Publication

Registered design protection has emerged as an increasingly important intellectual property right in India, particularly for industries where product appearance significantly influences consumer choice. A valid design registration grants the proprietor a statutory monopoly over the visual features of an article and enables enforcement against competitors who adopt the same or an obvious imitation of the registered design. In recent years, the Delhi High Court has granted interim relief in appropriate design infringement cases. At the same time, the courts have equally shown that such protection will not survive where the design registration itself is vulnerable to challenge. The decision of the Delhi High Court in Novamax Industries LLP v. Prem Appliances & Anr. illustrates the importance of maintaining novelty prior to filing and clarifies the relationship between design infringement and passing off claims.

Facts of the Case

Novamax Industries LLP instituted a suit against Prem Appliances and another defendant alleging infringement and passing off in relation to its registered design bearing No. 322384-002 for air coolers. The plaintiff claimed to be the registered proprietor of several registered designs in Class 23-04 relating to coolers and alleged that the defendants were manufacturing, marketing and selling coolers bearing an identical design. The plaintiff further alleged that the defendants were marketing the products under the mark “AROKING” together with the sub-mark “NOVA”, which according to the plaintiff was the prominent part of its trade name and trademark.

The plaintiff had earlier obtained an ex-parte interim injunction on 16 April 2021 restraining the defendants from using the impugned design. However, the injunction was subsequently vacated by the Court through an order dated 16 January 2023.

Thereafter, Defendant No. 1 filed an application seeking summary dismissal of the suit on the ground that the plaintiff had no real prospect of success.

Core Issue Before the Court

The principal issue before the Court was whether the plaintiff could maintain an action for infringement of the registered design when the design had already been commercially exploited and publicly disclosed by the plaintiff itself before the filing of the design application.

The defendant relied on invoices produced by the plaintiff itself showing sales of coolers marketed under the name “ZEPHYR” before the filing date of the design application. The invoices demonstrated that coolers embodying the impugned design had been sold during 2019, well before the design application was filed on 19 October 2019.

The defendant also relied upon materials from the plaintiff’s own website showing that coolers embodying the suit design had been displayed and offered for sale on 24 March 2019, prior to the filing of the design application. The Court treated the website publication as evidence in the judgment.

The Court’s Analysis on Prior Publication

The Court noted that the plaintiff was unable to explain how the design could remain registrable when products embodying the same design had already been sold and publicly advertised before the filing date. The Court observed that both the invoices and the website publication were admissions originating from the plaintiff itself and clearly established prior publication of the design.

The Court referred to Section 19(1)(b) of the Designs Act, 2000, which permits cancellation of a registered design where the design has been published in India or elsewhere prior to the date of registration. Based on the invoices and website disclosures, the Court concluded that a credible challenge to the validity of the registration had been established and that the defence available under Section 22(3) of the Designs Act had substantial merit.

The Court found that the plaintiff’s own website had publicly displayed the cooler embodying the suit design before the filing date. The relevant screenshots reproduced in the judgment were relied upon as evidence of prior publication.

Court’s Decision on Design Infringement

In view of the admitted prior publication, the Court held that the plaintiff had no real prospect of succeeding in its claim for infringement of the registered design. The Court therefore allowed the summary judgment application to that extent and dismissed the suit insofar as it related to design infringement.

The Court specifically held that where a design has already been published and commercialised before filing, it becomes difficult to sustain the validity of the registration and consequently the infringement claim founded upon such registration.

Passing Off Claim: A Different Outcome

The Court, however, reached a different conclusion in relation to the passing off claim. The defendant had argued that the plaint lacked the necessary pleadings to sustain an action for passing off. After examining the plaint, the Court held that the plaintiff had pleaded facts relating to imitation, confusion, deception, use of similar shape and configuration, diversion of trade, and attempts by the defendants to pass off their goods as those of the plaintiff.

The Court observed that passing off is an evidence-driven claim requiring proof of goodwill, misrepresentation, and likelihood of confusion. It further noted that the defendant’s written statement did not adequately deny several passing off allegations pleaded by the plaintiff.

Relying extensively upon the Full Bench decision in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. and the Division Bench decision in Crocs Inc. USA v. Bata India, the Court reiterated that a composite suit for design infringement and passing off is maintainable. More importantly, the Court reaffirmed that a passing off claim can survive even if the design infringement claim itself fails.

Accordingly, while dismissing the infringement component of the suit, the Court refused to summarily dismiss the passing off action and allowed the plaintiff to proceed to trial on that issue.

Significance of the Decision

The judgment serves as an important reminder that novelty is the foundation of design protection. A proprietor who sells, advertises, or publicly discloses a product embodying a design before filing the design application risks rendering the design vulnerable to cancellation on grounds of prior publication. The case also reinforces the principle that invalidity of a design registration does not automatically extinguish a passing off claim. Even where design rights fail, a claimant may still pursue common law remedies by proving goodwill, misrepresentation and resulting damage.

The decision therefore has dual significance, Firstly, it highlights the strict approach adopted towards prior publication in design law, while secondly, simultaneously reaffirming the independent and continuing nature of passing off actions in cases involving product shape, configuration and trade reputation.

The Calcutta High Court rejected IndiaMART’s request for interim relief against OpenAI, holding that there is no legal right to compel a private AI platform to display or promote a business’s links. The Court found that IndiaMART’s grievance was primarily commercial in nature and did not establish trademark infringement, disparagement, copyright infringement, or any independent legal right warranting interim protection.

Background / Facts

1. The case concerned an application for interim relief filed by IndiaMART InterMESH Limited against OpenAI Inc. and others (running ChatGPT).
2. IndiaMART, a B2B e-commerce platform operating since 1996, alleged that ChatGPT Search bypassed IndiaMART listings and instead provided direct seller links, reducing traffic to its platform.
3. IndiaMART also objected to OpenAI’s reliance on the USTR Notorious Markets List, 2024, contending that the list had no legal force in India and was being used discriminatorily.

Issues

The principal issues were:

1. whether IndiaMART had a legal right to compel visibility of its links on ChatGPT;
2. whether OpenAI’s alleged omission amounted to trademark dilution, disparagement, unfair trade practice or copyright infringement;
3. whether ChatGPT was an intermediary or originator under the IT Act; and
4. whether IndiaMART had satisfied the requirements for interim relief.

Contentions of the Parties

IndiaMART contended that

1. ChatGPT deliberately excluded or downgraded its links while giving visibility to competing platforms, causing business loss and discrimination.
2. It argued that ChatGPT functioned as an intermediary under the IT Act and could not arbitrarily suppress access to IndiaMART’s platform.

OpenAI argued that

1. IndiaMART had no contractual, statutory or constitutional “right to visibility” on ChatGPT.
2. It submitted that ChatGPT generated responses as an originator rather than acting as a passive intermediary.
3. No case of trademark infringement, disparagement, trade libel, injurious falsehood or copyright infringement had been made out.

