Demanding unreasonable licence fee to play songs constitutes refusal under Copyright Act: Delhi High Court
The Delhi High Court has ruled that demanding excessive licence fees for playing copyrighted music may amount to a refusal to grant a licence under Section 31 of the Copyright Act, 1957. This can entitle the affected party to seek a compulsory licence.
Justice Mini Pushkarna made this observation while hearing a case filed by Al Hamd Tradenation, an event organiser, against Phonographic Performance Limited (PPL). The petitioner alleged that PPL had quoted an unreasonably high flat licence fee of ₹55,440 to play music at a small corporate event with only 50 guests. The organiser instead offered ₹16,500, but PPL refused.
The Court held that a rigid and arbitrary licensing structure — such as a flat fee regardless of audience size, event length, or number of songs — can be seen as a constructive refusal to grant a licence. This refusal, the Court noted, violates the principle that creative works made public should be available on fair terms, and can trigger a compulsory licensing mechanism to prevent monopoly abuse.
The Court held that PPL’s pricing model failed to reflect market realities, especially in contrast to Recorded Music Performance Ltd (RMPL) — the only registered copyright society for sound recordings in India — which offers more tailored and reasonable rates.
While PPL argued that Section 31(a) doesn’t apply to sound recordings and that no outright denial was made, the Court clarified that Sound recordings are included under the Copyright Act’s definition of “work and a refusal under the Act includes unreasonable or arbitrary licensing terms, not just an outright denial.
The Court referenced a past ruling (Azure Hospitality v. PPL) which held that PPL could not grant public performance licences, as it is not a registered copyright society. Although that judgment is under appeal in the Supreme Court, the present directions are subject to the top court’s final order.
Ultimately, the Delhi High Court accepted the petitioner’s plea for a compulsory licence and directed both parties to submit affidavits of evidence within eight weeks. The next hearing is scheduled for May 29, 2025, to determine the terms of the licence and the compensation owed to PPL.
Read judgement here.
Delhi High Court Issues Ex-Parte Interim Injunction On Piruz Khambatta’s Plea Against Unauthorised Use Of ‘Rasna’
The Delhi High Court recently issued an ex parte ad interim injunction in favour of Piruz Khambatta, Chairman of Rasna Group and Ambassador of the government’s Make In India initiative, on his plea against Franchise India Brands Limited.
Franchise India Brands Limited has been restrained from infringing the trademark ‘Rasna’— a soft drink concentrate brand used by the Plaintiff company since the year 1972, or franchising outlets under the ‘Rasna Buzz’ name.
Piruz claims that his company had entered into a franchisee distribution agreement with Franchise India but the latter failed to clear payments for franchise fees and royalties and exhibited lack of transparency in revenue reporting. It is further alleged that Franchise India continued to distribute ‘Rasna Buzz’ franchisee, despite expiry of the Work Order issued to it.
Noting that the brand associates with edible items, the Court said it has to be cautious and it cannot allow Franchise India to pass off their products as that of Rasna’s, since it may confuse the members of the trade and also of the general public involved.
It added, “the defendants, though were licensee of the plaintiffs for promotion of their brands and expansion of their business, however, even after expiry of the said Work Order dated 30.10.2018 the defendants kept on soliciting clients/ people using the marks of the plaintiffs without even paying the fees as per their agreement, which shows clear mala fides on their part.”
As such, the Court restrained Franchise India from dealing in Rasna trademark and also issued them summons on the main suit, returnable on August 11.
Read judgement here.
Delhi High Court restrains unauthorised use of ‘Andaz Apna Apna’ IP
The Delhi High Court recently passed an interim order restraining over 30 parties from unauthorisedly using the intellectual property associated with the 1994 Hindi film Andaz Apna Apna, including its characters, title, dialogues and artistic works.
Justice Amit Bansal granted an ex parte interim injunction in a suit filed by Vinay Pictures, through Shanti Vinaykumar Sinha, the legal heir of the film’s producer Vinay Sinha. The plaintiff sought relief against alleged infringement of copyright and trademark rights through merchandise, digital content, domain names and AI-generated material.
