Post on ANI’s latest copyright action – sending copyright strikes to YouTube creators, another perspective on the ANI vs. OpenAI copyright dispute, this time on excessive judicial borrowing and the storage paradox, and Delhi HC’s ‘Andaz Apna Apna’ order with too much, yet too little IP. This and more in our weekly roundup of 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
Copyright Strikes? ANI-time! Disappearing Free Speech in the Copyright and Broadcasting World
Private news agency ANI is back in the copyright news, this time — leveraging YouTube’s 3 strike policy, the news agency has been sending copyright strikes to creators for their (minimal?) use of clips originally published/uploaded by ANI. But does ANI even have copyright over these clips? If not, would the broadcasting rights allow them such an enforcement? What about application of the de minimis exception here? Tanishka Goswami discusses these key questions around the development and highlights the citizens’ right to disseminate and access information under Article 19(1)(a) of the Constitution.
In light of the first few issues framed by the Court in ANI v. OpenAI copyright dispute, Shama Mahajan in this two part post discusses the problem of excessive judicial borrowing and fair use defence vis a vis storage. In Part I of the post, she explains non-applicability of ‘derivative work’ theory in the Indian context owing to the lack of its statutory sanction.
[Part II] ANI v. Open AI – The Storage Paradox is More Than Just Transient!
Continuing from her first part, in Part II of the post, Shama Mahajan argues that the Fair Use defence of incidental or transient storage might not be the right way out given the dynamics of how the data processing and storage work in these models.
Too Much, Yet Too Little: An Examination of Delhi HC’s “Andaz Apna Apna” Interim Order
The Delhi HC has pulled off its own “Andaz Apna Apna” while granting a blanket and wide ranging interim injunction protecting the movie’s different intellectual property assets from unauthorized use and commercial exploitation. Read Kartik Sharma’s analysis of the order, exploring the differing nature of protection for the movie.
A few weeks ago, when India was featured in the 2025 USTR Section 301 Priority Watch List, Dr. Anson CJ explored the idea of whether India should come up with its own watch list to monitor biopiracy. Taking that idea forward, Achyuth B Nandan explains why the Biopiracy watchlist is the need of the hour and how it can be implemented in light of India’s Biodiversity Laws.
Other Posts
Can a registered trademark owner sue another one for infringement? If no, then how will the provision in Section 124 (5) of the Trademarks Act function, allowing courts to pass interim reliefs against a proprietor of a registered trademark? In Abros Sports International Pvt. Ltd. v. Ashish Bansal & Ors , a DB of the DHC has recently encountered a Pandora’s box of a case, throwing up these important issues concerning trademark infringement cases. Read Tejaswini Kaushal’s post analysing the development.
What makes a trademark ‘green’? Dr. Sunanda Bharti in part 1 of the post unpacks how brands use eco-imagery to attract consumers, leading to greenwashing. Discussing this issue in light of trademark law, the post explains how unregistered trademarks escape scrutiny and why a comprehensive policy is urgent on this issue.
Can India curb greenwashing? Dr. Sunanda Bharti in part 2 of the post argues no new law is needed — amendments to the Trademarks Act, 1999, can tackle deceptive eco-claims. The post explains that by mandating certification marks for terms like ‘eco’ or ‘organic,’ and aligning with ASCI and Consumer Protection Act, 2019, India can ensure truthful branding.
Case Summaries
A rectification petition was filed seeking removal of the respondent’s trademark “Crompton” from the register. The petitioner argued that it has registered its “Crompton Greaves” in 1943 and the mark has been declared as a well known mark as well. Despite service of summons the respondent did not appear before the Court. The Court inferred that the respondent had registered the impugned mark to encash on the petitioner’s goodwill and resultantly, allowed the rectification petition.
Selle Royal Group S.P.A vs Ace Footmark (P) Ltd And Anr on 28 May, 2025 (Delhi High Court)
A rectification petition was filed before the Delhi High Court seeking removal of the respondent’s impugned trademark “fizikfreak”. The petitioner argued that the respondent is a habitual trademark squatter and has not been using the “fizikfreak” mark as well post registration. The petitioner also argued that the impugned trademark has not been renewed and the period of 1 year to renew the mark post expiration of the term is also about to end in June 2025. Despite service of the summons the defendant did not appear. The Court found that the impugned mark was adopted to ride on the goodwill of the petitioner’s mark. The Court acknowledged that while the petitioner had not registered its mark prior to the respondent’s registration, it held that the respondent’s mark should not have been registered as the same would amount to passing off, as per Section 13(3)(a). Consequently, the Court allowed the petition.
An appeal was filed against the rejection of the appellant’s “One for all” mark. The mark was rejected by the Trademark registry for being devoid of any distinctive character. After assessing the documents filed by the appellant the Court rejected the appeal, holding that the appellant has failed to establish that the mark “ONE FOR ALL” has acquired distinctiveness. The Court held that it cannot be said that the subject mark has acquired goodwill and reputation amongst the members of the trade and the consumers, so as to associate it with the appellant alone. The Court further emphasized that the mark has been used in association with “Oswaal Books” and not in isolation and thus the appellant failed to establish that the mark has acquired secondary meaning.
