In the matter of Naga Limited Vs. Cherukuri Gopi Chand [2025:MHC:1728], a Single Judge [Senthilkumar Ramamoorthy, J.] of the High Court of Madras, vide judgment dated July 16, 2025, allowing an application for summary judgment, held that statements made in Notices of Opposition do not constitute groundless threats of legal proceedings.

Section 142(1) of the Trade Marks Act, 1999 (“the Act”) states that “Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding for infringement of a trade mark….a person aggrieved may….bring a suit….and may obtain a declaration to the effect that the threats are unjustifiable…”. The key legal issue in this case was whether statements made in a Notice of Opposition in trademark opposition proceedings constituted groundless threats of legal proceedings under Section 142(1) of the Act.

The Respondent asserted that the expression “or otherwise” in Section 142(1), which follows the words ‘circulars’ and ‘advertisements’, should be given a broad interpretation and not be confined to public communications. The Respondent further argued that the statements made in Notices of Opposition, including allegations of infringement and intimation of proceedings under Sections 102 and 103 of the Act, constituted threats. The Appellant however, contended that the Respondent’s suit is entirely founded on Notices of Opposition filed by the Appellant. Consequently, by filing these Notices of Opposition, the Appellant argues that legal proceedings have been initiated, and therefore, such actions cannot be construed as threats under Section 142(1).

Accepting the contentions of the Appellant, the Court held that “Although the expression “or otherwise” in Section 142(1) covers all forms or modes of communication of a baseless or unjustified threat of initiation of infringement or like proceedings, statements made by a party…in pleadings in legal proceedings cannot be construed as threats for purposes of initiating such proceedings. As a corollary, they do not fall within the scope of Section 142(1). While such proceedings are pending, as stated earlier, the adjudicating authority would be the sole judge of pleadings in such proceedings.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Oswaal Books and Learnings Private Limited vs. The Registrar of Trade  Marks [C.A.(COMM.IPD-TM) 19/2024], a Single Judge [Mini Pushkarna, J.] of the High Court of Delhi, vide judgment dated May 28, 2025, dismissed the appeal filed under Section 91 of the Trade Marks Act, 1999 (the “Act”), and upheld the Registrar’s decision to refuse registration of the Appellant’s slogan mark ONE FOR ALL (“Mark”) filed claiming use since 2020. The Court held that the Appellant failed to meet the statutory and evidentiary requirements for registration of the Mark, finding it to be descriptive, widely used, and lacking both inherent and acquired distinctiveness required for registration under Section 9(1). 

The proviso of Section 9(1) of the Act, sets out the exception to absolute grounds for refusal of registration of a trademark, stating that, “…Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark”. The key question of law was whether a slogan mark comprised of common words has a higher threshold of proving that it has acquired distinctiveness or secondary meaning through extensive use so as to identify the said mark with the products of the Appellant.  

The Appellant, a publisher of study materials that caters to all segments of students, for all leading boards and competitive examinations, claimed that the Mark had been used continuously since 2020 across both offline and online platforms and had, through sales and promotion, come to identify its books. The Registrar of Trade Marks refused registration under Section 9(1)(a), finding that the Mark lacked distinctiveness, as it comprised common words that could not be monopolized by an individual. 

The Court observed that the Mark is a common phrase of the English language, which in context of books designed for multiple boards and examinations, merely suggests that the mark is descriptive, and also lacked inherent distinctiveness. On the claim of acquired distinctiveness, the Court found the Appellant’s evidence insufficient. The sales and promotional figures largely pertained to the mark OSWAAL BOOKS, with Mark appearing only as a tagline in association with the main brand. There was no material to show that consumers identified the Mark as an independent source identifier. 

The Court dismissed the appeal, reiterating that registration of slogans or common expressions requires clear evidence that they have become uniquely associated with the applicant’s goods, and held that, “Thus, it is evident that slogans, particularly, those which are descriptive or commonly used phrases, face a significantly high threshold for registration, unless they have acquired a secondary meaning…merely placing a slogan prominently on goods or advertisements, does not suffice to establish the same, as a source identifier, unless consumers have come to associate that phrase uniquely with the applicant’s goods or services.” 

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In the matter of AL Hamd Tradenation vs. Phonographic Performance Limited [C.O.(COMM.IPD-CR) 8/2024], a Single Judge (Justice Mini Pushkarna) of Delhi High Court vide judgement dated May 13, 2025,held that a demand for an unreasonably high licence fee by a copyright owner constitutes refusal under Section 31 of the Copyright Act, 1957, thereby entitling the Petitioner to seek a compulsory licence for public performance of sound recordings.

Section 31 of the Copyright Act, 1957 (‘the Act’) states that “…the Copyright Board,… after holding such inquiry as it may deem necessary, may, if it is satisfied that the grounds for such refusal are not reasonable, direct the Registrar of Copyrights to grant to the complainant a licence to re-publish the work, perform the work in public or communicate the work to the public by broadcast, as the case may be, subject to payment to the owner of the copyright of such compensation and subject to such other terms and conditions as the Copyright Board may determine…”. The question that arises is whether the refusal to negotiate a reduced licence fee for a small-scale event amount to refusal under Section 31(1), and whether it can be a criterion for compulsory licence.

