In a recent decision of significance to the pharmaceutical industry, the Bombay High Court was called upon to resolve a trademark dispute between Sun Pharma Laboratories Limited and United Biotech Private Limited concerning the competing marks OCTRIDE and OTIDE. The case presented an intersection between statutory trademark rights and the common law remedy of passing off, in the context of pharmaceutical products where the threshold for confusion is considerably lower owing to public health concerns.

While the Plaintiff relied on its registered trademark rights and longstanding reputation in the mark OCTRIDE, the Defendant asserted its own registration and prior adoption of the mark OTIDE. The Court was required to determine whether the Plaintiff was entitled to continue enjoying interim protection despite the Defendant being the registered proprietor of the impugned mark.

Background

Sun Pharma Laboratories Limited, the Plaintiff, traced its rights in the trademark OCTRIDE to 1998 through its predecessor-in-title. The mark is used in relation to medicinal preparations containing the active pharmaceutical ingredient, Octreotide Acetate, which is prescribed for the treatment of acromegaly, carcinoid tumours, bleeding oesophageal varices, and certain pancreatic conditions.

The Plaintiff contended that it adopted the mark OCTRIDE after discontinuing its earlier mark OCTIDE and obtained registration claiming use since September 1998. It asserted that continuous sales, extensive promotional efforts, and prolonged market presence had generated significant goodwill and reputation in the OCTRIDE mark.

The dispute arose when the Plaintiff discovered in June 2025 that United Biotech Private Limited was manufacturing and exporting pharmaceutical products under the mark OTIDE to Myanmar. Investigations revealed that the Defendant held registrations for OCTIDE and OTIDE, with the latter having been applied for in December 2003 claiming use since January 1999.

They contended that the Defendant’s registrations were invalid and had been procured despite the existence of the Plaintiff’s earlier rights. It therefore sought injunctive relief and challenged the Defendant’s use of the impugned mark.

The Defendant contended that it honestly adopted the mark OTIDE in 1999 from the INN Octreotide and had used it continuously for over two decades. It argued that both marks were derived from the generic molecule name and, therefore, no party could claim exclusive rights over any part of the molecule name.

The Defendant alleged that the Plaintiff had suppressed material facts, as both products had been referenced in medical literature and listed as substitutes on online pharmacy platforms since at least 2010, thereby rendering the Plaintiff’s claim of discovering the Defendant’s use only in 2025 implausible.

Rival Contentions

The Plaintiff argued that the dispute was confined to OCTRIDE and OTIDE, since neither party had commercially used the mark OCTIDE. It submitted that the Defendant was aware of the Plaintiff’s rights because the Plaintiff’s earlier OCTIDE registration had been cited during examination of the Defendant’s trademark application.

The Plaintiff relied on sales figures, invoices, promotional materials, licences, annual reports, and a Chartered Accountant’s certificate to establish extensive use and goodwill in the OCTRIDE mark. It further contended that the shared active ingredient did not negate the likelihood of confusion, especially in the pharmaceutical industry where even minor confusion could have serious consequences.

The Defendant contended that OTIDE was a registered trademark entitled to statutory protection and that an infringement action was not maintainable against a registered proprietor. Moreover, both marks were derived from the generic molecule Octreotide and were visually, structurally, and phonetically distinct.

The Defendant challenged the Plaintiff’s claim of goodwill, asserting that it had failed to establish reputation prior to the Defendant’s adoption and use of OTIDE. It argued, relying on medical literature and online pharmacy listings, that the Plaintiff had long been aware of the Defendant’s activities and had approached the Court with unclean hands.

Court’s Analysis

At the outset, the Court clarified that the controversy was not concerned with OCTIDE. Although both parties had registrations involving that mark, neither had commercially exploited it. The real dispute, therefore, was between OCTRIDE and OTIDE.

The Court rejected the Plaintiff’s attempt to rely upon the lapsed OCTIDE registration to strengthen its infringement claim. Since the registration had expired in 2008 and had never been commercially used, it could not materially assist the Plaintiff’s case.

The Court also observed that the Defendant held a valid registration for OTIDE. Consequently, any infringement claim against the Defendant would require the Plaintiff to satisfy the stringent standard that the Defendant’s registration was ex facie illegal, fraudulent, or so improper as to shock the conscience of the Court.

The Court held that the Plaintiff failed to establish a prima facie case of infringement. It found that the citation of the Plaintiff’s OCTIDE mark during examination of the Defendant’s application was insufficient to demonstrate fraud or illegality in the Defendant’s OTIDE registration, particularly as no rectification proceedings had been initiated against the registration.

Passing Off:

The Court reiterated that a passing-off action depends upon the existence of goodwill, misrepresentation, and resulting damage. Importantly, goodwill must be assessed as of the date when the Defendant commenced use of the impugned mark.

The Court found OCTRIDE and OTIDE to be phonetically similar when considered as a whole and rejected a fragmented comparison of the marks. Emphasising the heightened standard applicable to pharmaceutical trademarks, the Court observed that even a possibility of confusion was sufficient, given the nature of medicine purchases and the likelihood of imperfect pronunciation.

The Court emphasised that both marks were derived from the molecule Octreotide Acetate and that the Defendant could have adopted a mark far removed from the Plaintiff’s mark to avoid confusion and deception.

On the question of goodwill, the Court found that the Defendant had failed to substantiate its claim of use since 1999. The earliest reliable evidence produced by the Defendant was an invoice dated August 2006. Accordingly, 2006 was treated as the relevant date for assessing the Plaintiff’s goodwill.

Although the Court did not accept the Plaintiff’s packaging photographs as evidence of use, it held that the 1998 drug launch approval and the 2014 Chartered Accountant’s certificate constituted sufficient prima facie proof of continuous sales and market presence of the OCTRIDE mark since 1999.

The Court found the comparative sales figures significant, noting that the Plaintiff’s turnover of approximately ₹7 crores in 2006–07 far exceeded the Defendant’s turnover of approximately ₹27 lakhs, thereby indicating that the Plaintiff had acquired substantial goodwill and reputation before the Defendant established use of OTIDE.

Conclusion

The Bombay High Court ultimately drew a distinction between the Plaintiff’s infringement and passing-off claims. While the Court declined to disregard the Defendant’s statutory registration and found the infringement case weak, it concluded that the Plaintiff had established a strong prima facie case of passing off.

Given the phonetic similarity between OCTRIDE and OTIDE, the Plaintiff’s prior goodwill, and the heightened standard applicable to pharmaceutical products, the Court held that continued use of the impugned mark was likely to cause confusion and damage the Plaintiff’s reputation. The balance of convenience therefore favoured the Plaintiff, and the interim injunction was confirmed on the basis of passing off.

The decision serves as an important reminder that even where a defendant enjoys statutory trademark registration, the common law remedy of passing off may continue to provide effective protection to a prior user with established goodwill, particularly in the context of pharmaceutical trademarks.

Background

Imagine teaching a machine to paint like Raja Ravi Verma, write like Arundhati Roy, or compose music in a style reminiscent of A.R. Rahman. To achieve that, the machine must absorb thousands of hours of music, millions of pages of text, and vast collections of visual art. This is the central reality of generative AI. It also brings us to one of the most consequential legal questions of our time: can AI models lawfully train on copyrighted material without the creator’s permission?

