[This weekly review is authored by Vikram Raj Nanda. Vikram is a third-year student at National Law School of India University, Bengaluru, with a keen interest in IP law, Competition Law, and Arbitration. His previous posts can be accessed here.]
After wrapping up the second edition of SpicyIP Summer School, we are back with the SpicyIP Weekly Review covering the developments from the last 2 weeks. From a historical reflection on the reversionary right in copyright law and its disappearance from the current Copyright Act, to an analysis of the legal implications of the Telegram ban in India, there was plenty to unpack. Any developments we are missing? Drop a comment and let us know!
Highlights of the Week
The Copyright Reversion Right India Refused
Contemporary copyright debates increasingly invoke the rights and interests of authors, particularly in discussions around generative AI and the use of copyrighted works for training models. Yet, an overlooked question lies at the heart of these debates: do authors actually retain the rights that the law purports to protect? A revisit to the making of India’s Copyright Act by Akshat Agrawal reveals a forgotten history of the reversionary right and a path not taken.
How Telegram Imports Copyright Doctrine Into Public Law
The Delhi High Court’s recent decision upholding the temporary nationwide blocking of Telegram may appear to be a public-order case. Yet, beneath the surface, it imports a deeper logic from copyright enforcement jurisprudence: that a platform’s architecture can itself justify expansive regulatory intervention. In this post, Anushka Aggarwal examines the emergence of “architectural liability” and its implications for intermediary regulation.
SpicyIP Tidbit: PPL Registered as a Copyright Society for Sound Recordings
After years of litigation, administrative reversals, and regulatory uncertainty, PPL has finally secured registration as a copyright society for sound recordings. But the registration does more than resolve a long-pending dispute; instead, it creates the unusual situation of two copyright societies operating in the same category of works, raising fresh questions about the interpretation of Section 33 and the future of collective licensing in India. Nilisa Majumder writes on this development below.
Other Posts
India–Brazil TKDL Access Collaboration: The Next Phase of Global Biodiplomacy?
The recent collaboration between India’s CSIR and Brazil’s National Institute of Industrial Property (INPI) on access to the Traditional Knowledge Digital Library (TKDL) marks an important development in the evolving governance of traditional knowledge and biodiversity. While framed as a patent examination initiative, Achyuth B Nandan explains that the agreement may have implications extending far beyond prior-art searches, particularly for disclosure obligations, user-country compliance, and the emerging architecture of global GRATK governance.
The Delhi High Court has once again weighed in on the evolving doctrine of transborder reputation, this time in a dispute over the mark ‘Whistler’ between an Irish whiskey producer and an Indian liquor company. In this post, Vikram Raj Nanda examines how the Court reaffirmed the territoriality principle, the evidentiary threshold it set for proving transborder reputation in the digital age, and what this could mean for future trademark disputes.
Case Summaries
Blue Cross sued for infringement of its registered marks MEFTAL and MEFTAL-SPAS, infringement of its registered copyright in the MEFTAL-SPAS strip and carton artwork, and passing off, after the defendants used MEFIAL-SPAS for analgesic and antispasmodic preparations. The defendants did not appear and the suit proceeded ex parte. The Bombay High Court decreed the suit. It held the defendants had lifted the mark wholesale, swapping only the T for an I, and had copied the artwork, colour scheme and packaging, creating clear visual and phonetic similarity in respect of pharmaceutical goods. It refused damages for want of evidence but awarded Rs 5,00,000 in costs against each defendant, citing their dishonest adoption and failure to contest.
Piyush Sapra & Anr vs Flipkart Internet Private Limited & Ors on 15 June, 2026 (Delhi High Court)
The plaintiffs, proprietors of the SHAPERMEN shapewear mark, sued over Flipkart’s “Latching On” feature, which let third-party sellers add themselves to the plaintiffs’ product listings and use their marks, images and Flipkart Serial Number to sell cheap counterfeits. The Delhi High Court found a prima facie case of passing off and granted an ex parte ad interim injunction. It restrained the third-party sellers from using the marks and listing content, directed Flipkart to delist the impugned listings, and set up a notify-and-takedown mechanism requiring Flipkart to act within 72 hours and disclose seller details on future complaints.
Barcode Marketing appealed against a trademark examiner’s order dated 23 October 2018, where the statement of grounds under Rule 36(1) of the 2017 Rules came four years later in December 2022. The appellant argued the examiner was not authorised under Section 3(2) of the Trade Marks Act when the order was passed. The Calcutta High Court did not decide the jurisdictional question. By consent of both sides, it set aside the order and the later statement of grounds and remanded the matter for fresh adjudication on the same papers, to be decided preferably within eight months, with liberty to bring on record any change in circumstances since 2018.
