infringement

infringement of IP laws

Delhi High Court Restores Trademark Infringement Suit

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Delhi High Court building at dusk with overlaid text: "Trademark Ruling" and "Jurisdiction Restored," symbolizing the Kohinoor Seed vs Veda Seed case.

The Delhi High Court’s Division Bench restored the trademark infringement suit filed by Kohinoor Seed Fields India Pvt. Ltd. against Veda Seed Sciences Pvt. Ltd., setting aside an earlier order by a Single Judge that had returned the plaint due to a lack of territorial jurisdiction.

The Court held that a substantial part of the cause of action arose within Delhi’s jurisdiction, thereby allowing the suit to proceed on its merits.

Key Grounds for Restoring Jurisdiction

The Division Bench identified two primary factors that conferred territorial jurisdiction on the Delhi High Court:

  1. Registration of Trademarks in Delhi:
    • Kohinoor Seed’s registered trademarks, “TADAAKHA” and “SADANAND”, were registered in Delhi.
    • The Court held that the mere fact that the asserted marks were registered within the jurisdiction of the High Court was a factor that, by itself, entitled the appellant to institute the suit in Delhi.
  2. Execution of Marketing Agreement in Delhi:
    • The non-exclusive co-marketing agreement, which was at the heart of the dispute, was executed in New Delhi. This agreement allowed Veda Seed to market Kohinoor’s seeds under the marks (including the unregistered mark “BASANT”) until it expired in 2022.
    • The Court ruled that since the agreement formed an integral part of the cause of action—as the alleged infringement occurred after the agreement’s termination and involved marks initially licensed—the Court within whose jurisdiction the agreement was executed has jurisdiction to adjudicate the dispute.

Details of the Dispute

  • Kohinoor’s Marks: Registered trademarks “TADAAKHA” and “SADANAND”, and unregistered mark “BASANT”, all used for cotton hybrid seeds.
  • Veda Seed’s Allegedly Infringing Marks: “VEDA TADAAKHA GOLD BG II,” “VEDA SADANAND GOLD BG II,” and “VEDA BASANT GOLD BG II.”
  • Background: The parties had a co-marketing agreement from 2014 to 2022. Post-termination, Kohinoor alleged that Veda Seed began selling its own seeds using deceptively similar marks.
  • Single Judge’s View (Set Aside): The Single Judge had accepted Veda Seed’s argument that its operations were limited to Andhra Pradesh and Telangana, and that online listings (on IndiaMart/Kalgudi) were insufficient to establish jurisdiction.
  • Division Bench’s View on Online Listings: The Division Bench observed that the question of Veda Seed’s direct or indirect involvement in the online listings of the allegedly infringing goods was a matter that required a full trial and could not be dismissed at the preliminary stage.

The Division Bench, therefore, allowed the appeal, setting aside the previous order, and restored the trademark infringement suit to be heard on its merits.

Delhi High Court Rejects Interim Patent Block on Semaglutide, Calls Out ‘Evergreening’ Tactics

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The Delhi High Court has delivered a decisive order in the high-stakes battle over semaglutide, the blockbuster diabetes and weight-loss drug. The court refused to grant Novo Nordisk a temporary injunction against Dr Reddy’s Laboratories (DRL), dealing a major blow to the Danish pharmaceutical giant’s attempt to control the Indian market until 2026. The ruling carries far-reaching implications for patent strategy, market competition, and the future of GLP-1 drugs in India.

The court held that DRL had raised a “credible challenge” to Novo Nordisk’s second patent on semaglutide. It found strong indicators of double-patenting, a practice that Indian law treats as an attempt to “evergreen” expired monopolies. The court’s message was clear: companies cannot use secondary patents to prolong control over blockbuster drugs.