The plaintiff contended that Andaz Apna Apna, produced by late Vinay Sinha, continues to enjoy enduring popularity and cultural relevance. The plaintiff claimed exclusive ownership over the film’s title, literary and dramatic works, and characters.
It was submitted that unauthorised parties were commercialising these elements through: Sale of T-shirts, mugs, posters, notebooks, etc. AI-generated digital content and video clips, use of Domain names such as www.ailaouima.com.
The infringing products were being sold across major e-commerce platforms including Flipkart, Meesho, Etsy, Desertcart and others.
The plaintiff submitted a list of over 70 infringing URLs, spread across platforms and domains. The Court held that the balance of convenience lay in favour of the plaintiff, noting that unauthorised products may mislead the public into believing they were officially licensed.
After reviewing the plaintiff’s documents and over 70 infringing URLs, the Court passed an order of dynamic injunction and issued an interim injunction in favour of Vinay Pictures and against the Defendants thereby restraining them creating any content, including images, videos, audio-visual content, or AI-generated content which is identical to, adapted from, or derivative of the plaintiff’s film Andaz Apna Apna. The Court further directed Google LLC, Flipkart, Meesho to take down and remove infringing listings and to disable the infringing videos or other content uploaded by the defendants and they were also asked to disclose details of the infringers and uploaders of the impugned content.
The Court also clarified that the injunction would extend to mirror/redirect URLs and gave the plaintiff liberty to implead additional infringers.
Read judgement here.
Bengal Police Crack Down on Illegal Walkie-Talkie Sales via E-Commerce Platforms
In a bid to curb illegal sales of communication devices, the West Bengal Police has issued notices to major e-commerce platforms and their vendors, urging strict compliance with regulatory guidelines concerning the online sale of walkie-talkies. This move follows similar actions by the Central Consumer Protection Authority (CCPA) and Delhi Police under broader efforts to enhance consumer protection and national security.
According to the guidelines, walkie-talkie listings must clearly state the device’s operating frequencies, licensing requirements, and whether they have received Equipment Type Approval (ETA) from the Wireless Planning and Coordination (WPC) Wing of the Department of Telecommunications. Violations of these norms attract legal action under the Consumer Protection Act, 2019, Indian Telegraph Act, 1885, and the Wireless Telegraphy Act, 1933.
Authorities have raised concerns over national security risks, especially in sensitive areas like the Chicken’s Neck corridor in North Bengal, where unregulated communication devices could be exploited. E-commerce platforms have been given 15 days to comply or face prosecution.
The crackdown comes in the wake of “Operation Sindoor,” a coordinated national enforcement drive targeting the unauthorized sale of wireless devices. The CCPA has already sent notices to 13 online platforms including Amazon, Flipkart, Meesho, and OLX, for violating disclosure and licensing norms.
Experts in amateur radio, aviation, and cybersecurity have welcomed the move, citing its significance in maintaining both user safety and national interest. The government is also expected to release fresh guidelines to streamline the legal sale of such devices online.
This action highlights increasing regulatory scrutiny over digital marketplaces and underscores the need for platforms to ensure full compliance with statutory requirements, especially in sectors involving sensitive electronic equipment.
Delhi Court Restrains Law Firm Fox Mandal & Associates From Using ‘FoxMandal’ Trademark And Website Domain Name
A Delhi Court on May 15 restrained Shuvabrata Mandal and Shouryabrata Mandal from offering their legal services under trademark ‘FoxMandal’, which is owned by their brother Som Mandal.
A Commercial Court at Patiala House Courts also restrained the duo from using FoxMandal for their website domain name. The interim injunction comes in a suit filed by Som Mandal, who runs the law firm Fox Mandai & Co.
Som Mandal claimed that he has been running the firm since 1989 and has acquired ample goodwill. He claimed that the words ‘Fox Mandal’ form an essential part of the trademark/ logo of his firm, which his brothers are now exploiting by running their own practice in the name ‘Fox Mandai & Associates’ since 1996 but using a logo deceptively similar to his firm’s.
