffs, owners of the trademark ‘NIKE’, filed a suit for injunction against the defendants who allegedly sold and supplied footwear goods bearing the trademark and copyrighted art of ‘NIKE’. The Court observed that the plaintiffs had proved through evidence that the defendants were indeed involved in manufacturing, distributing, and selling goods bearing falsified “NIKE” trademark on the basis of preponderance of probability. Thus, a decree of permanent injunction, destruction of impugned property, and damages was granted in favour of the plaintiff.
The plaintiff filed a suit seeking a permanent injunction against the defendant’s use of the mark ‘Social Affair’, alleging trademark infringement and passing off of its well-known ‘SOCIAL’ brand. In spite of being served notice, the defendant failed to appear, and hence the matter was proceeded ex parte. The plaintiffs argued that the defendants’ use of “Social” would confuse and mislead the public into thinking that the ‘Social affair’ was part of the ‘Social’ Brand. The Court held that the impugned mark was deceptively similar and adopted dishonestly to ride on the plaintiff’s goodwill. Accepting that the plaintiff held valid registrations and had built a significant reputation, the Court decreed the suit under Order VIII Rule 10 CPC and awarded ₹2 lakhs in costs.
The Ritz Hotel Limited & Ors. vs Unknown on 29 May, 2025 (Delhi High Court)
A suit was filed before the Delhi High Court by The Ritz Hotel Limited and The Ritz-Carlton Hotel Company seeking a permanent injunction against the defendants for the usage of the trademark ‘Ritz’. The plaintiffs argued that the defendants were infringing their registered trademarks, by the usage of deceptively similar domain names and branding, which amounted to passing off. Additionally the plaintiffs sought a declaration of ‘RITZ’ and ‘RITZ-CARLTON’ as well-known marks under Section 2(1)(zg) of the Trade Marks Act, 1999. The Court found that there existed a longstanding global and Indian recognition and enforcement of the marks. The Court held that the defendants’ use of the marks was likely to cause confusion and dilute the brand’ s goodwill. Consequently, a permanent injunction was granted and the marks ‘RITZ’ and ‘RITZ-CARLTON’ were declared to be well-known trademarks.
Louis Vuitton Malletier vs Abdulkhaliq Abdulkader Chamadia & Ors on 15 May, 2025 (Delhi High Court)
The plaintiff filed a suit seeking a declaration that its ‘LV’ mark (interlocked monogram of letters ‘L’ and ‘V’) is a well-known trademark and for an injunction against trademark infringement and passing off by the defendants. The plaintiff argued that the ‘LV’ mark has been used extensively worldwide and in India. It enjoys significant goodwill and is recognized as well-known by courts and the Trademark Registry. The defendants did not appear or contest the suit. The Court found that the plaintiff had sufficiently proved the ‘LV’ mark as a well-known trademark under the Trade Marks Act, 1999, based on its long-standing use, extensive promotion, high sales, and public recognition. The Court held that the mark independently functions as a distinctive identifier and granted the declaration that the ‘LV’ mark is well-known.
Ariba Saeed vs Aarna Sales Corporation on 27 May, 2025 (Delhi District Court)
The plaintiff, filed a suit seeking permanent injunction restraining the defendant from infringing and passing off the plaintiff’s ‘Easy Health’ trademark, rendition of accounts, and recovery of damages of Rs. 3 lakhs. The plaintiff alleged that the defendant was listing and selling products on Amazon.in using a similar mark ‘Easy Health’, causing deception and loss of goodwill and reputation. The defendant continued to infringe the trademark despite a cease and desist notice. The defendant contended that the plaintiff’s registration was for a device mark, not a word mark, and challenged the suit’s maintainability. However, the Court found the defendant’s mark deceptively similar to the plaintiff’s trademark, constituting infringement. The Court granted a permanent injunction in favour of the plaintiff but rejected claims for rendition of accounts and damages due to insufficient evidence. The suit was decreed accordingly.
KRB Enterprises & Ors vs M/S. KRBL Limited on 26 May, 2025 (Delhi High Court)
An appeal was filed challenging an ad-interim injunction restraining the appellants from using the mark ‘KRB’. It was alleged to be deceptively similar to the respondent’s registered mark ‘KRBL’. The respondent was able to demonstrate prior use, registration under Class 35, and goodwill built since 2000. The Court rejected the appellants’ claims of non-use, delay, and territorial jurisdiction. The Court held that the similarity in marks and the overlapping nature of goods and services warranted protection. Further, the Court also rejected the plea of honest adoption and dismissed the argument of abandonment of rights due to withdrawal of Class 30 registration. It reiterated that use of a mark in trade or advertising is sufficient to establish infringement, even if not affixed to the product. Consequently, the injunction was upheld.