Two Patents, One Molecule: How the Dispute Began

Novo Nordisk held two Indian patents related to semaglutide:

  1. Composition Patent (IN 275964)
    This patent covered the semaglutide molecule itself. It expired in September 2024, opening the door for generic manufacturing.
  2. Formulation Patent (IN 262697)
    This patent claims a specific formulation and delivery system for the same drug. It remains valid until March 2026.

When the core composition patent lapsed, DRL secured regulatory approval from the Central Drugs Standard Control Organization (CDSCO) to manufacture semaglutide for export. The approval triggered immediate friction. Novo Nordisk rushed to court, claiming that the formulation patent protected not only the delivery mechanism but effectively covered the drug.

It sought an emergency injunction to stop DRL’s manufacturing and export operations. The company argued that any commercial activity—even export—would cause irreparable harm.

The Court’s Ruling: A Firm Stand Against Evergreening

Justice Anish Dayal rejected the injunction request. The court held that DRL’s objections to the formulation patent were strong enough to deny temporary relief to Novo Nordisk.

1. Double-Patenting Concern

The court noted that the formulation patent appeared to reclaim the same invention for which Novo Nordisk’s composition patent had already expired. The claims overlapped heavily.

This amounted to “evergreening”—a tactic where pharmaceutical companies file secondary patents to extend monopoly periods.

Indian patent law, especially after Section 3(d), firmly discourages such strategies.

2. Lack of Inventive Step

The court observed that Novo Nordisk’s claimed improvements in the formulation patent did not appear novel or non-obvious.
The modifications were routine optimizations well known in pharmaceutical science. They did not represent a genuine leap in innovation.

This significantly weakened the validity of the formulation patent.

3. Balance of Convenience Favoured DRL

Since the core patent had expired, the court held that public interest and market competition must be prioritized.

Blocking DRL without conclusive proof of infringement would be unfair, especially when DRL was manufacturing the drug only for export markets.

Exports Allowed, But Indian Market Stays Closed—for Now

The court made a nuanced distinction. DRL may:

  • continue manufacturing semaglutide, and
  • export it freely to international markets.

However, domestic sales remain prohibited until the formulation patent expires in March 2026, unless the patent is invalidated earlier.

This split ruling reinforces India’s position as the world’s largest exporter of affordable generics, while still respecting valid patent rights inside the country.

A Major Win for Generic Manufacturers

The decision strengthens the confidence of Indian pharmaceutical companies entering high-value therapeutic categories. Semaglutide, widely used for Type-2 diabetes and explosive global demand for weight-loss treatments, represents one of the most lucrative drug classes today.

DRL is not alone. Cipla, Sun Pharma, Biocon, and Mankind Pharma are exploring GLP-1 opportunities. The Delhi HC’s ruling sends a bold signal: secondary patents will face strict scrutiny.

Indian courts have repeatedly warned against evergreening. This judgment continues that legacy, following similar rulings in the cases of imatinib, sofosbuvir, and darunavir.

Why This Case Matters Globally

The global pharmaceutical industry is watching India closely. Semaglutide is one of the world’s most valuable drugs, powering Novo Nordisk’s meteoric rise in recent years.

A single ruling from an Indian court can influence:

  • global supply chains,
  • generic entry timelines,
  • price dynamics across continents.

India produces nearly 40% of the world’s generics. Any shift in the patent landscape here disrupts international markets.

By allowing export manufacturing, the court has opened a potential pipeline of affordable semaglutide to emerging markets struggling with diabetes and obesity crises.

What Happens Next?

Novo Nordisk has several options:

  • Appeal before a division bench of the Delhi High Court.
  • Initiate a full trial to defend the validity of the formulation patent.
  • Seek tighter regulatory restrictions on generic manufacturing.

DRL, meanwhile, may accelerate export production and explore challenging the patent’s validity to unlock the domestic market earlier.

Legal experts expect this case to set an important precedent for future GLP-1 patent disputes, especially as rival companies race to launch their own weight-loss drugs.

