Indian Courts
Monday, June 22
Devans Modern Breweries Ltd v. Cartel Bros Pvt. Ltd.
Delhi HC | Justice Tushar Rao Gedela | Trademark
What happened: Devans Modern Breweries, proprietor of the “GODFATHER” mark for beer since the 1980s and for rum/whisky since 2005, sought an interim injunction against Cartel Bros, which had filed “proposed-to-be-used” applications for “THE GODFATHER” and, during the hearing, proposed a revised composite mark “THE GLENWALK GODFATHER’S BY SANJAY DUTT” for a Scotch whisky backed by the actor.
Issue: Whether non-use of a registered mark for one product sub-category defeats a registered proprietor’s right to sue; whether beer (Class 32) and whisky (Class 33) are “allied and cognate” goods under Section 29(4); and whether subordinating a registered word mark to a smaller font and a celebrity-name subscript in a composite mark avoids infringement under the anti-dissection rule?
Ratio & Result: Registration alone confers exclusive rights under Section 28 irrespective of use; mere non-use, absent rectification, does not disentitle a registered proprietor from suing for infringement and in any event the plaintiff placed prima facie proof of actual rum/whisky sales on record. Beer and whisky were held to be allied and cognate goods given common trade channels, retail outlets, and excise regime, notwithstanding price and alcohol-content differences. In a composite mark, an embedded registered word mark retains its essential, eye-catching character even when subordinated by smaller font or a subscript like “By Sanjay Dutt”, the anti-dissection rule does not rescue a mark whose dominant feature remains recognisable. Ad-interim injunction granted restraining Cartel Bros from using “GODFATHER”/”GODFATHER’S” for whisky during the suit’s pendency, with directions to take down related listings and advertisements.
Read full case analysis here: Godfather Trademark case Analysis
Shaafi Naturcure LLP v. Assistant Controller of Patents and Designs
Delhi HC | Justice Tushar Rao Gedela | Patents
What happened: Shaafi Naturcure appealed the refusal of its patent for a six-herb powder composition for treating asthma, arguing among other things, that its Section 6 agreement with the National Biodiversity Authority (NBA) under the Biological Diversity Act should override the Controller’s Section 3(p) objection, and that an inventor’s affidavit (covering five sub-types of asthma, side-effect data, and a 300-patient survey) cured any insufficiency.
Issue: Whether NBA approval under the Biological Diversity Act, 2002 satisfies or overrides patentability requirements specifically the Section 3(p) bar on traditional-knowledge aggregations under the Patents Act, 1970; and whether post-filing affidavit evidence can establish a technical effect for the first time?
Ratio & Result: The BDA and the Patents Act operate in separate legal fields. The NBA’s mandate is confined to regulating access to, and benefit-sharing from, biological resources, not assessing patentability, so a Section 6 BDA agreement does not render a Section 3(p) objection otiose. Post-priority-date evidence can only confirm a technical effect already plausible from the specification, never establish it for the first time; since the asthma sub-classification and side-effect data appeared nowhere in the complete specification, the affidavit could not be relied upon. A composition of six herbs independently known for treating asthma was an obvious aggregation under the TK Guidelines, lacking inventive step and falling foul of Section 3(p); insufficiency objections under Section 10(4)(a)/(b) were also upheld. Appeal dismissed; herbal asthma formulation patent refused.
Read full case analysis: Shaafi Naturcare v. Asst. Controller of Patents and Designs
M/S Sri Lakshmi Srinivasa Agro Foods & Anr. v. Sree Tirumalaa Traders
Delhi HC | Justice Tejas Karia | Trademark
What happened: Sri Lakshmi Srinivasa Agro Foods and SLS Agro Ventures, users of the “LAKSHMI SRINIVASA” marks and a distinctive red trade dress featuring a deity image since 2003, obtained an ex-parte ad-interim injunction against Sree Tirumalaa Traders for allegedly copying the mark and trade dress wholesale, merely prefixing its own name while replicating the red packaging and deity imagery.
