ARTICLE
25 March 2025

IPR Weekly Highlights (72)

LM
Lex Mantis

Contributor

The Delhi HC recently ruled in favor of Kiranakart Technologies (P) Ltd., the operator of the quick-commerce app Zepto, in a trademark dispute against a prima facie ‘prior user' of the mark, one Mohammad Arshad...
India Delhi Intellectual Property

TRADEMARK

DELHI HC CANCELS ZEPTO TRADEMARK MARK OVER NON-USE

The Delhi HC recently ruled in favor of Kiranakart Technologies (P) Ltd., the operator of the quick-commerce app Zepto, in a trademark dispute against a prima facie 'prior user' of the mark, one Mohammad Arshad, in what appears to be another case of trademark squatting. Arshad's 'ZEPTO' trademark was registered in 2014, but he failed to demonstrate genuine use of the mark since its registration, given which the HC ordered the cancellation of the same. In contrast, Kiranakart (the current owners) have extensively used and promoted the 'ZEPTO' mark since 2021, establishing substantial goodwill. The HC determined that Arshad's mark was merely a "block" on the Trade Marks Register and hindered Kiranakart's genuine business operations.
The matter came to light when Arshad opposed Kiranakart's application for the 'ZEPTO' trademark under Class 35, despite failing to provide credible evidence of its use. Kiranakart subsequently filed the present rectification petition in the Delhi HC under Sections 47 and 57 of the Trade Marks Act, 1999. The HC found that Arshad's non-use of the mark for over eight years made it liable for cancellation under Section 47(1)(b), which mandates the removal of trademarks that remain unused for at least five years. With Arshad failing to contest the case, the HC ruled in Kiranakart's favor, emphasizing that trademark registrations must not be used as tools for anti-competitive behavior.

1. Kiranakart Technologies Private Limited vs. Mohammad Arshad & Anr (C.O. (COMM.IPD-TM) 62/2024 with I.A. 29531/2024 & I.A. 40361/2024)

TRADEMARK

MEDSERVE TO PAY ₹3.34 CRORE DAMAGES FOR SELLING COUNTERFEIT JOHNSON & JOHNSON PRODUCTS

In a recent and significant trademark infringement and counterfeiting case, the Delhi HC ruled in favor of Johnson & Johnson (J&J) and against Medserve and its associated entities (Defendants) for selling counterfeit surgical products under J&J's trademarks 'SURGICEL' and 'ETHICON'. The HC granted a permanent injunction and imposed damages of ₹3.34 crores on the Defendants, and the ruling emphasized the risks posed by fake medical devices and the need for strict judicial intervention to protect public health and intellectual property rights.
The case originated when counterfeit J&J surgical products were discovered at the University of Kentucky Medical Center, which led to an investigation that traced their source back to Medserve, a New Delhi-based company. The counterfeit products, manufactured in China and Turkey, were repackaged and falsely labeled with J&J's trademarks before being distributed internationally. The HC found substantial incriminating evidence, including electronic communications and financial transactions, proving the Defendants' involvement in large-scale counterfeiting and illicit trade practices.
Citing the Defendants' fraudulent activities and non-compliance with judicial proceedings, the court ordered compensatory damages of ₹2.34 crores and exemplary damages of ₹1 crore to deter future violations. It also mandated the destruction of all seized counterfeit products and full recovery of litigation costs.

1. Johnson & Johnson v. Pritamdas Arora, CS(COMM) 570/2019

TRADEMARK

SC ALLOWS PUNE EATERY TO USE 'BURGER KING' NAME

The SC of India has temporarily allowed a Pune-based eatery to continue using the name 'Burger King' until the Bombay HC delivers its final decision on the matter. The Division Bench ruled that the Bombay HC's order, which had favored the US-based fast-food chain Burger King Corporation, would remain stayed while the appeal proceedings continue.
The legal battle began when Burger King Corporation, which entered the Indian market in 2014, filed a trademark infringement lawsuit against a local restaurant that had been operating under the 'Burger King' name since 2008. The multinational chain argued that the Pune eatery's use of the name harmed its brand reputation and sought a permanent injunction. However, a Pune court ruled in July 2024 in favor of the local eatery, citing its continuous use of the name since the early 1990s and declaring it a 'prior and honest user' of the trademark. Burger King Corporation challenged this ruling in the Bombay HC, asserting that it had registered the 'Burger King' trademark in India in 1979, even though it had not begun operations until 2014. The Pune eatery countered that its use of the name predated the US chain's entry into the Indian market and accused the multinational company of 'squatting' on the trademark. With the SC's latest order, the local eatery can continue operations under the disputed name while awaiting the Bombay HC's verdict.