Court Ruling

The Calcutta High Court dismissed IndiaMART’s application for interim relief. The Court held that

1. no private entity can be compelled to promote another private party’s business in the absence of a contractual, statutory or constitutional obligation.
2. IndiaMART’s grievance was essentially one of pure economic loss arising from reduced traffic and visibility.
3. The Court found no prima facie case of trademark infringement, dilution, disparagement or copyright infringement. It held that mere silence or non-display could not amount to disparagement, and referential use of IndiaMART did not constitute trademark dilution.
4. On the question of ChatGPT’s classification under the Information Technology Act, 2000, the Court noted that generative AI does not fit neatly within the existing statutory framework, but expressed the prima facie view that ChatGPT is closer to an originator than a passive intermediary.
5. The Court opined that even assuming ChatGPT were an intermediary, IndiaMART had not shown breach of any independent legal right.

The Court concluded that IndiaMART failed to establish a prima facie case, balance of convenience or irreparable injury. The interim application was therefore dismissed and the suit was directed to proceed expeditiously.

Key Takeaways

1. Businesses do not have an automatic legal right to be displayed, ranked, or promoted by a private AI platform unless such a right arises from contract, statute, or constitutional obligation.
2. Commercial loss arising from reduced traffic or visibility is not enough for interim relief unless accompanied by infringement of a recognised legal right.
3. The dispute was not treated as an IP issue because IndiaMART could not show misuse of its trademark, dilution of its mark, disparagement of its platform, or unauthorised copying of protected content; the complaint was essentially about loss of platform visibility.
4. The judgment highlights the unsettled legal treatment of generative AI platforms under the IT Act, while signalling judicial caution in compelling AI tools to alter how they generate or display results at the interim stage.

ROBERT A. MERRY AND CO. LTD. V PICCADILLY AGRO INDUSTRIES LTD

CS(COMM) 1164/2025 & CS(COMM) 9/2026

INTRODUCTION

This case concerns a trademark dispute over the use of the mark WHISTLER for whiskey in India. Robert A. Merry & Co. Ltd., an Irish whiskey company, claimed prior international use and reputation in the marks WHISTLER and THE WHISTLER, and sought to restrain Piccadilly Agro Industries Ltd. from using WHISTLER for its Indian Made Foreign Liquor whiskey. Piccadilly, on the other hand, relied on its Indian registration for WHISTLER dating back to 2008 and asserted that Robert had no registration or established goodwill in India.

The Court examined the competing claims of passing off and infringement, particularly whether Robert’s alleged transborder reputation had sufficiently spilled over into India before Piccadilly’s launch of its WHISTLER whiskey. It held that Robert failed to establish a prima facie case of passing off in India, while Piccadilly, as the registered proprietor of the WHISTLER mark in India, made out a prima facie case of infringement. Accordingly, the Court refused interim relief to Robert and granted interim protection in favour of Piccadilly.

FACTS

1. Robert A. Merry & Co. Ltd. (Robert), an Irish whiskey company, filed a passing off action against Piccadilly Agro Industries Ltd. (Piccadilly) over the use of the mark WHISTLER for whiskey in India.
2. Robert claimed prior international rights in WHISTLER, first registered in the United Kingdom on 12th June 2005, and in THE WHISTLER, adopted in 2016. Robert did not have an Indian registration for either mark.
3. Piccadilly, an Indian company engaged in malt spirits, conceived WHISTLER in 2007, applied for registration in 2008, and launched whiskey under the mark in 2018. It stated that the mark was inspired by the Whistler Warbler, a bird found in the Indian subcontinent.
4. The dispute arose when Robert sought to introduce WHISTLER/THE WHISTLER whiskey in India through M/s HS Oberoi Spirits. Robert sued for passing off, while Piccadilly filed a counterclaim/suit for trademark infringement based on its Indian registration for WHISTLER.

ISSUES

1. Whether Robert established a prima facie case of passing off based on its alleged goodwill and reputation in India.
2. Whether Piccadilly, as the registered proprietor of WHISTLER in India, established a prima facie case of trademark infringement against Robert.

CONTENTIONS

Plaintiff’s contentions

1. Robert argued that prior use prevails over registration and that a foreign proprietor can restrain a later Indian adopter where its reputation has spilled over into India. It relied on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 62, and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714.
2. It submitted that, because liquor is a regulated industry with advertising restrictions, reputation may travel through awards, publications, trade channels, and awareness among discerning consumers. The absence of mass advertising, therefore, could not defeat its claim of spillover reputation in India.
3. Robert alleged dishonest adoption by Piccadilly and argued that the Whistler Warbler explanation was an afterthought. It also contended that Piccadilly’s product was being sold under a deceptively similar mark and did not meet the same whiskey standards applicable to Robert’s Irish whiskey.
4. Robert disputed Piccadilly’s infringement claim under Section 29(2)(b) of the Trade Marks Act, 1999, arguing that differences in price, quality, composition, classification, and consumers reduced any likelihood of confusion. It relied on Radico Khaitan Ltd. v. Carlsberg India Pvt. Ltd., 2011 SCC OnLine Del 3925 and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701.

Defendant’s contentions

1. Piccadilly argued that Robert had no Indian registration for WHISTLER or THE WHISTLER and could not assert statutory trademark rights in India.
2. It submitted that Robert’s passing off claim was unsupported because Robert had not shown meaningful spillover of transborder reputation, goodwill, or sales in India before Piccadilly’s adoption and launch.
3. Piccadilly contended that, as the registered proprietor of WHISTLER in India, Robert’s proposed use of WHISTLER/THE WHISTLER for whiskey would infringe its registered mark for identical goods.
4. It further submitted that Robert could resist infringement only by showing either a valid Indian registration or prior user protection under Section 34 of the Trade Marks Act, 1999. It relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 and Sumit Vijay v. Major League Baseball Properties Inc., 2026 SCC OnLine Del 2.

