Sound recording licensing, India’a annual IP report, creative works as industrial design, and a lot more that has happened last week. Not to forget – SpicyIP Summer School is now accepting applications! As we near the end of April, here’s a roundup of our blog posts, case summaries and top IP developments in the country and the world this week. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
PPL Cannot Issue Licenses for Sound Recordings Without Being Registered as a Copyright Society: DHC
In a major shift in how music licensing is handled in India — a DB of the Delhi HC has held that PPL cannot issue or grant licenses for sound recording without registering itself as a copyright society or becoming a member of any registered copyright society. With Section 31(1) of the Copyright Act at the crux of this issue, Kartik Sharma explains the judgment and its implications.
Looking Beyond the Numbers: What does the 2023-24 IP India Annual Report Says on Patents?
The 2023–24 IP India Annual Report was released on March 31, almost a year after the 2023-24 financial year ended. The document shares crucial figures on IP trends in India, but is compiled in an inaccessible format, making it impossible for readers to even search the 157-page document. Tanishka Goswami examines the patent data in the report, highlighting the increase in patent applications, grants, and the number of examiners. She also explores the sectors with the most applications and compares these figures with the numbers in the WIPO 2024 indicators.
[Part I] Cryogas Judgment: Supreme Court Stops Copyright from ‘Gaslighting’ Design
The Supreme Court’s recent judgment in Cryogas Equipment Pvt. Ltd. v. Inox India Ltd. (2025) has addressed an important question: when does a creative work become an “industrial design” outside the realm of copyright? Breaking down the key parts of the decision, Aditya Bhargava discusses the jurisprudence on the difference between copyright and industrial designs and the two-pronged test to distinguish between the two intellectual properties adopted by the Court.
[Part II] Cryogas Judgment: Supreme Court Stops Copyright from ‘Gaslighting’ Design
In the first part, Aditya Bhargava dissected the two-prong test laid down by the Supreme Court in Cryogas Equipment Pvt. Ltd. v. Inox India Ltd. Continuing the discussion on the Supreme Court’s decision, Aditya writes on the question of “functional utility” and how it informs the two pronged test by the Court.
Figuring out sufficient level of human intervention in BTS Research International v. Controller
In BTS Research International v. Controller of Patents, the Calcutta HC decided an appeal against the Controller’s order that refused to grant a patent to a trihybrid cell. The cell was held to be ‘part of an animal/human’ which is unpatentable u/s. 3(j). Yogesh Byadwal writes on the development, analysing the judgment and attempts to tease out a test to determine sufficient human intervention to overcome sec 3 (j).
Other Posts
Vacancies for 2 Advocates in the Office of Swathi Sukumar, Senior Advocate [Apply by April 30, 2025]
The office of Senior Advocate Swathi Sukumar is looking to retain 2 advocates for her chamber in New Delhi. Candidates may send their cover letter and CV on or before April 30, 2025. For more details, see the post.
Calling the Experts: CGPDTM Invites Applications for Scientific Advisors
CGPDTM has invited applications to update the roll of Scientific Advisors maintained under Section 103, to assist the Court in infringement and other proceedings. The last date to submit applications is April 30. Read Advika Singh Malik’s post on this announcement below.
IILM University, Gurugram is organizing a 5-day hybrid workshop and panel discussion celebrating the International IP Day week from April 22 to April 26. The last day to apply for the workshop is April 19 and there is no registration fees. For details about the theme of the workshop take a look at their call for application.
Call for Applications: TWN and IUCIPRS Workshop on Patent Oppositions (June 12-16)
TWN and IUCIPRS, CUSAT are inviting applications from IP professionals working in the generic pharmaceutical sector to apply for a five-day residential workshop on patent opposition. The workshop is scheduled for 12–16 June 2025 at IUCIPRS, CUSAT, Kochi, Kerala. There are no registration fees, and the travel, accommodation, and food expenses will be fully sponsored by the organisers. For more details, please take a look at their call for applications.
Case Summaries
The plaintiff filed a suit seeking permanent injunction against copyright and trademark infringement, passing off and other ancillary reliefs, against multiple defendants. They also filed interlocutory applications seeking: extension of time to pay court fees, exemption from filing certified copies, request to file additional documents under the Commercial Courts Act, exemption of service from notice to Defendants 4 and 5, exemption from pre-institution mediation and time to file a certificate under S.63(4)(c), BSA. All these applications were granted in favour of the plaintiff. The plaint was registered as a suit, and summons of the suit and notice of the applications were directed to be issued. Defendants 1 and 2 submitted that they were willing to settle, and were accordingly referred to mediation.
