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Tag: Trademark infringement India

  • Shaping The Future of IP Law in India: A Review of Significant Judgement of 2025

    1. Phonetic Similarity

    Pepsico, Inc. v. Jagdamba Foods Pvt.Ltd.IPDATM/210/2023 (popularly known as Lay’s vs Jay’s case)

    PepsiCo Inc., formed in 1965 through the merger of Frito-Lay Inc. and the Pepsi-Cola Company, traces the Lay’s brand to Herman W. Lay’s potato chip business, begun in 1938. In the context of Indian IP Law, Lay’s has been used continuously for over 75 years and has been registered in India since 31 July 1992, acquiring substantial goodwill and recognition as a well-known trademark.

    PepsiCo challenged the respondent’s mark “Jay’s”, alleging bad-faith adoption and deceptive phonetic similarity to “Lay’s”, used for identical goods and likely to cause consumer confusion while unfairly exploiting Lay’s reputation.

    The petition was filed under Sections 47, 57, 9(2)(a), and 11 of the Trade Marks Act, 1999, and relied on precedents such as Dabur India Ltd. v. Usha (2024) and K.R. Chinna Krishna Chettiar v. Shri Ambal& Co. (1969), emphasizing prior user rights and phonetic similarity.

    The Calcutta High Court, led by Justice Ravi Krishan Kapur, allowed the petition and ordered cancellation of the “Jay’s” trademark, holding it to be deceptively and phonetically similar to the well-known Lay’s mark and adopted with mala fide intent to capitalize on PepsiCo’s goodwill.

    2. Visual Similarity

    Lifestyle Equities CV &Anr. v. Amazon Technologies, RFA(OS)(COMM) 11/2025 & APPL. 26455/2025

    The Delhi High Court imposed a fine of ₹339.25 crore on Amazon and its affiliates for trademark and copyright infringement involving the Beverly Hills Polo Club (BHPC) logo. The Court found that Amazon, through its private label “Symbol”, sold clothing featuring a horse logo that closely resembled the BHPC emblem, creating the impression that consumers were purchasing authentic BHPC products at lower prices.

    The plaintiffs, Lifestyle Equities C.V. (LECV) and Lifestyle Licensing B.V. (LLBV), owners and licensees of the BHPC trademark, alleged that Amazon Technologies Inc., Cloudtail India Pvt. Ltd., and Amazon Seller Services Pvt. Ltd. had used their registered mark without authorization, causing consumer confusion, dilution of the brand’s goodwill, and financial loss.

    The Court observed that Amazon exercised significant control over Cloudtail’s branding and sales, making it accountable for the infringement. The company’s failure to contest the proceedings was interpreted as an acknowledgment of liability. Highlighting the difficulties of enforcing IP rights against e-commerce intermediaries, the Court held the defendants liable under Section 135 of the Trade Marks Act, 1999.

    The Court awarded the plaintiffs a total of ₹339,25,97,966.60, covering damages for lost sales, royalties, and legal expenses, and disposed of all pending applications. This ruling sends a clear message that e-commerce platforms must adhere strictly to intellectual property laws.

    For businesses navigating complex IP issues, service providers like TMWala can be invaluable. TMWala assists companies in securing trademark registrations, monitoring potential infringements, and enforcing IP rights effectively, ensuring that brands are protected from unauthorized use on e-commerce platforms and beyond.

    3. Registration of Smell Trademark

    Sumitomo Rubber Industries Ltd. NO. TMR/DEL/SCH/2025/16

    In a landmark decision for non-traditional trademarks in India, the Trade Marks Registry accepted Sumitomo Rubber Industries Ltd. (a Japanese company)’s application to register an olfactory (smell) mark for tyres. The mark, described as “floral fragrance/smell reminiscent of roses as applied to tyres” (Application No. 5860303, Class 12), has been accepted and advertised in Trade Marks Journal No. 2236 (Nov 2024–2025).

