TRADEMARK
MEDIATION FAILS IN TESLA TRADEMARK DISPUTE
In 2024, Tesla, Inc. (Plaintiff) filed a lawsuit in the Delhi HC against Tesla Power India Pvt. Ltd. & Others (Defendants), a company based in Gurugram, alleging trademark infringement, passing off, and unfair trade competition. The Plaintiff contends that the Defendants' use of its registered mark "TESLA," coupled with the descriptive phrases "TESLA POWER/TESLA POWER USA," constitutes an infringement and misleads consumers into erroneously associating the Defendants' products with that of the Plaintiff's.
On 22nd December 2021, Defendants published an article announcing their intent to enter the Plaintiff's electric vehicle (EV) market. This announcement, however, was later retracted. The Defendants clarified that its primary business, supplying lead-acid batteries for automotive, inverters, and UPS applications, and asserted that the use of the impugned mark in advertisements was due to a marketing agreement with automobile manufacturers e-Ashwa. Furthermore, they denied any plans to manufacture or market EVs under their brand.
On 2nd May 2024, Defendants submitted an undertaking to the HC, wherein it undertook to refrain from marketing the EVs of other entities under its impugned trademark or any deceptively similar mark. However, the Plaintiff subsequently alleged non-compliance, citing instances of e-scooters bearing the "TESLA" mark being sold through the Defendants' dealer network. In response, the Defendants issued directives to its vendors and partners for the removal of the impugned marks. Nevertheless, Plaintiff maintains that Defendants remain in violation of their undertaking, prompting the HC to mandate further measures to ensure compliance. Thereafter, the matter was listed for mediation. Following an unsuccessful mediation, the parties have now sought an urgent hearing before the HC.
1. Tesla Inc. vs Tesla Power India Pvt. Ltd. & Ors., CS (COMM) 353/202
TRADEMARK
OSHO DISCIPLES SEEK TRADEMARK PROTECTION IN DELHI HC
In an interesting development in IP law, Osho Friends International, an organisation representing followers of the late Indian philosopher Osho, has filed a writ petition in the Delhi High Court to have the name "OSHO" added to the Trademark Registry's list of prohibited marks. This list prevents the commercial registration of names and symbols considered sacred or religiously significant, such as those of major religious figures like Lord Buddha and Sikh Gurus. The organization argues that Osho's substantial global following warrants similar protection, preventing the potential misuse and commercialization of his name. Senior Advocate Abhishek Malhotra, representing Osho Friends, emphasized Osho's prominence and the need to respect his followers' sentiments. The Delhi HC has requested a response from the Central Government and Trademark Registry and scheduled the next hearing for 30th July 2025.
1. OSHO Friends International vs. UOI & Ors., W.P.(C) -IPD 17/2025
TRADEMARK
DELHI HC AWARDS BRIDGESTONE ₹3.44 MILLION
The Delhi HC granted a permanent injunction and awarded
₹3.44 million in damages to Bridgestone Corporation, a
Japanese tyre manufacturer, in a trademark infringement case
against M/S Merlin Rubber. The HC found that Merlin Rubber's
use of the mark "BRIMESTONE" on its tyres and tubes was
deceptively similar to Bridgestone's registered
"BRIDGESTONE" trademark, constituting Merlin Rubber's
infringement and passing off, of the Bridgestone marks.
Justice Amit Bansal determined that the "BRIMESTONE" mark
was structurally, visually, and phonetically similar to the
"BRIDGESTONE" mark, leading to potential consumer
confusion. The HC also noted that Merlin Rubber had unfairly
benefited from Bridgestone's established reputation and
goodwill.
The HC's decision permanently restrains Merlin Rubber from using the infringing "BRIMESTONE" mark and orders them to pay damages for the financial gains accrued from the sale of counterfeit products. Bridgestone's trademark was recognized as a well-known mark, reinforcing its protection. The HC has directed Bridgestone to present its actual costs for taxation.
1. Bridgestone Corporation vs. M/S Merlin Rubber (CS(COMM) 254/2023)
COPYRIGHT
KUNAL KAMRA'S SATIRE FACES COPYRIGHT CLAIMS FROM T-SERIES
Comedian Kunal Kamra has publicly stated on X (formerly Twitter) that his stand-up special, "Naya Bharat," featuring a parody of the song "Hawa Hawai" from the film "Mr. India," has been blocked on YouTube. This blockage is due to a copyright claim filed by T-Series, the song's copyright holder. Kamra argues that his parody falls under fair use, emphasizing that he did not use the original lyrics or instrumental music. However, T-Series maintains that Kamra failed to obtain the necessary authorization for the underlying musical composition, leading to the video's removal and the prevention of revenue generation
COPYRIGHT
MARIAH CAREY WINS COPYRIGHT CASE OVER "ALL I WANT FOR CHRISTMAS IS YOU" USE
Mariah Carey has been cleared of copyright infringement in a lawsuit filed by songwriter Adam Stone, also known as Vince Vance. Stone claimed Carey's 1994 holiday hit "All I Want for Christmas Is You" copied his 1989 song of the same name and sought $20 million in damages.
However, a U.S. judge dismissed the case, ruling that both songs contained common Christmas music elements rather than unique, protectable features. The court cited expert testimony stating that holiday song clichés do not constitute copyright infringement.
1. https://www.bbc.com/news/articles/cgj5xpy462lo
PATENT
DELHI HC DENIES ROCHE'S PLEA TO BLOCK NATCO PHARMA'S GENERIC RISDIPLAM
The Delhi HC has rejected Roche's petition to temporarily restrain Natco Pharma from producing a generic version of Risdiplam, a drug used to treat spinal muscular atrophy (SMA). The HC highlighted that Roche's patented version, Evrysdi, is not affordably priced, and public interest outweighs the need for an injunction.
Justice Mini Pushkarna noted that Natco Pharma presented a credible challenge to the validity of Roche's patent. While denying the injunction, the court mandated that Natco maintain detailed financial records and stipulated that, should Roche prevail in the full trial, Natco would be liable for damages. Refer to our prior coverage of this case in our newsletter dated 18th October 2024.
1. F. Hoffmann-La Roche AG & Anr. vs Natco Pharma Limited (CS(COMM) 567/2024
TRADE SECRET
IBM PREVAILS IN UK HIGH COURT AGAINST LZLABS OVER TRADE SECRETS MERITS
IBM has secured a significant legal victory in the UK HC against Swiss-based LzLabs, a company backed by U.S. tech entrepreneur John Moores. The HC found that LzLabs and Moores unlawfully obtained and utilized IBM's proprietary mainframe software. Specifically, LzLabs' UK subsidiary, Winsopia, breached its IBM software license by purchasing an IBM mainframe and reverse-engineering its software. Judge Finola O'Farrell ruled that Winsopia violated the license terms and that LzLabs and Moores knowingly facilitated these breaches. However, claims against another subsidiary, LzLabs Limited, and certain executives were dismissed. A subsequent hearing will determine the damages owed to IBM.
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