Newsletter - IPAY Attention : Issue No. 43 - 07/2026

Newsletter Issue 43 July 2026 I P AY ATTENTION Gateway to IP World In This Issue

I P AY ATTENTION Gateway to IP World 1 GUI DESIGN REGISTRATION IN INDIA: A PRACTICAL GUIDE FOR CHINESE AND JAPANESE LAW FIRMS AND IN-HOUSE COUNSEL For Chinese and Japanese companies with India-facing product portfolios, graphical user interfaces (GUIs) should now be treated as a serious design-filing asset class in India. Recent Calcutta High Court decisions have significantly improved the legal position for GUI registrations under the Indian Designs Act, 2000, reducing the uncertainty that previously caused many foreign applicants to omit India from broader interface-protection strategy. This development is especially relevant for businesses in consumer electronics, automotive systems, smart appliances, industrial machinery, laboratory equipment, robotics, medtech and advanced manufacturing. Many Chinese and Japanese companies already protect GUIs in their home jurisdictions and in other major markets. India should now be reconsidered as part of the same coordinated design-filing programme, particularly where the interface contributes to product differentiation, user adoption and after-sales brand recognition. Two Calcutta High Court judgments are central to this shift: UST Global (Singapore) Pte Ltd v. Controller of Patents and Designs (Decided on 20 March 2023) and NEC Corporation & Ors. v. Controller of Patents and Designs (Decided on 9 March 2026). Together, these cases confirm that GUIs are, in principle, eligible for design registration in India and that the earlier blanket objections based on “non-physicality,” software character, or ON-mode visibility are no longer tenable as a matter of law. WHY THIS MATTERS NOW Chinese and Japanese applicants are often highly design-conscious and frequently file extensive protection for icons, display panels, home screens, machine interfaces and control dashboards in their domestic systems. In Japan, interface design strategy is often integrated with product lifecycle planning, especially in automotive, consumer electronics and precision instruments. In China, applicants are increasingly using industrial design rights and interface-related filings as part of aggressive platform and device portfolio management. The Indian market is now large enough that excluding it from GUI protection can create avoidable enforcement and competitive gaps. This is particularly true for companies that sell connected devices or interface-heavy equipment into India through subsidiaries, distributors, joint ventures or OEM relationships. A copied interface in India may not only affect market share locally but can also dilute global brand language and weaken consistency across regional product lines. The recent Calcutta High Court decisions give foreign applicants a stronger legal footing to claim that the visual layer of a device deserves independent protection in India. The statutory framework under the Indian Designs Act, 2000 Indian design law protects a “design” applied to an “article” by industrial process, where the protectable features appeal to and are judged solely by the eye in the finished article. This is reflected primarily in Sections 2(a) and 2(d) of the Designs Act, 2000. Divyendu Verma

I P AY ATTENTION Gateway to IP World 2 UST GLOBAL CASE: THE FIRST MAJOR CORRECTION In UST Global (Singapore) Pte Ltd v. Controller of Patents and Designs [decided on 20 March, 2023], the applicant sought registration for a “Touch Screen” GUI. The Indian designs Office had refused the application on the basis that the GUI was not a design and that it was visible only when the screen was active. The Calcutta High Court reversed that refusal. It accepted that a GUI displayed on a screen can Section 2(a) defines “article” broadly and is not confined to traditional mechanical products. Section 2(d) defines “design” as features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article, whether in two-dimensional, three-dimensional or combined form, by any industrial process or means, which in the finished article appeal to and are judged solely by the eye. GUI filings in India typically face four recurring objections: 1) the GUI is said to be mere software rather than a “design”; 2) the GUI is said not to be applied to an “article”; 3) the display is said not to satisfy the “industrial process or means” requirement; and 4) the GUI is said not to qualify because it appears only when the device is switched on. The Calcutta High Court has now addressed all four objections in a commercially sensible way. constitute a two-dimensional design comprising a composition of lines and colours and can therefore amount to pattern or ornamentation applied to the display surface. The Court also recognised that the visual features of the interface may be judged by the eye immediately upon the device being switched on, without requiring tactile interaction by the user. This point is highly relevant for Chinese and Japanese applicants, because many of their products rely on sophisticated interfaces that are intended to impress visually in showrooms, demonstrations, catalogue images and digital advertising. The Court expressly acknowledged that in-built icons and display elements may add aesthetic value to the product and influence purchasing decisions. That aligns closely with how many East Asian manufacturers position interface design