UPDATES

from the
IP WORLD
December 2024 | Edition 6
Table of Content

S.No. Particulars Page

JUDGEMENTS

Delhi High Court Rules to Cancel Registration of Trademark

i. 1
'NIPPU' for Violating Prior Rights of 'NIP'

Delhi High Court Grants Interim Relief to PhonePe in Trademark

ii. 2
Dispute

Delhi High Court Bars Rival Sweetshop from Using “Evergreen”

iii. 3
Name, Cites Risk of Consumer Confusion

Delhi High Court Stops Use of ‘IKEY’ Mark, Cites Trademark

iv. 4
Infringement of IKEA

Delhi High Court Observes "Wow" Cannot Be Monopolized by

v. 5
Wow! Momo

INDIAN IP UPDATES 6-8

Dispute
INTERNATIONAL IP UPDATES 9-11
 Judgements

Delhi High Court Rules to Cancel Registration of Trademark 'NIPPU' for Violating Prior
Rights of 'NIP'

The Delhi High Court ruled in favor of a private company that manufactures consumer goods
like detergents and cleaning products under the brands 'FENA' and 'NIP'. The company has
been using the trademark 'NIP' since 1976 and holds several registrations for it.

The case arose when a sole proprietor from Godawari Industries, the respondent, registered the
trademark 'NIPPU' in 2018 for similar products. The petitioner argued that 'NIPPU' was too similar
to their long-established 'NIP' mark and would confuse consumers, especially since both marks
were registered for identical products in Class 3.

Despite the respondent failing to contest the case or appear in court, the petitioner
successfully proved that their 'NIP' mark had been in use and registered long before the
respondent’s 'NIPPU' registration. The Court found that both marks were strikingly similar, and
since the goods were identical, there was a high chance of confusion in the market.

The Court also noted that since the respondent did not defend their trademark, it was
reasonable to conclude that the registration of 'NIPPU' was done in bad faith, intending to
exploit the petitioner’s established goodwill.

The Court ruled that the 'NIPPU' trademark violated the petitioner’s rights under the Trade Marks
Act, 1999. The Court directed the Trade Marks Registry to cancel the registration of 'NIPPU' and
remove it from the Register of Trade Marks, protecting the petitioner’s trademark rights.

CASE NAME: Fena Private Ltd vs Balwinder Kumar & Anr.

LLL Monthly Update | 1

 Judgements

Delhi High Court Grants Interim Relief to PhonePe in Trademark Dispute

The Delhi High Court recently granted temporary relief to PhonePe, a leading digital payments
company, in a trademark dispute against AGF Finlease India. The case involved AGF Finlease
using the name ‘PhonePey Loan’ for its digital lending services, which PhonePe claimed was
misleading and infringed on its registered trademark.

PhonePe argued that the name ‘PhonePey Loan’ was almost identical to its brand, potentially
confusing the public and falsely implying a connection between the two companies. PhonePe
also highlighted instances where AGF Finlease agents misrepresented themselves as being
affiliated with PhonePe’s loan services. AGF Finlease, on the other hand, defended itself by
pointing out the spelling difference between ‘PhonePey’ and ‘PhonePe’.

The Court observed that PhonePe had successfully demonstrated a strong case of trademark
infringement and misrepresentation. The Court stated that the similarities between the two
names were likely to confuse customers, damaging PhonePe’s reputation and goodwill.

To protect PhonePe’s trademark rights, the Court issued an injunction restraining AGF Finlease
from using ‘PhonePey Loan’ or any similar name. The Court also ordered the removal of
infringing content from online platforms, including social media, and directed GoDaddy to
disable the website associated with ‘PhonePey Loan’.

This decision reinforces the principle that businesses must respect trademark rights and avoid
practices that could deceive the public or harm a brand’s reputation.

CASE NAME- PhonePe Pvt Limited & Anr v. AGF Finlease India Limited

Defendant’s mark Plaintiff’s Mark

LLL Monthly Update | 2

 Judgements

Delhi High Court Bars Rival Sweetshop from Using “Evergreen” Name, Cites Risk of
Consumer Confusion

The Delhi High Court recently ruled in favor of Evergreen Sweet House, a well-established
confectionery brand, in a trademark dispute with a rival sweetshop, JV Evergreen Sweets &
Treats. The Court restrained the defendant from using the name “JV Evergreen Sweets &
Treats” or a similar logo, citing the risk of consumer confusion and harm to the goodwill of the
plaintiff’s business.

Evergreen Sweet House, which has been operating in Green Park, Delhi for over 60 years,
argued that the defendant’s use of the name “Evergreen” and a similar logo was misleading
customers, both in stores and online. The plaintiff claimed that this constituted "passing off," as
the defendant's actions could damage its longstanding reputation.