Issue: Whether a near-identical mark and trade dress for an identical product (rice), sold through common trade channels to a common consumer base, satisfies the triple-identity test for urgent ex-parte interim relief?
Ratio & Result: Where the competing marks are deceptively similar, the goods are identical, and the trade channels and consumer base are common, the triple-identity test is satisfied, entitling prior adopters and registered proprietors to interim protection; the Court found the defendant’s adoption “prima facie dishonest” and an attempt to ride on the plaintiffs’ goodwill. Ex-parte ad-interim injunction granted restraining use of the impugned mark and trade dress; defendant directed to file its reply within four weeks.
M. Viyan Aarman v. Etecetra Entertainment & Ors.
Madras HC | Justice K. Kumaresh Babu | Copyright/Trademark
What happened: Aarman, claiming exclusive trademark and copyright rights over the title “SAAMANIYAN,” had sued to permanently restrain the release, promotion, and distribution of the Tamil film “Saamaniyan” across theatres, satellite channels, and OTT platforms. His interim injunction application was dismissed back in March 2023, and the film released in 2024 without any reliefs being amended thereafter.
Issue: Whether a suit seeking to restrain a film’s release remains live for adjudication once the film has already been released and the plaintiff has not amended the reliefs sought to claim any alternative remedy.
Ratio & Result: Once the specific relief sought (restraining release/promotion) becomes incapable of being granted because the underlying event has already occurred, and no alternative relief is pleaded, the suit becomes infructuous with nothing left to adjudicate. Suit dismissed as infructuous; no order as to costs.
Wednesday, June 24
P.C. Duraisamy v. Kewal Krishan Kumar & Anr.
Delhi HC | Justice Tushar Rao Gedela | Trademark
What happened: Duraisamy, prior registrant and user of “SAKTHI” since 1977 (with proven use established at least since 2010), sought removal of “SHAKTI” (Reg. No. 701410, applied 1996, registered only in 2018) from the Register, alleging it was a paper registration filed to hijack “SAKTHI” and dilute its goodwill. Respondent No. 3 argued that decades of use of “SHAKTI BHOG” should be deemed use of the standalone word “SHAKTI” under Sections 15, 17, and 55(2) of the Trade Marks Act.
Issue: Whether long-standing use of a composite mark (“SHAKTI BHOG”) can be deemed use of a separately registered, never-independently-used component word (“SHAKTI”) so as to defeat a non-use rectification petition under Section 47(1)(a).
Ratio & Result: Although the Sections 15/17/55(2) interpretation was “captivating,” it could not rescue a party that failed on facts, neither respondent produced a single invoice or document evidencing independent use of “SHAKTI” at any point from 1996 to 2018 or thereafter; “SHAKTI BHOG” usage did not constitute independent use of the standalone mark. The rival marks were found phonetically and structurally identical, both meaning “power”/”energy,” creating a real likelihood of confusion among Class 30 consumers. Mark “SHAKTI” expunged under Sections 47(1)(a) and 57(2) (the separate Section 47(1)(b) ground failed, as the petition was filed within five years of registration); Registrar directed to cancel the mark within four weeks.
Sandip & Anr. v. State of Maharashtra & Anr.
Bombay HC (Nagpur Bench) | Justice M.W. Chandwani | Copyright vs. Trademark
What happened: Two traders facing an FIR under the Copyright Act, 1957 for selling apparel bearing counterfeit Zara and Calvin Klein labels sought quashing of the FIR, charge sheet, and pending criminal case.
Issue: Whether selling counterfeit branded apparel, goods bearing another’s brand label, with no claim to copyright in the goods, discloses an offence under the Copyright Act; and whether a search/seizure conducted by an officer below the rank mandated under the Trade Marks Act vitiates the resulting prosecution.