    Filed on 23 March 2023, the application initially faced objections under Section 9(1)(a) (lack of distinctiveness) and Section 2(1)(zb) (absence of graphical representation). To address these, the applicant relied on prior UK registration, decades of commercial use since 1995, international precedents, and a novel scientific graphical representation, a seven-dimensional vector of the scent prepared by a researcher at IIIT Allahabad.

    On 21 November 2025, the Controller General accepted the mark as an olfactory trademark, finding that the scientific representation met the statutory criteria of being clear, precise, self-contained, intelligible, durable, and objective, and directed its advertisement under Section 20 of the Trade Marks Act, 1999. The Registry also noted that a rose scent is arbitrary to tyres and capable of distinguishing the applicant’s products in the market.

    This ruling represents a major advancement in Indian trademark law, recognizing scientifically validated graphical representations as a valid method for protecting non-conventional sensory marks.

    4. Well-Known Mark

    Hermès International &Anr. v. Macky Lifestyle Private Limited &Anr. CS(COMM) 716/2021

    On 24 November 2025, the Delhi High Court delivered a landmark ruling enhancing protection for luxury brands and non-traditional trademarks in India. The Court recognized the three-dimensional shape of the Birkin bag, the “Hermès” word mark, and its stylized logos as well-known trademarks under the Trade Marks Act, 1999, bringing Indian jurisprudence closer to global intellectual property standards.

    Hermès, the French luxury house established in 1837, alleged that the defendants had unauthorizedly manufactured, advertised, and sold products deceptively similar to the iconic Birkin bag, constituting trademark infringement, passing off, dilution, and misappropriation of goodwill. During proceedings, the defendants admitted that they had not manufactured or sold any infringing products, earned no revenue, and that the images shown were only downloaded from the internet. The plaintiffs accepted these statements, resulting in the grant of injunctions.

    Hermès also sought recognition of its marks as well-known trademarks. After reviewing decades of consistent global use, promotion, enforcement history, and cross-border reputation, the Court concluded that the Hermès marks enjoy widespread recognition extending beyond territorial boundaries. Accordingly, it declared the Birkin bag’s shape, the Hermès word mark, and associated logos as well-known trademarks under Section 2(1)(zg).

    This judgment has far-reaching implications, reinforcing protection for product shape marks, acknowledging global brand reputation even with limited local sales, and deterring misuse of luxury branding at any stage. It also strengthens India’s commitment to enforcing international IP rights.

    For businesses, service providers like TMWala play a crucial role in safeguarding brand assets. They assist in obtaining well-known trademark status, monitoring unauthorized use, enforcing IP rights, and ensuring that both traditional and non-traditional trademarks, including three-dimensional shapes and stylized logos, are fully protected in India and globally.

    | Read the whole article regarding Hermès, marked as the well-known trademark

    5. AI vs Copyright

    ANI Media Pvt Ltd Vs Open Ai Inc & Anr CS(COMM) 1028/2024

    In November 2024, Asian News International (ANI) filed a copyright infringement suit against OpenAI in the Delhi High Court, alleging that ChatGPT reproduced or closely mirrored ANI’s news articles without permission. ANI claimed its content was used to train the AI model for commercial purposes and that ChatGPT’s outputs lacked the creativity required to be considered original under Indian copyright law. OpenAI denied infringement, arguing that the training process is statistical, non-expressive, and that any similarity is coincidental. OpenAI also challenged the jurisdiction of Indian courts, citing no physical presence in India.

    The case raises important questions about AI and copyright, including whether copyrighted material can be used to train large language models, whether AI-generated content can be considered original, and whether Indian courts can assert jurisdiction over foreign AI companies. ANI relied on Sections 13, 14, 51, and 52 of the Copyright Act, 1957, as well as the Modak doctrine, emphasizing that the AI outputs are derivative and infringing.

    This dispute is a landmark in India, as it could shape future regulations on AI, copyright protection, and digital content.