For several years, this issue appeared to be a remote controversy unfolding primarily before courts in the United States and Europe. That is no longer so. With the Delhi High Court having reserved judgment in ANI Media Pvt. Ltd. v. OpenAI, India’s first significant AI-copyright dispute, the question has now come squarely before Indian courts. The Court’s decision is likely to play an important role in shaping the initial contours of India’s approach to AI regulation and copyright policy. It will indicate whether India is prepared to leave the matter largely to market forces and litigation, or whether legislative intervention will be needed to redraw the boundaries of creativity and technological development.

The Global Playbook: How Other Jurisdictions Are Responding

To understand why the decision in ANI v. OpenAI matters, it would be useful to begin with the approaches emerging in other parts of the world:

1. United States: the “fair use” argument. Technology companies in the US rely heavily on the flexible doctrine of ‘fair use’. Their position is that AI training is transformative, comparable to a person reading books in order to learn how to write. Creators, unsurprisingly, characterize the same process as large-scale unauthorized copying.
2. European Union: the “opt-out” model. European frameworks have leaned toward text and data mining exemptions. In practical terms, AI developers may scrape material unless rights holders take affirmative technical steps to opt out.
3. Japan: the “AI-friendly” model. Japan has taken perhaps the most generous view of AI training. Its copyright law broadly allows works to be used for information analysis, including text and data mining, so long as the AI developer is not trying to enjoy or reproduce the creative expression in the work. In simple terms, Japan treats AI training more like machine reading than human copying, while still leaving room to object where the use unfairly harms rights holders or results in substitutional reproduction.
4. India: the “evolving model”. India’s position is still evolving. Unlike the US, India does not have a broad, open-ended fair use doctrine; it relies instead on the narrower concept of fair dealing. This means that mass scraping of copyrighted works for commercial AI training does not comfortably fit within any existing exception. The result is legal uncertainty: AI developers need clarity to innovate, while creators and publishers want assurance that their work will not be absorbed into training datasets without consent or compensation.

The Dispute Before the Delhi High Court

In ANI v. OpenAI, news agency ANI alleged that OpenAI unlawfully scraped and used its journalistic archive to train large language models. OpenAI’s defence follows a familiar pattern. It argues that it relied only on publicly available material, that its systems process facts rather than protected expression, and that ANI’s domain has since been blocked from future scraping.
The hearings, however, exposed how difficult it is to apply twentieth-century copyright concepts to twenty-first-century AI systems. Three issues stand out in particular:

1. Transient storage. Indian copyright law recognizes limited protection for temporary technical copies created during transmission. While, OpenAI argued that its processing falls within this safe zone, the Publishers and intervenors, including the Digital News Publishers Association, argued that storing vast volumes of content during pre-training is neither temporary nor incidental, but a form of large-scale infringement.
2. Facts versus expression. OpenAI maintained that its models merely learn statistical relationships between words, much as humans learn by reading. ANI, by contrast, has pointed to instances of apparent memorization in which copyrighted news content was reproduced almost verbatim, potentially bypassing paywalls and reducing traffic to the original publisher.
3. Reputational harm. ANI also emphasized hallucinated outputs falsely attributed to it. This argument broadens the dispute beyond copyright and suggests that flawed or unauthorized data inputs may also affect reputation, credibility, and brand value.

The Policy Turn: Could Compulsory Licensing Be the Answer?

The ANI litigation has highlighted sharply different views on whether machine learning amounts to copyright infringement. That uncertainty has pushed policymakers to consider structural solutions rather than leaving the entire question to case-by-case adjudication. Against this backdrop, the Department for Promotion of Industry and Internal Trade (DPIIT) has reportedly floated an alternative: a compulsory licensing framework for AI training data.

The idea is to avoid two extremes: unrestricted scraping on the one hand, and impractical one-to-one negotiations with every rights holder on the other. A statutory framework could create a regulated middle path. Under such a model, AI developers would receive a legal right to use proprietary datasets for training without prior permission but would be required to pay regulated royalties to the relevant rights holders in return.

The Core Tension: Innovation Versus Creative Autonomy

This proposal has divided stakeholders into two broad camps:

1. The innovation-first view. Supporters of broader access argue that without affordable access to local and culturally relevant datasets, Indian startups will struggle to build truly domestic AI systems. If licensing costs are too high, only large multinational players may remain competitive.
2. The creator-rights view. Publishers, authors, musicians, and other rights holders respond that compulsory licensing undermines a fundamental aspect of ownership: the right to refuse. For many creators, being compelled to license their works to technologies that may eventually compete with them is not a compromise, but a forced surrender.

Moving Forward: Designing India’s Hybrid Path

India’s copyright framework was designed for a world in which humans used computers as tools, not for one in which generative systems ingest and recombine enormous bodies of creative material. That mismatch is now impossible to ignore. India’s long-term solution is unlikely to lie in simply importing Western models. A blunt compulsory licensing regime could dilute creator control, while an overly rigid prohibition could choke domestic innovation before it matures. A more balanced framework, in our view, may combine mandatory transparency obligations, clear disclosure of training datasets, and a functioning market for voluntary commercial licensing. Such an approach is likely to better align innovation incentives with the legitimate interests of creators.

The Delhi High Court’s recent judgment (Laksh Vir Singh vs. Union of India ) on the Right to be Forgotten marks a significant step in India’s privacy jurisprudence, especially in the context of digital accessibility and online discoverability. More importantly, it moves the doctrine beyond piecemeal recognition and lays down a structured framework for de-indexing and masking judicial records as part of the constitutional right to privacy under Article 21.

The judgment, while strengthening privacy protection in the digital age, also raises a harder question: who should apply this framework in practice? That question links the entire debate. Recognising the right is one thing; applying it consistently across the internet is quite another.

The Right to be Forgotten: Not a Right to Erase History

At the heart of the judgment lies an important clarification: the Right to be Forgotten is not a right to erase history. The Court instead tries to reconcile privacy with open justice by preserving the record while limiting the harm caused by unrestricted digital access.

The Court’s solution is to preserve the record while limiting its discoverability. Rather than directing wholesale deletion of judicial records, it treats de-indexing as a proportionate remedy. The judgment remains part of the public record, but its visibility through simple name-based searches is reduced. What the Court endorses, therefore, is not erasure but digital obscurity: the information still exists, but it is no longer made disproportionately visible to anyone who types a name into a search bar.

When Should Privacy Give Way to Public Interest?

The harder question is where privacy yields to public interest. The Court attempts to structure future de-indexing requests by identifying factors that should guide the inquiry: a) the nature of the information, b)the extent to which continued accessibility serves a legitimate public interest, and c) the effect of that accessibility on the individual’s privacy, dignity and reputation. That framework is sensible, but applying it will rarely be straightforward. The court opined that the same information may justify continued visibility in one case and de-indexing in another. Public interest, moreover, is not the same as public curiosity; continued discoverability may be justified where transparency serves accountability, consumer protection or the integrity of judicial proceedings.