The Respondent, asserting ownership over its repertoire, claimed that it was legally entitled to determine licensing terms. It argued that the Petitioner was not a broadcasting organisation and had not been denied access, as licences were available at the published tariff rate.

The Court rejected the Respondent’s argument and held that an unreasonable demand for licence fees constitutes constructive refusal and further noted that, “… If the petitioner is required to pay the licence fee for each event that the petitioner organises, as per the tariff rate of the respondent, it will not only place an undue burden on the petitioner, but also on the general public…”.  Accepting the Plaintiff’s claim for a compulsory licence, the Court further held that, “The respondent cannot be given a free hand to procure any arbitrary and unreasonable licence fees. The respondent has to be held accountable for ensuring that it charges a fair and reasonable licence fee for its repertoire.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of PhonePe Private Limited v BundlePe Innovations Pvt. Ltd.[Civil Suit (COMM DIV) No.119 of 2023], a Single Judge [P. Velmurugan, J.] of the High Court of Madras, vide judgment dated January 21, 2025, rejected the Plaintiff’s claim of permanent injunction and held that mere use of common suffix “Pe” in Defendant’s domain names viz. “https://bundlepe.com/” & “https://latepe.in/” and Plaintiff’s domain name “phonepe.in”, does not amount to deceptive similarity as there is lack of substantial evidence of actual confusion or any harm to Plaintiff’s brand.

Section 2(1)(h) of the Trademarks Act, 1999 (“the Act”) states that “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” The issue was whether the use of a common suffix in Defendant’s domain name could result in deceptive similarity.

The Plaintiff contended that its domain name “phonepe.in” and Defendant’s domain names “https://bundlepe.com/” & “https://latepe.in/” encapsulates a common suffix “Pe”, which increases the likelihood of confusion in the minds of consumers. The Plaintiff further argued that this would have a detrimental impact on their brand name and goodwill and sought an injunction to prevent the Defendant from using any deceptively similar domain name that would create an impression of association with Plaintiff.

The Defendant contended that their domain names “https://bundlepe.com/” & “https://latepe.in/” are entirely different from the Plaintiff’s domain name “phonepe.in”. The inclusion of the words “Bundle” and “Late” sufficiently differentiates the domain name of Defendant from that of the Plaintiff and prevents any likelihood of confusion among the consumers. Moreover, the Defendant contended that domain names are not deceptively similar and have been independently registered for their business activities.

The Court rejected Plaintiff’s contention and pointed out that “The word “Pe” denotes a common suffix in the digital payment industry and does not, on its own, create confusion. The Plaintiff must demonstrate that the defendants’ domain names have caused, or are likely to cause, confusion among consumers. However, the Plaintiff did not provide substantial evidence to show that consumers were actually confused or misled by the Defendants’ domain names. There were no consumer complaints or evidence of lost business due to the Defendants’ domain names. In the absence of such evidence, the Court found no justification for granting an injunction”.

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In the matter of Adidas AG v. Keshav H. Tulsiani & Ors. [CS(COMM) 582/2018], a Single Judge [Sanjeev Narula, J.] of the High Court of Delhi, vide judgement dated July 19, 2024, granted a permanent injunction in favor of the Plaintiff and held that invented and highly distinctive trademarks, such as ADIDAS, warrant stronger legal protection, as such marks are unlikely to be adopted innocently and demand a broader ambit of safeguarding under trademark law.

Section 29(2)(a) of the Trade Marks Act, 1999 states “A registered trademark is infringed by a person who…uses in the course of trade, a mark which because of – (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark… is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” The question of law in this case was whether the replication of a unique and globally recognized mark like ADIDAS suffices to establish infringement even without evidence of actual confusion, as long as the likelihood of confusion and dilution is evident.

The Plaintiff argued that the Defendants’ use of the identical mark ADIDAS for textiles under Class 24 created a high likelihood of consumer confusion, diluted the distinctiveness of its mark, and infringed upon its exclusive rights. The Plaintiff emphasized that ADIDAS is an invented and highly distinctive term with no inherent meaning, warranting maximum protection under trademark law.

The Defendants contended that their adoption of ADIDAS was honest and culturally motivated, citing Sindhi terms meaning “devotee of elder sister.” They further argued that their use of the mark in uppercase letters distinguished it from the Plaintiff’s stylized lowercase mark.

The Court acknowledged that coined terms with no inherent linguistic meaning like ADIDAS are highly distinctive and the likelihood of confusion or deception among the public can be presumed when such a mark is replicated by another party, and held that, “Given the identity of the marks, the allied nature of the goods under Classes 24 and 25, and the significant overlap in trade channels, there is a high likelihood of confusion among consumers. The Defendants have not provided evidence to counter this presumption of confusion or to show honest and distinct commercial use. Therefore, based on the statutory provisions of Section 29(2)(a) of the Act and the factual circumstances of this case, the use of “ADIDAS” by the Defendants on textiles meets the criteria for trademark infringement.”

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