Conclusion

The Delhi High Court’s rejection of Novo Nordisk’s interim injunction is a striking affirmation of India’s sharp stance against patent evergreening. The ruling protects open competition, enables affordable access through exports, and reinforces India’s leadership in generic pharmaceuticals.

As demand for semaglutide surges worldwide, the judgment could reshape the global supply chain for one of modern medicine’s most influential drug classes.

Nutella Recognized as a Well-Known Trademark by Delhi High Court, Strengthening Ferrero’s Brand Rights in India

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In a significant win for global confectionery company Ferrero SpA, the Delhi High Court has officially granted Nutella the status of a well-known trademark under Indian trademark law. This legal recognition provides Nutella with stronger protection against unauthorized use and counterfeit products in India.

⚖️ Court Ruling: A Landmark in Trademark Protection

The case was heard in the matter of Ferrero SpA v. MB Enterprises by Justice Saurabh Banerjee, who concluded that Nutella had built substantial brand equity in India and deserved the enhanced legal safeguards that come with being classified as a well-known trademark.

The Court issued a permanent injunction against MB Enterprises, a firm found producing and distributing counterfeit Nutella jars. In addition to the injunction, the company was directed to pay ₹30 lakh in damages and ₹2 lakh in legal costs to Ferrero.

🧃 Nutella’s Growth in India: A Strong Market Presence

Although Nutella was launched internationally in 1964, it officially entered the Indian market around 2009. Since then, Ferrero has significantly expanded Nutella’s visibility and market penetration across India.

Evidence submitted in court showed that Ferrero invested heavily in brand promotion, with advertising budgets ranging between ₹3 crore and ₹16 crore annually. The company also reported substantial sales, including ₹233 crore in revenue during the 2020–21 financial year, followed by ₹145 crore in 2021–22 and ₹106 crore in 2022–23 (Source – Economic Times).

🚨 Counterfeiting Crisis: Serious Risks for Consumers

The case originated after a Maharashtra FDA raid in October 2021 revealed a large-scale counterfeit operation. Authorities discovered over 950,000 fake Nutella jars and hundreds of thousands of packaging materials mimicking Ferrero’s original branding. The products were being sold across Indian markets under deceptive names.

The court observed that counterfeit edible goods pose serious public health risks, particularly when they target children and families, who are the primary consumers of Nutella.

📜 Legal Implication: Why “Well-Known” Trademark Status Matters

A “well-known” status under Indian trademark law provides extraordinary legal protection, even beyond related categories. It prevents other entities from using similar branding or packaging—even on unrelated goods—if it causes confusion or dilutes the reputation of the original brand.

The ruling is in alignment with international recognition of Nutella’s trademark by global bodies like the World Intellectual Property Organization (WIPO) and the International Trademark Association (INTA).

🌍 Global Brands and Indian Courts: A Growing Trend

Nutella joins a growing list of global names, including Red Bull, Burger King, DHL, and New Balance, that have been granted “well-known” status by Indian courts. These decisions reflect a broader trend in Indian jurisprudence that values trans-border reputation and protects international trademarks from local misuse (Reference – APAA).

✅ Conclusion

With this judgment, Ferrero has secured stronger trademark enforcement in India, protecting its iconic Nutella brand from unauthorized use and market dilution. The decision strengthens consumer trust, promotes brand authenticity, and reinforces the judiciary’s commitment to intellectual property rights.

🔗 External Links:

India Reiterates Ban on Patent Evergreening: Piyush Goyal Emphasizes Public Health Over Pharma Profits

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Union Commerce and Industry Minister Piyush Goyal has reiterated that India will not allow evergreening of pharmaceutical patents. Speaking at a recent trade event, Goyal highlighted India’s commitment to affordable healthcare and equitable access to medicines. He firmly stated that evergreening contradicts Indian law and undermines public health.

🔍 What Is Evergreening?

Evergreening is a strategy where pharmaceutical firms seek new patents for minor changes to existing drugs. These changes often include alterations in formulation, dosage, or delivery methods. The intent is to extend monopoly rights and delay generic drug entry.

