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.

The Delhi High Court recently delivered a significant judgment in a trademark infringement dispute between Sun Pharma Laboratories Limited and Intas Pharmaceuticals Limited, reaffirming the heightened standard of scrutiny applicable in pharmaceutical trademark cases. The dispute revolved around the plaintiff’s registered mark “BEVETEX” and the defendant’s use of the mark “BEVATAS”, both in relation to anti-cancer drugs.

Background and Procedural History

The plaintiff instituted the suit alleging trademark infringement, passing off, and related claims, seeking to restrain the defendant from using the impugned mark.

The matter was initially heard by the District Judge at Saket Courts in 2018. At the interim stage, the Court declined to grant an ex parte ad-interim injunction, emphasizing the public interest involved given that the defendant’s product was a life-saving cancer drug. Subsequently, the injunction application was dismissed on the ground that no prima facie case was established. The plaintiff’s appeal and special leave petition were also unsuccessful at that stage.

Following a revaluation of the suit, the matter came to be heard by the Delhi High Court, where a comprehensive adjudication on merits was undertaken.

Plaintiff’s Case

Sun Pharma contended that:

1. It is the registered proprietor of the mark “BEVETEX” in Class 5, with registration dating back to 1983.
2. The mark is an invented and inherently distinctive term derived from the molecule Paclitaxel.
3. Commercial use commenced in 2015, accompanied by substantial investment in promotion and market development.
4. The mark has acquired significant goodwill and reputation in the pharmaceutical market.

The plaintiff argued that:

1. The defendant’s mark “BEVATAS” is deceptively similar, particularly in phonetic and structural terms.
2. Both products relate to cancer treatment, thereby increasing the risk of confusion.
3. In pharmaceutical cases, confusion can have serious public health consequences, warranting stricter scrutiny.
4. Prescriptions often do not specify salt composition or packaging, making brand similarity critical.
5. The plaintiff further alleged dishonest adoption by the defendant and emphasized that similarity must be assessed from the standpoint of an average consumer with imperfect recollection.

Defendant’s Case

Intas Pharmaceuticals resisted the claim, arguing that:

1. The marks “BEVETEX” and “BEVATAS” are visually, structurally, and phonetically distinct.
2. The drugs differ in composition: the defendant’s drug contains Bevacizumab, whereas the plaintiff’s contains Paclitaxel.
3. The products are prescription only (Schedule H drugs), administered under expert oncological supervision, minimizing any likelihood of confusion.

The defendant also contended that:

1. Its mark was coined bona fide by combining “BEVA” (from Bevacizumab) and “TAS” (from Intas).
2. The plaintiff’s delayed commercial use (despite registration in 1983) indicated “hoarding” of the mark.
3. The plaintiff suppressed material facts and delayed initiating action despite prior knowledge of the defendant’s product.

Issues before the Court

The Court framed and adjudicated multiple issues, including:

1. Ownership and prior use of the mark BEVETEX
2. Likelihood of confusion between the competing marks
3. Allegations of trademark hoarding
4. Delay, laches, and acquiescence
5. Validity of defendant’s adoption and claim of honest use

Court’s Findings

• Prior Rights and Distinctiveness

The Court held that the plaintiff is the registered proprietor and prior user of “BEVETEX”. The mark was found to be inherently distinctive and entitled to a high degree of protection.

• Deceptive Similarity and Infringement

Applying the anti-dissection rule, the Court compared the marks as a whole and found:

1. Structural and phonetic similarity between “BEVETEX” and “BEVATAS”
2. A likelihood of confusion, especially given imperfect recollection

Importantly, the Court reiterated that:

1. Pharmaceutical trademarks are subject to a stricter standard, owing to public health implications
2. Confusion may arise not only at the point of prescription but also during dispensing and purchase

Accordingly, the defendant’s use of “BEVATAS” was held to constitute infringement.

• Defence of Non-Use (“Hoarding”)

The Court rejected the defendant’s argument of trademark hoarding, holding that:

1. Under Section 47 of the Trademarks Act, non-use is a ground for rectification, not a defence in infringement proceedings
2. Until a mark is removed from the register, it continues to enjoy statutory protection

• Delay, Laches, and Acquiescence

The Court found no merit in the defence of delay:

1. The plaintiff had opposed the defendant’s mark before the Trademark Registry
2. The suit was filed promptly upon discovery of commercial use

It reaffirmed that delay alone is insufficient to defeat an injunction in trademark cases.

• Honest Adoption and Prior Use by Defendant

Although the Court did not find clear evidence of dishonest adoption, it held that:

1. Honest subsequent adoption is not a valid defence against infringement of a registered mark
2. The plaintiff’s prior registration and use prevail over the defendant’s later adoption

Relief Granted

In light of the above findings, the Delhi High Court granted a permanent injunction restraining the defendant from using the mark “BEVATAS” in relation to pharmaceutical products.

Notably, the plaintiff chose to treat the matter as one involving public interest and waived its claim for damages and rendition of accounts, which were accordingly not granted.