Astral Limited vs Mahavir Electric And Hardware Stores on 31 May, 2025 (Delhi District Court)
The plaintiff had filed the present suit claiming infringement and passing off of its well-known trademark ‘ASTRAL’ against the defendants. The plaintiff is a market leader in manufacturing and sale of pipes and plumbing devices with over 220 registrations of ASTRAL and its formative marks. The Court noted that the mark used by defendants was deceptively similar to the impugned trademark and the court had territorial jurisdiction over the virtual showroom. The Court thus on account of continuous, extensive use, goodwill and publicity of the plaintiff’s ASTRAL mark awarded permanent injunction against the defendants and Rs. 6,60,000/- (Rs. 3,10,000/- as damages and Rs. 3,50,000/- as cost of litigation) to be paid by the defendant within 3 months from date of decree.
Rahul Kapur (Proprietor) vs Manoj Gupta (Proprietor) on 31 May, 2025 (Delhi District Court)
The plaintiff has filed the present suit claiming a permanent and mandatory injunction against the defendant’s use of the trademark ‘Royal Diamond’; which is identical and deceptively similar to the plaintiff’s registered trademark ‘Royal’. The father of the plaintiff has been honestly using the impugned mark since 1959 and was later registered in 1981 in class 11. The Court noted that the defendant had infringed the plaintiff’s trademark. A decree of permanent injunction was passed in favour of the plaintiff. The defendant was ordered to pay Damages of Rs. 1,00,000, and the plaintiff is also awarded interest @ 9% p.a. on damages from the filing of the suit till realization.
Huda Beauty Limited vs M/S Empara Multiventures Pvt Ltd And on 30 May, 2025 (Delhi District Court)
The plaintiff is a company engaged in the business of manufacturing, distributing and selling cosmetics, which was founded by Huda Kattan in 2010. The company operates under the trademark ‘Huda Beauty’ and the same is registered. The defendant imported counterfeit goods using a deceptively similar and identical trademark to that of the plaintiff. The Court held this to be infringement as the goods were identical, presuming confusion or deception. The Court granted a permanent injunction against the defendant from using, importing, or selling infringing goods under ‘Huda Beauty’. Customs authorities were restrained from releasing the seized goods and directed to consider their destruction under applicable rules and costs of the suit awarded to the plaintiff.
The defendant was deemed to have infringed the registered trademark of the plaintiff “ESGIPYRIN” by manufacturing and marketing a pharmaceutical drug composed of the same active ingredients in similar proportions bearing a deceptively similar mark “SGS PYRIN”. Additionally, it was also held that the defendants had infringed the trade dress/copyright of the plaintiff and attempted to pass off the product of the latter as their own by adopting starkly similar visual identifiers such as shape, colour and packaging of the tablets. Accordingly, the suit was decreed in favour of the plaintiff. A permanent injunction was granted restraining the defendant and its affiliates from manufacturing, stocking, or trading the impugned product. The defendant was also asked to pay damages since they had deliberately infringed on the rights of the Plaintiff and caused them severe disadvantage.
M/S RSPL Health Private Limited v. Anant Marketing on 31 May, 2025 (Delhi District Court)
Plaintiff instituted the present suit seeking permanent injunction restraining infringement of trade-mark. Plaintiff contended that it has conceived, coined and adopted the trademark/label/trade dress Pro-ease and its variants Pro-Ease, Pro- ease Ready, Pro-Ease, PROEASE, PROEASY’ in the year 2012 in relation to the Sanitary pads/napkins and allied and cognate goods and has earned huge goodwill in the market under the trademark Pro-ease. Since the Defendants did not appear before the Court post the framing of issues, the proceedings continued ex parte. The Court, based on the Local Commissioner’s report, held that there is irrefutable evidence to show that counterfeit products bearing the trademark of the plaintiff were recovered from the possession of the defendant. The Court passed a decree of permanent injunction against the Defendant restraining from manufacturing, storing and selling the counterfeit products bearing the trade-mark/logo of the plaintiff.