as part of product identity rather than just utility. The Court also addressed the “industrial process” requirement in a modern way. It held that the GUI is generated through software that is embedded in micro-controllers and micro-processors and is rendered on the screen through illuminated pixels. That was sufficient for the Court to find that the design is applied by an industrial process or means within the meaning of Section 2(d). NEC CORPORATION CASE: NO BLANKET EXCLUSION OF GUIs If UST Global opened the door, NEC Corporation & Ors. v. Controller of Patents and Designs [decided on 9 March 2026] pushed it fully open. This 2026 decision is particularly important because it involved a batch of GUI design appeals and squarely rejected the previous refusal pattern. The Court held that GUIs are eligible for registration under the Designs Act, subject to satisfaction of the statutory tests on the facts of each application. This judgment is especially significant for Japanese companies because it comes in a case involving NEC and reflects a sophisticated judicial understanding of interface design as a protectable commercial asset. The Court held that there is no per se bar to GUI registration, that the terms

I P AY ATTENTION Gateway to IP World 3 “article” and “design” must be interpreted broadly and purposively, and that the relevant article for a GUI may vary from case to case rather than being limited to the display screen in the abstract. The Court also made several propositions of continuing practical significance: 1) there is no statutory or judicial basis for a categorical refusal of GUI designs; 2) the definitions of “article” and “design” must be interpreted broadly and purposively; 3) the relevant article for a GUI can vary from case to case and is not always limited to the display screen viewed in isolation; 4) the process by which the GUI is rendered on the device satisfies the “industrial process or means” requirement; 5) visibility during normal use is enough, and permanent visibility is not required. The Court further acknowledged that iconography, layout, spacing, colour combinations and composition of lines are capable of being aesthetic choices that generate a distinct visual impression. That is a valuable proposition for applicants in sectors such as automotive dashboards, medical equipment, consumer devices and industrial control systems, where the interface often combines usability and brand language in a manner that is both functional and ornamental. WHAT THESE CASES MEAN FOR FOREIGN APPLICANTS For Chinese and Japanese law firms advising outbound clients, the most important practical shift is that India should no longer be treated as a jurisdiction where GUI protection is inherently doubtful. Instead, the question should be whether the product, timing and visual asset justify an Indian filing in the same way they would justify filings in Japan, China, Korea, the EU or the United States. Following three strategic consequences follow. First, India should be added to pre-launch clearance and filing checklists for major interface releases. GUI novelty can be lost quickly through launch videos, exhibition displays, online manuals, app-store screenshots and trade-fair demonstrations. If India is to be included, it needs to be built into disclosure control and filing calendars rather than treated as an afterthought. Second, applicants should think more carefully about which interfaces are commercially worth protecting in India. Not every screen deserves a standalone filing. However, where the GUI is central to user experience, product recognition or market differentiation, the Indian design route is now materially stronger than before. Third, teams should align Indian filings with broader portfolio architecture. A well-managed programme may use design rights for GUI appearance, copyright for artistic or screen elements where available, trademark strategy for recurring brand indicators, and contractual/device ecosystem controls for software behavior. India should be assessed as one layer within that integrated approach. FILING STRATEGY: HOW TO FRAME THE APPLICATION Identify the right article One of the clearest lessons from NEC Corporation is that the “article” must be identified thoughtfully. The article is not always just “screen,” and it need not always be the entire device either. The best approach depends on how the representations are framed and how the product is used. Where the GUI is tied to a technical instrument, it is usually better to anchor the design to that real-world article rather than filing an abstract “graphical user interface” in isolation. For example, where the GUI is specific to a specialised instrument, the title “DISPLAY SCREEN WITH GRAPHICAL USER INTERFACE FOR A BLOOD GLUCOSE TESTING DEVICE” may be more persuasive than a generic “Graphical user interface.” In this scenario, the relevant design is tied to the glucometer and the claimed visual

