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Author: SAROJ

  • What is GSTR 9? Filing Process, Turnover Limit and Late Fees Explained

    Introduction

    Form GSTR-9 is the annual return under GST law that must be filed by registered taxpayers who operate as regular taxpayers, including SEZ units and SEZ developers. It consolidates the details of outward and inward supplies, input tax credit, tax paid, and other related activities for a financial year. This return acts as a reconciliation tool and helps the tax authorities assess compliance.

    Understanding what is GSTR 9, who is required to file GSTR 9, what is the due date for GSTR 9, and how to file the GSTR 9 annual return is essential for timely and accurate compliance. The GSTR 9 turnover limit determines mandatory filing based on business size, while missing the deadline may attract penalties under the GSTR 9 late fees provisions. The late fee for GSTR 9 is calculated daily, with maximum limits specified by law.

    This article provides a complete overview of the GSTR 9 filing process, including eligibility, due dates, turnover limits, step-by-step filing instructions, and penalty structures to help taxpayers file correctly and avoid non-compliance.

    What is GSTR 9?

    Form GSTR-9 is the annual return prescribed under the GST law that must be filed by registered taxpayers who operate as regular taxpayers, including Special Economic Zone (SEZ) units and SEZ developers. Form GSTR-9 is an annual return to be filed once for each financial year by the registered taxpayers who were regular taxpayers, including SEZ units and SEZ developers.

    This comprehensive document requires taxpayers to furnish consolidated details of all their transactions, including purchases, sales, input tax credit claimed, refunds received, and demands created during the respective financial year. The annual return serves multiple purposes within the GST framework. It acts as a reconciliation tool between the data reported in monthly returns (GSTR-1 and GSTR-3B) and the actual business transactions conducted during the year. Additionally, it provides tax authorities with comprehensive information to assess the taxpayer’s compliance status and identify any discrepancies that may require further scrutiny.

    Who is Required to File GSTR 9?

    The filing obligation for GSTR-9 extends to specific categories of registered taxpayers under the GST regime. Form GSTR-9 is to be filed by a person who is registered as a normal taxpayer, including SEZ unit or SEZ developer, and the taxpayers who have withdrawn from the composition scheme to normal taxpayer any time during the financial year.

    Mandatory Filing Categories

    The following categories of taxpayers are mandatorily required to file GSTR-9:

    1. Regular Taxpayers: All persons registered as normal taxpayers under GST must file GSTR-9, subject to turnover thresholds specified by the government.
    2. SEZ Units and Developers: Special Economic Zone units and developers operating under regular taxpayer status are mandated to file annual returns regardless of their turnover.
    3. Composition Scheme Withdrawals: Taxpayers who opted out of the composition scheme during the financial year must file GSTR-9 for the period they operated as regular taxpayers.
    4. Cancelled Registration Cases: Yes, the annual return needs to be filed even if the taxpayer has had their registration cancelled during the said financial year.

    Exempted Categories

    While the GST law mandates GSTR-9 filing for regular taxpayers, the government has provided relief to certain categories through notifications. Small taxpayers with aggregate turnover up to specified limits may be exempted from this requirement to reduce the compliance burden.

    GSTR 9 Turnover Limit

    The concept of the GSTR-9 turnover limit filing has evolved significantly since the implementation of GST. The government has established specific thresholds to balance compliance requirements with ease of doing business for smaller enterprises.

    Current Turnover Thresholds for GSTR 9

    The following table outlines the current turnover limits for GSTR-9 filing:

    Financial YearTurnover ThresholdFiling RequirementStatus
    2019-20Above Rs. 2 croresMandatoryOptional for turnover up to Rs. 2 crores
    2020-21Above Rs. 2 croresMandatoryOptional for turnover up to Rs. 2 crores
    2021-22 onwardsAbove Rs. 2 croresMandatoryOptional for turnover up to Rs. 2 crores

    Special Cases for Turnover Limits

    1. SEZ Units and Developers: All SEZ units and developers must file GSTR-9 regardless of their turnover level.
    2. E-commerce Operators: Electronic commerce operators are required to file GSTR-9 irrespective of their turnover.
    3. Input Service Distributors: ISD entities must file annual returns without any turnover threshold exemption.

    What is the Due Date for GSTR 9?

    The statutory due date for filing GSTR-9 is clearly defined under the GST regulations. The due date for filing Form GSTR-9 for a particular financial year is 31st December of the subsequent financial year or as extended by the Government through notification from time to time.

    Due Date Schedule

    The following table provides the due date schedule for the last five financial years:

    Financial YearOriginal Due DateExtended Due Date (if applicable)
    2020-21December 31, 2021Extended multiple times
    2021-22December 31, 2022Extended multiple times
    2022-23December 31, 2023Extended multiple times
    2023-24December 31, 2024Filed as per schedule
    2024-25December 31, 2025To be notified

    Extension Provisions

    Yes, the date of filing of Form GSTR-9 can be extended by the Government through a notification. The government has historically extended due dates to provide taxpayers with additional time to ensure accurate compliance, particularly during the initial years of GST implementation and during exceptional circumstances such as the COVID-19 pandemic.

    GSTR 9 Filing Process

    Step 1: Portal Access and Login Navigate to the official GST portal (www.gst.gov.in) and log in using valid credentials. Navigate to Services > Returns > Annual Return to file Form GSTR-9.

    Step 2: Selection of Financial Year. Select the appropriate financial year for which the annual return is being filed.

    Step 3: Auto-Population of Data The system automatically populates certain fields from previously filed monthly returns. Tables below in Form GSTR-9 have auto-populated data from already filed Form GSTR-1 and Form GSTR-3B of the relevant financial year:

    • Table 4: Supply details from GSTR-1 and GSTR-3B
    • Table 5: Non-taxable supply details
    • Table 6A: ITC details from GSTR-3B
    • Table 9: Tax payment details

    Step 4: Manual Data Entry and Verification. Taxpayers must manually enter information in tables not auto-populated by the system:

    • Verify auto-populated data for accuracy
    • Enter additional details in the relevant tables
    • Ensure HSN-wise summaries are complete
    • Add any missing transaction details

    Step 5: Data Reconciliation and Corrections. Compare auto-populated data with actual business records and make necessary corrections where permissible. Note that certain fields cannot be edited after auto-population.

