TRADEMARK
DELHI HC GRANTS RELIEF TO GERMAN SOCIETY
Goethe-Institut, a German society (Plaintiff) operating German language centers in India under the name “MAX MULLER BHAVAN” since 1957, filed a trademark infringement and passing off suit before the Delhi HC, against one Abhishek Yadav and Shyam Bahadur (Defendants), who have been using the marks “MAX MULLER and MAX MULLER INSTITUTE” respectively. Despite the Defendants holding registered trademarks, the Plaintiff asserted their extensive prior and continuous use of the mark “MAX MULLER BHAVAN” in India for over six decades, building significant goodwill and public recognition. Further, it argued that the Defendants’ adoption of a similar mark would inevitably lead to confusion regarding the source and affiliation among individuals seeking German language courses.
The HC recognized the Plaintiff’s long-standing prior use and the significant goodwill associated with the mark “MAX MULLER BHAVAN”. Finding a high likelihood of public confusion if both entities operated under similar names in the education sector, the HC issued an interim injunction restraining the Defendants from using the infringing mark, emphasizing that prior use and established goodwill can outweigh later trademark registrations.
1.Goethe-Institut E.V. v. Abhishek Yadav & Anr.; CS(COMM) 541/2024
TRADEMARK
PLAYFUL RIVALRY PREVAILS: UBER’S IPL AD CLEARED BY DELHI HC
In a recent verdict, the Delhi HC dismissed Royal Challengers Bengaluru’s (RCB) plea against Uber’s “Royally Challenged” IPL-themed ad, finding that the slogan constituted permissible “healthy banter” within the context of sporting rivalry rather than an actionable disparagement, as it contained no false claims and was perceived as a joke by the average viewer. (The genesis of this case was covered in our previous newsletter dated 2nd May 2025).
The HC also rejected RCB’s trademark dilution claim, stating that the high threshold established for proving detriment or unfair advantage was not met, and that the humorous use within the cricketing context provided “due cause”. The HC further emphasized the importance of commercial free speech and cautioned against stifling harmless parody, suggesting that trademark law should not be used to prevent playful ribbing in competitive environments.
1. Royal Challengers Sports Pvt. Ltd. vs. Uber India Systems Pvt. Ltd. & Ors. CS(COMM) 345/2025
TRADEMARK
DELHI HC: NUMERICAL MARK CAN BE A DISTINCTIVE COSMETIC BRAND
In an appeal against the Trademark Registry’s order, the Delhi HC overturned it and paved the way for the registration of the mark “2929” in Class 3 for a range of cosmetic products, including soaps, shampoos, and nail polish. The Registrar of Trademarks had previously rejected the application by Mr. Vineet Kapur (Appellant), citing a lack of distinctiveness and arguing that a combination of common numbers could not be monopolized.
However, the HC took a different view, observing that the mark “2929” is a coined and arbitrary term when applied to cosmetics. The HC reasoned that this inherent arbitrariness renders the mark inherently distinctive of the goods it seeks to represent. Further, it directed the Trademark Registry to proceed with the advertisement of the mark in the trademark journal. Notably, this direction comes with a specific condition that the Appellant, will not claim exclusive monopoly over the individual numbers “2” and “9”.
1. Vineet Kapur vs Registrar of Trademarks; C.A.(COMM.IPD-TM) 22/2024
COPYRIGHT
AI BARBIE TREND RAISES LEGAL & REGULATORY CONCERNS
The viral “AI Barbie” trend, which allows users to generate doll-like avatars through AI tools, has gained widespread popularity across social media platforms. While the phenomenon embraces a whimsical, pink aesthetic inspired by Mattel’s iconic Barbie, it also raises a host of legal and regulatory challenges, particularly around intellectual property, data privacy, and consumer protection.
Mattel owns extensive intellectual property rights over the Barbie brand, including trademarks, copyrights, and design patents. AI-generated content that replicates Barbie’s likeness or branding elements may constitute copyright or trademark infringement, especially when used for commercial purposes or without appropriate licensing. Influencers and creators also risk violating Federal Trade Commission guidelines if they fail to disclose paid partnerships or promotional affiliations.
COPYRIGHT
EUIPO STUDY ON GENAI COPYRIGHT CHALLENGES
A recent European Union Intellectual Property Office (EUIPO) study, presented in the European Parliament, details the complex legal issues arising from Generative AI (GenAI) and its creation of synthetic content. Recognizing that access to high-quality, up-to-date content is crucial for GenAI development, the report highlights the emergence of direct licensing between GenAI developers and copyright holders. The capacity for copyright holders to effectively reserve their rights is identified as essential for this licensing market to grow.
The EUIPO study, now under parliamentary consideration, notes the current lack of a universal solution for copyright protection in the AI training process (input phase). While rights holders can opt out of text and data mining (TDM) authorizations, standardized and enforceable mechanisms for expressing these reservations are lacking. It further underscores that effective rights reservation systems are vital for the developing licensing market.
PATENT
CALCUTTA HC SETS ASIDE PATENT REJECTION FOR NICOTINE DELIVERY DEVICE
The Calcutta HC’s Intellectual Property Division recently set aside the order of an Assistant Controller of Patents, Kolkata, who had refused a patent application related to a novel nicotine delivery device. ITC Limited (the Appellant) claimed that the invention provided controlled nicotine aerosol through a chemical reaction, without using electronic components, and distinguished it from traditional e-cigarettes. However, the Patent Office rejected the application under Section 3(b) of the Patents Act, citing health concerns and referencing various statutes and government reports. The HC found that the rejection order relied on documents and legal provisions not disclosed to the Appellant before the hearing, thereby violating principles of natural justice. Citing the SC’s judgment in Ssangyong Engineering V. NHAI, the HC held that relying on undisclosed materials deprived the applicant of the opportunity to respond, which warranted setting aside the decision.
Further, the HC observed that Section 3(b) is based on the intent of the invention and not its speculative effects or potential misuse. The HC emphasized that regulatory bans do not automatically disqualify inventions from patent protection. The matter has been remanded for reconsideration by a different officer, with directions to complete the process within six months. The HC clarified that the new decision must be made independently and without influence from the previous order.
1.ITC Limited vs The Controller Of Patents (IPDPTA No. 121 of 2023)
MISCEALLANEOUS
NEPAL MOVES TO TACKLE COUNTERFEIT MARKET WITH NEW IP LAW
Counterfeit goods have become widespread in Nepal, with knockoff products being openly sold alongside legitimate brands. From beverages to clothing and fast food, imitations of global trademarks are thriving, undermining consumer trust and damaging the country’s business reputation. A notable example is the year’s long trademark dispute that kept Kansai Nerolac Paints out of the Nepali market due to a local company registering its name first.
To address this growing problem, the government has introduced a new Industrial Property Bill aimed at modernizing Nepal’s outdated IP laws. The bill, currently awaiting parliamentary approval, is designed to align with international standards such as the WTO’s TRIPS agreement and the Paris Convention. It proposes the creation of a dedicated IP office and introduces stronger protections for patents, trademarks, trade secrets, geographical indications, and well-known international brands. Penalties for infringement would increase significantly, with fines of up to Rs. 1.5 million, 15 times the current maximum penalty.
1.https://kathmandupost.com/money/2025/05/13/nepal-overhauling-outdated-intellectual-property-law
