McDonald’s “Mc” prefix at the centre of a trademark battle, a new twist in the Pertuzumab biosimilar case at the Delhi HC in Roche v. Zydus, trademark and colour combination in the news again in Exide Industries v Amara Raja Energy. This and a lot more on last week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
The “Mc”Monopoly: Is McDonald’s Building a Trademark Empire on a Single Prefix?
The globally known McDonald’s has found itself in the midst of a trademark battle against McPatel Foods from Ahmedabad. Opposing a trademark application filed by the latter, McDonald’s claims exclusivity over the ‘Mc’ prefix. McPatel argues that McDonald’s does not have exclusive rights over the prefix. Keeping this dispute at the center, Siri Gudapati looks at the family of marks concept under the Indian trademarks law and the ill effects of granting exclusivity on prefixes like “Mc”.
Similar Isn’t Identical? How the Roche v. Zydus Judgment Interprets Section 104A
In the latest twist to the Pertuzumab patent dispute, the Delhi High Court refused to direct Zydus to disclose its manufacturing process unless Roche satisfies the requirement under Section 104A — proving that both the competing biologic and biosimilar drugs are identical. Breaking down the decision, Subhalaxmi Mukherjee writes about how this judgment interprets the application of Section 104A in biologics patent disputes.
Other Posts
Dura-Line v. Jain Irrigation: Where the Design’s Test Holds Water but TSM Leaks
After more than a decade of litigation, the Delhi HC upheld the validity of the Suit Patent of Dura-Line and dismissed Dura-Line’s allegation of design infringement against Jain Irrigation. Explaining the judgment, Srishti Gaur highlights how it stands out for its findings on design infringement, but falls short on the obviousness analysis of the suit patent.
Too Common to Claim? Rethinking Trademark Boundaries in Colour Protection
The Cal HC in Exide Industries v Amara Raja Energy granted an interim injunction against Amara Energy from using the red and white colour combination for its product ‘Elito’ batteries. The Court accepted Exide’s claim that the prolonged use of a specific colour combination for automotive batteries gave rise to proprietary rights to Exide Industries over this colour scheme. Srishti Gaur explains how the case exemplifies a slippery slope of granting trademark protection over colour schemes.
Webinar on Breaking Barriers to SMA (Spinal Muscular Atrophy) Treatment (August 8)
The Working Group on Access to Medicines and Treatment invites you to a webinar on breaking barriers to SMA (Spinal Muscular Atrophy) Treatment. The webinar will be conducted on August 8, 6:30 PM. Please read the post for the details.
Case Summaries
Tata Power Renewable Energy Limited & … vs Ashok Kumar/S & Ors on 30 July, 2025 (Delhi High Court)
The Delhi High Court granted a summary judgment in favor of the plaintiffs, Tata Power Renewable Energy Limited, against two primary defendants. The plaintiffs had filed a suit seeking a permanent injunction against the defendants for trademark infringement, passing off, and unfair trade competition for running the website http://www.tatasolarpowerdistributor.com/. The Court found that the defendants had no real prospect of successfully defending the claim, as they had not appeared before the court or filed a written statement, and had slavishly copied the plaintiffs’ registered trademarks. The Court issued a permanent injunction, a dynamic injunction, and ordered the suspension of the defendant’s infringing website. The Court also directed the relevant banks (Defendant Nos. 5-14) to freeze and transfer funds from the impostor bank accounts to the RBI’s Depositor and Education Awareness Fund. The suit was disposed of as satisfied against other defendants who had complied with previous Court orders, and the plaintiffs’ claims for monetary damages were not pressed.
Infosys Limited vs Southern Infosys Limited on 1 August, 2025 (Delhi High Court)
Delhi High Court addressed a dispute regarding the defendant’s continued use of its previous, injuncted name, “Southern Infosys Limited,” after being directed to change it due to trademark infringement and passing off. The plaintiff, Infosys Limited, argued that the defendant’s reliance on Section 12 of the Companies Act, 2013, to continue displaying the old name was impermissible. Citing a previous ruling in Sanofi & Anr. v. Zanofi Pharmaceutical Pvt. Ltd., the court affirmed that court-ordered name changes, unlike voluntary ones, are not bound by the provisions of Section 12(3) of the Companies Act. The court’s power to rectify a name is to eliminate deceptive similarity and confusion, and allowing the old name to be displayed would defeat this purpose. Consequently, the court directed the defendant to display only its new name on all goods, services, and promotional materials and to file a fresh compliance affidavit within two weeks. The plaintiff, in turn, expressed willingness to have the suit disposed of without pressing for damages, pending the defendant’s compliance.