    Step 6: Computation of Liabilities After the COMPUTE LIABILITIES button is clicked, details provided in various tables are processed on the GST Portal at the back end, and Late fee liabilities, if any, are computed.

    Step 7: Payment of Outstanding Dues. Clear any outstanding tax liabilities or late fees before proceeding with the filing. Additional liability not reported earlier can be declared and paid through Form GST DRC-03.

    Step 8: Preview and Final Verification Review the return using the preview function available in both PDF and Excel formats. Verify all entries for accuracy and completeness.

    Step 9: Filing and Digital Authentication Submit the return using Digital Signature Certificate (DSC) or Electronic Verification Code (EVC) after completing the declaration.

    Alternative Filing Methods

    Yes, Form GSTR-9 return can be filed through the offline tool. This option provides flexibility for taxpayers who prefer to prepare their returns offline before uploading to the portal.

    How to File GSTR 9 Annual Return

    The step-by-step GSTR-9 filing process, annual return, involves specific technical procedures that must be followed precisely:

    Technical Filing Procedure

    Login and Navigation:

    1. Access the GST Portal using registered credentials
    2. Navigate to Services > Returns > Annual Return
    3. Select Form GSTR-9 for the relevant financial year

    Data Preparation:

    1. Download system-computed values for reference
    2. Download GSTR-1 and GSTR-3B summaries in PDF format
    3. Download Table 8A document details in Excel format for reconciliation

    Form Completion:

    1. Review auto-populated data from monthly returns
    2. Complete manual entry fields with accurate information
    3. Ensure HSN codes are properly classified (minimum 2-digit codes required)
    4. Verify all monetary values and calculations

    Liability Computation:

    1. Click ‘COMPUTE LIABILITIES’ to process the entered data
    2. Review calculated late fees and additional tax liabilities
    3. Ensure sufficient balance in the Electronic Cash Ledger

    Payment and Filing:

    1. Pay any outstanding liabilities through the Electronic Cash Ledger
    2. Create a challan for additional cash requirements if needed
    3. Preview the draft return in PDF/Excel format
    4. Complete the declaration and select an authorized signatory
    5. File the return using DSC or EVC

    GSTR 9 Late Fees

    Late filing of GSTR-9 attracts specific penalties and fees as prescribed under the GST law. Understanding these provisions is essential for maintaining compliance and avoiding unnecessary financial burden.

    Late Fee Structure for GSTR 9

    Yes, there is a late fee for GSTR-9 beyond the due date. The late fee calculation follows a specific methodology:

    ComponentRateMaximum Limit
    CGST Late FeeRs. 100 per day0.25% of turnover in the state
    SGST Late FeeRs. 100 per day0.25% of turnover in the state
    Total Daily Late FeeRs. 200 per day0.5% of aggregate turnover

    Special Relief Measures for Late Fee for GSTR 9

    The government has provided significant relief for pending GSTR-9 returns:

    • Concessional Late Fee: Taxpayers who file pending GSTR-9 for Financial Years 2017-18, 2018-19, 2019-20, 2020-21, and 2021-22 shall pay a maximum late fee of Rs. 20,000.
    • NIL Return Late Fee: For taxpayers filing NIL returns where no business activity occurred, reduced late fees apply.

    Penalty Implications Beyond Late Fees

    No. You can’t file Form GSTR-9 without payment of the late fee for Form GSTR-9 if the same is filed after the due date. Beyond late fees, non-compliance with GSTR-9 filing requirements may attract additional penalties under Section 125 of the CGST Act, which can range up to Rs. 25,000 and may be imposed by both Central and State GST authorities.

    Conclusion

    Filing the annual GST return is a crucial compliance responsibility for all regular taxpayers under the GST regime. Understanding what is GSTR 9 and who is required to file GSTR 9 ensures that taxpayers meet their obligations without confusion. Awareness of the due date for GSTR 9 is equally important to avoid penalties and maintain a clean compliance record.

    The GSTR 9 filing process involves data reconciliation, verification, and submission through the GST portal or offline tools. Knowing how to file the GSTR 9 annual return step-by-step helps taxpayers complete the process smoothly.

    The GSTR 9 turnover limit determines whether filing is mandatory based on annual turnover, while timely action helps avoid the burden of GSTR 9 late fees. For those missing the deadline, the late fee for GSTR 9 can add up significantly and even attract further penalties if non-compliance continues.

    Taxpayers are encouraged to review their records, reconcile their data, and file their annual return well before the deadline to ensure full compliance under GST law.

    Bibliography

    Author: Suhani Sharma

  • CAN I SELL MY TRADEMARK? – TRADEMARK ASSIGNMENT

    INTRODUCTION

    A brand’s identity, reputation, and consumer trust are all represented by its trademarks, which are essential assets. Transferring ownership of these trademarks may become necessary if companies expand, merge, reorganize, or change their business plans. The legal transfer of a trademark’s rights from one party (the assignor) to another (the assignee) is called trademark assignment. Trademark assignments guarantee consistency and clarity in brand ownership and usage, whether for business benefit, reorganization, or strategic shift. The goal, forms, legal prerequisites, and steps associated with trademark assignment under Indian law are described in this paper.

    Trademark assignment is critical for maintaining legal clarity and brand integrity during transitions like mergers, acquisitions, or business restructuring. From creating assignment agreements to managing registration procedures, TMWala can help companies at every stage to guarantee a seamless and law-abiding transfer of trademark rights.

    WHAT IS A TRADEMARK ASSIGNMENT?

    The following section explains in detail what a trademark assignment entails, who it applies to, and how it functions under Indian trademark law.