    For businesses and content creators, TMWala can help navigate such challenges by securing copyright registrations, monitoring unauthorized use of content, and providing guidance on licensing agreements. TMWala also assists companies in understanding emerging legal risks from AI and digital technologies, ensuring compliance with Indian copyright and intellectual property laws.

    | To know more about this, explore this article: AI and Copyright: The Ani vs. OpenAI Case

    FAQs

    1. What was the outcome of the Lay’s vs Jay’s trademark case?
      The Calcutta High Court cancelled the “Jay’s” trademark, ruling it phonetically and deceptively similar to Lay’s and adopted in bad faith.
    2. Why was Amazon fined ₹339.25 crore in the BHPC case?
      Amazon and its affiliates sold clothing with a logo deceptively similar to the Beverly Hills Polo Club (BHPC) emblem, misleading consumers and infringing on trademark and copyright.
    3. How can businesses prevent e-commerce trademark infringement?
      Service providers like TMWala help secure registrations, monitor potential infringements, and enforce IP rights on online platforms.
    4. What is the significance of the Sumitomo smell trademark?
      The Trade Marks Registry accepted an olfactory mark for tyres, recognizing a scientific seven-dimensional graphical representation as a valid non-traditional trademark.
    5. What are non-traditional trademarks?           
      These include sensory marks, product shapes, colors, sounds, or other distinctive elements beyond words or logos.
    6. How did the Hermès case strengthen luxury brand protection?
      The Delhi High Court declared the Birkin bag shape, Hermès word mark, and logos as well-known trademarks, protecting them against misuse even with minimal local sales.
    7. Can foreign companies like OpenAI be sued in India for copyright infringement?
      Yes, under Section 20 of the Civil Procedure Code, if the company causes harm in India, Indian courts may assert jurisdiction.
    8. What is the legal concern in the ANI vs OpenAI case?
      It questions whether AI training on copyrighted content constitutes infringement, whether AI outputs are “original,” and whether Indian copyright law applies to AI-generated content.
    9. How does TMWala assist with AI-related copyright issues?
      TMWala helps secure copyright registrations, monitor unauthorized use, draft licensing agreements, and ensure compliance with emerging AI and IP laws.
    10. What is the overall trend in the 2025 Indian IP law?
      The year highlights stronger protection for phonetic, visual, non-traditional, well-known, and AI-related intellectual property, aligning India with global IP standards.

  • TRADEMARK DISPUTE: BOMBAY HC STOPS ABD FROM USING ‘MANSION HOUSE’ AND ‘SAVOY CLUB’

    INTRODUCTION

    The Bombay High Court has made a historic ruling in one of India’s longest-running intellectual property cases, prohibiting Allied Blenders and Distillers Pvt. Ltd. (ABD) from launching or marketing its goods throughout the country under the trademarks “MANSION HOUSE” and “SAVOY CLUB” until the outcome of the current trial. The order, dated July 16, 2025, was issued by a Division Bench of the High Court and marks a significant victory for Tilaknagar Industries Limited (TIL), which has fought to assert its exclusive ownership of the two legacy liquor brands.

    Platforms like TMWala offer specialized support in trademark monitoring, registration, and enforcement.

    BACKGROUND OF THE CASE

    This business dispute began in 1987 when Tilaknagar Industries and UTO Nederland BV (now Herman Jansen Beverages Nederland) signed a contract giving Tilaknagar Industries the rights to the Savoy Club gin and Mansion House brandy trademarks in India. The agreement was pivotal in shaping TIL’s presence in the Indian alcoholic beverages market. However, years later, Herman Jansen and his Indian partners primarily challenged the legitimacy of the deal, arguing that it was never legally finalized. This disagreement ultimately led to a trademark infringement lawsuit that has been ongoing since 2009.

    ABD and Dutch distiller Herman Jansen Beverages (previously UTO) successfully revived their 17-year-old dispute with Tilaknagar Industries in February 2025 when the Bombay High Court permitted them to introduce Mansion House brandy and Savoy Club gin in India.TIL responded swiftly, filing an appeal before the Division Bench of the High Court, asserting that the earlier ruling threatened its market share and brand integrity.

