Copyrights and Trademarks Quarterly Milestones (July-September 2025)

The Division Bench of the Delhi High Court has recently affirmed that businesses can pursue parallel actions under design and trademark law where a product’s appearance has gained distinctiveness through use and consumer association. Even if a design infringement claim fails, the same facts and evidence may still sustain a passing-off claim.¹

The Court clarified that the Designs Act, 2000 (Designs Act) and Trade Marks Act, 1999 (Trade Marks Act) operate in distinct spheres. A design registration protects the novelty and aesthetic features of a product, while a passing-off action protects the goodwill and reputation that a business builds around the appearance of its products. It held that courts cannot deny common-law claims solely because the subject matter is registered as a design.

This ruling effectively allows continued protection of distinctive product features beyond the 15-year term under the Designs Act through common-law rights in passing-off actions. For instance, a footwear company whose signature sole pattern has become instantly recognisable to consumers can rely on passing off claims to prevent the sale of lookalike products in the market. To strengthen such claims based on distinctive product features, businesses should proactively document the use and consumer recognition of their product designs, much like they would for trademarks. They could also consider conducting consumer surveys to establish evidence of distinctiveness.

In a recent ruling, the Delhi High Court refused to restrain the use of the name “Vasundhara” by the respondent company, named after its founder, Vasundhara Mantri. The Court held that even partial use of a personal name qualifies for protection under Section 35 of the Trade Marks Act and rejected the notion that such protection is limited to only full names or natural persons. The Court clarified that individuals may use their personal names as trademarks, wholly or partially, without infringing another’s mark, provided such use is bona fide. The Court also affirmed that companies and successors may continue the bona fide use of personal names that form part of their corporate identity.²

This clarification is likely to become a common defence in trademark infringement disputes, especially in sectors where family names are integral to business identity. However, businesses that have built substantial goodwill and market recognition around a personal name forming part of their corporate identity may need to demonstrate extensive evidence of reputation and consumer association to enforce their rights.

In a significant ruling, the Delhi High Court has held that passing-off claims must be supported by demonstrable goodwill within Indian territory and cannot be based solely on a brand’s international reputation. The Court observed that goodwill resides in the brand itself, rather than being tied to specific products or services, but emphasised that such goodwill must be substantiated by evidence of recognition among Indian consumers. A global reputation, without corresponding local recognition, cannot restrain another party’s legitimate use of a similar or registered mark.³

The decision underscores that foreign companies seeking to safeguard unregistered trademarks must establish a local consumer association through sales, marketing, or partnerships. Early efforts to build visibility, such as trademark registration and documentation of domestic engagement, are essential to securing both statutory and common-law rights.

On 28 July 2025, the Delhi High Court declared “Nutella” and its distinctive trade dress to be a well-known trademark under Section 2(zg) of the Trade Marks Act. Recognising Nutella’s long-standing use since 1964, paired with strong consumer association, the Court held that the mark was eligible for protection as ‘well-known’. The Court also observed that in matters involving edible products for human consumption, a higher degree of care and caution must be applied to avoid confusion among consumers. Due to the heightened risk of deception associated with such goods, the Court granted a permanent injunction, awarded INR 30 lakh in damages, and imposed INR 2 lakh as costs against the defendant, who was found manufacturing and distributing counterfeit Nutella products.

In July 2025, the Ministry of Information and Broadcasting (MIB) formed a Joint Working Group (JWG) to strengthen India’s live entertainment sector. The JWG comprises representatives from government bodies, industry associations, event companies, and copyright societies. Its first meeting was convened on 26 August 2025 to identify measures for enhancing operational efficiency and sectoral growth.

In August 2025, the MIB set up a dedicated task force on anti-piracy to safeguard India’s rapidly expanding media and entertainment sector. The group has been tasked with taking swift action against content leaks, strengthening anti-piracy strategies, and collaborating closely with industry stakeholders to safeguard creative content and intellectual property.

The initiative has been positively received by industry bodies, such as the Internet and Mobile Association of India, which view it as a crucial move to tackle the sector’s most pressing challenges. By fostering government-industry cooperation, the task force aims to enhance accountability, reinforce intellectual property protection, and support the long-term credibility and growth of the creative economy.