Novamax Industries LLP vs Prem Appliances & Anr on 19 June, 2026 (Delhi High Court)
Novamax sued for infringement of its registered cooler design and passing off, and the defendant sought summary judgment under Order XIII-A CPC. The Delhi High Court split the suit. On infringement, it held the design was prior published, since the plaintiff’s own invoices and website showed coolers bearing the suit design sold under the ZEPHYR mark before the registration application, so the claim had no real prospect of success and was dismissed. On passing off, it refused summary dismissal, holding that following the Full Bench in Carlsberg Breweries and the Division Bench in Crocs, a composite suit is maintainable and passing off can succeed on evidence at trial even where design infringement fails.
Honasa Consumer Ltd vs Visage Beauty And Health Care Pvt Ltd on 19 June, 2026 ( Delhi High Court)
The Delhi High Court considered a rectification petition filed under Secction 57 of the Trademarks Act for a trademark granted to a product ‘D Tan’. The petitioner submitted that the mark granted to the respondent is descriptive of the nature, kind, intended purpose, character, or quality of the goods, and hence must be rectified. The Court also looked into the long-standing use of 12 years of the mark and relied upon Section 12 of the Act on “honest concurrent use”, which appears to be an exception to the absolute grounds of refusal under Section 9 and relative grounds of refusal of registration under Section 11 of the Act. Nevertheless, on application of the descriptive test, the mark was found liable to cancellation and rectification.
In the Delhi High Court, the proprietors of the mark “GODFATHER” filed a case alleging that the defendant was using an identical trademark on a Facebook page announcing the launch of its whisky under the same name. The court acknowledged that the petitioner has built substantial goodwill and reputation, and that the mark is exclusively associated with the plaintiff. Therefore, the court granted an ad interim injunction and instructed that all infringing materials be taken down.
Kumar Foods Industries vs Grm Foodkraft Private Limited on 19 June, 2026 (Delhi High Court)
The Delhi High Court decided a suit for a permanent injunction filed between SHAKTI BHOG and 100X SHAKTI products. The appellant alleged passing off, unfair competition and deceptive similarity of the names. It is a settled principle of trade mark law that rival marks must be compared as a whole and not dissected. The court decided in favour of the appellant on the test of triple identity -deceptive similarity, identical goods, and common trade channels and consumer base. The court thereby stayed the trial court order and granted interim relief.
Emami Limited vs Dabur India Limited on 19 June, 2026 (Delhi High Court)
The Court allowed the Defendant’s application for a limited extension to sell its existing stock of ‘DABUR Cool King Thanda Tel’, despite an earlier injunction restraining its sale for trade dress infringement. After balancing the Plaintiff’s trademark rights against the Defendant’s potential financial loss, the Court permitted the Defendant to exhaust only the inventory manufactured before the injunction until 30 September 2026, subject to strict conditions, including no further manufacture, weekly inventory disclosures, and destruction or donation of any unsold stock thereafter.
Sandip S/o Ramashankar Dube v. State of Maharashtra , (12 June 2026) (Bombay High Court)
The Bombay High Court quashed the criminal proceedings which were begun under the Copyright Act against accused persons said to be selling fake Zara and Calvin Klein apparel. The Court held that even if the allegations are taken as true they would, at best show offences under the Trade Marks Act not the Copyright Act . It also observed that the compulsory steps for search and seizure under Section 115 of the Trade Marks Act were not complied with, and because of that, the whole investigation became unsustainable.
M.R. Pavan Kumar v. M/s Shri Prasanna Anjaneya Agrotech (1 June 2026) (Karnataka High Court)
In this case, the Karnataka High Court looked into whether a trademark infringement and passing off suit was at all maintainable, and in particular, it dealt with the competing marks “MRN GOLD” and “MR GOLD”. The Bench said, that if a party moves an application for rejection of the plaint under Order VII Rule 11 CPC, then the decision has to be made only on what is stated in the plaint itself. In other words, things like limitation, territorial jurisdiction, whether the similarity is genuinely deceptive, and even if there was some suppression of material facts, these are normally not decided in that stage, but should be gone into during trial.
Som Distilleries and Breweries Ltd. v. United Breweries Ltd. (9 June 2026) (Karnataka High Court)
The Karnataka High Court basically said that in a trademark infringement case, the first load is on the plaintiff to show the alleged infringement, and only then the defendant is called upon to step in with its defences. The Court set aside the trial court’s refusal to reframe the issues, and it noted that the defendant’s claim about an industry practice could not be treated as some sort of admission that wipes out the plaintiff’s duty to prove infringement.
H. Rajagopalan v. K. Hariharan, (5 June 2026) Madras High Court
The Madras High Court effectively overturned a decree that had dismissed a trademark infringement suit , mainly because the trial court moved ahead even while a rectification application was pending. In other words, the Court said Section 124 of the Trade Marks Act 1999 is not something courts can treat like optional, it is mandatory. So, the proceedings should have been stopped while the rectification issues were decided, and then the case was sent back, remanded to the trial court, for it to deal with the matter afresh after those proceedings conclude.