    THE LATEST RULING

    With its most recent decision on July 16, the Bombay High Court granted TIL’s appeals, which contested the previous verdict allowing ABD to sell its goods in West Bengal under the “MANSION HOUSE” brand. In a related move in the same suit, ABD filed Appeal No. 66 of 2012, which the Division Bench likewise dismissed. By ordering ABD to continue to refrain from introducing goods under the contested marks “MANSION HOUSE” and “SAVOY CLUB” throughout India until the resolution of the initial commercial intellectual property lawsuit (filed in 2009), the court has essentially restored a restriction on ABD.

    This decision directly strengthens Tilaknagar Industries’ legal position, reinforcing its long-standing claim of exclusive rights to the Mansion House and Savoy Club trademarks. TIL, which has built its brand reputation and market presence over decades, had long sought the court’s intervention to restrain ABD, Herman Jansen Beverages Nederland, and UTO Asia from manufacturing, marketing, or selling alcoholic products under the trademarks Mansion House and Savoy Club.

    UPHOLDING TRADEMARK INFRINGEMENT NORMS IN INDIA

    The Bombay High Court’s ruling comes at a critical time when Indian courts are increasingly called upon to resolve complex cases of trademark infringement. By siding with TIL, the court has reaffirmed the principle that original trademark holders must be protected from any attempts at imitation or dilution of brand identityparticularly in sectors like alcoholic beverages where brand reputation plays a vital role in consumer trust.

    As such, the decision underscores the importance of adhering to long-standing agreements and not allowing commercial interest to override the sanctity of legal contracts. While Herman Jansen argued that the 1987 agreement was never finalized, the court’s current stand recognizes TIL’s ownership of the trademarks within India, offering clarity that may influence future trademark disputes.

    THE IMPACT ON THE BUSINESS

    Tilaknagar Industries’ exclusive ownership of the “Mansion House” and “Savoy Club” trademarks is upheld by the Bombay High Court’s decision, shielding its iconic brands from copying. It protects TIL’s market share and brand value by preventing competitors UTO and ABD from adopting comparable branding. By eliminating the legal ramifications, the ruling increases investor trust. Additionally, it might make TIL more competitive in the market for high-end spirits. The decision upholds brand integrity until the trial’s conclusion.

    This decision is especially significant as Mansion House is one of India’s top-selling brandy labels. For TIL, being able to exclusively market this product without any brand confusion or competitor usage under a similar label ensures continuity in revenue and customer loyalty. Furthermore, the judgment paves the way for further investment in brand building, marketing, and geographic expansion without the immediate threat of legal ambiguity.

    This scenario highlights how essential ongoing trademark vigilance is. Platforms like TMWala offer end-to-end solutions that help companies like TIL safeguard their brand portfolios across regions, preventing both deliberate infringements and unintentional misuse.

    FUTURE LEGAL AND COMMERCIAL TRAJECTORY

    Tilaknagar Industries will proceed with the main trial for a final decision on brand rights after the trademark victory. The business can now take action to prevent rivals in West Bengal and other states from utilizing identical trademarks. TIL’s position to grow its Mansion House and Savoy Club brands is strengthened by this ruling. Additionally, it is anticipated to reassure investors and pave the way for more robust brand development. Legal professionals will make sure the decision is fully implemented.

    TIL’s legal counsel is expected to be vigilant in enforcing the latest court orders, ensuring that competitors do not bypass the ruling through limited regional launches or alternate branding strategies. Additionally, the company may now focus on consolidating its foothold in states where the competition had previously planned to launch under the contested trademarks.

    The ruling could also embolden TIL to pursue claims of damages or seek further judicial relief if there is evidence of past or ongoing misuse of the trademarks in contravention of the earlier agreements.

    IMPLICATIONS FOR TRADEMARK INFRINGEMENT IN INDIA

    The Bombay High Court’s stance in this matter sets an important precedent in trademark infringement in India. For industries heavily reliant on brand equitylike alcoholic beverages, pharmaceuticals, and fashion this judgment is a reminder that legacy contracts and ownership claims are to be upheld even when decades have passed.

    Moreover, the case demonstrates how courts can balance complex commercial interests while defending the rights of companies that have built their identity over years of investment and effort. In this instance, Tilaknagar Industries’ perseverance has been rewarded, reinforcing trust in the legal system’s ability to adjudicate nuanced corporate disputes.