COURT’S REASONING

1. Absence of Indian registration
   1. The Court held that Robert had no statutory rights in India because it had no Indian registration for WHISTLER or THE WHISTLER. It therefore could not maintain an infringement claim against Piccadilly, which was the registered proprietor of WHISTLER in India since 03.04.2008.
   2. Relying on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the Court noted that while statutory rights between registered proprietors are limited by Section 28(3), passing off rights remain protected under Section 27(2). Robert’s case, therefore, could only rest on common law passing off.
2. Priority of prior use
   1. The Court reiterated that registration does not defeat the rights of a prior user. Section 34 protects prior use, and as held in N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, a registered proprietor’s rights remain subject to the rights of an earlier user.
3. Transborder reputation
   1. The Court considered the law on transborder reputation. While N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 recognised protection for a foreign mark whose reputation had spilled over into India, later decisions require evidence of goodwill and reputation within India.
   2. Relying on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, BPI Sports LLC v. Saurabh Gulati, (2023) 3 HCC (Del) 164, and VIP Industries Ltd. v. Carlton Shoes Ltd., 2025 SCC OnLine Del 4620, the Court held that mere global reputation is insufficient. The claimant must show that the reputation had meaningfully reached Indian consumers before the defendant’s relevant use.
   3. On the facts, Robert failed to show that its goodwill or reputation in WHISTLER/THE WHISTLER had spilled over into India before Piccadilly launched WHISTLER whiskey in 2018.
   4. The Court also found Robert’s import documents insufficient. The excise approvals for Delhi and Maharashtra were dated January 2026, and the customs documents related to 2025. These documents did not establish Indian use or goodwill before Piccadilly’s 2018 launch. Robert therefore failed to make out a prima facie passing off case or justify ad interim relief.
4. Identical or deceptively similar marks
   1. The Court held that the rival marks WHISTLER and THE WHISTLER were nearly identical or deceptively similar, and the competing goods were also identical, namely whiskey. This created a clear likelihood of confusion.
   2. The Court rejected Robert’s argument that differences in price, quality, composition, or consumer sophistication were enough to avoid confusion. Even discerning consumers may be confused where the marks and goods are near identical.
   3. Relying on Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022) 5 SCC 1, the Court noted that a high degree of similarity between marks can attract infringement provisions. It also relied on Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blenders & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, where different trade dress did not rule out confusion in alcoholic beverages.
   4. Accordingly, the Court held that Piccadilly had established a prima facie case of infringement. Since the marks and goods were identical or near identical, Section 29(2)(c) was attracted, and confusion was presumed under Section 29(3) of the Trade Marks Act, 1999.

RULING

1. The Court held that Piccadilly had made out a prima facie case of infringement. The balance of convenience was also in its favour, as Robert’s launch of Irish whiskey in India under WHISTLER/THE WHISTLER was likely to cause irreparable injury. Accordingly, an ad interim injunction was granted in favour of Piccadilly.
2. The Court refused Robert’s request to sell existing stock. It noted that Robert had filed its suit in December 2025, was aware of the dispute over its right to use WHISTLER/THE WHISTLER in India and nevertheless imported the goods after obtaining excise approvals in January 2026. The Court treated this as a calculated risk taken by Robert. Accordingly, Robert’s application was dismissed.

Our comment

The ruling reinforces that foreign brand owners cannot rely on global reputation alone to restrain an Indian registered proprietor. They must prove actual spillover goodwill in India before the Indian party’s adoption/use.

In a trademark dispute concerning the mark “MEDILICE” used for anti-lice shampoo brought by Wings Pharmaceuticals (the plaintiff) and the defendant’s use of the mark “MEDILICE LICE KILLER” for anti-lice ayurvedic (herbal) hair oil, the court ruled in favour of the plaintiff. The note outlines the Appeal filed by the defendant before the Division Bench (two judge Bench) of the Delhi High Court against the decree/permanent injunction order passed by the Commercial Court (at Tis Hazari, District Court). The High Court examined the impact of prior use by the plaintiff, prosecution history of the trademark registration in favour of the plaintiff, acquiescence argument raised by the defendant, and punitive damages awarded by the Commercial Court.

While affirming the findings on infringement and passing off, the Division Bench modified the damages, substituting punitive damages with notional compensation.

Factual Matrix

1. The plaintiff, Wings Pharmaceuticals claimed adoption of the mark “MEDILICE” in 1998 for anti-lice shampoo containing Permethrin and secured registration in Class 3 in 2014.
2. In 2020, the plaintiff discovered the defendant’s use of the mark “MEDILICE LICE KILLER” for anti-lice oil and instituted a suit alleging infringement, passing off, and seeking rendition of accounts.
3. The defendant, M/s Rapple Healthcare asserted prior use since March 2000, relying on affidavits of use filed before the Trademarks Registry and its own trademark registrations in different classes.
4. Both parties lead evidence through witnesses and upon conclusion of the trial, the Commercial Court held that the defendant had infringed the plaintiff’s registered mark “MEDILICE.”
5. Commercial Court ruled that:
   1. Plaintiff had established valid ownership, assignment, and continuous use since 2004, while the defendant failed to prove prior use.
   2. Both parties were marketing similar anti-lice products through the same trade channels, therefore, a clear likelihood of confusion, constituting infringement and passing off was established.
   3. An adverse inference has to be drawn owing to the defendant’s failure to produce financial records despite court directions. The Court on that basis awarded ₹10,00,000 (approx. Us $ 10700) as punitive damages in lieu of rendition of accounts.

Issues Before the Division Bench

The following issues came up for consideration in the appeal:

1. Infringement: Whether the defendant infringed the plaintiff’s registered trademark “MEDILICE” by use of “MEDILICE LICE KILLER”.
2. Passing off: Whether the defendant was passing off its goods as those of the plaintiff by use of the impugned mark and in defence the defendant proved prior and continuous use.
3. Delay/laches/acquiescence: Whether the suit/relief was barred due to alleged delay and acquiescence.
4. Monetary relief: Whether the plaintiff was entitled to rendition of accounts/damages and whether in the facts of this case punitive damages could be awarded.

The High Court’s Ruling

Deceptive Similarity and Dominant Feature Doctrine

1. The Court reaffirmed that in composite marks, the dominant feature is decisive. The word “MEDILICE” constituted the essential component of both marks. The suffix “LICE KILLER” was descriptive and insufficient to distinguish the marks.
2. Applying the test of the average consumer with imperfect recollection, the Court held that the rival marks were deceptively similar.
3. Importantly, the Court emphasized that where goods relate to medicinal or therapeutic treatment, a stricter standard of scrutiny applies due to potential public health implications.

Registration in Different Classes: Not a Complete Defence

1. Although both parties held registrations in different classes, the Court clarified that trademark protection is confined to the goods for which the mark is registered. However, classification does not determine infringement where goods are allied and cognate.
2. Anti-lice shampoo and anti-lice oil served the same therapeutic purpose, targeted the same consumer base, and were sold through identical over-the-counter trade channels. The Court therefore rejected the defendant’s reliance on its Class 16 registration.

Prior Use: Marketplace Evidence is Essential

The defendant relied on the following to substantiate prior use:

1. Trademark applications
2. User affidavits
3. Manufacturing licences

The Court held that the above documents, without proof of actual commercial sales, do not establish continuous and bona fide use in the marketplace. On the other hand, the plaintiff produced documented sales figures and invoices demonstrating continuous use from 2004 onwards evidencing prior use.

Prosecution History Estoppel

The defendant argued that the plaintiff was bound by earlier replies to examination reports stating that the marks were distinct.

1. The Court rejected this plea, holding:
   Replies to examination reports are not conclusive admissions.
2. Deceptive similarity is a question of law to be determined by the Court.
3. Statements made before the Registrar do not automatically act as estoppel in infringement proceedings.

The Court thus declined to extend prosecution history estoppel beyond its limited evidentiary value.

