TRADEMARK
DELHI HC RULES IN FAVOUR OF PARALLEL IMPORTS
In a landmark decision, the Delhi HC has affirmed the right of individuals in India to import and resell second-hand goods bearing registered trademarks, provided there is full and transparent disclosure to consumers. The case arose when the defendant imported used hard disk drives (HDDs) carrying the Western Digital trademark, prompting the data storage company to allege trademark infringement. Justice Amit Bansal ruled that such imports are permissible under Indian law, so long as the goods are genuine, clearly identified as used, and not falsely represented as covered by the original manufacturer’s warranty.
The HC drew support from previous rulings, including Kapil Wadhwa v. Samsung Electronics and Seagate v. Daichi International, which uphold the principle of international exhaustion under Sections 30(3) and 30(4) of the Trade Marks Act. Reinforcing this doctrine, the HC held that trademark owners cannot prevent the resale of genuine products merely because they were first sold abroad. Western Digital’s infringement claims were dismissed, and the HC ordered customs to release the seized HDDs, allowing their resale with proper disclosures. For refurbished goods, the HC reiterated that clear labelling, including the absence of manufacturer warranty and identity of the refurbisher, must be strictly followed as per the guidelines laid down in Seagate v. Daichi International.
1.Western Digital Technologies Inc. & Anr. v. Hansraj Dugar (CS(COMM) 586/2019)
TRADEMARK
COMMON NAMES CAN BE TRADEMARKED
In a recent judgement, the Delhi HC held that common Indian names such as “NEHA” can be registered and protected as trademarks, provided the mark has acquired distinctiveness through sustained commercial use. However, the HC emphasized that such names, due to their inherent generic nature, are considered weak marks and cannot be monopolized across unrelated products, even within the same trademark class.
The case arose from a dispute between Sahni Cosmetics, which claimed use of the “NEHA” mark for face creams since 1990, and Neha Herbals, which has used the same mark for mehendi and herbal products since 1992. While Sahni filed cancellation petitions against Neha Herbals’ registrations, the HC found that Sahni had failed to substantiate its claims with credible evidence. In contrast, Neha Herbals submitted substantial documentation proving long-term use. The HC clarified that trademark protection for personal names is not barred under the Trade Marks Act, but securing rights over the same requires proof of consumer recognition through commercial activity, sales, advertising, and public perception.
Although Neha Herbals succeeded in establishing valid proprietorship of its mark, the HC denied its infringement and passing off claims, finding no likelihood of confusion between mehendi and face cream products. Highlighting that goodwill in trademark law is product-specific, the HC reiterated that common names, even when registered, offer limited exclusivity unless a secondary meaning is clearly demonstrated.
1. Inder Raj Sahni Proprietor v. Neha Herbals (P) Ltd. (C.O. (COMM.IPD-TM) 355 of 2021)
TRADEMARK
FOREIGN TM REGN DOESN’T GUARANTEE PROTECTION IN INDIA
Reiterating the rule of territoriality, the Delhi HC ruled that trademark registration in foreign jurisdictions does not automatically confer rights for registration in India. The decision came in favour of Mankind Pharma, which had opposed a trademark application by a Chinese company, Zhejiang Yige Enterprise Management Group Co. Ltd., seeking to register the mark “FLORASIS” for pharmaceutical products.
Mankind, which has used the mark “FLORA” since 1995, argued that “FLORASIS” was deceptively similar and could mislead consumers, especially since both products are sold through the same trade channels. While the Deputy Registrar had initially rejected Mankind’s opposition, the HC found that “FLORASIS” was visually and phonetically similar to “FLORA” and could be mistaken as a variant, particularly in the pharmaceutical sector where higher scrutiny is required. Justice Saurabh Banerjee emphasized that simply having a trademark registered abroad or adding Mandarin characters does not make a mark distinctive in the Indian context.
Highlighting the importance of preventing consumer confusion in matters of public health, the HC set aside the Registrar’s decision and ordered the removal of “FLORASIS” from the Indian trademark registry.
1. Mankind Pharma Limited v. Zhejiang Yige Enterprise Management Group Co. Ltd. & Anr. (C.A.(COMM.IPD-TM))
COPYRIGHT
INTERIM RELIEF FOR FILM ANDAZ APNA APNA
Vinay Pictures (Plaintiff), producers of the iconic film “Andaz Apna Apna,” have secured an ex-parte ad-interim injunction from the Delhi HC, effectively halting widespread infringement of their exclusive copyright and trademark rights in the film.