I P AY ATTENTION Gateway to IP World 4 features can include the distinctive arrangement of large segmented numerals for the glucose value, the relative positioning of the “mg/dL” unit indication, the placement and style of the time and date fields at the top, the specific meal indicator icon in the lower corner, and the overall composition of icons, digits and indicators on the LCD panel. That is precisely the type of concrete article linkage and visually coherent composition Indian applicants should aim to show. I have provided a sample GUI design as an example on page 5 of this article. Focus on protectable visual features The Indian design regime protects appearance, not the underlying software logic. Applications should therefore foreground icon shapes, relative placement, colour coding, line structure, spatial rhythm, borders, panels and other visible aesthetic features. Overly technical descriptions risk inviting a functionality objection or shifting the examiner’s focus away from the visual impression. In practice, counsel should describe the GUI as a composition of lines, colours, patterns or ornamentation applied to the article, while keeping the technical explanation limited to what is necessary to show industrial application and normal display context. Deal proactively with “ON mode” objections Although UST Global and NEC Corporation are strong authorities, some examiners may still raise familiar objections. It is therefore prudent to build the answer into the filing narrative from the outset. The representations and statement of novelty should make clear that the GUI is visible in the finished article during ordinary operation and that the relevant visual impression is created in that normal-use state. Prepare for mixed functionality arguments Many GUIs are not purely decorative. That does not defeat design protection. The better question is whether the claimed arrangement contains protectable visual choices beyond mere technical necessity. The Calcutta High Court’s recognition of iconography, colour combinations, composition and spacing as potentially aesthetic features gives applicants a strong basis to argue that interface design can be both useful and visually distinctive. A PRACTICAL EXAMPLE: GUI FOR A BLOOD GLUCOSE SUGAR TESTING MACHINE: A helpful illustration is a “DISPLAY SCREEN WITH GRAPHICAL USER INTERFACE FOR A BLOOD GLUCOSE TESTING DEVICE”. The claimed design may reside in the specific visual composition appearing on the meter’s LCD panel: the large segmented numerals indicating the glucose value, the relative positioning of the “mg/dL” unit indication, the placement and style of the time and date fields at the top, the distinctive meal indicator icon in the lower corner, and the arrangement of mode and memory indicators across the lower band of the display. Taken together, these elements form a particular pattern and composition of lines and shapes applied to the display screen, which in the finished device appeals to and is judged solely by the eye when the glucometer is in normal measuring mode. The GUI is rendered by embedded software driving the pixels of the LCD, thereby satisfying the “industrial process or means” requirement under Section 2(d), and - consistent with UST Global and NEC Corporation cases - the fact that the interface is visible only when the device is switched on does not detract from its character as a registrable design. This fact pattern is particularly instructive because it shows how industrial and laboratory equipment can benefit from the Calcutta High Court’s reasoning.

I P AY ATTENTION Gateway to IP World 5 The interface is not an abstract software screen floating independently of a device; it is surface ornamentation and visual composition applied to a finished industrial article. The rendering of the interface through embedded software and illuminated pixels satisfies the industrial process requirement, and the GUI’s appearance during normal operation satisfies the visual-appeal requirement articulated in both UST Global and NEC Corporation. For foreign applicants in medtech, diagnostics, lab equipment, automotive controls or industrial automation, that is a meaningful extension of the doctrine. It suggests that India’s GUI design protection is not confined to smartphones and tablets. REMAINING CAUTION POINTS Although the case law is favorable, applicants should remain disciplined. The Calcutta High Court did not create automatic registration for every screen image. Novelty, originality and visual character remain essential, and representation quality will matter considerably. Foreign applicants should also remember that Indian examination practice may take time to become fully consistent across cases. It is therefore advisable to cite UST Global and NEC Corporation directly in responses where objections invoke non-physicality, lack of article, or ON-mode visibility. In addition, applicants should verify whether the desired scope is better pursued through multiple related filings, especially where the interface changes across modes or screens. India may not always accommodate dynamic-screen protection in the same way other jurisdictions do, so portfolio design should be handled thoughtfully. FINAL REMARK The message for Chinese and Japanese law firms and in-house counsel is clear: GUI design protection in India is now substantially more viable than it was even a few years ago. The Calcutta High Court’s decisions in UST Global and NEC Corporation now provide a clear doctrinal basis for protecting GUIs as designs under the Designs Act, 2000, so long as the interface is framed as visual matter applied to an article by industrial process and judged by the eye in the finished article. For businesses already investing heavily in interface design, India should therefore be evaluated as part of the same international filing and enforcement strategy used in China, Japan, Korea, the EU and the United States.