    Trademark assignment is a process through which trademarks can be transferred from one person (known as the assignor) to another person (known as the assignee).  This transfer includes the transfer of rights, either all of them or only specific rights related to the trademark. In such a transfer, any kind of trademark can be transferred, either registered or unregistered.

    Trademarks are unique identities of businesses. Trademarks are closely tied to the reputation and goodwill of the brand. When a consumer sees a trademark of a known brand then they assume to receive a certain level of quality or a certain kind of service from that brand, even if they are not aware of who has made the product. Trust is the key element here as it provides trademarks with the commercial power in the market. This reputation and trust are directly tied to the effectiveness of a well-executed trademark assignment.

    PURPOSE AND FUNCTIONS OF A TRADEMARK

    A trademark serves two interlinked functions:

    • Originality: A trademark indicates that the product is original and made by a specific brand, even if the consumer does not know who manufactured the product.
    • Uniqueness: In a very competitive market, it helps in distinguishing one brand from others based on the uniqueness of its trademark.

    WHY ASSIGN A TRADEMARK?

    A trademark assignment can be useful for businesses in many cases:

    • Mergers and acquisitions: When one company takes over or merges with another company and all the assets also get transferred, including Trademarks as part of the deal.
    • Business restructuring: In this case shift or ownership takes place, including ownership of trademarks.
    • Monetization: Companies sometimes also sell or license their trademark for financial gain.
    • Change in business model: Sometimes, businesses might stop producing a product, then they sell the brand to another business and get a financial benefit from that.

    TMWala offers professional legal assistance in all of these situations, assisting companies in assessing, recording, and carrying out trademark assignments to optimize value and comply with Indian trademark law.

    Who Can Assign a Trademark?

    Only the individual or organization identified as the trademark’s registered owner may assign it, per Section 37 of the Trademarks Act, 1999. This comprises:

    • Sole Proprietor
    • Company
    • Legal heirs (in case of inheritance)
    • Legal representatives (in case of company restructuring)

    Sections 38 and 39 of the Act allow for the assignment of both registered and unregistered trademarks, with or without goodwill.

    TYPES OF TRADEMARK ASSIGNMENT

    There are a few categories of trademark assignments based on the nature and extent of the rights transferred:

    a. Complete Assignment

    When all the rights associated with the trademark are transferred from the assignor to the assignee. The assignee gets complete control over the trademark.

    Example: if a company A sells its brand “XYZ” to company B, including all its rights on the trademark. Now, Company A holds no right to the brand XYZ.

    b. Partial Assignment

    In a partial assignment, only certain rights or rights related to certain goods and services are transferred.

    Example: The assignor deals with goods that fall under class 30. He assigned rights related to chocolates to a chocolate production company, but other than that, he holds all rights on the other products which fall under class 30, for example, coffee, tea, sugar, etc.

    c. Assignment with Goodwill

    In this kind of assignment, the goodwill attached to the assignment also gets transferred to the new owner. The assignor can use the trademark for the same goods and services and get benefits from the trust already established with the consumers.

    Example: The brand “Pure”, well-known in the market for dairy products, is now being used by the new owner for dairy products along with its reputation in the market.

    d. Assignment without Goodwill (Gross Assignment)

    In this case, the trademark is transferred but with one condition that the assignee can not use it for similar goods/services. This prevents the assignee from misleading the customers.

    Example: “Pure”, used for dairy products, is sold to a restaurant chain. The chain can use the mark for restaurant services, but not for dairy products.

    LEGAL RESTRICTIONS AND CONSUMER PROTECTION

    In Indian law, some restrictions have been put on trademark assignment. This is done mainly to avoid confusion and stop consumers from being misled by the brands:

    • At a particular time, only one brand can have exclusive rights over the trademark related to the goods or services.
    • Having multiple businesses under one single trademark, dealing with a particular type of goods and services in different regions, is not allowed.

    These limitations are intended to prevent unaffiliated parties from using identical or similar trademarks in the marketplace, confusing or misleading consumers.

    STEPS FOR REGISTRATION:

    1. Apply for registration of the assignment with the Trademark Registrar.
    2. Submit supporting documents such as a deed of assignment, a power of attorney, identity proofs, and other relevant documents.
    3. The Registrar examines the request and may seek clarification or additional documents.
    4. If everything is in order, the Registrar will enter the following details in the trademark register:
      • Name and address of assignee
      • Date of assignment
      • Description of rights assigned
      • Basis of assignment
      • Date of entry in the register
    5. The application should be disposed of within 3 months from the date of filing.

    By preparing and submitting the required paperwork, communicating with the Trademark Registrar, and making sure the assignment is accurately documented to safeguard your rights and investments, TMWala provides end-to-end assistance with the registration process.

    Legal Formalities

    Execution of Assignment Agreement

    A written assignment that is signed by all parties is required. It ought to make explicit reference to:

    • Name and address of the assignor and assignee
    • Details of the trademark(s) being assigned
    • Whether the assignment includes goodwill
    • Territory and class of goods/services covered
    • Date of effect and payment terms

    Registration with the Trademark Registry

    While not mandatory for validity, registration of the assignment is highly recommended to:

    • Provide legal recognition
    • Allow the assignee to enforce trademark rights
    • Serve as public notice of ownership

    CONCLUSION

    A key legal procedure that enables companies to assign a trademark’s ownership and rights to another party is trademark assignment. In business dealings like mergers, acquisitions, restructuring, or brand monetization, it is crucial. Brand integrity and consumer interests are protected by precisely outlining the extent of rights surrendered, whether fully or partially, with or without goodwill trademark assignment. Following the law and registering the assignment guarantees openness, enforceability, and public knowledge of ownership, protecting companies and customers in the cutthroat market.

    Hiring professionals like TMWala guarantees that the procedure is not only effective and strategically sound but also complies with the law. Following the law and registering the assignment guarantees openness, enforceability, and public knowledge of ownership, protecting companies and customers in the cutthroat market.