Comment

The judgment reinforces that in the pharmaceutical sector, the threshold for permissible similarity is exceptionally low. Even in the absence of proven mala fides or extensive prior use, statutory rights in a registered mark will be enforced where patient safety could be compromised. The decision reflects a careful balancing of commercial rights and public health, ultimately tilting in favour of caution, ensuring that avoidable risks arising from brand confusion in life saving drugs are decisively curtailed.

Logistics companies invest heavily in smarter ways to move goods, manage warehouses, predict delivery timelines, and optimise supply chains. As these systems become more sophisticated, a common question comes up: should the business try to patent the innovation, or keep it confidential as a trade secret?

This is not always an easy choice. In logistics business, many innovations sit in the space between a technical invention and a business process. Think of route-optimisation tools, warehouse allocation models, predictive delivery systems, inventory synchronisation platforms, or automated fleet-coordination methods. These solutions may be commercially valuable, but that does not automatically mean they are easy to patent.

Why patents can be risky for process innovation

Under Indian patent law, business methods and algorithms are generally excluded from patent protection unless the invention shows a real technical effect or technical contribution. Similar limits apply in the UK and Europe, where business methods “as such” are not patentable. In the US too, software and business-method patents face heavier scrutiny after Alice Corp. v. CLS Bank International. In short, if the innovation mainly improves the way a business operates, rather than solving a technical problem in a technical way, patent protection may be difficult.

There is also a business risk that companies sometimes underestimate: disclosure. A patent application is normally published before the examination process is complete. If the application is later refused because it lacks inventive step or falls within an excluded category, the company may end up disclosing a valuable process without getting enforceable rights in return.

That is especially risky in logistics, where the real value often lies in internal operating logic with focus on how orders are prioritised, how routes are calculated, how stock is allocated, or how delivery performance is predicted. Once that logic is made public, competitors may learn from it without bearing the cost of developing it themselves.

When trade secret protection makes more sense

For many logistics businesses, trade secret protection may be the more practical option. Unlike patents, trade secrets do not require registration or public disclosure. Protection comes from keeping the information confidential through contracts, access controls, internal policies, cybersecurity safeguards, and clear employee and vendor obligations.

This approach often works well for internal methods that are hard to reverse engineer. For example, a company may choose to protect its allocation rules, pricing logic, customer-priority models, forecasting inputs, training datasets, or decision thresholds as confidential know-how rather than disclose them in a patent filing.

That said, trade secrets are not a perfect solution. They do not stop a competitor from independently developing a similar system, and enforcement can be difficult if the company cannot prove misuse or breach of confidence. In logistics businesses, the risk of leakage is also higher because employees, vendors, software providers, and outsourced partners often have access to parts of the process.

A hybrid strategy is often the smartest approach

In practice, many companies are better served by using both forms of protection. Parts of the innovation that have a strong technical character such as system architecture, sensor integration, device-level automation, or machine-to-machine communication protocols may be suitable for patent protection. At the same time, the business logic, workflows, thresholds, and internal optimisation methods can remain confidential as trade secrets.

Questions to ask before filing a patent

Before filing a patent application, businesses should ask a few practical questions keeping in mind that business-method/software claims in India often require a technical effect or technical contribution. Does the innovation solve a technical problem in a technical way? Is there a real technical effect? Can competitors reverse engineer it if it is only kept confidential? How visible is the innovation in the market? And most importantly, is the benefit of possible exclusivity worth the risk of disclosure if the patent is refused? Therefore, the central strategic question is not merely whether an innovation is valuable, but whether the benefits of disclosure outweigh the risks of losing secrecy.

To conclude

For logistics companies, the decision should not be reduced to a simple patent-versus-trade-secret debate. The better approach is to break the innovation into parts and decide what should be disclosed to seek exclusivity, and what should be kept confidential to preserve long-term commercial advantage. A thoughtful IP strategy is usually less about choosing one label and more about protecting the right parts in the right way.

Introduction

Does a court retain any power once it pronounces its final judgment? This question, rooted in the doctrine of functus officio, came up for consideration before the Delhi High Court in a trademark infringement action involving Mahindra and Mahindra Limited. The decision offers clarity on the limits of judicial power post-decree, particularly in the context of evolving remedies such as dynamic injunctions.

Factual Background

The plaintiff instituted a suit alleging trademark infringement and passing off against the defendants, Diksha Sharma and others who were operating a packers and movers business under deceptively similar names such as “Mahindra Packers Movers” and related domain names www.mahindrapackers.com, www.mahindrapackers.in, www.mahindrapackersmovers.com, etc.

At the initial stage, the Court granted an ex parte ad-interim injunction restraining use of the mark “MAHINDRA” and issued directions, including:

1. Blocking and suspension of infringing domain names
2. De-indexing from search engines
3. Directions to government authorities, including the Department of Telecommunications

Subsequently, the Court modified its order to:

1. Permit impleadment of mirror/redirect domain names
2. Empower the Joint Registrar to extend injunctions to such newly identified domains

Pursuant to these directions, additional defendants were impleaded and injunctions extended. Entities such as domain registrars, search engines, and government authorities complied with the Court’s orders.

Upon noting full compliance, the Court proceeded to decree the suit without requiring oral evidence.