This is the judgment’s central insight. Privacy and open justice are not opposing absolutes. Judicial records may remain publicly accessible while no longer being instantly and indefinitely discoverable through search engines. But once we accept that distinction, the next question becomes unavoidable: who should decide when visibility crosses the line?

The Evolving Role of Search Engines

That question becomes sharper in the context of search engines. Perhaps the most consequential part of the judgment is its treatment of them. Its reliance on Google Spain signals a clear departure from the traditional view of search engines as passive conduits. Search engines do not merely reflect information already online; they structure, rank and amplify it. By adopting that logic, the Delhi High Court shifts attention from publication to discoverability. The privacy concern, in other words, lies not only in the existence of information online, but in the role played by search engines in making that information easily and persistently retrievable.

That shift matters because discoverability itself can cause harm. In many cases, the injury does not arise from the existence of information online, but from the ease with which it can be located, aggregated and resurfaced. Once that is accepted, indexing and ranking are no longer merely technical functions; they become part of the legal architecture of visibility and privacy.

The Real Implementation Problem

Once discoverability is recognised as the source of harm, the court noted that the institutional problem comes into focus. Who should apply this balancing exercise? Determining whether information continues to serve a legitimate public interest requires a nuanced assessment of competing constitutional values.

Search engines are not courts. They are neither designed nor institutionally equipped to assess privacy, rehabilitation, reputational harm and public interest in the way courts do. That difficulty becomes sharper when the inquiry turns on concepts such as relevance, obsolescence and continuing public interest, all of which are contextual and may change over time.

The problem, then, is not simply identifying the relevant factors but deciding who should apply them. Questions of public interest, reputational harm and continuing relevance have traditionally been resolved by courts, not private platforms. Requiring intermediaries to engage in the same exercise risks blurring the line between implementing judicial directions and performing judicial functions. The real issue, as per the judgment, is not merely what the balancing factors are, but who should apply them.

Implementation also presents serious practical difficulties. The same information often appears across multiple websites, legal databases, news reports, blogs and social media platforms. Removing or de-indexing one link does not make the information disappear. De-indexing one URL does not prevent substantially similar material from remaining accessible elsewhere. Its effectiveness, therefore, depends on identifying and addressing repeated instances of the same information across a dispersed digital ecosystem, particularly where third-party publishers, archives and databases have reproduced it.

What Happens in an AI-Driven Search World?

These concerns of accessibility of does do not end with conventional search engines. They are likely to intensify in an AI-driven information environment, where online retrieval is increasingly shaped by systems that generate summaries, synthesise sources and produce direct answers to user queries.

Even where specific URLs are de-indexed, AI systems may continue to retrieve, recombine and reproduce information drawn from publicly available sources. If de-indexing is already difficult in the context of conventional search, it will become far more complex in systems that do not merely point users to content but restate and repackage it.

Conclusion

The judgment is likely to become a key reference point for future Right to be Forgotten claims in India. By recognising de-indexing and masking as constitutionally permissible remedies, the Court has offered a serious and workable attempt to reconcile informational privacy with open justice.

The long-term significance of the judgement, however, will depend less on recognition in principle than on enforceability in practice. The real test is whether courts can develop administrable standards without effectively outsourcing constitutional balancing to private intermediaries. The judgment offers an important framework, but the future of the right will turn on how that framework is applied in an increasingly complex information ecosystem.

A significant trademark dispute concerning medicinal products came before the Delhi High Court, involving two major pharmaceutical companies and raising important questions regarding deceptive similarity, dishonest adoption, prior user rights, and pharmaceutical trademark protection. The Plaintiff, Sanofi, proprietor of the anti-thrombosis drug sold under the mark PLAVIX, instituted proceedings against Intas Pharmaceuticals Ltd. and its affiliates alleging trademark infringement, passing off, and seeking damages arising from the Defendants’ use of the mark CLAVIX.

The dispute centred around whether the Defendants’ use of CLAVIX for medicinal preparations containing Clopidogrel bisulphate infringed the Plaintiff’s statutory rights in PLAVIX. The case also gave the Court an opportunity to reiterate the stricter standards applicable in pharmaceutical trademark disputes, where even minor similarities between competing marks may endanger public health.

Background of the Dispute

Sanofi is a globally recognized pharmaceutical company engaged in the research, development, manufacture, and sale of medicinal products worldwide, including in India. One of its prominent products is the anti-thrombosis drug sold under the mark PLAVIX, prescribed for prevention of heart attacks and strokes. According to the Plaintiff, the mark PLAVIX was coined in 1995 and is an invented and inherently distinctive expression having no direct reference to either the active ingredient or the ailment treated by the drug.

The Plaintiff asserted that registrations for the word mark PLAVIX and its corresponding device mark had been obtained in Class 5 and continued to remain valid and subsisting. The drug was launched internationally in 1998 and introduced in India in January 2003. Owing to extensive worldwide sales, promotional activities, medical journal references, and internet visibility, the Plaintiff claimed that the mark had acquired substantial goodwill and reputation globally.

The dispute arose when the Plaintiff discovered in 2005 that the Defendants were manufacturing and marketing pharmaceutical products under the mark CLAVIX. It was subsequently found that the Defendants had also applied for registration of the impugned mark in Class 5 before the Trademarks Registry, which application was opposed by the Plaintiff.

Defendants’ Stand

The Defendants denied infringement and claimed independent adoption of the mark CLAVIX in 2001. According to them, the mark had been coined using components associated with the drug and its therapeutic indication. They contended that “CL” was derived from Clopidogrel, “AVI” from “Atherosclerotic Vascular Incidences,” while the letter “X” indicated reduction in recurrence of acute events.

The Defendants further argued that they had obtained the necessary manufacturing approvals in June and July 2001 and had continuously used the mark since then. Owing to prolonged use, extensive sales, and promotional expenditure, the Defendants claimed that CLAVIX had acquired goodwill and distinctiveness in the market.

Additionally, the Defendants invoked the defence of prior use under Section 34 of the Trademarks Act, 1999, contending that they had commenced use of CLAVIX in India prior to the Plaintiff’s launch of PLAVIX in India in 2003.

Findings of the Court

The Delhi High Court held that the Plaintiff had successfully established proprietorship over the marks PLAVIX and its device mark through documentary evidence and legal proceeding certificates.

Upon comparison of the competing marks, the Court concluded that CLAVIX was phonetically, visually, and structurally similar to PLAVIX. The only distinction between the two marks was the substitution of the letter “P” with the letter “C.” Since both marks were used in relation to identical pharmaceutical products containing the same active ingredient and intended for treatment of the same ailment, the possibility of confusion among consumers was considered extremely high.

The Court emphasized that medicinal products require a stricter standard while assessing deceptive similarity because confusion between pharmaceutical products may have serious health consequences.

Dishonest Adoption

A major aspect of the judgment was the Court’s finding of dishonest adoption. The explanation offered by the Defendants regarding derivation of the mark CLAVIX was found to be unconvincing. The Court noted that the expression “Atherosclerotic Vascular Incidences” had no recognized basis in medical literature and rejected the Defendants’ explanation regarding the significance of the letter “X.”