Delhi High Court granted an interim injunction to the plaintiffs, Hilton Worldwide Manage Limited, restraining the defendant, M/s Hilton Cloud Resort, from using the name “HILTON CLOUD RESORT” or any confusingly similar mark. The plaintiffs’ lawsuit sought a permanent injunction for trademark infringement and passing off. The court noted that the defendant had, on two occasions (July 5, 2024 and July 30, 2025), acknowledged the plaintiffs’ proprietary rights in the HILTON trademark and stated its intention to change its name. Despite this, the defendant continued to use the mark. The court, therefore, found that the plaintiffs had established a prima facie case and granted the interim injunction. The defendant was given four weeks to remove the infringing mark from all third-party websites, social media platforms, stationery, staff uniforms, and any other use within its hotel. The court also granted the plaintiffs’ applications for exemption from pre-institution mediation, citing the need for urgent interim relief.
Delhi High Court granted an ex-parte interim injunction to Astellas Pharma Inc. and another plaintiff, restraining multiple defendants from manufacturing, selling, or distributing a pharmaceutical product called “GILTERNIB,” which was found to infringe on the plaintiffs’ Indian Patent No. 292990 for the compound “GILTERITINIB.” The court noted that the plaintiffs’ patented drug, sold under the brand name XOSPATA, is an important oral therapy for Acute Myeloid Leukemia (AML). The defendants, including a Bangladesh-based manufacturer and several Indian e-commerce platforms and sellers, were offering the infringing product. The court highlighted the serious health risks associated with the defendant’s product, citing a publication that questioned its quality and regulatory approval. Citing a similar favorable ruling for the plaintiffs in a previous case, the court concluded that the plaintiffs had a strong prima facie case and that the balance of convenience was in their favor. The court issued an injunction against all defendants and specifically directed the e-commerce platforms (Defendant Nos. 8 and 9) to delist all infringing products and cease all related orders. Defendant No. 8 agreed to abide by the court’s directions and was subsequently exempted from further appearances.
Hugo Boss Ag v Javid Ahmad on 4 August, 2025 (High Court of Delhi)
The plaintiff, owner of the well-known and registered trademarks ‘HUGO BOSS’ and ‘BOSS’, filed a suit for trademark infringement against the defendant. The Court held that the defendant’s mark ‘BOS’ was visually, phonetically, and structurally identical to the plaintiff’s mark ‘BOSS’. The Court observed that the defendant had deceptively copied the essential part of the plaintiff’s mark, with the omission of a single letter ‘S’, having no bearing on the phonetic similarity. Observing that the defendant’s adoption was mala fide and likely to cause public confusion, the Court found that the balance of convenience and irreparable harm favoured the plaintiff and granted an ex-parte ad-interim injunction restraining the defendant from using the impugned mark on clothing and apparel.
The plaintiff, owner of the registered ‘OPTUM’ mark, filed a suit against a large-scale, sophisticated recruitment scam being perpetrated by unknown persons (John Doe defendants). The alleged modus operandi involved registering domain names deceptively similar to the plaintiff’s, creating fraudulent email IDs, and using them to contact job aspirants. The Court found that a prima facie case of trademark infringement, passing off, and identity theft was established, which was causing irreparable harm to Optum’s reputation and defrauding the public. Accordingly, the Court granted a dynamic ex-parte ad-interim injunction restraining the unknown fraudsters and issued directions to various intermediaries, including Domain Name Registrars and social media platforms, to block the infringing domains and accounts and to disclose the perpetrators’ details to the plaintiff.
VI-John Healthcare India LLP v Dabur India Ltd. on 31 July, 2025 (Delhi High Court)
The Petitioner has filed the petition under Article 227 of the Constitution, aggrieved by the Order dated 06.02.2025 passed by the learned Trial Court in the application seeking condonation of delay of 48 days in filing the written statement in the suit. The Trial Court condoned the delay subject to payment of cost of ₹25,000/- for each day’s delay by the Petitioner to the Respondent. The Court noted that the delay in filing of the WS was only 48 days and well within the outer limit of 120 days, it cannot be said that there was an inordinate delay on the part of the Petitioner without any justifiable reason. The Court allowed the petition, condoning the delay without payment of cost.
Ashim Kumar Bagchi v Balaji Telefilms Limited on 6 August, 2025 (High Court of Judicature at Bombay)
The plaintiff, a scriptwriter, sought an interim injunction against the producers of the film “DREAM GIRL 2,” alleging copyright infringement of his script and breach of confidence. The plaintiff claimed that his script, based on a gender-swap comedy where a man poses as a female actress to overcome financial hardship, was copied by the defendants. The Bombay High Court dismissed the application, finding that the plaintiff had failed to make out a prima facie case. The Court held that the plaintiff was attempting to claim a monopoly over unprotectable elements such as common ideas, themes (gender disguise), and stock scenes (scènes à faire), which are not protected by copyright law. Upon comparing the two works, the Court found them to be “entirely different and distinct” in their plot, character motivation, setting, and climax. The claim for breach of confidence also failed as the plaintiff could not precisely identify any confidential information that was original and not already in the public domain. Finding the plaintiff’s claim to be “fanciful” and a waste of the court’s resources, the Court dismissed the application and imposed costs of ₹2 Lakhs on the plaintiff.