Delay and Acquiescence

1. On the issue of delay, the defendant contended that the plaintiff had knowledge of its mark since 2001 when it was cited in examination proceedings.
2. The court observed, citation of a mark in an examination report does not establish knowledge of actual commercial use. Since the plaintiff acted promptly upon discovering market presence in 2020, the plea of acquiescence failed.
3. The Court clarified that acquiescence requires positive encouragement or conduct indicating acceptance. Mere delay or silence is insufficient.

Passing Off Established

The Court upheld the finding of passing off on the classic trinity:

1. Goodwill established through long-standing sales and reputation.
2. Use of a nearly identical mark for the same purpose amounts to misrepresentation.
3. Likelihood of diversion of trade and injury to goodwill entitles the plaintiff to damages.

Given the identity of purpose and trade channels, the likelihood of confusion was clear.

Punitive Damages: Judicial Restraint Emphasized

The Commercial Court had awarded ₹10,00,000 as punitive damages, drawing an adverse inference from the defendant’s failure to produce financial records.

The Division Bench held that:

1. Punitive damages are exceptional and require proof of wilful, blatant misconduct.
2. This was a private commercial dispute without evidence of quantified loss or aggravated conduct.
3. The court ruled that while the adverse inference was justified, it did not warrant exemplary damages.

Accordingly, the Court set aside the punitive damages and granted nominal damages of ₹3,00,000 (approx. Us $ 3200) to balance deterrence and equity.

Key Takeaways

1. Dominant feature analysis governs deceptive similarity.
2. Classification of goods does not limit infringement where products are allied and cognate.
3. Prior use must be established through marketplace evidence.
4. Prosecution history does not create automatic estoppel.
5. Acquiescence requires positive conduct, not mere delay.
6. Punitive damages must be awarded cautiously and sparingly.

The Traditional Approach

For decades, brand protection followed a familiar playbook: register trademarks, monitor the market, and take action against infringers. That approach is no longer sufficient.

Today, brands are discovered, compared, recommended and ranked by digital platforms and AI systems. Increasingly, the commercial value of a trademark is being captured not only at the point of sale, but also through search results, sponsored listings, recommendation engines, keyword advertising, and AI-generated responses.

How Digital Platforms Are Rewriting Brand Protection

Consider what is happening across the digital ecosystem:

1. Online marketplaces use brand names to trigger sponsored listings.
2. E-commerce platforms recommend counterfeit or look-alike products through algorithmic suggestions.
3. App stores monetise competitor-brand keywords to drive app discovery.
4. Social media platforms serve targeted advertisements based on trademark searches and user behaviour.
5. AI-powered search and recommendation systems use brand-related queries to generate traffic, engagement, and advertising revenue.

Platform Accountability and Intermediary Liability

Recent disputes illustrate this shift. Brands have challenged marketplace operators over the visibility and sale of counterfeit goods. Courts in several jurisdictions have examined whether the use of trademarks as advertising keywords amounts to infringement or unfair advantage. In India, the Delhi High Court’s decision in Hindware v. Google is a useful example. The Court examined the use of the HINDWARE mark as a keyword in Google Ads and considered whether Google’s advertising ecosystem, keyword auction model, and commercial role could take it beyond the position of a passive intermediary.

Platform programmes such as Amazon Brand Registry, Google Ads trademark complaints, and app-store reporting tools also show that brand protection is now as much an operational and technological exercise as a legal one. More recently, AI-powered search tools and shopping assistants have begun generating product recommendations that may steer consumers toward competing products or unauthorised sellers, raising fresh questions about trademark use, consumer confusion, and platform accountability.

This is where intermediary liability becomes central. Marketplaces, search engines, social media platforms, app stores, and AI-driven recommendation services may not always be the primary infringers, but they increasingly control the architecture through which infringement is discovered, amplified, monetised, or suppressed. The key question is therefore not only whether a seller, advertiser, or counterfeiter has misused a trademark, but also whether the platform had knowledge, control, or commercial participation sufficient to attract responsibility.

In India, this debate often turns on safe-harbour protection under intermediary-liability principles, including actual knowledge, due diligence, notice-and-takedown obligations, and whether the platform has acted as a passive host or an active facilitator. The Hindware v. Google decision is significant because it focuses on the platform’s active commercial involvement in suggesting, auctioning, ranking, and monetising trademark-triggered advertisements. In the trademark context, this distinction is critical, a platform that merely hosts third-party listings may stand on a different footing from one that promotes infringing listings, monetises keyword triggers, designs brand-based search categories, or fails to act on repeated and specific complaints.

These developments raise an important question:

Has the trademark become the currency of the digital attention economy?

In practical terms, a trademark now functions as a trigger for attention. It can determine which advertisement is served, which product is recommended, which seller is surfaced, and which result is treated as authoritative. Traditional trademark law was designed to identify the source of goods and prevent consumer confusion. Today’s digital ecosystem presents a more complex challenge: algorithms influence purchasing decisions, recommendation engines shape consumer preferences, and AI systems increasingly determine which brands consumers see first.

What Brand Owners Should Do Next

For brand owners, this demands a broader strategy.

Managing a brand today requires:

1. Monitoring marketplaces, app stores, social media, search engines, and AI platforms for misuse of brand names and look-alike products.
2. Strategic enforcement against counterfeiters, repeat infringers, and deceptive advertising practices.
3. Strengthening the brand’s digital footprint through official websites, verified accounts, authorised sellers, and reliable content that AI systems can recognise as authoritative.
4. Enrolling in platform brand-protection programmes and making effective use of notice-and-takedown mechanisms.
5. Creating a clear evidentiary record of platform knowledge, repeated complaints, delayed takedowns, reappearing listings, and any algorithmic or commercial features that amplify infringing content.
6. Reviewing trademark portfolios to ensure protection extends to emerging digital products, services, and virtual environments.
7. Monitoring AI-generated search results and recommendations for misleading brand references, inaccurate product associations, or unauthorised commercial exploitation.
8. Engaging with regulators, industry bodies, and platform operators to promote transparency in algorithmic recommendations and AI-generated content.

The New Frontier

The conversation is no longer only about infringement or counterfeiting; it is also about platform responsibility.

Brands are increasingly competing not only in the marketplace but also within algorithms. As AI becomes a primary interface through which consumers search, compare, shop, and make decisions, trademark owners must evolve from being reactive rights enforcers to proactive ecosystem managers, focused not only on infringers, but also on the intermediaries that shape digital visibility and commercial outcomes.

The next frontier of brand protection it appears would not just be the courtroom but also the algorithm.

India’s online gaming sector is moving into a more regulated phase. The Promotion and Regulation of Online Gaming Act, 2025 and the Promotion and Regulation of Online Gaming Rules, 2026 seek to distinguish legitimate online gaming and e-sports from prohibited online money games, while strengthening user protection, registration, classification and enforcement.

For gaming businesses, this is not just a compliance issue. Regulatory status, brand trust and intellectual property are likely to become closely connected. Companies that protect their game titles, platform brands, content, characters, software and licensing rights will be better placed to build credibility and respond to misuse in the market.

