Cases Reported in HCC | Latest High Court Cases on Intellectual Property

Stay updated with key 2024 High Court rulings on intellectual property law. This concise overview highlights recent cases on trademark infringement, passing off, patentability, domain names, and copyright — shedding light on how courts are shaping IP rights and protections in India

A. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 57, 47 and 91 — Jurisdictional Scope of High Courts to entertain cancellation/rectification petitions under Trade Marks Act — Observed, every High Court, where dynamic effect of trade mark registration is felt will have jurisdiction — Dynamic effect — Applicability of — Held, “dynamic effect” presumes casus omissus which was not the intention of the legislature — Application of dynamic effect concept expands scope beyond explicit provisions — Indirectly fills gaps that legislature did not address [Hershey Co. v. Dilip Kumar Bacha, (2024) 1 HCC (Del) 461]

B. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — Ss. 29(2)(c) and 29(3) — Trade mark — Infringement of, when disputed mark identical to registered trade mark and used in relation to identical goods/services — Identity of rival marks and rival goods in context of claim of injunction — Statutory presumption of confusion — Held, as per S. 29(2) registered trade mark is infringed by person, who not being registered proprietor or permitted user, uses in course of trade, mark which because of eventualities mentioned in S. 29(2)(a), (b) and (c), is likely to cause confusion on part of public, or have association with registered trade mark — Eventuality stipulated in S. 29(2)(c) is identity with registered trade mark and identity of goods or services covered by registered trade mark — S. 29(3) provides that when trade mark of alleged infringer is identical with registered trade mark and goods or services are identical, court shall presume that it is likely to cause confusion on part of public [Citizen Watch Co. Ltd. v. Dineshkumar Laxmanbhai Virda, (2024) 2 HCC (Del) 707]

C. Intellectual Property — Copyright — Copyright Act, 1957 — S. 21 — Deemed relinquishment of copyright — Author declaring renunciation — Sanyasi authoring many religious books and assigning copyright to the plaintiff Trust — Held, right acquired by an individual in a work, which is the result of his intellectual activity, is called his copyright and by being a saint or an ascetic, person does not lose exclusive right in his copyright — Law of copyright has to protect a man’s copyright irrespective of his status as a family man or saint — Right would stand extinguished in the hands of the renunciate, only if the person transfers or relinquishes the right by a process known to law, and not otherwise — Held on facts, relinquishment has not occurred [Bhaktivedanta Book Trust India v. www.Friendswithbooks.co, (2024) 2 HCC (Del) 438]

D. Intellectual Property Law — Trade marks and Passing Off — Trade Marks Act, 1999 — S. 2(m) — Passing off, misappropriation and unfair competition — Infringement of trade mark — Plaintiff registered owner of trade mark “BHIDU” contending that personal name “Jackie Shroff” protectable as trade mark — Held, name “Jackie Shroff” carries substantial goodwill and an esteemed reputation, exclusively linked to the plaintiff — Name is protectable as trade mark and being a personal name, stands on a higher footing than the use of a trade mark in relation to goods/services — S. 2(m) of the 1999 Act specifically includes “name” in the definition of “mark” [Jaikishan Kakubhai Saraf v. Peppy Store, (2024) 2 HCC (Del) 253]

E. Intellectual Property — Trade marks and Passing Off — Trade Marks Act, 1999 — S. 35 — Saving for use of name, address or description of goods or services — Risk associated with registering mark which lacks inherent distinctiveness — Interference with use of one’s name as trade mark — Impermissibility of — Held, one who obtains registration of common name, or surname, as trade mark in his favour, does so with risks that such registration entails — It is open to anyone to use his name on his goods, and, therefore, possibility of there being several identical mark looms large — Proprietor cannot, by obtaining registration for Jindal as word mark, monopolise use of Jindal — Right to freedom of speech and expression guaranteed under Art. 19(1)(a) of the Constitution include freedom to lawfully express one’s identity — Right of person to use her, or his, own name on her, or his, own goods, cannot be compromised [Jindal Industries (P) Ltd. v. Jindal Sanitaryware (P) Ltd., (2024) 3 HCC (Del) 742]