After the decree, the plaintiff sought further liberty to:

1. Implead future mirror/redirect/alphanumeric websites
2. Do so through applications under Order I Rule 10 Civil Procedure Code (CPC)
3. Enable the Joint Registrar to extend the existing injunction to such entities

This raised a fundamental issue: Can a court, after passing a final decree, continue to expand the scope of its reliefs?

Plaintiff’s Arguments

The plaintiff contended that:

1. Relief need not be expressly pleaded, relying on Order VII Rule 7 CPC
2. The pleadings already contemplated future infringing variants
3. The Court could invoke its inherent powers under Section 151 CPC to extend the effect of the decree

Court’s Analysis

The Court rejected the contentions and held:

• Doctrine of Functus Officio

Once a judgment is pronounced, the court becomes functus officio. Its jurisdiction is exhausted except for:

1. Review of the judgment
2. Correction of clerical or arithmetical errors under Section 152 CPC

It cannot reopen, modify, or expand the scope of the decree.

• Limits of Section 151 CPC

The Court clarified those inherent powers under Section 151 CPC:

1. Operate only during the pendency of proceedings
2. Cannot be invoked to bypass express procedural limitations
3. Cannot be used to grant substantive post-decree relief

• Finality of Proceedings

Allowing post-decree impleadment and extension of injunctions would:

1. Keep the suit perpetually “alive”
2. Undermine the doctrine of finality
3. Blur the distinction between adjudication and execution

• Status of Interim Orders

Interim injunctions merge into the final decree and cease to exist independently. They cannot be revived or extended after the decree.

• Dynamic Injunctions

While acknowledging the utility of dynamic injunctions in combating online infringement, the Court held that:

1. Such reliefs can only be granted while the suit is pending
2. Post-decree expansion is impermissible under the current CPC framework

Conclusion

The Court, while decreeing the suit, rejected the plaintiff’s request to:

1. Implead additional mirror/variant websites post-judgment under Order I Rule 10 CPC
2. Empower the Joint Registrar to extend the injunction using Section 151 CPC

The Court emphasized the limits of the doctrine of functus officio, reaffirming that once a decree is passed, the Court’s jurisdiction effectively comes to an end, subject only to narrow statutory exceptions. While the plaintiff’s concerns regarding evolving online infringements are legitimate, the Court makes it clear that such challenges cannot justify an expansion of judicial power beyond the framework of the CPC.

Comment

The decision focusses on the emerging gap between conventional procedural frameworks and the realities of a rapidly evolving digital environment. By resisting any expansion of procedural limits, the Court makes it clear that the development of remedies, particularly mechanisms like dynamic injunctions must come through legislative reform rather than judicial innovation post-decree.

Introduction

A Division Bench of the Bombay High Court recently considered an appeal arising from the refusal of interim injunctive relief in a trademark dispute between Minco India Private Limited and Minco India Flow Elements Private Limited. The case presents an intersection of trademark law principles with family business dynamics, highlighting how suppression of material facts and acquiescence can defeat even a registered proprietor’s claim at the interim stage.

Factual Background

The dispute originates from a commercial suit instituted by the plaintiff, Minco India Private Limited, alleging trademark infringement, passing off, and related claims against the defendant, Minco India Flow Elements Private Limited. The plaintiff sought to restrain the defendant from using the mark “MINCO” in connection with its business.

The plaintiff asserted that it had been engaged in the manufacture and supply of gauges and related instruments since 1982 and had continuously used the mark “MINCO INDIA” since then. Over decades, the mark was claimed to have acquired substantial goodwill and distinctiveness, becoming exclusively associated with the plaintiff’s business.

In February 2024, the plaintiff claimed to have discovered that the defendant was using the identical mark “MINCO” for similar industrial products such as flow meters. Alleging dishonest adoption and prior knowledge on the defendant’s part, the plaintiff pointed to an instance of confusion involving a third-party complaint wrongly attributed to it. On this basis, the suit and accompanying application for interim injunction were filed.

Order of the Single Judge

The Learned Single Judge declined to grant interim relief. While acknowledging certain aspects of the plaintiff’s case, the Court held that the plaintiff was not entitled to equitable relief.

The refusal was primarily grounded in:

1. Suppression of material facts and prima facie false statements by the plaintiff;
2. The defendant’s prior and continuous use of the mark since 2012;
3. The defendant’s substantial business operations and turnover; and
4. The plaintiff’s failure to establish a prima facie case of passing off, particularly in the absence of pleadings or evidence demonstrating misrepresentation.

Accordingly, the balance of convenience was found to favour the defendant.

Appeal Before the Division Bench

Aggrieved by the refusal of interim relief, the plaintiff preferred an appeal, contending inter alia:

1. The Single Judge erred in denying relief on the ground of suppression, relying on background facts such as the historical relationship between the parties.
2. The alleged omissions relating to a 2012 no-objection certificate (NOC), the plaintiff’s directorial role until 2015, and the date of knowledge did not constitute material suppression sufficient to disentitle equitable relief.
3. The plaintiff, being the prior user since 1982 and a registered proprietor, held superior rights in the mark.
4. The defendant’s reliance on concurrent use was misplaced, particularly as its 2022 trademark application was filed on a “proposed to be used” basis.
5. Mere delay does not amount to acquiescence unless it reflects implied consent creating enforceable rights, which was absent in the present case.