I P AY ATTENTION Gateway to IP World 6 INDIA'S NEW SPORTS GOVERNANCE FRAMEWORK: NATIONAL SPORTS BOARD & NATIONAL SPORTS TRIBUNAL RULES, 2026 On 22 May 2026, the Ministry of Youth Affairs and Sports notified two sets of rules under the National Sports Governance Act, 2025: the National Sports Governance (National Sports Board) Rules, 2026 and National Sports Governance (National Sports Tribunal) Rules, 2026. These rules operationalise the two flagship institutional pillars of India's restructured sports administration framework; a regulatory body for governance oversight and a dedicated adjudicatory forum for disputes. 1. National Sports Board (NSB) Aim & Purpose: The National Sports Board functions as the apex regulatory authority for sports governance in India. Its core mandate is to grant recognition to National Sports Bodies (NSBs) and ensure their ongoing compliance with governance, financial and ethical standards prescribed under the Act. Composition: The Board comprises a chairperson and two Members, appointed by the Central Government from a panel recommended by a Search-cum-Selection Committee constituted under the National Sports Board (Search-cum-Selection Committee) Rules, 2026. Term & Conditions: Each appointee holds office for three years or until age 65, whichever is earlier, with eligibility for one re-appointment. Deputation appointees are paid at the level of Secretary/Additional Secretary to the Government of India. No member may, during their tenure, hold any position in any International or National Sports Body, affiliated unit, or National Sports Promotion Organisation. Powers & Functions: The Board maintains a roster of the National Sports Election Panel and a register of NSB affiliate units, both public documents under Section 74, Bharatiya Sakshya Adhiniyam, 2023. It may specify model guidelines on sports governance, consult stakeholders, recommend adoption of international best practices, and organise training programmes and conferences in collaboration with international sports bodies. Financial Accountability: The Board is subject to detailed financial oversight too. The Board has to prepare annual accounts (balance sheet, income & expenditure, receipts & payments) in the CAG-prescribed format, forwards them to the CAG within three months of the financial year-end, and ensures CAG-certified accounts with the audit report are laid before each House of Parliament. All records must be preserved for a minimum of five years. 2. National Sports Tribunal (NST) Aim & Purpose: The National Sports Tribunal is established as a dedicated adjudicatory body for sports-related disputes, aimed at reducing reliance on civil courts Vikas Anil Awale

I P AY ATTENTION Gateway to IP World 7 and providing independent, speedy, cost-effective resolution of disputes concerning sports governance and administration. It is designed as a single-window mechanism to curtail multiplicity of litigation. Composition: The Tribunal consists of a Chairperson and Members appointed by the Central Government on the recommendation of a Search-cum-Selection Committee constituted. Serving judges of the Supreme Court or High Courts and members of organised services must resign or take voluntary retirement from their parent service before joining. Term & Conditions: The Chairperson serves for five years or until age 70, and Members until age 67, in each case whichever is earlier, with eligibility for one re-appointment. Both will get allowances equivalent to Group ‘A’ GoI officers at the corresponding pay level. Powers of the Tribunal: The Tribunal may pass such orders or directions as necessary to meet the ends of justice or prevent abuse of process. It may also grant interim relief including injunctions and stays after hearing the parties. All orders are executable as decrees of a civil court and, on expiry of the appeal period, are deemed final decrees. Post-tenure Restrictions: Members may not practise before the Tribunal post-retirement, nor undertake arbitration assignments while in office. A two-year cooling-off period applies post-tenure, prohibiting employment with any entity governed by the Act. This restriction does not extend to employment under Central/State Governments. Techno-Legal Infrastructure: The Central Government may notify a digital portal enabling online filing of disputes, virtual hearings, publication of orders, and maintenance