Steelcase Inc vs Mr. K.J. Bhuta And Anr on 28 May, 2025 (Delhi High Court)
The defendant sought to stay the infringement suit against them, under S. 124, and sought permission to file a rectification petition against the plaintiff’s “Steelcase” trademark. The Court assessed the defendant’s plea of invalidity and held that the same are open ended and require an analysis. The Court held that trademark “STEELCASE” of the plaintiff can be ‘suggestive’ since it may be associated with or connected with the same line of business, but that is not sufficient to reject registration to it. On the above reasoning the Court rejected the petition.
Rakesh Kumar Mittal vs The Registrar Of Trade Marks on 27 May, 2025 (Delhi High Court)
The petitioner sought issuance of a writ of mandamus or any other appropriate writ, order or direction directing the Registrar of Trade Marks to restore and reinstate the registration of the petitioner’s trademark MILTON. The petitioner alleged that the respondent did not serve the mandatory Form O-3 Notice specifying the date of expiration of the registration and the conditions for its renewal in compliance of Section 25(3) of the TM Act. Since the petitioner was not informed about the impending expiration of the registration and the conditions for its renewal, the Court held that the aforesaid trademark was wrongly removed from the Register and directed for the restoration of the trademark.
Zeria Pharmaceutical Co. Ltd vs The Controller Of Patents on 27 May, 2025 (Delhi High Court)
An appeal was filed against the rejection of the appellant’s patent titled “A COMPOUND REPRESENTED BY FORMULA (5a)”. The appellants alleged that the Controller failed to evaluate the merits of the invention by erroneously relying upon the prior art document D1 which “teaches away” from the claimed invention and therefore cannot help a ‘Person Skilled In The Art’. The appellants also alleged that the Controller erred in concluding that the claimed compound exhibits no enhanced efficacy in terms of its effect. The Court, dismissing the appeal, held that if an invention meets the requirements under Section 2(1)(j) or 2(1)(ja), it can still be rejected under Section 3(d). The Court also clarified that merely because a prior art does not directly teach the invention, it does not mean it “teaches away” from it.
An appeal was filed against the rejection of the appellant’s patent citing lack of inventive step and obviousness from cited prior art documents. The appellant alleged that the Controller has not considered the technical advancement offered by the claimed invention and has merely reproduced the paragraphs in the impugned order from the decision of the European Patents Office in the corresponding European Application. The appellant also contended that the refusal by the Controller on the ground of lack of inventive step hold no merit for the reason that none of the references, collectively or individually, teach or suggest the claimed invention. The Court, dismissing the appeal, noted that there were apparent overlaps in the impugned invention and the prior arts, with the cited prior art document of the very same inventor also describing a process exactly identical to the one claimed in the subject application, albeit with only minor distinctions.
M/S Mishu Enterprises V M/S Nakshatra 13 on 29 May, 2025 (Delhi District Court)
The plaintiff is the proprietorship firm that owns an website www.machhmani.com wherein it imparts knowledge about his goods and prominently displays its registered mark MACHHMANI/ MACCHMANI. The plaintiff found that the defendant, an astrologer, was unauthorisedly selling sea stones under the name of MACCHMANI. The court held that the defendant is found to be using the deceptively similar trademark of the plaintiff even after the registration and prior to that. Thus, the decree was passed in favour of the plaintiff with the defendant being restrained from manufacturing, storing and selling the products bearing the trademark/ logo of the plaintiff.
The Commissioner Of Income Tax vs Amazon Web Services, Inc on 29 May, 2025 (Delhi High Court)
The present appeal was filed by the appellant against an order by the ITAT. The Assessee had received certain sums of money from Indian entities for rendering cloud computing services, which, according to the Assessing Officer are chargeable to tax as royalty and fees for technical service. The ITAT allowed an appeal by the Assessee and set aside the assessment orders, finding that the amounts received by the Assessee were neither in the nature of royalties nor fees for included services. The Court noted that the customers of the Assessee do not acquire any right to commercially exploit any of the Assessee’s IPRs. The agreement between the assessee and the customers did not entail transfer of any technology, skill, technical know-how or process either. The Court, dismissing the appeal, found no merit in the contention that the amount received by the Assessee for providing services would be taxable as equipment royalty since no part of its equipment or IPRs are alienated by the Assessee in favour of its customers for their use.
Mani Inc vs Sicher Holdings Ltd. And Ors on 29 May, 2025 (Delhi District Court)
The plaintiff had adopted and been using the trademark “MANI” since 1959. One of the most significant products in the dental segment- Dental Rotatory Instrument is sold under the name and description of “DIABURS”. The defendants are alleged to be engaged in manufacturing, marketing, packaging, soliciting and trading of products in the healthcare industry similar to the plaintiff’s products under the plaintiff’s trademark/trade dress/label. The court noted that BUR is a generic name in dental surgery and Diamond is used in making of the surgical instruments over which the parties are litigating, the plaintiff by virtue of its ownership in DIA BURS cannot claim ownership in Diamond BUR or Dx BUR. The Court, dismissing the suit, held that there is no deceptive similarity in the two products since the names of companies are clearly mentioned on the products, the names of products Dx BUR and DIA BUR are clearly mentioned on the products, and the colours of products are different being blue and green.
Other IP Developments
International IP Developments
(Thanks to Praharsh and Sonisha for the case summaries)