TRADEMARK
THE HARPIC TRADE DRESS DISPUTE
Reckitt Benckiser (India) Pvt. Ltd., (Plaintiff) the manufacturer of the toilet cleaner “HARPIC”, filed a trademark infringement suit before the Calcutta HC against Godrej Consumer Products Ltd. (Defendant) alleging that the Defendant’s “Spic” toilet cleaner was being sold in a bottle whose shape and cap closely resembled the registered Harpic bottle. The Plaintiff argued that it owned trademark registrations covering the Harpic bottle and cap designs and that the Defendant had deliberately copied the trade dress and packaging, which could mislead consumers and amount to infringement of its trademarks. The Defendant however argued that the design protected as trademark for the Harpic bottle had already expired and that there was no exclusive trademark right over the bottle shape alone. It also contended that such bottle shapes are commonly used in the industry and therefore cannot be monopolised by a single company.
The Court after comparing the two products, found that the bottle shapes were strikingly similar and that the Plaintiff had established a prima facie case of trademark infringement, where the design of the product served as a trademark. Accordingly, the Court granted an ad-interim injunction restraining the Defendant from selling its “Spic” toilet cleaner in the infringing bottle shape. It further held that the expiry of design protection does not automatically prevent a party from claiming trademark rights over a registered shape if it functions as a source identifier.
1. Reckitt Benckiser (India) Private Limited v. Godrej Consumer Products Limited, IA NO. GA-COM/1/2026 IP-COM/3/2026
TRADEMARK
“TAJPURIYA” MARK REFUSAL SET ASIDE
M/s Ads Agro Industries Pvt. Ltd. (Appellant) filed an appeal before the Delhi HC challenging the refusal of its trademark application for the mark “TAJPURIYA” in Class 33 for alcoholic beverages. The Trademark Registry had initially objected to the mark in the Examination Report on the grounds that it appeared to have a geographical connection. The Appellant submitted a reply explaining that the mark had no geographical significance. However, at the refusal stage, the Registry rejected the application on a completely different ground, stating that “Tajpuriya” referred to a tribal community associated with alcohol consumption, and therefore the mark lacked distinctiveness. The Appellant argued that this new ground had never been raised earlier and that it was not given an opportunity to respond to it, which argument was upheld by the Delhi HC. The court further held that the refusal was improper because it violated principles of natural justice and hence Court directed the Trademark Registry to reconsider the application.
1.M/S Ads Agro Industries Pvt. Ltd. v. The Registrar of Trade Marks, C.A.(COMM.IPD-TM) 33/2024
TRADEMARK
COURT BARS “SUPER ASIAN PLUS” MARK
Asian Paints Limited (Plaintiff) filed a commercial suit before the Bombay HC against Smt. Manju Rani Jindal and others (Defendants) alleging trademark infringement and passing off arising from the use of their mark “SUPER ASIAN PLUS” for paints and related products. The Plaintiffs argued that it had long-standing rights in the well-known marks “ASIAN PAINTS” and “ASIAN,” which had acquired extensive goodwill and reputation through decades of continuous use. It contended that the Defendants had deliberately adopted a mark “SUPER ASIAN PLUS” in the same line of products to exploit this reputation and create confusion among consumers.
The Court held that the Defendant’s adoption of the mark was dishonest and intended to ride on the Plaintiff’s goodwill and that such use amounted to trademark infringement and passing off. Accordingly, the Court through an injunction, restrained the Defendants from using the mark “SUPER ASIAN PLUS” or any similar mark for paints or related goods. It also directed three of the Defendants to pay Rs. 3 lakh each as compensatory costs to the Plaintiff.
1.Asian Paints Limited v. Smt. Manju Rani Jindal & Ors., Commercial IP Suit No. 271 OF 2015
TRADEMARK
ZARA V. ZORA DISPUTE
Industria De Diseno Textil, S.A., (Appellant) the owner of the well-known fashion brand “ZARA” filed an appeal before the Delhi HC challenging the decision of the Registrar of Trade Marks (Respondent) that granted registration of the mark “ZORA” in Class 24 for textile goods. The Appellant argued that the mark “ZORA” was visually and phonetically similar to “ZARA” and that it could mislead consumers into believing that the products were associated with or originated from the original “ZARA” brand. It contended that the Registrar failed to properly assess the likelihood of confusion between the two marks. The Respondent maintained its decision stating that “ZORA” was a distinct word and that minor differences in spelling were “negligible”. Consequently, the Court observed that such similarity could lead to consumer confusion and directed the Registrar to re-examine the mark.