  • PATENT APPLICATION SURGE IN INDIA

    Introduction

    India’s intellectual property landscape has undergone unprecedented changes in recent years, characterized by a significant increase in patent applications reflecting the evolving innovation ecosystem in the country. This phenomenon represents not only a statistical increase but also a fundamental change in India’s approach to intellectual property protection and technological progress.

    Understanding Patents

    A patent is a legal document that gives an inventor exclusive rights to their invention for a limited time, usually 20 years from the filing date. As per the Patent Act, 1970, as amended in 2005, a patent is defined as

    Patent Act 1970 (India), as amended by the Patents (Amendment) Act 2005

     “a grant by the Government to an inventor, giving him the exclusive right to prevent others from making, using, offering for sale, selling or importing the patented product or process for making that product for those purposes without his consent.”

    A patent is based on three key principles: novelty, inventive step (non-obviousness), and industrial applicability. This ensures only real inventions get patented and keeps the balance between rewarding inventors and the public domain.

    Importance of Patents in the Contemporary Economic Paradigm

    Patents serve as catalysts for innovation and economic development through multiple mechanisms. They provide inventors with commercial incentives by ensuring exclusivity over their creations, thereby encouraging investment in research and development activities. Furthermore, patents facilitated the dissemination of knowledge through mandatory disclosure requirements, contributing to the cumulative nature of technological progress.

    In the context of a developing economy like India, patents assume additional significance as indicators of technological capability and competitive advantage in global markets. They attract foreign direct investment, foster technology transfer, and enhance the country’s position in international trade negotiations.

    The Patent Application Surge: A Paradigm Shift

    Statistical Overview and Growth Trajectory

    India’s patent application landscape has experienced exponential growth, with the country securing its position among the top ten patent filing offices globally according to the World Intellectual Property Organization (WIPO) 2024 report. The surge or the increase is characterised by several remarkable statistics:

    Key Growth Indicators:
    India’s patent landscape shows remarkable growth across multiple metrics:
    Patent applications reached 64,480 in 2023 according to WIPO data, representing a 15.7% increase from the previous year.
    Total patent filings including all categories exceeded 90,000 applications when combining patent applications with other IP filings.In 2023, around 177 patent applications were filed every day on average.In 2023, India granted over 75,000 patents, the highest annually figure in its history.
    Patent grants doubled from FY2019 to FY2023, with projections exceeding 100,000 grants for FY2024.
    India ranked sixth internationally in patent applications, indicating a continuing growth trend.

    Domestic vs International Filings

    A particularly significant development is the shift in the composition of patent applications. The trend culminated in 2023 when resident patent applications (35,580) decisively outnumbered non-resident applications (28,900), marking a historic turning point in India’s patent filing pattern. This represents a remarkable 213% increase in resident filings from 2019 levels (11,370), demonstrating nearly threefold growth over a span four years. This milestone reflects the maturation of India’s domestic innovation ecosystem and the growing confidence of Indian inventors in intellectual property protection.

    Sectoral Analysis of Patent Growth

    The patent surge spans multiple technological domains, with certain sectors demonstrating exceptional growth:

    Information Technology and Software: The technology sector continues to dominate patent filings, driven by India’s strong software development capabilities and emerging technologies such as artificial intelligence, blockchain, and cybersecurity solutions.

    Biotechnology and Pharmaceuticals: India’s pharmaceutical sector has shown remarkable patent activity, particularly in generic drug formulations, biotechnology applications, and medical devices.

    Clean Technology and Renewable Energy: Environmental concerns and government initiatives have spurred innovation in solar energy, wind power, and sustainable technologies.

    Manufacturing and Engineering: Traditional manufacturing sectors have embraced innovation, leading to patents in automotive components, textile technologies, and industrial processes.

    Telecommunications: The advent of 5G technology and digital infrastructure development has generated significant patent activity in telecommunications and related fields.

    Startup Innovation and Patent Activity

    The startup ecosystem has emerged as a major driver of patent growth, with applications from startups increasing by more than 150% in the last five years. This trend reflects the entrepreneurial spirit and technological innovation prevalent in India’s startup community, supported by government initiatives such as the Startup India program and various incubation schemes.

    Timeline of Patent Surge in India (2015-2024)

    Phase I: Foundation Building (2015-2018)

    • Implementation of digital filing systems
    • Establishment of additional patent offices
    • Introduction of expedited examination procedures
    • Modest growth in patent applications (annual growth rate: 8-12%)

    Phase II: Acceleration (2019-2021)

    • COVID-19 pandemic spurred healthcare innovation
    • Increased government focus on Atmanirbhar Bharat (Self-Reliant India)
    • Enhanced patent prosecution efficiency
    • Growth rate accelerated to 15-18% annually

    Phase III: Exponential Growth (2022-2024)

    • Domestic applications surpassed foreign applications
    • Significant reduction in patent processing time
    • Integration of artificial intelligence in patent examination
    • Annual growth rates exceeding 17%

    Impact Assessment and Implications

    Economic Impact

    The patent surge has generated substantial economic benefits through multiple channels:

    1. Foreign Direct Investment (FDI): Enhanced patent protection has increased investor confidence, contributing to higher FDI inflows in technology-intensive sectors.
    2. Export Competitiveness: Patent-protected innovations have improved the competitiveness of Indian products in international markets, particularly in pharmaceuticals and information technology.

    Employment Generation: Innovation-driven sectors have created high-skilled employment opportunities, contributing to economic development.

    Technological Advancement

    The patent surge reflects India’s growing technological capabilities and research output. The quality of patents has improved significantly, with many Indian inventions finding applications in global markets.

    Challenges and Concerns

    Despite the positive trends, several challenges persist:

    1. Patent Backlog: The rapid increase in applications has created a backlog of pending applications, with approximately 267,543 applications pending as of 2024.
    2. Quality vs Quantity Debate: Some experts question whether the focus should be on patent quality rather than mere quantity.
    3. International Comparisons: While India has made significant progress, the per capita patent filing rate remains lower than developed countries.