Ratio & Result: Copyright protection extends to original literary, dramatic, musical and artistic works (and cinematograph films/sound recordings); selling goods bearing counterfeit brand labels without manufacturing the goods or claiming authorship/copyright in them, is a trademark offence, not a copyright one, so the prosecution’s own case disclosed no offence under the Act invoked. Independently, search and seizure without a warrant under the Trade Marks Act, 1999 may only be conducted by an officer not below the rank of Deputy Superintendent of Police; a search carried out by a Police Sub-Inspector vitiated the registration of the FIR and the investigation. FIR, charge sheet, and criminal proceedings quashed notwithstanding that charges had already been framed and the matter had reached the evidence stage.
Fraunhofer Gesellschaft Zur Förderung Der Angewandten Forschung v. Controller General of Patents, Designs and Trade Marks & Anr.
Calcutta HC | Justice Ravi Krishan Kapur | Patents
What happened: The German research organisation Fraunhofer appealed the Controller’s rejection of its application for a “Method for Stimulating the Growth of Biomass in a Liquid Inside a Bioreactor,” arguing that the Controller introduced fresh objections at the hearing stage without conducting further examination, and that patent law does not require working examples covering the full breadth of a claim.
Issue: Whether a specification using open-ended functional language (“at time intervals,” “periodically,” “a maximum of,” with parameters spanning “minutes to months”) and no working examples satisfies the enablement requirement under Section 10 of the Patents Act; and whether non-disclosure of the source and geographical origin of biological material is fatal even where the biomass itself is not separately claimed as the invention.
Ratio & Result: A specification that is “essentially empty”, describing only functional results with open ranges that would require excessive experimentation to reproduce, fails the sufficiency-of-disclosure requirement. Disclosure of the source and geographical origin of biological material used in an invention is mandatory to prevent biopiracy and to ensure compliance with the Biological Diversity Act, 2002 and the Convention on Biological Diversity, even where the biomass is not itself the claimed subject matter; admitted non-disclosure independently disqualifies the application. Since the hearing notice had already raised the relevant objections during examination, no further examination round was procedurally required before rejection. Appeal dismissed; rejection upheld.
Kumar Foods v. The Registrar of Trade Marks & Anr.
What happened: Kumar Foods, the registered proprietor of the well-known “SHAKTI BHOG” trademark for flour (atta), appealed to the Delhi High Court. They challenged a trial court order that had vacated an existing interim injunction, which allowed a competitor to market identical flour products under the mark “10X SHAKTI”.
Issue: Whether the competitor’s mark “10X SHAKTI” is deceptively similar to Kumar Foods’ registered trademark “SHAKTI BHOG” for identical FMCG goods, and if the trial court erred in lifting the protective injunction?
Ratio & Result: The Delhi High Court held that “SHAKTI” is the dominant and essential feature of the plaintiff’s trademark. The prefix “10X” does not sufficiently distinguish the competitor’s mark and instead creates a high likelihood of consumer confusion in the market for identical commodities. The trial court’s decision lacked proper application of trademark injunction principles. Appeal allowed & interim injunction is restored.
IP News & Registry Updates
Justice Prathiba M. Singh Inducted into International IP Hall of Fame 2026
Justice Prathiba M. Singh of the Delhi High Court, Chairperson of the WIPO Advisory Board of Judges (2025-2027) and the judge who helped establish the Delhi HC’s Intellectual Property Division, became the first Indian judge inducted into the International IP Hall of Fame, instituted by IAM (Intellectual Asset Management) since 2006. The honour was conferred at IPBC Global 2026 in San Diego on June 16, alongside Italian IP practitioner Roberto Dini and the late British-Australian scholar William Cornish (posthumous). It was widely reported in Indian legal/general media around June 25, within our digest week. IAM’s editor noted she “contributed to the development of India’s national IPR policy” and now chairs WIPO’s judicial advisory board and the first Asian judge to do so.
CGPDTM Opens Agent Exam 2027 Registration
The Office of the Controller General of Patents, Designs and Trade Marks announced the Patent/Trade Marks Agent Examination 2027 on 23 June. The online application filing system opens July 1 and closes September 30, 2026.
SICLDR Services Offline (June 22)
All e-services under SICLDR at the CGPDTM became unavailable from June 22 for scheduled maintenance activity; affected stakeholders were directed to the Helpdesk for queries.