The Court also took note of the fact that the Defendants were already marketing the same drug under different marks such as PREVA and PRASUGEL. In these circumstances, there appeared to be no bona fide justification for adopting a mark so closely resembling PLAVIX.

The Court observed that a major pharmaceutical company would ordinarily conduct a basic trademark search before launching a medicinal product. The Court therefore found it implausible that the Defendants were unaware of the internationally marketed drug PLAVIX at the time of adoption of CLAVIX. Consequently, the Court concluded that the adoption of the impugned mark was dishonest and intended to ride upon the Plaintiff’s reputation.

Section 34 Defence Rejected

The Defendants attempted to invoke Section 34 of the Trademarks Act, which protects a prior user against claims of infringement. However, the Court clarified that protection under Section 34 is available only where the defendant’s use predates both the registration and use of the plaintiff’s mark, whichever is earlier.

Although the Defendants claimed use of CLAVIX since 2001, the Plaintiff’s registrations for PLAVIX dated back to 1995 and 1998. Accordingly, the Defendants failed to satisfy the statutory requirements necessary to invoke Section 34. The Court further held that a party guilty of dishonest adoption cannot seek equitable protection under the provision.

Passing Off Claim Fails

While the Plaintiff succeeded on infringement, the Court reached a different conclusion with respect to passing off. The Plaintiff attempted to establish trans-border reputation and goodwill in India through brochures, promotional materials, medical publications, and internet extracts. However, the Court found that the evidence did not sufficiently establish that PLAVIX had acquired substantial goodwill or reputation in India by 2001, when the Defendants launched CLAVIX.

Although certain doctors and hospitals in India had prescribed PLAVIX prior to its official launch in India in 2003, the Court held that such isolated instances only demonstrated sporadic awareness and not significant market reputation in India. Consequently, the Plaintiff failed to establish the necessary ingredients of passing off.

Delay and Damages

The Defendants also argued that the suit suffered from delay and laches. This contention was rejected by the Court, which observed that the Plaintiff became aware of the Defendants’ use of CLAVIX only in 2005 and instituted the suit within a reasonable period thereafter in 2008.

With respect to damages, the Court held that the Plaintiff failed to establish actual loss suffered by it or unlawful profits earned by the Defendants. Since damages cannot be awarded on speculative calculations, the claims for rendition of accounts and actual damages were rejected.

Nevertheless, considering the findings of trademark infringement and dishonest adoption, along with the fact that the Defendants had continued selling CLAVIX during the pendency of the suit owing to absence of an interim injunction, the Court awarded nominal damages of ₹20 lakhs to the Plaintiff.

Conclusion

In conclusion, the Delhi High Court decreed the suit in favour of the Plaintiff and permanently restrained the Defendants from manufacturing, selling, or dealing in pharmaceutical products under the mark CLAVIX or any deceptively similar mark amounting to infringement of the Plaintiff’s registered trademark PLAVIX.

The judgment serves as another important reaffirmation of the heightened threshold applied in pharmaceutical trademark disputes and underscores the judiciary’s continued emphasis on consumer safety, honest adoption, and protection of statutory trademark rights in the medicinal sector.

The Delhi High Court recently delivered a ruling concerning the intersection of trademark and copyright law while adjudicating a petition filed by Fortune Marketing Private Limited seeking cancellation of a copyright registration granted in favour of Gujarat Pesticides for the artistic work “ZOOOK.” The case raised significant questions regarding the extent to which copyright registration can affect pre-existing trademark rights and the circumstances in which a trademark proprietor may seek rectification of the Copyright Register under Section 50 of the Copyright Act, 1957.

Background

Fortune Marketing claimed to be the prior adopter and registered proprietor of the trademark “ZOOOK,” which it has used continuously since 2013 in relation to electronic products falling under Class 09. According to the company, “ZOOOK” is a coined and distinctive mark that has acquired substantial goodwill and recognition through extensive commercial use, advertising, and promotional activities.

The petitioner has invested significantly in promoting the brand through television advertisements, print campaigns, digital media, celebrity endorsements, and sponsorship of major cricketing events. It also operates the domain name “zoook.com,” registered since 2011, and markets its products extensively through online and social media platforms. Owing to these efforts, the petitioner contended that the ZOOOK brand has become associated with its business both in India and internationally.

The dispute originated in January 2020 when Fortune Marketing discovered that Gujarat Pesticides had filed a trademark application for the mark “ZOOOK” in Class 01. The petitioner opposed the application, which was eventually withdrawn after Gujarat Pesticides failed to prosecute the same. Subsequently, Gujarat Pesticides filed fresh applications for both the ZOOOK word mark and a label mark in Class 01. Fortune Marketing opposed these applications, and the proceedings are ongoing before the Trademark Registry.

The dispute escalated in May 2024 when the petitioner discovered that Gujarat Pesticides had secured copyright registration for a packaging label incorporating the mark “ZOOOK.” Fortune Marketing alleged that the impugned artistic work reproduced elements substantially similar to its own label mark and that the registration had been obtained despite the existence of prior trademark rights and pending opposition proceedings.

Petitioner’s Contentions

Fortune Marketing argued that it was a “person aggrieved” within the meaning of Section 50 of the Copyright Act and entitled to seek cancellation of the impugned copyright registration being the prior adopter, user, and registered proprietor of the ZOOOK trademark.

The petitioner contended that the copyright registration was granted on the basis of a Search Certificate issued by the Trademark Registry under Section 45 of the Copyright Act, despite the existence of its earlier trademark registrations. According to the petitioner, the respondent’s artistic work incorporated the identical coined mark “ZOOOK,” which had long been associated with the petitioner’s business.

It was further argued that Gujarat Pesticides had failed to establish any independent originality in the artistic work. The explanation subsequently offered by the respondent that the term “ZOOOK” was inspired by a Nigerian plant known as “ZUK” was an afterthought, considering that no such explanation was given in the trademark opposition proceedings.

The petitioner also alleged a violation of Rule 70(9) of the Copyright Rules, 2013. It submitted that Gujarat Pesticides was fully aware of the ongoing trademark disputes between the parties but failed to notify Fortune Marketing about the copyright application. This omission, according to the petitioner, deprived it of an opportunity to object to the registration before it was granted.

Respondent’s Defence

Gujarat Pesticides challenged the maintainability of the petition and argued that Fortune Marketing lacked the necessary locus standi to invoke Section 50 of the Copyright Act.

The respondent emphasized that copyright and trademark rights arise under different statutes and operate independently. It argued that ownership of a trademark does not automatically entitle a party to challenge a copyright registration merely because the trademark appears within an artistic work. So long as the artistic work satisfies the requirement of originality, copyright protection can subsist independently.

Gujarat Pesticides further contended that Section 50 permits rectification only where an entry has been wrongly made or wrongly remains on the Register and that no such defect had been established by the petitioner.

Relying on the Search Certificate issued by the Trademark Registry, Gujarat Pesticides argued that the copyright registration had been lawfully granted after the competent authority concluded that no identical or deceptively similar trademarks existed. It also submitted that copyright law protects original artistic expression rather than the distinctiveness of a mark and that there was no evidence of copying.