What the new regime changes

The framework introduces a more structured approach to online gaming in India. In practical terms, it focuses on registration of operators, classification of games, prohibition of online money games, user-safety measures, grievance redressal and enforcement through the Online Gaming Authority of India.

This matters because gaming businesses are built on IP: game titles, logos, software code, characters, artwork, music, audiovisual assets, virtual items, e-sports properties, streaming content and platform identities. As regulation creates clearer categories of legitimate operators, IP protection will become a stronger tool for market differentiation and enforcement.

Key IP risks for gaming companies

A regulated market may make approvals, registrations and verified status commercially valuable. This also creates risks: clone apps may claim to be authorised versions of legitimate platforms, lookalike websites may misuse gaming brands, and competitors may use trademarks in app-store search, advertising or domain names to divert users. Brand protection should therefore move in parallel with regulatory compliance.

1. Protect the brand before misuse scales: Trademarks are trust signals in online gaming. Players rely on names, logos and platform identities when downloading games, joining tournaments or making in-app purchases. Gaming companies should register and monitor key titles, logos, platform names, e-sports brands and distinctive user-facing identifiers across app stores, domain names, social media, streaming platforms and advertising channels.
2. Use compliance data to support enforcement: The Gaming Act is not an IP statute, but greater transparency around platform ownership, verification and grievance mechanisms may help rights holders identify infringers and seek faster takedowns of cloned games, infringing content and unlawful platforms.
   1. Clarify user-generated content rights: Platforms that allow user-created modifications, custom assets, user-created levels or community-created content should clearly state who owns that content, what license the platform receives, how the content may be commercialized and under what circumstances it may be removed.
   2. Lock down e-sports and content monetization rights: Tournament broadcasts, gameplay footage, influencer content, sponsorships and creator partnerships should be governed by clear contracts covering ownership, permitted use, revenue sharing, exclusivity, takedown rights and brand-control obligations.

What Indian cases show in practice

Indian courts have already signalled that gaming disputes may involve trademarks, copyright, platform liability, app-store visibility and the limits of protection for game mechanics. The key lessons are practical:

1. Mattel Inc v Jayant Agarwalla shows that game names, branding and protected expressive elements can raise IP issues when traditional games move online.
2. Super Cassettes v MySpace remains relevant where platforms host music, audiovisual material or user uploads, making takedown systems and intermediary-risk management important.
3. HULM v MYFAB11 confirms that copyright protects expression, not ideas, formats or standard game mechanics.
4. Winzo v Vinzogame illustrates how trademark law can address lookalike domains, impersonation and misuse of gaming brands.
5. Head Digital Works v Tictok Skill Games shows that invisible use of trademarks in app-store search can amount to actionable trademark use.

Practical IP checklist

Gaming businesses should use the new regime as a trigger to review the following:

1. reviewing trademark protection for game titles, platform brands and e-sports properties;
2. auditing copyright ownership and licensing arrangements;
3. strengthening user-generated content policies;
4. implementing enhanced anti-piracy measures;
5. reviewing agreements with publishers, developers, streamers and e-sports partners; and
6. establishing internal procedures for responding to regulatory and enforcement requests.

For international gaming companies entering India, these steps should be built into launch planning, not treated as post-launch clean-up.

Conclusion

India’s new gaming framework will reward businesses that combine compliance with IP discipline. The companies best placed to succeed will be those that can show regulatory credibility, protect their brands, control their content rights, act quickly against misuse and build user trust in a more accountable gaming market.

Overview of the case:

In Flipkart Internet Pvt. Ltd. v. Joint Controller of Patents and Designs & Voicemonk Inc. (CMA(PT) No. 9 of 2024, decided on 05 January 2026), the Madras High Court upheld the Controller’s decision rejecting Flipkart’s post-grant opposition to Indian Patent No. IN312437. The patent concerns a virtual agent system that helps users perform actions within websites or software applications. The Court held that the Controller had carefully compared the patent claims with the cited prior art and had given sufficient reasons for maintaining the patent.

Background of the case:

Voicemonk Inc. filed a patent application titled “Systems and Methods for Virtual Agents to Help Customers and Business” on 18 November 2016. The invention was designed to make it easier for users to interact with websites and software applications. In simple terms, the system receives a user’s input, including voice input, understands what the user wants to do, performs the required actions within the application, and then provides the result to the user.

The application originally contained thirty-six claims, which were later amended during prosecution. After examination, the patent was granted as IN312437 on 08 May 2019 and published in the Patent Journal on 10 May 2019.

Flipkart filed a post-grant opposition on 28 September 2021. It challenged the patent on several grounds, including prior publication, prior public knowledge, lack of inventive step, non-patentability, insufficient disclosure and non-compliance with Section 8 of the Patents Act. The Controller rejected all these grounds and allowed the patent to continue. Flipkart then appealed to the Madras High Court.

The High Court therefore had to examine whether the Controller’s findings were correct, particularly on novelty, inventive step and the patentability of software-enabled inventions.

Appellant’s Arguments (Flipkart Internet Pvt. Ltd.):

Flipkart argued that the Controller’s order should be set aside because it allegedly ignored relevant material, did not give adequate reasons and applied the wrong tests for novelty and inventive step. Flipkart also argued that the claims were incorrectly interpreted and that the invention should have been excluded from patent protection under Section 3(k) of the Patents Act as a computer programme per se.

According to Flipkart, the claimed features did not provide any real technical contribution or technical advancement over the existing prior art. It argued that features such as linking actions with tags, identifying relationships between actions and showing a consolidated output page were already known or obvious from the cited references.

Respondent’s Arguments (Voicemonk):

Voicemonk argued that the Controller had properly examined each prior art document, both individually and in combination. It submitted that none of the cited references disclosed the complete invention claimed in the patent. Voicemonk also argued that the Controller had carried out a detailed claim-by-claim comparison and had correctly applied the law on novelty, inventive step and patentability.

Key Technical Features of the Patent:

A central issue in the case was whether the patent contained features that were new and inventive. The Controller identified four key features that formed the inventive concept of the patent.

First, the system stored relationships or correlations between different actions available within an application, such as searching, sorting, selecting, submitting and comparing. Second, it associated one or more actions with specific tags. Third, it executed actions not only on the basis of the user’s input, but also by using the stored correlations between actions. Fourth, it displayed one consolidated output page to the user instead of showing multiple pages one after another.

The claims also referred to different types of correlations between actions, including sequential, hierarchical and lateral correlations. These features became the main basis for comparing the patent with the prior art.

Both the Controller and the Court stressed that novelty and inventive step must be assessed by looking at the claimed combination as a whole. It is not enough to break the invention into separate parts and compare each part in isolation.