Defendant’s Submissions

The defendant, in response, argued:

1. The plaintiff had not made full disclosure of the relationship between the parties, reducing it to a bare reference despite deep business and familial ties.
2. The products in question were customized, specification-based industrial goods, often not bearing trademarks, and were sold under corporate names rather than as branded products.
3. The parties were brothers, and their businesses originated from a common family enterprise, later divided but continuing similar operations.
4. The defendant had adopted the name “MINCO” in 2012 pursuant to a no-objection from the plaintiff, and both parties had coexisted for over a decade.
5. The plaintiff’s prolonged inaction, despite knowledge, amounted to acquiescence, and the present suit disrupted a long-standing understanding of coexistence.

Findings of the Division Bench

The Division Bench reiterated the settled principle that an appellate court should not interfere with the exercise of discretion by a trial court unless it is shown to be arbitrary, perverse, or contrary to settled principles.

• Knowledge and Suppression of Material Facts

The Court found that the plaintiff’s assertion of acquiring knowledge only in February 2024 was prima facie incorrect. The records evidence that:

1. A no-objection certificate in 2012 permitting the defendant to adopt the name “MINCO”
2. The fact that both brothers served as directors in each other’s companies until 2015; and
3. Continued proximity and shared clientele.

In light of these facts, the plaintiff’s portrayal of the defendant as an unrelated third party was held to be misleading, amounting to suppression of material facts.

• Acquiescence as a Complete Defence

The Court held that the defendant’s open and continuous use of the mark since 2012, coupled with the plaintiff’s knowledge and inaction, constituted acquiescence.
This long-standing use of the defendant was found sufficient to disentitle the plaintiff from interim relief, particularly given the equitable nature of such relief.

• Scope of Trademark Rights in Context

While acknowledging that registration confers exclusivity, the Court clarified that such rights are not absolute and must be assessed in context.

In the present case:

1. Both entities originated from the same family business;
2. Their operations were historically intertwined; and
3. The defendant’s adoption of the mark was not in the nature of a third-party encroachment.

Accordingly, the plaintiff’s statutory rights could not be enforced in isolation from these surrounding circumstances.

• Absence of Prima Facie Case and Likelihood of Confusion

The Court also noted:

1. The goods involved were specialized, made-to-order industrial products, reducing the likelihood of confusion;
2. The plaintiff relied on only a single instance of alleged confusion; and
3. There was insufficient material to establish misrepresentation or passing off.

• Balance of Convenience

Given the defendant’s long-standing use since 2012 and the plaintiff’s inaction, the balance of convenience clearly favoured the defendant. Granting an injunction at this stage would disrupt an established business practice.

Conclusion

In view of the above, the Division Bench upheld the order of the Learned Single Judge and dismissed the appeal. The refusal of interim relief was affirmed on the grounds of:

1. Suppression of material facts, and
2. Acquiescence arising from prolonged inaction despite knowledge.

Comment

The decision reinforces that interim relief in trademark disputes is not granted as a matter of course, even in favour of a registered proprietor. Courts will closely scrutinize the conduct of the parties, especially in cases involving longstanding relationships and shared business origins. Where a plaintiff has acknowledged the defendant’s use over time and failed to make full and frank disclosures, equitable relief may justifiably be denied. The judgment thus highlights that delay, coupled with acquiescence and suppression of facts, can outweigh statutory rights at the interlocutory stage.

This appeal before the Division Bench (two Judge Bench) of the Bombay High Court arose from an order of the Learned Single Judge granting an interim injunction in a trademark dispute. The plaintiff, Bhavesh Suresh Kataria, had instituted a suit against Kataria Insurance Brokers Pvt. Ltd., alleging trademark infringement and passing off, and sought to restrain the defendant from using the mark “Kataria” in relation to its business.

Background of the Dispute

The plaintiff claimed to be engaged in the insurance business since 1999 and to have specialized in jewellery insurance from 2004 under the name “Kataria Jewellery Insurance Consultancy.” According to the plaintiff, continuous and extensive use of the mark “KATARIA” since 2004 had rendered it distinctive of its business, resulting in substantial goodwill and reputation.

The plaintiff further asserted that it is the registered proprietor of the mark “KATARIA” and in Class 36 and has operated the domain name “www.kataria.insurance” since 2007.

In 2014, the plaintiff discovered that the defendant had incorporated a company under the name “Kataria Insurance Brokers Pvt. Ltd.” and raised objections. Despite assurances to change its name, the defendant allegedly failed to comply, leading to the issuance of a cease-and-desist notice. The plaintiff later found that the defendant continued using the impugned name through the domain “katariainsurance.co.in.”

Consequently, the plaintiff filed the present suit seeking a permanent injunction along with interim relief.

Defendant’s Case

The defendant refuted the allegations, contending that “Kataria” is a long-standing family surname used since 1955 across multiple group entities. It was argued that the plaintiff cannot claim exclusivity over a common surname.

The defendant traced its lineage to a partnership firm, Kataria Transport Company (established in 1955), and highlighted the subsequent incorporation of several entities such as Kataria Infrastructure Pvt. Ltd. (1982), Kataria Automobiles Pvt. Ltd. (1990), Kataria Motors Pvt. Ltd. (2002), and Kataria Wheelers (2011), many of which were engaged in automobile and insurance-related services.

