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02 January 2025
In 2024, India’s trademark law experienced significant transformations, influencing the protection of both traditional intellectual property and emerging legal concerns. As we enter 2025, it’s important to reflect on the most impactful trademark rulings over the past year, as these decisions have set important precedents and will likely guide future legal interpretations. From the protection of long-standing trademarks to addressing new challenges in the age of AI, 2024 has been a transformative year for India’s intellectual property laws.
1. Kabushiki Kaisha Toshiba v. Tosiba Appliances: A landmark decision in trademark seniority
A standout case in 2024 was Kabushiki Kaisha Toshiba v. Tosiba Appliances, which centred on the Japanese electronics giant Toshiba’s long-standing trademark. This case, which had been in the making for nearly 50 years, concerned the use of the deceptively similar mark “Tosiba” on electrical appliances by a local Indian player.
Toshiba, with a registered trademark in India since 1953, argued that its seniority over the mark should prevent any other business from using a confusingly similar name. The court upheld this argument, affirming that a trademark’s registration is valid even if the mark is not used immediately, strengthening the concept of trademark seniority. This ruling emphasized the importance of honest adoption of trademarks and highlighted the difficulty in proving transborder reputation, setting a critical precedent in trademark law.
2. Vishesh Films v. Super Cassettes: Trademarking film titles
The case of Vishesh Films v. Super Cassettes in the Delhi High Court marked a significant step in the protection of film titles as intellectual property. Vishesh Films sought to prevent the release of the film Tu Hi Aashiqui, claiming it bore too close a resemblance to their earlier successful movie Aashiqui.
In a notable decision, the court ruled that the title of a film can be protected as a trademark, particularly when it has garnered significant emotional investment from audiences and has become an established brand. The decision opened the door for future legal protections of film titles, recognizing them as standalone entities that deserve trademark protection in the same way as other commercial goods.
3. Reverse passing off in refurbished goods: Western Digital and Seagate v. Daichi et al.
In a case that brought attention to the complexities of the secondary market, Western Digital and Seagate v. Daichi, Consistent, and Genonix dealt with reverse passing off in the sale of refurbished goods. The plaintiffs, two major manufacturers of hard disk drives (HDDs), filed an injunction against refurbishers who were selling their products with the original trademarks removed.
The court ruled that refurbishers must retain the original trademarks on products and provide clear disclaimers that the products were refurbished and not covered by the original manufacturer’s warranty. This case underscored the need for honest marketing practices and consumer protection, reinforcing the principle that consumer deception is a serious concern, even in the resale market.
4. Wipro Enterprises v. Himalaya: A case of trademark confusion in personal care
The legal battle between Wipro Enterprises and Himalaya over the trademark EVECARE highlighted the complexity of determining trademark confusion. Both companies were selling personal healthcare products under the same mark, leading to confusion among consumers.
This case reaffirmed the legal principle that the likelihood of confusion isn’t determined solely by the products’ class but also by their relatedness and overlap in consumer bases. The ruling clarified how courts would evaluate cases where two brands market similar products to the same target demographic, ensuring stronger protections against marketplace confusion.
5. Jackie Shroff v. The Peppy Store: Protecting personality rights in the AI age
A case that highlighted the intersection of celebrity rights and modern technology was Jackie Shroff v. The Peppy Store and Ors. In this case, Bollywood actor Jackie Shroff successfully sought an injunction against multiple defendants using his likeness, name, and slogans to sell merchandise. Additionally, AI chatbots impersonating Shroff were also involved, highlighting the growing issue of personality rights in the digital era.
This case is part of a broader trend where courts are increasingly protecting personality rights, particularly against unauthorized commercial exploitation in the age of artificial intelligence. Similar cases, such as Arijit Singh v. CodibleVentures and Mohan Babu v. Phanumantu, have further solidified this protection, paving the way for future legal battles involving AI misuse and personality rights.
6. Hot Cases to Watch in 2025
As we look ahead to 2025, several high-profile trademark cases are set to make waves in the Indian legal landscape.
Olfactory mark for rose-scented tyres: A groundbreaking case involving a pending application to register a rose-scented tire as a trademark could set a precedent for scent-based trademarks in India. This case will test the challenges of defining and graphically representing scents under trademark law.
ANI v. OpenAI: In a case with significant implications for AI and copyright, ANI will challenge OpenAI regarding the use of news agency data to train AI models. The ruling could reshape how AI interacts with traditional copyright principles.
The Butter Chicken Case: In the ongoing dispute between Moti Mahal and Daryaganj over the origin of butter chicken, the legal implications could influence how food items and restaurant brands are protected, even though recipes themselves can’t be trademarked in India. This case will highlight challenges in protecting culinary heritage and preventing unfair competition in the food industry.
Conclusion
The landmark decisions of 2024 have set new standards in India’s trademark law, addressing emerging issues in AI, film, and secondary markets. These cases have reshaped the understanding of trademark protection and are likely to have a lasting impact on future disputes. As India’s intellectual property laws continue to evolve, these decisions will undoubtedly influence the way businesses, consumers, and legal experts approach trademark protection in the years to come.