of digital records. Once notified, all Tribunal orders will be digitally signed and conveyed electronically to all parties. Key Takeaway: Together, these Rules give institutional teeth to the National Sports Governance Act, 2025. Entities operating in the Indian sports ecosystem including sports federations, clubs, athletes and their advisors should take note that governance compliance with NSB standards is now a condition of recognition, and sports disputes have a dedicated, tech-enabled forum with civil-court-equivalent enforcement powers. Taken together, these Rules signal that Indian sports administration is entering a new era of professionalism and regulatory rigour, one where transparency, integrity safeguards, and institutional independence are built into the system by design. For sports federations, clubs, athletes, and their advisors, understanding and aligning with this framework is no longer a matter of choice but of legal necessity.

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I P AY ATTENTION Gateway to IP World 9 IP SNIPPETS: A P TENT CASES: ABBVIE IRELAND UNLIMITED COMPANY (Appellant) vs DEPUTY CONTROLLER OF PATENTS DESIGNS (Respondent) CASE NO.: C.A.(COMM.IPD-PAT) 65/2024 DECIDED ON: 29th April 2026 NAVYA NETWORK INC. (Petitioner) vs ASSISTANT CONTROLLER OF PATENTS AND DESIGNS (Respondent) CASE NO.: COMMERCIAL MISCELLANEOUS PETITION (L) NO. 15327 OF 2025 DECIDED ON: 15th April 2026 The appellant filed the present appeal challenging the impugned order passed by the respondent refusing the appellant’s divisional patent application under section 2(1)(ja) for lack of inventive step and under section 16 for non-maintainability of divisional application. The appellant states that the Patent Office raised an objection of unity of invention during the First Examination report, corresponding to which the divisional patent application was filed. Therefore, the appellant cannot be denied a right to file the divisional application. The appellant argued that the respondent failed to appreciate that the claims of the parent application and the present divisional application relate to two distinct inventive concepts and further failed to conduct proper inventive step analysis with regard to the cited prior art before refusing the present divisional application. The respondent countered that detailed comparative analysis was conducted with the cited prior art before refusing the present divisional application. And the application has been refused on merits of lack of inventive step, the appellant is under misconception that the divisional application has been refused as not maintainable. The Hon’ble Delhi High Court noted that the impugned order denotes rejection of the present divisional application on the ground of non-maintainability under Section 16; and lack of inventive step under Section 2(1)(ja). The Hon’ble Court states that once the divisional application is filed pursuant to the objection of the unity of invention,the said application cannot be rejected on the ground that the claims allegedly stood granted in the parent application. And the appellant urges that the teaching of the prior art do not lad to the claimed invention, as they are not obvious to the person skilled in the art. All the objections and responses must be carefully considered and dealt with in the reasoned order. The Hon’ble Court concluded by setting aside the impugned order and directing the respondent to consider the matter fresh on the objection of lack of inventive step under Section 2(1)(ja) of the 1970 Act. The present petition has been filed by the petitioner challenging the impugned order passed by the respondent refusing the petitioner’s patent application (hereinafter referred as ‘subject application’) under the ground of lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(k). The petitioner argued that the respondent failed to provide any reasoning on how the subject application lacked inventive step when compared with the cited prior arts. Further the petitioner stated that the respondent didn’t consider the submission on patentability made by them, which included novelty and inventive step, and the reasoning provided under section 3(k) in the impugned order is completely different than the reasoning provided during the hearing notice, thereby depriving their opportunity to address the objection. The respondent countered that the subject application has been rightly rejected as it failed to disclose any technical effect or contribution and were priorly disclosed in the cited prior arts. The Hon’ble Bombay High Court observed the following matter and noted the absence of reasoning/analysis in the impugned order while refusing the subject application. The Hon’ble Court further stated that the reasoning provided by the respondent during the hearing notice and the