    Future Outlook and Recommendations

    Short-term Projections (2024-2026)

    The patent application trend is expected to maintain its upward trajectory, with annual growth rates projected between 15-20%. The government’s continued focus on innovation and intellectual property protection will likely sustain this momentum.

    Policy Recommendations

    1. Infrastructure Enhancement: Expanding patent office capacity and implementing advanced examination technologies to address the growing backlog.
    2. Quality Improvement: Implementing stricter examination standards to ensure patent quality while maintaining reasonable processing times.
    3. International Cooperation: Strengthening patent cooperation treaties and mutual recognition agreements to facilitate global patent protection for Indian inventors.
    4. Education and Awareness: Enhancing intellectual property education and awareness programs to encourage more inventors to seek patent protection.

    Conclusion

    The significant increase in patent applications in India marks an important milestone in the country’s innovation trajectory. This phenomenon reflects the maturation of India’s research and development ecosystem, the entrepreneurial spirit of its inventors, and the effectiveness of policy interventions aimed at promoting intellectual property protection.

    While challenges remain, particularly in terms of processing efficiency and quality assurance, the overall trajectory indicates India’s emergence as a significant player in the global innovation landscape. The transition from a predominantly patent-importing nation to one where domestic applications outnumber foreign filings marks a fundamental shift in India’s technological capabilities.

    The sustained growth in patent applications, coupled with improvements in examination processes and international recognition, positions India favourably for continued innovation-led economic development. However, maintaining this momentum will require continued policy support, infrastructure investment, and a sustained commitment to fostering a culture of innovation and intellectual property protection.

    The patent surge is not merely a statistical achievement but a testament to India’s potential as a global innovation hub. As the country continues to strengthen its intellectual property ecosystem, the foundation is being laid for sustained technological advancement and economic prosperity in the knowledge economy of the twenty-first century.

    Bibliography

    AUHTOR- SUHANI SHARMA

    FOURTH YEAR, BBA LLB, ARMY LAW COLLEGE, PUNE

  • Delhi High Court Protects Amul’s Trademark: Pharma Firm Barred from Using “AMUL” Brand

    Case 10: Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr.

    Citation: 2024 LiveLaw (Del) 1035
    Court: Delhi High Court
    Date Decided: 10 September 2024
    Judge: Justice Mini Pushkarna

    Background

    Kaira District Cooperative Milk Producers Union Ltd., widely known as Amul, is a prominent dairy cooperative in India, recognized for its extensive range of dairy products. Amul holds registered trademarks for the brand name “AMUL,” which has become synonymous with quality dairy products across the country.

    Bio Logic and Psychotropics India Pvt. Ltd., a pharmaceutical company, began marketing an antipsychotic medication under the brand name “AMUL.” These products were sold through various e-commerce platforms. Upon discovering this usage, Amul issued a cease and desist notice to the defendants. In response, the defendants claimed to have invented the trademark in 2013 and filed a trademark application for “AMUL” eight days after receiving the legal notice.

    Amul filed a suit seeking a permanent injunction to restrain the defendants from using the “AMUL” mark or any other mark deceptively similar to it, alleging trademark infringement and passing off.

    Legal Issues

    1. Whether the defendants’ use of the “AMUL” mark for pharmaceutical products constitutes infringement of Amul’s registered trademark under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off, leading to confusion among consumers and dilution of Amul’s brand identity.
    3. Whether Amul is entitled to a permanent injunction and damages for the unauthorized use of its well-known trademark.

    Parties’ Contentions

    Plaintiff (Amul):

    • Asserted that “AMUL” is a well-known trademark with significant goodwill and reputation in the market.
    • Claimed that the defendants’ use of the identical mark for pharmaceutical products is likely to cause confusion among consumers and tarnish the brand’s image.
    • Argued that the defendants acted in bad faith by adopting the “AMUL” mark without any plausible justification.

    Defendants (Bio Logic and Psychotropics India Pvt. Ltd.):

    • Contended that they had invented the “AMUL” trademark in 2013 and had been using it for their pharmaceutical products since then.
    • Filed a trademark application for “AMUL” shortly after receiving the legal notice from Amul.
    • Did not file a written statement or provide substantial evidence to support their claims.

    Decision

    The Delhi High Court granted a permanent injunction in favor of Amul, restraining the defendants from using the “AMUL” mark or any other mark deceptively similar to it for their pharmaceutical products. The court observed that the defendants had no plausible justification for adopting the “AMUL” mark and acted with mala fide intent to ride upon Amul’s immense reputation and goodwill. The court also imposed costs and damages totaling ₹5 lakhs against the defendants for infringing Amul’s well-known trademark. Additionally, the court directed the defendants to destroy the infringing goods that had been confiscated by the Local Commissioner and returned to them, in the presence of Amul’s representatives.

    Ratio Decidendi

    • The unauthorized use of a well-known trademark, even in a different class of goods, constitutes infringement under Section 29(4) of the Trade Marks Act, 1999, if it takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
    • Adoption of an identical or deceptively similar mark without a plausible justification indicates mala fide intent and is actionable under trademark law.
    • In cases of infringement of well-known trademarks, courts may grant permanent injunctions and award damages to protect the brand’s reputation and prevent consumer confusion.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 29(6), 29(8), 29(9), 134
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr., 2024 LiveLaw (Del) 1035

    • ‘Delhi High Court restrains Bio Logic and Psychotropics India Pvt Ltd from using mark similar to “AMUL”‘ (SCC Online, 21 September 2024) https://www.scconline.com/blog/post/2024/09/21/dhc-restrains-bio-logic-and-psychotropics-india-pvt-ltd-from-using-mark-similar-to-amul/
    • ‘Delhi High Court Restrains Businesses From Using Amul’s Trademark On Their Pharmaceutical Products, Directs Payment Of ₹5 Lakhs In Damages & Costs’ (LiveLaw, 19 September 2024) https://www.livelaw.in/high-court/delhi-high-court/amul-trademark-infringement-pharmaceutical-tablets-costs-damages-270042
    • ‘Court Stops Trademark Infringement of “AMUL”‘ (BananaIP, 21 September 2024) https://bananaip.com/pharma-companys-buttery-slip-court-stops-trademark-infringement-of-amul/