“The trade mark/ logo as adopted by the defendants, are identical to plaintiffs’ trade mark/ logo as the impugned trade mark contains a logo of flag illustrating ‘FM’ along with the word ‘Fox Mandai’ below it,” he contended. Som Mandal added that his trademark is registered under the provisions of Trade Marks Act, 1999 whereas the logo of his brothers is still lying opposed.
As such, the Court restrained the two brothers from using the impugned trademark and the impugned domain name www.foxmandal.in, till further orders.
Read order here.
Registration Of Trademark In Other Countries Doesn’t By Itself Entitle Party To Its Registration In India: Delhi High Court
The Delhi High Court has made it clear that registration of a trademark in other countries does not by itself entitle registration of the said mark in India.
While allowing Mankind Pharma’s objection to registration of a trademark for the pharmaceutical product line of a Chinese company in India, single judge Justice Saurabh Banerjee observed, “simpliciter registration of a mark in another jurisdiction does not entitle a person/ entity for registration of the same in India.”
Mankind deals in a wide variety of medicinal ranges including under the trademark ‘FLORA’, coined in the year 1995. It was opposed to the registration of the ‘FLORASIS’ trademark of the Chinese company (respondent no.1).
The Deputy Registrar of Trademarks (respondent no.2) had rejected Mankind’s objections on following grounds:
- Application of respondent no.1 is honest and bona fide as the impugned mark is already registered in various countries;
- Even by stricter measures, trademark ‘FLORA’ is visually, phonetically or structurally different from ‘FLORASIS’;
- Combination of mandarin characters with ‘FLORASIS’ gives it a unique impression, depiction and recollection in the Indian context.
Mankind argued that although the goods of the Respondent no.1 are not identical, however, they are sold across the same counters and through the same channels of trade and thus creates a likelihood of confusion among the customers. It further contended:
- Merely addition of a suffix ‘SIS’ and a mandarin character does not materially distinguish the mark;
- It is likely to hint to the average consumer with imperfect recollection that the impugned mark is nothing but an extension of Mankind’s brand;
- Courts have repeatedly held that a comparison of trademarks/ products involving pharmaceutical preparations needs to be stricter.
At the outset, the High Court observed that a close comparison of the two marks reveals that there are hardly any visible differences to the naked eye of any average person with imperfect recollection belonging to the trade or to the general public.
In fact, it observed that the impugned mark ‘FLORASIS’ is visually, structurally and phonetically similar to Mankind’s registered trademark ‘FLORA’ and is likely to be perceived as yet another variant emanating from the latter’s brand.
The Court further observed that while the Deputy Registrar had recorded that the intentions of the respondent no.1 are bona fide as the said mark ‘FLORASIS’ is registered in various countries, however, it observed that under the peculiar facts and circumstances involved, simpliciter registration of a mark in another jurisdiction does not entitle a person/ entity for registration of the same in India.
Furthermore, the Court observed that in India, merely adding a mandarin character cannot add any distinctiveness thereto for being granted registration, and that too qua a pharmaceutical product, especially, when the said character cannot be deciphered by the general public and/ or the members of trade. As such, it allowed Mankind’s appeal and directed the Deputy Registrar to remove the entry pertaining to registration of ‘FLORASIS’.
Read order here.
Relief To Lok Sabha Speaker Om Birla’s Daughter: Delhi HC Directs Google, X To Remove ‘Defamatory’ Posts Doubting Her UPSC Qualification
The Delhi High Court on Tuesday closed the defamation suit filed by IRPS Officer and Lok Sabha Speaker Om Birla’s daughter, Anjali Birla, against social media posts alleging that she cleared UPSC exam in her first attempt by indulging in corrupt practices and misusing her father’s position.
Justice Jyoti Singh decreed Birla’s suit filed against X, formerly Twitter, Google and John Doe (unknown entities).
In July last year, a coordinate bench had passed an interim injunction order in favour of Birla and directed take down of the social media posts. The court had directed X Corp and Google to remove or block social media content against Birla, as complained by her in her defamation suit, till further orders.
Decreeing the suit, Justice Singh was informed by counsel for X that out of the 16 impugned posts in the suit, 12 were removed by the originators whereas access to the remaining 4 posts was blocked by the social media platform as per the interim injunction order. The Court decreed the suit while directing X to remove the remaining 4 social media posts.