International Courts
Monday, June 22
Open Stories Foundation/Mormon Stories Podcast v. The Church of Jesus Christ of Latter-day Saints (Countersuit)
US District Court, District of Utah | Trademark/Copyright
What happened: Responding to the Church’s April 2026 infringement complaint over the podcast’s name, branding, and use of Church imagery, Mormon Stories Podcast and the Open Stories Foundation filed a 108-page answer on Monday, asserting that the Church publicly abandoned “Mormon” as a self-identifier from 2018 onward while continuing to renew USPTO registrations using the term. The answer includes counterclaims seeking cancellation of several Mormon-related Church trademarks, including MORMON CHANNEL and MORMON MESSAGES.
Issue: Whether a religious organisation’s sustained public campaign discouraging use of a term as self-identification while continuing to maintain and renew USPTO registrations incorporating that same term amounts to abandonment defeating its trademark claims, and whether a widely-used religious/cultural descriptor can be exclusively controlled by any single organisation.
Ratio & Result: Matter at the pleading stage; no ruling yet. Raises significant questions on descriptive/generic religious terminology, abandonment through public disclaimer campaigns, and the limits of brand control over identifiers used by a broader community echoing the Church’s 2023 dispute over “Bad Mormon.”
Also Read: Weekly Indian IP Law Digest: July 19 to July 25
Tuesday, June 23
Enanta Pharmaceuticals, Inc. v. Pfizer Inc.
CAFC, No. 25-1427 | Patents | Written Description/Priority Date
What happened: The Federal Circuit affirmed summary judgment invalidating all claims of Enanta’s US 11,358,953 patent. Enanta’s issued claims expanded a chemical substituent range disclosed in its July 2020 provisional from “C2-C12 alkyl” to “C1–C12 alkyl” and the added one-carbon species describes nirmatrelvir, the active ingredient Pfizer first publicly disclosed in April 2021 and later sold as Paxlovid.
Issue: Whether a non-provisional application can claim an earlier provisional’s priority date for a claim limitation that the provisional itself never disclosed, where the applicant characterises the discrepancy as a correctable typographical error.
Ratio & Result: An earlier application must describe the later-claimed invention with sufficient specificity to satisfy the written description requirement of 35 U.S.C. § 112; a provisional disclosing only a two-to-twelve-carbon range does not support a claim to the one-carbon species added in the issued patent, and the change was not a correctable typo. Without the earlier priority date, Pfizer’s April 2021 disclosure of nirmatrelvir anticipated all claims. Summary judgment of invalidity affirmed a cautionary lesson in precise chemical-range drafting for provisional filers.
WebGroup Czech Republic & NKL Associates
CJEU Grand Chamber | Platform Liability | Hosting Safe Harbour
What happened: Ruling on a referral from the French Conseil d’État, the CJEU Grand Chamber examined (i) whether France could require foreign-established pornographic websites to implement age verification and prohibit a driving-assistance app from relaying roadside-check alerts, and (ii) when a platform’s use of an algorithm to determine how content is shown removes it from the Article 14 hosting exemption.
Issue: Whether the “country of origin” principle under the e-Commerce Directive precludes a Member State from imposing such targeted, public-interest-justified obligations on services established elsewhere in the EU; and whether algorithmic curation, without manual human intervention, constitutes “control” sufficient to disqualify a host from the liability safe harbour.
Ratio & Result: Member States may derogate from the coordinated-field principle where a measure serves a specific public interest (protecting minors from pornography; preventing evasion of police checks), targets a specific entity, and is proportionate subject to national-court verification. Separately, and more significantly for IP enforcement, an operator that predetermines via an algorithm the conditions, manner, and order in which user content is shown “controls” that information for Article 14 purposes even absent manual review or subjective awareness, knowledge and control are independent, alternative grounds for losing the hosting exemption. This substantially narrows the hosting safe harbour for any platform whose algorithm curates, ranks, or restricts third-party content, with significant implications for IP enforcement and content-regulation claims against major platforms going forward.