The respondent additionally argued that the parties operated in entirely different fields of business, namely electronics and agricultural products, thereby eliminating any realistic possibility of consumer confusion.

Stand of the Authorities

The Registrar of Trademarks and the Registrar of Copyright arrayed as respondents 2 and 3 respectively defended the registration process and submitted that all statutory requirements had been duly complied with before granting the copyright registration.

The authorities maintained that Rule 70(9) requires notice only to persons claiming an interest in the copyright work itself and not to parties involved in trademark disputes concerning similar marks. Since Fortune Marketing did not claim ownership of the specific artistic work submitted by Gujarat Pesticides, the respondent was not required to notify it of the application.

Court’s Analysis

The High Court examined the petitioner’s extensive use of the ZOOOK mark since 2013 and acknowledged the substantial goodwill generated through long-standing commercial use and promotion.

The Court observed that the requirement of obtaining a certificate from the Trademark Registry before registering an artistic work serves an important purpose. It is intended to ensure that copyright registration does not adversely affect existing trademark rights and to identify potential conflicts before registration is granted.

Reaffirming established legal principles, the Court noted that although copyright and trademark rights originate from separate statutory frameworks, overlap frequently occurs where artistic works incorporate trademarks. In such situations, a trademark proprietor with a legitimate interest may qualify as a “person aggrieved” and seek rectification of the Copyright Register.

The Court found that Fortune Marketing satisfied this requirement. As the prior adopter, user, and registered proprietor of the ZOOOK mark, it possessed a direct and substantial interest in the impugned registration.

A significant aspect of the Court’s reasoning concerned the Search Certificate issued by the Trademark Registry. The Court noted that the Examination-cum-Search Report had specifically identified the petitioner’s ZOOOK trademarks as conflicting marks. Despite this, Gujarat Pesticides failed to adequately address those objections, and a Search Certificate was ultimately issued stating that no similar marks existed.

The Court also held that Gujarat Pesticides had failed to comply with Rule 70(9). Given the ongoing trademark disputes and the respondent’s knowledge of the petitioner’s rights, the failure to notify Fortune Marketing constituted a procedural irregularity that deprived it of an opportunity to participate in the registration process.

Decision

In light of these findings, the High Court revoked the copyright registration granted to Gujarat Pesticides and set aside the Search Certificate that formed the basis of the registration.

The Court directed that the copyright application be reconsidered afresh from the stage of the Examination-cum-Search Report. The authorities were instructed to issue a fresh Search Certificate, invite objections and submissions from both parties, and provide an opportunity of hearing before arriving at a fresh determination. The exercise was directed to be completed within four months.

The judgment is significant for reaffirming that copyright registration procedures cannot be used to sidestep existing trademark rights and that trademark proprietors may, in appropriate cases, challenge copyright registrations that directly affect their legal interests.

Can a brand command legal protection in India before it officially enters the market? The Delhi High Court’s recent decision in Toyota Jidosha Kabushiki Kaisha v. Tech Square Engineering Pvt. Ltd. answers this with a clear yes, provided the reputation had already spilled over into India.

BRIEF FACTS

Toyota challenged the registration of the mark ALPHARD by an Indian company, Tech Square Engineering, by filing a cancellation action for removal of the mark. Although Toyota had not formally launched the ALPHARD vehicle in India at the time of Tech Square’s adoption (2015), it argued that Tech Square’s registration for the mark ALPHARD should be cancelled on account of:

1. long-standing global use of ALPHARD by Toyota;
2. ALPHARD’s reputation had already spilled over into India, and
3. The likelihood of confusion between the marks.

The Single Judge of the Delhi High Court disagreed, relying on the Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (Prius decision) holding that Toyota failed to establish sufficient spillover of reputation in India prior to the date of adoption by Tech Square. Aggrieved, Toyota preferred an intra-court appeal, where the Division Bench took a markedly different and more nuanced view on ‘Reputation Without Commercial Presence’, which is summarised below.

Contentions of Parties

The central issue in this cancellation action was transborder reputation, a doctrine that continues to evolve in Indian trademark law.

Toyota, in support of its case, relied on:

1. Prior global adoption (1986) and extensive use (since 2002) of the mark ALPHARD.
2. Third-party imports of ALPHARD vehicles into India (since 2008–09)
3. Media coverage and online visibility
4. Evidence of consumer awareness in the luxury automobile segment
5. Tech Square’s adoption of an identical mark for similar goods was dishonest and malafide, and relied on the inconsistent explanations for adoption offered by Tech Square, where on one hand they claim that they coined the mark, while in the same breath also claiming that it was adopted from the name of a star.
6. Misapplication of the Prius judgment by the Single Judge, as the present case involved sufficient evidence of spillover reputation in India prior to Tech Square’s adoption.

Tech Square’s Submissions

1. They are bonafide adopter and prior user in India since 2015, with valid registrations.
2. Toyota had no actual use of the mark ALPHARD, or sales or advertisements for the same in India, prior to 2015.
3. Tech Square had independently coined and adopted the mark ALPHARD in 2015. It was further contended that ALPHARD was adopted from the name of a star, making its adoption arbitrary, distinctive and bonafide in relation to automobile accessories.
4. Toyota has not commercially launched or used the mark ALPHARD in India at any point prior to their adoption.
5. Toyota had filed an application for ALPHARD only in November 2017 on a proposed to be used basis. Therefore, no goodwill or reputation can be claimed by Toyota for the mark ALPHARD.
6. Toyota has failed to show spillover of reputation in India. The instances of import relied on by Toyota are isolated and sporadic, and are third-party transactions which cannot inure to the benefit of Toyota.

Court Ruling

After hearing detailed arguments from both sides and going through the precedents relied on, the Court passed the following ruling:

• The Court held that unsolicited imports of ALPHARD vehicles into India as early as 2008–09 constituted cogent evidence of prior awareness, demand, and market recognition of Toyota’s ALPHARD mark before Tech Square’s adoption and that such imports are sufficient proof of spillover of the reputation of Toyota’s mark in India.
• Distinguishing Prius, the Court emphasized that it had already been held by the Supreme Court that the existence of a fully developed domestic market is not a precondition to establishing transborder reputation, and that if there are customers for a claimant’s goods/services in that jurisdiction, the claimant would be in the same position as a domestic trader.
• The Court further clarified that the test was not mere visibility of the mark in India, but whether ALPHARD had acquired a discernible association in the minds of the relevant consumer class, namely purchasers and market participants in the luxury automobile segment.
• The Court further distinguished the Prius judgment by noting that, unlike the facts of that case, Toyota had filed sufficient documentary evidence to show spillover of reputation prior to the adoption of ALPHARD by Tech Square.
• It also held that territorial “use” is not confined to direct sales by the proprietor and may be established through public-domain references, third-party activity, and market recognition. In the context of niche goods, widespread mass-market penetration is not necessary to establish protectable goodwill.
• Rejecting Tech Square’s reliance on the absence of a formal Indian launch, the Court held that Toyota’s later application on a proposed-to-be-used basis did not negate the prior spillover of reputation already established on the evidence.