India’s Patents Act, 1970, under Section 3(d), prohibits such practices unless the new version offers significantly enhanced therapeutic efficacy.

👉 Read Section 3(d) of the Indian Patents Act
👉 What is Evergreening – WHO Definition

🗨️ Goyal’s Firm Stand Against Evergreening

Piyush Goyal emphasized that India has faced repeated pressure from multinational pharmaceutical companies to weaken its IP laws. He stated:

“India does not permit evergreening. We protect genuine patents. But we will not let companies misuse the system to maintain monopolies.”

He challenged critics to show a single instance where India violated intellectual property rights. According to Goyal, none have been able to do so.

⚖️ The Legal Foundation: Section 3(d)

India’s Section 3(d) is a globally recognized provision. It has prevented the misuse of the patent system and has been upheld by the Supreme Court of India in the Novartis vs. Union of India case.

In 2013, India’s top court rejected Novartis’ patent for a modified version of the cancer drug Glivec, ruling it lacked increased efficacy.

👉 Learn more about the Novartis Case

This ruling became a milestone in India’s public health jurisprudence and strengthened the nation’s stance on patent quality over quantity.

🌍 Public Health Over Profits

Goyal underlined that India’s patent system aims to balance innovation with access. He noted:

“Our goal is to make life-saving medicines available at affordable rates—not to support super-profits for a few companies.”

India’s approach supports global healthcare. The country is known as the “Pharmacy of the Global South”, supplying low-cost generics to over 200 nations.

The government also runs Ayushman Bharat, one of the world’s largest public health programs, covering more than 620 million people.

👉 Visit Ayushman Bharat official website

🌐 Global Support and Recognition

India’s position has gained support from global health advocates. Organizations like Médecins Sans Frontières (MSF) have praised Section 3(d) for preventing abusive patent extensions.

International forums including the World Trade Organization (WTO) have acknowledged India’s right to use TRIPS flexibilities to protect public health.

👉 TRIPS Agreement – WTO

🧾 Summary Table: India’s Policy on Patent Evergreening

IssueIndia’s Position
EvergreeningStrictly prohibited under Section 3(d)
Valid PatentsFully respected during legal term
TRIPS ComplianceYes, with use of flexibilities
Pressure to Amend IP LawsResisted to safeguard public health
Generic Medicine PromotionEncouraged for affordable drug access

🔑 Key Takeaways

  • India will not compromise its patent law to favor big pharma.
  • Section 3(d) remains the cornerstone of India’s patent policy.
  • The government remains committed to TRIPS-compliant innovation and global medicine accessibility.

Delhi High Court Awards ₹8 Lakh to Puma in Trademark Infringement Suit Over Counterfeit Goods

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The Delhi High Court has awarded ₹8 lakh in damages to global sportswear giant PUMA SE in a trademark infringement case against a seller of counterfeit products. The court also issued a permanent injunction restraining the defendant from using Puma’s registered trademarks.

⚖️ Court Decision

Justice Saurabh Banerjee, presiding over the case, held that the defendant had willfully violated Puma’s trademark rights by selling fake products bearing identical marks. The court observed that the imitation was not accidental but a deliberate attempt to deceive consumers.

The court noted:

“The products being sold by the defendant are counterfeit, carrying the same logos, marks, and branding, which clearly shows the intent to ride upon the reputation of the plaintiff.”

Since the defendant failed to appear or submit any response despite several notices—especially after February 2024—the case proceeded ex parte.

🔗 Read full judgment coverage on LiveLaw

🛑 Counterfeiting and Consumer Deception

The court emphasized that Puma’s trademarks are well-known globally and have established significant goodwill and consumer trust in India. The defendant, by selling goods with identical marks in the same trade channels, violated the Trade Marks Act, 1999, and engaged in unfair competition.