I P AY ATTENTION Gateway to IP World 10 In the present case, the Petitioner filed a statutory appeal challenging an order passed by respondent no. 1 permitting respondent no. 2 to place on record an affidavit of evidence in rectification proceedings despite a delay of more than three years. The dispute primarily concerned whether the time limit prescribed under Rule 45 of the Trade Marks Rules, 2017 for filing evidence is mandatory or merely directory. The Petitioner contended that Rule 45 prescribes a mandatory deadline and that respondent no. 1 lacked jurisdiction to permit the delayed filing of evidence. Reliance was placed on judicial precedents treating the provision as mandatory. Respondent no. 2, on the other hand, argued that Rule 45 is directory in nature and that respondent no. 1 retains discretion under Section 131 of the Trade Marks Act, 1999 to extend time and accept evidence even after expiry of the prescribed period. The Hon’ble Bombay High Court held that Rule 45 stipulates a directory and not a mandatory deadline. The Hon’ble Court observed that Rules 46 to 48 of the Trade Marks Rules, 2017 confer discretion upon the Registrar to permit additional evidence where necessary for a fair adjudication. The Hon’ble Court emphasised that procedural provisions should facilitate justice rather than defeat substantive rights In the present case, petitioner filed a rectification petition against respondents seeking cancellation of the registered trademark “GLASS SKIN” in Class 03. The dispute arose after the respondent alleged infringement of the mark “GLASS SKIN” and the petitioner’s product listing was removed from an e-commerce platform on the basis of the respondent’s trademark registration. The petitioner argued that “GLASS SKIN” merely describes the intended purpose and result of skincare products, referring to the popular Korean beauty trend of achieving clear, luminous skin. The respondents, on the other hand, contended that the mark was “suggestive” rather than descriptive, requiring imagination on the part of consumers and therefore deserving trademark protection. and that treating Rule 45 as mandatory would lead to absurd consequences. The Hon’ble Court further held that Section 131 of the Trade Marks Act empowers respondent no. 1 to extend such procedural timelines even after their expiry, subject to sufficient cause being shown. Accordingly, the Hon’ble Court dismissed the appeal and upheld the order passed by respondent no. 1 permitting the delayed affidavit of evidence filed by respondent no. 2 to be taken on record. The Hon’ble Court confirmed that respondent no. 1 had acted within its jurisdiction and that no interference with the impugned order was warranted. impugned order is different, leaving petitioner with no opportunity to respond. The Hon’ble Court concluded by setting aside the impugned order and remanded the matter back for afresh consideration. TRADEMARK CASES BLACK DIAMOND MOTORS PVT. LTD. (Petitioner) vs REGISTRAR OF TRADE MARKS, MUMBAI & BLACK DIAMOND TRACK PARTS PVT. LTD. (Respondents) CASE NO.: CMP/23/2026 with IA/2089/2026 in CMP/23/2026 DECIDED ON: 17th June 2026 RENEE COSMETICS PRIVATE LIMITED (Petitioner) vs MS. RUPALI SHARMA & ANR. (Respondents) CASE NO.: C.O. (COMM.IPD-TM) 107/2025 & I.A. 11431/2025 DECIDED ON: 5th June 2026