LACK OF BONAFIDES IN TECH SQUARE’S ADOPTION

• The Court found Tech Square’s explanation for adopting ALPHARD to be inconsistent. The Court noted that it simultaneously claimed to have coined the mark and to have derived it from the name of a star. Given that Tech Square operated in the same or allied trade as Toyota, these inconsistent explanations for adoption cast doubt on the bonafides of adoption of ALPHARD and suggested a deliberate attempt to appropriate Toyota’s mark.
• Since the competing marks were identical and used for allied or cognate goods, the Court held that the likelihood of confusion was inevitable and would be detrimental to Toyota’s brand integrity and reputation.
• After going through the evidence filed, the Court concluded that Toyota’s ALPHARD was a well-known mark as of the date of Tech Square’s application. Tech Square’s registrations were therefore held to offend Section 11 of the Trade Marks Act and were directed to be removed as marks wrongly remaining on the register.

Key Takeaways

1. The judgment refines the doctrine of transborder reputation in India and clarifies that trademark protection may arise even without a formal market launch in India.
2. For niche or luxury goods, the decisive question is whether the mark had already acquired recognition, demand, and goodwill among the relevant Indian consumer segment before the rival adoption.
3. The decision makes clear that reputation cannot rest on global fame alone; it must be proved in India through cogent evidence existing on or before the rival adoption.
4. Overall, the ruling strengthens protection for international brands while preserving an evidentiary check against speculative or unsupported claims of transborder reputation.

The Kerala High Court reaffirmed the strong protection accorded to registered and well-known trademarks while dismissing an appeal filed by Taste Box against an interim injunction granted in favour of JSF Holdings Private Limited, proprietor of the mark “LAZZA.” The dispute centred around the Defendant’s use of the mark “HAZZA” for restaurant services and raised questions concerning deceptive similarity, scope of trademark protection across classes, well-known trademarks, and the limits of appellate interference with discretionary interim orders.

Background of the Dispute

The Plaintiff, JSF Holdings Private Limited, instituted a suit before the Additional District Court-II, Ernakulam alleging trademark infringement, passing off, and allied reliefs against the Defendant, Taste Box, for use of the mark “HAZZA” in connection with its restaurant business.

According to the Plaintiff, it forms part of an established business group operating since 1972 in the manufacture and sale of ice creams, frozen desserts, milk products, beverages, and related food products, apart from running restaurants and parlours. The Plaintiff asserted that it owns several trademarks including “LAZZA,” “Uncle John,” “Skei,” and “I & U.”

The mark “LAZZA” has been in continuous use since 1990 and, through extensive sales, advertising, and market presence, acquired considerable goodwill and recognition in South India as well as abroad. It was further asserted that the mark enjoys statutory protection by virtue of its registrations, including under Class 43 relating to restaurant services.

In July 2021, the Plaintiff became aware of the Defendant’s application seeking registration of the mark “HAZZA” in Class 43. The Plaintiff opposed the application before the Trademark Registry, where the proceedings remain pending. Simultaneously, the Defendant commenced operations of a restaurant-cum-bakery business under the mark “HAZZA.”

The Plaintiff alleged that “HAZZA” was deceptively similar to “LAZZA,” differing only by the substitution of the first letter, and that such adoption was calculated to ride upon the goodwill and reputation associated with the Plaintiff’s mark. Along with the suit, the Plaintiff sought an interim injunction restraining the Defendant from using the impugned mark. The District Court allowed the application and granted interim protection in favour of the Plaintiff.

Aggrieved by the said order, the Defendant approached the High Court of Kerala in appeal.

Defendant’s Contentions Before the High Court

The Defendant challenged the injunction primarily on the ground that the District Court had failed to apply settled principles governing trademark infringement and passing off.

The Defendant was using the composite mark “HAZZA Kitchen” in relation to restaurant services falling under Class 43, whereas the Plaintiff’s principal registrations were in Class 30. Thus, the parties were operating in distinct commercial fields, and the Plaintiff was not engaged in ordinary restaurant services.

“HAZZA” was an independently conceived and bona fide mark derived from an Arabic word meaning “delight” or “pleasure,” and was therefore conceptually distinct from “LAZZA.” The rival marks differed visually and structurally and there existed no likelihood of confusion from the standpoint of an average consumer.

A mere registration in Class 43 could not entitle the Plaintiff to monopoly over the entire class, especially when there was no actual use of the mark in relation to restaurant services. The Defendant maintained that use and reputation in the relevant field had to be proved through evidence at trial.

The District Court erred in dissecting the rival marks instead of comparing them as a whole, contrary to the settled principles of anti-dissection and dominant feature analysis. The test of deceptive similarity must be applied from the perspective of a consumer of ordinary intelligence and imperfect recollection.

The Defendant had been operating its restaurant business for several years after making substantial investments, and that the injunction had severely prejudiced its commercial operations. Thus, the balance of convenience lay in favour of the Defendant.

Plaintiff’s Response

The Plaintiff defended the injunction order by contending that appellate courts ought not to interfere with discretionary interim orders unless the same are shown to be arbitrary, capricious, illegal, or perverse.

The registration of the mark “LAZZA” under Class 43 was sufficient to sustain an infringement action and that actual use of the mark in connection with restaurant services was not a prerequisite for enforcing statutory rights.

“LAZZA” is a well-known trademark and the Defendant’s adoption of “HAZZA” was dishonest and intended to exploit the goodwill attached to the Plaintiff’s mark. The rival marks were phonetically, visually, and structurally similar, with the only difference being the replacement of the letter “L” with “H.”

Both parties operated in the broader food and hospitality industry and catered to the same class of consumers. In light of the Plaintiff’s long-standing reputation, extensive promotion, and decades of use, continued use of “HAZZA” was likely to mislead consumers and cause irreparable injury.

Findings of the High Court

The High Court reiterated the settled principle that appellate interference with interim discretionary orders is limited. Unless the trial court’s exercise of discretion is shown to be arbitrary, capricious, or perverse, the appellate court ought not to substitute its own opinion merely because another view is possible.

On the issue of non-use in Class 43, the Court rejected the Defendant’s contention and observed that registration itself confers statutory rights upon the proprietor. The Court held that actual use is not a necessary precondition for maintaining an infringement action.

The Court rejected the argument that “HAZZA,” being an Arabic word, was conceptually distinct from “LAZZA.” Emphasising that the correct test is the overall commercial impression created by the rival marks, the Court found a strong likelihood of confusion arising from their phonetic similarity and near-identical structure. The variation of a single letter was held insufficient to distinguish the marks.

The Court observed that the addition of the word “Kitchen” in smaller font did not materially alter the deceptive similarity between the competing marks.

The High Court further reiterated that proof of actual intention to deceive is unnecessary in trademark infringement and passing off actions. A likelihood of confusion alone is sufficient. Applying the standard of an average consumer with imperfect recollection, the Court held that consumers were likely to associate “HAZZA” with the Plaintiff’s established “LAZZA” brand.