Astral Ltd vs M/S Astral Marketing Syndicate & Anr on 15 June, 2026 (Delhi High Court)
Astral Ltd sued Astral Marketing Syndicate for infringement and passing off of the ASTRAL mark. Defendant No. 1 sought rejection of the plaint under Order VII Rule 11 CPC, claiming the Court lacked territorial jurisdiction as both parties operate from Ahmedabad. Dismissing the application, the Delhi High Court held that the defendant’s Justdial listing, accessible to Delhi customers who could browse the catalogue and place orders, prima facie raised part of the cause of action in Delhi. The plaintiff’s subordinate office in Delhi further grounded jurisdiction under Section 134 of the Trade Marks Act read with Section 20 CPC.
DRS Logistics filed a contempt application alleging Google breached earlier injunction orders by letting third parties use its marks, including AGGARWAL PACKERS AND MOVERS, as keywords and in the Ad-Text, Ad-Title and URLs of sponsored links. The Delhi High Court dismissed the application. It held that the operative directions in the earlier judgments were confined to investigating complaints about keyword use, and imposed no obligation on Google to proactively block the marks from Ad-Text or URLs absent a complaint. Since two interpretations were possible and the conduct was not willful, the Court found no contempt.
Saathi Inc challenged an order of the Controller of Patents under Section 117A of the Patents Act, which had allowed a post-grant opposition under Section 25(2) and revoked its patent for an absorbent article made with natural fibres. The Bombay High Court set aside the order. It held that the Controller passed an unreasoned order that merely reproduced the opponent’s submissions and gave no reasons for departing from the Opposition Board’s recommendation to reject the opposition under Rule 62(5). The Court also faulted the failure to file an evidence affidavit under Section 79 and the unaddressed objection to the opponent’s locus as a person interested under Section 2(1)(t).
Black Diamond Motors appealed under Section 91 of the Trade Marks Act against the Registrar’s order letting the rectification applicant file an evidence affidavit under Rule 45 of the 2017 Rules more than three years late. The question was whether the two-month deadline in Rule 45 is mandatory or directory. The Bombay High Court held it is directory and dismissed the appeal. Reading Rule 45 within the wider scheme of Rules 46 to 48, which lets the Registrar admit further evidence, it held the deadline could be extended under Section 131 even after expiry. The Court disagreed with the Delhi High Court rulings in Sun Pharma and Mahesh Gupta, which had treated the deadline as mandatory.
Laboratoires Griffon sought an interim injunction restraining Psychotropics India from using PIL-LINCTUS, claiming it infringed its registered cough syrup mark GRILINCTUS. The Bombay High Court allowed the application. It held the rival marks are phonetically, visually and structurally similar, with the suffix LINCTUS dominating and eclipsing the prefixes GRI and PIL, and the hyphen too slight to avoid confusion. Applying the stricter test for medicinal marks from Cadila Healthcare, it found a real risk of confusion. The Court also held that the defendant, having itself applied to register PIL-LINCTUS, could not now call LINCTUS descriptive or common to the trade.
Raman Kwatra vs The Registrar Of Trade Marks on 15 June, 2026 (Bombay High Court)
Raman Kwatra petitioned under Section 125 of the Trade Marks Act to remove the KEI marks from the list of well-known trade marks, which the Mumbai Trade Marks Registry had declared well-known. The proprietor already had an infringement suit against Kwatra pending in the Delhi High Court over the same marks. The Bombay High Court held it had jurisdiction, since a well-known mark carries the trappings of registration and the Mumbai Registry made the entry, so Section 57 read with Section 125 applied rather than only Rule 124 or an appeal under Section 91. It still declined to exercise that jurisdiction on forum conveniens grounds, finding the overlap with the Delhi suit risked conflicting decisions, and gave the petitioner liberty to approach the Delhi High Court.
Abbott sought rectification under Section 57 of the Trade Marks Act to remove DUPHACHRIT, registered by Menschlich Healthcare in Class 5, from the Register. Abbott owns the DUPHA family of marks led by DUPHASTON and DUPHALAC, with DUPHAR registered since 1951 and DUPHA coined as an acronym for Dutch Pharmaceuticals. The Bombay High Court allowed the petition and ordered removal. Applying the stricter Cadila standard for pharmaceutical marks, it held DUPHACHRIT deceptively similar to the DUPHA family, especially DUPHASTON, since both cover the same active ingredient dydrogesterone and DUPHA is the real source identifier, making the suffix CHRIT immaterial. It found the adoption dishonest, rejected the common-to-the-trade defence for lack of evidence of actual third-party use, and held delay irrelevant under Section 57.
Other IP Developments
- OpenAI, Microsoft Sued by Publishers for Scraping Articles
- The Copyright Office Of India’s Updated Form XIV Requirements And The ‘Substantial Human Creative Direction’ Test
Thanks to Ansa, Nilisa, and Shruti for the case summaries.