    Author: Suhani Sharma

  • Emami vs. Hindustan Unilever: Calcutta HC Rules in Favor of ‘Fair and Handsome’ in Trademark Battle

    Case 9: Emami Limited v. Hindustan Unilever Limited

    Citation: 2024 SCC OnLine Cal 3579
    Court: Calcutta High Court
    Date Decided: 9 April 2024
    Judge: Justice Ravi Krishan Kapur

    Background

    Emami Limited, a prominent Indian FMCG company, launched its men’s skincare product “Fair and Handsome” in 2005. Over the years, Emami invested significantly in building the brand’s identity, emphasizing the term “Handsome” through extensive advertising campaigns and achieving a substantial market share in the men’s fairness cream segment.

    In 2020, Hindustan Unilever Limited (HUL) rebranded its men’s skincare product from “Fair & Lovely Men” to “Glow & Handsome.” Emami perceived this rebranding as an attempt to capitalize on the goodwill of its established brand and filed a suit against HUL, alleging trademark infringement and passing off.

    PLAINTIFF’S MARK

    DEFENDANT’S MARK

    Legal Issues

    1. Whether HUL’s use of the mark “Glow & Handsome” infringes upon Emami’s registered trademark “Fair and Handsome.”
    2. Whether HUL’s adoption of the mark constitutes passing off by creating confusion among consumers and leveraging Emami’s brand reputation.
    3. Whether Emami is entitled to an interim injunction restraining HUL from using the “Glow & Handsome” mark pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Emami Limited):

    • Asserted that “Fair and Handsome” is a well-established brand with significant goodwill and recognition in the market.
    • Claimed that HUL’s adoption of “Glow & Handsome” is deceptively similar and likely to cause confusion among consumers.
    • Argued that the term “Handsome” has acquired distinctiveness and a secondary meaning associated with Emami’s product due to extensive use and promotion.

    Defendant (Hindustan Unilever Limited):

    • Contended that “Handsome” is a descriptive term commonly used in the industry and lacks distinctiveness.
    • Argued that Emami had disclaimed exclusive rights over the term “Handsome” during trademark registration, limiting its ability to claim infringement.
    • Maintained that there is no likelihood of confusion between the two marks due to differences in packaging and marketing strategies.

    Decision

    The Calcutta High Court granted an interim injunction in favor of Emami, restraining HUL from using the “Glow & Handsome” mark for its men’s skincare products. The court observed that while Emami could not claim infringement due to the disclaimer over “Handsome,” it had established a prima facie case for passing off. The court noted that HUL’s adoption of a mark with a prominent and essential feature of Emami’s brand suggested an attempt to benefit from Emami’s goodwill, leading to potential consumer confusion. HUL was granted one month to comply with the order.

    Ratio Decidendi

    • Even if a term within a trademark is descriptive and disclaimed, extensive use and promotion can confer it with distinctiveness and secondary meaning, warranting protection against passing off.
    • Adoption of a mark that closely resembles a competitor’s established brand, especially with knowledge of its market presence, can constitute passing off due to the likelihood of consumer confusion and deception.
    • Interim injunctions can be granted in passing off cases where the plaintiff demonstrates a strong prima facie case, potential for irreparable harm, and a balance of convenience in its favor.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 30, 34, 35
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Author: Suhani Sharma

  • Delhi High Court Grants Ex-Parte Injunction to Moti Mahal

    Case 8: Moti Mahal Delux Management Services Pvt. Ltd. & Ors. v. SRMJ Business Promoters Pvt. Ltd. & Anr.

    Citation: CS(COMM) 1115/2024
    Court: Delhi High Court
    Date Decided: 12 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Moti Mahal Delux Management Services Pvt. Ltd. (“Moti Mahal”), a renowned restaurant chain with a legacy dating back to 1920, owns several registered trademarks, including “MOTI MAHAL,”“MOTI MAHAL GROUP,”“MOTI MAHAL MANAGEMENT SERVICES,” and “TANDOORI TRAIL.” These marks are associated with high-quality North Indian cuisine and have garnered significant goodwill both in India and internationally.

    SRMJ Business Promoters Pvt. Ltd. (“SRMJ”) was previously a franchisee of Moti Mahal under a Franchise Agreement dated 5 October 2013, which expired on 5 October 2022. Despite the termination of the agreement, SRMJ continued to operate its restaurant business using the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX,” prompting Moti Mahal to file a suit seeking a permanent injunction against SRMJ for trademark infringement, passing off, and unfair trade practices.

    Legal Issues

    1. Whether SRMJ’s continued use of the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX” after the termination of the franchise agreement constitutes trademark infringement under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off and unfair trade practices, causing confusion among consumers and diluting Moti Mahal’s brand identity.
    3. Whether Moti Mahal is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiffs (Moti Mahal Delux Management Services Pvt. Ltd. & Ors.):

    • Asserted that they are the rightful and exclusive owners of the registered trademarks in question, which have acquired immense goodwill over the years.
    • Claimed that SRMJ’s continued use of the marks post-termination is unauthorized and constitutes deliberate infringement and passing off.
    • Argued that SRMJ’s actions are likely to cause confusion among consumers and damage the reputation and distinctiveness of Moti Mahal’s trademarks.

    Defendants (SRMJ Business Promoters Pvt. Ltd. & Anr.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Moti Mahal, restraining SRMJ and its affiliates from:

    • Using the marks “MOTI MAHAL,”“MOTI MAHAL DELUX,”“MOTI MAHAL DELUX TANDOORI TRAIL,” or any other mark deceptively similar to Moti Mahal’s registered trademarks.
    • Operating any restaurant or catering business under the impugned marks.
    • Using any logos, signage, promotional materials, or digital content bearing the infringing marks.