The plaintiff, a global healthcare company, was the owner of the mark “FLIXONASE”, used in nasal sprays which prevent rhinitis. The plaintiff first registered the mark in 2001, and currently holds valid registration until 2034. In 2024, the plaintiff became aware of the defendant’s trademark application for the mark “FLIXONE” on a proposed-to-be-used basis, and promptly sent a cease-and-desist notice and initiated opposition proceedings. While this application was abandoned, the defendant also filed an application to register the mark “FLIXONE – SB” in 2025, which is currently pending. The plaintiff then filed a suit seeking permanent injunction against infringement, and passing off. The defendant did not appear. The Court held that the two marks were deceptively similar and were used for identical goods, with balance of convenience being in the plaintiff’s favour and irreparable harm would be caused to them in case of continued use of the impugned marks. The injunction was thus granted.
The plaintiff, an international fashion house, filed the present suit for permanent injunction against infringement and passing off in respect of its registered word and three-dimensional marks “KELLY”, “HORAN”, “HERBAG” and “BIRKIN”. They alleged that the defendant was manufacturing and offering for sale, replicas of the products associated with its marks, and advertising the same on its website and Instagram profile using the deceptively similar word marks “JELLY KELLY”, “ORAN” and “KINBAG”. Further, the defendant was alleged to be a repeat offender, having previously copied the marks of other well-known brands such as Louis Vuitton. The Court held that the plaintiff established a prima facie case of infringement and passing off, and granted a temporary injunction against the defendant.
B. R .Yathiraj Pi vs Amaresh K. L on 20 March, 2025 (Bangalore District Court)
The case involved a criminal complaint regarding knowing infringement of copyright under S.63, Copyright Act. The accused persons were allegedly using low-quality materials to manufacture jeans and attaching the brand label of the USPA Denim Company in order to mark up the price. However, the Court found that since the said jeans were not works in which copyright subsists as per S.13, the panch witnesses had turned hostile, and the investigating officer had failed to produce a certificate under S. 65B of the Evidence Act, the prosecution failed to establish the offence beyond reasonable doubt. Thus, the accused persons were acquitted.
Anil Kumar Gera vs Anil Food Industries on 9 April, 2025 (Delhi District Court)
The plaintiff filed a suit seeking to restrain the defendant from using the trademark “CHATMOLA” and a particular packaging design for “TINI MINI/TINY MINY,” alleging trademark infringement, copyright infringement, and passing off. The plaintiff claimed to have adopted the CHATMOLA mark in 1990 and to be its rightful owner. The defendant, however, argued that it had adopted the mark in August 1990, launched products under it in January 1991, and lawfully obtained registration of CHATMOLA in Class 30. The defendant also filed a counterclaim, alleging that the plaintiff was infringing its trademark and copying its packaging to mislead consumers. Upon examining the evidence, the Court found that the defendant’s registration of CHATMOLA was valid and subsisting. It held that the plaintiff’s claims of prior use and copyright ownership lacked credible proof, and documents relied on by the plaintiff were found to be fabricated. The plaintiff’s suit was thus dismissed, and the Court granted a permanent injunction against the plaintiff for trademark infringement and passing off.
The case involved a challenge to the order of the Chief Judicial Magistrate and the confirmatory order of the Additional Sessions Judge, both arising out of a criminal case under Sections 63 and 66 of the Copyright Act. The impugned orders rejected the application of the accused for discharge under S.239 of the CrPC. The Court perused the records and found that the infringing materials had been seized from the accused’s possession, and found no illegality in the impugned orders. It did not provide further reasons. Accordingly, the application of the accused was dismissed.
The plaintiff filed a suit seeking a permanent injunction against trademark infringement and passing off in relation to the mark “BABU LIME,” which it claimed had been used continuously since 1993 for lime-based products and was registered in 2008. The plaintiff alleged that the defendant, operating under the mark “GUJARAT LIME SUPPLY CO.,” had started using the identical mark “BABU LIME” in 2024 on invoices, packaging bags, and on third-party online platforms. The Court found that the plaintiff had established a prima facie case of prior use and valid registration. The likelihood of confusion was held to be evident due to the identical nature of the marks, the identical class of goods (hydrated lime and related products), and the overlapping customer base of industrial and construction consumers. The plaintiff also produced evidence of actual marketplace confusion, including customer inquiries and mistaken orders. Noting the balance of convenience in favour of the plaintiff and the risk of irreparable harm to its goodwill and business, the Court granted an ad-interim injunction in favour of the plaintiff.