It added that in case Birla brings to the notice of X any identical posts, the same shall be removed by the social media platform. Furthermore, the Court directed Google to remove one post which was blocked pursuant to the interim order.
The Court has left all questions of law raised by the parties open. Justice Singh noted that Birla did not press claim for damages or for refund of court fees.
It was Birla’s case that she is being character assassinated which is causing damage to her reputation as the social media posts, tweets, comments are full of innuendos, cheap remarks and serious imputations on her character and standing. She had also submitted that dissemination of the social media posts and tweets is adversely affecting her position in the public office.
On Anjali Birla’s complaint, an FIR was registered by Maharashtra Cyber Cell against Twitter handle of “Dhruv Rathee (Parody)” and various other accounts under Sections 78,79,318(2), 352, 356(2), 353(2) and 3(5) of the Bhartiya Nyaya Sanhita Act, 2023 along with section 66 (C) of the Information Technology Act, 2000.
Can Suit For Infringement Lie Against Proprietors Of Registered Trademark? Delhi High Court Refers Issue To Larger Bench
The Delhi High Court has referred to a larger bench the following questions of law in relation to trademark infringement:
- Whether a suit for infringement can lie against the proprietor of a registered trademark, with respect to the use of such trademark?
- Whether, assuming such a suit can lie, the Court can pass any interlocutory order, injuncting the use, by the defendant, of the allegedly infringing registered trademark?
- Whether the mere incorporation, in the plaint, of a plea that the registration of the defendant’s trade mark is invalid, is sufficient to empower the Court to injunct the defendant from using its registered trade mark on the ground of prima facie infringement?
The reference was made after a division bench of Justices C. Hari Shankar and Ajay Digpaul disagreed with the view of a coordinate bench decision in Raj Kumar Prasad v Abbott Healthcare Pvt. Ltd. (2014).
In Raj Kumar (supra) it was held that an action for infringement can lie against a registered proprietor of a trademark and, further, that an injunction against use of the mark by such registered proprietor can also be granted by a Court.
In the present case however, the judges were of the view that conferring on a Court the right to grant an injunction against the use of a registered trademark would violate Section 29(1) to (4), Section 28(1), Section 28(3) and Section 30(2)(e) of the Trade Marks Act.
It held, “There can be no infringement by a registered trademark. An unregistered trademark alone can infringe. Use of a registered trademark, for the goods or services in respect of which it is registered, can never be infringing in nature.
However, given the difference in opinion, the bench deferred passing of final judgment in the appeal preferred by Abros Sports International Pvt. Ltd. seeking injunction against ‘NEBROS’- a registered trademark of the respondent, stated to be deceptively similar to the appellant’s shoe brand ‘ABROS’.
Read order here.
Any Person Has Right To Legally Import Second Hand Goods Bearing Trademark Of An Entity And Sell Them: Delhi High Court
The Delhi High Court has recently held that any person in India can legally import goods from abroad bearing the trademarks of an entity and sell the same in India. The right is however subject to such a person making complete disclosure to the buyer that the goods are second hand and are not covered by the original manufacturer’s warranty, said Justice Amit Bansal.
The ruling was made while dealing with the case of Western Digital Technologies aggrieved by import of its hard disk drives (HDDs) by the Defendant.
While the company claimed violation of its intellectual property rights, the defendant claimed that it had legally purchased the goods from the Original Equipment Manufacturer.
The defendant also relied on a 2012 CBEC Circular permitting parallel import— import of genuine products which are acquired legally from abroad and imported in India by persons other than IPR holder, without the latter’s permission.
At the outset, the Court noted that the Plaintiff failed to produce any law or regulation that prevents import of second-hand HDDs into India. It observed,
The Court relied on Kapil Wadhwa v. Samsung Electronics Co. Ltd. (2012) wherein the High Court permitted defendants to import and sell Samsung printers provided they prominently display in their shop that the goods sold by them are imported and that after sales services and warranties are not guaranteed nor provided under the authority and control of Samsung. In doing so, the Court had emphasized on principle of international exhaustion of intellectual property rights.
