Intellectual Property

Recent Intellectual Property Case Laws in India: Key Developments

1. Sir Ratan Tata Trust & Anr. v. Dr. Rajat Shrivastava & Ors. [CS(COMM) 104/2025]:

Recent Intellectual Property Case Laws in India - Key Developments

The Delhi High Court recently instructed a journalist to refrain from organizing an award event under the name "Ratan Tata National Icon Award" or using the trademarks "Tata" and "Tata Trusts." The Delhi High Court issued the directive after Rajat Srivastava, the founder of Delhi Today Group, agreed to discontinue the use of Ratan Tata's name and not proceed with the event under his identity. The court noted that "Tata" is a well-known trademark and that the late Ratan Tata is a prominent public figure, warranting protection of his name. The court further emphasized that the defendant is not permitted to use the logo or any images associated with Ratan Tata and Tata Trusts. The ruling came in response to a lawsuit filed by Sir Ratan Tata Trust and Tata Sons Pvt Ltd, seeking to prevent the unauthorized use of their registered trademarks. Additionally, they sought for damages exceeding Rs. 2 crores for alleged harm to their reputation and goodwill. Read Here

2. Broad Peak Investment Holdings Ltd. v. Broad Peak Capital Advisors LLP [CS(COMM) 405/2024]:

The Delhi High Court recently rejected Broad Peak Investment Holdings Limited’s (“Plaintiff”) request for interim relief in a case where it alleged trademark infringement and passing off of its trade mark (“BROAD PEAK Mark”) by Broad Peak Capital Advisors LLP (“Defendant”). The Court stated that the occasional or sporadic use of a trademark is insufficient to demonstrate brand recognition. While the Plaintiff asserted that it had been using the BROAD PEAK Mark since 2006, specifically in India since 2008, the High Court noted that when the Plaintiff obtained the

trademark registration for BROAD PEAK in India in 2017, it had filed the application on a "proposed to be used" basis, stating that it was unable to trace records of earlier use at the time of filing the trademark application. However, these documents were located subsequently and showed that the Plaintiff had been using the BROAD PEAK Mark since 2008. On the other hand, the Defendant contended that it had adopted the BROAD PEAK mark in an honest manner and had been using it extensively since 2016, as it also formed part of its trading name. The Defendant also contended that it obtained trademark registration for its BROAD PEAK mark in 2017, based on a user claim from August 2016. The High Court observed that the Plaintiff’s trademark application in India was filed after the Defendant had already begun using the mark in the country. Since the Plaintiff’s registration was obtained on a "proposed to be used" basis and had not been amended to reflect prior usage, the High Court inferred that the Plaintiff effectively admitted to not using the mark in India before 2017. As a result, the High Court decided that the Defendant’s use of the BROAD PEAK mark did not constitute trademark infringement. Further to this, the High Court also stated that as per the Trade Marks Act, 1999, where two proprietors hold valid registrations for identical trademarks, a case of infringement cannot be made out. Additionally, the Hight Court found that the Plaintiff’s evidence of prior use in India was minimal, comprising only a few transactions, which failed to establish substantial goodwill or reputation in the Indian market. Furthermore, the fact that the Plaintiff may be a well-known entity internationally does not automatically imply that they have accumulated goodwill or reputation in India due to a spillover effect. In contrast, the Defendant successfully demonstrated its honest adoption of the mark in 2016. Regarding the issue of consumer confusion, the High Court stated that since both parties target a sophisticated customer base, which can reasonably be expected to be literate and aware, the likelihood of confusion is highly unlikely. Read Here