Burberry Ltd. v. Rajiv Sachdeva & Others on 1 August, 2025 (Delhi District Court)
Burberry Ltd., owner of the globally recognised “BURBERRY” marks and designs, sued Rajiv Sachdeva for selling counterfeit BURBERRY-branded apparel in New Delhi. A court-appointed Local Commissioner seized over 160 counterfeit garments, and the unchallenged inspection reports were admitted as evidence. The defendants stopped appearing in court, leading to ex parte proceedings. The court held that Burberry’s marks were “well-known” and that the defendants’ actions caused confusion, diluted the brand’s reputation, and were intended to exploit its goodwill. Citing precedents, the court awarded punitive damages despite the absence of proof of actual profits. Relief included a permanent injunction, delivery-up of infringing goods for destruction, ₹50,000 compensation, and costs.
Sanofi, owner of the COMBIFLAM mark for pain relief medicines, alleged that SGS Pharmaceutical’s COMBIPAR mark and packaging were deceptively similar, risking confusion in the pharmaceutical market. The Delhi High Court exempted Sanofi from pre-litigation mediation due to urgency, noting near-identical packaging colours, layout, and product appearance. Applying the stricter similarity test for medicines, the court found the marks phonetically alike, the trade dress copied, and the defendant unable to justify its adoption. Past infringement history of the defendant weighed against them. An ad-interim injunction restrained use of COMBIPAR and similar packaging, ordered takedown from online platforms, and required disclosure of sales and inventory data. The matter was listed for further hearing in September 2025 and January 2026.
Rado Uhren Ag And Others vs Fazal Ahmed Sayyed And Others on 2 August, 2025 (Delhi District Court)
Luxury watch brands of the Swatch Group, including Rado, Tissot, Omega, Longines, and Swatch, sued Fazal Ahmed Sayyed and others for selling counterfeit watches bearing their registered marks. Some infringing goods were found in Delhi, establishing territorial jurisdiction under trade mark and copyright law. The court found that the defendants’ marks were identical or deceptively similar to the plaintiffs’ marks and that infringement is presumed when identical marks are used for identical goods. The plaintiffs also proved copyright in the artistic logos. The court held that the defendants’ actions constituted infringement and passing off, granting a permanent injunction to stop sales and marketing of counterfeit products. Damages were awarded, though the visible order does not specify the amount.
Fdc Limited vs Healing Pharma India Private Limited on 31 July, 2025 (Delhi High Court)
FDC Ltd., proprietor of the antibiotic brand ZIFI and the ORS brand ELECTRAL (the latter a declared well-known trademark), sued Healing Pharma for launching HIFI (for cefixime-based antibiotics) and HEALING ELECTROLYTE Z in packaging resembling ELECTRAL’s iconic green-and-white trade dress. The plaintiff alleged phonetic and visual similarity, identical product composition and therapeutic use, overlapping trade channels, and deliberate imitation of packaging. The Delhi High Court found a prima facie case of “triple identity” (similar marks, products, and consumer base) and held that the defendant acted with mala fide intent to ride on FDC’s goodwill. The court noted a likelihood of consumer confusion, especially in hurried medical contexts. An ex parte injunction was granted restraining use of the infringing marks, packaging, and trade dress, and prohibiting copyright infringement and passing off. Compliance under Order XXXIX Rule 3 CPC was directed within two weeks, with the matter listed for 20.09.2025 (pleadings) and 10.11.2025 (hearing).
Mintage Steels, owner of the trademark “MINTAGE” for kitchen utensils, alleged that Neelam Jain’s “SINTAGE” products slavishly copied its packaging and trade dress, changing only the first letter. The plaintiff pointed to replication of the stylised artistic elements, red-and-white colour scheme, and overall look-and-feel of its goods. The Delhi High Court, on a visual comparison, found deceptive similarity and a prima facie case of passing off and trademark infringement. The court granted an ex parte interim injunction restraining the defendant from manufacturing, advertising, or selling products with the impugned packaging, or listing them online. However, relief was limited to the trade dress at this stage; the claim regarding the word mark ‘SINTAGE’ will be decided later.
GSK, owner of the well-known vitamin supplement trademark ‘COBADEX’ (registered since 1958), alleged that the defendants were selling ‘COBADRIX’ products, with only minor spelling changes, in the same category. The plaintiff claimed the marks were visually, phonetically, and deceptively similar, targeted the same consumer base, and were being sold through identical channels. The Delhi High Court agreed, finding a clear case of “triple identity” and holding that an average consumer with imperfect recollection would likely confuse the two marks. The defendants’ continued sale despite a cease-and-desist notice indicated mala fide intent. An interim injunction was granted restraining the defendants and associated entities from manufacturing, selling, or dealing in products under ‘COBADRIX’ or any similar mark.
Other IP Developments
International IP Development
(Thanks to Bhavya, Himanshu, and Shailraj for the case summaries.)