Supreme Court Annual Digest 2025: Intellectual Property (IP) Laws

Intellectual Property (IP) Laws - Supreme Court Annual Digest 2025

Arbitrability of Trademark Disputes – Dispute between two factions of a Coimbatore-based family over the "Sri Angannan Biriyani Hotel" trademark. The petitioner filed a civil suit seeking a permanent injunction and ₹20 lakhs in damages for alleged trademark infringement. The respondent invoked an arbitration clause in the Trademark Assignment Deed, leading to referral to arbitration by the Commercial Court and High Court. Held: Not all trademark disputes are non-arbitrable; disputes in personam arising from contractual obligations, such as those under a trademark license or assignment deed, are arbitrable. Allegations of fraud, misconduct, or statutory violations do not preclude arbitration when the dispute stems from an arbitration agreement. Under Section 8, the referral court's role is limited to confirming the existence of a valid arbitration agreement, leaving substantive issues like claim validity or fraud to the arbitral tribunal. Under Section 11(6A), the court's role is confined to verifying the arbitration agreement's existence, not adjudicating the dispute's merits. Disputes arising from trademark licenses or assignments, being in personam, are arbitrable unless they involve in rem rights affecting the public. Judicial authorities must enforce arbitration agreements under Section 8 without discretion to bypass this mandate. The principle that subordinate in personam rights arising from in rem rights are arbitrable, as established in Booz Allen and Hamilton Inc. v. SBI Home Finance Ltd., (2011) 5 SCC 532 and Vidya Drolia v. Durga Trading Corporation, (2021) 2 SCC 1, was reaffirmed. The Supreme Court dismissed the petitioner's challenge, upholding the referral to arbitration. Petition dismissed; trademark dispute held arbitrable as it arose from an assignment deed. K. Mangayarkarasi v. N.J. Sundaresan, 2025 LiveLaw (SC) 597 : 2025 INSC 687 : AIR 2025 SC (Civil) 1802 : (2025) 8 SCC 299

Copyright Act, 1957; Section 15(2) - Designs Act, 2000 - Twin test to determine whether a work qualifies for protection under the Copyright Act or the Designs Act, 2000. Held, copyright protection for an artistic work ceases under Section 15(2) if the work is a design capable of registration under the Designs Act, remains unregistered, and is industrially reproduced more than 50 times. However, dismissal of a copyright suit does not automatically grant design protection, which requires separate evaluation. Cryogas Equipment v. Inox, 2025 LiveLaw (SC) 426 : 2025 INSC 483

Copyright Act, 1957; Section 15(2) - Designs Act, 2000 - Twin Test for Copyright-Design Conflict - (1) Nature of Work - (2) Functional Utility Test - Determine if the work is a purely artistic work under the Copyright Act or a design derived from such work and subjected to industrial processes, as per Section 15(2). If the work does not qualify for copyright protection, assess its dominant purpose. Works with primary functional utility, rather than aesthetic appeal, do not qualify for protection under the Designs Act. Cryogas Equipment v. Inox, 2025 LiveLaw (SC) 426 : 2025 INSC 483

Copyright Act, 1957; Section 15(2) - Designs Act, 2000 - The case arose from a 2018 lawsuit by Inox India Limited alleging copyright infringement by Cryogas Equipment and LNG Express India in engineering drawings for cryogenic semi-trailers. The Commercial Court dismissed Inox's suit under Order VII Rule 11, CPC, holding the drawings were unregistered designs reproduced over 50 times, falling under the Designs Act. The High Court reversed this, restoring the suit for trial. Cryogas appealed to the Supreme Court. Upholding the High Court's ruling, the Supreme Court criticized the Commercial Court's premature dismissal, which incorrectly assumed the drawings were designs without evidence of industrial reproduction or aesthetic nature. Determining the nature of the work involves a mixed question of law and fact, unsuitable for resolution at a preliminary stage. The case was remanded for trial to assess the true nature of the proprietary engineering drawings and related claims of literary works and confidential information infringement using the twin test. Appeal dismissed; Commercial Court directed to conduct a trial applying the twin test and independently evaluate all claims. Cryogas Equipment v. Inox, 2025 LiveLaw (SC) 426 : 2025 INSC 483