    For Allied Blenders and Distillers Pvt. Ltd., the court’s decision is a significant setback. ABD, a key player in the Indian spirits industry, had banked on expanding its portfolio by reviving the Mansion House and Savoy Club labels with the assistance of Herman Jansen. The ruling now requires the company to revisit its branding strategy and potentially recalibrate its future growth plans in India.

    CONCLUSION

    The Bombay High Court’s latest intervention in the Tilaknagar Industries trademark dispute has provided much-needed clarity and reinforcement of intellectual property rights. By barring ABD and its foreign partners from launching products under the disputed Mansion House and Savoy Club trademarks, the court has reaffirmed TIL’s rightful claim as the sole proprietor of these brands within India.

    While the final verdict in the ongoing commercial suit is still pending, the current judgment offers Tilaknagar Industries a powerful legal and commercial advantage. It also provides a valuable precedent in the domain of trademark infringement India and serves as a cautionary note to businesses seeking to capitalize on legacy brands without honoring existing contractual commitments.

    As the Indian spirits market continues to expand, safeguarding brand identity and honoring long-standing agreements will remain crucialboth for market stability and consumer trust.

    TMWala, with its focus on digital trademark protection, registration, and portfolio management, is well-positioned to support businesses at every stage of their brand’s legal journey.

  • 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

  • Delhi High Court Rules in Favor of Pfizer in VIAGRA vs VIGOURA Trademark Dispute

    Case 2: Pfizer Products Inc. v. Renovision Exports (P) Ltd.

    Citation: 2024 SCC OnLine Del 3140
    Court: Delhi High Court
    Date Decided: 1 May 2024
    Judge: Justice Sanjeev Narula

    Background

    Pfizer Products Inc., a globally recognized pharmaceutical company, holds the registered trademark “VIAGRA” for its sildenafil citrate-based medication used to treat erectile dysfunction. The trademark “VIAGRA” has been registered in India since 1996 and enjoys widespread recognition due to extensive marketing and media coverage.

    In 2005, Pfizer discovered that Renovision Exports (P) Ltd. was marketing homeopathic products under the mark “VIGOURA,” including variants like “VIGOURA 2000,”“VIGOURA 5000,” and “VIGOURA 1000,” purportedly for treating sexual disorders. Pfizer issued cease-and-desist notices, but the defendants continued their activities, leading Pfizer to file a suit seeking a permanent injunction against the use of the “VIGOURA” mark.

    Plaintiff’s – VIAGRA  Defendant’s- VIGOURA

    Legal Issues

    1. Whether the defendants’ use of the mark “VIGOURA” infringed upon Pfizer’s registered trademark “VIAGRA” under the Trade Marks Act, 1999.
    2. Whether the phonetic and visual similarities between “VIAGRA” and “VIGOURA” could cause confusion among consumers, constituting passing off.
    3. Whether such confusion between medicinal products poses a risk to public health, warranting judicial intervention.

    Parties’ Contentions

    Plaintiff (Pfizer Products Inc.):

    • Asserted that “VIAGRA” is a well-known trademark with global recognition, registered in over 147 countries.
    • Argued that “VIGOURA” is phonetically and visually similar to “VIAGRA,” leading to potential consumer confusion.
    • Contended that the defendants’ use of “VIGOURA” constituted trademark infringement and passing off, especially given the identical therapeutic use.

    Defendant (Renovision Exports (P) Ltd.):

    • Claimed that “VIGOURA” was a distinct mark used for homeopathic products, differing in composition and treatment approach from “VIAGRA.”
    • Denied any intention to deceive consumers or capitalize on Pfizer’s reputation.
    • Argued that the products catered to different consumer bases and medical philosophies.

    Decision

    The Delhi High Court granted a permanent injunction in favour of Pfizer, restraining the defendants from:

    • Manufacturing, selling, or marketing any product under the mark “VIGOURA” or any mark deceptively similar to “VIAGRA.”
    • Engaging in any activity that would amount to infringement or passing off of Pfizer’s registered trademark.