It was further contended that:

1. The use of “KATARIA” is bona fide and protected under Section 35 of the Trademarks Act.
2. The parties operate in distinct segments, jewellery insurance versus automobile/general insurance.
3. No likelihood of confusion arises due to this market distinction.
4. The defendant was willing to undertake not to enter the jewellery insurance segment.

Findings of the Single Judge

The Single Judge granted interim relief in favour of the plaintiff, holding that:

1. The plaintiff is the registered proprietor of the mark “Kataria” in Class 36, and the defendant’s use of “Kataria Insurance” and its corporate name was identical or deceptively similar.
2. The defence under Section 35 was unavailable to the defendant, as it applies only to individuals and not corporate entities.
3. The plaintiff was the prior adopter and user of the mark, with established goodwill in the insurance sector.

Appeal Before the Division Bench

Aggrieved by the order, the defendant preferred an appeal before the Division Bench, reiterating its long-standing use of the surname and challenging the interpretation of Section 35.

Analysis and Findings of the Division Bench

The central issue before the Court was whether the protection under Section 35, relating to bona fide use of one’s own name extends to incorporated entities.

Applicability of Section 35 to Companies

The Division Bench disagreed with the Single Judge’s restrictive interpretation. It held that the term “person” under Section 35 includes companies, in light of the General Clauses Act. Accordingly, a corporate entity may also invoke the defence of bona fide use of its own name.

On facts, the Court found that:

1. “Kataria” is a family surname.
2. The name has been continuously used since 1955 across several family-run businesses.
3. The adoption of the name by the defendant was not opportunistic, but a continuation of established business practice.

The Court therefore held that the defendant’s use was bona fide and protected under Section 35.

Scope of Trademark Protection in Class 36

The Court also addressed the argument relating to the breadth of Class 36, noting that it encompasses a wide range of services, including insurance, finance, and real estate.

It clarified that:

• Registration in a class does not confer monopoly over all services within that class.
• Protection is limited to the specific services for which the mark is used and registered.

No Likelihood of Confusion

A key factor in the Court’s reasoning was the distinction between the parties’ businesses:

• The plaintiff operated in the niche segment of jewellery insurance.
• The defendant was engaged in automobile and general insurance.

Given this clear market differentiation, the Court held that there was no likelihood of confusion or deception, and therefore no infringement under Section 29.
Equities and Balance of Convenience

The Court further noted that:

• The defendant had built substantial goodwill over decades of continuous use.
• Restraining the defendant would cause significant prejudice.
• The defendant’s undertaking not to enter the jewellery insurance segment adequately safeguarded the plaintiff’s interests.

Conclusion

In light of the above findings, the Division Bench set aside the interim injunction granted by the Single Judge and allowed the appeal. The defendant was permitted to continue using “Kataria” in its trade name, corporate name, and domain name.

Comment

This decision underscores a balance in trademark law between statutory exclusivity and the legitimate use of personal or family names. By recognizing that Section 35 extends to corporate entities and giving due weight to long-standing, bona fide use, the Division Bench reaffirmed that trademark rights cannot be stretched to monopolize common surnames, especially in the absence of real market overlap or likelihood of confusion.

The Bombay High Court recently considered an interim injunction application in a trademark dispute between Rynox Gears and Steelite India, involving the competing marks “RYNOX” and “RHYNOX” in the motorcycle accessories market. The case raised questions of trademark infringement, passing off, prior use, and the consequences of inconsistent pleadings in commercial litigation.

Background of the Dispute

The Plaintiff, Rynox Gears, is a partnership firm established in 2012, engaged in the manufacture and sale of motorcycle protective gear such as jackets, gloves, and luggage systems under the mark “RYNOX.” The Plaintiff asserted that the mark forms a key part of its trade identity and enjoys substantial goodwill and reputation, supported by registrations, sales figures, and promotional activities.

The dispute arose when the Plaintiff discovered in June 2023 that the Defendant, Steelite India, had obtained registration for the mark in Class 9, specifically for helmets. Alleging deceptive similarity and likelihood of confusion, the Plaintiff issued a cease-and-desist notice in October 2023 and subsequently filed a suit when the Defendant resumed use of the impugned mark.

Plaintiff’s Case

The Plaintiff’s claims were founded on prior use since 2012 and registration of the “RYNOX,” and marks, with an application filed in August 2016 and registration granted in 2017. It also relied on its device mark registration obtained in 2019.

Key submissions included:

1. The marks “RYNOX” and “RHYNOX” are phonetically identical and likely to confuse consumers.
2. The Defendant’s goods, helmets are allied and cognate to the Plaintiff’s motorcycle gear, sharing trade channels and consumer base.
3. Substantial goodwill exists in the “RYNOX” mark across motorcycle accessories.
4. Evidence of actual confusion was cited, including an instance where an e-commerce platform listed the Defendant’s product under the Plaintiff’s mark.