The Court agreed, noting that both businesses appeared under similar names on popular food
delivery platforms like Zomato and Swiggy, which increased the likelihood of confusion among
customers and observed that if a customer searched for “Evergreen” on these platforms, both
businesses would show up, making it easy for consumers to be misled into thinking the two
were related.

The Court also pointed out that the defendant failed to explain why it chose the name
"Evergreen," suggesting that the adoption of the name was not genuine but intended to
mislead consumers. The Court ruled that the plaintiff had successfully demonstrated a case of
passing off and ordered the defendant to stop using the contested name and logo.

To ensure compliance, the Court instructed food delivery platforms to remove the defendant’s
listings if they did not voluntarily change their business name. The decision underscores the
importance of protecting businesses from deceptive practices to maintain their reputation
and trust among customers.

CASE NAME- Evergreen Sweet House Vs. JV Evergreen Sweets And Treats & Ors.

Defendant’s mark Plaintiff’s Mark

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 Judgements

Delhi High Court Stops Use of ‘IKEY’ Mark, Cites Trademark Infringement of IKEA

The Delhi High Court has ruled in favor of Inter IKEA Systems BV, granting a permanent
injunction to prevent the defendant from using the mark ‘IKEY’ or any similar mark that could
cause confusion with IKEA’s globally recognized trademark. IKEA, which has used its trademark
since 1943, filed the suit after discovering that the defendant was using a mark deceptively
similar to ‘IKEA’ for products such as tiles, plumbing materials, and home furnishings.

IKEA argued that the defendant’s use of the mark ‘IKEY’ was a deliberate attempt to benefit
from IKEA’s established brand reputation. The Court agreed, stating that the defendant’s
actions amounted to a dishonest attempt to mislead consumers into thinking the defendant’s
products were associated with IKEA. The defendant had used ‘IKEY’ in their business name, logo,
and even their domain name, which the Court found to be an infringement on IKEA’s
trademark.

The Court concluded that the defendant’s use of ‘IKEY’ was confusing and damaging to IKEA’s
goodwill. As a result, the defendant was restrained from using the mark ‘IKEY,’ its variations, and
related domain names. The Court emphasized the need to protect IKEA’s reputation and
prevent consumer deception, highlighting the serious implications of trademark infringement.

CASE NAME: Inter Ikea Systems BV vs. IKey Home Studio LLP and Anr.

Defendant’s mark Plaintiff’s Mark

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 Judgements

Delhi High Court Observes "Wow" Cannot Be Monopolized by Wow! Momo

The Delhi High Court has ruled that the word “Wow” cannot be exclusively claimed by Wow!
Momo in the restaurant industry. The court observed that “Wow” is a generic term commonly
used in the food business, making it unsuitable for monopoly.

The ruling came during Wow! Momo's plea to stop Hong Kong-based Wow Burger from
entering the Indian market. Wow! Momo argued that the new entrant’s use of “Wow” could
confuse customers, particularly since the fast-food chain also sells burgers under the name
“Wow Burger.” Despite these arguments, the Court declined to issue an interim order to block
Wow Burger’s entry, stating that both parties need to be heard. The matter is scheduled for
further consideration in January 2025.

Wow! Momo, established in Kolkata in 2008, operates over 600 outlets across India, offering a
variety of momos and fast food. The company has been involved in several legal disputes over
its trademark. The Delhi High Court restrained ‘Wow! Delicious’ from using a similar name. In
March 2024, it barred ‘Wow Punjabi’ from using a mark resembling Wow! Momo, and in August
2023, the chain was prohibited from using ‘Wow! China Bistro’ following a legal dispute.

Wow Burger, a Hong Kong-based chain, recently announced its Indian market entry in
partnership with FranGlobal. It plans to introduce high-protein vegetarian fast food and open
over 100 outlets within five years, starting with major cities like Mumbai and Delhi NCR. This
trademark dispute highlights the challenges brands face in protecting their identity while
competing in a dynamic market.

CASE NAME: Wow Momo v. Wow Burger

Defendant’s mark Plaintiff’s Mark

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 News from The Indian IP World

Bombay High Court Pauses INR 4.5 Crore Fine on Patanjali

A Division Bench of the Bombay High Court has stayed a single-judge's decision to impose a
INR 4.5 crore penalty on Patanjali Ayurved in trademark infringement case. The costs were
levied on Patanjali by a single Bench in July this year for violating an interim order that
prohibited the company from selling camphor products that allegedly infringed on the
trademark of Mangalam Organics. After the injunction was imposed, Patanjali allegedly
violated the Court's order, which led Mangalam Organics to file a contempt petition.

Swiss Senate Approves India-EFTA Trade Agreement

On December 3, the Swiss Senate (Council of States) overwhelmingly approved the Trade and
Economic Partnership Agreement (TEPA) between India and the European Free Trade
Association (EFTA). With a unanimous 41 votes in favor and 3 abstentions, the agreement will
now await approval from the National Council. According to reports, this is the first time India
has entered into a legally enforceable agreement on trade and sustainable development with
an EFTA partner.