I P AY ATTENTION Gateway to IP World 11 The Hon’ble Delhi High Court held that the expression “GLASS SKIN” is descriptive of the nature, intended purpose, and end result of cosmetic products. The Hon’ble Court observed that the term had been extensively used by various stakeholders in the beauty industry and even by the respondents itself in a descriptive manner. Applying the principles relating to descriptive and suggestive marks, the Hon’ble Court concluded that “GLASS SKIN” directly conveys the characteristics and intended effect of the goods and is therefore barred from registration under Section 9(1)(b) of the Trade Marks Act, 1999. Accordingly, the Hon’ble Court allowed the rectification petition and directed the Registrar of Trade Marks to cancel and remove the registration of the mark “GLASS SKIN” from the Trade Marks Register. The Hon’ble Delhi Commercial Court observed that noted that the plaintiff failed to properly prove its trademark registration by producing original or certified copies of the relevant registration documents. Hon’ble Court also held that the word “Kajal” is generic and incapable of conferring exclusivity, and that the dominant features of the competing marks “L’ORÉAL” and “TIANNUO” were entirely different, making the marks dissimilar when viewed as a whole. The Hon’ble Court additionally found that the plaintiff had failed to establish goodwill, misrepresentation, damage, or ownership of copyright in the alleged artwork through admissible evidence. All claims for injunction, damages, rendition of accounts, delivery up, and costs were rejected, and the matter was decided in favour of the defendant. In the present case, Plaintiff filed a suit against defendant seeking permanent injunction and other reliefs for alleged t r a d e m a r k infringement, passing off, dilution, and copyright infringement. The plaintiff contended that the defendant had adopted and was using the mark “TIANNUO MAGIC KAJAL” along with a deceptively similar trade dress and packaging, thereby infringing its trademark “L’ORÉAL KAJAL MAGIQUE” and copying the artistic features embodied therein. The defendant denied the allegations and argued that it was not using the impugned mark, that “Kajal” is a generic term incapable of exclusive appropriation, and that its packaging and branding were entirely distinct from those of the plaintiff. In the present cross-suits, Plaintiff, an Irish whiskey manufacturer, filed a suit against defendants alleging passing off arising from the latter’s use of the mark “WHISTLER” for whiskey products. Defendant, in turn, filed a suit for trademark infringement and passing off on the basis of its Indian registration of the mark “WHISTLER” , seeking to restrain plaintiff from marketing its Irish whiskey under the marks “WHISTLER” and “THE WHISTLER” in India. Plaintiff contended that it was the prior adopter and international proprietor of the marks “WHISTLER” and “THE WHISTLER”, having acquired substantial global goodwill and transborder reputation. Defendants argued that it was the M/S L’OREAL (Plaintiff) vs M/S. SEEMA COSMETICS (Defendant) CASE NO.: CS (COMM) 224/2020 DECIDED ON: 5th June 2026 ROBERT A MERRY AND CO LTD & ANR. (Plaintiff) vs PICCADILY AGRO INDUSTRIES LTD (Defendants) CASE NO.: CS(COMM) 9/2026 & CS(COMM) 1164/2025 DECIDED ON: 29th May 2026

I P AY ATTENTION Gateway to IP World 12 registered proprietor of “WHISTLER” in India since 2008 and that plaintiff had failed to establish any significant spillover of reputation or goodwill in India prior to defendant’s adoption and use of the mark. The Hon’ble Delhi High Court emphasized the territoriality principle governing passing-off actions and held that mere worldwide reputation is insufficient unless the claimant establishes substantial goodwill and reputation within India. The Hon’ble Court observed that registrations and commercial success abroad do not automatically confer enforceable rights in India and that a foreign proprietor must demonstrate spillover of goodwill into the Indian market before claiming protection against an Indian user. The Hon’ble Court found that the plaintiff had failed to establish the requisite transborder reputation in India prior to the defendant’s adoption and registration of the mark and declined to grant interim protection to the plaintiff and restrained the use of the mark ‘WHISTLER’ in India by the plaintiff. representative to institute the proceedings, absence of territorial jurisdiction, and denial of involvement in any infringing activities. Defendant No. 2 further contended that the allegedly infringing goods belonged to a third party and that he had no knowledge of any infringement. The Hon’ble Saket District Court observed that although the plaintiff had established ownership and reputation in the BURBERRY trademarks, it failed to prove that the suit had been instituted through a duly authorized person, as the authority relied upon had expired prior to the filing of the suit and no valid board resolution or supporting authorization was produced. The