    The court held that Moti Mahal had established a prima facie case for the grant of an injunction, with the balance of convenience in its favor, and that it would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The unauthorized use of a registered trademark by an ex-franchisee post-termination of the franchise agreement constitutes infringement under Sections 29(1) and 29(2)(c) of the Trade Marks Act, 1999.
    • Such use also amounts to passing off and unfair trade practices, leading to consumer confusion and dilution of the trademark’s distinctiveness.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(c), 29(4)
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Copyright Act, 1957: Sections 2(c), 17

    Bibliography

    Author: Suhani Sharma

  • Delhi High Court Grants Injunction to IKEA in Trademark Infringement Suit Against IKey

    Case 7: Inter IKEA Systems BV v. IKey Home Studio LLP & Anr.

    Citation: 2024 SCC OnLine Del 3147
    Court: Delhi High Court
    Date Decided: 18 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Inter IKEA Systems BV, the proprietor of the globally recognized “IKEA” trademark, discovered that an Indian entity, IKey Home Studio LLP, was operating under the name “IKEY” and had filed multiple trademark applications in India. IKEA contended that “IKEY” was deceptively similar to its own trademark and that the defendant’s use of the mark, along with a similar logo and tagline, was likely to cause confusion among consumers and dilute IKEA’s brand identity.

    IKEA filed a suit seeking a permanent injunction to restrain IKey from infringing its trademark, passing off, and engaging in unfair trade practices.

    Plaintiff’s MARK

    Legal Issues

    1. Whether IKey’s use of the mark “IKEY” infringes upon IKEA’s registered trademark under the Trade Marks Act, 1999.
    2. Whether IKey’s use of a similar logo and branding elements constitutes passing off and unfair trade practices.
    3. Whether IKEA is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Inter IKEA Systems BV):

    • Asserted that “IKEA” is a well-known trademark with significant goodwill and reputation worldwide, including in India.
    • Claimed that IKey’s use of “IKEY,” along with similar branding elements, is likely to cause confusion among consumers and amounts to trademark infringement and passing off.
    • Argued that the adoption of the “IKEY” mark by the defendant was a deliberate attempt to capitalize on IKEA’s established brand identity.

    Defendants (Sepkind Pharma Pvt. Ltd. & Ors.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Inter IKEA Systems BV, restraining IKey Home Studio LLP and others from:

    • Using the mark “IKEY,”“IKEY Home Studio,” or any other mark deceptively similar to “IKEA” in any manner, including on products, packaging, promotional materials, or online platforms.
    • Using a logo or branding elements that are deceptively similar to IKEA’s registered trademarks and associated branding elements.

    The court held that IKEA had established a prima facie case for the grant of an injunction and that the balance of convenience favored IKEA. It also noted that IKEA would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The use of a mark that is deceptively similar to a well-known registered trademark constitutes infringement under Sections 29(1) and 29(2)(b) of the Trade Marks Act, 1999.
    • The adoption of similar branding elements can lead to consumer confusion and amounts to passing off and unfair trade practices.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2

    Bibliography

    Author: Suhani Sharma

  • Mankind Pharma Stops Sepkind from Using Similar Trademark

    Case 6: Mankind Pharma Ltd. v. Sepkind Pharma Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3143
    Court: Delhi High Court
    Date Decided: 23 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Mankind Pharma Ltd. (“Mankind”), a leading pharmaceutical company in India, has been using the trademark “MANKIND” since 1986 and holds multiple registrations under the Trademarks Act, 1999. The mark “MANKIND” has been recognized as a well-known trademark by the Registrar of Trade Marks under Rule 124 of the Trade Marks Rules, 2017. Mankind has developed a family of trademarks incorporating the “KIND” suffix, such as “HEPAKIND,”“GLYKIND,” and “METROKIND,” establishing a strong brand identity in the pharmaceutical sector.

    In December 2024, Mankind discovered that Sepkind Pharma Pvt. Ltd. (“Sepkind”) was using the mark “SEPKIND,” which incorporated the “KIND” suffix, and a logo and tagline (“Save your Life”) that were deceptively similar to Mankind’s own logo and tagline (“Serving Life”). Mankind filed a suit seeking a permanent injunction against Sepkind to restrain them from infringing its trademark, passing off, and engaging in unfair trade practices.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether Sepkind’s use of the mark “SEPKIND” infringes upon Mankind’s registered trademark “MANKIND” under the Trade Marks Act, 1999.
    2. Whether Sepkind’s use of a similar logo and tagline constitutes passing off and unfair trade practices.
    3. Whether Mankind is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Mankind Pharma Ltd.):

    • Asserted that “MANKIND” is a well-known trademark with significant goodwill and reputation in the pharmaceutical industry.
    • Claimed that Sepkind’s use of “SEPKIND,” along with a similar logo and tagline, is likely to cause confusion among consumers and amounts to trademark infringement and passing off.
    • Argued that the adoption of the “KIND” suffix by Sepkind was a deliberate attempt to capitalize on Mankind’s established brand identity.

    Defendants (Sepkind Pharma Pvt. Ltd. & Ors.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Mankind Pharma Ltd., restraining Sepkind Pharma Pvt. Ltd. and others from:

    • Using the mark “SEPKIND” or any other mark deceptively similar to “MANKIND” in any manner, including on products, packaging, promotional materials, or online platforms.
    • Using a logo or tagline that is deceptively similar to Mankind’s registered trademarks and associated branding elements.

    The court held that Mankind had established a prima facie case for the grant of an injunction and that the balance of convenience favored Mankind. It also noted that Mankind would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The use of a mark that is deceptively similar to a well-known registered trademark constitutes infringement under Sections 29(1) and 29(2)(b) of the Trade Marks Act, 1999.
    • The adoption of similar branding elements, such as logos and taglines, can lead to consumer confusion and amounts to passing off and unfair trade practices.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)
    • Trade Marks Rules, 2017: Rule 124
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Indian Copyright Act, 1957

    Bibliography

    Author: Suhani Sharma

  • MP High Court Bans Reuse of STOK Beer Bottles Over Trademark Row

    Case 5: Mount Everest Breweries Ltd. v. MP Beer Products Ltd. & Ors.