1. https://www.business-standard.com/companies/news/supreme-court-allows-pune- eatery-to-use-burger-king-brand-name-125030700947_1.html

COPYRIGHT

MOANA SEQUEL LAWSUIT LOOMS AFTER DISNEY VICTORY

Screenwriter Buck Woodall's 2020 copyright infringement lawsuit against Disney, alleging the 2016 film "Moana" was based on his "Bucky the Wave Warrior" script, has been concluded with a decisive win for Disney. Disney countered Woodall's claim of similarity by citing contrasting character backgrounds, timelines, and plot motivations.
The eight-member jury ruled in favor of Disney, observing that Disney lacked access to Woodall's work and dismissing the claims of similarity. However, Disney's legal troubles are not over, as Woodall has filed a separate lawsuit related to Moana 2, which is still pending in court.

1.https://www.newsweek.com/taylor-swift-copyright-lawsuit-florida-artist-eras-tour-2038875

COPYRIGHT

MADRAS HC STAYS ED ORDER ON SHANKAR IN COPYRIGHT CASE

Filmmaker S. Shankar faced a copyright infringement complaint from writer Arur Tamilnadan, who alleged that the 2010 film "Enthiran" was based on his story, "Jugiba." Since copyright offenses are included in the Prevention of Money Laundering Act, the Enforcement Directorate (ED) provisionally attached Shankar's property.
On a plea filed by Shankar, the Madras HC has stayed the ED's order. The HC noted that a single bench of the same court had previously dismissed a civil suit filed by Tamilnadan against Shankar for the same copyright infringement claim. While the ED has the power to act on individual complaints, the HC questioned the ED's decision to attach property, especially in light of the earlier ruling. Further, it directed the ED to file a counter-affidavit and adjourned the hearing.

1.S. Shankar v. The Deputy Director, WP 8352 of 2025

PATENT

NIKE AWARDED DAMAGES IN LULULEMON PATENT DISPUTE

A New York Federal Court jury has delivered a verdict in the patent infringement lawsuit brought by Nike, Inc. against Lululemon Athletica Inc., finding that Lululemon's Chargefeel, Strongfeel, and Blissfeel footwear products infringed U.S. Patent No. 8,266,749. This patent covers specific sneaker structures related to knitted textile uppers.
The jury awarded Nike $355,450 in damages, calculated at $1.20 per pair of infringing shoes sold. This amount is significantly less than the 5% of total shoe sales initially sought by Nike. Lululemon has announced its intention to appeal the jury's verdict.

1.Nike, Inc. v. Lululemon U.S. Inc., 1:23-cv-00771- AS

PATENT

EPO REJECTS HUMAN-ANIMAL CHIMERA PATENT ON MORALITY GROUNDS

The European Patent Office (EPO) Board of Appeal (BoA) upheld the refusal of a patent application filed by the Regents of the University of Minnesota (applicant), rejecting the claims related to human-animal chimeras. The application (EP16759528.9) sought to patent methods for creating gene-edited pig embryos with human stem cells, aiming to generate humanized vasculature for potential therapeutic use in organ transplantation.
The BoA agreed with the initial decision of the EPO Examining Division (ED), which found that the invention violated Article 53(a) EPC, which specifically excludes inventions from patentability if their exploitation is contrary to morality. The invention, involving the integration of human cells into pig embryos, raised ethical concerns, particularly regarding the potential for human cells to integrate into the brain or germ line of the chimeras as well as concerns relating to the potential for human cells to participate in the brain or germ line of chimeras. The BoA emphasized that, the invention remained in conflict with human dignity.

1.T 1553/22 (Human-pig chimeras/UNIVERSITY OF MINNESOTA)

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