1.Industria De Diseno Textil, S.A v. Registrar of Trade Marks & Anr., C.A.(COMM.IPD-TM) – 52/2024
TRADEMARK
ZERODOL SECURES TM PROTECTION
IPCA Laboratories Ltd. (Plaintiff) filed a trademark infringement suit before the Bombay HC against Rikon Pharmaceuticals Pvt. Ltd. (Defendant) over the use of the mark “ZEKODOL-P” for pharmaceutical products. The Plaintiff argued that the mark was deceptively similar to its well-known registered trademark “ZERODOL,” used for pain-relief medicines and that such similarity in medicinal products could mislead consumers and prove dangerous. The Defendant despite being served summons failed to appear before the court leaving the proceedings uncontested.
Accordingly, the court granted a permanent injunction restraining the Defendants from using “ZEKODOL-P”. It further ordered the Defendant to pay Rs. 15 lakhs as costs to the Plaintiff.
1.IPCA Laboratories Limited v. Rikon Pharmaceuticals Pvt Ltd., Commercial IP Suit No. 218 of 2015
COPYRIGHT
NEWS REPORTINGS PROTECTED UNDER FAIR USE
Associated Broadcasting Company Ltd., (Plaintiff) which operates the TV9 Network, filed a suit before the Delhi HC against Google LLC and several foreign journalists (Defendants) after copyright infringement notices were issued against the Plaintiff’s news videos on YouTube. The Plaintiff contended that the extracts used by them were of limited duration and integrated into larger narrative programs rather than being broadcast on their own for commercial purposes, which it argued was protected under the legal doctrine of Fair Use. It also alleged that the Defendants issued copyright claims and threats without properly establishing infringement. The Defendants, did not defend the proceedings, resulting in the matter proceeding ex parte.
The Court held that the limited use of such clips in the course of news reporting fell within the scope of fair dealing and did not amount to copyright infringement. Subsequently, the Court restrained the Defendants from issuing further unwarranted copyright notices against Plaintiff’s content in relation to the disputed news videos.
1.Associated Broadcasting Company Limited v. Google LLC & Ors., CS(COMM) 9/2024
COPYRIGHT
COURT BARS UNLICENSED USE OF SOUND RECORDINGS
Phonographic Performance Limited (Plaintiff) approached the Bombay HC alleging copyright infringement of its collection of sound recordings by Yashraj Satwara (Defendant). The Plaintiff contended that it is the owner and exclusive licensee of copyright in various sound recordings and is solely entitled to grant licences for public performance and communication to the public. The Plaintiff submitted that the Defendant, who operates a café and rents out the premises for commercial events, organized a ticketed event titled “Bollywood Diwali Tamasha” where the Plaintiff’s copyrighted sound recordings were publicly played without obtaining the requisite licence. Further, despite the plaintiff sending a cease-and-desist, the Defendant allegedly continued to play the Plaintiff’s sound recordings in similar other events. The Defendant countered that the event constituted a private gathering which is exempted from the Copyright Act and also questioned the Plaintiff’s authority to issue licences on the ground that it was not functioning as a registered copyright society.
The Court held that the Plaintiff had prima facie established its rights in the sound recordings and that the Defendant’s acts constituted copyright infringement. Accordingly, the Court granted an ad-interim relief, restraining the Defendant and persons acting on its behalf from publicly performing the Plaintiff’s sound recordings, or permitting their premises to be used for such purposes, without obtaining a valid licence from the Plaintiff.
1.Phonographic Performance Limited v. Yashraj Satwara, IA (L) 4474/2026, Commercial IP Suit No. 4398/2026
PATENT
$2.25 BILLION SETTLEMENT IN COVID VACCINE PATENT DISPUTE
Arbutus Biopharma Corp. and Genevant Sciences (Plaintiffs) filed patent infringement suit against Moderna (Defendant) alleging that the Defendant’s COVID-19 vaccine “Spikevax” used their patented lipid nanoparticle (LNP) technology (which enables the delivery of mRNA into the human cells), without obtaining the necessary licence.
After years of litigation, the Defendant has finally agreed to settle the long-running patent dispute with the Plaintiffs. The agreement requires an initial payment of $950 million with an additional $1.3 billion contingent on the outcome of a separate legal appeal, bringing the total potential settlement value to $2.25 billion. Importantly, the settlement also ensures that the Defendant will not be required to pay future royalties for the use of the LNP technology in its current or upcoming vaccines.