Copyright Act, 1957 – Sections 63, 65 - Victim - Appeal from convictions - Appeal in case of acquittal - Interpretation of 'victim' under Section 2 (wa) read with proviso to Section 372 CrPC - Whether Section 378 CrPC would prevail in cases where a company whose IPR were infringed, sought to appeal against acquittal - High Court dismissed the appeal as not maintainable, stating that appellant was neither a complainant nor a victim before Trial Court – Held, 'victim' shall not necessarily be the 'complainant' or 'informant' in a given case - High Court erred in holding that appellant cannot be a victim as it is only complainant who can maintain such appeal - Only in cases instituted upon private complaint, leave to appeal under section 378(4) of CrPC is maintainable - Hence, leave to appeal against order of acquittal in appeal is not maintainable in the instant case. Company suffered loss due to offence can file an appeal as 'victim' against acquittal under section 372 CrPC. [Relied on: Jagjeet Singh v. Ashish Mishra @ Monu, (2022) 9 SCC 321, (Para 42, 44)] Asian Paints v. Ram Babu, 2025 LiveLaw (SC) 697 : 2025 INSC 828

Patents Act, 1970 - Transfer Petition — Priority in Filing — Substantial Overlap of Issues — Patents Act, 1970, Sections 104, 106, 108 — Code of Civil Procedure, 1908 (CPC), Section 25 – Issue - Whether the Suit for Infringement (Delhi Suit) should be transferred to the Bombay High Court, or the Suit for Groundless Threat of Infringement (Bombay Suit) should be transferred to the Delhi High Court - Supreme Court allowed the transfer petition filed by petitioner - The Delhi Suit is transferred to the Bombay High Court to be tried along with the Bombay Suit - Noted that the omission of the proviso from Section 106 of the Patents Act, 1970 (which existed in the pari materia provision in the Indian Patents and Designs Act, 1911) signifies that a suit for groundless threat of Infringement has an independent cause of action from a suit for infringement - Held that Despite the independent cause of action, the questions of fact, law, and issues to be determined in both suits are substantially overlapping - To avoid duplication, multiplicity of proceedings, and the risk of conflicting judgments, it is expedient to transfer the subsequent suit to the court where the prior suit is pending - Transfer petitio allowed. [Relied on Chitivalasa Jute Mills v. Jaypee Rewa Cement, (2004) 3 SCC 85; Paras 9-13] Atomberg Technologies Private Ltd. v. Eureka Forbes Ltd, 2025 LiveLaw (SC) 1030 : 2025 INSC 1253

Pre-Institution Mediation and Settlement – Interpretation of the expression 'contemplates any urgent interim relief' in the context of Intellectual Property (IP) infringement suits – Held, requirement of pre-institution mediation under Section 12A of the Commercial Courts Act cannot be mechanically applied in cases involving continuing infringement of intellectual property rights, such as trademark violations - Insisting on mediation before filing a suit in such situations would effectively leave the plaintiff without a remedy, allowing the infringer to continue profiting under the cover of procedural formalities - The provision was never intended to produce such an “anomalous result - Scope of “urgency” under Section 12A - when a case involves ongoing infringement, the element of urgency must be assessed in light of the continuing injury and the public interest in preventing deception - Mere delay in filing a suit does not by itself negate the urgency of relief, so long as the infringement is ongoing - The court cannot be unmindful of the public interest element in IP disputes, which involves preventing confusion in the market and protecting consumers from deception, which further imparts a colour of immediacy to the reliefs sought. Novenco Building and Industry v. Xero Energy Engineering Solutions, 2025 LiveLaw (SC) 1027 : 2025 INSC 1256

Trade Marks Act, 1999; Section 2(1)(h) - Deceptively similar - Defined as those that so nearly resemble another mark as to be likely to deceive or cause confusion – Held, appellants failed to establish a prima facie case for an interim injunction and that there was no deceptive similarity between appellant's mark 'Blenders Pride', 'Imperial Blue' and 'Seagram's' and respondent's mark 'London Pride'- Supreme Court applied holistic comparison test, examining the visual, phonetic, structural and conceptual elements of marks on following grounds - i. It concluded that overall commercial impression of 'London Pride' is substantially different from the appellant's marks; ii. Anti-dissection Rule which requires a mark to be considered as a whole, it does not prevent a court from identifying the “dominant” element that influences consumer perception; iii. Publici Juris (common to trade) - The term 'Pride' was found to be a common, laudatory or non-distinctive term that cannot be monopolized - Noted that dominant components of appellants' marks were 'Blenders' and 'Imperial', while the respondent's dominant component was 'London', which introduces a distinct geographical identifier; iv. Consumer Perception - Products in question are premium and ultra-premium whiskies, suggesting that consumers are discerning and likely to exercise greater care in their purchases - This reduces likelihood of confusion - Appeal dismissed. [Paras 21- 35, 36, 45, 51] Pernod Ricard v. Karanveer Singh Chhabra, 2025 LiveLaw (SC) 803 : 2025 INSC 981