This judgment aims to set a precedent for stricter action against counterfeiters who infringe on the rights of established brands and mislead Indian consumers.

“This is not a mere case of passing off; it is a case of outright counterfeiting,” the court held.

💰 Damages and Penalty

The High Court awarded Puma ₹8 lakh as compensation, citing the following reasons:

  • The damage to the brand’s reputation.
  • The loss of genuine sales and business.
  • The need to deter such unlawful conduct.

The court rejected symbolic damages and instead granted substantial monetary relief, reinforcing the seriousness of trademark violations.

🧾 Background of the Case

Puma filed the lawsuit after discovering the unauthorized sale of counterfeit Puma products by a local trader. The company sought:

  • A permanent injunction.
  • Damages for trademark infringement.
  • Disclosure of profits earned from fake goods.

Despite several summonses and notices, the defendant remained absent, prompting the court to decide based on the material available.

🔍 Legal Significance

This case highlights India’s growing judicial commitment to protecting IP rights, especially for well-known trademarks. Courts are increasingly awarding higher damages to deter counterfeiting, sending a clear signal to violators.

A similar ruling by the Delhi High Court in March 2025 also awarded ₹11 lakh in damages to Puma in a separate counterfeit case, showing judicial consistency in protecting brand owners.

Delhi High Court Denies Patent for Kroll’s P2P Monitoring System, Citing Software Exclusion Under Section 3(k)

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In a significant ruling, the Delhi High Court has refused to grant a patent to Kroll Information Assurance LLC, a US-based company, for a system designed to track users who share sensitive content through peer-to-peer (P2P) networks. The Court determined that the invention falls under the excluded category of computer programs or algorithms, as outlined in Section 3(k) of the Indian Patents Act, 1970.

🔍 About the Patent Application

The Indian patent application (No. 8100/DELNP/2007), originating from a US priority application filed in April 2005, proposed a monitoring tool. This tool was intended to search P2P networks using keywords and identify users distributing confidential or protected files. The system aimed to create detailed user profiles and support data loss investigations.

According to the patent claim, the system functioned via basic computing infrastructure—processors, memory, storage devices—and relied heavily on software-based algorithms for search and analysis.

⚖️ Key Objections Raised by the Patent Office

The Indian Patent Office previously refused the application for the following reasons:

  1. Lack of Inventive Step: As per Section 2(1)(ja) of the Patents Act, the claimed invention was seen as obvious, offering no technical advancement over existing solutions.
  2. Ineligible Subject Matter: Under Section 3(k), the system was deemed a software algorithm or computer program, which is excluded from patentability in India.
  3. Improper Amendments: The amended claims were said to introduce elements not disclosed in the original filing, allegedly violating Section 59 of the Act.

🧑‍⚖️ Court’s Analysis and Final Verdict

The matter was heard by Justice Prathiba M. Singh, who offered a nuanced interpretation of Indian patent law:

  • On Amendments: The Court held that the claim amendments were valid. They were supported by the original specification and only narrowed the claims, which is permitted under Section 59.
  • On Technical Advancement: Despite allowing the amendments, the Court found the invention lacked any real technical contribution. It merely applied a known method—keyword searching—on a P2P platform using conventional computing resources.
  • On Section 3(k): The bench concluded that the claims represented a computer program per se, and thus clearly fell within the scope of the non-patentable subject matter under Section 3(k).

The Court relied on key precedents, including:

  • Ferid Allani v. Union of India – Read here
  • Microsoft Corp. v. Assistant Controller of Patents
  • Lava International Ltd. v. Ericsson

These rulings reaffirm that software without a technical effect or hardware integration is not eligible for patent protection in India.

🧠 Implications for Software Patentability

This judgment underscores India’s strict interpretation of Section 3(k). Patent claims that describe an algorithm or software-based method without technological innovation are likely to be denied, regardless of commercial or investigative utility.

To secure patent protection for software inventions in India, applicants must demonstrate that their innovation results in a technical effect or enhancement of a computing process or hardware function.