    Additionally, the court awarded nominal damages of ₹3,00,000 to Pfizer, recoverable jointly and severally from the defendants.

    Ratio Decidendi

    • The court observed a high degree of phonetic similarity between “VIAGRA” and “VIGOURA,” noting that such similarity could mislead consumers into believing an association between the two products.
    • Emphasized that confusion between medicinal products poses serious risks to public health, beyond mere economic harm.
    • Held that the visual similarities in letter structure and length further contributed to the likelihood of confusion.
    • Concluded that Pfizer had established a strong case of trademark infringement and passing off.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(3)

    • (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 trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
    • (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

    Bibliography

    Author: Suhani Sharma

  • Trademark Dispute: Bulgari S.p.A. vs. Prerna Rajpal (The Amaris Flagship)

    INTRODUCTION

    The realm of trademark law in India has witnessed dynamic evolution in recent years, with courts playing an increasingly assertive role in safeguarding brand identity, consumer trust, and commercial goodwill. In the upcoming paragraphs, we’ll know about the trademark dispute between Bulgari S.P.A and Prerna Rajpal The Amaris Flagship. The period between 2024 and 2025 has been particularly significant, marked by a series of landmark decisions that have refined the interpretation of the Trade Marks Act, 1999, and expanded jurisprudence on infringement, passing off, honest concurrent use, and protection of well-known marks.

    From disputes involving global giants like IKEA and Pfizer to homegrown legacy brands such as Amul and Moti Mahal, Indian courts have not only reaffirmed the foundational principles of trademark law but also responded to emerging complexities posed by digital commerce, franchising relationships, and deceptive marketing tactics. This article compiles ten of the most influential trademark rulings delivered during this period, each analysed through its factual matrix, legal issues, judicial reasoning, and statutory application, providing critical insights into the evolving contours of trademark protection in India.

    Case 1: Bulgari S.P.A. vs. Prerna Rajpal Trading as The Amaris Flagship

    Background

    Citation: 2024 SCC OnLine Del 3339
    Court: Delhi High Court
    Date Decided: 29 April 2024
    Judge: Justice Sanjeev Narula

    Bulgari S.P.A., an Italian luxury brand renowned for its distinctive jewellery collections, including the “Serpenti” line, discovered that The Amaris Flagship Store, operated by Prerna Rajpal in Delhi, was marketing a necklace named “Shield-It!” This necklace bore a striking resemblance to Bulgari’s “Serpenti Ocean Treasure Necklace.” Despite issuing cease-and-desist notices, Amaris continued to promote the allegedly infringing product, prompting Bulgari to initiate legal proceedings.

    Plaintiff’s – Bulgari Defendant’s –  Amaris

    Legal Issues

    1. Whether Amaris’s “Shield-It!” necklace infringed upon Bulgari’s registered trademark “SERPENTI” under the Trade Marks Act, 1999.
    2. Whether the design of the “Shield-It!” necklace constituted a substantial reproduction of Bulgari’s copyrighted “Serpenti Ocean Treasure Necklace,” thereby infringing upon Bulgari’s rights under the Copyright Act, 1957.

    Parties’ Contentions

    Plaintiff (Bulgari S.P.A.):

    • Asserted ownership of the “SERPENTI” trademark, registered in multiple jurisdictions, including India.
    • Claimed that the “Serpenti Ocean Treasure Necklace” is an original artistic work, protected under copyright laws.
    • Alleged that Amaris’s “Shield-It!” necklace was a blatant imitation, replicating the design, structure, and ornamentation of Bulgari’s product.
    • Argued that Amaris’s use of the “SERPENTI” mark and similar designs was likely to cause confusion among consumers, amounting to passing off.

    Defendant (Prerna Rajpal trading as The Amaris Flagship):

    • Acknowledged inspiration from Bulgari’s designs but denied substantial similarity.
    • Contended that the term “SERPENTI” is descriptive and not exclusively associated with Bulgari.
    • Argued that the design differences were sufficient to distinguish the products and avoid consumer confusion.