Punjab and Haryana High Court Quashes Charges Against Arun Kumar

The Punjab and Haryana High Court has quashed the charges of copyright and trademark
infringement against Arun Kumar in the case against the Arun Kumar V. State of Punjab. The
Court ruled on substantive and procedural grounds, stating that there can be no copyright in
the manufacture and sale of garments. The court clarified that the charges under Sections 63
and 65 of the Copyright Act, 1957, were not applicable as the garments did not fall under the
categories protected by copyright law.

Managing IP Lists Two Delhi HC Judges Among 2024's Most Influential in IP

The prestigious Managing Intellectual Property (Managing IP) magazine has unveiled its
annual list of the 50 most influential people in intellectual property (IP) for 2024. Among the
distinguished names, two judges from the Delhi High Court have been recognized for their
significant contributions to IP law and policy. The inclusion of Justice Alok Choudhary and
Justice Vibha Chawla highlights their impactful judgments and efforts in shaping the IP
landscape in India.

LLL Monthly Update | 6

 News from The Indian IP World

Delhi High Court Refers MSF-Dharma Productions Trademark Dispute to Mediation

The Delhi High Court has referred a legal dispute between Médecins Sans Frontières (MSF) and
Dharma Productions to mediation. The dispute arose when MSF objected to the use of its
trademark in the film "Jigra," starring Alia Bhatt, where characters impersonate MSF
representatives to illegally cross international borders. MSF claims this depiction is
"disparaging" and "tarnishes" its trademark, potentially harming its credibility.

Delhi High Court Grants Permanent Injunction in "FEDERATED HERMES" Trademark Case

A lawsuit seeking a permanent injunction against unknown individuals or entities misusing the
"FEDERATED HERMES" trademark and logo has resulted in a court ruling in favor of the plaintiffs.
The plaintiffs claimed that the defendants were operating a fraudulent investment and stock
trading business using the "FEDERATED HERMES" marks. The Delhi High Court had previously
issued an ex-parte interim injunction and has now granted a permanent injunction, finding
clear intent to defraud and deceive the public by the defendants.

Delhi High Court Issues Notice to Marico in Alpino Case

Following the Delhi High Court's ex-parte injunction in favor of Marico, Alpino Health Foods has
sought the vacation of the order, alleging that Marico suppressed material facts, misleading
the Court. The Court issued a notice to Marico on December 13, allowing four weeks to file a
reply. The next hearing is scheduled for January 30. The order did not specify the suppressed
facts.

Delhi High Court Halts Jack Daniel's Trademark Registration for Indian Firm

The Delhi High Court has stayed the registration of the Jack Daniel's trademark by the
trademark registry in favor of Indian company Mangalam Krupa. This case pertains to the use
of the Jack Daniel's mark in the category of pharmaceutical and veterinary products. Jack
Daniel's Properties Inc. alleged that this registration would lead to brand dilution and consumer
confusion. The court's decision temporarily halts the process, pending further examination of
the case.

LLL Monthly Update | 7

 News from The Indian IP World

Delhi High Court Resolves 16-Year Trademark Dispute Over 'The Imperial' Hotel

The Delhi High Court has resolved a 16-year-old trademark dispute over Delhi's iconic 'The
Imperial' Hotel. The dispute, between brothers Hardev Singh Akoi and Jasdev Singh Akoi, joint
owners of the hotel, was settled amicably. The court acknowledged the joint ownership of the
trademark 'Imperial' by Hardev Singh Akoi (50%), and the sons of Jasdev Singh Akoi, Raidev
Singh Akoi (25%) and Gobind Singh Akoi (25%). The settlement ensures no further disputes over
the trademark.

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 News from The International IP World

U.S. Motion Picture Association Calls for Clearer AI Copyright Rules and Opt-Out
Mechanism in Singapore

The U.S. Motion Picture Association has urged Singapore to clarify its copyright exceptions for AI
companies, particularly regarding data mining and computational analysis, and to introduce
an opt-out mechanism for rights holders. George Hwang, director of George Hwang LLC in
Singapore, highlighted concerns over the broad scope of these exceptions and the risk of AI
companies exploiting copyrighted works without licenses. He emphasized the importance of
rights owners maintaining control and urged clear rules to protect against misuse of
copyrighted materials.

Myanmar Issues First Trademark Registrations Under 2019 Law, Strengthening IP

Protection

Myanmar’s Intellectual Property Department (IPD) has issued its first trademark registration
certificates under the 2019 Trademark Law, marking a major step in IP protection. Registered
owners now have stronger legal rights, including the authority to stop unauthorized use and
take enforcement actions. The “first-to-file” system highlights the importance of early
registration for stronger protection. Certificates are available electronically or in print, with a 10-
year initial validity, renewable for another 10 years. Registered trademarks are publicly
accessible through the IPD’s official website.