The HC observed that defendants were actively selling merchandise bearing the film’s name, images, and character dialogues, and exploiting the plaintiff’s intellectual property through AI-generated content. Recognizing that the film’s iconic dialogues and catchphrases have gained significant popularity and a strong secondary meaning, exclusively linked to Vinay Pictures, the HC cited irreparable loss to the Plaintiff if an injunction was not granted.
Consequently, the HC restrained Defendants 1-16, 18, and 19 (including John Doe parties) from hosting, streaming, creating, or dealing in any content or merchandise identical or deceptively similar to “Andaz Apna Apna.” Further, the HC directed e-commerce platforms such as Desertcart, Etsy, Flipkart, and Meesho to remove infringing product listings, and Google LLC to take down infringing videos. E-commerce platforms have also been mandated to disclose details of infringing sellers. Finally, the Ministry of Electronics and Information Technology (MEITY) was ordered to block identified infringing links, websites, and social media channels.
1.Vinay Pictures v. Good Hope & Ors.; CS (COMM) 475/2025
COPYRIGHT
COPYRIGHT IN HINDUSTANI CLASSICAL COMPOSITIONS AFFIRMED
In the previously reported ongoing alleged copyright infringement by A.R. Rehman of the composition “Shiva Stuti” by the Late Dagar Brothers, the Delhi HC has ruled in favor of Ustad Faiyaz Wasifuddin Dagar (Plaintiff) who accused Rahman and the producers of Ponniyin Selvan 2 of unauthorized use of their song in “Veera Raja Veera.” The HC recognized “Shiva Stuti” as an original and protectable work, and held that late Ustad N. Faiyazuddin Dagar and the late Ustad Zahiruddin Dagar are its original authors and directed the defendants to accord appropriate credits.
Justice Prathiba Singh, presiding over the matter, affirmed that compositions rooted in Hindustani classical music are entitled to protection under the Copyright Act, 1957, provided they demonstrate sufficient originality and creative input. The HC clarified that the use of common musical elements such as Raga, Taal, or genre does not negate a work’s originality, as classical compositions inherently offer substantial room for creative expression within their structural boundaries.
Further, the HC, upon comparative analysis, found that “Veera Raja Veera” was not merely inspired by “Shiva Stuti” but exhibited striking resemblances in terms of its Swaras (musical notes), Bhava (emotional depth), and overall aural impression. These similarities, it observed, would be perceptible even to an average listener, irrespective of modern arrangements or lyrical modifications. The HC has asked the defendants to pay Rs. 2 lakhs to the Plaintiff as costs.
1. Ustad Fayiaz Wasifuddin Dagar v. Mr. A.R. Rahman & Ors.; CS(COMM)773/2023 in I.A. 21148/2023
PATENT
CALCUTTA HC UPHOLDS PATENT TERM STATUTORY FRAMEWORK
A Division Bench of the Calcutta HC examined the constitutional validity of Sections 11A (7) and 53 of the Patents Act, 1970. The dispute centered on whether starting the 20-year patent term from the date of application, despite enforceability arising only after the grant, undermines the rights of patentees. The petitioners had filed a patent application in 2005, which was granted only in 2012. During the interim period, while the invention had been published and was publicly accessible, the petitioners had no legal recourse to enforce their rights. They argued, this violated Article 14 of the Constitution by creating unequal treatment among patentees, depending on how quickly their applications were processed. Initially, a Single Judge Bench of the HC upheld the statutory scheme, finding that Sections 11A (7) and 53 were designed to operate at different stages of the patent lifecycle and did not contradict each other. The Single Bench ruled that Section 11A (7) provided for limited interim rights post-publication, while Section 53 ensured compliance with the TRIPS Agreement by mandating a 20-year patent term from the date of filing. Dissatisfied with this reasoning, the petitioners appealed the decision before a Division Bench of the HC.
The Division Bench affirmed the Single Bench Judge’s ruling and rejected the constitutional challenge. It held that the statutory provisions applied uniformly to all patentees and did not violate Article 14. The Bench also emphasized that systemic delays in the patent grant process were administrative issues beyond the scope of judicial intervention and should be addressed by the legislature. The Bench reiterated that any reforms to ensure more equitable and effective protection of patent rights, especially in light of procedural delays, must come from Parliament.
1.Gunjan Sinha @ Kanishk Sinha & Anr. v. The Union of India & Anr; MAT 903/2024