3. FMI Limited v. Midas Touch Metalloys Pvt. Ltd. [CS(COMM) 721/2024]:

The Delhi High Court has granted a permanent injunction in favor of FMI Limited (“Plaintiff”), a prominent manufacturer of measuring tapes, prohibiting Midas Touch Metalloys Pvt. Ltd. (“Defendant”) from using a trademark similar to "INDI”, namely, "INDEED" for its measuring tapes. The Plaintiff has been operating under the "INDI" trademark since 2015. The Plaintiff claimed that in July 2024, the Defendant introduced a line of measuring tapes under the deceptively similar mark "INDEED". The Plaintiff also highlighted that, along with the adoption of the similar mark, the Defendant also adopted an identical trade dress featuring the blue-and-white color scheme. The High Court emphasized that the Defendant's adoption of the mark “INDEED” and the blue-and-white color combination was intentional and misleading. The High Court noted that the competing marks are phonetically, visually, and structurally similar, and both parties are selling identical goods through overlapping trade channels, which are likely to mislead and deceive consumers. Given the striking resemblance between the marks and the identical nature of the products, the High Court concluded that the Defendant’s use of "INDEED" was likely to create confusion among consumers. Read Here

4. Charanjit Singh v. Pravinder Pal Singh [TM-99/2018]:

The Saket District Court, Delhi addressed a dispute involving the alleged infringement of the "BASANT" trademark. The plaintiff claimed exclusive rights over the BASANT mark in relation to all kinds of ice cream, Kulfi, ice cream powder, etc. due to the use of the trade mark for over 60 years. The plaintiff instituted the present suit for permanent injunction against the

defendant after coming to know that the defendant has adopted the conflicting mark ‘PAL BASANT’, that too for ice cream products, on the grounds that such adoption amounted to trademark infringement, passing off as well as violation of the common law rights vested in the plaintiff’s BASANT mark which has come to be solely associated with the plaintiff’s business given the long standing use. The District Court decided in favour of the plaintiff by relying on the established principles of trademarks law, briefly stated below:

a) Likelihood of confusion: Trademark infringement occurs if a consumer, even without directly comparing the two marks side by side, is momentarily confused upon seeing the defendant's mark. If an average person with an imperfect memory hesitates or wonders whether the defendant's mark is the same as or connected to the plaintiff's mark they saw earlier, that is enough to establish infringement. b) Adoption of the Prominent feature: The court ruled that if a defendant uses a key word from the plaintiff’s trademark in their label or logo, it amounts to infringement. Applying this principle to the current case, the court found that the defendant's use of the mark "PAL BASANT" was deceptively similar to the plaintiff’s registered trademark "BASANT." The defendant’s use of "PAL BASANT" clearly infringes upon the plaintiff’s mark, as both brands sell the same type of products and share the same customer base. The defendant deliberately added "PAL" before the well-recognized "BASANT" mark, which could easily mislead consumers into thinking it is connected to the plaintiff’s brand. c) Triple Identity Test: the triple identity test or the trinity test refers to determining infringement action based on the premise where two conflicting marks are visually similar, applied for similar goods and also share the common trade channels. In the present case, the District Court found that the subsequently adopted PAL BASANT mark fulfilled the said test and thus, the plaintiff was entitled to the relief of infringement and passing off against the defendant.

5. Aktiebolaget Volvo & Ors. v. R. Venkatachalam and Anr. [CS (COMM) 346/2018]:

In the present case before the Delhi High Court, the dispute revolved around the trademarks PENTA and VOLVO PENTA, which were registered in 1913 and in use since 1964 by Aktiebolaget Volvo (“Plaintiff”), and subsequently, the Plaintiff came to know that the defendants had applied for the mark ‘PENTA’ for similar goods.

Foremost, the defendants had disputed the validity of the PENTA mark registered in the name of the Plaintiff, and this contention was promptly rebuked by the High Court which said that validity of registration can only be entertained in rectification proceedings and not by way of a suit. Further, even if the High Court was to entertain the said question of validity, the defendants did not follow the due process of law to apprise the High Court before raising this contention, which the defendants ought to have raised before the stage of final arguments.

Deciding in favour of the Plaintiff, the High Court made the following observations:

a) The defendants cannot claim that the PENTA mark is generic when the defendants themselves were claiming exclusive rights of the trade mark. This conclusion was drawn following the flow of reasonability, basis which the High Court said that the defence by the defendants that the PENTA mark is generic is rather arbitrary. b) The greater the similarity in the marks, lesser the similarity is required in the goods or services of the parties to support a finding of likelihood of confusion

6. IMS Learning Resources Pvt. Ltd. v. Young Achievers [CS(COMM) 602/2018]:

In the present case before the Delhi High Court, the dispute revolved around the trademark “IMS”. The defendant, Young Achievers (“Defendant”), a coaching centre, continued to use the "IMS" mark even after the service provider agreement between the parties was mutually

rescinded. Under the agreement, the Plaintiff, IMS Learning Resources Pvt. Ltd. ("Plaintiff"), had granted the Defendant permission to use the "IMS" mark, which was registered in the Plaintiff’s name.

