Newsletter - April, 2025

HIGHLIGHTS OF THE MONTH

The Delhi High Court has granted a permanent injunction in favour of 'Tata Copper+ Water'

[Tata Sons Private Limited & Anr. vs. Malla Rajiv (CS(COMM) 129/2024)]

The Delhi High Court has granted a permanent injunction in favour of Tata Sons Private Limited ('Plaintiff'), prohibiting M/s. JK Enterprises and its proprietor, Malla Rajiv ('Defendant'), from infringing the trademark and copyright of Tata's packaged mineral water product, 'Tata Copper+ Water,' through their product 'JK Copper+ Water.'

The Defendant, marketing and selling packaged drinking water under the brand name 'JK Copper+ Water,' was found to have copied the essential features of Plaintiff's trade dress, including its unique packaging and artistic work. The Court recognized Plaintiff's long-standing reputation and goodwill, built since 2012, as India's first nutrient packaged drinking water. It concluded that the striking similarities between the two products were intended to mislead consumers and traders, misappropriating Plaintiff's goodwill. In addition to permanently restraining the Defendant from using the Plaintiff's trademark, the Court ordered the Defendant to pay Rs. 10 lakh in damages to the Plaintiff.

The Delhi High Court has granted a permanent injunction in favour of Indian Hotels Company Limited (IHCL)

[Indian Hotels Company Limited vs. Ankit Sethi & Ors. (CS(COMM) 882/2023)]

The Delhi High Court has granted a permanent injunction in favor of Indian Hotels Company Limited (IHCL), part of Tata Group and owner of the Ginger hotel chain, against trademark and copyright infringement by fraudulent websites operated by Ankit Sethi and others (Defendants). The fake websites, gingerhotelmumbai.info and hotelgingermumbai.info, misled customers into believing they were affiliated with IHCL's official gingerhotels.com.

The Court found that the Defendants maliciously used IHCL's 'Ginger' trademarks, photographs, and website content, including forged receipts, to deceive consumers into making payments for false hotel bookings. IHCL's Ginger brand, established in 2004, has substantial goodwill, which the Defendants sought to exploit.

On December 13, 2023, the Court issued an ex-parte injunction, which is now made permanent, ordering the removal of the impugned websites, suspension of their domains, and freezing of associated bank accounts. The Court recognized the Defendants' actions as trademark and copyright infringement, as well as passing off, likely to confuse consumers and misappropriate IHCL's market reputation. The Defendants were ordered to jointly pay Rs. 20 lakhs in damages to IHCL, safeguarding the company's intellectual property and protecting consumers from deception.

The Delhi High Court has ordered the removal of the 'Purplle Tree' trademark from the Register of Trade Marks

[Manash Lifestyle Private Limited vs. Viraj Harjai & Anr. (C.O. (COMM.IPD-TM) 212/2024)]

The Delhi High Court has ordered the removal of the 'Purplle Tree' trademark from the Register of Trade Marks following a rectification petition filed by Manash Lifestyle Private Limited, the owner of the online beauty and wellness store 'Purplle.'

Manash Lifestyle, the Petitioner, using the 'Purplle' mark since 2011, discovered that Viraj Harjai (Respondent No. 1) had applied for the 'Purplle Tree' mark for essential oils in Class 3, which was initially objected to by the Trade Marks Registry under Section 11 of the Trade Marks Act, 1999 due to its similarity with Petitioner's registered marks. However, further inspection revealed that 'Purplle Tree' had been registered in Classes 14 and 4 on a 'proposed to be used' basis. The Petitioner sought rectification, arguing that the addition of 'Tree' was minimal and non-distinctive, constituting infringement, passing off, and unfair competition.

The Court found 'Purplle' to be a distinctive and arbitrary mark, with 'Purplle Tree' being deceptively similar and likely to confuse consumers. The Court noted the Respondent had copied 'Purplle' and added 'Tree' as an insufficient distinguishing factor, with no evidence of bona fide use, indicating mala fide intent. The Court ruled that the 'Purplle Tree' mark conflicted with Petitioner's prior rights, resulting in trademark infringement and unfair competition.

The Delhi High Court has granted a permanent injunction in favour of L'Oreal SA

[L'Oreal SA v. Ashok Kumar & Ors. (Neutral Citation No. 2025:DHC:2155)]

The Delhi High Court has granted a permanent injunction in favour of L'Oreal SA (Plaintiff), a renowned French cosmetics brand, against the unknown Defendant(s) operating a rogue website, www.lorealglobal.in. The Defendant No.1 was found to have infringed Plaintiff's registered trademark by impersonating the company, replicating its branding, and engaging in fraudulent activities .

Plaintiff, which has used its trademark "L'Oreal" globally since 1900 alleged that the Defendant No. 1 was using the domain www.lorealglobal.in to impersonate the company, engaging in fraud and misleading the public. Evidence showed the Defendant No.1 attempted to procure goods worth approximately Rs. 1 crore from one Nicholas Healthcare Limited using forged , including a fake GST certificate, incorporation certificate, and a cancelled cheque in the name of Plaintiff's Indian subsidiary.

The Court compared Plaintiff's official website (www.loreal.com) with the Defendant No.1's site (www.lorealglobal.in) and found striking similarities in logos, layout, and essential features that could mislead consumers. Additionally, the use of email addresses such as "paresh.deshmukh@lorealglobal.in" and "ashwini.r@lorealglobal.in" indicated an attempt to impersonate Plaintiff's employees.