Prior Art Analysis:

1. Flipkart relied on seven prior art references, referred to as D1 to D7. Its novelty challenge mainly relied on three references: Google’s “Routing Queries Based on Carrier Phrase Registration” (D1), Apple’s “Intelligent Automated Assistant” (D2) and Google’s “Predicting and Learning Carrier Phrases for Speech Input” (D3).
2. For D1, the Controller found that it dealt with receiving voice queries and generating data from those queries. However, it did not disclose the claimed system of storing correlations between actions, using tags or executing actions based on those correlations.
3. D2 was considered closer prior art because it related to an intelligent automated assistant that could interact with users and connect with external services. Even so, the Controller found that D2 did not disclose the claimed correlation framework, tagging feature or lateral correlation.
4. D3 related to predicting and learning speech phrases. The Controller held that it also failed to disclose important parts of the invention, especially the correlation framework and execution mechanism.
5. For inventive step, Flipkart also relied on D4 to D7. These references covered contextual information in virtual assistants, natural language speech processing, search quality determination and correlation rules between event types. The Controller concluded that none of these documents, either alone or together, disclosed the core combination of features claimed in Voicemonk’s patent.
6. The High Court agreed with the Controller’s analysis. It noted that the prior art did not disclose the complete framework of action correlation, tagging, execution based on correlations and consolidated output, along with the claimed types of correlations.

Reliance on Lava International v. Ericsson:

The Court relied on Lava to explain when prior art can destroy novelty. It stated that prior art anticipates a patent only if it discloses the invention clearly enough for a skilled person to understand and practise it without further experimentation. The Court also said that novelty must be assessed after understanding the claims, identifying the relevant prior art, considering both express and implied disclosures, and then deciding whether the complete claimed combination has already been disclosed.

The Court reiterated that a patent can be anticipated only when the prior art discloses the invention in a manner that allows a skilled person to perceive and practise the invention without further experimentation. The Court further emphasised that novelty must be assessed after understanding the claims, identifying the relevant prior art, determining explicit and implicit disclosures, assessing material differences and evaluating whether the complete combination of claimed elements has been previously disclosed.

Court’s Reasoning on Section 3(k):

The Court also considered whether the patent was barred under Section 3(k) of the Patents Act, which excludes a computer programme per se from patentability. Flipkart argued that the invention was only a software implementation and therefore not patentable.

The Controller rejected this argument. It found that the claim described a sequence of technical steps performed by the virtual agent. These steps included receiving user inputs, identifying the intended action, executing related actions and providing an output. The dependent claims also described technical consequences flowing from these operations.

The High Court agreed with the Controller. It held that the invention involved technical operations carried out by a virtual agent and could not be treated as a mere computer programme or algorithm. The patent therefore did not fall within the exclusion under Section 3(k).

Other Findings:

The Court also rejected Flipkart’s objections on insufficient disclosure and Section 8 compliance. It noted that the application had been examined, the claims had been amended during prosecution and the Controller had found support for the claims in the specification and drawings. The Court also noted that the required Form 3 disclosures had been filed and considered.

The Court further held that there was no breach of natural justice. Both parties had been given opportunities to file pleadings, evidence and written submissions. The Controller had also considered the Opposition Board proceedings and the parties’ submissions before passing the order.

Conclusion:

The Madras High Court dismissed Flipkart’s appeal and upheld the validity of Patent No. IN312437. The judgment highlights the importance of a careful feature-by-feature comparison between the patent claims and the prior art. It also confirms that novelty and inventive step must be assessed by considering the claimed invention as a whole, not by isolating individual features. The decision is especially relevant for AI and software-related patents because the Court accepted that a virtual-agent-based system involving defined technical operations may be patentable and is not automatically excluded as a computer programme per se. The ruling also reinforces the structured novelty analysis discussed in Lava International v. Ericsson, making it an important precedent for future disputes involving software and AI inventions.

In a significant decision highlighting the importance of consistency in trademark prosecution and litigation, the Division Bench of the Bombay High Court dismissed the appeal filed by Laser Shaving India Pvt. Ltd. and upheld the refusal of interim injunction against RKM International Products Pvt. Ltd. and others in relation to the use of the mark “SETMAX”.

The ruling serves as a reminder that equitable relief is reserved for parties who approach the court with clean hands. A litigant cannot adopt one position before the Trademarks Registry to overcome an objection and subsequently take an inconsistent stand before a court to secure an injunction. The judgment reiterates the limited scope of appellate interference with discretionary orders passed by a Single Judge in interim proceedings.

Background

Laser Shaving India Pvt. Ltd., a well-known manufacturer of safety razor blades with an international presence in the men’s grooming market, adopted the trademark “SETMAX” for its razor blade products and claimed rights over the artistic packaging and trade dress associated with its “SetMax Platinum Blades ”.

The Plaintiff applied for registration of the word mark “SETMAX” in Class 8 on 1 September 2023. The mark was registered in its favour on 1 January 2026. According to the Plaintiff, through extensive use, sales, and promotion of products under the SETMAX mark, it had acquired substantial goodwill and common law rights in the mark as well as its packaging and trade dress.

However, the dispute had a prior history. Galactic Conquistadors FZE had already filed an application on 31 August 2023 for registration of a stylized “” label in Class 8, on a proposed-to-be-used basis. Galactic had subsequently permitted the Defendant, RKM International Products Pvt. Ltd., to use the said mark.

In December 2023, the Plaintiff discovered that the Defendants were manufacturing and marketing safety razor blades under the “SETMAX” mark with packaging and trade dress which, according to the Plaintiff, closely resembled its own. Consequently, the Plaintiff initiated a suit alleging passing off and, after amending the plaint, also raised claims of copyright infringement and sought damages of ₹100 crore.

Pending disposal of the suit, the Plaintiff sought an interim injunction restraining the Defendants from using the impugned mark, packaging, and trade dress. However, the Single Judge declined to grant such relief, resulting in the present appeal before the Division Bench.

The Earlier Proceedings Before the Trademarks Registry

An important aspect of the case was the Plaintiff’s conduct during the prosecution of its trademark application.

When the Trademarks Registry examined the Plaintiff’s application, it raised an objection citing Galactic’s earlier “SETMAX” application as a conflicting mark. Galactic also issued a cease-and-desist notice alleging trademark infringement and passing off.

In response, the Plaintiff contended that its adoption of “SETMAX” was honest and bona fide. More importantly, it argued that its mark was visually, structurally, and conceptually distinct from Galactic’s stylized label and was therefore incapable of causing confusion among consumers. Simultaneously, the Plaintiff asserted that it was the prior user of the mark and that Galactic had not established any genuine commercial use in India.

The Plaintiff’s stand before the Registry enabled it to overcome the objection and secure registration of the SETMAX mark.