Defendant’s Defence

The Defendant contested both infringement and passing off, raising several defences:

1. The mark “RHYNOX” was independently adopted in 2016, inspired by the rhinoceros, and selected after a trademark search.
2. Registration was obtained in 2017, and continuous use has been made specifically for helmets.
3. The Plaintiff does not manufacture helmets and has misrepresented this fact.
4. The alleged cease-and-desist notice was never received.
5. The parties operate in distinct markets, motorcycle apparel versus helmets, which require specific certifications and cater to a different segment.
6. The Plaintiff’s delay and lack of awareness of the Defendant’s activities since 2017 indicate separate market presence.

The Defendant also challenged the Plaintiff’s entitlement to equitable relief, citing inconsistencies and alleged false statements in the pleadings.

Issues Before the Court

The Court examined:

1. Whether a prima facie case of trademark infringement was made out.
2. Whether the Plaintiff established the classical trinity of passing off, goodwill, misrepresentation, and damage.
3. The effect of alleged suppression and misstatements on the Plaintiff’s claim for equitable relief.

Court’s Analysis

• Trademark Infringement

The Court noted that both parties were registered proprietors of their respective marks. Moreover, the Plaintiff had not challenged the validity of the Defendant’s registration.
It further observed that:

1. The Defendant applied for registration in January 2017 after conducting a search.
2. At that time, the Plaintiff’s mark had not yet been published.
3. The Plaintiff’s mark was published later in January 2017 and registered in June 2017.

In these circumstances, the Defendant’s registration was not prima facie illegal or fraudulent. Accordingly, the Court held that no case for infringement was made out.

• Passing Off and Clean Hands

The Court placed significant emphasis on inconsistencies in the Plaintiff’s pleadings:

1. The Plaintiff initially claimed to be manufacturing and marketing helmets since 2012.
2. When challenged, it shifted its position to argue that its goods are allied and cognate to helmets.
3. The Court found the original assertion regarding helmets to be prima facie incorrect.

Similarly, with respect to the cease-and-desist notice:

1. The Plaintiff claimed the notice had been received and acted upon by the Defendant.
2. However, records showed the notice was returned unserved.
3. The Plaintiff later stated that proof of delivery had been misplaced.

The Court held that these misstatements were material and appeared to have been made to justify the delay in filing the suit. Such conduct, it observed, undermines a party’s entitlement to equitable relief.

Reiterating the principle that a litigant must approach the Court with clean hands, the Court held that suppression or misrepresentation of material facts can itself be a ground to deny relief at the threshold.

• Goodwill and Market Overlap

On the substantive elements of passing off:

1. The Court found that the Plaintiff failed to establish goodwill in the helmet segment as of 2016, when the Defendant adopted its mark.
2. The Plaintiff’s business was primarily in apparel and accessories, not helmets.

While the Plaintiff argued that the goods were allied and cognate, the Court was not persuaded that sufficient market overlap existed to establish misrepresentation.

• Similarity of Marks

The Court conducted an overall comparison of the marks and found:

1. is a composite mark with a rhinoceros device and stylized lettering.
2. The visual and structural elements distinguished it from “RYNOX.”

On this basis, the Court held that the marks were not deceptively similar to cause confusion.

• Evidence of Misrepresentation and Damage

The Plaintiff relied on a single instance of alleged confusion on an e-commerce platform. The Court held that:

1. A solitary instance is insufficient to establish likelihood of deception.
2. There was no evidence that the Defendant marketed its goods as those of the Plaintiff.

Further, in the absence of goodwill in the relevant segment, the Plaintiff failed to establish damage.

Decision

The Court concluded that:

1. No prima facie case of infringement was made out.
2. The Plaintiff failed to establish the elements of passing off.
3. Material inconsistencies and misrepresentations in the pleadings disentitled the Plaintiff to equitable relief.

Accordingly, the application for interim injunction was dismissed.

Comment

The ruling serves as a reminder for litigants in commercial disputes to ensure accuracy and consistency in pleadings, particularly when seeking equitable remedies such as injunctions.

A contentious trademark dispute before the Delhi High Court between Novartis AG and the “Noviets” group of entities has resulted in the grant of an interim injunction restraining the Defendants from using the mark “NOVIETS.” The case presents a conflict involving allegations of trademark infringement, passing off, unfair competition, dilution, etc, in the pharmaceutical sector where courts consistently apply an enhanced standard due to public health implications. This note discusses the rival submissions of the parties and the Court’s ruling on the interim injunction application.

Background and Plaintiff’s Case

The Plaintiffs, forming part of the globally renowned Novartis Group, asserted longstanding rights in the mark “NOVARTIS,” adopted in 1996 and used extensively across jurisdictions, including India. With a presence in India dating back to 1947, the Plaintiffs emphasized their substantial goodwill, extensive sales, and significant promotional activities.

The “NOVARTIS” mark, serving as a house mark, has acquired distinctiveness and source-identifying significance. The Plaintiffs contended that the Defendants’ mark “NOVIETS,” used in relation to pharmaceutical and veterinary products, is deceptively similar, visually, phonetically, and structurally.

The dispute traces back to October 2020, when the Plaintiffs discovered the Defendants’ trademark application for “NOVIETS.” Despite issuing multiple legal notices and initiating opposition proceedings which led to abandonment of the application, the Defendants continued their use. In January 2024, the Plaintiffs discovered the Defendants’ products bearing the impugned mark on IndiaMart, prompting the present suit.

