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Bulletin 5 | Sept 2023

Topical Updates: To IP & Beyond


An application was filed by the Respondent in a revocation petition to stay the revocation, claiming that the same patent is subject matter of a pending suit before the H.P. High Court. The Court held – (1) a suit is instituted when a plaint is presented to a competent officer, authorized by Court. Hence, it was held that the revocation was instituted prior to the infringement suit, rendering the stay application impermissible; (2) proceedings instituted under other statutes invoking provisions of CPC which deal with suits, cannot be considered a suit – a revocation petition is not a suit, thus, an application for stay of suit is not maintainable.              

In a suit filed for infringement of its ‘RED SOLE’ and ‘SPIKED SHOE STYLE’, the Plaintiffs, inter alia, relied on ChatGPT search results to demonstrate its reputation.  The Plaintiffs were found to have made out a prima facie case for infringement and passing off.  With respect to the ChatGPT search result, it was observed that a Large Language Model (LLM) based chatbot cannot be the basis of adjudication of legal or factual issues, as the accuracy of AI generated data is still questionable. The tool cannot substitute human intelligence.

An actor depicting a contract killer in the film ‘JAILER’ was seen wearing the Plaintiff’s jersey and also making derogatory statements. Plaintiffs claimed such depiction amounts to disparagement, dilution and infringement of their marks.  The matter was settled between the parties. The filmmakers agreed to digitally edit/alter the team jersey as worn by the character before the release of the Film on television, satellite, or OTT platforms.

In a novel decision passed in a rogue website-blocking suit, the Hon’ble Court imposed Damages to the tune of INR 20 Lakhs on the websites that were found to be illegally distributing the Plaintiff’s film ‘Brahmastra Part One: Shiva’. The Court touched upon the Cinematograph (Amendment) Act, 2023 to emphasize the legislature’s stricter approach towards online piracy and decreed the suit in terms of prayers seeking permanent injunction, damages and actual costs.

The Plaintiff’s application seeking to restrain the use of ‘Khiladi’ as a Telegu movie title, was dismissed on the ground that the essentials of an infringement action, i.e. deceptive similarity and confusion between  the marks was prima facie missing. Held, that the Plaintiff’s registration of a device mark did not confer rights in the word ‘Khiladi’ per se. which was a generic word of non-distinctive character. The Plaintiff was also denied relief due to delay in approaching the Court which proves fatal in infringement cases filed in relation to movies.    

Significant Judgments


An appeal on the issue of whether use of keywords in the Google Ad Program amounts to infringement of trademark was decided as follows:

  • Using a trademark as a keyword in Google Ads Program constitutes “use” of the trademark “in advertising” under Section 29(6) of the TM Act by both advertisers and Google.
  • Mere use of a trademark as a keyword by itself does not amount to trademark infringement; the overall impact of the Sponsored Ad must be considered.
  • Fair use of a trademark by a person who is otherwise not the owner or otherwise authorized to use the same, is permissible under law. However, if use as a keyword leads to confusion, deception, unfair advantage, dilution, or harm to the trademark’s reputation, it’s considered infringement.
  • Google, actively promoting trademark keyword use and profiting from it, cannot claim to be a passive intermediary regarding the Google Ads Program.
  • Google can be held accountable for contributory infringement if it fails to take down an infringing Ad upon intimation.

… it is necessary to state that the use of the trademark as a keyword coupled with the display of a sponsored link must have real likelihood of confusion. Mere generation of interest in the sponsored link without any likelihood of confusion cannot be construed as infringement of a trademark.


The Court while deciding the issue of maintainability of a suit filed for infringement of copyright and confidential information, while holding in favour of the Plaintiff, rejected the applicability of the Navigators Logistics Ltd. v. Kashif Qureshi & Ors. case stating that –  a great deal of technical expertise, inventiveness and creativity had gone into the generation of the customers list / confidential database of the Plaintiff which was allegedly purloined by their ex-employees/Defendants. The Suit was allowed noting that the “confidential information” referred to in the suit, was not limited to client/customer lists and involved additional material from the Plaintiffs’ website which was copied onto the Defendants’ website so as to confuse clients. It was further held that –

15. Once a triable issue is found to exist, the suit cannot be dismissed at the outset, as was done in Navigators Logistics. It has to proceed to trial.


The Court devised a relief in the form of a ‘Dynamic+ Injunction’ in this rogue website-blocking suit filed by the Plaintiff to curb piracy of its existing copyright content, i.e., films, TV shows etc. as well as in the Plaintiff’s future works –

19…To keep pace with the dynamic nature of the infringement that is undertaken by hydra-headed websites, this Court has deemed it appropriate to issue this ‘Dynamic+ injunction’ to protect copyrighted works as soon as they are created, to ensure that no irreparable loss is caused to the authors and owners of copyrighted works, as there is an imminent possibility of works being uploaded on rogue websites or their newer versions immediately upon the films/shows/series etc

An ex-parte injunction was accordingly passed permitting the Plaintiff to implead any mirror/redirect/alphanumeric variations of the rogue websites which would provide means of accessing the said primary infringing websites. The injunction was further extended to such additional websites.

Meet the Picklers: Sneha Jain, Savni D. Endlaw, Snehima Jauhari, Surabhi Pande, Saif Rahman Ansari, Kuber S. Mahajan and R. Ramya.



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