    Citation: 2024 SCC OnLine MP 7367
    Court: Madhya Pradesh High Court
    Date Decided: 12 November 2024
    Bench: Justice Sanjeev Sachdeva and Justice Pranay Verma

    Background

    Beer bottles are at the center of a dispute in which Mount Everest Breweries Ltd. (MEBL), the manufacturer of the “STOK” beer brand, discovered that MP Beer Products Ltd. and other respondents were reusing its distinctive glass beer bottles embossed with the “STOK” trademark and a panda logo to market their beer products. MEBL contended that this practice infringed upon its trademark rights and misled consumers.

    In response, the Excise Commissioner of Madhya Pradesh issued an order on 7 November 2020, prohibiting all beer and liquor bottling units from reusing embossed bottles. The respondents challenged this order, arguing that it was unreasoned and violated their industrial practices. A single judge quashed the Commissioner’s order on 13 March 2024, directing a reconsideration. MEBL appealed this decision.

    Plaintiff’s MARK

    Legal Issues

    1. Whether reusing embossed bottles with another manufacturer’s trademark constitutes infringement under the Trade Marks Act, 1999.
    2. Whether the Excise Commissioner had the authority under the MP Foreign Liquor Rules to prohibit such reuse.
    3. Whether such reuse violates the MP Foreign Liquor Rules and misleads consumers.

    Parties’ Contentions

    Appellant (Mount Everest Breweries Ltd.):

    • Argued that the reuse of its embossed bottles by the respondents infringed its trademark rights and misled consumers.
    • Asserted that such practices violated the MP Foreign Liquor Rules, which require labels and brands to uniquely identify the manufacturer.

    Respondents (MP Beer Products Ltd. & Ors.):

    • Contended that reusing empty beer bottles is an industry norm and environmentally sustainable.
    • Claimed that they procured bottles legally from scrap dealers and affixed their own labels, preventing consumer confusion.
    • Argued that the Excise Commissioner’s order lacked legal basis and violated their right to trade under Article 19(1)(g) of the Constitution.

    Decision

    The Madhya Pradesh High Court upheld the Excise Commissioner’s order prohibiting the reuse of bottles with embossed trademarks, recognizing it as a measure to prevent trademark infringement and consumer deception. However, the court set aside the restriction on reusing bottles after removing or scratching off the embossed logos, leaving this issue open for determination in appropriate proceedings.

    Ratio Decidendi

    • Reusing bottles with another manufacturer’s embossed trademark constitutes trademark infringement and violates the MP Foreign Liquor Rules.
    • The Excise Commissioner is empowered to enforce rules preventing label misuse and brand confusion.
    • While environmental concerns are valid, they do not justify practices that infringe upon intellectual property rights.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(b)
    • MP Foreign Liquor Rules, 1996
    • MP Beer and Wine Rules, 2000
    • Constitution of India: Article 19(1)(g)

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Restrains ‘Baap Ki Adalat’ for Trademark Infringement

    Case 4: Independent News Service Pvt. Ltd. & Rajat Sharma v. Ravindra Kumar Choudhary & Ors.

    Citation: 2024 SCC OnLine Del 3142
    Court: Delhi High Court
    Date Decided: 30 May 2024
    Judge: Justice Anish Dayal

    Background

    Independent News Service Pvt. Ltd. (INS), the proprietor of the 24-hour Hindi news channel “India TV,” and its Chairman and Editor-in-Chief, Rajat Sharma, filed a suit against Ravindra Kumar Choudhary and others. The plaintiffs alleged that the defendants were using the mark/logo “Baap Ki Adalat,” which was deceptively similar to their registered trademark/logo “Aap Ki Adalat,” a well-known television program featuring interviews with prominent personalities. The defendants, particularly Choudhary, a self-proclaimed political satirist, were creating and publishing various video and audio content on social media platforms under the impugned mark.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the mark/logo “Baap Ki Adalat” infringed upon the plaintiffs’ registered trademark/logo “Aap Ki Adalat” under the Trade Marks Act, 1999.
    2. Whether the defendants’ actions constituted passing off, leading to confusion among the public.
    3. Whether the unauthorized use of Rajat Sharma’s name, photograph, and video violated his personality rights.

    Parties’ Contentions

    Plaintiffs (Independent News Service Pvt. Ltd. & Rajat Sharma):

    • Asserted that “Aap Ki Adalat” is a registered trademark and a widely recognized television program, thereby possessing significant goodwill and reputation.
    • Claimed that the defendants’ use of “Baap Ki Adalat” was deceptively similar, both phonetically and visually, leading to confusion among the public.
    • Alleged that the defendants’ use of Rajat Sharma’s name, photograph, and video without consent infringed upon his personality rights.

    Defendants (Ravindra Kumar Choudhary & Ors.):

    • At the time of the interim injunction, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from:

    • Using the mark/logo “Baap Ki Adalat” or any other mark/logo deceptively similar to “Aap Ki Adalat” in any manner, including as a trademark, logo, trading style, domain name, social media posts, audio-video content, or in relation to any services.
    • Using the photograph, video, or name of Rajat Sharma in any manner that would violate his personality rights.

    The court directed the defendants to remove the infringing content from their social media platforms and scheduled the next hearing for 18 October 2024.

    Ratio Decidendi

    • The court found a prima facie case of trademark infringement and passing off, noting the deceptive similarity between “Aap Ki Adalat” and “Baap Ki Adalat.”
    • Recognized the significant reputation and goodwill associated with the plaintiffs’ trademarks, and the potential for confusion and deception among the public due to the defendants’ use of a deceptively similar mark.
    • Acknowledged the violation of Rajat Sharma’s personality rights through the unauthorized use of his name, photograph, and video.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2
    • Common law principles relating to passing off and personality rights

    Bibliography

    Author: Suhani Sharma