The Court highlighted the Defendant No.1's fraudulent issuance of fake purchase orders under L'Oreal's name as evidence of mala fide intent. The Court, noting the Plaintiff's global reputation and goodwill and in absence of a written statement by the Defendant No. 1, issued a summary judgment. The Court held that the Defendant No.1's actions constituted trademark infringement and passing off, issuing a permanent injunction restraining the unknown Defendant(s) from using Plaintiff's trademark or any similar mark and ordering the Defendant No.1 to pay Rs. 1 lakh in costs to the Plaintiff. It also directed the Domain Name Registrar, NIXI (Defendant No. 2), to prevent any domain registrations using the "L'Oreal" mark under ".co.in" or ".in" extensions.

The Bombay High Court Grants Relief to HUL in counterfeit toothpaste case

[Unilever Global IP Limited & Anr V. Ashok Kumar [ I.A. (L) No. 8904/2025 & Leave Petition (L) No. 9646/2025; Commercial IP Suit (L) No. 8733 of 2025]

The Bombay High Court granted ex-parte ad-interim relief to Hindustan Unilever Ltd (HUL) in a case involving counterfeit and contraband oral care products. In the instant case, HUL discovered counterfeit products being sold under its registered trademarks — Closeup, Pepsodent, HUL, Hindustan Unilever, and the U-Logo in markets across Indore and Ranchi. It was found that some products were illegally imported from Nepal, adding a contraband element to the case. The counterfeit items were so closely imitated that they resembled genuine HUL products, including packaging and design elements. The company argued that this posed a serious threat to its brand reputation and consumer trust.

The Court acknowledged that there was enough evidence to support HUL's claims and noted that the case involved both counterfeit and illegally imported goods. Citing irreparable harm and a balance of convenience in HUL's favor, the Court restrained unknown parties from manufacturing, packaging, or distributing oral care products under HUL's trademarks or designs. A Court Receiver and Additional Special Receivers were appointed to seize and inventory the counterfeit and contraband goods separately.

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The Delhi High Court orders in favour of Harley-Davidson's "Eagle" logo against a habitual offender

[H-D U.S.A., LLC v. Vijaypal Dhayal, (Neutral Citation 2025:DHC:2489)]

In the present case, the Delhi High Court addressed a trademark infringement dispute involving the unauthorized use of Harley-Davidson's iconic "Eagle" logo by a shoe manufacturer. The plaintiff, Harley-Davidson LLC, a globally recognized motorcycle manufacturer, alleged that the defendant was selling footwear bearing a logo strikingly similar to its registered "Eagle" emblem, thereby infringing upon its trademark rights.

The court observed that the defendant's logo closely mirrored Harley-Davidson's "Eagle" logo, incorporating similar artistic elements and overall presentation. This resemblance was likely to cause confusion among consumers, leading them to associate the defendant's products with those of the plaintiff. Justice Amit Bansal noted that such unauthorized use could dilute the distinctiveness of Harley-Davidson's trademark and damage its reputation.

Furthermore, the court highlighted that the defendant had a history of infringing upon established brands, often selling such products through third-party platforms. Despite multiple opportunities, the defendant failed to submit a written statement or contest the allegations, leading the court to proceed with a summary judgment.

Consequently, the Delhi High Court granted a permanent injunction against the defendant, restraining them from using the infringing logo. Additionally, the court awarded ₹5,00,000 in damages and costs to Harley-Davidson.

The Delhi High Court rules that PPL cannot grant public music licenses without copyright society registration

[Azure Hospitality Pvt. Ltd. v. Phonographic Performance Ltd. (FAO(OS)(COMM) 41/2025)]

In the present case, the Delhi High Court's Division Bench examined whether Phonographic Performance Ltd. (PPL), an organization that issues music licenses on behalf of multiple record labels, can continue issuing public performance licenses without being registered as a copyright society under Section 33 of the Copyright Act, 1957 (the Act).

PPL argued that it was entitled to license the music as an assignee under Section 18 of the Act. Azure Hospitality, on the other hand, claimed that PPL was acting against the law by functioning as a licensing body without registration.

The High Court's findings are listed in brief below.

1. Registration is Mandatory for Licensing Businesses:
   The Court ruled that PPL cannot rely solely on its assignments under Section 18 to issue licenses. Since it is engaged in the business of issuing bulk licenses on behalf of over 400 music labels, it falls squarely under Section 33(1) of the Act, which requires registration as a copyright society.
   
   
2. Section 30 Rights Are Limited by Section 33 of the Act:
   While Section 30 allows a copyright owner to grant licenses, this right is limited by Section 33 of the Act if the owner is running a licensing business. Simply being an assignee does not exempt PPL from this requirement.
   
   
3. PPL's Business Model Violates the Law:
   PPL's large-scale licensing operations go beyond what an individual copyright owner is allowed. Since it is no longer a registered copyright society and was denied re-registration after 2012, it cannot issue public performance licenses.
   
   
4. Legislative Intent and Public Oversight:
   The Court emphasized that Section 33 was introduced to prevent cartelization, monopolistic control, and lack of transparency in tariff structures. Allowing unregistered entities to issue licenses would undermine this purpose.
   The Delhi High Court held that PPL must be registered under Section 33 of the Act to carry on the business of issuing music licenses. It cannot rely on assignment rights or Section 30 of the Act to avoid regulatory oversight.

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