A significant factor influencing the Court’s decision was the Plaintiff’s status as a well-known trademark. The Court held that once a mark is recognised as well-known, protection extends even against use in different lines of business where such use is likely to dilute or exploit the mark’s reputation.

The Court also observed that continued use of the impugned mark during the pendency of the suit could mislead consumers into believing that the Defendant’s restaurant was a sub-brand, affiliate, or extension of the Plaintiff’s business.

On the question of balance of convenience, the Court concluded that the equities favoured the Plaintiff, whose trademark had enjoyed long-standing registration and reputation. The likelihood of irreparable harm and consumer confusion outweighed the commercial inconvenience claimed by the Defendant.

Conclusion

In view of the above findings, the High Court dismissed the appeal and affirmed the interim injunction granted by the District Court restraining the Defendant from using the mark “HAZZA.”

Comment

The decision is significant for reiterating that statutory rights flowing from trademark registration do not depend upon proof of actual use in every category of registration. The judgment reinforces the heightened protection available to well-known trademarks and underscores that minor alterations may still amount to deceptive similarity when the overall commercial impression remains substantially alike.

The Delhi High Court’s decision in Hindware v. Google marks an important development in the intermediary liability jurisprudence. By holding Google liable for trademark infringement through its AdWords program, the Court has narrowed the protective umbrella of “safe harbour” under Section 79 of the Information Technology Act, 2000. What makes this case truly significant is how the Court distinguished earlier landmark rulings that had long defined intermediary liability.

The Crux of the Hindware Case

Hindware (a bath ware company) discovered that competitors were bidding on its trademark “HINDWARE” as a keyword in Google Ads. This meant that when users searched for “Hindware,” they were diverted to rival products. The Court in its decision ruled that even invisible use of a trademark, as a keyword trigger, constitutes infringement under the Trade Marks Act, 1999. The court ordered Google to stop auctioning Hindware’s mark and pay damages. The Court extensively analysed whether:

1. the use of trademarks as keywords amounts to infringement under Section 29 of the Trade Marks Act; and
2. Google’s role in the AdWords ecosystem deprives it of intermediary protection; and
3. Google’s keyword suggestion tools, auction systems, monetisation model, and advertisement ranking process makes them an active participant to attract liability and disqualify it from claiming intermediary protection.

How the Court distinguished earlier decisions

A notable aspect of the judgment is the manner in which the Court distinguishes prior keyword advertising jurisprudence, signalling a shift from a platform-neutral approach towards a closer examination of an intermediary’s commercial involvement in and contribution to infringing activity. Earlier cases protected intermediaries because they were viewed as neutral actors. In Hindware case the Court focused on Google’s active commercial involvement.

Set out below is a brief overview of the earlier decisions that shaped the intermediary liability landscape, together with our comments on how Hindware decision has altered the accepted understanding of intermediaries as neutral parties.

1. In Shreya Singhal vs. Union of India (2015), the decision recognised broad safe-harbour protection for intermediaries acting as neutral conduits. In Hindware, the Court examined whether Google could claim that status at all. By emphasising Google’s active role in the AdWords ecosystem, the Court suggested that intermediary protection becomes increasingly difficult to justify where a platform actively facilitates and profits from the impugned activity.
2. In Kent RO Systems vs. Amit Kotak (2017), the decision represented a more restrained approach. The Court was hesitant to treat invisible use of a trademark as a keyword as constituting trademark infringement, particularly where the mark was not visibly displayed to consumers. The emphasis remained on the traditional understanding of trademark use as something perceptible to the public. In Hindware, the Court departed from this reasoning by recognising that trademark exploitation in the digital environment often occurs through invisible technological mechanisms. The Court accepted that a trademark may be commercially exploited even when it is used solely as a backend trigger for advertisements. The decision, therefore, moves beyond the visible-versus-invisible distinction and focuses instead on the commercial function performed by the keyword.
3. In Christian Louboutin SAS vs Nakul Bajaj (2018), the Delhi High Court held that an e-commerce platform could not claim intermediary protection where it played an active role in promoting, advertising, and facilitating the sale of infringing products. The Court distinguished passive hosting and active participation. In Hindware, this principle is effectively transposed from e-commerce marketplaces to digital advertising platforms. The Court applied the same “active role” analysis to Google’s AdWords ecosystem and examined whether Google’s involvement extended beyond merely providing technological infrastructure. After analysing Google’s participation in the AdWords Program, the Court found Google to be an active participant, thereby suggesting that active exploitation of trademark value may attract liability even where the platform itself is not the direct seller of goods.
4. In DRS Logistics Pvt. Ltd. v. Google LLC (2021), the Court recognised that use of keywords could, in certain circumstances, amount to infringement, particularly where confusion was established. However, the decision remained silent on the extent to which invisible keyword use would amount to use under the Act. In Hindware, the Court took this one step further and adopts a more definitive position. Rather than treating keyword advertising as an area of uncertainty, it expressly recognises that use of a trademark as a keyword may itself constitute actionable use. The judgment therefore reduces much of the ambiguity that remained following DRS Logistics and places greater emphasis on the commercial exploitation of trademark goodwill through keyword bidding. The result is a stricter approach towards platforms that profit from trademark-triggered advertising.
5. In MakeMyTrip India Pvt. Ltd. v. Google LLC (2022), following the principle of trade marks being visible to the public and causing confusion, the decision held that invisible keyword bidding would not amount to “use” in trade. In Hindware, the Court consciously moves away from this approach. It treats invisible keyword triggers as a form of trademark use because they perform an important commercial function. The court opined that they direct consumers searching for a particular brand towards competing products and services. The Court therefore shifted attention away from the visibility of the mark and towards the economic reality of how keyword advertising operates. It further places emphasis on the fact that in Hindware, the keyword auctioned being a coined term and judicially recognised as a well-known mark. The court relying on strength of the mark held it deserved higher protection.

The Takeaway

Taken together, the Court’s treatment of these authorities reveals a common theme. Earlier decisions afforded intermediaries’ substantial protection because they were viewed as neutral facilitators of third-party activity. Hindware, however, reflects a growing judicial willingness to examine how platforms operate in practice. The decision suggests that where an intermediary actively facilitates, controls, and commercially benefits from the exploitation of another’s trademark, it may no longer be able to rely on the traditional assumptions granting intermediary immunity. The ruling signals a decisive move towards stricter accountability for intermediaries, suggesting that platforms can no longer rely on invisibility or ambiguity.

What does this decision mean for brand owners?

For brand owners, the decision offers stronger protection against the unauthorised use of their trade marks as advertising keywords, particularly where the marks are coined, distinctive, or well known. It indicates that competitors may no longer be permitted to bid on such marks in order to divert online traffic to rival products or services. The ruling may also require Google to reconsider aspects of its keyword advertising practices, particularly in relation to offering registered trade marks as keywords. More broadly, the judgment suggests that the use of another’s registered trade mark as a keyword, without the trade mark owner’s authorisation, may expose both advertisers and platforms to trade mark infringement claims.