Hon’ble Court noted several inconsistencies in the Local Commissioner’s report and the plaintiff’s evidence. Hon’ble Court held that the plaintiff failed to prove infringement against Defendant Nos. 1, 4, and 5, as there was insufficient and unreliable evidence linking the seized goods to them. However, the Hon’ble Court held Defendant No. 3 liable for infringement, noting that goods bearing the ‘BURBERRY’ label were found and that the defendant’s failure to produce the seized goods indicated dealing in counterfeit products. Accordingly, the Hon’ble Court restrained Defendant No. 3 from dealing in counterfeit BURBERRY goods and awarded ₹ 3 lakhs in damages to the plaintiff. However, since the suit was not properly instituted and infringement was not proved against the remaining defendants, the suit was dismissed. In the present case, Plaintiff filed a suit against In the present suit, plaintiff filed a suit against multiple defendants engaged in the sale and trade of fashion accessories, apparel, belts, handbags, and allied goods, seeking permanent injunction and other reliefs for infringement and passing off of its well-known trademark “BURBERRY”. The plaintiff alleged that the defendants were manufacturing and selling counterfeit products bearing the BURBERRY mark, logos, and labels without authorization, thereby infringing its statutory and common law rights. The defendants contested the suit on various grounds, including lack of authorization of the plaintiff’s BURBERRY LIMITED (Plaintiff) vs KRISHAN KUMAR AND ORS (Defendants) CASE NO.: CS (COMM) 332/19 DECIDED ON: 29th May 2026 M/S BHARATI BHAWAN PUBLISHERS AND DISTRIBUTORS (Plaintiff) vs SANJAY SINGH AND ORS (Defendants) CASE NO.: CS(COMM) 598/2026 DECIDED ON: 26th May 2026 COPYRIGHT CASES

I P AY ATTENTION Gateway to IP World 13 defendants seeking protection of its copyrights in educational publications. The suit was instituted after the plaintiff discovered that counterfeit and pirated copies of its books were being reproduced and sold through online marketplaces without its authorization. The plaintiff contended that it was the exclusive owner of copyrights in several educational publications and that the defendants were illegally reproducing, printing, distributing, and selling pirated copies of its books. It was further argued that the counterfeit books lacked the plaintiff’s original security features, such as holograms and 3D security stickers, thereby evidencing unauthorized reproduction of the copyrighted works. Since the matter was considered at the ad interim stage, no substantive defence was recorded from the defendants. The Hon’ble Delhi High Court observed that the material placed on record established a prima facie case of copyright infringement and book piracy. The Hon’ble Court noted that the impugned publications appeared to be unauthorized reproductions of the plaintiff’s copyrighted works and that the absence of the plaintiff’s security features further supported the allegation of piracy. The Hon’ble Court emphasized that the unauthorized reproduction and sale of educational books not only infringed the plaintiff’s statutory rights under the Copyright Act but also adversely affected its goodwill and commercial interests. Accordingly, the Hon’ble Court granted an ex parte ad interim injunction restraining the defendants from infringing plaintiff’s copyright.

Disclaimer: This publication is intended to provide information to clients on recent developments in IPR industry. The material contained in this publication has been gathered by the lawyers at DuxLegis for informational purposes only and is not intended to be legal advice. Specificall y, the articles or quotes in this newsletter are not legal opinions and readers should not act on the basis of these articles or quotes without consulting a lawyer who could provide anal This Newsletter is published by DuxLegis Attorneys from 902, Kamdhenu Commerz, Sector 14, Kharghar, Navi Mumbai, Maharashtra, India on 9 July, 2026. ysis and advice on a specific matter. DuxLegis Attorneys is a partnership law firm in India. [email protected] 902, Kamdhenu Commerz, Sector - 14, Kharghar, Navi Mumbai - 410210. MH, INDIA w w w . d u x l e g i s . c o m 2025-26 DUXLEGIS C Editorial Board +91 22 46083609 / +91 83739 80620 Editor in Chief Divyendu Verma Sahana Mabian Designer Namrata Thakur . Content Editor Sub - Editor Priti More