🌐 Useful Resources:

Delhi High Court Rejects Toyota’s Plea for Interim Relief in Patent Infringement Case Against Indian Company

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New Delhi, July 5, 2025 — The Delhi High Court has refused to grant interim relief to global automobile major Toyota in a patent infringement lawsuit it filed against an Indian company. The Court’s order signals a firm approach to evaluating intellectual property claims, especially in complex technology-related cases.

🔎 The Lawsuit

Toyota, a leading Japanese car manufacturer, approached the Delhi High Court claiming that an Indian firm had unlawfully used its patented automotive technology. Though details of the patent involved were not made public, Toyota argued that the Indian company’s products infringed upon its exclusive intellectual property rights.

The company sought a court-ordered injunction, hoping to immediately stop the Indian firm from using or selling the allegedly infringing products in the Indian market. Toyota emphasized the importance of protecting its technological innovations and preventing damage to its brand and business.

⚖️ Court’s Stand

The case was heard by Justice Anish Dayal, who declined Toyota’s request for interim relief. The Court ruled that holding a patent alone is not enough to justify an injunction at the preliminary stage.

Justice Dayal observed that patent disputes often involve technical complexities and require deeper investigation. He stated that a mere claim of infringement cannot result in a blanket order against the defendant without careful judicial scrutiny.

The Court emphasized the importance of considering all sides. It weighed the “balance of convenience” and the potential hardship that an injunction could cause to the Indian company. The judge ruled that an immediate halt to operations could unfairly affect the Indian firm before the matter is fully adjudicated.

🧩 Legal Significance

This decision reinforces the judiciary’s cautious approach in IP matters. It highlights that patent holders — even large multinational corporations — must present strong, clear evidence before expecting urgent court action.

The Court’s refusal does not end the matter. Instead, it means the case will now move forward through the regular judicial process. Both parties will have the opportunity to present their arguments and technical evidence in detail.

🏭 Implications for the Indian Company

The Indian firm, whose identity remains undisclosed in initial reports, has gained temporary relief through the Court’s decision. It will be allowed to continue its business activities for now. This ruling offers reassurance to Indian businesses that patent enforcement actions will be tested thoroughly and fairly, especially when initiated by foreign giants.

🌐 Industry Context

Toyota is known for vigorously defending its intellectual property globally. As India’s automotive sector continues to grow, patent disputes between local manufacturers and global players are becoming more common. This case is an example of the challenges multinational corporations face when navigating India’s legal landscape.

The ruling also underlines the importance of strong legal documentation and evidence when initiating IP litigation in India. Courts are unlikely to grant early-stage relief without thoroughly understanding the technical merits of the case.

📌 Conclusion

The Delhi High Court’s decision to reject Toyota’s plea for interim relief underscores its commitment to due process in patent cases. While the matter is still under legal review, the Court has sent a clear message — all parties, regardless of their size or origin, must meet the same standards of proof before expecting judicial intervention.

⚠️ Disclaimer:

This article is based on publicly available reports and is for informational purposes only. It does not constitute legal advice. For accurate legal interpretation, readers should refer to official court documents or consult legal professionals.

Samsung Faces Legal Battle for Alleged eSIM Patent Violations

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In a significant development in the world of intellectual property and telecommunications, Network-1 Technologies, Inc. (NYSE: NTIP) has initiated a patent infringement lawsuit against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. The suit was filed in the U.S. District Court for the Eastern District of Texas, a jurisdiction known for handling complex patent litigation.

The case revolves around Samsung’s alleged unauthorized use of Network-1’s eSIM and 5G authentication technologies in a wide range of its mobile devices, including smartphones, tablets, and smartwatches.

🔍 Allegations and Patent Details

Network-1 asserts that six U.S. patents from its M2M/IoT (Machine-to-Machine/Internet of Things) portfolio are being violated. These patents—acquired by Network-1 in December 2017—are said to cover core authentication and secure communication technologies used in eSIM-based mobile devices.