The Plaintiffs argued that:

1. The marks ‘NOVARTIS’ and ‘NOVIETS’ are deceptively similar and used for identical goods.
2. The Defendants’ adoption is dishonest and intended to ride on the Plaintiffs’ goodwill.
3. In pharmaceutical cases, even a likelihood of confusion is sufficient due to potential public health risks.
4. Interim injunction can be granted even against a registered mark if prior rights are established.

Defendants’ contentions

The Defendants resisted the injunction on several grounds:

1. Lack of territorial jurisdiction, asserting no commercial activity in Delhi and their IndiaMart listing as passive.
2. Distinctiveness of the mark “NOVIETS,” arguing that “NOV” is a generic prefix widely used in the pharmaceutical trade.
3. Bona fide adoption and limited use as a trade name rather than a product mark.
4. Absence of confusion, misrepresentation, or damage, given their localized, offline operations.

Court’s Analysis and Findings

Jurisdiction

At the interim stage, the Court applied the demurrer principle, accepting the plaint’s averments as true. It held that the Defendants’ IndiaMart listing and “Contact Us” page indicating Delhi as a place of business prima facie established purposeful targeting of consumers within Delhi.

The Court observed that the determination of whether the online presence is “passive” or “interactive” involves a mixed question of law and fact and therefore cannot be conclusively decided at the preliminary stage.

Deceptive Similarity and Dishonest Adoption

The Court found a strong prima facie case of deceptive similarity:

1. Both marks share the dominant element “NOV”
2. Structurally and phonetically, “NOVARTIS” and “NOVIETS” are similar.
3. Minor variations were held insufficient to dispel confusion.

Applying the dominant feature test, the Court held that the essential feature of the Plaintiffs’ mark had been appropriated.

The Defendants’ argument that “NOVIETS” was used only as a trade name was rejected, with the Court clarifying that such use does not safeguard against infringement or passing off.

Further, the Court noted the absence of any plausible explanation for the adoption of the mark “NOVIETS,” concluding that the adoption was prima facie dishonest and intended to capitalize on the Plaintiffs’ reputation.

Goodwill, Confusion, and Public Interest

The Plaintiffs successfully demonstrated substantial goodwill and reputation. The Court emphasized that:

1. Actual confusion need not be proven; likelihood of confusion suffices.
2. From the standpoint of an average consumer with imperfect recollection, the marks are nearly indistinguishable.
3. In pharmaceutical cases, stricter scrutiny is warranted due to risks to public health.

Generic Defence Rejected

The Defendants’ argument that “NOV” is generic was dismissed. The Court observed that having themselves sought registration of “NOVIETS,” the Defendants could not simultaneously claim that the mark lacks distinctiveness.

Triple Identity and Balance of Convenience

The Court found the presence of “triple identity”, similar marks, identical goods, and overlapping consumer base, strongly favouring the Plaintiffs.

On the balance of convenience, the Court held that:

1. Continued use by the Defendants would irreparably harm the Plaintiffs’ goodwill.
2. The Plaintiffs had established a strong prima facie case.
3. Irreparable injury would ensue absent interim relief.

Conclusion

The Delhi High Court granted an interim injunction restraining the Defendants from using the mark “NOVIETS” or any deceptively similar mark in relation to pharmaceutical and veterinary products, whether as a trademark or trade name.

The case is a reaffirmation of the enhanced protection accorded to pharmaceutical trademarks and the judiciary’s role in preventing consumer confusion in matters impacting public health.

A recent decision of the Delhi High Court reiterates a fundamental principle of Indian trademark law, prior user rights prevail over statutory registration. In a dispute over the mark “ATHERMAL,” the Court set aside an injunction granted by the District Court and granted interim protection to the party claiming earlier use of the mark.

Background

The appeal arose from an order passed by the Additional District Judge-04, North-West District, Rohini Courts, Delhi. Aggrieved by the order restraining him from using the mark “ATHERMAL,” the Defendant, Amit Bansal, approached the High Court in appeal.

The Respondent/Plaintiff, Amit Garg, had instituted a suit before the District Court claiming that he carried on business under the name M/s Athermal Industries AG, engaged in the manufacture and marketing of various goods. It was further asserted that Respondent No. 2, a proprietorship concern run by his family members, marketed the same range of goods under the subject mark.

According to the Respondents, the mark “ATHERMAL” was honestly conceived and adopted in 2003 through a predecessor. An application for registration of the mark in Class 9 was filed in 2010, which was subsequently granted registration in 2017.

In response, the Appellant/Defendant asserted in the Written Statement that the mark “ATHERMAL” had been in use since 1985 by his predecessor-in-title, Rajinder Kumar Bansal, who carried on business as M/s Ambay Traders and Manufacturers from the same premises. Mr. Bansal, the Appellant’s father, was said to have adopted and used the mark, which the Appellant later continued to use after establishing his own enterprise in 2006 under the name M/s Ambay Industrial Corporation.

Both parties moved applications before the District Court seeking interim injunctions against the use of the mark “ATHERMAL.” By the impugned order, the Court allowed the Plaintiff’s application and rejected the Defendant’s application, thereby restraining the Appellant from using the mark.

