In 2024, Indian courts delivered several landmark judgments in the field of intellectual property (IP), addressing challenges that range from traditional trademark disputes to modern issues like copyright in AI training and digital piracy. These rulings not only clarified the application of existing laws but also emphasized the judiciary’s proactive approach in adapting to evolving technological and business realities. This article explores the significant cases across trademarks, and copyrights, highlighting their outcomes and their implications for stakeholders.
Key Outcomes from the 2024 IP Judgments
- Enhanced Standards for Trademark Protection:
Courts reaffirmed that trademarks serve as identifiers of origin and goodwill. They clarified the limits of exclusivity, especially for generic or descriptive terms, and protected established brands from dilution and consumer confusion.
- Recognition of Copyright Challenges in the Digital Age:
Decisions tackled complex issues like AI training using copyrighted material, unauthorized adaptations, and digital piracy. Courts emphasized the importance of balancing innovation with copyright enforcement.
- Judicial Support for Goodwill and Consumer Trust:
Across various cases, courts prioritized protecting consumer trust and the goodwill associated with established brands.
- Dynamic Legal Responses to Emerging Technologies:
Judgments demonstrated the judiciary’s responsiveness to new-age challenges, including online piracy and counterfeit activities, by issuing dynamic injunctions and proactive enforcement measures.
Trademark Judgments
- Limits of Trademark Exclusivity: Pidilite Industries Ltd. v. Sanjay Jain (Delhi High Court)
Pidilite Industries, known for its “Fevikwik” adhesive, filed a rectification application against Sanjay Jain’s trademark “POMA-EX KIWKHEAL,” arguing it was deceptively similar to their own. Pidilite contended that the defendant’s mark and packaging were designed to mislead consumers into believing there was an association with Pidilite’s products, thereby benefiting from Pidilite’s established goodwill. The defendant argued that their trademark was distinct and registered in good faith. However, the court found that the defendant’s mark was indeed deceptively similar and had been registered in bad faith, intending to benefit from the goodwill of “Fevikwik.” Consequently, the court ordered the cancellation of the defendant’s trademark, upholding Pidilite’s claims and reinforcing the protection of well-known trademarks against misuse and consumer confusion.
- Addressing Deceptive Similarity in Retail: Fab India v. Fab India Emporium (Delhi High Court)
Fabindia, a well-known retailer of handcrafted goods, filed a suit against Fab India Emporium for trademark infringement. Fabindia argued that the defendant’s use of the name “Fab India Emporium” was deceptively similar to their trademark “FABINDIA,” which had been in use since 1960 and had garnered significant goodwill and reputation. The plaintiff provided evidence, including invoices, showing that the defendant was selling products under the name “Fab India Emporium,” causing potential confusion among consumers. Fabindia contended that this use was likely to deceive consumers into believing there was an association between the two brands, leading to irreparable harm to their business. The defendant argued that their use of the name was distinct and did not infringe on Fabindia’s trademark. However, the Delhi High Court found in favor of Fabindia, holding that the defendant’s use of “Fab India Emporium” was indeed deceptively similar and likely to cause confusion. The court granted a permanent injunction, restraining the defendant from using the name “Fab India Emporium” or any other mark deceptively similar to “FABINDIA,” thereby protecting the plaintiff’s trademark rights and preventing consumer confusion.
- Pharmaceutical Trademark Protection: Glenmark Pharmaceuticals Ltd. v. Gleck Pharma (Bombay High Court)
Glenmark Pharmaceuticals, the plaintiff, filed a suit against Gleck Pharma for trademark infringement, arguing that the defendant’s trademark “XIGAMET” was deceptively similar to their registered trademark “ZITA-MET,” used for an anti-diabetic drug. Glenmark contended that the phonetic, aural, and visual similarities between the two marks were likely to cause confusion among consumers, potentially leading to serious health risks. The defendant argued that the suffix “MET” was commonly used in the pharmaceutical industry and that other similar trademarks existed without causing confusion. However, the Bombay High Court held that a stricter approach must be adopted for medicinal products due to the potential health implications of any confusion. The court found that the defendant’s mark “XIGAMET” was indeed deceptively similar to “ZITA-MET” and granted an ad interim injunction, restraining Gleck Pharma from using the impugned trademark. This judgement emphasized the need for heightened scrutiny in cases involving medicinal products to prevent consumer confusion and protect public health.
- Design Trademarks in Fashion and Sports: Adidas India v. Three-Stripe Infringers
Adidas AG filed a suit against several defendants for trademark infringement, alleging unauthorized use of their iconic “three-stripe” mark on various goods, including textiles. Adidas contended that the defendants’ use of similar stripes was likely to cause confusion among consumers and dilute the distinctiveness of their well-known trademark. The defendants argued that the stripes used were not identical and did not infringe on Adidas’s trademark rights. However, the Delhi High Court found in favor of Adidas, holding that the defendants’ use of similar stripes was indeed likely to cause confusion and constituted trademark infringement. The court granted a permanent injunction, restraining the defendants from manufacturing, trading, or selling any products bearing the infringing stripes, thereby protecting Adidas’s trademark rights and preventing consumer confusion.