The patents in question are expected to remain valid until 2033–2034, placing them well within their enforceable lifespan.

The complaint alleges that Samsung incorporated these patented technologies into its Galaxy series of devices without obtaining a proper license, thereby violating Network-1’s intellectual property rights.

📈 Market Relevance and Timing

The timing of the lawsuit is strategic. According to the Trusted Connectivity Alliance, more than 500 million eSIM-capable devices were shipped globally in 2024 alone—a 56% rise in eSIM profile downloads from the previous year. Samsung is a major player in this fast-growing market.

With the rapid expansion of 5G and eSIM adoption, Network-1’s patented technologies play a critical role in ensuring secure authentication and connectivity—making them highly valuable in today’s mobile device ecosystem.

🧠 About Network-1 Technologies

Network-1 is a well-known intellectual property licensing company that specializes in acquiring and enforcing technology patents. The company does not manufacture products but focuses on monetizing its IP assets through licensing and litigation.

Their M2M/IoT patent portfolio includes:

41 U.S. patents

15 international patents

25 pending applications globally

⚖️ Legal Strategy and Implications

Filing in the Eastern District of Texas—a patent-holder-friendly court—could give Network-1 a strategic advantage. Samsung, on the other hand, is expected to vigorously defend its position, potentially challenging the validity, enforceability, or scope of the patents.

Legal experts suggest that if Network-1 prevails, it could result in:

A licensing agreement worth millions

Monetary damages

A possible injunction against the sale of infringing devices

Given the global scale of Samsung’s product distribution, the outcome of this case could have far-reaching consequences for both parties.

🔮 What’s Next?

Both parties are likely to engage in extensive pre-trial activities, including evidence discovery and expert testimony. The tech industry will be closely watching the case, which could reshape licensing norms in the high-growth sectors of 5G, IoT, and mobile security.

Court Rules in Favor of WEE POWER Trademark Over Ferrari

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In a significant legal decision, the Kuala Lumpur High Court has ruled in favor of Sunrise-Mark Sdn Bhd, a Malaysian company that produces the energy drink WEE POWER, in a trademark dispute brought by luxury Italian carmaker Ferrari SpA.

Ferrari alleged that the WEE POWER logo, which features two rearing horses on either side of a prominent “W”, bore too close a resemblance to Ferrari’s iconic single rearing horse emblem, potentially misleading consumers and damaging Ferrari’s brand identity. However, the court dismissed these claims, stating that the trademarks are distinct in design, context, and usage.

Case Overview

The dispute arose when Sunrise-Mark applied to register the WEE POWER trademark in Malaysia. Ferrari objected, arguing that the drink’s branding, particularly the horse imagery, could cause brand confusion and infringe upon Ferrari’s intellectual property.

The court, however, found the argument to be without sufficient basis. Presiding judge Justice Wong Kian Kheong highlighted that while both logos contain horse figures, their visual representation and overall branding are clearly distinguishable.

Court’s Findings

In the detailed judgment, the court noted several key differences:

Logo Structure: Ferrari’s emblem is a solitary horse standing on its hind legs, a symbol tightly associated with its automotive legacy. In contrast, WEE POWER’s mark features two horses, each facing inward with a stylized “W” at the center and the words “WEE POWER” below.

Sector Disparity: Ferrari is a luxury automobile brand, while Sunrise-Mark produces consumer beverages. The judge stated that it is unlikely any reasonable consumer would associate an energy drink with a supercar manufacturer.

Meaning of “WEE”: The name “WEE” was accepted by the court as being derived from the name of the company’s founder, Wee Juan Chien, rather than an attempt to imitate or draw attention through the use of the English word.

Due to these factors, the court ruled there was no risk of public confusion nor evidence of any intention by Sunrise-Mark to exploit Ferrari’s brand image.

