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Category: trademark

trademark

SAKTHI vs SHAKTI: Lessons on Trademark Rectification

The Delhi High Court recently issued a landmark ruling in P.C. Duraisamy v. Kewal Krishan Kumar, ordering the removal of the SHAKTI trademark from the Register. The case highlights the limitations of claiming rights over a standalone word based solely on its inclusion in a composite mark. Despite the respondent's clever legal arguments under Sections 17 and 55(2) of the Trade Marks Act, the Court demanded actual evidence of independent use. This decision serves as a vital reminder that paper registrations without genuine, verifiable commercial usage are highly vulnerable to cancellation.

9 min read
trademark

Decoding Section 9: Absolute Grounds for Trademark Refusal

Section 9 of the Trade Marks Act 1999 establishes the absolute grounds for refusing trademark registration in India. It targets marks that lack distinctiveness, consist of descriptive terms, or have become customary in trade. Understanding the nuances between Section 9(1)(a), (b), and (c) is essential for practitioners seeking to overcome examination objections. Furthermore, the proviso to Section 9(1) offers a crucial pathway for registration through acquired distinctiveness. This article details the evidentiary standards required to prove secondary meaning and successfully navigate the Registrar’s objections to descriptive or generic trademarks.

18 min read
trademark

Delhi HC: Beer and Whisky Are Allied and Cognate Goods

The Delhi High Court’s landmark interim order in Devans Modern Breweries v. Cartel Bros clarifies essential trademark principles for the liquor industry. Justice Tushar Rao Gedela confirmed that beer and whisky are allied and cognate goods despite pricing and alcohol content differences. The Court also held that a registered proprietor’s right to sue is not extinguished by non-use in a specific sub-category. Crucially, the anti-dissection rule cannot be used to mask the adoption of a dominant mark within a composite label. This ruling serves as a vital precedent for brand enforcement.

13 min read
trademark

A Guide to Trademark Rectification Under Section 57

Trademark rectification is a critical tool for business owners to challenge invalid or abandoned registrations on the Register. Under Section 57 of the Trade Marks Act, 1999, parties can seek to cancel or vary registrations based on non-use, fraud, or deceptive similarity. Recent judicial developments, including the Bombay High Court’s ruling in Raman Kwatra, have introduced important nuances regarding forum conveniens and jurisdiction in a post-IPAB landscape. This guide provides a comprehensive breakdown of the grounds for rectification, the 'aggrieved person' standard, and the strategic interplay between rectification and pending infringement suits.

14 min read
trademark

Natural Justice in Trademark Refusals: Purpos Planet Ruling

The Delhi High Court's ruling in Purpos Planet v. The Registrar of Trade Marks reinforces the fundamental requirement for quasi-judicial bodies to provide reasoned, speaking orders. When the Registry refuses a trademark application without addressing the applicant's substantive submissions—such as the anti-dissection rule or prior registrations—it violates natural justice. This case highlights the necessity of thorough examination practices and the right of applicants to receive a detailed explanation for rejection. The decision serves as a critical reminder that Registry orders must engage with the specific legal contentions raised by trademark applicants.

13 min read
trademark

DRS Logistics v. Google: Trademark Contempt Dismissed

The Delhi High Court has dismissed a contempt application filed by DRS Logistics against Google, clarifying the limits of platform liability in keyword advertising disputes. Justice Tejas Karia ruled that while Google remains bound by its policy-based undertaking to protect trademarks, prior court orders did not impose a proactive, continuous monitoring obligation on the platform. This judgment distinguishes between actionable keyword use and explicit Ad-Text appearances, offering a critical roadmap for trademark owners to navigate the complaint-based enforcement model currently preferred by Indian courts in digital advertising.

14 min read
trademark

Blue Cross Wins MEFTAL-SPAS Trademark Case in Bombay HC

The Bombay High Court has issued a permanent injunction in favor of Blue Cross Laboratories, halting the sale of 'MEFIAL-SPAS' by Alto Healthcare. This case serves as a masterclass in pharmaceutical IP enforcement, combining trademark infringement and copyright claims to protect a long-standing brand identity. With a significant cost award of Rs. 10 Lakhs, the court reaffirmed its strict stance against blatant imitators. This article examines the court’s application of the deceptive similarity test, the importance of registering packaging artwork, and the consequences of failing to contest commercial IP litigation.

10 min read
trademark

Microtek v. Okaya: Delhi HC Ruling on Trade Libel

The Delhi High Court recently issued an interim injunction against deceptive advertising practices in the battery sector. In the case of Microtek v. Sukhveer Singh & Ors., the court addressed the misuse of court orders to spread false narratives about a competitor’s legal standing via social media. Distinguishing between acceptable comparative advertising and actionable trade libel, the court highlighted that false factual claims targeting a registered trademark are not protected speech. This ruling serves as a critical precedent for brand owners dealing with digital campaigns that damage market reputation through fabricated misinformation.

10 min read
trademark

Konaflex v. Koanaflex: One-Letter Trademark Injunction

The Delhi High Court has reaffirmed that trademark infringement does not require identical marks, only deceptive similarity. In Konaflex v. Koanaflex, the court examined whether adding a single vowel to a brand name sufficiently distinguishes it. Concluding that the marks were phonetically and visually indistinguishable in the trade, the court granted an injunction. This ruling emphasizes that courts prioritize the practical realities of how orders are placed—often orally—over technical spelling differences. For business owners, this highlights the risks of adopting marks that ride too closely to existing coined brands.

7 min read
trademark

Boundary Disputes: Indian Express Trademark Case Analysis

The Bombay High Court has delivered a definitive ruling on trademark boundaries in the long-standing Indian Express family dispute. By upholding an injunction against Express Publications (Madurai), the court clarified that permitted users of a licensed mark cannot expand their commercial activities—such as ticketed events—beyond the specific geographic and functional scope defined by their consent decree. This analysis breaks down the legal principles of derivative marks, the binding force of court-recorded settlements, and why trademark licensees cannot operate outside the clear limitations of their agreements, regardless of their promotional aspirations.

12 min read