Diageo Scotland Limited vs Prachi Varma & Anr. on 16 April, 2025 (Delhi High Court)
The petitioner challenged the Assistant Registrar’s dismissal of its opposition against the mark “CAPTAIN BLUE,” alleging deceptive similarity with its well-known trademarks “CAPTAIN” and “CAPTAIN MORGAN.” The Court noted the petitioner’s long-standing use and goodwill associated with the mark “CAPTAIN,” holding that the impugned mark was likely to confuse consumers. It criticized the respondent’s failure to furnish evidence of bona fide use and compliance with Rule 46. The Court reinforced that protection of prior registered trademarks is essential under the Trade Marks Act to prevent consumer deception and unfair advantage.
Mankind Prime Labs Private Limited vs Registrar Of Trade Marks on 16 April, 2025 (Delhi High Court)
The appellant, Mankind Pharma, challenged the refusal of its trademark application for “CROSSRELIEF” under Class 5 by the Trade Marks Registry. The Court held that “CROSSRELIEF” was an arbitrary, invented word and could not be dissected into its components “CROSS” and “RELIEF” to assess distinctiveness. It ruled that the mark, when viewed as a whole, was structurally and phonetically distinct from the cited marks and unlikely to cause confusion. The Court emphasized the anti-dissection principle and allowed the appeal, directing the mark to proceed for registration.
The appellant challenged the refusal of trademark registration for “BharatStamp” (Class 9), which was denied under Section 9(1)(a) for lacking distinctiveness. Arguing that the term is a coined word and must be viewed as a whole, the appellant cited prior similar registrations and claimed acquired distinctiveness. The respondent opposed, citing descriptiveness and lack of prior use. The Court held that “BharatStamp” is a self-created term with no direct reference to the goods and qualifies for inherent distinctiveness, setting aside the refusal order.
The appellants challenged the Assistant Controller’s refusal of their patent application for an anti-cMet antibody-drug conjugate (ADC) under Section 59(1) of the Patents Act. The Court upheld the refusal, stating that the amendments, which sought to shift from method-of-treatment claims to product claims, were impermissible as they broadened the scope of the original application. The Court referenced the importance of adhering to the original claims and emphasized that amendments must not introduce new subject matter or expand protection beyond what was disclosed in the initial PCT application.
The petitioner claimed that the respondent’s use of the “BOLDIFY” mark infringed on its established trademark, which had been used continuously since 2016 for hair care products. The Court found that the respondent’s adoption of the mark in 2018 was done in bad faith, given the petitioner’s prior use and international recognition. Despite the respondent’s denial of the cease-and-desist notice, the Court upheld the petitioner’s claims, emphasizing the risk of consumer confusion due to the similarity of the marks and related products. The petitioner’s long-standing goodwill and evidence of prior use strengthened the case for trademark infringement.
The plaintiff alleged trademark infringement and passing off, claiming jurisdiction under Section 134(2) of the Trade Marks Act based on its registered office and trademark registrations in Delhi. The defendant denied territorial jurisdiction, asserting no sales or targeted activity in Delhi, and attributed online listings to third-party vendors. The Court held that mere passive listings on India Mart and Kalgudi, without evidence of interactivity or targeting Delhi consumers, could not establish jurisdiction. Relying on Banyan Tree Holding, the Court denied the defendant’s application under Order VII Rule 10 CPC but upheld interim relief restraining use of the plaintiff’s trademarks.
Suncare Formulations Pvt. Ltd vs Oreo Healthcare on 15 April, 2025 (Saket District Court)
The plaintiff alleged that the defendant’s use of the mark “HEMOCAL” infringed its trademark “HAEMOCAL” and amounted to copyright infringement due to the deceptive similarity in both the name and packaging. The Court granted relief to the plaintiff, finding that the defendant’s actions were likely to cause consumer confusion and deceive the public. The plaintiff’s established goodwill and ownership of the trademark and packaging were upheld, with the Court awarding nominal damages and directing the destruction of infringing goods. The judgment reinforced the protection of intellectual property rights against deceptive practices.
Avinash Ranjan vs The State Of Jharkhand on 16 April, 2025 (Jharkhand High Court)
The petitioners were accused for allegedly being involved in the printing of fake stickers of various companies. The petitioners denied the charges, claiming they had no knowledge of the destination of the printed materials and had no criminal antecedents. Considering their plea and the fact they had been in custody since January 31, 2025, the court granted bail subject to conditions, including cooperation with the trial and provision of mobile numbers and Aadhar details.
Other IP Developments
International IP Developments
(Thanks to Anushka and Advika for the case summaries)