TRADEMARK
TM PASSING OFF REQUIRES PROVEN GOODWILL IN INDIA
The Delhi HC has ruled that a company must first establish goodwill within India to claim protection under the common law action of passing off. Global reputation alone is insufficient to establish territorial goodwill without evidence. This decision with respect to the dispute between Carlton Shoes Limited (CSL) and VIP Industries Ltd. over the use of the mark “Carlton” for luggage. The Court upheld an interim injunction against VIP, noting that CSL had used the mark in India since 1994, but VIP failed to show any local goodwill before that time.
Though both parties held registrations under Class 18, the issue was decided under passing off principles due to the bar under Section 28(3) of the Trade Marks Act. The HC, citing the Toyota Prius case, emphasized that mere prior international use or promotional efforts are not enough unless linked to Indian consumers. VIP’s sales in India began only in 2006 and lacked consistent use of the Carlton mark. The ruling makes clear that foreign trademark owners must demonstrate actual reputation in India to enforce their rights.
1.VIP vs Carlton (2025: DHC:5042-DB)
TRADEMARK
AMAZON SECURES STAY ON ₹340 CRORE DAMAGES ORDER
The Delhi HC has stayed a single judge order directing Amazon Technologies Inc. to pay Rs. 340 crores in damages to Lifestyle Equities and Lifestyle Licensing for alleged infringement of the “Beverly Hills Polo Club” trademark. The division bench of Justices C Hari Shankar and Ajay Digpaul put the damages and legal cost award on hold, while noting that the order had been passed ex parte, without Amazon’s participation.
The earlier ruling found Amazon liable for contributory infringement through its private label brand “Symbol” and third-party sellers using similar marks. However, the division bench observed there was no clear finding that Amazon Technologies directly infringed the trademark. The matter will now be heard in October, offering Amazon temporary relief and highlighting ongoing questions around intermediary liability in trademark cases.
1.Lifestyle Equities Cv & Anr. vs Amazon Technologies, Inc (CS(COMM) 443/2020)
COPYRIGHT
SC GRANTS INTERIM RELIEF TO SUJOY GHOSH
Sujoy Ghosh, a National Award-winning scriptwriter and director, has approached the SC challenging a Jharkhand HC order that refused to quash criminal proceedings against him under Section 63 of the Copyright Act, 1957. The case arose from a complaint filed by Umesh Prasad Mehta before the Chief Judicial Magistrate, Hazaribagh, alleging that Ghosh’s 2016 film Kahaani 2 infringed the copyright of his script Sabak.
Mehta claimed he shared Sabak with Ghosh in 2015, seeking a recommendation, and alleges that it was used to create the film. Ghosh denied the allegations, stating that he wrote and registered the Kahaani 2 script in 2013, before Mehta’s script, and never met or received anything from him. He further argued that the complaint is baseless and that the Magistrate’s summoning order was issued without comparing the two scripts or establishing a prima facie case.
The HC issued notice to the Jharkhand government and the complainant, seeking their response to Ghosh’s Special Leave Petition. The Court also granted Ghosh an exemption from personal appearance before the Magistrate in the ongoing proceedings.
1.Sujoy Ghosh v. State of Jharkhand SLP(Crl) No. 9452/2025)
PATENT
RECONSIDERATION OF TAIHO’S APPLICATION ORDERED
Taiho Pharmaceutical filed a suit before the Delhi HC challenging the Indian Patent Office’s (IPO) refusal of its patent application No. 7283/DELNP/2014, titled ‘Novel Piperidine Compound or Salt Thereof’, intended for use in anti-cancer therapy. The IPO had rejected the application, citing a lack of inventive step under section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act (Act). Taiho argued that the IPO failed to consider critical structural features and research data demonstrating enhanced efficacy and absorbability of the compound. Further, it also highlighted that the same compound had been granted patents in the US and Europe despite similar prior art.
The HC agreed with Taiho, stating that the IPO had not properly identified a “known substance” with “known efficacy” as required under Section 3(d) of the Act. It set aside the refusal order and remanded the matter back to the IPO for reconsideration, emphasizing the need for a clear and objective comparison with prior art under both Section 3(d) and the inventive step requirement under Section 2(1) (ja) of the Act.
1.Taiho Pharmaceutical v The Controller of Patents (CA (COMM IPD-PAT) 6/2022
PATENT
DELHI HC ORDERS DEPOSIT OF ₹290 CRORE AS SECURITY
Communication Components Antenna Inc. (CCAI), a Canadian company, filed a patent infringement suit before the Delhi HC against Ace Technology Corporation, a South Korean company, M/s. Shin Ah Ltd., a Hong Kong-based company, and their Indian subsidiaries are alleging infringement of its Indian Patent No. 240893. The patent pertains to antenna technology used in cellular base stations.
Following the conclusion of evidence, CCAI quantified its damages at ₹1,160 crore (USD 140 million) and sought security for the same, citing concerns over the enforcement of any future decree. Ace Technologies opposed the same and argued that the issue of infringement was not conclusively decided, and asserted its financial stability to satisfy any potential decree.
However, the Delhi HC rejected these objections, noting the absence of a reciprocal enforcement treaty between India and South Korea under Section 44A CPC, a 65% drop in Ace’s valuation, and its lack of active business in India. Exercising its inherent powers under Section 151 CPC, the Court directed Ace Technologies to deposit an additional ₹290 crore (approx. USD 35.5 million) pending final adjudication.
1.Communication Components Antenna Inc. v. ACE Technologies Corp. & Ors. CS (COMM) 1222/2018
GEOGRAPHICAL INDICATION
PIL SEEKS REFUND OVER PRADA’S ₹1.2 LAKH KOLHAPURI CHAPPALS
A public interest litigation has been filed in the Bombay HC seeking compensation for Indian artisans after luxury brand Prada showcased Kolhapuri-style sandals priced at ₹1.2 lakh in its Spring/Summer 2026 collection. Filed by IP advocate Ganesh Hingmire, the petition argues that Prada only acknowledged the traditional Indian design after social media backlash and that artisans deserve formal recognition, financial damages, and a court-monitored collaboration.
Kolhapuri chappals, which received Geographical Indication status in 2019, represent Maharashtra’s rich heritage and have public sentiment associated with them. While proving GI infringement may be difficult, the case raises broader concerns about cultural appropriation. The petition demands that international brands like Prada give due credit and financial benefit to local craftspeople when drawing from traditional Indian designs.