    Decision

    The Delhi High Court granted an ad-interim injunction in favour of Bulgari, restraining Amaris from:

    • Manufacturing, marketing, or selling the “Shield-It!” necklace or any product resembling Bulgari’s “Serpenti Ocean Treasure Necklace.”
    • Using the “SERPENTI” trademark or any deceptively similar mark in relation to their products.

    Ratio Decidendi

    • The court found prima facie evidence that Amaris’s “Shield-It!” necklace was visually and structurally similar to Bulgari’s “Serpenti Ocean Treasure Necklace,” indicating potential copyright infringement.
    • Recognized Bulgari’s trademark rights over “SERPENTI,” noting that Amaris’s use of the identical mark on similar products constituted infringement under Sections 29(2)(c) and 29(3) of the Trade Marks Act, 1999.
    • Held that the “Serpenti Ocean Treasure Necklace,” being handcrafted and produced in limited quantities, did not fall under the purview of Section 15(2) of the Copyright Act, 1957, and thus retained copyright protection.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(2)(c), 29(3)

    • (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
    • (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

    Copyright Act, 1957: Section 15(2)

    • (2) Copyright in any design, which is capable of being registered under the 3 [***] 4 [Designs Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

    Bibliography

    Author: Suhani Sharma

  • Conflict Between the Anti-Dissection Rule and the Law of Dominant Feature in Relation to the Trade Marks Act 1999

    In the Law of IPR, particularly in trademarks, two fundamental principles frequently come into conflict: the Anti-Dissection Rule and the Law of Dominant Feature. The Anti-Dissection Rule states that a trademark cannot be analyzed by breaking it into parts or segments. In contrast, the Law of Dominant Feature asserts that the most prominent part of a mark holds the greatest significance while assessing the degree of resemblance and possibility of confusion.

    This dispute is central to most of the trademark issues dealt with under the Trade Marks Act, 1999 because the courts have to find a middle ground in their assessment of a mark to ensure that it is not treated in a mechanical way with emphasis placed only on its prominent features. In this instance, these approaches are examined from the standpoint of their relationships with trademark jurisprudence.

    Anti-Dissection Rule and The Law of Dominant

    The Anti Dissection Rule in Trademarks

    A trademark should be assessed on how distinctly different it is from other marks and whether it has the potential to create confusion with them.

    The reason this rule was put in place is that consumers tend to view these emblems as a single entity rather than as individual parts. This principle makes it impossible for companies to have monopolistic control over commonly accepted words, or elements which, in actual fact, when looked at in isolation lack distinctiveness.

    According to the Trade Marks Act, 1999, a court must follow this rule for ascertaining similarity trademarks. Marks must always be regarded as a whole and not as a collection of parts. This is especially important in situations where the name contains some generic or descriptive portions along with some distinctive parts.

    The Law of Dominant Feature in Trademarks

    This approach is in sharp contrast to the previous insights as it specializes in one mark per view. The Law of dominant feature states that the most important or striking part of a trademark is the one that decides the level of distinctiveness and confusion. Courts tend to apply this approach where one part of a mark is so unique that it overshadows the remainder which is largely descriptive or generic.

    For example, where two marks contain one strikingly distinctive word or symbol, the dominant feature rule may determine that mark is identical, regardless of other differences in the marks. In addition to describing a mark, this rule is also vital where a mark includes several words, pictures or symbols, or words which are stylized.

    Clash of Two Principles in Trademark Law

    The controversy on anti-dissecting rule conflict with the law of dominant feature comes into play when court has to decide whether to evaluate the trademark as a whole or concentrate on its focal distinguishing features. This conflict is evident in multiple areas of trademark disputes under the trademark act of 1999.

    1. Composite Marks and Overall Impression

    When Anti-Dissection Rule is applied to marks containing multiple elements, differing results may occur compared to when employing the Dominant Feature Rule. In cases where a trademark has both generic and distinctive components, courts must decide whether the entire mark will be the primary focus or the focal point will be the most dominant portion.

