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IP Case Digest · Trade Marks Act s.2(m)

Section 2(m), Trade Marks Act: case law

3 judgments of the Delhi High Court and the Supreme Court of India applying Trade Marks Act s.2(m), from 2023–2026, each with a headnote by BRB Legal.

3judgments
2courts
2023–2026years

Alkem Laboratories Limited v. Prevego Healthcare and Research Pvt. Ltd., CS(COMM) 84/2025

Delhi High Court · Injunction refused

Interim injunction refused and an ex parte order vacated in a dispute over pharmaceutical marks built around two letters of the alphabet. The Court held that the plaintiff cannot claim protection against use of letters of the English language on the strength of a copyright registration in a stylised rendering of them, the letters in the impugned mark being written in a completely different manner. The overall impression of the competing trade dresses differed in font and colour scheme, so neither the marks nor the trade dress were deceptively similar and the plaintiff had no exclusive right in the letters themselves.

Pernod Ricard India Private Limited & Another v. Karanveer Singh Chhabra, CIVIL APPEAL NO. 10638 OF 2025

Supreme Court of India · Dismissed

Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.

A.O. Smith Corporation v. Registrar of Trademarks, C.A.(COMM.IPD-TM) 125/2022

Delhi High Court · Set aside

Refusal under section 9(1)(a) and (b) of a composite mark set aside. The artwork, a water droplet covered by a leaf in the shape of a hand, was unique, creative and clearly distinctive. A mark must be seen as a whole, and the slogan and acronym within it, though prominent, are only part of it. The Registry produced no material to show the expression was common to the trade or descriptive of any feature of water treatment products, and slogans and taglines can be trade marks within sections 2(m) and 2(zb).

Other provisions of the Trade Marks Act

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