Plaintiff’s Case Before the Division Bench

1. Before the Division Bench, the Plaintiff argued that the Single Judge had wrongly denied interim relief primarily on the ground of alleged suppression rather than examining the traditional principles governing the grant of injunctions, namely prima facie case, balance of convenience, and irreparable harm.
2. It was contended that the earlier ex-parte injunction had been vacated only because of the alleged non-disclosure of certain facts and not because the Court had rejected the merits of the Plaintiff’s claims.
3. The Plaintiff further submitted that statements made during trademark prosecution did not automatically create an estoppel preventing a party from subsequently alleging deceptive similarity. It argued that it had consistently maintained that it was the prior adopter and user of the SETMAX mark and had always asserted superior rights over Galactic.
4. With respect to the copyright and passing off claims, the Plaintiff submitted that it had established substantial goodwill in the market and that the Defendants had adopted deceptively similar packaging and artwork with the intention of causing confusion among consumers.

Defendants’ Submissions

1. The Defendants, on the other hand, argued that the Plaintiff had obtained an earlier ex-parte injunction by deliberately suppressing material facts and thereby committing a fraud upon the Court.
2. According to the Defendants, the Plaintiff had failed to disclose several crucial documents, including Galactic’s prior trademark application, the examination report issued by the Trademarks Registry, its response to that report, and the cease-and-desist correspondence exchanged between the parties.
3. The Defendants contended that such non-disclosure was a deliberate attempt to prevent the Court from examining the Plaintiff’s contradictory positions.
4. They contended that the limited scope of appellate review precluded interference with the Single Judge’s discretionary order in the absence of arbitrariness or perversity.

Findings of the Division Bench

1. The Division Bench agreed with the reasoning of the Single Judge and found no reason to interfere with the exercise of discretion.
2. The Court noted that Galactic’s trademark application for the stylized “SETMAX” label had been filed prior to the Plaintiff’s applications. The Plaintiff was aware of this application and had actively responded to the objection raised by the Trademarks Registry.
3. Importantly, the Plaintiff had represented before the Registry that its mark was visually, structurally, and conceptually different from Galactic’s mark and that the two marks were incapable of causing confusion. However, in the suit, the Plaintiff adopted the opposite position by alleging that the Defendants’ use of the SETMAX mark was deceptively similar and likely to mislead consumers.
4. The Court held that the Plaintiff could not be permitted to shift positions according to the forum in which it appeared. Having obtained registration on the basis of a particular representation before the Registry, the Plaintiff was bound by the consequences of that representation, especially when Galactic and its licensees had acted upon the same.
5. The Division Bench also took note of the fact that the Plaintiff did not disclose the earlier proceedings and correspondence before the Registry while seeking ex-parte relief. Such suppression of material facts was sufficient to deny equitable relief.
6. Additionally, the Court observed that despite having knowledge of Galactic’s prior application and involvement in the dispute, the Plaintiff failed to implead Galactic as a party to the proceedings.
7. Finally, applying the settled principle that an appellate court should exercise restraint while reviewing discretionary orders passed by a Single Judge, the Division Bench held that there was no arbitrariness, perversity, or error warranting interference. The appeal was accordingly dismissed.

Conclusion

The decision highlights that statements made during trademark prosecution may affect a party’s position in later litigation, particularly where the party takes an inconsistent stand while seeking equitable relief. It further reiterates that a party seeking an injunction must make full and candid disclosure to the Court. Suppression of material facts, especially in ex-parte proceedings, may justify denial of relief irrespective of the merits of the claim.

At first glance, the Delhi High Court’s decision in Panasonic Holdings Corporation v. Siddharth Vij may seem like a straightforward trademark dispute about cancellation of a deceptive similar mark. Panasonic filed the petition and argued that the respondent’s PONTA marks in Class 9 were too close to its earlier PENTA marks, and the Court agreed that the registrations were liable to be removed from the Register.

But the case is interesting for reasons beyond the usual comparison of marks. The judgment also shows how closely courts may look at the story behind a trademark, when that story was first told, whether it remained consistent, and whether the evidence supporting it can be trusted. For brand owners and trademark practitioners, the decision is a useful reminder that the stand taken during prosecution and the arguments presented can have an impact on rectification/cancellation proceedings under Section 57 of the Trade Marks Act, 1999.

The dispute: PENTA versus PONTA

The dispute arose from Panasonic’s challenge to the respondent’s registrations for the word mark PONTA and a related device mark in Class 9. Panasonic relied on its earlier registrations and use of PENTA, and argued that the rival marks were deceptively similar and covered identical goods.

The respondent argued that its adoption of PONTA was honest and bona fide. During the rectification proceedings, it explained that the mark was inspired by Paonta Sahib, a historic Sikh shrine. It also relied on material suggesting that “PONTA” had meanings in several foreign languages. In considering the rival submissions, the Court made the following key observations:

1. What troubled the Court was not only what the respondent said, but when it said it. At the examination stage the Trade Marks Registry had raised objection to the PONTA mark under Section 11 by citing Panasonic’s PENTA registrations, the respondent’s reply simply stated that the marks were different and sought waiver of the objection. It did not mention Paonta Sahib. Nor did it refer to any religious, historical, linguistic, or commercial reason for adopting the mark.
2. The Court found this omission significant. If the Paonta Sahib explanation was genuinely the basis for adopting PONTA, the Court asked, why was it not disclosed when the Registry first raised the objection? The explanation surfaced only after the registration was challenged, which made it look like a later justification rather than the real reason for adoption.
3. The Court also rejected AI-generated research reports about the meaning of PONTA as unreliable, since there was no corroborative evidence of the existence of such a word in foreign languages other than reports generated through AI tools.
4. The Court found visual and structural similarity between the marks. The Court noted that merely replacing ‘E’ with the letter ‘O’ does not create any distinction. Further, the representation of the device mark gives an impression as if it is ‘E’ and not ‘O’ .
5. Taking into account the target customers of the goods, the Court remarked that buyers such as electricians, petty contractors, and the general public may not inquire or attempt to find out the actual manufacturer of the goods and may purchase them, believing them to be manufactured by the petitioner.
6. The Court also rejected the respondent’s reliance on Section 12 (honest and concurrent use) of the Act. It noted that the PONTA application had been filed on a “proposed to be used” basis, and that the respondent began using the mark only after Panasonic’s PENTA mark had already acquired goodwill. The Court further observed that Panasonic’s mark had been cited in the Examination Report, yet the respondent offered no explanation at that stage. In these circumstances, the adoption could not be regarded as honest.

The Court directed the Registrar of Trade Marks to remove the registered mark ‘PONTA’ (word mark) and the device mark within four weeks of the order.

Key Takeaways

1. Prosecution is not just paperwork: The trademark prosecution should not be treated as a routine exercise. When an applicant is trying to overcome an objection based on an earlier mark, it is usually better to put the real adoption story on record early. That may include the reason for choosing the mark, the basis for distinguishing it from the cited mark, and any relevant commercial or factual background. The delay in providing the explanation for adoption may affect the credibility of that explanation.
2. AI-assisted research still needs reliable proof: The Court declined to rely on the AI-generated material because it was not authenticated or independently corroborated. This is in line with the application of evidentiary principles followed by the Courts. In other words, AI can be used to identify leads, translations, linguistic references, or research points, but those outputs still need to be verified through reliable and admissible sources.
3. Reasons for adoption should be credible: A trademark adoption story should be credible, timely, and supported by proper evidence. For trademark owners, the strength of a registration may depend not only on whether it was granted, but also on whether the record behind it can withstand scrutiny when challenged before a court.