Copyright Judgments
- AI and Copyright Law: Asian News International v. OpenAI
The Indian news agency ANI accused OpenAI of copyright infringement, alleging that OpenAI used ANI’s copyrighted news content to train its language model, ChatGPT, without obtaining necessary permissions. ANI contended that ChatGPT generated responses that were either verbatim or substantially similar to ANI’s original articles, violating copyright protections and damaging ANI’s reputation by attributing false statements and fabricated interviews to the agency. OpenAI defended its actions by invoking the principle of fair use, arguing that it used publicly available content in a manner consistent with legal standards. The court, however, found in favor of ANI, holding that OpenAI’s use of ANI’s content without authorization constituted copyright infringement. The court granted an interim injunction, restraining OpenAI from using ANI’s content and ordered them to implement measures to prevent further unauthorized use, thereby setting a significant precedent for AI and copyright law.
- Combating Counterfeit Websites: UTI Infrastructure Technology and Services Ltd. v. Extra Tech World & Ors
UTI Infrastructure Technology and Services Ltd. (UTIITSL), the plaintiff, filed a suit against several defendants for unauthorized use of their trademarks “UTI,” “UTI PAN,” and “UTIITSL” on websites fraudulently offering PAN-related services. UTIITSL, exclusively authorized by the Income Tax Department for processing PAN and related services, argued that the defendants’ websites were collecting personal data and issuing fake PAN cards, misleading the public into believing they were affiliated with UTIITSL. The plaintiff contended that this unauthorized use not only infringed on their trademarks but also posed a significant threat to national security by compromising confidential data. The defendants argued that their use was legitimate and did not infringe on UTIITSL’s rights. However, the Bombay High Court found in favor of UTIITSL, holding that the defendants’ actions constituted trademark infringement and a threat to public interest. The court granted an ex-parte ad-interim injunction, restraining the defendants from using the impugned trademarks and ordered the suspension of the domain names associated with the fraudulent websites, thereby protecting UTIITSL’s trademark rights and safeguarding public data.
- Misinterpretation of Copyright Exemptions: Phonographic Performance Ltd. v. State of Goa
Phonographic Performance Ltd. (PPL) and Sonotek Cassettes Company filed a writ petition challenging a circular issued by the State of Goa on January 30, 2024. The circular excluded musical performances at religious ceremonies, including weddings, from being considered copyright violations under the Copyright Act, 1957. PPL, a registered copyright society, argued that the circular unlawfully expanded the scope of Section 52(1)(za) of the Copyright Act, which pertains to fair dealing exceptions, and restricted their right to pursue legal action for copyright infringement. The State of Goa contended that the circular was within its rights to interpret the law for public interest. However, the Bombay High Court found in favor of PPL, holding that the State of Goa overstepped its jurisdiction by interpreting the law, a function reserved for the judiciary. The court declared the circular illegal and invalid, quashing it on the grounds that it could not override the provisions of the Copyright Act. This judgement reinforced the judiciary’s exclusive role in interpreting copyright law and protected the rights of copyright holders against unauthorized use.
- Creative Adaptations and Copyright Limitations: Pocket FM Pvt. Ltd. v. Novi Digital Entertainment Pvt. Ltd
Pocket FM, the plaintiff, sought an ad interim temporary injunction against Novi Digital Entertainment, the operator of Disney+ Hotstar, for allegedly infringing on their copyright by creating a television series titled “Yakshini,” which Pocket FM claimed was an unauthorized adaptation of their popular audio series of the same name. Pocket FM argued that they held exclusive rights to the “Yakshini” audio series, which had been published on their platform and had garnered significant popularity. They contended that Novi Digital’s television series, also named “Yakshini,” was conceptually similar and likely to mislead consumers into believing there was an association between the two. Novi Digital countered that there was no prima facie case for infringement and that the injunction would cause irreparable harm as the series was set for imminent release. The Delhi High Court dismissed Pocket FM’s application for an interim injunction, finding insufficient evidence of copyright violation at the pre-release stage and noting that the plaintiff failed to establish a strong case for the injunction. The court emphasized that the imminent release of the series and the lack of concrete evidence of infringement did not warrant an interim injunction.
- Protecting Broadcast Rights with Dynamic Injunctions: Star India Pvt. Ltd. v. Magicwin.Games
Star India, a major media company, filed a suit against Magicwin.Games and other defendants for copyright infringement and unauthorized use of proprietary content. Star India argued that the defendants were illegally streaming and disseminating live cricket matches, for which Star India held exclusive digital media and television rights under a Media Rights Agreement with the ICC. The defendants, including rogue betting websites and domain name registrars, were accused of offering online betting services and broadcasting the matches without authorization, thereby infringing on Star India’s broadcast reproduction rights under Section 37 of the Copyright Act, 1957. The plaintiff sought a ‘Dynamic+’ injunction to prevent real-time unauthorized dissemination of their content. The Delhi High Court found in favor of Star India, granting the injunction and restraining the defendants from streaming or broadcasting the matches. The court emphasized the need to protect intellectual property rights in the digital age and prevent unauthorized use that could harm the rights holders.
The 2024 IP judgments underscore the judiciary’s adaptability in addressing the dynamic challenges posed by evolving business practices and technological advancements. These rulings highlight the need for a balanced approach in protecting intellectual property rights while fostering innovation and creativity. Businesses and IP stakeholders must take note of these developments to align their strategies with emerging legal standards, ensuring robust protection for their intellectual property assets in an increasingly competitive environment.
Written by Sarren Muhil & Khushee Runthala, Assessment interns @Intepat IP.