    2. Phonetic and Visual Similarity

    Conceptually, these two branches have issues related to whether particular phonetic or visual similarities should be studied as one unit or through a lens of prominence. The division of the trademark required by the Anti-Dissection Rule takes the entire trademark into account, whereas the Law of Dominant Feature may give some prominence to a particular word or design which lends itself to be comparatively prominent.

    3. Trademark Enforcement and Protection

    Within the context of enforcement, Anti-Dissection Rule or restrictions on Trademarks is more favorable for brand owners and may be supported by the Dominant Feature approach, which brand owners may suggest protects crucial trademark elements from being utilized by competitive merchants. With the application of Anti-Dissection Rule, it is guaranteed that trademarks will not be unfairly fragmented to claim infringement over non-distinctive or non-specific words.

    4. Consumer Perception and Market Realities

    To what extend these principles diverge cannot be examined without a reference to consumers. Anti-Dissection Rule advocates the view that trademarks are put together as a whole, while those applying the Dominant Feature view admit that some features are more fundamental because of their greater prominence used in branding and advertising.

    Striking a Balance Under the Trade Marks Act, 1999

    Indian trademark law tends to deviate from principles with the attempt to balance both thorough consideration and important highlights through a case-by-case approach. The Hon’ble courts have time and again held that Rule of Anti-Dissection and Dominant Figure are not Anti-thesis to one another, rather, the two doctrines complement each other by providing a comprehensive judegement of deceptive similarlity. Factors that the courts examine include:

    • The distinctive nature of separable parts.
    • The possibility of confusion among consumers.
    • The primary overall mark impression.
    • The presence of common distinctive elements versus unique descriptive words.

    With regard to balance the protecting mark fairness courts have maintained the need for context ensuring that both principles does not form rigid application. Rather, both rules are applied depending on the nature of trademarks under contention.

    Landmark Cases Addressing This Conflict

    Several notable cases highlight the application of these conflicting principles:

    1. Parle Products (P) Ltd. v. J.P. & Co. – The Supreme Court ruled that marks must be compared as a whole, reinforcing the Anti-Dissection Rule.
    2. M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. – The court focused on the dominant element in a trademark dispute, emphasizing its impact on consumer perception.
    3. ITC Limited v. Nestle India Limited – The Delhi High Court analyzed both the holistic impression and dominant features of competing trademarks before reaching a decision.
    4. The dominant feature theory and the anti-dissection rule—dominated the legal struggle between PhonePe and BharatPe.  Claiming that the main and unique component of its trademark was the shared suffix “Pe,” PhonePe asserted that BharatPe’s usage of it would mislead consumers.  The court disagreed with this point of view, stressing instead that trademarks have to be evaluated overall, as per the anti-dissection rule, which prohibits isolating individual elements of a composite mark to assess similarity. The suffix “Pe,” derived from the Hindi word “पे” meaning “on,” was considered descriptive in nature and lacked inherent distinctiveness.  Rather, the court decided that the real differentiator was the more noticeable aspects, “Phone” and “Bharat” These elements were obviously different in phonetic, visual, and structural identity, so customer confusion was quite rare.  Moreover, the court reiterated that exclusive rights cannot be claimed over a common or descriptive element unless it has acquired distinctiveness or secondary meaning, which “Pe” had not. Consequently, PhonePe’s claims were dismissed, and the judgment underscored the importance of considering trademarks holistically rather than dissecting them into isolated, non-distinctive parts.

    Conclusion

    The interplay between the Anti-Dissection Rule and the Law of Dominant Feature in Indian trademark law under the Trade Marks Act, 1999 illustrates a critical legal challenge. While the Anti-Dissection Rule ensures trademarks are assessed in their entirety, the Law of Dominant Feature recognizes the practical reality that certain elements stand out more prominently in consumer perception.

    A balanced approach that considers both principles allows courts to provide fair rulings while protecting both brand owners and market competition. Addressing this conflict through a nuanced, case-specific analysis ensures that trademark law remains adaptable and effective in fostering brand protection and consumer clarity.

    Author Details: Aditya Krishna Gupta, 3rd year, BA LL.B. , Jiwaji University, Gwalior 

    References