Sunrise-Mark Can Proceed with Trademark

As a result of the decision, Sunrise-Mark is now legally permitted to register and use the WEE POWER logo in Malaysia. The court also ordered Ferrari to bear the legal costs of the proceedings, solidifying the judgment in favor of the Malaysian company.

Company Reactions

Sunrise-Mark issued a statement celebrating the decision as a win for local entrepreneurs and fair competition. The company emphasized that its branding was designed independently and intended to reflect its identity, not to mimic or capitalize on any global trademarks.

Ferrari has not yet released an official statement regarding the ruling or whether it plans to appeal.

Implications of the Ruling

This case highlights the boundaries of trademark protection, especially when large international brands attempt to challenge local firms in unrelated sectors. The decision reinforces that context, industry, and branding clarity are critical in determining trademark conflicts.

This article is for informational purposes only and is based on publicly available reports as of June 2025. It does not offer legal advice. All brand names and logos mentioned are the property of their respective owners.

Yamaha Wins Trademark Case: Importance of Acquired Distinctiveness

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The Delhi High Court has ruled in favor of Yamaha Motor Co., directing the Registrar of Trade Marks to restore a cancelled mark based on a rarely used proviso in Section 201. The decision highlights the importance of acquired distinctiveness and may pave the way for more brand owners to reclaim their legacy trademarks.
The case revolved around Yamaha’s appeal against the Registrar’s decision to cancel one of its trademarks due to non-use. However, the court ruled in Yamaha’s favor by invoking a long-overlooked proviso to Section 201, which permits reinstatement of trademarks that may have acquired distinctiveness in the market—even if they have not been in continuous use.

Court Reaffirms Importance of Acquired Distinctiveness
In its detailed judgment, the Court held that Yamaha’s trademark had developed significant consumer recognition and market goodwill prior to its cancellation. Justice [Name Not Provided] observed that the Trade Marks Registry had failed to consider the acquired distinctiveness of the mark—a crucial element of the proviso to Section 201, which grants the Registrar discretionary power to restore such marks under special circumstances.

“Statutory discretion must be exercised in a holistic manner. Ignoring a valid proviso renders the decision incomplete and flawed,” the Court remarked.

The Court concluded that Yamaha’s mark, by virtue of its prior reputation and public association, was eligible for restoration.

A Rarely Invoked Clause Comes to Light
The proviso to Section 201—originally introduced in a 1960 amendment under the previous law—has seldom been cited in recent decades. It allows the Registrar of Trade Marks to restore a cancelled registration if it can be shown that the mark had acquired a secondary meaning or public recognition, thereby distinguishing itself from common or descriptive terms.

Yamaha’s legal team argued that their mark had become synonymous with their brand offerings and enjoyed widespread familiarity among Indian consumers—well before its removal from the register. The court agreed.

Implications for Brand Owners and IP Law
Legal experts believe the verdict could have a far-reaching impact on how intellectual property authorities interpret restoration requests.

“The judgment sets a precedent for trademarks that might have lapsed due to procedural oversights but still hold value in the public domain,” said an intellectual property law specialist not involved in the case.

The decision also acts as a reminder to the Trade Marks Registry to consider all applicable legal provisions, including discretionary ones, when evaluating such cases.

Legal Community Welcomes Clarification
The judgment is being welcomed as a clarifying moment for Indian trademark law, especially for companies—both Indian and international—looking to safeguard legacy marks. It may also prompt revisions in how the Registry processes applications for restoration.

Yamaha’s success in this case could lead to a wave of similar petitions from brand owners seeking to recover rights over dormant or cancelled marks, particularly those with proven public recognition or historical use.

Disclaimer:
This article is an original and independently written news report based on the public judgment and legal reporting available through LiveLaw. It has been paraphrased and reconstructed for clarity, legal accuracy, and to ensure it is free from plagiarism. For further reference, readers may consult the original coverage at LiveLaw.