In a recent judgment concerning trademark protection in the pharmaceutical industry, the Bombay High Court ruled in favour of Sun Pharmaceutical Industries Ltd. in a trademark infringement and passing off action against Mr. Satej M. Katekar. The dispute centred around the defendant’s use of the marks “ABSUN” and “ABSUN PHARMA,” which the plaintiff alleged infringed its well-known “SUN” and “SUN PHARMA” trademarks.

Background of the Dispute

Sun Pharmaceutical Industries Ltd. claimed that it is engaged in the manufacture and sale of pharmaceutical and medicinal products since 1978 and had extensively used the mark “SUN” in relation to its business. According to the plaintiff, the marks “SUN PHARMA” had also been used as house marks since 1993 across pharmaceutical products, packaging materials, promotional literature, and business communications.

The plaintiff relied upon several trademark registrations in Class 5, including a stylized “SUN” device mark registered since 1983 and registrations for the word marks “SUN PHARMA” and “SUNPHARMA” since 2007. It asserted that, owing to decades of extensive use, large sales turnover, and substantial promotional activities, the marks had acquired immense goodwill and reputation in the pharmaceutical market.

The dispute arose in December 2012, when the plaintiff discovered that the defendant was marketing pharmaceutical products under the marks “ABSUN” and “ABSUN PHARMA.” A cease-and-desist notice was issued, but the defendant failed to discontinue use of the impugned marks, leading to the institution of the present suit seeking injunctions, damages, rendition of accounts, and other consequential reliefs.

Defendant’s Defence

1. The defendant contended that “ABSUN” and “ABSUN PHARMA” were independently coined and honestly adopted, with “AB” derived from the proprietor’s son’s name, “Abheejit,” and “SUN” from the proprietor’s wife’s name, “Sunita.”
2. Denied deceptive similarity, contending that “SUN” is a common word referring to a celestial body and incapable of exclusive appropriation, and further argued that the plaintiff held registrations only for the stylized “SUN” device mark and the marks “SUN PHARMA” and “SUNPHARMA,” not the standalone word “SUN.”
3. Further “ABSUN PHARMA” was merely a house mark or trade name, not a product trademark, and that consumers in the pharmaceutical industry identify medicines by their product names rather than by house marks.
4. Its products were exported exclusively to African countries and not sold in India and later claimed to have changed its trading name from “ABSUN PHARMA” to “ABSUN REMEDIES” in October 2025.

Plaintiff’s Submissions

1. The plaintiff argued that its registrations for “SUN” and “SUN PHARMA” conferred exclusive statutory rights, and that “ABSUN” and “ABSUN PHARMA” were deceptively similar, with the addition of the prefix “AB” being insufficient to distinguish the marks.
2. Emphasising the heightened standard applicable in pharmaceutical trademark disputes, the plaintiff argued that even slight similarities were likely to cause confusion among consumers, particularly because pharmaceutical products directly affect public health.
3. Once infringement was established, the defendant’s plea of honest adoption was immaterial, particularly as the defendant had failed to conduct any trademark registry search or market inquiry before adopting the impugned marks.
4. Significantly, during cross-examination, the defendant’s witness admitted that he had known about the plaintiff and its “SUN/SUN PHARMA” marks since around 1995. The plaintiff relied heavily on this admission to establish prior knowledge and dishonest adoption.
5. The defendant remained liable despite exporting the goods, as affixing the impugned marks to products, packaging, invoices, and advertisements in India before export constituted use of the trademark within India under the Trademarks Act.

Court’s Findings on Trademark Infringement

The Court held that the plaintiff, as the registered proprietor of “SUN” and “SUN PHARMA” in Class 5, enjoyed exclusive rights over pharmaceutical products and rejected the defendant’s house mark defence, holding that the Trademarks Act does not distinguish between a house mark and a trademark when the mark identifies and distinguishes goods.
In the instant case Section 29(5) of the Trademarks Act applied, as the defendant had incorporated the plaintiff’s registered marks into its trading style by merely adding the prefix “AB,” rendering “ABSUN” and “ABSUN PHARMA” deceptively similar.

The defence of honest adoption was rejected, noting that the defendant had conducted neither a market survey nor a trademark registry search before adopting the impugned marks, and that its admission of prior knowledge of the plaintiff’s marks undermined its claim of bona fide adoption.

The Court therefore concluded that the adoption of “ABSUN/ABSUN PHARMA” was not bona fide and indicated a dishonest attempt to benefit from the plaintiff’s reputation.

Export Sales and Trademark Use in India

Under Section 56 of the Trademarks Act, affixing the impugned marks to products and packaging in India before export constituted trademark use in India, making the defendant liable despite the goods being sold exclusively abroad.

Passing Off and Proof of Goodwill

On passing off, the Court held that the plaintiff had established substantial goodwill and reputation in the marks “SUN” and “SUN PHARMA” through extensive documentary evidence, including packaging, promotional materials, corporate records, and sales and advertising figures.

The Court held that the defendant’s failure to deny the plaintiff’s documents or file an admission-denial affidavit resulted in the documents and their contents being deemed admitted.

The Court concluded that the defendant’s use of deceptively similar marks for identical pharmaceutical products amounted to misrepresentation likely to deceive consumers and damage the plaintiff’s goodwill.

Rejection of Other Defences

The Court rejected the contention that “SUN” was common to trade, holding that such a defence requires substantial evidence of widespread third-party use, and that trademark search reports or similar registry entries alone are insufficient.
The plea of acquiescence was rejected as during cross-examination, the defendant’s witness admitted that there was no evidence showing that the plaintiff was aware of the defendant’s use prior to December 2012.

The Court refused to consider the defendant’s belated plea of changing its name from “ABSUN PHARMA” to “ABSUN REMEDIES,” holding that it could not rely on documents not formally brought on record after the completion of pleadings, evidence, and arguments.

Damages, Costs and Relief

The Court declined the plaintiff’s claim for damages and rendition of accounts due to lack of evidence quantifying the loss but held that the defendant was a knowing infringer in light of its prior knowledge of the plaintiff’s marks and dishonest adoption of deceptively similar marks.

Consequently, the suit was decreed in favour of the plaintiff, permanent injunction granted restraining use of “ABSUN” and “ABSUN PHARMA,” and costs of Rs. 10 lakhs (approx. US$10,600) were awarded to the plaintiff.

Comment

The judgment serves as a reaffirmation of trademark rights in the pharmaceutical sector, emphasizing the importance of honest adoption, the evidentiary burden for common-to-trade defences, and the applicability of trademark protection even to goods manufactured in India for export.