A Division Bench (DB, Two Judge bench) of the Delhi High Court recently set aside an injunction granted by the District Commercial Court, Tis Hazari, in a trademark dispute between the Plaintiff, Jiva Ayurvedic Pharmacy Limited and the Defendants, Anuradha Sharma and Ors, using the mark “Shatam Jeeva.” This note discusses the contentions raised by the parties and the order passed by the DB in appeal.

Factual Background

The Plaintiffs, part of the “JIVA Group,” claimed continuous use of the mark “JIVA” since 1992 in relation to Ayurvedic products and wellness services. They asserted substantial goodwill, multiple trademark registrations, and a strong online presence.

In April 2022, the Plaintiffs discovered the Defendants’ use of the mark “Shatam Jeeva” for a wellness retreat and related domain names. Alleging deceptive similarity and passing off, they issued a legal notice and subsequently filed a suit seeking injunction.

The Defendants, in response, contended that:

1. “Shatam Jeeva by Baidyanath” was independently conceived to commemorate 100 years of the Baidyanath brand.
2. The mark has roots in Vedic concepts and must be considered as a whole.
3. The addition of “By Baidyanath” clearly distinguishes their mark.
4. “Jiva/Jeeva” is a common Sanskrit term widely used in trade.
5. There was no likelihood of confusion, and the adoption was bona fide.

Findings of the District Court

The District Court ruled in favour of the Plaintiffs and granted an injunction, holding that:

1. “Jiva” was not a common term in the relevant trade.
2. The Defendants had prior knowledge of the Plaintiffs’ mark.
3. The Plaintiffs were prior users with established goodwill.
4. The Defendants’ adoption lacked bona fides.

Accordingly, the Defendants were restrained from using the impugned mark or any deceptively similar variant.

Appeal before the Division Bench

Aggrieved by the order passed by the District Court, the Defendants filed appeal before the DB of the Delhi High Court arguing that:

1. The marks were distinct when viewed holistically.
2. “Jiva” is a generic Sanskrit term incapable of exclusivity.
3. Their mark targeted a different consumer segment.
4. No case of passing off or infringement was made out.

The Plaintiffs countered by emphasizing the distinctiveness of “Jiva,” its status as a dominant element, and alleging dishonest adoption by the Defendants.

• High Court’s Analysis

Lack of clarity in the District Court’s order

The High Court noted that the injunction was granted without clearly specifying whether it was based on infringement, passing off, or both. Further, no clear finding on goodwill, an essential element of passing off was recorded.

• No deceptive similarity

On comparing the marks as a whole, the Court found no phonetic, visual, or conceptual similarity. Key differences included:

1. Spelling: “Jiva” vs. “Jeeva”
2. Devices: Lotus (Plaintiffs) vs. circular “S” with herbal imagery (Defendants)
3. Additional elements: “Shatam” and “By Baidyanath”

The Court held that these differences eliminate any likelihood of confusion for an average consumer.

• Importance of composite marks

The Court emphasized that both marks are composite device marks and must be assessed holistically. The word “Jiva” cannot be isolated from the overall mark. Both visual and textual elements must be considered together.

Distinguishing elements matter

The Court rejected the argument that “Shatam” or “By Baidyanath” suggested a connection with the Plaintiffs.

1. “Shatam,” meaning “hundred,” has no association with the Plaintiffs’ mark.
2. “By Baidyanath” acts as a clear source identifier, reducing confusion.

• Passing Off not established

The Court reiterated that passing off requires misrepresentation and likelihood of damage. It found:

1. No deceptive similarity
2. No misrepresentation
3. No evidence of actual or probable damage

Thus, the essential ingredients of passing off were not satisfied.

Decision

In light of these findings, the Division Bench set aside the District Court’s injunction order and allowed the appeal.

Key Takeaways

1. Holistic comparison prevails: Marks must be compared in their entirety, especially in the case of composite device marks.
2. Dominant element not decisive: Even if a component is dominant, it cannot be viewed in isolation.
3. Added elements can distinguish: Prefixes, suffixes, and brand identifiers can significantly reduce confusion.
4. Passing Off requires misrepresentation: Absence of misrepresentation is fatal to such claims.
5. Clarity in Judicial Orders is crucial: Courts must clearly specify the basis of injunctions and record findings on all essential elements.

Comment

This decision reiterates the settled principle that trademark disputes must be assessed from the standpoint of the overall commercial impression created by the rival marks, particularly in the case of composite device marks. The judgment underscores that the mere presence of a common word or allegedly dominant element is insufficient to establish infringement or passing off in the absence of deceptive similarity, misrepresentation, or likelihood of confusion.

India’s Creator Economy Is Growing Fast but So Are Copyright Risks

India’s creator economy has expanded rapidly, with influencers, startups, brands and independent creators relying heavily on reels and short-form videos to promote products and build visibility. Music plays a central role in making this content memorable and shareable. Yet one legal misunderstanding remains common: the fact that a song is popular or available on a platform does not mean it can be freely used in all situations. When content is sponsored, monetised or connected to a brand campaign, copyright risk increases sharply.

Many creators assume that if a song appears in Instagram’s or YouTube’s music library, it is automatically cleared for any use. That is rarely true. Platform licences may cover personal or limited use, but often not paid promotions, advertisements, affiliate campaigns or branded influencer content. A reel or any other short form video used as a commercial asset must be treated differently from casual personal content.

Brands Are at Risk Too

Legal exposure does not stop with the creator. Brands and agencies may also face claims if they approve scripts, suggest music, review edits, repost content on official channels or boost a reel as advertising. Under Indian copyright law, courts are likely to examine the extent of a brand’s involvement and commercial benefit. Rights holders are increasingly targeting not only influencers, but also the businesses that gain from unauthorised music use.

This is why companies should adopt internal music-clearance practices, review influencer campaigns carefully and include clear contractual clauses on licensing responsibility, indemnities and liability allocation.

Enforcement Is Increasing and Rights Are Complex

Music labels in India are enforcing their rights more aggressively as branded short-form content becomes a significant commercial channel. The result is a rise in takedown notices, muted content and, in some cases, litigation. The issue is made more complex because a single song may involve multiple rights, including sound recording, publishing, performer and synchronisation rights, often split across different owners or collecting societies.

What Creators and Brands Should Do

1. Use royalty-free, commissioned or properly licensed music for brand collaborations and monetised content.
2. Keep records of permissions, invoices and licence confirmations.
3. Define music-clearance responsibilities clearly in creator, agency and brand agreements.
4. Audit campaigns regularly, especially where reels and short-form videos are central to marketing strategy.

Why Fair Use Assumptions Can Backfire

Creators should be cautious about relying on “fair use” assumptions or the belief that using only a few seconds of a track is safe. Under Indian copyright law, brief use or minor edits such as changing tempo or pitch do not automatically avoid infringement. In fact, trending songs often attract the most scrutiny because labels increasingly use automated detection and audio-recognition tools to identify unauthorised use at scale.

The Road Ahead

India’s creator economy is entering a more mature phase where rights compliance will increasingly shape content strategy. Creators, brands and agencies that invest early in licensing awareness, stronger contracts and original audio strategies will be better positioned to reduce legal exposure and build more credible, sustainable digital businesses.