Enforcement & Litigation
Perspectives on enforcement & litigation across India and the subcontinent.
Durga Bhatt · 18 September 2014
The Law on Acquiescence: Wake Up Before It's Too Late
Sit on your rights while someone uses your mark, and Section 33 can bar you from suing after five years. What acquiescence means, why mere delay isn't enough, and the ingredients an infringer must prove.
10 September 2014
Where Can You Sue for Trademark Infringement? Section 134 and Jurisdiction
The Bombay High Court confirmed that a trademark owner can sue for infringement where it carries on business — a jurisdiction Section 134 grants independently of where the defendant lives or the harm arose.
Durga Bhatt · 18 August 2014
Exhaustion of Trademark Rights in India: Parallel Imports and the 'One Market' Question
Once a branded product is sold, can the trademark owner control its resale? India follows 'international exhaustion' — the whole world is one market — so genuine parallel imports are allowed. The Samsung case, explained.
Raja Pannir Selvam · 1 August 2014
Meta Tags as Trademark Use: Shaadi.com v. ShaadiHiShaadi.com
A rival matrimonial site copied Shaadi.com's services, near-identical tagline, and — invisibly — embedded its trademark in the page's meta tags to capture search traffic. The Bombay High Court treated the hidden use as actionable and ordered the domain cancelled.
24 July 2014
Copyright Licences: Authorised Agents vs Copyright Societies
Only copyright societies can carry on the business of granting licences — but an owner's authorised agent can still issue them, provided they do so in the owner's name. The Leopold Café v. Novex distinction.
Raja Pannir Selvam · 23 July 2014
Making the Right Trademark 'Choice': Officer's Choice v. Collector's Choice
A new entrant's 'Collector's Choice' whisky couldn't stand against the market-leading 'Officer's Choice' — the court injuncted it. Why a shared word plus a new player's lack of goodwill tipped the balance, and why precedents don't decide every case.
10 July 2014
Blocking Orders and the Journalism That Undercuts Them
The Delhi High Court ordered ISPs to block sites illegally streaming the FIFA World Cup, trimming the list from 472 to 219 after a defendant objected. A prominent news site then published instructions for getting around the block.
Nikita · 3 July 2014
Trademark Injunctions and Damages in India — Part Three: Damages
You've restrained the infringer — now make them pay. Part three of the series covers damages: nominal, compensatory and punitive, the Section 135(3) limits, and the rising Indian trend of exemplary awards from Time Inc. v. Lokesh Srivastava onward.
26 June 2014
Getting a Trademark Injunction in India: The Three-Part Test
A temporary injunction is the workhorse of trademark enforcement — but you must clear three hurdles together: a prima facie case, the balance of convenience, and irreparable injury. How courts weigh them.
Raja Pannir Selvam · 24 June 2014
Tea Board v. ITC: Can a GI for Tea Stop a Hotel Lounge?
The Tea Board sued over ITC's 'Darjeeling Lounge' at a Kolkata hotel. The Calcutta High Court held that a GI registered for goods confers no monopoly over a geographical name for services — and that certification marks carry different infringement rights from ordinary marks.
Nikita · 19 June 2014
Trademark Injunctions and Damages in India — Part One: The Prima Facie Case
In an infringement or passing-off suit, the real battle is often the temporary injunction. Part one of a series: the two kinds of injunction, and the first of three ingredients — the prima facie case — with the tests Indian courts apply.
Raja Pannir Selvam · 13 June 2014
Aquafina v. Aquafine: PepsiCo's Repeat Trademark Win
PepsiCo again stopped a deceptively similar 'Aquafine' from riding on its well-known 'Aquafina'. Why 'Aqua' alone is generic but the accompanying prefix/suffix decides distinctiveness — judged through the 'average intelligence, imperfect recollection' consumer.