It also relied on Seagate Technology LLC v. Daichi International (2024) where a Coordinate Bench extended the reasoning and rationale adopted in Kapil Wadhwa (supra) to cases involving refurbishment of imported products. It also held that there was no rule, regulation or policy that prohibited import of discarded HDDs into India and that further sale of the imported goods to refurbishers was not barred by law.
Elaborating on the principle of international exhaustion, the Court said the same is duly recognized under Section 30(3) and 30(4) of the Trade Marks Act. While the company claimed that import and consequential sale by the defendant amounts to infringement under Section 29(6) of the Trade Marks Act, disagreeing, the Court held that Section 29(6) of the Trade Marks Actis though in context of import, however, this would be subject to defence available under sub-Section (3) of Section 30 of the Trade Marks Act, which permits a party to lawfully import goods from abroad bearing the trademarks of a registered proprietor and selling the same in India.
Read judgement here.
Controller Of Patents Must Specify Known Substance Against Which Claimed Invention Is Being Assessed In Hearing Notice: Delhi High Court
The Delhi High Court has made it clear that the Controller of Patents must clearly specify in the hearing notice the ‘known substance’ against which the claimed invention of an applicant is being assessed.
Section 3(d) of the Patents Act, 1970 bars the patentability of a ‘new form’ of a ‘known substance’ unless it demonstrates enhanced therapeutic efficacy.
Justice Amit Bansal said that in order to sustain an objection under Section 3(d), the following factors have to be clearly identified by the Controller:
- the ‘known substance’ with ‘known efficacy’;
- clear explanation as to how and why the claimed substance is a derivative or otherwise a new form of a ‘known substance’;
- an objective comparison between the therapeutic efficacy of the claimed invention and that of the known substance.
The bench further explained that the ‘known substance’ must be clearly specified in the hearing notice issued to the patent applicant, in order to enable him to make his defence.
In the case at hand the Court noted that the patent application of the Appellant, a pharmaceutical entity based in Japan, was rejected on the ground that the claim lacks inventive step as required under Section 2(1)(ja) and is non patentable under the Section 3(d).
However, on perusal of the records it noted that the hearing notice failed to properly identify the ‘known substance’. The hearing notice only referred to D1 as the closest prior art and made a general observation regarding structural similarity between the compounds of the subject patent application and those disclosed in D1.
Accordingly, the matter was disposed of.
Read order here.
Timelines Under Rule 100 Of Trade Marks Rules 2017 Are Mandatory, Cannot Be Waived: Delhi High Court
The Delhi High Court has made it clear that the “one-month” notice period mentioned under Section 100 of the Trademarks Rules 2017 before the Registrar can initiate rectification of register, is mandatory and cannot be waived.
Justice Amit Bansal held,
“Rule 100 of the Rules which provides that the Registrar of Trade Marks is required to give at least one month’s notice under Section 57(4) of the Act…In my considered view, the requirements and timelines prescribed under Rule 100 of the Rules are mandatory. There cannot be any question of waiver of such requirements and timelines by the appellant.”
Section 57(4) of the Trademarks Act, 1999 contemplates issuance of notice seeking to show cause why the registration of a trademark should not be cancelled being contrary to the provisions of the law.
In the case at hand, a notice under Section 57(4) was issued to the Appellant, after the private Respondent filed a rectification application against Appellant’s trademark. Significant to note that this notice provided only three weeks’ time to the appellant to file written submissions.
A hearing was held and the impugned order cancelling registration of Appellant’s trademark was passed.
The Respondent argued that the appellant did not raise any objection before the Registrar that the aforesaid notice did not give time of at least one month and thus, the Appellant had waived his right to object to the notice period.
At the outset, the High Court noted that the Section 57(4) notice gave an opportunity to the Appellant to file response within 21 days, which was “in clear violation of the mandate of Rule 100 of the Rules which provides that the Registrar of Trade Marks is required to give at least one month’s notice under Section 57(4) of the Act.”
Court said the aforesaid notice was not only in violation of the provisions of the Act, but was also against the principles of natural justice. As such, the Court held that the impugned order is unsustainable.
Read order here.