Dinesh Kumar v. Ms Amar Chemical Corporation on 30 May, 2025 (Delhi District Court)
Plaintiff has instituted the present suit seeking permanent injunction, restraining infringement, and passing off of trademark. Plaintiff contended that they continuously and commercially started using the trademark ‘GOLDEN EAGLE’ in relation to his goods and adopted a unique trade dress with specific colour combination. The Court found it appropriate to proceed without having to record evidence ex-parte since the material placed on record, including the report of the Local Commissioner, was sufficient in allowing the claim of the plaintiff. The Court ruled that it had jurisdiction since the alleged infringement of the Plaintiff’s trademark and trade dress occurred on its territory. Based upon the Local Commissioner’s report it was held that the Defendant had indeed infringed upon the Plaintiff’s trademark and trade dress since they had used an identical mark on the same line of goods that were being manufactured and distributed by the Plaintiff. A permanent injunction was issued against the Defendant, but damages were not granted since there was no yardstick to ascertain the actual loss suffered by the Plaintiff.
The plaintiff filed the suit claiming infringement and passing off of the trademark ‘Chandra’. The plaintiff claimed that the defendant’s use of the trademark ‘Chandra Engineers’ is not distinctive as engineer is a generic term and ‘Chandra’ is the dominant character in the trademark. The Court passed a decree of permanent injunction in favour of the plaintiff and the defendant was ordered to pay damages of Rs. 5,00,000/- along with the cost of the suit to the plaintiff.
Anil Jain vs Rajan Bhutani on 3 June, 2025 (Delhi District Court)
The plaintiff filed the suit claiming infringement and passing off of the trademark ‘Real Diamond’. The defendant was dealing in goods under the same class under the trademark ‘Star Diamonds’. The court held that the marks are not identical and do not cause any confusion, which was also admitted by the plaintiff’s witness in cross-examination. The plaintiff did not provide any data to show the alleged loss suffered, therefore, the Court dismissed the suit.
The plaintiff filed the present suit claiming infringement and passing off of label ‘VEGA ASIA 100’. The defendant was selling its goods under the same label name. The Court held that it has the jurisdiction to try the present suit. The Court taking note of the Local Commissioner’s report held that there was irrefutable evidence to show that the goods bearing the logo and the trade-mark of the plaintiff were recovered from the possession of the defendant. A decree of permanent injunction was granted against the defendants restraining him for manufacturing, storing and selling the counterfeit products bearing the trade-mark of the plaintiff and cost of suit was also awarded to the plaintiff.
Indiamart Intermesh Ltd vs Puma Se on 2 June, 2025 (Delhi High Court)
An appeal was filed by the appellant against an interim injunction order of the Single Judge Bench, which had restrained it from allowing sellers to use the mark “PUMA” in dropdown menus while registering products on its platform. The Division Bench partly set aside the order, holding that Indiamart functions more like a listing platform than an e-commerce site. The Court observed that merely providing “PUMA” as a dropdown suggestion does not, by itself, amount to trademark infringement. However, it upheld the requirement that Indiamart must act against counterfeit listings once notified. The Court concluded that the injunction restraining the use of “PUMA” in dropdowns was not justified.
Inbrew Beverages Pvt. Ltd vs Mount Distilleries Ltd on 3 June, 2025 (Sikkim High Court)
A writ petition was filed before the Sikkim High Court under Article 227 challenging a Commercial Court order that refused to allow the petitioner to file certified copies of documents after evidence had closed. The Petitioner herein, who was the Plaintiff before the Learned Commercial Court filed a Suit for infringement, passing off of trade mark, infringement of copyright, injunction and other consequential reliefs The Suit was valued at ₹ 1,00,00,000/- (Rupees one crore). The petitioner argued that the documents were crucial and had earlier been placed on record as photocopies. The Court held that since the documents were already within the petitioner’s possession, no sufficient cause was shown for the delay. It also noted that permitting their filing at this stage would amount to rectifying deficiencies in the petitioner’s case. Finding no procedural irregularity or jurisdictional error in the lower court’s order, the Court dismissed the petition.
Star India Pvt Ltd vs IPTV Smarter Pro & Ors. on 29 May, 2025 (Delhi High Court)
The plaintiff sought a permanent injunction against copyright and broadcast rights infringement by rogue websites and unknown defendants. On 10.02.2025, the Court granted an ex parte ad interim injunction. Observing that prior orders only covered websites, the Court issued a ‘superlative injunction’ to allow real-time relief against both rogue websites and mobile apps. This relief was extended to newly added defendants and future infringing entities identified during proceedings.
Other IP Developments
International IP Developments
(Thanks to Anureet, Arnav, Ayush, Riddhi, and Yohann for the case summaries.)