#Trade Marks Act

The Supreme Court referred to a Larger Bench the question whether Section 134 of the Trade Marks Act, which mandates infringement suits before a District Court, is rendered ineffective by Jharkhand’s notification treating Civil Judge (Senior Division) as a Commercial Court, and stayed the suit, affecting trademark litigants and clarifying IP-commercial court jurisdiction.

A corporate defendant successfully invoked the Section 35 bona-fide use defence to retain a family name in its trademark, prompting the Bombay High Court to modify the earlier interim injunction. The ruling clarifies that companies may lawfully use surnames when use is genuine, affecting future trademark litigants.

The Division Bench affirmed the Single Judge’s finding that ‘NOVIETS’ is deceptively similar to the well-known mark ‘NOVARTIS’, considering visual and phonetic resemblance in the pharmaceutical sector. The court reiterated that appellate interference with interim injunctions is warranted only where the order is perverse or ignores settled principles, dismissing the appeal filed by Noviets Pharma.

The Delhi High Court restored the ‘BLUE CHIP’ trademark, holding that removal without the Section 25(3) notice is unlawful. It clarified that the renewal window under Rule 64(3) begins from the registration date, not the filing date. Trademark owners now have clearer protection against improper removal.

The Delhi High Court overturned the lower court’s decree, granting a permanent injunction against Saurashtra Aaj Tak and confirming that a party with prior use of a name can pursue a passing-off action without a registered trademark. This protects established brands from later entrants using deceptively similar titles.

The Madras High Court dismissed a trademark infringement suit after the defendant removed a defamatory YouTube video and filed a binding undertaking not to republish similar content. This establishes a new pathway for resolving online IP disputes without protracted litigation, benefiting brands facing digital defamation and intermediaries seeking to avoid liability.

The Bombay High Court ruled that 'ABSUN PHARMA' is deceptively similar to 'SUN PHARMA', constituting trademark infringement and passing off under Section 29(4) of the Trade Marks Act and common law. Exporting goods to Africa does not exempt the defendant from liability in India, reinforcing that consumer confusion in the domestic market is the decisive factor.

Madras HC rules that a composite suit for trademark infringement and passing off remains valid even if leave under Section 134(2) of the Trade Marks Act is not obtained, provided the plaint discloses a cause of action within jurisdiction. The court clarifies that online sales and branch office presence suffice to establish territorial jurisdiction, offering relief to plaintiffs in multi-cause trademark disputes.

Delhi High Court cancels 'GOLDI' trademark registrations, ruling that prior commercial use of 'GOLDIEE' prevails over later registration, even if marks are deceptively similar. The judgment underscores that non-response by the registered proprietor and overlapping trade channels strengthen the prior user's claim under the Trade Marks Act.

Bombay HC rules that exporting goods bearing a deceptively similar trademark from India qualifies as 'use' under Section 56 of the Trade Marks Act, entitling the plaintiff to an interim injunction. The judgment clarifies that territorial use is not a prerequisite for infringement, impacting exporters and trademark holders in cross-border disputes.

Bombay High Court vacates an ex parte injunction after finding the plaintiff suppressed the defendant's prior use of the 'Apex' trademark since 1966. The ruling underscores the duty of full disclosure in IP injunction applications and reinforces the prior use defense under the Trademarks Act.

Bombay HC ruled that trademark registration obtained in bad faith under Section 11(10) of the Trade Marks Act is voidable where prior use since 2016 is established. The court emphasized documentary evidence over unsubstantiated claims, setting a precedent for trademark cancellation disputes involving prior user rights.

Delhi High Court clarifies that prior use under Section 34 of the Trade Marks Act must be continuous and within India, not merely based on foreign sales. Additionally, Section 30(3) protects only imports of goods bearing marks registered in India, reinforcing trademark protections for domestic rights holders against parallel imports without local registration.

Bombay HC rules that pharmaceutical trademarks require the 'lowest threshold of confusion' to protect public health, granting interim injunction against LIVOGEM for its deceptive similarity to LIVOGEN. The judgment reinforces strict scrutiny for marks in the pharmaceutical sector, where even minor confusion can pose significant risks.

The Delhi High Court ruled that continuous prior use of a trademark since 2009 overrides later registration, even if the registered owner has substantial goodwill. Acquiescence and a decade-long failure to act barred the water purifier company from obtaining an interim injunction against the cable manufacturer, reinforcing that trademark rights are earned through actual use, not just registration.