While the High Court determined that the Plaintiff was the rightful proprietor of the IMS mark, it also held the Defendant liable for trademark infringement, passing off and diluting the Plaintiff’s IMS mark on the following broad grounds:

a) That the Defendant came to be associated with the Plaintiff’s business only after being provided the licence to use the IMS mark; b) That the Defendant misappropriated the IMS mark and portrayed the same to be an indicator of its own business by way of advertisements and promotions; c) That the IMS mark was a prominent element of the Plaintiff’s brand and the Defendant had misappropriated the IMS mark in its entirety, and upon termination of the service provider agreement, was using the IMS mark in its independent capacity. It was particularly noted that such misappropriation came to be only upon cessation of the agreement and therefore, prima facie established the Defendant’s intention to take advantage of the Plaintiff’s goodwill and reputation; and d) The High Court also noted that the IMS mark is not common to trade and traced its origination to the Plaintiff, therefore, the Defendant had no justification to adopt the IMS mark except the malicious intent to ride on the Plaintiff’s goodwill and reputation, ultimately leading to dilution of the IMS mark.

7. KRBL Limited vs. Praveen Kumar Buyyani & Ors. [FAO (COMM) 24/2024]:

The Delhi High Court ruled in favor of KRBL Limited (“Appellant”) in a trademark dispute concerning the rice brands “INDIA GATE” and “BHARAT GATE”. The High Court

determined that the two marks share phonetic similarities, leading to a clear case of trademark infringement. The High Court stated that the BHARAT GATE mark directly infringes upon the Appellant’s INDIA GATE mark. Since both marks are used for rice and the words "Bharat" and "India" convey the same meaning, the High Court held that the ‘triple identity test’, i.e., the similarity of trade marks, goods and trade channels, was satisfied. The Court emphasized the high likelihood of consumer confusion and the wrongful association that could arise due to the deceptive similarity between the two marks. The Appellant has held the registration for the "INDIA GATE" mark since 1993 and has been using it for rice products since that time. The respondents later began selling rice under the BHARAT GATE mark, prompting the Appellant to file a lawsuit in the Commercial Court, seeking a permanent injunction to prevent the respondents from using the infringing BHARAT GATE mark. In 2020, the Commercial Court issued an interim injunction in favor of the Appellant, restricting the respondents from using the infringing mark for rice or any similar product. However, in 2024, when matter was being adjudicated, the Commercial Court vacated the injunction, leading to the present appeal. The High Court, considering these facts, reaffirmed the principle that trademark infringement should be assessed from the viewpoint of an average consumer with imperfect recollection. It stated that the likelihood of confusion among consumers is sufficient grounds for infringement, even if they do not explicitly mistake one brand for the other. Beyond the phonetic similarities, the High Court noted that the Respondents had clearly attempted to imitate the "INDIA GATE" brand, especially by incorporating an image of the India Gate monument on their packaging. This, the High Court found, established a prima facie case of malicious intent. The High Court highlighted that "India Gate" is widely recognized as a reference to a significant national monument in Delhi, whereas "Bharat Gate" holds no independent meaning other than being a derivative of "India Gate." Pertinently, the High Court observed that the use of the term "Bharat" was merely an attempt to evade allegations of imitation. Based on these findings, the High Court concluded that there was no plausible justification for the respondents' choice of the BHARAT GATE mark when INDIA GATE was already a well-

known brand. Thus, the only reasonable explanation was to benefit from the reputation of the Appellant’s brand. The High Court also stated that when there is a clear intent to imitate and mislead, it should be presumed that the deception is effective. Also, since both products catered to the same consumer segment, the likelihood of confusion was significant.