BIP Asia 2024 Highlights IP's Role in Innovation and Economic Growth

The 14th Business of IP Asia Forum (BIP Asia) was held in Hong Kong on December 5-6, 2024,
focusing on the theme “Reimagining IP for Impact and Growth.” Experts discussed how IP drives
innovation, entrepreneurship, and economic development. WIPO’s Binying Wang highlighted
trends in global filings and the need for improved IP financing, especially for startups. Asian
countries dominated innovation with China leading global science and tech clusters. The
forum emphasized IP’s vital role in shaping business and societal growth.

LLL Monthly Update | 9

 News from The International IP World

Kazakhstan’s AIFC Adopts New IP Regulations to Boost Innovation and Investments

Kazakhstan’s Astana International Financial Centre (AIFC) approved new Intellectual Property
Regulations, effective January 1, 2025. The regulations align with international standards and
English common law, covering trademarks, patents, copyrights, and more. Timur Berekmoinov
of GRATA International highlighted that the rules enhance IP protection, attract foreign
investment, and boost innovative industries like fintech and biotech. AIFC’s independent court
ensures fairness, while the regulations could inspire nationwide IP reforms, supporting
technology transfer, startups, and the creative industry. Kazakhstan aims to meet global IP
standards.

EUIPO Leads Forum in Manila to Strengthen Industry Cooperation Against IP

Infringements

The EUIPO organized a forum in Manila on November 12, 2024, as part of the IP Key SEA Project,
to combat IP infringements. Experts from the European Observatory, DG GROW, and IP offices in
the Philippines and Thailand discussed tackling misuse of intermediary services and
promoting voluntary cooperation. Two key MoUs were highlighted: one targeting counterfeit
goods on e-commerce platforms and another reducing ads on infringing sites. Using a “follow
the money” approach, the EUIPO fosters collaboration, protecting IP and supporting businesses
in Southeast Asia.

Greek Council of State Rules 'Kalamata' Olive Name Can Be Used Outside PDO Area

In a recent decision, the Greek Council of State ruled that the name 'Kalamata' can continue to
be used for the olive variety, even outside the PDO area. The 'Kalamata' olive, registered as a
PDO in 1996, was at the center of a dispute about its use. The Council found that the name,
used for years, was recognized as a plant variety, not just a PDO product, ensuring no
misleading of consumers or unfair competition. This decision balances GI protection with pre-
existing plant variety names.

LLL Monthly Update | 10

 News from The International IP World

Pakistan Collaborates with WIPO to Develop National IP Strategy

The Intellectual Property Organization of Pakistan (IPO-Pakistan), in collaboration with WIPO,

held two-day consultative sessions to develop Pakistan’s National IP Strategy. Discussions
focused on challenges, recommendations, and the geo-economic impact of IP strategies. IPO-
Pakistan Chairman Farukh Amil highlighted the need for IP education in academic curriculums
to raise youth awareness. Sana Shaikh Fikree, counsel at Vellani & Vellani, emphasized IP
literacy's role in safeguarding inventions and fostering innovation. She recommended
introducing IP in schools, organizing targeted workshops, and leveraging social media to
educate diverse audiences, including in regional languages, about IP's significance for
individuals and the nation.

EUIPO Declares EUTM ‘TESLA’ Invalid Due to Bad Faith Filing

The EUIPO Cancellation Division invalidated the EUTM ‘TESLA,’ held by Capella Eood, citing bad
faith. Tesla argued the filing was speculative, aimed at obstructing its operations and extorting
financial settlements. The Division found evidence of systematic trade mark trolling, including
speculative filings, procedural delays, and lack of genuine business activity. Capella Eood’s
intent to exploit Tesla’s growing reputation further supported the finding. The decision,
grounded in cases like Sky and Others and Koton, reinforces the EUIPO’s commitment to
curbing trade mark trolling and promoting fair competition within the EU trade mark system.

UK Government Unveils New Consultation on AI and Copyright, Addressing Training Data

and TDM Exceptions

The UK Government has released a consultation focusing on AI and copyright, specifically

addressing training data for AI models. Proposals include a broad text and data mining (TDM)
exception, licensing requirements, transparency obligations, and clarifications on jurisdictional
copyright laws. Aimed at balancing the interests of creative industries and AI developers, the
consultation acknowledges broader challenges like data scraping, biases, and AI's
environmental impact. Critics highlight concerns over creator rights, revenue distribution, and
regulatory gaps. Alignment with EU TDM rules is suggested for international interoperability,
while calls for a comprehensive framework to govern AI training data continue to grow.

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