Appellant’s Contentions Before the High Court

The Appellant argued that the mark “ATHERMAL” was coined and adopted in 1985 by his father, Mr. Rajinder Kumar Bansal, who extensively used it for welding-related goods, including welding apparatus, cables, regulators, transformers, machines, tools and welding safety glasses.

When the Appellant commenced his own business in 2006 under M/s Ambay Industrial Corporation, he continued using the mark with his father’s permission, operating from the same premises and issuing invoices under the mark.

The Appellant further contended that:

1. The Respondents had commenced business only in October 2011, making it improbable that they had used the mark earlier.
2. The Appellant had filed trademark applications for “ATHERMAL” in 2011 in Classes 9 and 7, which were still pending before the Trademarks Registry.
3. Several examination reports issued by the Registry cited the Appellant’s applications as conflicting marks against the Respondents’ applications.
4. In response to those examination reports, the Respondents argued that the Appellant’s mark was visually, structurally and phonetically different, thereby acknowledging the existence of the Appellant’s mark.

The Appellant also alleged that the invoices filed by the Respondents to establish prior use were forged and illegible.

Respondents’ Submissions

The Respondents maintained that Respondent No. 1 commenced business under the subject mark in 2003 through Respondent No. 2, M/s Shiva Traders, a family proprietorship run by his mother, Ms. Asha Rani. According to them, rights in the mark were transferred through an oral family settlement.

They further argued that:

1. The Appellant’s claim of use since 1985 was unsupported by documentary evidence.
2. No assignment deed existed transferring the mark from Mr. Rajinder Bansal to the Appellant.
3. The Appellant’s trademark applications claimed use only from 2006, indicating that the Appellant was neither the prior applicant nor prior user.
4. The Respondent had secured registration of the subject mark in 2017, while the Appellant’s applications remained pending.
5. The Appellant attempted to amend the user date from 2006 to 1985 in 2018, which is belated and a substantial change.

The Respondents also alleged that the Appellant’s invoices were fabricated and argued that there was no evidence of use after 1999, suggesting abandonment.

High Court’s Analysis and Findings

The High Court examined two principal issues: (i) alleged inconsistency in the Respondents’ stand before the Trademarks Registry and the Court, and (ii) the competing claims of prior use.

The Appellant contended that the Respondents had earlier asserted before the Trademarks Registry that the marks were dissimilar and therefore could not now claim deceptive similarity in the suit. However, the Court observed that although the Appellant’s mark had been cited against some applications of the Respondents, it had not been cited against the subject mark in Class 9, which formed the basis of the present suit. Consequently, the principle of approbate and reprobate did not apply in the circumstances.

The Court then examined the rival claims of prior use. The District Court had accepted the Respondents’ claim of use since 2003, while rejecting the Appellant’s claim on the ground that the Appellant had not produced a formal assignment deed from his predecessor and that his trademark applications were still pending.

The High Court found this reasoning erroneous. It noted that the Appellant had produced invoices dating back to 1990, showing use of the mark through his predecessor, Mr. Rajinder Kumar Bansal. At the same time, the Respondents’ claim of rights in the mark was based on an oral family settlement, which had been accepted by the Trial Court without similar scrutiny.

In view of the documentary material placed on record, the Court held that the Appellant had made out a prima facie case of prior use since at least 1990. The Court reiterated the settled principle that prior user rights prevail over registration, and therefore the Appellant’s earlier use was prima facie superior to the Respondent’s registered mark, which claimed user only from 2003.

Decision

In light of these findings, the High Court allowed the appeal and set aside the order of the District Court. The Court restrained the Respondent/Plaintiff from using the subject mark “ATHERMAL” or any mark deceptively similar to it in relation to welding goods during the pendency of the suit.

Comment

This ruling reinforces the well-established principle of trademark law that prior user rights prevail over statutory registration. By recognising the Appellant’s prima facie evidence of earlier use of the mark “ATHERMAL,” the Court emphasised that actual market use and commercial goodwill carry greater weight than mere registration, particularly at the interim stage.

The Division Bench of the Delhi High Court recently dismissed the appeal filed by Star Smith Export Private Limited and upheld the interim injunction granted in favour of A. O. Smith Corporation in a trademark infringement dispute. The dispute concerned the defendants’ use of the mark “STAR SMITH” in relation to products such as geysers, water heaters and purification systems. The plaintiffs contended that the impugned mark was deceptively similar to their well-known and registered trademark “AO SMITH.” The Court observed that “SMITH” constituted the dominant element of the competing marks, and considering the identical nature of goods, overlapping trade channels and the likelihood of consumer confusion, the use of the mark “STAR SMITH” was likely to mislead consumers. The Court also took note of the plaintiffs’ prior use and established reputation in India, which predated the defendants’ adoption of the impugned mark.

Accordingly, the appeal was dismissed and the defendants were restrained from using “STAR SMITH” as a trademark, corporate name or domain name. The Court further directed the defendants to change their corporate name and domain name within the timelines prescribed by the Court. RNA Technology and IP Attorneys represented A.O. Smith Corporation in this matter.